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 1

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 1 of 23
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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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ICONFIND INC.,

NO. CIV. 09-109 WBS JFM

Plaintiff,

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v.

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YAHOO! INC.,

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Defendant.

MEMORANDUM AND ORDER RE:
MOTION FOR CLAIM CONSTRUCTION

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Iconfind Inc. ("Iconfind") seeks to improve access to

20

the Internet's contents by organizing network or web pages

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through a standardized categorization system for the information

22

contained on those pages. Plaintiff's U.S. Patent No. 7,181,459

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B2 ("the '459 patent") categorizes network pages based on their

24

content, including the copyright status of the material on the

25

page and whether the pages contain commercial or non-commercial

26

information. Plaintiff contends that Yahoo! Inc.'s ("Yahoo!")

27 Flickr online photo management and sharing application infringes
28

on the '459 patent by incorporating the Creative Commons license
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Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 2 of 23
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into its website and allowing Flickr users to assign Creative

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Commons licenses to their photographs.

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On November 5, 2009, defendant filed a motion for claim

4

construction, and the court held a Markman' hearing on December

5

7, 2009. After considering the parties' briefs and all other

6

relevant documents, along with the parties' arguments at the

7 Markman hearing, the court construes the disputed claims as set
8

forth below.

9

I.

10
11

Factual and Procedural Background
Iconfind is the owner of U.S. Patent No. 7,181,459 B2

("the '459 patent"), issued on February 20, 2007 and entitled

12 "Method of Coding, Categorizing, and Retrieving Network Pages and
13

Sites." (Mot. Claim Construction Ex. 1 [hereinafter cited as

14 "'459 patent"] .) The '459 patent describes a method for manually
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sorting network pages into a hierarchy of categories based on

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their content. Claim one of the patent states:

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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.

25
26
27
28

'Markman v. Westview Instruments, Inc., 517 U.S. 370, 372,
116 S.Ct. 1384 (1996).
2

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 3 of 23
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('459 patent 12:24-38.2) Claim one of the '459 patent sorts

2 network pages into three categories: (1) a category for providing
3

information; (2) a category for transacting business; and (3) a

4

category based on the copyright status of the material on the

5

network page. Id. The network page is then assigned a label

6

based on the copyright status of the material on the page. That

7 label, along with the copyright status of the network age, are
8

used to control the usage of the page, by, for example,

9

permitting a user to limit his network pages solely to pages in

10

particular categories.

11

(9:40-12:12.)

The preferred embodiment of the invention describes a

12

four-tiered categorization system, depicted in the '459 patent as

13

Figure 1. ('459 patent Fig. 1.) The "first tier" divides

14

network pages into whether they are for transacting business or

15

providing information. (4:60-65.) The "second tier" divides the

16

pages according to subject matter. (5:10-28.) The "third tier"

17

divides the pages according to the types of files associated with

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the network page. (5:29-47.) Another tier divides the pages

19

according to the copyright status of the material on the network

20

page.

(5:48-58.)

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In the preferred embodiment, a designer of a network

22

page manually assigns the page to appropriate categories by

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applying a "categorization code" for each category to which the

24

page is assigned. (6:62-65.) The network designer then combines

25

various "codes" to form a "categorization label" that is placed

26
27
28

The format #:## signifies the column and line number of the
`459 patent. Subsequent references to content within the '459
patent are made solely using this numerical format.
2

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Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 4 of 23
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on a network page. (7:27-47.) Search engines can then read the

2

categorization label and determine how the page is categorized.

3

During the prosecution of the '459 patent, the

4

inventors repeatedly had their patent rejected due to the prior

5

art that disclosed categorizing web pages. (Mot. Claim

6

Construction Ex. 2 at IF001485-90.) The inventors eventually

7 narrowed the claims of their patent to claim a categorization
8

system which included at least the three categories of

9

transacting business, providing information, and copyright

10
11

status.
Yahoo!'s Flickr is an online photo management and

12

sharing application. (Mot. Claim Construction 6.) Flickr users

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upload digital photos to the Flickr website for storage and

14

sharing. Id. Users can make their photos private or visible to

15

others. Id. Photographs that are public may be browsed or

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searched by various "tags" that may be attached to them. Id.

