NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

ROGER MARX DESENBERG, 

Plaintiff-Appellant, 

v. 

GOOGLE, INC., 

Defendant-Appellee. 

__________________________ 

2010-1212 

__________________________ 

Appeal from the United States District Court for the 

Southern District of New York in Case No. 08-CV-10121, 

Judge George B. Daniels. 

___________________________ 

Decided: August 31, 2010 

___________________________ 

ROGER MARX DESENBERG, of New York, New York, pro 

se. 

CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart & 

Sullivan, LLP, of San Francisco, California, for defendantappellee. With him on the brief was EDWARD J. DEFRANCO, 

of New York, New York. 

__________________________ 
DESENBERG v. GOOGLE 2

Before NEWMAN, MAYER, AND PROST, Circuit Judges. 

NEWMAN, Circuit Judge. 

Roger Marx Desenberg, acting pro se, sued Google, Inc. 

for infringement of United States Patent 7,139,732 (“the 

’732 patent”). The United States District Court for the 

Southern District of New York dismissed the complaint 

under Federal Rule 12(b)(6) for failure to state a claim upon 

which relief can be granted.1 Mr. Desenberg appeals the 

dismissal and the denial of preliminary injunctive and 

monetary relief, and argues that his constitutional rights 

have been violated. We affirm the district court’s rulings, 

and discern no constitutional violation. 

DISCUSSION

The invention described in the ’732 patent is a method 

wherein a communications network is used to provide leads 

to users and providers of services, whereby services are 

performed for a transaction fee, as set forth in the patent. 

Claim 1 is as follows: 

1. A method for a user using a communication network 

to search for and identify at least one matching provider of 

project work, the method comprising; 

transmission of a lead comprising contact information that enables communication between the user and the provider, wherein 

the transaction lead price is the amount of 

money paid for the lead, and further 

wherein a service is performed by the user 

or the provider as a result of the transmis-

 1 Desenberg v. Google, Inc., No. 08-CV-10121, 2010 

WL 100841 (S.D.N.Y. Jan. 14, 2010) (dismissal); Desenberg 

v. Google, Inc., No. 08-CV-10121, 2009 WL 2337122 

(S.D.N.Y. July 30, 2009) (Magistrate’s Report). 
3 DESENBERG v. GOOGLE

sion of the lead and wherein the performance of the service includes a service transaction fee paid by the user or the provider; 

storing in a database at least first provider information and second provider information, 

the at least first provider information and 

the at least second provider representing at 

least respective maximum lead prices, each 

of the respective maximum lead prices representing the maximum amount that each 

of at least a first provider and a second provider is willing to pay for a lead, wherein 

each of the at least first and second providers provide at least one service with which 

the lead is associated; 

comparing the respective maximum lead prices 

to determine a lowest respective maximum 

lead price; 

identifying the provider associated with the 

lowest one of the respective maximum lead 

prices; 

receiving at least one lead limit that represents 

a maximum quantity of leads to be provided; 

receiving from a user or provider a request for 

contact information, the contact information 

enabling communication between the user 

and at least one of the first provider and the 

second provider; 

selecting at least one provider based on each 

respective provider's maximum lead price 

and the lead limit; 

calculating a respective transaction lead price 

for each of the at least one selected provider, wherein the respective transaction 
DESENBERG v. GOOGLE 4

lead price equals at most each respective selected provider's maximum lead price; and 

providing the at least one lead to the user or provider 

for project work. 

The district court held that Mr. Desenberg’s complaint 

did not state a claim on which infringement could be found, 

the court finding that the defendant Google does not itself 

perform all of the steps of the claim. The district court 

explained that claim 1 “clearly require[s] the participation 

of multiple parties,” in that the claim “requires a series of 

interactions, transmissions and communications between 

‘users’ and ‘providers,’ similar to the multi-step patent 

process involving merchants and customers in BMC Resources [v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 

2007)].” Magistrate’s Report at *6. The court in BMC 

Resources held that direct infringement could not be found 

unless the defendant performed, or directed or controlled 

the performance, of all of the steps of the claimed method. 

The court in BMC Resources also held that indirect infringement, such as inducement or contributory infringement, “requires, as a predicate, a finding that some party 

amongst the accused actors has committed the entire act of 

direct infringement.” 498 F.3d at 1379. 

