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IN THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF FLORIDA

GAINESVILLE DIVISION

VICTOR MANUEL CELERIO,

Plaintiff,

v. CASE NO. 1:11-cv-79-RV-GRJ

GOOGLE, INC., et al.,, 

Defendants.

_____________________________/

REPORT AND RECOMMENDATION

This case is before the Court upon the parties’ cross-motions for summary

judgment, Docs. 104 & 109. The parties have responded to the cross-motions, Docs. 1

120 & 123, and the motions therefore are ripe for review. For the reasons discussed

below, the undersigned recommends that Defendant’s Motion for Summary Judgment

is due to be GRANTED, and that Plaintiff’s Motion for Summary Judgment is due to be

DENIED. 

I. BACKGROUND

Plaintiff initiated this case by filing a pro se complaint against Google, Inc.

(“Google”) claiming direct and indirect infringement of a patent for an “Electronic

Bookstore Vending Machine.” The Court already has entered an order construing the

claims. Docs. 151 & 153. While this case has been unreasonably complicated because

Plaintiff has been proceeding pro se and has a basic but not full understanding of the

legal issues, the patent in this case is very simple and straight forward. The patent

Plaintiff filed tw o pleadings st yled as motions for summary judgment, but a review of Doc.

1

70 reflect s that it is in substance a response in opposition to Defendant’ s motion for summary

judgment.
covers a machine that will format and print, and then glue and bind a book for a retail

consumer. 

Google was joined in this action because of its relationship with On Demand

Books LLC (“On Demand Books”), which is a business engaged in making a machine

that prints and binds books. On Demand Books’ printing machine is known as the

“Espresso Machine.” On Demand Books was dismissed from this case more than a

year ago because the Court did not have personal jurisdiction over On Demand Books. 

The relationship between Google and On Demand Books is as follows. Pursuant to a

contract with On Demand Books Google permitted On Demand Books to access PDF

Downloads on Google’s servers, which PDFs contained images scanned from the

pages of public domain books. 

To better understand Google’s involvement (or lack thereof) in the digital book

publishing business and its relationship with On Demand Books a brief chronology is

necessary.

Google’s involvement with on-line book services began in 2002, when Google

began to look into the idea of scanning large numbers of books. Doc. 105, Ex. 20. In

October 2004 Google Print was launched. Id. Although the name of the service was

Google Print, it was not a printing service but rather a service that provided digitized

books available to the public. Id. ¶ 4. Eventually, in October 2005 Google changed the

name from Google Print to Google Book Search. Id. Google Book Search permitted

users to download PDFs of public domain books. Id. ¶ 12. Notably, the PDF Downloads

contained only scanned images of the books content and not their electronic text. Doc.

23, Ex. A. This distinction is important in this case because Plaintiff claims that his

Case No: 1:11-cv-79-RV-GRJ
patent includes downloading the electronic text – thus allowing the font and formatting

to be changed – rather than simply a picture of the page as is the case with a PDF. 

Google’s relationship with On Demand Books began in 2009 when On Demand

Books approached Google to obtain access to Google’s library of public domain books

so that On Demand Books could make those books available to its customers for

printing on the Espresso Book Machine. 

Consequently, later in 2009 Google and On Demand Books entered into an

agreement the terms of which required On Demand Books to pay Google a negotiated

amount for each PDF Download it accessed from Google’s servers and then printed on

one of On Demand Books’ Espresso Machines. Id. Ex. 3. Importantly, pursuant to the

contractual relationship between Google and On Demand Books Google does not

restrict or control how On Demand Books prints or thereafter binds the PDFs of

Google’s public domain books. Id. Thus, in its simplest terms Google’s limited

involvement is that it permits On Demand Books to access Google’s vast library of

public domain books for a fee and then On Demand Books can print, bind or otherwise

print and use the books through the use of the Espresso Machine. The sole focus of 2

Plaintiff’s claim of indirect infringement is upon the fact that Google provides access on

its servers to its PDF book library so that On Demand Books can access the PDF

books, download them and then print them on its Espresso Machine. Thus, Plaintiff’s

allegations in this case relate to the Espresso Machine printing and binding a physical

book reproduction from a PDF Dowload accessed by On Demand Books from Google’s

For approximately six months Google also had an Espresso Machine at its Mountain Valley

2

offices for demonstrative use. It was used only to print books for Google employees and visitors to read.

During this limited period of time Google did not make any commercial use of the Espresso Machine. Doc.

105, Ex. 28, ¶ 3.

Case No: 1:11-cv-79-RV-GRJ
servers. (The “Accused Combination.”) The allegations of direct infringement arise from

Google’s use of a demonstration Espresso Machine at Google’s headquarters for about

six months.

