DCT
1:11-cv-00079
Celorio v. Google Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Victor Manuel Celorio (Florida)
- Defendants: Google Inc. (Delaware); On Demand Books, LLC (Delaware); Jason Epstein (New York)
- Plaintiff’s Counsel: Pro Se
- Case Identification: 1:11-cv-00079, N.D. Fla., 07/21/2011
- Venue Allegations: Venue is based on Defendant Google being registered to conduct business in Florida and engaging in substantial activity within the judicial district.
- Core Dispute: Plaintiff alleges that Defendants' Google Books service, in combination with On Demand Books' "Espresso Book Machine" apparatus, infringes a patent related to an integrated system for on-demand printing and binding of books from electronic files.
- Technical Context: The technology at issue is automated, point-of-sale book manufacturing, which enables the creation of physical paperbacks from digital files in minutes, aiming to reduce the waste and logistical costs of traditional publishing.
- Key Procedural History: The complaint alleges a history of pre-suit notice. Plaintiff alleges sending "good faith letters" to Google in 2005, engaging in correspondence with On Demand Books (ODB) that included a response letter from ODB dated July 10, 2006, and that Defendant Jason Epstein has been aware of the patent since at least 2000.
Case Timeline
| Date | Event |
|---|---|
| 1996-10-04 | ’890 Patent Priority Date |
| 2000-01-11 | ’890 Patent Issue Date |
| 2000 | Defendant Epstein allegedly became aware of patent |
| 2005 | Plaintiff allegedly sent notice letters to Google |
| 2006-07-10 | Date of response letter from ODB to Plaintiff's cease and desist |
| 2007 | ODB allegedly began its business of manufacturing and selling accused apparatus |
| 2009 | Google allegedly began making book content accessible for printing on ODB machines |
| 2011-07-21 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,012,890 - "Electronic Bookstore Vending Machine"
- Issued: January 11, 2000
- Alias: ’890 Patent
The Invention Explained
- Problem Addressed: The patent’s background section describes the traditional book publishing model as wasteful due to the need for large, speculative print runs (ʼ890 Patent, col. 2:36-44). It also notes that prior art for single-copy production was inefficient, often relying on scanning pages of already-printed books, which created massive, unsearchable "raster image" files and did not disclose a unique apparatus for automated binding (’890 Patent, col. 2:11-39).
- The Patented Solution: The invention is an automated, self-contained "electronic bookstore vending machine" that solves these problems by receiving an electronic text file of a book, rather than a scanned image, from a central distribution unit. The machine then automatically prints the book's pages, cuts the paper sheets, clamps the pages into a "book block," applies glue to the spine, and affixes a cover, dispensing a finished paperback book at a point of sale in minutes (’890 Patent, Abstract; Fig. 2B). This use of text files, as opposed to images, allows for efficient data transmission and enables features like content searching and font reformatting (’890 Patent, col. 3:19-25).
- Technical Importance: The invention's integrated, step-by-step method for on-demand printing and binding from efficient electronic text files proposed a solution to the economic and logistical barriers that limited the market for niche publications and created waste in the traditional publishing industry (’890 Patent, col. 3:29-44).
Key Claims at a Glance
- The complaint asserts a large number of claims against the defendants, including device, system, and method claims (Compl. ¶¶ 32, 36, 44, 50).
- Independent claim 1, a representative device claim, includes the following essential elements:
- a receiving means for receiving data corresponding to a book's content;
- a formatting means for formatting the book's content into a book distribution;
- a printing means for printing the book's content on paper sheets upon receipt of a signal from said receiving means;
- a clamping means for clamping the printed sheets into a book block;
- a glueing means for applying glue to a spine of the book block; and
- a cutting means for cutting said paper sheets into smaller sheets.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the combination of Google's "Google Books" internet service and the "Espresso Book Machine," an apparatus manufactured and sold by Defendant On Demand Books, LLC (ODB) (Compl. ¶¶ 13-14, 16).