Applying this precedent, the district court held that a 

claim for direct infringement “would require Desenberg to 

allege that Google performs both the ‘user’ and ‘provider’ 

steps in the claim, which Desenberg has not alleged, and by 

the very terms of his patent, cannot realistically allege.” 

Magistrate’s Report at *6. The court observed that Mr. 

Desenberg “has not alleged that those who participate in 

Google AdWords do so at the behest of Google, even under 

an expansive interpretation of ‘direction or control,’” citing 

BMC Resources, supra, and Muniauction, Inc. v. Thomson 

Corp., 532 F.3d 1318 (Fed. Cir. 2008). The court held that 
5 DESENBERG v. GOOGLE

the complaint did not state the premises of a claim for either 

direct or indirect infringement by Google. 

Mr. Desenberg argues that it suffices that Google provides the communications network whereby the claimed 

method is practiced. He argues that he stated a cognizable 

claim for infringement by stating in his complaint that 

Google has “used, sold or offered to sell . . . an Internet 

system and/or service that infringes each of the elements of 

one or more claims of Patent 732.” Complaint ¶26. He 

states that the district court erred in construing his claims, 

arguing that there is a critical distinction between multiple 

parties performing separate steps of a claimed method, and 

multiple parties performing actions that are merely mentioned in the claim in a “wherein” clause. While Mr. Desenberg agrees that claim 1 requires that a user or provider 

perform a service and that a transaction fee is paid, he 

states that this is the result of Google’s transmission of the 

lead, and not separate steps that must be performed. He 

argues that claim 1 does not require “steps” to be performed 

by anyone other than Google. He also states that at trial he 

would provide testimony by users and providers who performed any actions whose proof is required. 

The district court, considering these arguments, correctly concluded that the claim required performance of all 

of the steps in order for infringement to lie. See, e.g., BMC 

Resources, 498 F.3d at 1380–81 (all of the steps of a method 

claim must be performed by the infringer, either directly or 

under his direction and control); Muniacution, 532 F.3d at 

1329. The district court properly rejected Mr. Desenberg’s 

argument that “the wherein clauses cannot be relied upon to 

alter the metes & bounds of my claims.” Pl.’s Mem. In 

Reply to Def.’s Resp. to Objections 5 (Oct. 8, 2009) (capitalization altered). Mr. Desenberg argued that “[t]he law is 

clear that the language of a ‘whereby’ or a ‘wherein’ clause 
DESENBERG v. GOOGLE 6

is to be ignored where it does not add anything to the patented method or invention,” id. at 7, and that “it would be 

absurd to suggest that the wherein clauses [of the ’732 

patent] are a patentable element,” id. at 8. However, the 

patent examiner had required, as a condition of patentability, that claim 1 of the ’732 patent include the limitation 

“wherein a service is performed by the user or the provider 

as a result of the transmission of the lead.” See U.S. Patent 

Appl. No. 09/621,663, Interview Summary (Feb. 15, 2006); 

see also Ex. M to Complaint (“This was forced in by the 

examiner, this is not part of our invention . . . .”). The 

district court treated the patent examiner’s “wherein” 

clauses as a part of the claimed method, and concluded that 

Google could not be a direct infringer because Google did not 

perform, or direct or control the performance of, all steps of 

the claimed method. The court also held that Google could 

not be an indirect infringer because there was no direct 

infringer, as required by precedent. See, e.g., Aro Mfg. Co. v. 

Convertible Top Replacement Co., 365 U.S. 336, 341 (1961) 

(“[I]t is settled that there can be no contributory infringement in the absence of a direct infringement.”); BMC Resources, 498 F.3d at 1379 (citing Dynacore Holdings Corp. v. 

U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004)). 

Precedent is in accord with the district court’s analysis. 

The dismissal under Rule 12(b)(6) is affirmed. 

We discern no constitutional violation in the district 

court’s denial of the requested preliminary relief, or in the 

court’s suggestion to Mr. Desenberg that he retain an attorney to represent him. Mr. Desenberg states that he has 

been advised and assisted by an attorney, but that full 

representation is not within his means. Although we are 

well aware of the cost of patent litigation, review shows that 

Mr. Desenberg was not treated unsympathetically, and that 

his position was fully and fairly reviewed. 
7 DESENBERG v. GOOGLE

AFFIRMED