17 Flickr also incorporates the Creative Commons license system
18

whereby users can select to grant others the right to use their

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photographs with certain restrictions. Id. Creative Commons is

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a non-profit organization that provides free licenses to users to

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mark their creative work with the usage restrictions they want

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their work to carry. Id. Flickr users have the option to "tag"

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their photographs with a Creative Commons license.

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On January 13, 2009, plaintiff filed a complaint with

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this court alleging that the Creative Commons license on Yahoo!'s

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Flickr site infringes the '459 patent. Presently before the

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court is defendant's motion for claim construction pursuant to

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4

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 5 of 23
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Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

2 II. Discussion
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A.

4

The court, not the jury, must determine the meaning and

Legal Standard

Markman v. Westview Instruments, Inc., 52

5

scope of patent terms.

6

F.3d 967, 979 (Fed. Cir. 1995), aff'd., 517 U.S. 370, 372, 116

7 S.Ct. 1384 (1996). When construing disputed claim terms, the
8

court often looks to both intrinsic and extrinsic evidence.

9

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.

10
11

Cir. 1996).
Intrinsic evidence includes the language of the claims,

12

specification, and prosecution history.

13

1582. The language of a patent's claims are "generally given

14

their ordinary and customary meaning," which is "the meaning that

15

the term would have to a person of ordinary skill in the art in

16

question . . . as of the [patent's] effective filing date."

17

Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).

Vitronics, 90 F.3d at

18 "Importantly, the person of ordinary skill in the art is deemed
19

to read the claim term not only in the context of the particular

20

claim in which the disputed term appears, but in the context of

21

the entire patent, including the specification." Id.

22

The specification "is the single best guide to the

23

meaning of a disputed term."

Vitronics, 90 F.3d at 1582. The

24

specification can provide further guidance on the meaning of

25

terms in the claims by, for example, (1) revealing a "special

26

definition given to a claim term by the patentee that differs

27

from the meaning it would otherwise possess," Phillips, 415 F.3d

28
5

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 6 of 23
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at 1316, (2) revealing an "intentional disclaimer, or disavowal,

2 of claim scope by the inventor," Id., or (3) defining a term by
3

implication, "such that the meaning may be found in or

4

ascertained by a reading of the patent documents,"

5

Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1334-35 (Fed. Cir.

6

2004). Limitations from the preferred embodiments or specific

7

examples in the specification, however, cannot be read into the

8

claim.

Novartis

Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340

9 F.3d 1298, 1306 (Fed. Cir. 2003).
10

The patent's prosecution history "can often inform the

11

meaning of the claim language by demonstrating how the inventor

12

understood the invention and whether the inventor limited the

13

invention in the course of prosecution, making the claim scope

14

narrower than it would otherwise be."

15

1317.

16

Phillips, 415 F.3d at

Extrinsic evidence "consists of all evidence external

17

to the patent and prosecution history, including expert and

18

inventor testimony, dictionaries, and learned treatises."

19

Markman, 52 F.3d at 980. When used, extrinsic evidence cannot

20 "vary or contradict" claim language, Vitronics, 90 F.3d at 1584,
21

but it can be useful "for a variety of purposes, such as to

22

provide background . . . [and] to ensure that the court's

23

understanding of the technical aspects of the patent is

24

consistent with that of a person of skill in the art, or to

25

establish that a particular term in the patent or the prior art

26

has a particular meaning in the pertinent field."

27 F.3d at 1318.
28
6

Phillips, 415

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 7 of 23
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B.

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Viewing the disputed terms from the perspective of a

Disputed Terms

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person of ordinary skill in the art at the time of the invention,

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the court adopts the constructions set forth below.
The five disputed terms appear in boldface below.3

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6
7

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;

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10
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12

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

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14
15
16
17
18
19
20
21
22
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19. The method of claim 1, further comprising providing
a categorization code that can be used to label the
page with the categorization label that indicates the
categories to which the page is assigned.
(12:24-38, 13:40-43.)
1.

Network Page
The parties' proposed constructions are as follows:

Plaintiff

Defendant

Page on the Internet, private
corporate network, intranet,
local area network or other
network.