While Plaintiff’s Amended Complaint , Doc. 13, is not a model of clarity, Plaintiff

purports to bring claims against Google for: contributory infringement (Count I) or

alternatively inducing infringement; and direct infringement (Count II). As discussed in

detail below, Plaintiff’s claim for contributory infringement fails because the PDF

Downloads of Google’s book library have substantial noninfringing uses such as simply

being read on a computer and then printed on paper. Alternatively, Plaintiff’s theory of

inducing infringement also fails because Google did not know how the Espresso

Machine works or whether the Espresso Machine performs all of the steps required by

the patent claims. Moreover, under the agreement with On Demand Books Google

does not restrict or control how On Demand Books prints or binds the PDF images of

the public domain books it downloads from Google’s servers. Lastly, Google is not

liable for direct infringement because Google does not make machines that will format,

print, glue and bind books – all of which are critical elements of the claims of Plaintiff’s

patent. 

In short, Plaintiff’s theories and claims in this case against Google have no

evidentiary or legal support and fail even liberally construing the evidence and

arguments in favor of Plaintiff. 

II. SUMMARY JUDGMENT STANDARD OF REVIEW

Pursuant to Federal Rule of Civil Procedure 56(c), the entry of summary

judgment is appropriate only when the Court is satisfied that “there is no genuine issue

Case No: 1:11-cv-79-RV-GRJ
as to any material fact and that the moving party is entitled to a judgment as a matter of

law.” In applying this standard, the Court must examine the pleadings, depositions,

answers to interrogatories, and admissions on file, together with any affidavits and other

evidence in the record "in the light most favorable to the non-moving party." Samples

on Behalf of Samples v. Atlanta, 846 F.2d 1328, 1330 (11th Cir. 1988). “In determining

whether summary judgment is appropriate, [the Court is] required to draw all

reasonable inferences in favor of the non-moving party, not all possible inferences.” 

Horn v. United Parcel Services, Inc. 433 F. App’x 788, 796 (11 Cir. 2011) (emphasis th

added) . 

3

As the Supreme Court held in Celotex Corp. v. Catrett, 477 U.S. 317 (1986), the

moving party bears the initial burden of establishing the nonexistence of a triable issue

of fact. If the movant is successful on this score, the burden of production shifts to the

non-moving party who must then come forward with “sufficient evidence of every

element that he or she must prove.” Rollins v. Techsouth, 833 F.2d 1525, 1528 (11th

Cir. 1987). The non-moving party may not simply rest on the pleadings, but must use

affidavits, depositions, answers to interrogatories, or other admissible evidence to

demonstrate that a material fact issue remains to be tried. 

The Eleventh Circuit has noted that 

[i]t is well settled that “after adequate time for discovery and upon motion,

[summary judgment is appropriate] against a party who fails to make a

showing sufficient to establish the existence of an element essential to

that party's case, and on which that party will bear the burden of proof at

trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322–323, 106 S.Ct. 2548, 91

L.Ed.2d 265 (1986). Accordingly, in response to a motion for summary

judgment, a nonmoving-plaintiff must present evidence in support of his

Although unpublished opinions are not binding on this Court, they are persuasive authorit y.

3

11 Cir. R. 36-2.

th

Case No: 1:11-cv-79-RV-GRJ
allegations sufficient to raise a genuine issue of material fact regarding

each element of his claim. As established in Celotex, it is not necessary

for the party moving for summary judgment to introduce any evidence at

all in order to prevail on his motion. Rather, in cases in which the

nonmoving party will bear the burden of proof at trial, the movant can seek

summary judgment by establishing that the opposing party has insufficient

evidence to prevail as a matter of law, thereby forcing the opposing party

to come forward with some evidence or risk having judgment entered

against him. Id. Where the nonmoving party fails to present such

evidence, “there can be ‘no genuine issue as to any material fact,’ since a

complete failure of proof concerning an essential element of the

nonmoving party's case necessarily renders all other facts immaterial.” Id.

Maxi-Taxi Of Fla., Inc. v. Lee County Port Auth., 301 F. App’x 881, 885 (11 Cir. 2008). th

Where the nonmoving party bears the burden of proof, he must offer more than a mere

“scintilla of evidence” in support of his position. Anderson v. Liberty Lobby, 477 U.S.

242, 252 (1986). 

