IconFind, Inc. v. Google, Inc.

Filing 97

[DISREGARD - Attorney to Re-File per Judge's Request] BRIEF Opening Claim Construction Brief by Google, Inc.. (Attachments: # 1 Declaration Kenneth Maikish Declaration, # 2 Exhibit 1 to Maikish Declaration, # 3 Exhibit 2 to Maikish Declaration, # 4 Exhibit 3 to Maikish Declaration, # 5 Exhibit 4 to Maikish Declaration, # 6 Exhibit 5 to Maikish Declaration, # 7 Exhibit 6 to Maikish Declaration, # 8 Exhibit 7 to Maikish Declaration, # 9 Exhibit 8 to Maikish Declaration, # 10 Exhibit 9 to Maikish Declaration, # 11 Exhibit 10 to Maikish Declaration, # 12 Exhibit 11 to Maikish Declaration, # 13 Exhibit 12 to Maikish Declaration, # 14 Exhibit 13 to Maikish Declaration, # 15 Exhibit 14 to Maikish Declaration)(Maikish, Kenneth) Modified on 5/22/2012 (Michel, G).

EXHIBIT 14

Case 2:11-cv-00319-GEB -JFM Document 88

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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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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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GOOGLE INC.,

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Defendant.

JOINT STATEMENT RE DISCOVERY
DISAGREEMENT - INFRINGEMENT
CONTENTIONS
Hearing Date: April 5, 2012
Time: 11:00 a.m.
8th Floor Courtroom 26
Before the Honorable Judge John F. Moulds

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Pursuant to Local Rule 251, the Parties hereby submit to the Court a Joint Statement re

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Discovery Disagreement. The sufficiency of Plaintiff’s infringement contentions remain in

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dispute and the Parties seek the Court’s guidance on the disputed issue.

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This statement was drafted jointly by the parties. The parties agreed to sections (a) and

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(b) below. However, on the day the statement was e-mailed to the Court, counsel for Plaintiff

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was given an opportunity to review Defendant’s edits to Defendant’s section of the statement

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(section (c)(i)). After waiting more than four hours without a response, Defendant filed the

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statement without a final confirmation from Plaintiff.

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JOINT STATEMENT RE DISCOVERY DISAGREEMENT - INFRINGEMENT CONTENTIONS

Case 2:11-cv-00319-GEB -JFM Document 88

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(a) Details of the conference or conferences;
In December of 2011, Defendant Google Inc. (“Google”) and Plaintiff IconFind, Inc.

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(“IconFind”) participated in a meet and confer concerning the sufficiency of IconFind’s

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infringement contentions. IconFind agreed to supplement its contentions and did so in January

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of 2012. On February 3, 2012, Google requested another meet and confer concerning the

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sufficiency of IconFind’s supplemental infringement contentions. Iconfind indicated that the

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parties had already met and conferred on the issues in December of 2011, that its position was

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that its infringement contentions were sufficient, and that it would not participate in another meet

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and confer on this topic.

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(b) Statement of the nature of the action and its factual disputes insofar
as they are pertinent to the matters to be decided and the issues to be
determined at the hearing;
On February 3, 2011, IconFind filed this suit in the United States District Court

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for the Eastern District of California for infringement of United States Patent No.

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7,181,459 B2 (the “’459 patent”). IconFind accused three products of infringing the ’459

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patent: Google Books, Google Picasa and Google Knol. On May 9, 2011, the parties

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jointly submitted a schedule that required, in part, that IconFind provide initial

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infringement contentions on July 1, 2011. The infringement contentions were required to

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include “a chart identifying where each limitation of each asserted claim is found within

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the accused instrumentality.” The issue to be decided at the hearing is whether

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IconFind’s Supplemental Infringement Contentions satisfy this obligation.

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Case 2:11-cv-00319-GEB -JFM Document 88

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(c) Contentions of each party as to each contested issue, including a
memorandum of each party’s respective arguments concerning the
issues in dispute and the legal authorities in support thereof.
(i) Defendant Google’s Contentions
On May 9, 2011, the parties agreed to a joint schedule that required the exchange of

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contentions. The contention exchange was based on the Northern District of California’s Patent

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Local Rules and borrowed language from those Rules. On July 1, 2011, IconFind was required

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to provide “initial infringement contentions” containing, inter alia, “a chart identifying where

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each limitation of each asserted claim is found within the accused instrumentality.” (Dkt. 47;

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N.D. Cal., Pat. L.R. 3-1(b)).