All files, data, and
information presented when a
network address is accessed,
including any text, audio,
advertising, images, files,
graphics, or graphical user
interface.

24
25
26
27
28

These terms appear in independent claims 1, 30, and 31, and
dependent claims 19-27 of the '459 patent.
3

7

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 8 of 23
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The parties' dispute over this term revolves around whether the

2 term "page" needs to be separately defined. The parties do not
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dispute the meaning of "network." The patent claims clearly

4

distinguish "network page" from "material on a page" and

5 "material on the network page." (14:15-50.) At oral argument,
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counsel for the plaintiff conceded that an image on a "page" did

7 not constitute a "page." The parties then agreed that the term
8 "page" did not need to be further defined.
9

Therefore, the term "page" needs no further

10

construction, and the court concludes that the term "network

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page" means "Page on the Internet, private corporate network,

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intranet, local area network or other network."

13

2.

14

Category for Transacting Business
The parties' proposed constructions are as follows:

15

Plaintiff

Defendant

16

Category for (1) e-commerce
pages, which provide users
with the ability to conduct
online purchases, sales,
leases, or other financial
transactions, (2) pages that
may be involved in transacting
business, but do not enable
the user to conduct the
transaction on-line, and (3)
other pages that contain
commercial information.

A category for network pages
that have as a primary purpose
transacting business.
In the alternative, this term
is indefinite.

17
18
19
20
21
22
23
24

Plaintiff's proposed construction closely mirrors the preferred

25

embodiment set out in the specification of the '459 patent, which

26

states that:

27
28

Web pages involved in transacting business include ecommerce pages, which provide users with the ability to
conduct online purchases, sales, leases, or other
8

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 9 of 23
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2
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financial transactions, pages that may be involved in
transacting business, but do not enable the user to
conduct the transaction on-line, and other pages that
contain commercial information.

4

(4:62-5:4). The defendant argues that the plaintiff is

5

impermissibly attempting to turn the description of the preferred

6

embodiment into a definition, and that the term "commercial

7 information" is ambiguous.
8

As to the former claim, criteria outlined in the

9

preferred embodiment do not ordinarily serve to limit the claims

10

of the patent to those criteria. See Anchor Wall Sys., 340 F.3d

11

at 1306. Yet the claim terms can be defined by what is set forth

12

in the preferred embodiment as long as that limitation properly

13

describes the whole invention. See Honeywell Intern., Inc. v.

14

ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006);

15

Vitronics, 90 F.3d at 1582 ("Although words in a claim are

16

generally given their ordinary and customary meaning, a patentee

17

may choose to be his own lexicographer and use terms in a manner

18

other than their ordinary meaning, as long as the special

19

definition of the term is clearly stated in the patent

20

specification or file history."

21

The specification "acts as a dictionary when it

22

expressly defines terms used in the claims or when it defines

23

terms by implication"); Irdeto Access, Inc. v. Echostar Satellite

24

Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) ("Even when guidance

25

is not provided in explicit definitional format, the

26

specification may define claim terms by implication such that the

27

meaning may be found in or ascertained by a reading of the patent

28

documents.") (citations omitted); see also Phillips v. AWH Corp.,
9

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 10 of 23
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415 F.3d 1303, 1316 (Fed Cir. 2005) ("[T]he specification may

2

reveal an intentional disclaimer, or disavowal, of claim scope by

3

the inventor .

4

dictated the correct claim scope, and the inventor's intention,

5

as expressed in the specification, is regarded as dispositive.").

. . In that instance [], the inventor has

6 Often, it will be clear upon reading the specification in the
7

context of its purpose--which is to teach and enable those of

8

skill in the art to make and use the invention and to provide a

9

best mode for so doing--whether the patentee is setting out

10

specific examples of how to practice the invention or "whether

11

the patentee intends for the claims and the embodiments in the

12

specification to be strictly coextensive."

13

1323.

14

Phillips, 415 F.3d at

In Honeywell International, the Federal Circuit found

15

that the preferred embodiment of a fuel filter was the only

16

embodiment of the invention because it referred to the fuel

17

filter as "this invention" on multiple occasions in the

18

specification. Id. ("The public is entitled to take the patentee

19

at his word and the word was that the invention is a fuel

20

filter."). The preferred embodiment of "category for transacting

21

business" in this case does not expressly define the invention by

22

its terms. Here, the preferred embodiment states that "web pages

23

involved in transacting business include [ the three types of

24

pages listed by the plaintiff as its proposed construction.]"

