IconFind, Inc. v. Google, Inc.

Filing 79

ORDER signed by Judge Garland E. Burrell, Jr. on 1/18/2012 DENYING 73 Motion for Judgment on the pleadings. (Michel, G)

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IN THE 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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2:11-cv-0319-GEB-JFM
ORDER DENYING GOOGLE’S MOTION
FOR JUDGMENT ON THE
PLEADINGS*

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Defendant Google, Inc. (“Google”) moves under Federal Rule of

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Civil

Procedure

(“Rule”)

12(c)

for

judgment

on

the

pleadings

of

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invalidity of the asserted patent in this patent infringement action.

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(Google’s Renewed Motion for Judgment on the Pleadings of Invalidity of

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U.S. Patent No. 7,181,459 (“Mot.”), ECF No. 74.) Google argues that the

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patent-in-suit, U.S. Patent No. 7,181,459 (“the ‘459 Patent”), is

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invalid under 35 U.S.C. § 101 for claiming unpatentable subject matter

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“because the claims [are] directed towards an abstract idea that, as a

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matter of law, is not eligible for patent protection.” (Mot. 3:16-18.)

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Plaintiff Iconfind, Inc. (“Iconfind”) opposes Google’s motion, arguing

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“that the claims of the patent-in-suit are directed towards much more

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than an abstract idea and meet the requirements of Section 101.”

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(Plaintiff’s Response in Opposition to Defendant’s Renewed Motion for

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*

argument.

This matter is deemed suitable for decision without oral
E.D. Cal. R. 230(g).
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Judgment on the Pleadings (“Opp’n”) 1:16-17, ECF No. 77.)

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Google also requests that the Court take judicial notice of

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the ‘459 Patent’s prosecution history from the United States Patent and

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Trademark Office. Iconfind does not oppose this request. Since the

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prosecution history is a public record that is “capable of accurate and

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ready

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reasonably be questioned,” the request is granted. Fed. R. Evid. 201.

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Rule 12(c) prescribes that “[a]fter the pleadings are closed

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. . . a party may move for judgment on the pleadings.” “Judgment on the

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pleadings is proper when the moving party clearly establishes on the

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face of the pleadings that no material issue of fact remains to be

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resolved and that it is entitled to judgment as a matter of law.” Hal

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Roach Studios, Inc. v. Richard Feiner & Co., 896 F.2d 1542, 1550 (9th

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Cir. 1990).

determination

by

resort

to

sources

whose

accuracy

cannot

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At issue is whether United States Patent Number 7,181,459,

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titled “Method of Coding, Categorizing, and Retrieving Network Pages and

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Cites,” claims patentable subject matter under 35 U.S.C. § 101 or is an

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unpatentable abstract idea.

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The following brief description of the invention is provided
in the ‘459 Patent’s Abstract:
The invention includes a method for categorizing
pages on a network, including the steps of
providing a list of categories and providing the
opportunity to assign a page to one or more
categories. . . . The method also includes a
categorization code that can be used to label a
page with a categorization label indicating the
categories to which the page is assigned. The
invention also includes a method for searching for
information on a network. The steps include
providing an opportunity to limit a search to
categories including commerce and information,
subject matter, file type, and copyright status,
and providing an opportunity to limit the search by
keyword.
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(‘459 Patent, at [57].) The “Field of the Invention” is described in the

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specification of the ‘459 Patent as follows: “The present invention

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relates

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information on a network and, more specifically, to categorizing and

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searching Web pages on the Internet.” (‘459 Patent col. 1 l.21-25.)

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There are 31 claims in the ‘459 Patent, claims 1, 30 and 31 are

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independent claims, claims 2-29 are dependent. Claim 1 provides the

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following:

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generally

1.

to

methods

for

categorizing

and

searching

for

A computer implemented method of categorizing a
network page, comprising:

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providing a list of categories, wherein said list
of categories include a category for transacting
business and a category for providing information,
and wherein said list of categories include a
category based on copyright status of material on a
page;

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assigning said network page to one or more of said
list of categories;

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providing a categorization label for the network
page using the copyright status of material on the
network page; and

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controlling usage of the network page using the
categorization label and the copyright status of
the network page.

