IconFind, Inc. v. Google, Inc.

Filing 94

BRIEF - MARKMAN - by IconFind, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C - part 1, # 4 Exhibit C - part 2, # 5 Exhibit C - part 3, # 6 Exhibit C - part 4, # 7 Exhibit C - part 5, # 8 Exhibit C - part 6, # 9 Exhibit D, # 10 Exhibit E, # 11 Exhibit F)(Folgers, Anna)

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WILKE, FLEURY, HOFFELT, GOULD & BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]
400 Capitol Mall, 22nd Floor
Sacramento, CA 95814
Phone: [phone]
Fax: [phone]

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NIRO, HALLER & NIRO
Raymond P. Niro (Admitted Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Admitted Pro hac vice)
[e-mail]
Brian E. Haan (Admitted Pro hac vice)
[e-mail]
Anna B. Folgers (Admitted Pro hac vice)
[e-mail]
181 West Madison, Suite 4600
Chicago, IL 60602-4515
Phone: [phone]
Fax: [phone]

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Attorneys for Plaintiff, IconFind, Inc.

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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF CALIFORNIA

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ICONFIND, INC.,

Case No. 2:11-cv-00319-GEB-JFM
Plaintiff,

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v.

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PLAINTIFF ICONFIND, INC.’S
MARKMAN BRIEF

GOOGLE INC.,

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Defendant.

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TABLE OF CONTENTS

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I.

INTRODUCTION .............................................................................................................. 1

II.

THE ‘459 PATENT ............................................................................................................ 2

III.

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THE ACCUSED GOOGLE INSTRUMENTALITIES ...................................................... 3

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1.
2.

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Google Books.............................................................................................. 6

3.

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Google Picasa.............................................................................................. 4

Knol............................................................................................................. 8

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IV.

APPLICABLE LEGAL STANDARDS ........................................................................... 10

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V.

AGREED CONSTRUCTIONS ........................................................................................ 13

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VI.

ICONFIND'S PROPOSED CLAIM CONSTRUCTIONS ............................................... 14

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A.

Network Page ........................................................................................................ 14
1.

IconFind’s Proposed Construction is Aligned with the ‘459 Patent and Its
Specification ............................................................................................. 14

2.

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Google’s Attempt to Utilize IconFind’s Counsel’s Statements During the
Yahoo! Markman Hearing To Add In a Negative Limitation is Improper 17

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B.

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I.

A set of categories and subcategories to which the network page is assigned ..... 23

D.

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Assigning said network page to one or more of [a plurality of said list of
categories] ............................................................................................................. 19

C.

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Categories related to public domain, fair use only, use with attribution, and
permission of copyright owner needed ................................................................. 26

CONCLUSION ................................................................................................................. 29

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PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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TABLE OF AUTHORITIES
Page(s)

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FEDERAL CASES
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3M Innovative Prop. Co. v. Avery Dennison Corp.,
350 F.3d 1365 (Fed. Cir. 2003) .................................................................................... 11
Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
345 F.3d 1318 (Fed. Cir. 2003) .............................................................................. 11, 13

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Desper Prods., Inc. v. QSound Labs,
157 F.3d 1325 (Fed. Cir. 1998) .................................................................................... 13
Gemstar-TV Guide Int'l, Inc. v. ITC,
383 F.3d 1352 (Fed. Cir. 2004) .............................................................................. 12, 23
Iconfind Inc. v. Yahoo! Inc.,
2009 U.S. Dist. LEXIS 115923 (E.D. Cal. Dec. 14, 2009) (the “Yahoo!
Litigation”) (“Yahoo! Markman Order”) (Exhibit B) ................................... 1, 2, 13, 14
Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363 (Fed. Cir. 2008) .............................................................................. 11, 22
Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323 (Fed. Cir. 2001) .................................................................................... 10
Intervet Inc. v. Merial Ltd.,
617 F.3d 1282 (Fed. Cir. 2010) .................................................................................... 12
Laryngeal Mask Co. Ltd. v. Ambu A/S,
618 F.3d 1367 (Fed. Cir. 2010) ........................................................................ 11, 12, 22
Lava Trading, Inc. v. Sonic Trading Mgmt., LLC,
445 F.3d 1348 (Fed. Cir. 2006) ...................................................................................... 4
Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995) (en banc) ................................................................ passim
Mass. Inst. of Tech. v. Abacus Software,
462 F.3d 1344 (Fed. Cir. 2006) ...................................................................................... 4
Omega Eng'g, Inc. v. Raytek, Corp.,
334 F.3d 1314 (Fed. Cir. 2003) .................................................................................... 12

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PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ passim

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Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298 (Fed. Cir. 1999) .................................................................................... 13
Rexnord Corp. v. Laitram,
274 F.3d 1336 (Fed. Cir. 2001) .................................................................................... 12
SRI Int'l v. Matsushita Elec. Corp.,
775 F.2d 1107 (Fed. Cir. 1985) .................................................................................... 12
SunRace Roots Enter. Co. v. SRAM Corp.,
336 F.3d 1298 (Fed. Cir. 2003) .................................................................................... 13
W.E. Hall Co., Inc. v. Atlanta Corrugating, LLC,
370 F.3d 1343 (Fed. Cir. 2004) .................................................................................... 11

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PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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Pursuant to the Court’s Order on October 7, 2011 (Dkt. No. 72), Plaintiff
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IconFind, Inc. (“IconFind”) hereby provides its Opening Markman Brief.
I.

