IconFind, Inc. v. Google, Inc.

Filing 78

REPLY by Google, Inc. re 73 MOTION for JUDGMENT ON THE PLEADINGS OF INVALIDITY OF U.S. PATENT NO. 7,181,459. (Malecek, Michael)

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Michael J. Malecek (State Bar No. 171034)
Email address: [e-mail]
Kenneth M. Maikish (State Bar No. 267265)
Email address: [e-mail]
KAYE SCHOLER LLP
Two Palo Alto Square, Suite 400
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
GOOGLE INC.

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UNITED STATES DISTRICT COURT

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FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,
Plaintiff,

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v.

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GOOGLE INC.,

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Defendant.

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Case No. 2:11-CV-00319 GEB JFM
DEFENDANT GOOGLE INC.’S REPLY
IN SUPPORT OF ITS RENEWED
MOTION FOR JUDGMENT ON THE
PLEADINGS OF INVALIDITY OF U.S.
PATENT NO. 7,181,459

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GOOGLE'S REPLY ISO RENEWED MOTION FOR JUDGMENT ON THE PLEADINGS

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TABLE OF CONTENTS

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I.

INTRODUCTION .............................................................................................................. 2

II.

PLAINTIFF’S PROCEDURAL ARGUMENTS ARE WITHOUT MERIT ..................... 2
A.

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Determination Of Google’s Motion Does Not Require Claim Construction ......... 3

B.

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Determination Of Google’s Motion Does Not Require Discovery, Nor The
Application Of The “Clear And Convincing” Standard, Because There Are
No Disputed Facts................................................................................................... 5

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III.

PLAINTIFF’S SUBSTANTIVE ARGUMENTS ARE WITHOUT MERIT..................... 6
A.

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The Prosecution History Supports Google’s – Not Plaintiff’s – Position .............. 6

B.

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Plaintiff Misapplies The Machine-Or-Transformation Test ................................... 8
1.
2.

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C.

Plaintiff’s Attempt To Align Its Claims With The Supreme Court’s Holding
In Diehr Fails ........................................................................................................ 12

D.

Plaintiff Fails To Rebut The Examiner’s Conclusion That The Claims Are
Directed To An Abstract Idea Capable Of Being Performed With “Pen And
Paper”.................................................................................................................... 13

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1.
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3.

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E.

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The Claims Of The ’459 Patent Are Not Tied To A Machine.................... 8
The Claims Of The ’459 Patent Do Not Transform Network Pages
Into A Different State Or Thing: The Claims Start With A Network
Page And End With A Network Page....................................................... 10

IV.

Plaintiff’s Reliance On Ultramercial Is Misplaced .................................. 13
Plaintiff’s Reliance On Research Corp. Techs. Is Misplaced................... 14
Like In CyberSource And Ass’n For Molecular Pathology, The ’459
Patent Impermissibly Seeks To Patent “Pen And Paper” Claims............. 15

Google’s Argument Applies To Each Of The Claims .......................................... 17

CONCLUSION................................................................................................................. 18

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TABLE OF AUTHORITIES
Cases
Ass’n for Molecular Pathology v. United States PTO,
653 F.3d 1329 (Fed. Cir. 2011)....................................................................... 12, 15, 16, 17
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
No. 00-1073, 2011 U.S. Dist. LEXIS 14272 (E.D. Mo. Feb. 14, 2011)......................... 5, 8
Bilski v. Kappos,
130 S. Ct. 3218 (2010).................................................................................................... 6, 8
CLS Bank Int'l v. Alice Corp. Pty, Ltd.,
768 F. Supp. 2d 221 (D.D.C. 2011) ................................................................................ 4, 8
CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011)............................................................................. 10, 15, 17
DealerTrack, Inc. v. Huber,
657 F. Supp. 2d 1152 (C.D. Cal. 2009) .............................................................................. 8
Deston Therapeutics LLC v. Trigen Laboratories Inc.,
723 F. Supp. 2d 665 (D. Del. 2010).................................................................................... 3
Diamond v. Diehr,
450 U.S. 175 (1981)........................................................................................ 12, 13, 15, 19
Fuzzysharp Techs., Inc. v. 3D Labs Inc., Ltd.,
No. 07-5948, 2009 U.S. Dist. LEXIS 115493 (N.D. Cal. Dec. 11, 2009)...................... 4, 8
Glory Licensing LLC v. Toys “R” Us, Inc.,
No. 09-4252, 2011 U.S. Dist. LEXIS 51888 (D.N.J. May 16, 2011)............................. 4, 9
Graff/Ross Holdings LLP v. Fed. Home Loan Mortg. Corp.,
No. 07-796, 2010 U.S. Dist. LEXIS 141399 (D.D.C. Aug. 27, 2010) ........................... 4, 8
In re Abele,
684 F.2d 902 (CCPA 1982) ........................................................................................ 11, 12
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008)................................................................................... 5, 8, 11
In re Comiskey,
554 F.3d 967 (Fed. Cir. 2009)............................................................................................. 5
In re Ferguson,
558 F.3d 1359 (Fed. Cir. 2009)......................................................................................... 10
Prometheus Labs. v. Mayo Collaborative Servs.,
No. 04-1200, 2008 U.S. Dist. LEXIS 25062 (S.D. Cal. Mar. 28, 2008) ............................ 6
Research Corp. Techs. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010)............................................................................... 13, 14, 15
Ultramercial, LLC v. Hulu, LLC,
657 F.3d 1323 (Fed. Cir. 2011)........................................................................... 3, 4, 13, 14
Statutes
35 U.S.C. § 101...................................................................................................................... passim
35 U.S.C. § 102............................................................................................................................... 7
35 U.S.C. § 103............................................................................................................................... 7

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Other Authorities
U.S. Patent Office’s “Interim Guidance for Determining Subject
Matter Eligibility for Process Claims in View of Bilski v. Kappos,”
75 Red. Reg 43, 992 (July 27, 2010) ............................................................................... 13

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NOTES ON CITATIONS

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The patent-in-suit, U.S. Patent No. 7,181,459 (“the ’459 patent”), is attached as Exhibit 1

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to the Declaration of Kenneth Maikish (the “Maikish Decl.”) in Support of Google’s Renewed

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Motion for Judgment on the Pleadings of Invalidity of U.S. Patent No. 7,181,459 (“Maikish

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Decl.”) (Dkt. 75). References to the ’459 patent are indicated by column and line number. A

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reference to “3:15” means column 3, line 15.

