Desenberg v. Google, Inc. , 392 F. App'x 868 ( 2010 )

NOTE: This disposition is nonprecedential.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 defendant-
appellee. 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 in-
formation that enables communication be-
tween 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 perform-
ance of the service includes a service trans-
action fee paid by the user or the provider;
storing in a database at least first provider in-
formation 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 rep-
resenting the maximum amount that each
of at least a first provider and a second pro-
vider is willing to pay for a lead, wherein
each of the at least first and second provid-
ers 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 pro-
vided;
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 pro-
vider, wherein the respective transaction
DESENBERG v. GOOGLE 4
lead price equals at most each respective se-
lected 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 Re-
sources [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 in-
fringement, such as inducement or contributory infringe-
ment, “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 pro-
vides 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 men-
tioned in the claim in a “wherein” clause. While Mr. Desen-
berg 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 per-
formed any actions whose proof is required.
The district court, considering these arguments, cor-
rectly 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) (capitali-
zation 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 pat-
ented 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 patentabil-
ity, 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 infringe-
ment in the absence of a direct infringement.”); BMC Re-
sources, 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 attor-
ney 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