INTRODUCTION

Plaintiff IconFind, Inc. (“IconFind”) has charged Defendant Google Inc.

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("Google") with infringement of independent claims 1, 30, and 31 and dependent claims

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6, 9, 16, 17, 19, 20, 21, 22, 27, 28 and 29, of U.S. Patent No. 7,181,459 (“the ‘459

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Patent”) (Exhibit A).

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The first step in resolving the issue of infringement is to determine the meaning of

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the disputed terms.

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identifications of claim terms that may require construction.

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On March 28, 2012, the parties exchanged their respective

The parties also agreed to the meaning of four claim terms, all of which were
construed previously in Iconfind Inc. v. Yahoo! Inc., 2009 U.S. Dist. LEXIS 115923
(E.D. Cal. Dec. 14, 2009) (the “Yahoo! Litigation”) (“Yahoo! Markman Order”) (Exhibit

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B). The parties agree and request that this Court adopt those four constructions in total.
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The parties dispute the meaning of four other claim terms. IconFind asserts for
two of these four terms that no specific construction is necessary (“assigning said

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network page to one or more of [a plurality of] said list of categories” and “a set of

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categories and subcategories to which the network page is assigned”) and that the plain

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and ordinary meaning of the terms should apply.

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alternative constructions should the Court decide that construction of these terms is

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required.

IconFind has, however, offered

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IconFind’s proposed construction for the third disputed claim term (“network

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page”) is the same as that adopted by the Court in the Yahoo! Litigation. Google’s

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proposed construction differs from the Court’s construction in that it adds a limitation

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found nowhere in the ‘459 Patent and its corresponding file history (“wherein an image

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on a page does not constitute a page”). As for the remaining disputed claim term,

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(“categories related to public domain, fair use only, use with attribution, and permission

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of copyright owner needed”), the parties dispute the meaning of this term and offer
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slightly different constructions.
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Federal Circuit law requires that patent claims be construed based upon the plain

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and ordinary meaning of the claim terms themselves, consistent with the intrinsic

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evidence of record. IconFind has proposed constructions which abide by this legal

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framework. In contrast, Google has proposed constructions which are not supported by

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the intrinsic evidence of record, much less the plain and ordinary meaning of the claims

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themselves. Google's proposed claim constructions – all of which are presumably sought

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for the sole purpose of supporting Google’s non-infringement contentions – are replete

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with violations of the basic canons of claim construction, and should be rejected by the

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Court.
II.

THE ‘459 PATENT

The inventors of the ‘459 Patent, Mr. Lee H. Grant and Ms. Susan Capizzi,

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recognized in the late 1990s problems associated with the way digital information was
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organized and retrieved. Ms. Capizzi has a master’s degree in Library Science and has

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over twenty-five years of experience as a reference librarian.

Mr. Grant has been

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involved in the telecommunications industry since his graduation with a Bachelors of
PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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Science degree from the University of Michigan in 1978. The team’s ultimate goal was

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to improve the way material on the Internet was categorized in order to improve access to

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its contents.

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The inventions claimed in the ‘459 Patent generally describe a method for
categorizing network pages.

In the context of the Internet, one problem with the

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organization of web pages was the lack of a standardized categorization system for the
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information contained on such web pages. (Exhibit A, ‘459 Patent, Col. 1, ll. 38-48).
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The inventors set out to accomplish their goal by creating a method for categorizing
network pages based upon the material on the page, including whether the pages

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contained commercial or non-commercial information, as well as the copyright status of

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the material on the page. (Exhibit A, 459’ Patent, Col. 3, ll. 8-21).

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The ‘459 Patent, which issued from application No. 10/082,596 (see Exhibit C,

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File History for application No. 10/082,596), claims priority to a number of related patent

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applications:

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 Provisional application No. 60/132,694, filed on May 4, 1999 (“the ‘694
Application”);
 Non-provisional patent application No. 09/565,695, filed on May 3, 2000 (“the
‘695 Application”);
 Provisional application No. 60/311,379, filed on Aug. 9, 2001 (“the ‘379
Application”); and
 Provisional application No. 60/271,041, filed on Feb. 23, 2001 (“the ‘041
Application”).

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III.

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Although claims are not construed to determine whether they cover an accused

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THE ACCUSED GOOGLE INSTRUMENTALITIES

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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method, the Federal Circuit has emphasized that claim construction should be done with

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at least some knowledge of the accused method. Mass. Inst. of Tech. v. Abacus Software,

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462 F.3d 1344, 1350-1351 (Fed. Cir. 2006); Lava Trading, Inc. v. Sonic Trading Mgmt.,

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LLC, 445 F.3d 1348, 1350 (Fed. Cir. 2006). When the Court is deprived of this "vital
contextual knowledge," claim construction runs the risk of taking on the attributes of an

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advisory opinion. Lava Trading, 445 F.3d at 1350. It is therefore entirely appropriate, if
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not necessary, for the Court to have a basic understanding of the Accused Google
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Instrumentalities.
IconFind asserts that three Google instrumentalities infringe the claims of the ‘459
Patent: (1) Google’s Picasa; (2) Google’s Google Books; and (3) Google’s Knol.
1.