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Defendant Google Inc.’s Memorandum in Support of Its Renewed Motion for Judgment

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on the Pleadings of Invalidity of U.S. Patent No. 7,181,459, Dkt. 74, is cited as “Mot.” Plaintiff

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Iconfind’s Response in Opposition to Defendant’s Motion on the Pleadings, Dkt. 77, is cited as

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“Opp.”

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I.

INTRODUCTION
The patent-in-suit in this matter is invalid because it is directed towards an abstract idea

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contrary to 35 U.S.C. § 101 and the Supreme Court’s controlling precedent relating to patentable

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subject matter. Rather than address this issue now, Plaintiff would have the parties and the Court

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waste their time and resources by ignoring this threshold issue. The question of invalidity under

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35 U.S.C. § 101 is a question of law. The resolution of this threshold question does not require

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claim construction, nor does it require discovery. There are no factual issues in dispute. In the

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interest of judicial economy and before having the parties embark on a long, resource-consuming,

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and expensive litigation matter, Google respectfully requests that this Court decide whether the

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‘459 patent meets the § 101 threshold for patentability.

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Plaintiff’s Opposition fails to rebut Google’s arguments in support of its position that the

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’459 patent is directed at an abstract idea. It is false that the United States Patent and Trademark

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Office (“PTO”) “has indeed heard and has vetted the exact same argument that Google now

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asserts.” (Opp. at 1.) In fact, the exact opposite is true. As described in Google’s Opening Brief,

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and is clear from the prosecution history, the Patent Examiner expressly rejected all of the claims

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of the patent-in-suit as being directed towards an abstract idea. The only reason the Examiner

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then allowed these claims was because Plaintiff added the phrase “a computer implemented

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method” to the preamble of each of the claims. But, the Supreme Court recently made clear that

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such a “cure,” which simply attempts to exalt form over function, is not viable.
Google’s Memorandum in Support of Its Renewed Motion applies the standards for

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addressing the question of patentable subject matter under 35 U.S.C. § 101 as articulated by the

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Federal Circuit and the Supreme Court and appropriately concludes that the ’459 patent is invalid.

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As illustrated below, Plaintiff’s arguments to the contrary are unavailing. Accordingly, Google’s

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Motion should be granted.

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II.

PLAINTIFF’S PROCEDURAL ARGUMENTS ARE WITHOUT MERIT

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Google’s Motion for Judgment on the Pleadings is ripe for adjudication. There is no

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claim construction that would change the analysis. It is telling that Plaintiff does not – and cannot

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– point to any such claim construction or any facts that would be relevant to this motion.

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Accordingly, the motion should be considered by this Court now. Furthermore, Plaintiff’s

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reference to the “clear and convincing” evidentiary standard is moot because the issue presented

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is a matter of law and there are no facts in dispute.

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A.

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As Plaintiff acknowledges (Opp. at 5), the Federal Circuit recently affirmed that claim

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construction is not a mandatory prerequisite to deciding a motion for invalidity pursuant to 35

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U.S.C. § 101. In the recent Ultramercial decision, the Federal Circuit indicated:

Determination Of Google’s Motion Does Not Require Claim Construction

This court has never set forth a bright line rule requiring district courts to
construe claims before determining subject matter eligibility. Indeed,
because eligibility is a coarse gauge of the suitability of broad subject
matter categories for patent protection, claim construction may not always
be necessary for a § 101 analysis.

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Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1325 (Fed. Cir. 2011) (internal citations and

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quotations omitted). Google does not dispute that in deciding a § 101 challenge, it is sometimes

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the case that claim construction may play an important part of the analysis. Sometimes, however

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– as is the case here – claim construction is not necessary to determine whether a patent’s claims

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are impermissibly directed to abstract subject matter. Tellingly, while Plaintiff goes on at length

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regarding other cases where courts undertook claim construction prior to tackling a question of

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validity under § 101 (Opp. at 4-7), it fails to point to a single claim term that would require

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construction prior to ruling on the instant question of patentability before this Court. In short,

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Plaintiff both ignores the numerous cases in which such a determination was reached without

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claim construction, and, more importantly, Plaintiff fails to demonstrate why such analysis is

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required in this case.

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Claim construction is only necessary where the Court’s ability to rule on the Motion

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hinges on how one or more terms from the claims are construed.1 Numerous courts have ruled on

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Plaintiff’s reliance on Deston Therapeutics LLC v. Trigen Laboratories Inc., 723 F. Supp. 2d
665, 670 (D. Del. 2010) to suggest the contrary is misplaced. The court in Deston was faced with
a motion to dismiss for non-infringement. As infringement is a question of fact, and as claim
construction is routinely required for the determination of the question of infringement, the
(continued...)
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§ 101 motions without claim construction. E.g., Fuzzysharp Techs., Inc. v. 3D Labs Inc., Ltd.,

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No. 07-5948, 2009 U.S. Dist. LEXIS 115493, at *6-7 n. 1 (N.D. Cal. Dec. 11, 2009) (“Claims

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construction is not a prerequisite to ruling on the [motion for summary judgment of invalidity