III. DISCUSSION

A. The Patent

This case concerns U.S. Patent No. 6,012,890 entitled ELECTONIC

BOOKSTORE VENDING MACHINE (the “‘890 Patent”), which was issued on January

11, 2000 to InstaBook Corporation, (“InstaBook”), a company owned by Plaintiff before

the company went out of business. Doc. 105, Ex. 9. The Abstract for the ‘890 Patent

describes the invention as “a method and system for producing books on-demand. An

electronic bookstore in accordance with the subject invention can receive an electronic

text file of a book and then print and bind a copy of the book.” Id. The’ 890 Patent

includes 120 claims with 18 drawings. Although Plaintiff claims that there is no way to

make a book on demand except by using Plaintiff’s patented method, Plaintiff concedes

that he did not invent the electronic bookstore or the electronic book machine. 

Case No: 1:11-cv-79-RV-GRJ
Plaintiff also obtained another patent the year after the 890 Patent was issued.

On April 10, 2001, U.S. Patent No. 6,213,703 (the “‘790 Patent”) issued to InstaBook,

entitled “ELECTRONIC BOOKSTORE VENDING MACHINE.” The ‘790 Patent is

relevant to this case because during prosecution the Patent Office found the 19 claims

in the ‘790 Patent were not patentably distinct from the claims of the ‘890 Patent. Doc.

105, Ex. 12. Plaintiff ultimately filed a terminal disclaimer agreeing that the claims in

the ‘790 Patent would not last any longer than the claims in the ‘890 Patent. Notably, at

the request of another party, the Patent Office reexamined the ‘790 Patent and

concluded that 17 of the 19 original claims in the ‘790 Patent were invalid. Id. Ex. 14.

Ultimately, after the decision of the Examiner was appealed to the Board of Patent

Appeals and Interference, the Board held that all 19 claims of the ‘790 Patent were

invalid. Id. The significance of this decision is that because the 19 claims in the ‘790

Patent were determined to be patentably indistinct from the claims in the ‘890 Patent,

there is a credible argument that the Plaintiff’s ‘890 Patent may have become invalid

after Plaintiff filed this suit. Nonetheless, even if the ‘890 Patent is not now invalid, 4

Plaintiff’s claims against Google for indirect and direct infringement have no merit. The

Court will briefly address in turn each of Plaintiff’s purported claims.

B. Plaintiff’s Claims That Google Contributed to or Induced Infringement 

Have No Merit

A claim for induced infringement is provided for in 35 U.S.C. § 271(b). Pursuant

to this section, “[w]hoever actively induces infringement of a patent shall be liable as an

infringer.” 35 U.S.C. § 271(b). The “alleged infringer must be shown ... to have

The /complaint in this case was filed on April 27, 2011 and the board of Patent Appeals and

4

Interference held that all 19 claims of the ‘790 Patent were invalid on March 28, 2012.

Case No: 1:11-cv-79-RV-GRJ
knowingly induced infringement,” not merely knowingly induced the acts that constitute

direct infringement. DSU Med. Corp. v. JMS Co., 471 F. 3d 1293, 1306 (Fed. Cir.

2006). Such intentional encouragement requires the defendant to have engaged in

some affirmative act and not simply failed to take steps to prevent infringement. Tegal

Corp. v. Tokyo Electron Co., 248 f. 3d 1376, 1378 (Fed. Cir. 2001). Importantly, a claim

under Section 271(b) requires a showing that the activity induced by the defendant

constitutes direct infringement. 

Claims for contributory infringement are also covered un 35 U.S.C. § 271.

Pursuant to § 271(c), whoever sells a component of a patented machine for use in

practicing a patented process that does not have a substantial noninfringing use shall

be liable as a contributory infringer. Unlike induced infringement contributory

infringement does not require an allegation of intent. The statute requires only

knowledge that an activity caused infringement. See, Hewlett-Packard Co. v. Bausch &

Lomb, Inc., 909 F. 2d 1464, (Fed. Cir. 1990)(“proof of a defendant’s knowledge , not

intent, that his activity cause infringement was necessary to establish contributory

infringement”(emphasis in original)). However, in addition to showing knowledge to

establish contributory infringement liability, the patentee must show that there are no

substantial non-infringing use for the supplied component. Toshiba Corp. v. Imation

Corp., 681 F. 3d 1358, 1362 (Fed. Cir. 2012).

Turning first to the issue of contributory infringement, there are two fundamental

flaws in Plaintiff’s claim for contributory infringement. First, Plaintiff has failed to

demonstrate that Google had knowledge that supplying PDF files to On Demand Books

Case No: 1:11-cv-79-RV-GRJ
infringed the ‘890 Patent. Secondly – and even assuming Plaintiff could demonstrate

that there is genuine issue of a material fact as to whether Google had knowledge – 

there is no issue that Plaintiff has not and cannot show that the PDF files supplied by

Google to On Demand Books do not have other substantial noninfringing uses. 