Google Picasa

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Google’s Picasa is an online photo management and sharing application. Picasa

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enables users to upload, manage and share their photographs with others online. Picasa

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incorporates into its website the use of the Creative Commons license. As shown below,

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Picasa provides a list of categories for uploaded photos including commercial and

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noncommercial use and a variety of copyright settings:

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The creative commons license is explained in detail on the Picasa website:

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Accordingly, through Google Picasa, Google assigns to network pages one or

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more of the categories or subcategories based upon the user’s selection. The resulting

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web page that is created by Google contains a corresponding categorization label which

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represents the one or more of the categories to which the page has been assigned.

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2.

Google Books

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Google’s Google Books is an online resource that allows users to search for,

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browse and buy or borrow books. Google Books also enables publishers and authors to

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promote and market their books. Google Books incorporates into its website the use of

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Creative Commons licenses. As shown below, through Google Books, Google provides
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a list of categories for uploaded books including commercial and noncommercial use and
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a variety of copyright settings:
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The list of categories is explained in detail on the Google Books website:

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PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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Accordingly, Google assigns to network pages one or more of the categories or
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subcategories based upon the user’s selection. The resulting web page that is created
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contains a corresponding categorization label which represents the one or more of the
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categories to which the page has been assigned:

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3.

Knol

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Google’s Knol is an online knowledge resource that allows users to share and add
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content collaboratively. Knol enables users to upload, manage and share their “knols”

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with others online. Knol incorporates into its website the use of Creative Commons

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licenses. As shown below, Knol provides a list of categories for uploaded “knols”

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including commercial and noncommercial use and a variety of copyright settings:

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Accordingly, Google assigns to network pages one or more of the categories or

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subcategories based upon the user’s selection. The resulting web page that is created by

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PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

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Google contains a corresponding categorization label which represents the one or more of

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the categories to which the page has been assigned:

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IV.

APPLICABLE LEGAL STANDARDS

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Claims are to be interpreted in view of the intrinsic evidence – namely the claims
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themselves, the specification and the prosecution history.

Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). The analytical focus of

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claim construction must begin with and remain centered on the language of the claims

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themselves. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed.

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Cir. 2001). There is a heavy presumption that a claim term carries its ordinary and

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customary meaning to persons of skill in the art at the time of the invention. 3M

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Innovative Prop. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1370 (Fed. Cir. 2003).

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Sometimes the ordinary meaning of a claim term is readily apparent, in which case claim

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construction involves "little more than the application of the widely accepted meaning of
commonly understood words." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.

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2005) (en banc). Indeed, some claim terms are so basic that no further construction is
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required at all. W.E. Hall Co., Inc. v. Atlanta Corrugating, LLC, 370 F.3d 1343, 1350
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(Fed. Cir. 2004).

The context of surrounding words in the claim should also be

considered in determining the ordinary and customary meaning of a disputed claim term.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1325 (Fed. Cir. 2003).

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The claims themselves do not stand alone, but rather are part of a “fully integrated

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written instrument.” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 978).

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Thus, the claims “must be read in view of the specification, of which they are a part.” Id.

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The specification is thus “the primary basis for construing the claims” and has been

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described as "the single best guide to the meaning of a disputed term." Id. The Court

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should never lose sight that while claims must be construed in light of the specification,
limitations from the preferred embodiments or specific examples in the specification

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cannot be read into the claims. Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1370
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(Fed. Cir. 2008) ("[T]his court will not at any time import limitations from the
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specification into the claims."); Laryngeal Mask Co. Ltd. v. Ambu A/S, 618 F.3d 1367
(Fed. Cir. 2010). The Federal Circuit has explained the reasoning behind this:
If everything in the specification were required to be read into the claims,
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or if structural claims were to be limited to devices operated precisely as a
specification-described embodiment is operated, there would be no need for
claims. Nor could an applicant, regardless of the prior art, claim more
broadly than that embodiment … It is the claims that measure the
invention.
SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985). Thus, while
the specification may be used to aid in the interpretation of the claims, it may not be used

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as a source for adding extraneous limitations, even when a patent discloses only a single
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embodiment in the specification. Laryngeal Mask Co. Ltd., 618 F.3d 1367; Gemstar-TV
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Guide Int'l, Inc. v. ITC, 383 F.3d 1352, 1366 (Fed. Cir. 2004). The examples described
and illustrated in the specification are intended to be just that – examples, not claim

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limitations. Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010). As the

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Federal Circuit has long held: "Specifications teach. Claims claim." Rexnord Corp. v.

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Laitram, 274 F.3d 1336, 1344 (Fed. Cir. 2001).