25

(4:62-5:4) (emphasis added). Generally, this use of the word

26 "include" is meant to convey a minimum rather than a maximum.
27

See Black's Law Dictionary 831 (9th ed. 2009)("To contain as a

28

part of something. The participle including typically indicates
10

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 11 of 23
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a partial list."). By the preferred embodiment's own language,

2 it does not purport to limit categories for transacting business
3

to the list of three types of web pages offered by the plaintiff

4

as its proposed construction.

5
6

There is further support in the specification that the
use of the word "include" was meant to be illustrative rather

7 than definitional of the term "category for transacting
8

business." The word "include" is used similarly in the preferred

9

embodiment of another disputed term, "category for providing

10

information." (5:4-6; see infra.) Immediately after the

11

purported definition of "category for transacting business," the

12

specification goes on to state: "Web pages involved in providing

13

information include pages that contain articles, journals,

14

publications, or other non-commercial materials." (5:4-6)

15

(emphasis added).

16

The specification later, however, provides an example

17

of how one would categorize the fictional website www.abcde.com,

18

which had "as its purpose" the teaching of the alphabet, as

19

providing information. (8:31-32.) This purposeful metric for

20

categorizing pages as providing information is lacking from the

21

alleged definition of the term "category of providing

22

information," indicating that the preferred embodiment is not the

23

only embodiment of that category. Nor do other uses of the word

24 "include" in the specification imply that what follows is
25

exclusive. (See '459 patent 4-5.) The preferred embodiment,

26

therefore, does not clearly define the term "category for

27

transacting business" as exclusive to the examples listed and

28

accordingly the court will not limit the scope of the patent
11

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 12 of 23
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2

claim to those examples.
The defendant's proposed construction imports the term

3 "primary purpose," which the plaintiff argues limits the term to
4

categories with one "primary purpose" when the specification is

5

clear that a web page can be assigned to both the transacting

6

business and providing information categories. (5:7-9.) Such

7

pages, asserts plaintiff, would therefore have two "primary

8

purposes" according to the defendant's logic. The dictionary

9

definition of the adjective "primary" applicable here is the

10

secondary definition, "something that stands first in rank,

11

importance, or value." Mirriam-Webster's Collegiate Dictionary

12 986 (11th ed. 2003). This definition of "primary" appears to
13

exclude the possibility of multiple "primary purposes," and would

14

exclude the preferred embodiment of the invention which has

15

network pages categorized as both for transacting business and

16

for providing information.

17

Plaintiff further asserts that defendant's proposed

18

construction excludes the preferred embodiments of e-commerce

19

pages and pages that contain commercial information. Concerns

20

regarding the first embodiment are without merit, as "transacting

21

business" would be thought to include web pages that allow users

22

to complete online commercial and financial transactions. The

23

second embodiment of pages that merely "contain commercial

24

information" might be excluded if defendant's "primary purpose"

25

construction is adopted. While the other two preferred

26

embodiments would be included in the "primary purpose" language

27

proposed by the defendant, the defendant's proposal would seem to

28

exclude pages that merely "contain" commercial information but
12

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 13 of 23
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whose "primary purpose" remained the providing non-commercial

2 information. Therefore, the defendant's proposed construction
3

must be rejected.

4

Since the plaintiff and defendant both have proposed

5

constructions that do not perfectly align with the claims and

6

specifications of the patent, the court construes the term as: A

7

category for network pages that have as a purpose transacting

8

business. At oral argument both parties indicated that, while

9

they each preferred their own proposed construction, this

10

construction could be satisfactory. This definition is broad

11

enough to encompass the preferred embodiment and also takes into

12

account the purposeful analysis that the patent specification has

13

indicated is also appropriate. Furthermore, this construction

14

recognizes that for the patent to function the term "category for

15

transacting business" must both be sufficiently definite to be

16

meaningful to network page creators seeking to categorize their

17

network pages, and be flexible enough to allow them to categorize

18

their network pages as they best see fit. This construction also

19

avoids the term "commercial information" proposed by plaintiff

20

and challenged by defendant as impermissibly indefinite.