With regard to knowledge, the only argument advanced by Plaintiff that Google

had knowledge relates to a September 27, 2005 letter allegedly sent by InstaBook to

Eric Schmidt of Google, copies of which allegedly were copied to Larry Paige and

Sergey Brin, the co-founders of Google. Doc. 105, Ex. 21. Reliance upon the 2005

letter as evidence that Google had knowledge is problematic for several reasons and on

this record fails to raise a genuine disputed issue of material fact.

First, the letter suggests that Google Print “may be infringing one or more of

InstaBook’s patents, including the patent-in-suit. The letter, however, states that the

claims in the patent “are tied directly to a method of performing content searches on

books, so that customers can find the specific book they are looking for, order it,

download it, and print and bind it at the point of sale in a matter of minutes.” Id. It is

undisputed that Google Print was not a printing service but rather a service that

provided digitized books available to the public. Thus, when the 2005 letter was sent

Google was not engaging in activities that even arguably would constitute infringement

and the letter was sent more than 4 years before Google entered into the agreement

with On Demand Books. 

Second, while Plaintiff has produced a copy of the September 27, 2005 letter

there is no evidence in the record documenting that the letter was received by Brin or

Case No: 1:11-cv-79-RV-GRJ
Paige. Indeed, the record contains declarations from Paige, Brin and Schmidt that they

do not have any recollection about the 2005 letter nor any direct knowledge about

InstaBook, plaintiff or the patent-in-suit. Doc. 70, Exs. 2-4. Plaintiff elected not to take a

30(b)(6) deposition of Google relating to the 2005 letter and therefore the only evidence

of record is a copy of the letter (produced by Plaintiff) and Google’s statement that they

are not denying the letter was received by someone. Regardless, the letter did not

place Google on notice that doing business four years later with On Demand Books

would or could infringe Plaintiff’s patent, particularly in view of the fact that Plaintiff

admits that in 2005 Google was not infringing his patent. Doc. 105, Ex. 19, p. 37:23-38.

The same reasoning applies to the several email exchanges in 2007, between

Plaintiff and Manuel Tamez, a Google employee. Again, Plaintiff concedes that at the

time he exchanged emails with Mr. Tamez, Google was not infringing. The Google

employee solely responsible for the print-on-demand project was Larissa Fontaine.

Plaintiff elected not to take any discovery from Ms. Fontaine. The record, however,

contains a detailed declaration from Ms. Fontaine. Doc. 105, Ex. 20. In her declaration

Ms. Fontaine details Google’s history of Google Books. Ms. Fontaine was the Google

employee who spearheaded Google’s effort with On Demand Books. In addition to

recounting the relationship with On Demand Books, which did not begin until 2009, Ms.

Fontaine avers that prior to the filing of this case, she had never heard of the ‘890

Patent, Mr. Celerio or InstaBook Corporation. There is no other evidence of record

refuting this assertion. This averment is important because in the absence of any other

evidence of record, Plaintiff has not demonstrated that Google had knowledge that

Case No: 1:11-cv-79-RV-GRJ
entering into an agreement with On Demand Books (the challenged activity in this case)

caused or would cause infringement. Simply put, Plaintiff’s claim for contributory

infringement fails because he has not demonstrated on this record that Google had

knowledge that doing business with On Demand Books might cause infringement.

Alternatively, even if the mere fact that 2005 letter was sent would be sufficient

to raise an issue of fact on the issue of knowledge (which it does not), Google is still

entitled to summary judgment on Plaintiff’s claim of contributory infringement because

contributory infringement cannot be based upon the sale of a “staple article or

commodity of commerce suitable for substantial noninfringing use.” 35 U.S.C. § 271(c).

Thus, to establish contributory infringement, Plaintiff must show that there are no

substantial non-infringing uses. Toshiba Cor. 681 F. 3d 1358, 1362. Google’s conduct

challenged by Plaintiff is the authorization to On Demand Books to obtain the PDF

Downloads from Google’s book library and then print them. These PDF downloads,

have been available for years to the public before Google entered into an agreement

with On Demand Books. There is no question that the PDF Downloads can be read on

a PC, and printed on a standard printer attached to the PC without infringing. As such, it

is undisputed that Google’s PDF Downloads can be used without printing and can be

used without being bound into a book. Plaintiff’s claims under the ‘890 Patent do not

cover simply reading or printing books electronically but rather “receiving, printing and

binding a copy of the book.” Consequently, because the PDF Downloads have

substantial other non-infringing uses, which are not “unusual, far-fetched, illusory,

impractical, occasional, aberrant, or experimental” the PDF Downloads constitute an

article of commerce suitable for non-infringing use and thus Plaintiff cannot establish

Case No: 1:11-cv-79-RV-GRJ
that Google engaged in contributory infringement by authorizing On Demand Books to

access and download Google’s PDF book files. 