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pursuant to 35 U.S.C. § 101].”); see also Glory Licensing LLC v. Toys “R” Us, Inc., No. 09-4252,

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2011 U.S. Dist. LEXIS 51888 (D.N.J. May 16, 2011) (unpublished opinion) (granting

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defendant’s motion to dismiss and finding patent-in-suit invalid for failure to claim patentable

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subject matter pursuant to 35 U.S.C. § 101 without requiring claim construction); CLS Bank Int'l

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v. Alice Corp. Pty, Ltd., 768 F. Supp. 2d 221 (D.D.C. 2011) (finding patent-in-suit invalid on

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Motion for Summary Judgment without having construed the claims); Graff/Ross Holdings LLP

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v. Fed. Home Loan Mortg. Corp., No. 07-796, 2010 U.S. Dist. LEXIS 141399, at *6-7 (D.D.C.

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Aug. 27, 2010) (“The undersigned finds it is unnecessary to construe the terms before deciding

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the issue of validity, and thus forgoes claim construction pending resolution of this motion to

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dismiss.”). Ironically, even the chief case relied upon by Plaintiff in arguing that claim

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construction is somehow necessary prior to making a determination under § 101 — i.e., the

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Federal Circuit’s opinion in the Ultramercial matter, see Opp. at 5-6 — was itself decided in the

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absence of claim construction. Ultramercial, 657 F.3d 1323, 1330. While the Federal Circuit in

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Ultramercial overturned the District Court’s ruling and found that the claims were directed at

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statutory subject matter, it did so without claim construction. Id.

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Moreover, Plaintiff’s argument that a court should not decide claim construction issues on

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a motion to dismiss is a red herring. (Opp. at 6-7.) Google is not proposing that the Court should

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conduct claim construction as part of a determination of this motion; rather, Google’s position is

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that claim construction is simply not necessary in this instance. Here there are no claim terms

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requiring construction for the Court to rule on the validity of the ‘459 patent under § 101. The

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most telling evidence of this is that Plaintiff – while devoting a long section of its Opposition to

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court’s reluctance to reach decisions of claim construction on motion to dismiss is immaterial to
the question of whether claim construction is required for the determination of statutory subject
matter (i.e., a question of law) on a motion to dismiss.

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the “need” for claim construction prior to deciding this matter – fails to point out a single specific

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term that requires construction. Plaintiff points to no reason claim construction is necessary in

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this matter, for the simple reason that it is not. Google’s motion is not premature and does not

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require claim construction for the Court to reach conclusion.

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B.

Determination Of Google’s Motion Does Not Require Discovery, Nor The
Application Of The “Clear And Convincing” Standard, Because There Are No
Disputed Facts

Likewise, Plaintiff’s arguments that further unspecified factual and expert determinations

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are required before ruling on this motion fall flat. (Opp. at 7.) In its Opposition, Plaintiff

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correctly points out that a determination of invalidity under 35 U.S.C. § 101 is a question of law.

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(Opp. at 3) (citing In re Bilski, 545 F.3d 943, 950 (Fed. Cir. 2008) (“Bilski I”).) Plaintiff then

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cites In re Comiskey for the proposition that the issue of invalidity may nevertheless “turn on

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subsidiary factual issues.” (Opp. at 3) (quoting In re Comiskey, 554 F.3d at 975.) However, the

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full quote from Comiskey is instructive: “[w]hile there may be cases in which the legal question

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as to patentable subject matter may turn on subsidiary factual issues, Comiskey has not identified

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any relevant fact issues that must be resolved in order to address the patentability of the subject

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matter of Comiskey’s application.” In re Comiskey, 554 F.3d at 975. Such is the case here.

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Plaintiff has not and cannot point to any facts outside the judicially noticeable patent and file

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history that would even be relevant to this inquiry.

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Plaintiff’s repeated reference in its Opposition to the “clear and convincing” evidentiary

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standard for establishing that a patent is invalid is another red herring. This standard only applies

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to disputed factual matters, and, as discussed above, there are no facts in dispute in this matter.

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Accordingly, because all that remains is for the Court to apply the law to the undisputed facts in

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this case, the question of what standard of proof applies is moot. See, e.g., Bancorp Servs., L.L.C.

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v. Sun Life Assur. Co. of Can., No. 00-1073, 2011 U.S. Dist. LEXIS 14272, at *9 (E.D. Mo. Feb.

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14, 2011) (“[Plaintiff] argues that to establish invalidity [Defendant] must present clear and

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convincing evidence of facts underlying the invalidity. However, whether asserted claims are

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invalid for failure to claim statutory subject matter under 35 U.S.C. § 101 is a question of law.”)

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(citing In re Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009)); Prometheus Labs. v. Mayo
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Collaborative Servs., No. 04-1200, 2008 U.S. Dist. LEXIS 25062, at *45-46 (S.D. Cal. Mar. 28,

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2008) (reversed on other grounds) (The “clear and convincing” standard does not apply because

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plaintiff’s arguments “do not represent factual disputes, and instead concern interpretation of the

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claims and the proper application of § 101 to the facts of this case. These are clearly questions of

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law, and are thus appropriate for summary judgment.”).
Google’s Motion is timely because there are no terms requiring construction by the Court

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and there are no factual issues in dispute. In the interest of saving this Court and the parties a

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great deal of time and expense in litigating a patent that is invalid, Google requests that the Court

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reach the substance its Motion.

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III.

PLAINTIFF’S SUBSTANTIVE ARGUMENTS ARE WITHOUT MERIT

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A.