21

Therefore, the term "category for transacting business"

22

means "A category for network pages that have as a purpose

23

transacting business."

24

3.

25

Category for Providing Information
The parties' proposed constructions are as follows:

26

Plaintiff

Defendant

27

Category for pages that
contain articles, journals,
publications, or other non-

A category for network pages
that have as a primary purpose
the provision of information,

28

13

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 14 of 23
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commercial materials.

for example, network pages
that contain articles,
journals, or publications.
In the alternative, this term
is indefinite.

2
3
4
5

Plaintiff's proposed construction closely mirrors the

6

preferred embodiment set out in the specification of the '459

7

patent, which states that: "Web pages involved in providing

8

information include pages that contain articles, journals,

9

publications, or other non-commercial materials." (5:4-6.) As

10

discussed above, the use of the word "include" in the preferred

11

embodiment, and the example of the fictional website

12

www.abcde.com, which had "as its purpose" the teaching of the

13

alphabet, as providing information (8:31-32), indicate that the

14

preferred embodiment is not the only embodiment of the "category

15

for providing information." Plaintiff's proposed construction,

16

therefore, improperly limits the claim to the preferred

17

embodiment.

18

As also discussed above, defendant's importation of the

19

term "primary purpose" likewise poses the problem of not aligning

20

with the preferred embodiment that allows for network pages to be

21

categorized as both providing information and transacting

22

business. Thus, the court proposes a modified construction: A

23

category for network pages that have as a purpose the provision

24

of information, for example, network pages that contain articles,

25

journals, or publications. This construction encompasses the

26

preferred embodiment and allows for other embodiments of the

27

invention, while eliminating the potentially troublesome

28

commercial/non-commercial distinction present in the plaintiff's
14

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 15 of 23
1

proposed construction.

2

Defendants argue that any network page provides some

3

form of information, and that the term "category for providing

4

information" is indefinite so to render the patent invalid.

5

Because every network page theoretically "provides information,"

6

defendant argues that this category could include every network

7

page every made. Patents enjoy a presumption of validity because

8

they have gone through the prosecution process with the Patent

9 Office, and defendants offer no expert testimony or evidence that
10

a person with ordinary skill in the art would not be able to

11

determine the scope of the patents claims. This argument is

12

therefore rejected.

13

Therefore, the term "category for providing

14

information" means "A category for network pages that have as a

15

purpose the provision of information, for example, network pages

16

that contain articles, journals, or publications."

17

4.

18

Categorization Label
The parties' proposed constructions are as follows:

19

Plaintiff

Defendant

20

Tag indicating the category or
categories to which a page is
assigned.

The complete code string
representing all the
categories to which a network
page is assigned.

21
22
23
24

Defendant's proposed construction clearly is contrary

25

to the preferred embodiment of the invention with respect to the

26

words "complete" and "all." The specification states that: "The

27

categorization label preferably consists of the indicia for all

28

of the categories to which the page is assigned." (7:3-4)
15

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 16 of 23
1

(emphasis added). According to the preferred embodiment,

2 therefore, it is not necessary that the categorization label
3

include the indicia representing every category to which the page

4

has been assigned. Plaintiffs also point to dependent claim 22,

5

which states: "The method of claim 20, wherein said

6

categorization label includes the indicia for each category to

7

which a page is assigned." (13:48-50.) Furthermore, independent

8

claim 30, which includes both terms "categorization code" and

9 "categorization label," makes clear that the categorization label
10

need not contain the indicia of all the categories to which a

11

network page is assigned:

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

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.
(14:17-33) (emphasis added.)
Plaintiff argues that the defendant's proposed
construction also improperly reads "categorization code" and
"code string" into independent claim 1 of the '459 patent.
Specifically:
1. A computer implemented method of categorizing a
network page, comprising:
16

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 17 of 23
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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;
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.
19. The method of claim 1, further comprising providing
a categorization code that can be used to label the
page with the categorization label that indicates the
categories to which the page is assigned.
('459 patent 12-13) (emphasis added.) "[T]he presence of a
dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the
independent claim."