Plaintiff’s argument that the PDF Downloads loose their status as a staple or

article of commerce when the PDF Downloads are transferred to the Espresso

Machines, misinterprets the statute as written and would subject any person who

provided an object to a potential infringer to be liable for contributory infringement. That

is not the law. Objects used in an infringing combination only subject a party to

contributory infringement where the object does not have a substantial non-infringing

use. Where, as here, the article can be (and actually has been) used in other

substantial non-infringing uses, simply providing the article to another who uses it to

infringe does not give rise to contributory infringement.

With regard to Plaintiff’s claims that Google induced infringement, Plaintiff’s

theories fail for several reasons. 

Plaintiff’s theory that Google induced infringement is based upon Plaintiff’s

assertion that Google actively induced infringement “by promoting and encouraging

purchase of electronic books to [be] printed on demand” by Espresso Machines, and by

virtue of Google Books’ ability to provide searches of indexed book content. 

The flaw in Plaintiff’s argument is that Plaintiff ignores that he has to

demonstrate that Google actually knew that the actions it induced infringed the ‘890

Patent. To induce infringement is it not enough that an actor induce an act that is patent

infringement, the actor must know that the induced acts constitute patent infringement.

Global-Tech Appliances, Inc. v. SEB SA, 131 S.Ct. 2060, 2068 (2011); see also,

Spencer v. Taco Bell Corp., Case No. 8:12-cv-387-T-23TGW (Merryday, J.)(M.D. Fla.

Case No: 1:11-cv-79-RV-GRJ
Oct. 22, 2012). The Supreme Court in Global-Tech made clear that inducement to

infringe requires that the actor must know, or be willfully blind to the fact, that the

induced acts constitute infringement. Id. at 2068. Consequently, Plaintiff must

demonstrate that Google knew that delivering the PDF Downloads to On Demand

Books would infringe Plaintiff’s patent. Plaintiff has failed to do so on this record.

Conspicuously absent from this record is any evidence of even one person at

Google who worked on any print-on-demand project, that has any knowledge of

InstaBook, Plaintiff or the patent-in-suit. The absence of such evidence may be

because there truly is no individual with knowledge at Google or because Plaintiff did

not depose any employees that Google identified as being knowledgeable about

Google’s relationship with On Demand Books. While the Court is well aware that

Plaintiff is proceeding pro se – and thus the Court has afforded a very generous and

liberal interpretation to Plaintiff’s arguments and theories – Plaintiff, nonetheless, in

opposing a motion for summary judgment must come forward with some evidence.

Plaintiff has failed to do so.

In contract, Google has submitted evidence that it did not have any knowledge

that entering into an agreement with On Demand Books would or could constitute

infringement. Google has submitted the declaration of Larissa Fontaine, the Google

employee solely responsible for Google’s relationship with On Demand Books, who

avers that she never heard of InstaBook, Plaintiff of the patent-in-suit. 

In addition to the fact that there is no evidence that Google knew entering into an

agreement with On Demand Books constituted infringement, there is no evidence that

Case No: 1:11-cv-79-RV-GRJ
the actions of On Demand Books was induced by Google. Rather, it is undisputed that

On Demand Books was selling its Espresso Machine since at least 2007, well before it

did business with Google. Moreover, Plaintiff has not produced any evidence

concerning On Demand Book’s sales before or after Google entered into an agreement

with On Demand Books. 

Most notably, however, because there is uncontroverted evidence that Google

does not know how On Demand Books’ Espresso Machine works, Plaintiff cannot

demonstrate that Google knew its actions induced infringement.5

Lastly – and independently of the shortcomings in Plaintiff’s claims for

contributory or inducement of infringement – it is well settled that “[t]here can be no

inducement or contributory infringement without an underlying act of direct

infringement.” Linear Tech Corp. v. Impala Linear Corp., 379 F. 3d 1311, 1326 (Fed.

Cir. 2004). Therefore, because, as discussed below, the accused combination does

not fall within the scope of the claims in the ‘890 Patent there is no direct infringement

and therefore any claims by Plaintiff of contributory or inducement to infringe also fail.

C. Plaintiff Has Failed to Prove Direct Infringement

In order to determine whether there has been infringement the Court engages in

a two part analysis. The Court first must determine the scope and meaning of the

patent claims and then compare the properly construed claims to the infringing device. 