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In addition to consulting the specification, the Court should also consider the

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patent's prosecution history. Phillips, 415 F.3d at 1317 ("[T]he prosecution history can

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often inform the meaning of the claim language by demonstrating how the inventor

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understood the invention and whether the inventor limited the invention."). While the
prosecution history may alter the plain meaning of claim language through the doctrine of

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prosecution history disclaimer, for such disclaimer to attach, the Court must find
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"disavowing actions or statements made during prosecution [which are] both clear and
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unmistakable." Omega Eng'g, Inc. v. Raytek, Corp., 334 F.3d 1314, 1326 (Fed. Cir.
2003). Thus, disclaimer must be express, and not one that arises through mere inference.
SunRace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1306 (Fed. Cir. 2003).
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The intrinsic record, comprising the claims, the specification, and the prosecution

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history, should be examined in every case to determine whether the presumption of

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ordinary and customary meaning of a disputed claim term is rebutted. Arlington, 345

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F.3d at 1325-26. The Court may also rely upon extrinsic evidence, which consists of all
evidence external to the patent and prosecution history, including expert and inventor

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testimony, dictionaries, and learned treatises. Phillips, 415 F.3d at 1317. The Court is
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not prohibited from examining extrinsic evidence, even when the patent document itself
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is clear. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir.
1999). However, extrinsic evidence, including expert testimony, may not be used to vary

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or contradict the otherwise unambiguous meaning of a claim term, Desper Prods., Inc. v.

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QSound Labs, 157 F.3d 1325, 1333 (Fed. Cir. 1998), and is less significant than intrinsic

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evidence in determining the proper claim construction. Phillips, 415 F.3d at 1317.

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V.

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The parties have agreed to the constructions of the following terms, which adopt

AGREED CONSTRUCTIONS

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constructions set forth by the court in the Yahoo! Litigation.

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Term
category for
transacting
business
category for
providing
information

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categorization
label
categorization

Construction
A category for network pages that
have as a purpose transacting
business
A category for network pages that
have as a purpose the provision of
information, for example, network
pages that contain articles, journals,
or publications
Label indicating a category or
categories to which a page is
assigned
System of characters or symbols

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

Yahoo! Markman Order”
Yahoo! Markman Order, p.
8-13.
Yahoo! Markman Order, p.
13-15.

Yahoo! Markman Order, p.
15-19.
Yahoo! Markman Order, p.
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code

that represent categories

19-23.

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(Exhibit B, Yahoo! Markman Order, pp. 8-23).
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The parties respectfully and jointly request that this Court adopt these four
constructions in total.

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VI.

ICONFIND'S PROPOSED CLAIM CONSTRUCTIONS

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A.

Network Page

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Terms

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network page

IconFind’s Proposed
Construction
Page on the Internet, private
corporate network, intranet,
local area network or other
network

Google’s Proposed Construction
Page on the Internet, private corporate
network, intranet, local area network or
other network wherein an image on a
page does not constitute a page

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IconFind’s proposed construction of the term “network page” is the same
advocated by IconFind in the Yahoo! Litigation and the construction the Court adopted in

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the Yahoo! Litigation. Google’s proposed construction differs from IconFind’s in one

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important respect: Google’s construction improperly includes a limitation “wherein an

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image on a page does not constitute a network page.”

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limitation, of which there is no support for in the ‘459 Patent, presumably because it will

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allegedly support its claim of non-infringement for one of the Accused Instrumentalities,

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Google Picasa.

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1.

Google has included this

IconFind’s Proposed Construction is Aligned with the ‘459
Patent and Its Specification

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The term “network page” is found in each of independent Claims 1, 30 and 31.

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“Network page” appears five times in each independent claim (1, 30 and 31). The claims

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consistently refer to “network page” to generally describe a page which contains

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information or material to be categorized and the term it is used consistently in each:

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1. A computer implemented method of categorizing a network page,
comprising: 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; assigning said network page to one
or more of said list of categories; providing a categorization label for the
network page using the copyright status of material on the network page;
and controlling usage of the network page using the categorization label
and the copyright status of the network page.

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30. A computer implemented method for categorizing a network page,
comprising: 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 plurality of
categories based on the copyright status of material on a page; providing a
categorization code for labeling the network page with a categorization
label, wherein said categorization label indicates a set of categories and
subcategories to which the network page is assigned, and wherein said
categorization label indicates the copyright status of material on the
network page; and controlling usage of the network page using the
categorization label and the copyright status of the network page.

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31. A computer implemented method for categorizing a network page,
comprising: providing a list of categories, wherein said list of categories
include a category based on the copyright status of material on a page, and
wherein the copyright status comprises categories related to public domain,
fair use only, use with attribution, and permission of copyright owner
needed; assigning said network page to one or more of a plurality of said
list of categories; providing a categorization label for the network page
using the copyright status of the material on the network page; and
controlling usage of the network page using the categorization label and the
copyright status of the network page.

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(Exhibit A, ‘459 Patent, Col. 12, ll. 24-38; Col. 14, ll. 17-33; Col. 14, ll. 34-51)

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(emphasis added). “Quite apart from the written description and the prosecution history,

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the claims themselves provide substantial guidance as to the meaning of particular claim

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terms.” Phillips, 415 F.3d at 1314. “[T]he context of the surrounding words of the claim

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also must be considered in determining the ordinary and customary meaning of those

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terms.” Id.

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IconFind’s interpretation again comes directly from the specification. The 459’
Patent specification states:

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8

The invention includes methods for categorizing a page as it is being
created or as it exists on a network, and for searching a network. Networks
include the Internet and private corporate networks, such as intranets
and local area networks.

9

(Exhibit A, ‘459 Patent, col. 4, ll. 46-49) (emphasis added). The specification at col. 5, ll.