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(‘459 Patent col.12 l.24-38.)
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35

U.S.C.

§

101

prescribes

the

following

categories

of

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inventions that are eligible for patent protection: “Whoever invents or
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discovers

any

new

and

useful

process,

machine,

manufacture,

or

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composition of matter, or any new and useful improvement thereof, may
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obtain a patent therefor, subject to the conditions and requirements of
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this title.” 35 U.S.C. § 100(b) defines the term “process” as a
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“process, art, or method, and includes a new use of a known process,
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machine, manufacture, composition of matter, or material.”
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“In choosing such expansive terms . . . modified by the
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comprehensive ‘any,’ Congress plainly contemplated that the patent laws

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would be given wide scope.” Bilski v. Kappos, - - - U.S. - - -, 130 S.

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Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308

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(1980). “In line with the broadly permissive nature of § 101's subject

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matter eligibility principles, judicial case law has created only three

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categories of subject matter outside the eligibility bounds of § 101 –

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laws of nature, physical phenomena, and abstract ideas.” Ultramercial,

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LLC v. Hulu, LLC, 657 F.3d 1323, 1326 (Fed. Cir. 2011) (emphasis added)

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(citing Bilski, 130 S. Ct. at 3225).

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“[M]ental

processes

–

or

processes

of

human

thinking

–

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standing

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application.” In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009). As a

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result, a method claim “that can be performed by human thought alone is

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merely an abstract idea and is not patent-eligible under § 101.”

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Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.

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Cir. 2011) (quotation omitted).

alone

are

not

patentable

even

if

they

have

practical

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However, when analyzing a patent to determine whether it is

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directed to an abstract idea, “this disqualifying characteristic should

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exhibit

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categories of eligible subject matter and the statutory context that

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directs primary attention on the patentability criteria of the rest of

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the Patent Act.” Ultramercial, 657 F.3d at 1327 (quotation omitted).

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“The application of an abstract idea to a ‘new and useful end’ is the

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type of invention that the Supreme Court has described as deserving of

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patent protection.” Id. (citing Gottschalk v. Benson, 409 U.S. 63, 67

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(1972)).

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improvements to technologies in the marketplace are not likely to be so

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abstract that they override the statutory language and framework of the

itself

In

so

manifestly

addition,

as

to

“inventions

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override

with

the

specific

broad

statutory

applications

or

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Patent Act.” Research Corp. Technologies, Inc. v. Microsoft Corp., 627

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F.3d 859, 869 (quotation omitted). Further, “[t]he eligibility exclusion

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for purely mental steps is particularly narrow.” Ultramercial, 657 F.3d

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at 1329-30 (emphasis in original) (citation omitted).

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Google argues that the patent is directed to “unpatentable

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mental processes” because “distilled to their constituent parts, the

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substantive steps of the claims are: 1. Providing a list of categories;

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2. Assigning a network page to the ‘list of categories;’ 3. Providing a

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label to the network page using the copyright status of the material on

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the page; and 4. Controlling usage based on the label and the copyright

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status of the page.” (Mot. 12:22-28, 13:1-2.) Further, Google argues

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that “the claims of the patent do nothing more than recite an abstract

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idea [because when v]iewed in their best light, the claims of the ‘459

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patent are directed at the idea of categorizing a ‘network page’ by the

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page’s copyright status and whether the page is related to ‘transacting

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business’ or ‘providing information’ and then controlling access to the

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network page based on its characterizations.” (Mot. 14:18-22.)

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However, Google has not shown under the applicable “clearly

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established” standard of Rule 12(c) that the concepts embodied in the

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‘459 Patent are “so manifestly abstract as to override the statutory

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language of Section 101.” Ultramercial, 657 F.3d at 1330 (quotation

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omitted). Therefore, Google’s motion for judgment on the pleadings is

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denied.

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Dated:

January 18, 2012

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GARLAND E. BURRELL, JR.
United States District Judge

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