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On July 1, 2011 IconFind produced infringement contentions that contained a chart that

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failed to identify the required information. IconFind’s Second Supplemental Infringement

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Contentions are attached as Exhibit 1 to this Statement. The contention requirements in the

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Northern District’s Patent Local Rules “exist to further the goal of full and timely discovery and

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to provide all parties with adequate notice and information with which to litigate their cases.”

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Avago Techs. General IP PTE Ltd. v. Elan Microelectronics Corp., No. 04-05385, 2007 WL

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951818 at *1 (N.D. Cal. Mar. 28, 2007).

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Ninth Circuit courts consistently hold that infringement contentions that simply recite

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claim language and point to an accused product are insufficient because they do not provide

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adequate notice. A plaintiff must provide a “link” between the claim language and the product in

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order to satisfy its obligations. See, e.g., Network Caching Tech., LLC v. Novell, Inc., No. 01-

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2079, 2002 WL 32126128, at *5 (N.D. Cal. 2002) (finding plaintiff’s infringement contentions

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insufficient because the plaintiff provided “no link between the quoted passages [from

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defendant’s documents] and the infringement contention that simply mimics the language of the

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claim...In essence, [plaintiff] has provided no further information to defendants than the claim

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language itself”); Diagnostic Sys. Corp. v. Symantec Corp., No. 06-1211, 2009 WL 1607717, at

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*4 (C.D. Cal. June 5, 2009) (finding plaintiff’s infringement contentions “unacceptable” for,

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inter alia, “fail[ing] to identify and describe, in a clear and consistent manner, what, if any, of

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[defendant’s products] constitute [certain claim elements]”).

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Without adequate infringement contentions, Google is at a disadvantage in preparing its

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defense. See Diagnostic Sys. Corp. 2009 WL 1607717, at *4 (finding that plaintiff’s

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infringement contentions were unacceptable and holding that “[t]o the extent defendants are

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given vague infringement contentions, they are hampered in their ability to prepare their

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defense”) (internal citation omitted).

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Plaintiff’s infringement contentions are insufficient on two separate claim elements, each
will be discussed below.

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a) Plaintiff Has Failed To Identify The Network Page
All three independent claims in the ’459 patent claim “a method for categorizing a

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network page.” (Emphasis added). A year after filing its infringement case, Plaintiff has yet to

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identify the network page that it alleges Google is categorizing in violation of Plaintiff’s patent

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rights. Plaintiff fails to identify the network page with the preamble of claim 1 as shown in the

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exemplary page below:

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Plaintiff’s Second Supplemental Infringement Contentions, Ex. 1, p. 77.

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Plaintiff also fails to identify the network page in the “assigning” element as shown in the
exemplary page below:

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Plaintiff’s Second Supplemental Infringement Contentions, Ex. 1, p. 79 (blue and green

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highlighting added).

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Plaintiff is required to identify “where each limitation of each asserted claim is found

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within the accused instrumentality.” (Dkt. 47, ¶ 5.c.) A recitation of claim language alongside

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an accused product without an identification of how the product meets the claims is insufficient

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as a matter of law. See Network Caching Tech., 2002 WL 32126128, at *5. On the page cited

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above, Plaintiff literally recites the claim language but simply replaces “network page” with

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“individual Picasa page.” Plaintiff offers no definition for the term “individual Picasa page” and

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does not highlight or otherwise identify the “network page” that is allegedly assigned to the list

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of categories. Plaintiff identified the “one or more of said list of categories” element (in red), but

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leaves Google to guess what part of Picasa allegedly satisfies the “network page” element.

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One might be tempted to assume that Plaintiff contends that the page highlighted in blue

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is the “network page.” However, the litigation history of the ’459 patent and the testimony of the

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’459 patent’s inventors suggest that Plaintiff contends that the image on the page, highlighted in

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green, is the “network page.” The next page of IconFind’s infringement contentions are

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similarly vague:

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REDACTED

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Plaintiff’s Second Supplemental Infringement Contentions, Ex. 1, p.82.

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Plaintiff again states that “individual Picasa pages” are assigned but fails to identify or

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otherwise define what an “individual Picasa page” is. The term is not used in the cited document

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or otherwise defined in Plaintiff’s infringement contentions.