10

62 – 64, likewise states that the “first embodiment of the invention is a method for

7

11
12

categorizing a page on a network, as the page is being created or during editing at a later
time.” It is clear that the term “network page” was used in order to include not just pages

13

on the Internet, but also pages on different types of networks, such as private or corporate
14

networks, intranets, and local area networks. It is also evident from the Field of the
15
16
17

Invention section that the inventors sought to categorize pages on all types of networks,
including specifically those pages on the Internet:

19

The present invention relates generally to methods for categorizing and
searching for information on a network and, more specifically, to
categorizing and searching Web pages on the Internet.

20

(Exhibit A, ‘459 Patent, Col. 1, ll. 20-24). The specification is “the single best guide to

21

the meaning of a disputed term.” See Phillips, 415 F.3d at 1315. Accordingly, the

22

specification, which the patent claims must be read in light of, clearly supports

23

IconFind’s definition of “network page.” See Id. at 1315.

18

24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 16 -

1

2.

2

Google’s Attempt to Utilize IconFind’s Counsel’s Statements
During the Yahoo! Markman Hearing To Add In a Negative
Limitation is Improper

3

Google’s proposed interpretation, on the other hand, inappropriately limits the

4

scope of the claim term “network page” by importing a negative limitation into the claims

5

that there is simply no support for anywhere in the ‘459 Patent. Google argues that the

6

definition of the term “network page” should also include limiting language of what

7

Google asserts a network page is not: an image on a page. Google asserts this argument
8

because it will allegedly support its non-infringement position for one of the Accused
9

Instrumentalities, Google Picasa. Google can point to nothing in the intrinsic record to
10
11

supports its position, and this shortcoming is fatal to its position. The Manual of Patent

12

Examining Procedure clearly instructs patent examiners that “Any negative limitation or

13

exclusionary proviso must have basis in the original disclosure.” MPEP § 2173.05(i).

14

There simply is no basis in the original disclosure of the ‘459 Patent for Google’s

15

negative limitation. Google instead seizes on a comment made by counsel during the

16

claim construction hearing and discussed in dicta in the Yahoo! Markman Order. Google

17

attempts to twist counsel’s statement into some sort of stipulation that carries into this

18

case. As explained in detail below, Google is wrong. Considered in context, it is clear

19

that counsel’s statement is completely consistent with IconFind’s and the Yahoo! Court’s

20

interpretation.
21

At the December 7, 2009 claim construction hearing, the parties discussed, among
22

other things, the construction of the term “network page” as it appears in the ‘459 patent.
23
24
25

26

Nevertheless, at least in the abstract, the Court and the parties discussed whether the plain
PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 17 -

1

and ordinary meaning of a “page” on a network can mean an image “on” a page. During

2

this discussion, the Court questioned each party about its position, including the

3

following discourse with IconFind’s counsel:

4
5

THE COURT: All right. Well, if you want to just -- we can put it on the
record. You do not claim that an image which is on a page is a, quote, page,
unquote, itself.

6

MR. HAAN: An image itself, in and of itself the image file is not a page.
7

THE COURT: All right.
8
9
10

(Exhibit D, Transcript of Proceedings at p. 75) (emphasis added). Google twists this
language to argue that an image “on” a page is not a “network page.” This is simply not

11

the case. While an image file in and of itself is not a page, an image file accessible over a

12

network can be a page. Accordingly, Google’s unsupported negative limitation should

13

not be adopted.

14

By way of example, an image file called “football.jpg” is not a page in and of

15

itself. This file can be placed on a memory storage device, such as a CD-ROM and it still

16

is not a page. It exists only as a file called “football.jpg.” However, when this same

17
18

image file is placed on a memory storage device such as a server which is accessible over
a network, then the image file is a page on a network. Specifically, when “football.jpg”

19

is accessible over the Internet (the Internet is one example of a network) using the
20

address http://www.statefansnation.com/wp-content/uploads/2009/06/football.jpg, then
21
22
23
24
25

26

the image file constitutes a page on a network. As that address clearly indicates, that
particular page is made up solely of an image file – “football.jpg”. Attached as Exhibit E
is the page displayed when the above-listed address is accessed, which visually confirms
PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 18 -

1

that a page on a network can be made up solely of an image file. Of course, a page can

2

be made up of many files, text and other information as well.

3

Accordingly, while an image file in and of itself is not a page, an image file

4

accessible over a network can be a page. As such, Google’s negative limitation should

5

not be included and this Court should adopt IconFind’s proposed construction.

6

B.
7
8

Assigning said network page to one or more of [a plurality of said list
of categories]

Terms

9
10
11
12
13

assigning said
network page
to one or more
of [a plurality
of] said list of
categories

Google’s Proposed
Construction

IconFind’s Proposed Construction
This element need not be construed
separately and should be given its
plain and ordinary meaning in the
context of the intrinsic record as
understood by a person of skill at the
time of the invention.
If the Court deems a construction is
necessary, IconFind proposes:

The creator of the web page
choosing which one or more of
[a plurality of] said list of
categories characterize said
network page

14
15

Assigning the network page to at
least one of the categories

16

The term “assigning said network page” is found only in independent Claim 1.