Cybor Corp. v. FAS Techs., Inc., 138 F. 3d 1448, 1454 (Fed. Cir. 1998)(en banc). The

The Court recognizes that an Espresso Machine was located at Google’s headquarters for a six

5

month period. The Espresso Machine, however, was not used for commercial purposes but rather was

available for use by volunteers to use to print reading material at lunch and for visitors. The fact that the

Espresso Machine was located there does not mean Google learned how the device worked, other than to

turn it on and off.

Case No: 1:11-cv-79-RV-GRJ
Court already has determined the proper construction of the claims in the Court’s report

and recommendation addressing the parties Markman briefs. Doc. 151. The report and

recommendation was adopted by the District Judge. Doc. 153. 

Turning to the patent claims in issue there are fifteen independent claims,

asserted by the Plaintiff. In analyzing the merits of Plaintiff’s claim of direct 6

infringement the Court will focus on the independent claims only because if there is no

infringement of an independent claims it follows that there is no infringement of a

dependent claim. 

Twelve of the independent claims require a means for or step of “formatting.” 7

The ‘890 Patent says that its method of formatting allows “the reformatting of the size

and type of fonts ... [and] for large type formatting.” In resolving this issue it is important

to consider exactly what is involved in providing the PDF Downloads. As previously

discussed, the PDF Downloads contain only the images of the pages of previously

printed books. As set forth in detail in the declaration of Jeff Breidenbach – a member

of Google’s technical staff who works on Google Books’ image processing and

acquisition – the public domain files that Google Books provides contain no symbolic

test layer or fonts. Doc. 23, Ex. 1. Rather, the PDF files contain only raster images from

scanned pages, and do not contain text obtained through optical character recognition

(“OCR”). With regard to the images provided to print-on-demand providers, such as On

Demand Books, there are only minor differences from the PDF files that can be

downloaded from the Google Books website. Those differences include such things as

These claims include claims 1, 5, 6, 14, 20, 21, 25, 26, 33, 37, 38, 54, 61, 68 and 75.

6

Claims 1, 5, 6, 14, 201, 21, 25, 26, 54, 61, 68 and 75.

7

Case No: 1:11-cv-79-RV-GRJ
the removal of pages, such as covers, or the addition of pages at the beginning, such

as blank pages or introductory Google front matter. Id., p. 2, ¶6. Other than these minor

differences – which have nothing to do with formatting – the bottom line is that Google

provides only images of pages of public domain books, which are not formatted (other

than as it appears on the page of the printed book). Thus, the PDF Downloads provided

by Google do not provide any formatting and thus do not include a means for, or a step

of “formatting as required by twelve of the independent claims.

Plaintiff contends that the PDF Downloads are capable of formatting by

suggesting that the PDF Downloads contain searchable text. This argument, however,

misses the point. The issue is whether Google does any formatting of the PDF

Downloads or whether the PDF Downloads provide a means for formatting and not

whether PDF files in general contain searchable text. The evidence is uncontroverted

that Google provides only images or pictures of the book pages, which are then printed

by print-on-demand providers, such as On Demand Books. Indeed, Plaintiff

distinguished in the patent application for the ‘890 Patent the then known method of

using a raster image of the pages of a book to copy a book which already has been

printed. Doc. 105, Ex. 9, Col. 2, lines 12-20. Coping the pages of an already printed

book by converting them to PDF files is precisely the method used by Google and the

method Plaintiff expressly stated was not part of his invention. 

Accordingly, because Google has established that the PDF Downloads it

provides to print-on-demand book providers do not provide any formatting or a means

for formatting, Google’s Accused Combination does not infringe the “Formatting Claims”

and therefore Google is entitled to summary judgment on this issue.

Case No: 1:11-cv-79-RV-GRJ
Turning next to whether the PDF Downloads provide a “paper sheet receiving

means” – an element of three independent claims – there is no dispute on this issue. 8

Google does not provide a tray that holds smaller sheets of paper, after they have been

cut from a larger sheet, until the printer finishes printing all of the pages of the book.

Thus, there is no evidence that Google infringes this element of the three claims and

therefore Google is entitled to summary judgment on this issue.

The same applies to the element that the ‘890 Patent provides for a cutting

means, or a step of “cutting said paper sheets into smaller sheets,” an element of ten of

the independent claims. There is no evidence that Google’s Accused Combination 9

separates a paper sheet into smaller sheets that have a book page printed on each

side. 

Similarly, Google does not infringe any label, notching or signaling claim, an

element of a number of the independent claims of the ‘890 Patent. There is no 10

evidence offered by Plaintiff suggesting that Goolge’s Accused Combination notches,

labels, or signals as those terms are construed in the claims of the ‘890 Patent. 