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IconFind’s infringement contentions are similarly vague in identifying the “network
page” element with regard to other accused products:

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Plaintiff’s Second Supplemental Infringement Contentions, Ex. 1, p. 52.

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With respect to Google Books, Plaintiff states that “Google assigns the Google books

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pages” to the list of categories, but does not identify a “Google books page” or otherwise define

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the term. Google is again left to guess what Plaintiff contends meets the “network page”

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element.

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Because Plaintiff’s infringement contentions fail to put Google on notice of the claims

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against it with respect to this claim element, Google respectfully requests that this Court compel

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Plaintiff to identify the “network page” that Google allegedly categorizes with enough specificity

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for Google to prepare an adequate defense.

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b) Plaintiff Failed To Identify The Copyright Status Categories
Dependent claim 6 and independent claim 31 recite a limitation that requires an accused

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method to provide “categories related to public domain, fair use only, use with attribution, and

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permission of copyright owner needed.” Plaintiff has failed to identify where that limitation is

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allegedly met in Google’s accused products. The page below is exemplary of Plaintiff’s

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contentions on this claim limitation:

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Plaintiff’s Second Supplemental Infringement Contentions, Ex. 1, p. 108.
Again, Plaintiff simply recites the claim language and points to an accused product

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without providing the required link between the claim language and the product. The claim

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element recites four limitations: “categories related to [1] public domain, [2] fair use only, [3]

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use with attribution, and [4] permission of copyright owner needed.” Plaintiff identified where

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the fourth limitation is found in the accused product while completely ignoring the first three.

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This contention does not identify “where each limitation of each asserted claim is found within

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the accused instrumentality” so it is insufficient. (Dkt. 46, ¶ 5.c.) Google is left to guess which

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licenses, if any, allegedly meet the other three limitations recited in the claim element.

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In its section of this statement, Plaintiff contends that this claim element can be met by

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only one category in the accused product. Currently, it’s infringement contentions only indicate

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that the “do not allow reuse (all rights reserved)” category is related to the “permission of

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copyright owner needed” limitation. Further, that contention is labeled as an “example.” If

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Plaintiff’s contention is that the “do not allow reuse (all rights reserved)” category in the accused

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product meets this entire claim element, then it should be required to say so.

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Because Plaintiff’s infringement contentions fail to put Google on notice of the claims

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against it with respect to this claim element, Google respectfully requests this Court to compel

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Plaintiff to identify the licenses that are allegedly related to the copyright statuses listed in the

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claim element with sufficient specificity in order to allow Google to prepare its defense.

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(ii) Plaintiff IconFind’s Contentions

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IconFind’s Second Supplemental Infringement Contentions, which contain 110 pages of

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claim charts for every claim asserted in this litigation (Ex. 1), are more than sufficient under the

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Local Patent Rules.

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concerning the scope and meaning of certain claim terms and the application of those disputed

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Google’s arguments simply reflect the disagreements of the Parties

Case 2:11-cv-00319-GEB -JFM Document 88

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terms to the products accused of infringement (the “Accused Google Instrumentalities”).

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Google’s briefing is, in effect, a preview of the Parties’ disputes positions on claim construction

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in this case, which will be decided by this Court in short order. A claim construction schedule

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has been set; the parties recently exchanged on March 28, 2012 their proposed constructions of

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the disputed claim terms and briefing is currently schedule to begin on June 12, 2012. (Dkt. No.

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55).

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Tellingly, the three claim elements that Google asserts are deficient in this case (“network

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page”, the “assigning” step and the copyright status categories) are all included in Google

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proposed list of terms to be construed. (Ex. 2). If Google believes that these terms need to be

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defined by the Court, then how can it complain that IconFind has failed to adequately identify

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these terms in its Supplemental Infringement Contentions?

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IconFind’s Supplemental Infringement Contentions at this time reflect its proposed

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construction of the terms as applied to the Accused Google Instrumentalities.

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expected, disagrees. There is no basis for Google’s motion to compel and Google’s request

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should be denied.

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Google, as

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A. Google Misses the Mark on the “Copyright Status” Categories Element and
Mistakenly Asserts that Each of the Four Copyright Elements Must Be Present
to Infringe

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Google’s analysis refers to the copyright claim elements in a vacuum and mistakenly

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suggests to the Court that the claim language requires four separate and distinct categories in the

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Accused Products. This is not the case. This element as it appears in Claim 31, the claim

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Google utilizes above by way of example, reads:

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Providing a list of categories, wherein said categories include a category based on the copyright

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status of the material on a page, and wherein the copyright status comprises categories related to

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public domain, fair use only, use with attribution, and permission of the copyright owner needed.