The Prosecution History Supports Google’s – Not Plaintiff’s – Position

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As the prosecution history and Google’s Opening Brief make clear, the limited back-and-

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forth between the Patent Examiner and the patentee regarding the § 101 rejection ended when the

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patentee took the Patent Examiner’s suggestion and amended its claims to include the language “a

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computer implemented method.”2 At no time during the prosecution did the patentee dispute the

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§ 101 rejection. Under the guidance of recent case law, it is clear that the allowance of the ’459

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patent based only on the addition of the phrase “a computer implemented method” was in error.

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Plaintiff’s allegation that the PTO would somehow arrive at the same result today in

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analyzing this question as it did back in 2005, prior to the Bilski v. Kappos, 130 S. Ct. 3218

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(2010) (“Bilski II”) decision, is spurious. (Opp. at 24.) As discussed at length in Google’s

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Opening Brief, the Patent Examiner correctly identified the claims as being directed towards non-

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patentable subject matter. (Mot. at 2-3.) The only “cure” implemented to address this issue by

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In footnote 2 of its Opposition, Plaintiff points out the Google uses the words “a computerimplemented method” as part of the preamble of at least one of Google’s own patents in an
attempt to suggest some inconsistency between Google’s arguments in its Motion and between its
own real-world practice. Plaintiff’s argument is sophistry. Google does not argue that a claim
should not contain the words “a computer-implemented method;” rather, Google argues that,
absent additional elements within the claims themselves, the mere recitation of the words in the
preamble is not sufficient to meet the machine prong of the machine-or-transformation test.

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the patentee was to add the phrase “computer implemented method” to each of the independent

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claims. The recent cases dealing with patentable subject matter under § 101 make clear that

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simply taking – as the patentee in this instance did – an abstract idea and adding the phrase “a

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computer implemented method” does not make the abstract idea patentable. See, Mot. at 8-9. If

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the application leading to the issuance of the ’459 patent were to be prosecuted today, and if the

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Patent Examiner, as she did here, were to identify that the claims are directed to an abstract idea,

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Plaintiff cannot realistically expect this Court to believe that merely adding the words “a

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computer implemented method” would resolve the rejection. It would not.

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Nor does the subsequent prosecution history — i.e., the back-and-forth that occurred after

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the “resolution” of the § 101 rejection — change this analysis. Additional amendments to the

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claims were made by the patentee after the Patent Examiner withdrew her objection relating to

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§ 101. All of these amendments were done to overcome the examiner’s objections under

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35 U.S.C. §§ 102 and 103 (i.e., objections relating to the prior art identified by the Patent

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Examiner as related to the patentee’s application). In short, the subsequent back-and-forth

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between the patentee and the Patent Examiner and the resulting amendments had nothing to do

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with the Patent Examiner’s initial rejection under § 101 (which had already been withdrawn at

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that point of the prosecution) and did nothing to obviate or affect the § 101 analysis.

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As Google points out in its Opening Brief, because the issue raised here is a question of

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law, the prosecution history corroborates that the patent claims are invalid for failure to claim

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patentable subject matter. The prosecution history provides insight into where the Patent

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Examiner and patentee went wrong during the prosecution of this patent in trying to cure the

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§ 101 deficiency. It is useful for this Court to understand (with the benefit of further clarification

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from the Supreme Court on the question of patentable subject matter) how the Patent Examiner

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allowed an invalid patent to issue before the Bilski cases provided more guidance on this issue.

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Here, as the prosecution history demonstrates, in attempting to cure the § 101 objection correctly

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raised by the examiner in the first instance, Plaintiff adopted (and the Patent Examiner allowed) a

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cure, that under recent case authority, fails as a matter of law.

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B.

Plaintiff Misapplies The Machine-Or-Transformation Test

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Under Bilski II, the machine-or-transformation is an appropriate – although not

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exclusive – test to analyze the question of patentable subject matter. Plaintiff misapplies the test

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to conclude that the claims of the ’459 patent pass both prongs of the test. The reality is that the

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claims pass neither.

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1.

The Claims Of The ’459 Patent Are Not Tied To A Machine

The machine prong of the machine-or-transformation tests posits a simple question: are

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the claims tied to “a particular machine or apparatus.” Bilski I, 545 F.3d at 954 (emphasis

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added). As subsequent cases have clarified and expounded, the answer to this question is

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negative where – as here – the claims are simply tied to, without more, a general purpose

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computer. See CLS Bank Int'l v. Alice Corp. Pty, Ltd., No. 07-974, 2011 U.S. Dist. LEXIS

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23669, at *43 (D.D.C. Mar. 9, 2011) (“The Court concludes that nominal recitation of a general-

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purpose computer in a method claim does not tie the claim to a particular machine or apparatus or

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save the claim from being found unpatentable under §101.”); Bancorp Servs., L.L.C. v. Sun Life

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Assur. Co. of Can., No. 00-1073, 2011 U.S. Dist. LEXIS 14272, at *26-27 (E.D. Mo. Feb. 14,

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2011) (“The claims do not refer to a specific machine by reciting structural limitations that

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narrow the computer implemented method to something more specific than a general purpose

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computer [or] recite any specific operations performed that would structurally define the

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computer.”) (internal quotations omitted); Graff/Ross Holdings LLP v. Fed. Home Loan Mortg.

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Corp., No. 07-796, 2010 U.S. Dist. LEXIS 141399, at *18-19 (D.D.C. Aug. 27, 2010) (“The

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undersigned finds that independent claim 101 is not drawn to patentable subject matter because it

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recites nothing more than an abstract idea on a general purpose computer.”); DealerTrack, Inc. v.