Lastly, as construed by the Court, the “glueing means” in the ‘890 Patent is 11

limited to using cold glue. Plaintiff concedes that there is no evidence in this case that

Claims 33, 37 and 38.

8

Claims 1, 14, 20, 21, 60, 67, 93, 102 , 111, and 117.

9

Claims 2, 22, 34, 41, 48, 76, 82, 92, 100, 109, 115 and 116 require a “notching means” or a

10

“notching step”, while claims 5, 25, 37, 54, and 68 require a “labeling means for attaching a spine cover

label to the spine of the book. Claims 1, 5, 6, 14, 20, 54, 61 , 68 and 75 require “printing the book’s

content on paper sheets upon receipt of a signal from said receiving means.”

See, Doc. 151, pp 15-19.

11

Case No: 1:11-cv-79-RV-GRJ
the Accused Combination uses cold glue and therefore summary judgment is due to 12

be granted in favor of Google on this claim.

For these reasons, the Court has no problem in readily concluding that no

13

reasonable jury could find that the claims of the “890 Patent are found in Google’s

Accused Combination and therefore summary judgment is due to be granted in favor of

Google with regard to Plaintiff’s claims of direct infringement.14

D. Invalidity

Lastly, Google requests summary judgment in its favor that the claims of the ‘890

Patent are invalid. Google argues in summary fashion that the claims of the ‘890 Patent

are invalid because the “formatting “ claims are indefinite and because the claims of the

‘890 Patent are anticipated by the prior art.

With regard to the defense that the claims are indefinite, the determination of

whether a claim is indefinite and in turn invalid under 35 U.S.C. § 35, ¶ 2, is a question

Doc. 105, Ex. 19, 103:17-104:14

12

In addition to the fact that Plaintiff cannot establish that Google’s Accused Combination

13

infringed any of the independent claims of the ‘890 Patent, Plaintiff cannot demonstrate that he is entitled

to any lost profits because there are serious problems with Plaintiff’s proof of causation. Plaintiff has not

and cannot establish that but for Google’s agreement with On Demand Books InstaBook would have

made the same level of sales it made before the agreement. The shortcomings in Plaintiff’s theory of

damages for lost profits are discussed in detail in Google’s motion for summary judgment. Doc. 104, pp

18-21. The Court agrees that each of these problems standing alone is sufficient to demonstrate that

Plaintiff is not entitled to lost profits even if Plaintiff had established infringement. Lastly, with regard to

Plaintiff’s claim that he is entitled to a reasonable royalty, there is no evidence in the record upon which

the Court could determine a reasonable royalty and therefore even if Plaintiff had established infringement

he would not be entitled to recover a reasonable royalty.

The Court is aware that there is evidence that Google had an Espresso Machine located at its

14

California headquarters for six months pursuant to an equipment usage agreement. Doc. 105, Ex. 20,

¶15. Google did not use the Espresso Machine for any commercial purpose but rather provided it for use

to volunteers to use during the lunch hour to print books for Google employees and visitors to use for free.

Id., Ex. 28. As such, even assuming Plaintiff could establish that the Espresso Machine infringed the ‘890

Patent (which he has not) the mere fact that Google had a machine on the premises for non-commercial

purposes, used only by volunteers, would not be sufficient to demonstrate that Google engaged in direct

infringement of the ‘890 Patent.

Case No: 1:11-cv-79-RV-GRJ
of law. Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F. 3d 1293, 1303

(Fed. Cir. 2005). Thus, summary judgment of invalidity for indefiniteness is appropriate

where one or more patent claims are “not amenable to construction” or “insolubly

ambiguous.” Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d 1342, 1347 (Fed. Cir.

2005). Summary judgment of invalidity for indefiniteness is not appropriate, however,

where the “meaning of the claim is discernible, even thought the task may be

formidable and the conclusion may be one over which reasonable persons will

disagree.” Bancorp Servs., LLC v. Hartford Life Ins. Co., 359 F. 3d 1367, 1371 (Fed.

Cir. 2004), see also, Xerox Corp. v. 3Com Corp., 458 f. 3d 1310 (Fed. Cir. 2006). 

Google argues that the “formatting” claims in twelve of the independent claims

15

are indefinite because the specification contains no corresponding structure, material or

acts. Relying upon the expert opinion of their expert Google argues that the language of

the “formatting means simply does not make sense and therefore would not have made

any sense to a person of skill in the art at the time the patent was filed. Doc. 105. Ex.

18, § 4.1.3. 