17

Claim 1 uses the term “assigning” in the plain and ordinary sense: to generally describe

18

the verb of “assigning” a network page to at least one category:

19
20
21
22
23
24
25

26

1. A computer implemented method of categorizing a network page,
comprising: 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; assigning said network page to one
or more of said list of categories; providing a categorization label for the
network page using the copyright status of material on the network page;
and controlling usage of the network page using the categorization label
and the copyright status of the network page.
PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 19 -

1

(Exhibit A, ‘459 Patent, Col.12, ll. 24-38) (emphasis added).
2
3

“Quite apart from the written description and the prosecution history, the claims

4

themselves provide substantial guidance as to the meaning of particular claim terms.”

5

Phillips, 415 F.3d at 1314. “[T]he context of the surrounding words of the claim also

6

must be considered in determining the ordinary and customary meaning of those terms.”

7

Id. IconFind’s assertion that the plain and ordinary meaning of the word “assigning”

8

should apply comes directly from the claim, its surrounding words, as shown above, and

9

the specification. The specification explains the “assigning” element as follows:

10
11
12
13
14
15
16
17
18
19
20

The first embodiment of the invention is a method for categorizing a network
page. The method comprises the steps of providing a list of categories and
providing the opportunity to assign a page to one or more of a plurality of the
categories.
(Exhibit A, ‘459 Patent, Col.3, ll. 11-15) (emphasis added).
The method includes the steps of providing the creator with a list of categories and
providing the creator an opportunity to assign the page to one or more of the
categories.
(Exhibit A, ‘459 Patent, Col.5, ll. 64-67) (emphasis added).
The specification likewise explains how the “assigning” takes place:
The creator of a Web page may assign the Web page to any number or
combination of the categories of three tiers 12, 14, and 16, and one of the
copyright-status categories 17, 15 depending on which categories best characterize
the Web page. The steps of assigning a page to categories may be performed in
several different ways known to those skilled in the art.

21
22
23

(Exhibit A, ‘459 Patent, Col.6, ll. 12-18).
After the creator decides to which categories to assign the page, the creator may
mark or tag the page as belonging in or within the assigned categories by

24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 20 -

1

associating, with the page, the corresponding indicium for each assigned
category.

2
3
4
5
6

(Exhibit A, ‘459 Patent, Col.6, ll. 12-18) (emphasis added).
Using the categorization code, the creator can assign a categorization label to each
page.
(Exhibit A,‘459 Patent, Col.7, ll. 1-3) (emphasis added).
The specification is “the single best guide to the meaning of a disputed term.” See

7

Phillips, 415 F.3d at 1315.

The specification supports IconFind’s assertion that no

8
9
10
11

special definition is necessary here. Assigning means just what the word indicates:
assigning or associating the page with one or more categories using a categorization label
or indicium.

12

Moreover, the plain and ordinary meaning of the phrase “assigning” is supported

13

by the dictionary definition from around the time the ‘459 Patent was filed. The

14

American Heritage Dictionary, copyrighted in the year 2000, defines in relevant part the

15

word “assign” as: “[t]o ascribe; attribute.” (Exhibit F, p. 108). These different words

16

mean the same thing: assigning, designating or attributing. Accordingly, the plain and

17

ordinary understanding of the word “assigning” is all that is necessary here. Assigning

18

means just that: assigning.

19

Should the Court decide that it is necessary to construe this claim term, IconFind
20

states that the following is the proper construction “assigning the network page to at
21
22
23

least one of the categories.” This construction simply clarifies that “one or more” means
“at least one.”

24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 21 -

1

Google’s proposed interpretation, on the other hand, is flawed in two respects: (1)

2

first, it inappropriately limits the scope of the claim term “assigning said network page”

3

by importing limitations into the claims that there is simply no support for anywhere in

4

the patent; and (2) it robs the verb “assigning” as found in Claim 1 of its true meaning by

5

replacing it with “choosing.”

6

Google’s construction is improper for this reason and for this reason alone:

7

Google through its construction attempts to add into the claims the actor that performs the
8
9
10

steps of the claimed methods (“creator of the web page choosing”). The inventors chose
not to expressly identify an actor performing the steps of the claimed method, and none

11

should be imported during claim construction. The word “creator,” while appearing in

12

the specification 22 times, does not appear once in the claims. This was intentional. The

13

inventors never intended for this limitation to be included in the language of the claims.

14

The inclusion of this limitation defies a basic cannon of claim construction: importing a

15

limitation from the specification into the claims. See Innogenetics, N.V. v. Abbott Labs.,

16

512 F.3d 1363, 1370 (Fed. Cir. 2008) ("[T]his court will not at any time import

17
18
19

limitations from the specification into the claims."); Laryngeal Mask Co. Ltd. v. Ambu
A/S, 618 F.3d 1367 (Fed. Cir. 2010); Gemstar-TV Guide Int'l, Inc. v. ITC, 383 F.3d 1352,
1366 (Fed. Cir. 2004). For this reason, Google’s construction must be discarded.

20

In sum, should the Court find that a construction is necessary, IconFind requests
21
22

that its proposed construction be adopted.

23
24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 22 -

1

C.