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Huber, 657 F. Supp. 2d 1152, 1156 (C.D. Cal. 2009) (“The Court finds that none of these devices

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constitutes a ‘particular machine’ within the meaning of Bilski. The ’427 Patent does not specify

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precisely how the computer hardware and database are ‘specially programmed,’ and the claimed

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central processor is nothing more than a general purpose computer that has been programmed in

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some unspecified manner.”); Fuzzysharp, 2009 U.S. Dist. LEXIS 115493 at *12-13 (“The salient

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question is not whether the claims are tied to a computer. Rather, as [Bilski I] makes clear, the
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question is whether the claims are ‘tied to a particular machine.’”) (citing Bilski I, 545 F.3d at

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961); see also Glory Licensing LLC v. Toys “R” Us, Inc., 2011 U.S. Dist. LEXIS 51888, *9-11

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(D.N.J. May 16, 2011) (unpublished opinion) (finding that claims that merely recite a “first

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computer” and “another computer” fail the machine prong of the machine-or-transformation test).

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In its Opposition, Plaintiff argues “[t]he system could not be implemented without the use

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of the computer: the very heart of the invention is to categorize and label network pages (e.g.

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Internet web pages).” (Opp. at 17.) This statement is, at best, half correct. The “very heart” may

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be to categorize and label network pages, but the categorizing and labeling described in the

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claims does not require a computer. Claim 1, which is illustrative of the other claims of the ’459

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patent, has steps for providing a list of categories, assigning a network page to a list of categories,

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providing a label to a network page, and controlling usage of the network page using the label.

12

(The ’459 patent, 12:24-38.) None of these steps explicitly or implicitly require the use of a

13

computer. In fact, the Patent Examiner made this same observation in her initial § 101 rejection:

14

“Note as presently written the claim simply recites a series of steps [of] an abstract idea that

15

can be implemented with a pen and paper.” Maikish Decl., Ex. 6 (emphasis added). Because

16

the claims do not mention a particular machine or apparatus and because the claims do not require

17

the use of a particular computer, the claims do not meet the machine prong of the machine-or-

18

transformation test.

19

In a similar vein, Plaintiff argues that “. . . in the context of the Internet, the claimed

20

inventions may run on one or more server machines, or more specifically, Web servers.” (Opp. at

21

15.) Plaintiff goes on to argue that “[t]he inventions of the ‘459 Patent, to the contrary, not only

22

explicitly recite that the inventions are ‘computer implemented,’ but the computer (e.g., a web

23

server in the context of the Internet), which consists of hardware and software, is essential to the

24

inventions.” (Opp. at 17.) Plaintiff’s argument, however, makes the same mistakes the above-

25

cited cases specifically counsel against. The claims are not directed to “a particular machine” as

26

the machine-or-transformation test requires. Here, Plaintiff’s argument that the claims might run

27

on “server machines” or “web servers” is no less problematic than saying that the claims run on

28

“a computer.” Plaintiff merely substituted the notion of a general purpose computer for a general
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purpose web server. As pointed out above, this argument has been soundly rejected by various

2

courts and this Court should do so here.

3

Perhaps the most telling indication that Plaintiff’s argument with respect to the machine

4

prong of the machine-or-transformation test is incorrect is Plaintiff’s complete inability to point to

5

anything in the claims that firmly tie the claims to a particular machine or apparatus. Plaintiff

6

would have this Court, in contradistinction to well-established case law, ignore the plain language

7

of the claims (which recite no particular machine or apparatus) and essentially read-in an element

8

of a “particular machine.” However, because no such element is present in the claims, the claims

9

fail the machine prong of the machine-or-transformation test. Because the claims do not

10

explicitly or implicitly require a particular machine, the claims fail the machine prong of the

11

machine-or-transformation test.

12

2.

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

The Claims Of The ’459 Patent Do Not Transform Network Pages Into A
Different State Or Thing: The Claims Start With A Network Page And End
With A Network Page

Plaintiff’s Opposition misconstrues what it means to be transformative. As Bilski I clearly
articulates, to be transformative under the transformation prong requires that the claims
“transform an article into a different state or thing.” 545 F.3d at 954. Plaintiff argues that the
claims take a “network page” and “transform” that page by adding a label to it. (Opp. at 18-19.)
Taking Plaintiff’s description of the technology of the ’459 patent at face value, merely labeling
an article does not transform that article into “a different state or thing” as required by the test.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)
(“The mere collection and organization of data regarding credit card numbers and Internet
addresses is insufficient to meet the transformation prong of the test. . . .”); In re Ferguson, 558
F.3d 1359, 1364 (Fed. Cir. 2009) (“Nor do Applicants’ methods, as claimed, transform any article
into a different state or thing. At best it can be said that Applicants’ methods are directed to
organizing business or legal relationships in the structuring of a sales force (or marketing
company).”). There is no transformation here; the claims start with a network page and end with
a network page.

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Trying to present this same argument from a different angle, Plaintiff argues that the

2

claims are transformative because “. . . the methods [of the ’459 patent] transform network pages

3

through the use of a ‘categorization label’ so that use of the page is restricted to the category or

4

categories to which the page is assigned, including copyright status.” (Opp. at 18.) The adding of

5

a label of the kind discussed in the claims to a network page is exactly the same kind of

6

manipulation that Bilski I expressly decries as not being transformative. As Bilski I informs,

7

“[p]urported transformations or manipulations simply of public or private legal obligations or

8

relationships, business risks, or other such abstractions cannot meet the test because they are not

9

physical objects or substances, and they are not representative of physical objects or substances.”

10

545 F.3d at 963. This addition of a label relating to copyright status of a network page is a

11

manipulation of a legal obligation (i.e., the copyright status) and/or of abstract categorization.

12

This kind of transformation is not enough to meet the transformation prong of the test under

13

Bilski I.