Phillips, 415 F.3d at 1314-15. Dependent

claim 19 adds the limitation of "further comprising a
categorization code," which presumably is not contained in
independent claim 1. While independent claim 30 includes both
"categorization label" and "categorization code," independent
claims 1 and 31 do not require a "categorization code." The
court will not import a dependent claim into independent claim 1
by importing the term "categorization code" to the term
"categorization label."
Furthermore, the language of the specification, which
was quoted only in part by the defendant, states that: The
indicia for the categories are preferably placed in an unbroken
code string in the following order: first tier, second tier,
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Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 18 of 23
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third tier, and copyright-status categories." (7:15-18)

2 (emphasis added). The specification further states that: "An
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example of such a categorization label is a single, simple

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character string consisting of the two-letter or two-numerical

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indicia for all of the categories to which the page is assigned."

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(7:5-8) (emphasis added). It does not appear, therefore, that

7 the preferred embodiment is the only embodiment of the
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categorization label, and the court will not interpret the term

9 "categorization label" to require a "code string."
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Finally, because the patent does not limit its claims

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to placing only one categorization label on a network page, it is

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clear that each label does not need to include every category to

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which a page is assigned in order for the patent to function. A

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network page creator could assign a network page two

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categorization labels, each indicating only some of the

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categories to which a page is assigned. Furthermore, the

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specification provides that a network page designer can

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communicate the categories to which a page is assigned directly

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to search engines rather than include those categories in the

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categorization label. (6:50-58.) This clearly contemplates that

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a categorization label might not include every category to which

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a network page is assigned.

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Defendants object to plaintiff's including the word

24 "tag" in their proposed construction of the term "categorization
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label." While the word "tag" may be a term of art, "a patentee

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may choose to be his own lexicographer and use terms in a manner

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other than their ordinary meaning, as long as the special

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definition of the term is clearly stated in the patent
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Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 19 of 23
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specification or file history."

Honeywell Intern., Inc., 452

2 F.3d at 1318. In the specification, the patent clearly uses the
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words "tag" and "label" and "mark" in the verb form

4

interchangeably. (6:50-53, 6:63-65.) The construction suggested

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by plaintiff, however, uses the word "tag" as a noun, which is

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not supported by the patent language as being synonymous with a

7 "label." Additionally, the preferred embodiment somewhat
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confusingly also states that "The method also includes the step

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of providing the creator with a categorization code that can be

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used to tag or label each page or site." (6:63-65.)

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Substituting the word "tag" for "label" in the definition adds

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nothing to enlighten the jury. To the contrary, it would just

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add another word which arguable would have to be defined. Since

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the plaintiff asserts that the patent uses the terms "tag" and

15 "label" interchangeably, this construction provides the same
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meaning while avoiding possible confusion. Furthermore, this

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construction makes clear that the label need not include every

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category to which a page is assigned.

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Therefore, the term "categorization label" means "Label

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indicating a category or categories to which a page is assigned."

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5.

Categorization Code

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The parties' proposed constructions are as follows:

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Plaintiff

Defendant

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System of characters or
symbols that represent
categories.

A code representing a category
to which a network page is or
could be assigned.

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The parties dispute whether the term "categorization code" refers

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to an entire "system" of codes or to the individual codes that

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correspond to each category. The term "categorization code"
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Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 20 of 23
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appears in dependent claims 19, 20 25, and 30:

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19. The method of claim 1, further comprising providing
a categorization code that can be used to label the
page with the categorization label that indicates the
categories to which the page is assigned.
20. The method of claim 19, wherein said categorization
code comprises an indicium for each of said categories.
25. The method of claim 19, wherein said categorization
label further includes an identifier to indicate that
said label is part of said categorization code.
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.

20

(13:40-45; 14:3-5; 14:16-33) (emphasis added.) The language of a

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patent's claims are "generally given their ordinary and customary

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meaning." Phillips, 415 F.3d at 1313. Furthermore, the claim

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term is read in the context of both the particular claim in which

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it appears and in the context of the entire patent. Id.

25

These claims reveal a system of characters that

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represent categories to which network pages can be assigned.