The question is whether the specification requiring a formatting means for

“formatting the book’s content into a book’s distribution” is discernible. While there is

certainly some lack of clarity in describing that the formatting of the book’s content into

a book distribution, the Court, nonetheless, concludes that the claim is not indefinite

because no meaning can be ascribed to it. Rather – and as the Court discussed in

construing the scope of the claim – the claim means that the information being

Claims 1, 5, 6, 14, 20, 21, 25, 26, 54, 61, 68 and 75.

15

Case No: 1:11-cv-79-RV-GRJ
formatted and/or distributed is an electronic text file rather than scanned images of

book pages. Indeed, the method of “formatting” discloses a method for allowing the

reformatting of the size and type of fonts. Thus, distribution means for example to

distribute information to the “printing means” regarding the size of each sheet of paper,

the number of pages to print onto a sheet of paper, the ways of distributing the pages ,

and the designs of the printed mater. While reasonable persons might disagree about

the meaning of the terms used in describing the “formatting means” the Court

concludes that the description is not so ambiguous as to be considered indefinite.

Accordingly, the Court concludes that Google’s request for summary judgment on this

issue is to be denied.

Turning lastly to Google’s argument that the claims in the ‘890 Patent are

anticipated by prior art, Google relies exclusively upon the reasons discussed by the

Board of Patent Appeals and Interference in its decision during the appeal of the ruling

in the reexamination of the ‘790 Patent. Doc. 105, Ex. 14. While the Board determined

that various prior art including the article On-Demand Printing: The Revolution in Digital

and Customized Printing, 1995 by Howard M. Fenton and Frank J. Romano (“Fenton”)

and the article Exploring IBM Print On Demand Technology, 1997, by Jim Wallace

(“Wallace”) anticipated a number of the claims, the Board’s decision concerned the ‘790

Patent and not the ‘890 Patent. Although the claims in the ‘890 Patent were found to be

patentably indistinct from the claims in the ‘790 Patent, the Board’s decision does not

automatically invalidate the ‘890 Patent. Certainly, the same arguments could be raised

in a reexamination to challenge the validity of the ‘890 Patent. Had the Board’s decision

related to the ‘890 Patent there would be no issue now that the ‘890 Patent is invalid for

Case No: 1:11-cv-79-RV-GRJ
among other reasons, a number of the claims were anticipated by the prior art. In this

case, however, Google has elected not to provide any argument on the issue of

invalidity other than to point the Court to the Board’s decision. Ordinarily, the defense of

anticipation based on the prior art under 35 U.S.C. § 102 is a question of fact. IPXL

Holdings, LLC v. Amazon.com, Inc., 430 F. 3d 1377, 1380 (Fed. Cir. 2005). Because

Google has not argued nor explained how the claims in the patent-in-suit are

anticipated by prior art – particularly Fenton and Wallace – the Court determines that it

would be inappropriate to enter summary judgment on the issue of invalidity. To

address the issue of invalidity without requiring Google to discuss the prior art and to

discuss the legal implications of the Board’s decision on the ‘890 Patent would require

the Court to improperly speculate as to Google’s arguments. Additionally, because

Google has not provided detailed argument regarding the effect of prior art on the ‘890

Patent, Plaintiff also would be required to speculate as to the factual basis for Google’s

argument. Accordingly, while the Court recognizes that there may be meritorious

arguments as to whether the claims of the ‘890 Patent were anticipated by prior art the

Court declines to do so here in the absence of a detailed argument by Google.16

IV. RECOMMENDATION

In light of the foregoing, it is respectfully RECOMMENDED that: (1) Defendant

Google Inc.’s Motion for Summary Judgment, Doc. 104, should be GRANTED with

regard to Plaintiff’s claims for infringement but denied as to the defenses of

The Court is aware that Google advised that it would be willing to submit supplemental briefing

16

relating to the findings of the Board as to the claims in the ‘890 Patent. However, if Google had wished to

provide supplemental briefing on the issue of invalidity it should have filed a motion requesting leave to do

so. No such request was filed. Accordingly, the Court is required to resolve the motion for summary

judgment based upon the record and arguments currently before the Court.

Case No: 1:11-cv-79-RV-GRJ
indefiniteness and invalidity; (2) Plaintiff’s Amended Motion for Summary Judgment,

Doc. 109, should be DENIED, and; (3) judgment should be entered in favor of Google

Inc. 

IN CHAMBERS this 29 day of September 2013. 

th

s/Gary R. Jones 

GARY R. JONES

United States Magistrate Judge

NOTICE TO THE PARTIES

A party may file specific, written objections to the proposed findings and

recommendations within 14 days after being served with a copy of this report and

recommendation. A party may respond to another party’s objections within 14

days after being served with a copy thereof. Failure to file specific objections

limits the scope of review of proposed factual findings and recommendations.

Case No: 1:11-cv-79-RV-GRJ