14

Plaintiff, relying on the pre-Bilski case In re Abele, 684 F.2d 902 (CCPA 1982), argues

15

that the method recited in the claims of the ’459 patent is analogous to the transformation that

16

takes place in the patent-in-suit in Abele in which “raw data” is transformed into a visual

17

depiction of an object. The Plaintiff’s reliance on Abele is misplaced. When faced with similar

18

arguments regarding Abele as offered by Plaintiff here, the court in Bancorp Servs., L.L.C. v. Sun

19

Life Assur. Co. of Can., 2011 U.S. Dist. LEXIS 14272, at *30-31 (E.D. Mo. Feb. 14, 2011),

20

explained:

21
22
23
24
25
26
27

The invention at issue [in Abele] was directed to an improvement in computed
tomography that reduced exposure to x-rays while improving the reliability of
the image. Several claims recited a process of graphically displaying variances
of data from average values; these were determined to be invalid as directed
solely to a mathematical algorithm. Another claim was found to be valid
because it specified that the data were “x-ray attenuation data produced in a twodimensional field by a computed-tomography scanner.” “This data clearly
represented physical and tangible objects, namely the structure of bones, organs,
and other body tissues. Thus, the transformation of that raw data into a particular
visual depiction of a physical object on a display was sufficient to render that
more narrowly-claimed process patent-eligible.” . . . Unlike the valid claims in
Abele and Abstrax, the claims here do not transform the raw data into anything
other than more data and are not representations of any physically existing
objects. The “concepts of fetching and processing data” are not patentable

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processes but are “attempts to patent a mathematical algorithm - converting a
value in one format to a value in another format.”

2

(citations omitted). The purported transformation of the ’459 patent similarly is not saved by

3

reference to Abele. The claims of the ’459 patent take a network page and allow that page to be

4

labeled. That the network page is, after the application of the claims of the ’459 patent, a labeled

5

network page is not analogous the kind of transformation that the court in Abele found took place

6

when raw data was converted into a visual depiction of an object.

7

Plaintiff’s final argument that the claims are transformative because the claims change

8

“the underlying code that makes up the pages” is spurious. (Opp. at 19.) Such a purported

9

“transformation,” as discussed above does not constitute a physical transformation as required

10

under Bilski I. More importantly, however, the machine-or-transformation test is appropriately

11

applied to the claims of the patent. There is no element in any of the claims of the ’459 patent

12

that discusses changing or modifying of source code. See, e.g., Ass’n for Molecular Pathology v.

13

United States PTO, 653 F.3d 1329, 1356 (Fed. Cir. 2011) (refusing similar attempts by a plaintiff

14

to read in additional transformative steps not actually present in the claims where the plaintiff

15

argued that additional steps “necessarily precede[d]” certain steps present in the claims).

16

Plaintiff’s similar attempt to read in modification of the network page code should rejected.

17

Because any purported transformations that are occurring here are not transforming the

18

network pages into “a different state or thing” and because the purported transformation does not

19

act upon “physical objects or substances,” the ’459 patent’s claims fail the transformation prong

20

of the machine or transformation test.

21

C.

Plaintiff’s Attempt To Align Its Claims With The Supreme Court’s Holding In
Diehr Fails

22
23
24
25
26
27
28

Plaintiff relies on the Supreme Court’s reasoning in Diamond v. Diehr, 450 U.S. 175
(1981), to argue that the claims of the ’459 patent are not an abstract idea. Diehr, however, is
inapposite.
The invention in Diehr was directed to a method of curing rubber that was controlled by
computer program utilizing a particular, and well-known, mathematical formula. By repeatedly
applying the formula, the method of the patent allowed for a more accurate process for curing
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rubber. Diehr, 450 U.S. 175 (1981); see also, Bilski I, 545 F.3d at 953. The core issue in Diehr

2

was whether the use of a well-known mathematical formula rendered the claim invalid as directed

3

toward unpatentable subject matter. The Supreme Court found that it was not invalid because the

4

specific use to which the formula was directed was new. In other words, Diehr was not seeking

5

to patent all uses of the formula, only its particular use in a particular set of steps laid out in the

6

Diehr patent that resulted in cured rubber products. Accordingly, Diehr is inapposite to the

7

subject matter of ’459 patent because the ’459 patent is not directed towards the use of a

8

mathematical formula to transform a physical substance.
D.

9
10
11
12
13
14
15

During the course of prosecution, the Patent Examiner rejected the claims of the ’459
patent as directed towards an abstract idea capable of being performed “with a pen and paper.”
See Mot. at 2-3. Plaintiff attempts to deflect from this fact and rebut Google’s argument that the
patent is directed to unpatentable mental steps (i.e., a sub-category of abstract idea) through
reliance on the Federal Circuit decisions in Ultramercial and Research Corp. Techs. Such
reliance is misplaced.3

16

1.

17
18
19
20
21

Plaintiff Fails To Rebut The Examiner’s Conclusion That The Claims Are Directed
To An Abstract Idea Capable Of Being Performed With “Pen And Paper”

Plaintiff’s Reliance On Ultramercial Is Misplaced

Plaintiff attempts to liken its claims to the claims of the patent-in-suit in the Federal
Circuit’s recent Ultramercial decision. (Opp. at 10-12.) The claims at issue in the Ultramercial
decision relate to a purportedly complex algorithm for “distributing copyrighted products over the
Internet where the consumer receives a copyrighted product for free in exchange for viewing an
advertisement, and the advertiser pays for the copyrighted content.” Ultramercial, LLC v. Hulu,

22
23
24
25
26
27

3

Google notes that Plaintiff’s Opp. makes passing reference to the U.S. Patent Office’s “Interim
Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v.
Kappos,” 75 Red. Reg 43, 992 (July 27, 2010) (Opp. at 9, Ex. B to the Folger Decl.). While the
PTO’s guidance on this issue is not binding on this Court, Google’s position offered in Motion
and in this Reply, nevertheless, fully conform to the PTO’s guidance.

