Desenberg v. Google, Inc.

NOTE: This disposition is nonprecedential.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.

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Decided: August 31, 2010

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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