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As noted in bold above, Google ignores to phrases “a category” and “related to.” This is

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important for three reasons. First, there need not be an exact “match up” to a category; the use of

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the phrase “related to” means just that: “related to” the following four copyright categories.

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Second, these categories are not mutually exclusive: they can occur at the same time. For

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example, a category can be related both to public domain and fair use only. Third, one or all four

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of them could be present in order to infringe: all four categories need not be present in the

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Accused Product to infringe this claim term. Specifically, the claim language requires only “a

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category” based on the copyright status. Thus, all that needs to be present are one or more

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categories that are related to either (1) public domain; (2) fair use only; (3) use with attribution;

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or (4) permission of the copyright owner.

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With these points of clarification in mind, IconFind’s Supplemental Contentions are more

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than sufficient to put Google on notice of its claims of infringement. As shown below, IconFind

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provided to Google an example of where the category is related to “permission of the copyright

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owner needed”:

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The fact that Google disagrees with that construction is of no relevance to the sufficiency
of IconFind’s contentions. This contention is more than sufficient.

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B. IconFind Has Sufficiently Identified the Network Page Element

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Again, the Parties disagree as to the proper construction of the term “network page.”

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(See Google and IconFind’s Proposed Constructions of this term, Ex. 2 and Ex. 3). As set forth

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in IconFind’s proposed construction and as exemplified in IconFind’s Supplemental

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Infringement Contentions, a “network page” in the context of the ‘459 Patent is just that: a page

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on the Internet, private corporate network, intranet, local area network or other network. (Ex. 3).

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Google asserts that IconFind must be more specific in its Supplemental Infringement

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Contentions.

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construction of the term “network page.”

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This is incorrect.

IconFind’s infringement contentions reflect its proposed
IconFind’s contentions are consistent with this
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construction. As set forth in the example below, Google categorizes “network pages” or, “pages

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on the internet that contain its users’ content, including photos”:

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The fact that Google disagrees with those contentions (and the underlying construction
supporting that contention) is of no relevance to the sufficiency of IconFind’s contentions. The
parties disagree as to the precise meaning of this claim term. IconFind’s contentions as to this
claim element are more than sufficient.
C. The Assigning Step is Appropriately Identified
As with the element “network page,” the same analysis applies to the “assigning step.”
Google also asserts that this claim term should be construed. (Ex. 2). IconFind asserts that
assigning means just that “assigning.” (Ex. 3). And as set forth in IconFind’s Supplemental
Infringement Contentions, Google “assigns” the Google books’ network pages to one of more
categories:

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IconFind need not explain or add anything further to this contention. Its position is

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clearly articulated. Google’s contention that it does not understand what the word “assigning”

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means in the context of the ‘459 Patent does not go to the sufficiency of IconFind’s contentions.

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It goes to the substantive issue of Google’s infringement as informed by the claim construction

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process. Google is free to argue that position in its proper context: the claim construction

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process that is set to begin in less than two months.

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In sum, Google’s current attack on IconFind’s Supplemental Infringement Contentions

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simply stems from the Parties’ disagreement: (a) as to the meaning of these claims terms; and (2)

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the application of these disputed claim terms to the Accused Instrumentalities. IconFind should

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not be compelled to alter or modify its contentions, which are consistent with the claim

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construction positions it has taken, simply because Google disagrees with them. As such,

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IconFind respectfully requests that this Court deny Google’s motion to compel.

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Respectfully submitted,

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/s/ Kenneth M. Maikish
KAYE SCHOLER LLP
Michael J. Malecek (SBN 171034)
[e-mail]
Kenneth M. Maikish (SBN 267265)
[e-mail]
Attorneys for Defendant, GOOGLE INC.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that on March 29, 2012 the foregoing
JOINT STATEMENT RE DISCOVERY DISAGREEMENT - INFRINGEMENT
CONTENTIONS
was filed with the Clerk of Court via e-mail and sent to the following counsel of record.
Raymond P. Niro, Jr.
[e-mail]
Brian E. Haan
[e-mail]
Anna B. Folgers
[e-mail]
Attorneys for Plaintiff Iconfind Inc.

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/s/ Kenneth M. Maikish
Attorneys for Google Inc.

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