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LLC, 657 F.3d 1323, 1324 (Fed. Cir. 2011). The elements of the exemplar claim discussed in the

2

decision are:
(1) receiving media products from a copyright holder, (2) selecting an
advertisement to be associated with each media product, (3) providing said
media products for sale on an Internet website, (4) restricting general
public access to the media products, (5) offering free access to said media
products on the condition that the consumer view the advertising, (6)
receiving a request from a consumer to view the advertising, (7)
facilitating the display of advertising and any required interaction with the
advertising, (8) allowing the consumer access to the associated media
product after such display and interaction, if any, (9) recording this
transaction in an activity log, and (10) receiving payment from the
advertiser.

3
4
5
6
7
8
9

Id. at 1328.

10

The claims at issue in the Ultramercial are distinguishable from the claims of the ’459

11

patent. As indicated in Google’s Opening Brief, each of the claim elements of the ’459 patent

12

(and collectively all of the claims) can be performed in a person’s head (i.e., constitute a mental

13

process), unlike those elements recited above with respect to Ultramercial claims. See Mot. at

14

12-14. With respect to the patent claims in the Ultramercial case, it is not possible in one’s head

15

to, for example, “provid[e] the media product for sale at an Internet website” or to “record[] the

16

transaction event to the activity log.” On the other hand, the very simple claims of the ’459

17

patent are susceptible to being performed in one’s head. (Mot. at 12-14.) The more detailed

18

claims at issue in the Ultramercial decision were found by the Federal Circuit to contain enough

19

substance and specificity to meet the requirements of § 101 but as detailed in Google’s Opening

20

Brief and in this Reply, Plaintiff’s claims in the instant matter are lacking such substance. In

21

short, Plaintiff’s attempt at analogy to the more complete claims in the Ultramercial patent-in-suit

22

falls short.

23
24

2.

Plaintiff’s Reliance On Research Corp. Techs. Is Misplaced

In Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 864 (Fed. Cir. 2010), the

25

panel overturned a lower court decision that certain of the various asserted claims were invalid as

26

directed toward an abstract idea. The relevant claims in that matter were directed to a “process

27

for rendering a halftone image.” Research Corp. Techs. at 868 (internal quotations omitted). In

28

that matter, the panel determined, likening its holding to the Supreme Court’s determination in
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Diehr, that the patentee was not seeking patent protection for mathematical formula, but rather

2

was seeking “patent protection for a process of halftoning in computer applications.” Id. at 869

3

(internal quotations omitted) (citing Diamond v. Diehr, 450 U.S. 175, 187 (1981)). In the instant

4

matter, there is no allegation that Plaintiff’s patent seeks to impermissibly claim a mathematical

5

formula being applied for transformative purposes; accordingly, Plaintiff’s attempt to analogize

6

its claims to those at issue in Research Corp. Techs. (similar to its attempts to analogize to Diehr)

7

falls short.

8
9
10
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12
13
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22
23
24
25
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27

3.

Like In CyberSource And Ass’n For Molecular Pathology, The ’459 Patent
Impermissibly Seeks To Patent “Pen And Paper” Claims

Google is not alone in its argument that the claims of the ’459 patent are directed to an
abstract idea. The Patent Examiner herself reached the same conclusion explaining that “the
claim simply recites a series of steps [of] an abstract idea that can be implemented with pen and
paper.” Maikish Decl., Ex. 6. It is only through flawed reliance on the notion that adding the
words “computer implemented” to the preamble of the claims somehow made the claims
patentable that the patent ultimately issued. In seeking to refute that the claims of the ’459 patent
are not directed to an abstract idea, Plaintiff disingenuously focuses on the patent’s specification
and not on the claim language itself. (Opp. at 12-13.) Even if one agrees that the discussion cited
by Plaintiff from the patent specification is sufficiently non-abstract, that the patent specification
discusses such things as Internet searching and the problems in users finding relevant information
on the Internet, does not somehow, as Plaintiff states, make the claims directed at “‘functional
and palpable applications in the field of computer technology.’” (Opp. at 13 quoting Research
Corp. Techs., 627 F.3d at 868-69.)
The notion that a party cannot patent that which can be performed through mental process
has recently been reaffirmed by the Federal Circuit in both CyberSource and in Ass’n for
Molecular Pathology. As discussed in Google’s Opening Brief (Mot. at 12-14), the Federal
Circuit’s recent decision in CyberSource is instructive here. In CyberSource, the Federal Circuit
upheld a district court’s decision that the patent-in-suit was invalid under 35 U.S.C. § 101. The
exemplar claim in that matter reads:

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1
2
3
4
5

3. A method for verifying the validity of a credit card transaction over the
Internet comprising the steps of:
a) obtaining information about other transactions that have utilized an
Internet address that is identified with the [ ] credit card transaction;
b) constructing a map of credit card numbers based upon the other
transactions and;
c) utilizing the map of credit card numbers to determine if the credit card
transaction is valid.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (citing the

6
patent-in-suit). After affirming the district court’s finding that the claims failed the machine-or7
transformation test, the panel went on to reaffirm prior authority relating to the unpatentability of
8
mental processes concluding:
9
10
11
12
13
14
15
16
17

Thus, claim 3’s steps can all be performed in the human mind [or by a
human using a pen and paper.] Such a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101. Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational methods which can be performed entirely in the
human mind are the types of methods that embody the basic tools of
scientific and technological work that are free to all men and reserved
exclusively to none.
Id. at 1373 (Fed. Cir. 2011) (internal citations and quotations omitted). The claims of the ’459
patent are no different.
Similarly instructive, is the Federal Circuit’s recent decision in Ass’n for Molecular

18

Pathology, 653 F.3d 1329 (Fed. Cir. 2011). In that matter, certain claims of the patents-in-suit

19

were directed at “comparing” and “analyzing” certain gene sequences. Ass’n for Molecular