A set of categories and subcategories to which the network page is
assigned

2

Terms

3
4
5
6

7
8
9
10

IconFind’s Proposed Construction

Google’s Proposed
Construction

This element need not be construed separately
and should be given its plain and ordinary
meaning in the context of the intrinsic record
A set of categories
a
set
of as understood by a person of skill at the time
and subcategories that
categories and of the invention.
were chosen by the
subcategories
creator of the web
to which the If the Court deems a construction is
page as characterizing
network page necessary, IconFind proposes:
the network page
is assigned
a set of categories and subcategories to which
the network page is assigned where
subcategories are combinations of categories
This element need not be construed separately and should be given its plain and

11
12

ordinary meaning. The real term at issue here is “subcategories.” There is no need to

13

define this term. The term “subcategory” simply means a category made up of two or

14

more categories, or, a combination of categories. It is found once in independent Claim

15

31:

16
17
18
19
20
21
22

30.
A computer implemented method for categorizing a network page,
comprising: 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 plurality of categories based on the
copyright status of material on a page; providing a categorization code for labeling
the network page with a categorization label, wherein said categorization label
indicates a set of categories and subcategories to which the network page is
assigned, and wherein said categorization label indicates the copyright status of
material on the network page; and controlling usage of the network page using the
categorization label and the copyright status of the network page.
(Exhibit A, ‘459 Patent, Col. 14, ll. 17-33) (emphasis added).

23
24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 23 -

1

IconFind’s assertion that the plain and ordinary meaning of the phrase “a set of

2

categories and subcategories to which the network page is assigned” should apply comes

3

directly from the specification. The specification explains that a network page can be

4
5

assigned to multiple categories, thereby creating subcategories. Figures 4 and 9 (and
their corresponding descriptions) explain this concept clearly and succinctly:

6

FIG. 4 is a Venn diagram showing the intersection of the domains corresponding
7

to the categories of Commerce and Information.
8
9
10
11
12
13
14
15

(Exhibit A, Figure 4 and Col. 4, ll. 22-24). FIG. 9 is a Venn diagram showing an

16

example of the relationship between the subcategory created by selecting a combination
17

of the categories and the keyword search.
18
19
20
21
22
23
24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 24 -

1
2
3
4
5
6

7
8
9
10

(Exhibit A, Figure 9 and Col. 4, ll. 37-39).

11

As shown above in the above Venn diagrams, the “subcategory,” the shaded

12

portion in the graphics, is simply the combination of the larger circles representing

13

categories.

14

construction is necessary. Other portions of the specification also confirm that this is

15

simply a combination of categories. See Col. 4, ll. 49-48, Col. 5, ll. 4-9, Col. 6, ll. 28-

16
17
18

The plain and ordinary meaning of this phrase is evident here.

No

33, Col. 10, ll. 2-3, Col. 10, ll. 23-28, Col. 11, ll. 3-10, Col. 11, ll. 15-26 and Col. 11, ll.
34-37.
Moreover, the plain and ordinary meaning of the phrase “subcategory” is

19

supported by the dictionary definition from around the time the ‘459 Patent was filed.
20
21
22
23

The American Heritage Dictionary, copyrighted in the year 2000, defines in relevant part
the word “subcategory” as: “A subdivision that has common differentiating
characteristics within a larger category.” (Exhibit F, p. 1722). Accordingly, the plain

24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 25 -

1

and ordinary understanding of the word “subcategory” is applicable here. Nothing more

2

is required.

3
4
5

However, should the Court find that additional elaboration is necessary, IconFind
asserts that, as shown in the chart above, the correct construction is one that clarifies that
a subcategory is a combination of two or more categories (“a set of categories and

6

subcategories to which the network page is assigned where subcategories are
7

combinations of categories”).
8
9
10

One must question Google’s motivation in electing for this claim term to be
construed where it is quite evidence that it need not. IconFind asserts that Google’s

11

motivation is simple: it is an attempt to improperly limit the scope of this claim by adding

12

in a limitation that is found nowhere in the specification to avoid infringement. Google,

13

again, attempts to improperly inject into the claim an actor that performs the step of the

14

claimed method: “the creator of the web page.” For the same reasons as stated above,

15

there is no support for the addition of this limiting language, and for this reason alone,

16

Google’s construction is improper.

17
18

Should the Court find that a construction is necessary, IconFind requests that
IconFind’s proposed construction be adopted.

19

D.
20

Categories related to public domain, fair use only, use with attribution,
and permission of copyright owner needed

21

Terms

IconFind’s Proposed Construction

22

categories
related
to
public domain,
fair use only,

This element need not be construed
separately and should be given its plain
and ordinary meaning in the context of the
intrinsic record as understood by a person

23
24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

Google’s Proposed
Construction
Categories that indicate
that the network page
may be subject to each of
the following licensing
- 26 -

1
2
3
4
5
6

7

use
with of skill at the time of the invention.
attribution, and
permission of If the Court deems a construction is
copyright
necessary, IconFind proposes:
owner needed
Categories related to material that can be
used freely without any restrictions,
material meant to be used in accordance
with accepted fair use guidelines, material
accompanied by an attribution to the
author or copyright owner, and material
that cannot be used unless the copyright
owner is first contacted for permission

restrictions:
(1)
the
network page may be
used by others without
any restrictions; (2) the
network page may only
be used for fair uses; (3)
the network page may be
used if attribution to the
copyright owner is given;
and (4) the network page
may be used only when
permission is granted by
the copyright owner

8
9
10

IconFind’s proposed construction of this phrase is straight from the specification
of the ‘459 Patent.