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Specifically, dependent claim 20 refers to a categorization code

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as comprising "an indicium for each of said categories" to which
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Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 21 of 23
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a page is assigned. (13:44-45.) For claim 20 to make sense, the

2 term "categorization code" must contemplate a system that can
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comprise the categorical indicia. Likewise, dependent claim 25

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refers to an "identifier" to indicate that the categorization

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label is part of the categorization code. Defendant's proposed

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construction is nonsensical when posed along side claim 25. If a

7 "categorization code" is merely a two-letter indicium of a
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particular category to which a page has been labeled, then the

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categorization code should constitute part of the categorization

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label rather than the label constituting a part of the code. The

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specification provides further light for interpreting claim 25:

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The categorization label for a page preferably also
includes an identifier, such as a combination of
several characters or symbols, to indicate that the
characters or symbols that follow are part of a
categorization code system.

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(7:8-11.) This portion of the preferred embodiment directly

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speaks to dependent claim 25 of the specification, and uses the

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term "categorization code system" where the claim uses

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18 "categorization code." According to the patent, the terms are
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used interchangeably, and is further evidence that the inventors

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intended the term "categorization code" to mean a code system.

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Defendants cite the example of coding a pornographic web

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page, where the patent states: "The categorization label would be

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`coexvimu,' which indicates: Commerce (co); Explicit (ex); Visual

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(vi); and Multimedia (mu). The Explicit category 42, identified

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by the 'X' icon and the 'ex' code, . .

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the specification also uses the term "code" when referring to

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individual category symbols, this is not in conflict with

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recognizing that the term "categorization code" refers to the
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" (7:48-54.) While

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 22 of 23
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system of as a whole. The patent repeatedly refers to these

2 individual codes as "indicia":
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The list of categories includes at least one different
indicium for each category. The indicium is preferably
a universal symbol or icon that is not associated with
any one language, but it may also include a combination
of letters, numerals, or other characters, or symbols.
The indicia preferably used are universal icons and
two-letter or two-numeral indicia, as shown in FIG. 1.
Thus, the indicia for commerce are "co" and the "$"
symbol, while the indicum for "Public Domain" is "01."

8 (6:3-11.)
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The preferred embodiment further states: "The method

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also includes the step of providing the creator with a

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categorization code that can be used to tag or label each page or

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site . . . . and is preferably the indicia shown in FIG 1."

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(6:63-7:1.) Figure 1 of the '459 patent displays the three

14 "tiers" of categories and the fourth category comprising
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copyright status, and the various categories within the tiers.

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Accordingly, "categorization code" as used in this instance

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cannot constitute a singular code or category, but must represent

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the entire system of codes displayed in Figure 1 of the '459

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patent.

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Defendant also points to portions of the provisional

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patent applications which referred to the term "categorization

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code" as both a system and as the individual string of codes as

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evidence that the term could mean an individual code.

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Yahoo! Reply Decl. Kevin A. Smith Ex. 15 Fig. 1 ("The iics

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copyright code can simply be typed in at the end of the

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categorization code . .

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that the defendant points to, however, did not use the term

(E.g.,

.").) The provisional applications

28 "categorization label." Rather, they used the term
22

Case 2:09-cv-00109-WBS-JFM Document 50 Filed 12/14/09 Page 23 of 23
1 "categorization code" to also mean what is now defined as the
2 "categorization label." While the provisional patent
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applications may have used the term "categorization code" to

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express multiple meanings, the '459 patent claims and

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specification are consistent in their usage of the term.

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Finally, the preferred embodiment generally speaks

7 about the "categorization code" as something that the network
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page creator "uses" to assign categorization labels to network

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pages.

(See 6:63-65; 7:1-3; 7:12-15.) This conception of

10 "categorization code" aligns with a systemic view of the term,
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and is incompatible with a construction that limits the term to

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one particular set of characters or symbols in code.

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Therefore, the term "categorization code" means "System
of characters or symbols that represent categories."

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The Court accordingly construes the claims as set forth
above.
IT IS SO ORDERED.
DATED: December 14, 2009

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WILLIAM B. SHUBB
UNITED STATES DISTRICT JUDGE

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