20

Pathology, 653 F.3d at 1355. The Federal Circuit upheld the lower court’s finding of invalidity

21
22
23
24
25
26
27
28

under 35 U.S.C. § 101 finding:
We conclude that Myriad's claims to “comparing” or “analyzing” two
gene sequences fall outside the scope of § 101 because they claim only
abstract mental processes. The claims recite, for example, a “method for
screening a tumor sample,” by “comparing” a first BRCA1 sequence from
a tumor sample and a second BRCA1 sequence from a non-tumor sample,
wherein a difference in sequence indicates an alteration in the tumor
sample. '001 patent claim 1. This claim thus recites nothing more than the
abstract mental steps necessary to compare two different nucleotide
sequences: look at the first position in a first sequence; determine the
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nucleotide sequence at that first position; look at the first position in a
second sequence; determine the nucleotide sequence at that first position;
determine if the nucleotide at the first position in the first sequence and the
first position in the second sequence are the same or different, wherein the
latter indicates an alternation; and repeat for the next position.

1
2
3
4

Id. at 1355-1356 (internal citations omitted).

5

Much like comparing two nucleotide sequences as in Ass’n for Molecular

6

Pathology, or obtaining information, constructing a map and using the map as in

7

CyberSource, categorizing network pages can be performed in the human mind. One could

8

label each of the network pages and put it into a pile of other network pages in that category

9

without using a computer or other apparatus except a pen. The claims of the ’459 patent are

10

directed toward mental steps performable with pen and paper and are, accordingly, invalid.

11

E.

Google’s Argument Applies To Each Of The Claims

12

Each of the claims of the ’459 patent are directed towards a “method” of taking a network

13

page, categorizing the page, and labeling the page. There are only three independent claims:

14

Claims 1, 30, and 31. While Google has directed its analysis primarily at the language of Claim

15

1, from a practical point of view and for the purposes of the section 101 analysis, there are no

16

material differences between the three independent claims. Claim 30 provides the additional

17

limitation over Claim 1 of providing a categorization code for labeling the network page with a

18

categorization label, “wherein said categorization label indicates a set of categories and

19

subcategories to which the network page is assigned.” Claim 31 is identical to Claim 1 except

20

that Claim 31 recites different categories. Plaintiff recites the text of these independent claims,

21

but makes no arguments that one is different from the other in any way that is relevant to the

22

section 101 analysis (or otherwise). (Opp. at 2-4.) These additional limitations do not direct the

23

claims to a more specific machine or apparatus or change the nature of any claimed

24

“transformation.” Claims 30 and 31, like Claim 1, are just a categorization method that could be

25

done with pen and paper as the Examiner found and as patentee did not dispute.

26

Dependent Claims 2-15 simply specify the kinds of categories that can be included in the

27

list of categories recited in claim 1 and, thus, do not alter the section 101 analysis. Dependent

28

Claims 16-18 add the limitation of “providing an indicium” for each of the categories comprised
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of letters (Claim 18) or an icon (Claim 17). Any indicium could be added to the page using a pen,

2

so these minor changes keep these claims firmly within the “pen and paper” realm regardless of

3

the construction of “providing an indicium.” Dependent Claims 19-22 add the limitation of

4

“providing a categorization code that can be used to label the page” with and without “indicium”

5

for the categories. It is difficult to imagine a limitation more firmly capable of being carried out

6

with a pen and paper than that of labeling a page with a code as millions of people, such as

7

administrative assistants, have been doing with pen and paper for decades. Dependent Claims 23-

8

28 further define the categorization label and categorization code and do not change the § 101

9

analysis. Finally, dependent Claim 29 provides for the list of categories to be provided on a

10

graphical user interface. Using pen and paper one could, and many people have, listed categories

11

with “checkboxes” in which a person could select categories for their page. The specification

12

itself shows a “preferred graphical user interface used for categorizing [a page]” in Figures 1 and

13

2 that can, and in these examples has, been implemented on pen and paper.
Because none of the claims are directed to a particular machine or apparatus, none of the

14
15

claims transform a network page into a different state or thing, and all of the claims merely

16

represent the abstract concept of categorizing a network page and applying a label, none of the

17

claims are directed at patentable subject matter and accordingly all of the claims should be ruled

18

invalid. Plaintiff’s argument that Google fails to consider the claims of the ’459 patent as a whole

19

because Google focuses “principally on the ‘computer implemented method’ limitation” misses

20

the mark. (Opp. at 13.) As discussed above and in its opening Brief, Google’s argument is not

21

focused on the fact the claims recite “a computer implemented method.” Rather, Google’s

22

argument is that each of the claims of the patent are invalid as directed towards an abstract idea

23

and are not “saved” from this fate by an insubstantial reference to a computer in the preamble of

24

the three independent claims.

25

IV.

CONCLUSION

26

Google’s Motion for Invalidity of the ’459 patent is ripe for adjudication. While Google

27

acknowledges the presumption of validity afforded to issued patents under 35 U.S.C. § 282, that

28

presumption is clearly overcome where, as here, the Patent Office’s error in allowing the patent to
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issue is manifest. Whether one analyzes the issue through Bilski’s machine-or-transformation

2

test, comparison to the Supreme Court’s decisions in Benson, Flook, and Diehr, through

3

exposition of what is means to be an “abstract idea”, or some amalgam of such tests, the claims of

4

the ’459 patent are directed to an abstract idea. The claims passing reference to being

5

implemented on a computer does not change this fact. Accordingly, the ’459 patent is invalid.

6

Google’s Motion should be granted.

7
Dated: January 13, 2012

Respectfully submitted,

8
KAYE SCHOLER LLP
9
10

By:

11
12

/s/ Michael J. Malecek
Michael J. Malecek
Kenneth M. Maikish
Attorneys for Defendant
GOOGLE INC.

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