Google’s construction, on the other hand, is not.

The phrase

11

“categories related to public domain, fair use only, use with attribution, and permission of

12

copyright owner needed”, is found in each independent Claim 31 and dependent Claim

13

6, which depends from independent Claim 1:

14
15
16
17
18
19
20
21
22
23

6. The method of claim 1, wherein said plurality of categories based on the
copyright status of material on a page comprise categories related to public
domain, fair use only, use with attribution, and permission of copyright
owner needed.
31. A computer implemented method for categorizing a network page,
comprising: providing a list of categories, wherein said list of categories
include a category based on the copyright status of material on a page, and
wherein the copyright status comprises categories related to public
domain, fair use only, use with attribution, and permission of copyright
owner needed; assigning said network page to one or more of a plurality of
said list of categories; providing a categorization label for the network
page using the copyright status of the material on the network page; and
controlling usage of the network page using the categorization label and the
copyright status of the network page.
(Exhibit A, ‘459 Patent, Col.12, ll. 52-57 and Col. 14, ll. 34-51) (emphasis added).

24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 27 -

1
2
3
4
5
6

7

IconFind’s interpretation again comes directly from the specification, wherein the
inventors explicitly defined these four terms:
The set of copyright-status categories 17 includes the following four categories.
Public Domain is material that is in the public domain and can be used freely
without any 50 restrictions. Fair Use Only is material meant to be used in
accordance with accepted fair use guidelines. Use with Attribution is material
that can be used as long as its use is accompanied by an attribution to the
author or copyright owner. Permission of Copyright Owner Needed is material
that cannot be used unless the copyright owner is first contacted for
permission, which may or may not be granted and may include fees and
additional terms.

8
9
10

(Exhibit A, ‘459 Patent, col. 5, ll. 48-58) (emphasis added). IconFind’s interpretation is
exactly that which the inventors provided for in the specification:

13

“Categories related to material that can be used freely without any restrictions,
material meant to be used in accordance with accepted fair use guidelines,
material accompanied by an attribution to the author or copyright owner,
and material that cannot be used unless the copyright owner is first contacted
for permission”

14

The specification is “the single best guide to the meaning of a disputed term.” See

15

Phillips, 415 F.3d at 1315. IconFind’s interpretation remains true to the specification and

16

the heart of the inventions described therein. It is the correct interpretation and should be

11
12

17
18

adopted by this Court.
Instead of assisting the Court and potentially a jury, Google’s proposed

19

construction is simply confusing and is not aligned with the specification, in light of
20

which Claims 6 and 31 must be read. It adds words where no additional words are
21
22
23
24
25

26

helpful or necessary. It adds in the limitation of “licensing restrictions” which is found
nowhere in the specification. Moreover, Google includes the term “network page” four
times in its definition, which is unnecessary and redundant.
PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

Finally, and most
- 28 -

1

importantly, Google completely fails to define the four terms that are subject to debate

2

here: public domain, fair use only, use with attribution, and permission of copyright

3

owner needed.

4

For these reasons, Google’s construction should be discarded. It is confusing and,

5

simply put, not helpful. IconFind’s construction, on the other hand, properly defines

6

these terms, the definitions of which are taken directly from the specification of the ‘459

7

Patent. As such, IconFind’s construction, which follows the intent of the inventors as set
8
9
10
11
12

forth in the specification of the ‘459 Patent, is the correct one and should be adopted.
I.

CONCLUSION
For all of the foregoing reasons, IconFind’s proposed constructions are the correct

constructions and IconFind requests that the Court adopt them in their entirety.

13
14

Respectfully submitted,
15
16
17
18
19
20

NIRO, HALLER & NIRO
Raymond P. Niro (Pro hac vice)
[e-mail]
Raymond P. Niro, Jr. (Pro hac vice)
[e-mail]
Brian E. Haan (Pro hac vice)
[e-mail]
Anna B. Folgers (Pro hac vice)
[e-mail]

/s/
Anna B. Folgers
WILKE, FLEURY, HOFFELT, GOULD &
BIRNEY, LLP
Thomas G. Redmon (SBN 47090)
[e-mail]
Daniel L. Baxter (SBN 203862)
[e-mail]
Attorneys for Plaintiff IconFind, Inc.

21
22
23
24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF

- 29 -

1
2

CERTIFICATE OF SERVICE
The undersigned hereby certifies that on May 15, 2012 the foregoing:

3

PLAINTIFF ICONFIND INC.’S CLAIM CONSTRUCTION BRIEF

4

was filed with the Court’s CM/ECF system, which will serve the following counsel of
record:

5
6

7
8
9
10

Michael J. Malecek
[e-mail]
Kenneth Maikish
[e-mail]
Kaye Scholer LLP
Two Palo Alto Square, Suite 400
3000 El Camino Real
Palo Alto, California 94306
Telephone: [phone]
Facsimile: [phone]

11

Attorneys for Defendant Google Inc.
12
13

I certify that all parties in this case are represented by counsel who are CM/ECF
participants.

14

/s/
Anna B. Folgers
Attorneys for Plaintiff

15
16
17
18
19
20
21
22
23
24
25

26

PLAINTIFF ICONFIND, INC.’S MARKMAN BRIEF