Functionality and Market Context
- The complaint alleges that Google digitizes the content of millions of books and makes them available as electronic files through its Google Books service (Compl. ¶12). Customers can then order these electronic books to be downloaded and produced as physical paperbacks by ODB's Espresso Book Machines, which are installed in various locations (Compl. ¶13).
- The Espresso Book Machine is described as an apparatus for "downloading, printing and binding books at the point of sale," which ODB allegedly advertises as an "ATM For Books" (Compl. ¶14). A photograph included in the complaint's Exhibit B shows an Espresso Book Machine located at Google's headquarters (Compl. Ex. B, p. 61).
IV. Analysis of Infringement Allegations
’890 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a receiving means for receiving data corresponding to a book's content | The ODB machine receives electronic (digital) book files downloaded from Google's webservers. | ¶13, ¶22, ¶32 | col. 5:61-65 |
| a formatting means for formatting the book's content into a book distribution | The system transforms electronic pages into "correctly formatted paperback books" using the patented apparatus and methods. | ¶26 | col. 7:47-50 |
| a printing means for printing the book's content on paper sheets upon receipt of a signal from said receiving means | The ODB machine prints the downloaded digital content in situ on demand. | ¶13, ¶14 | col. 6:1-3 |
| a clamping means for clamping the printed sheets into a book block | The ODB machine binds the printed pages into a physical book, a process which inherently requires clamping or holding the pages together. | ¶14, ¶26 | col. 6:10-13 |
| a glueing means for applying glue to a spine of the book block | The ODB machine binds the printed pages on demand, which the patent discloses is performed with glue. | ¶14, ¶26 | col. 6:15-16 |
| a cutting means for cutting said paper sheets into smaller sheets | The complaint alleges the use of the full apparatus disclosed and claimed in the patent, which includes a cutting step to produce finished book pages. | ¶21, ¶26 | col. 6:6-9 |
Identified Points of Contention
- Scope Questions: The patent claims feature "means-plus-function" language (e.g., "receiving means," "clamping means"), the scope of which is limited to the specific structures disclosed in the patent's specification and their legal equivalents. A central question will be whether the specific network architecture of Google's cloud-based service is equivalent to the "central distribution unit" described in the patent (’890 Patent, col. 5:40-44), and whether the internal mechanisms of the Espresso Book Machine are structurally equivalent to the mechanical systems disclosed in the patent's figures.
- Technical Questions: The complaint's infringement theory relies on high-level functional descriptions of the accused system (e.g., "printing and binding books," Compl. ¶14) rather than detailed allegations about its internal workings. A key factual question will be whether the Espresso Book Machine’s components actually perform the specific functions of clamping, glueing, and cutting in a manner that maps onto the structures disclosed in the ʼ890 patent specification (e.g., the movable clamping jaws of Fig. 9A-9B).
V. Key Claim Terms for Construction
The Term: "a receiving means for receiving data corresponding to a book's content"
- Context and Importance: This term defines the threshold for infringement, as it governs how the accused system obtains the digital book. Its construction is critical because the patent was filed in the context of 1990s network architecture, while the accused system uses the modern internet. Practitioners may focus on this term because its scope under 35 U.S.C. § 112, ¶ 6 is limited to the corresponding structure in the specification and its equivalents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue the function—"receiving data"—is broad and should not be unduly limited by the exemplary structures.
- Evidence for a Narrower Interpretation: The specification discloses a structure where an "electronic bookstore" (EBS) receives data from a "central distribution unit (CDU)" via specific channels like a "modem and through a telephone line, a satellite link, [or] cable feed" (’890 Patent, col. 5:40-44). This may support an argument that the term’s scope is limited to a centralized distribution architecture and its equivalents, raising the question of whether Google’s distributed server network is an equivalent structure.
The Term: "a clamping means for clamping the printed sheets into a book block"
- Context and Importance: This term is central to the physical process of making the book. The infringement analysis will depend on a direct comparison between the mechanical structure inside the accused Espresso Book Machine and the specific clamping structure disclosed in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the function is simply clamping, and any device that clamps pages together for binding should fall within the claim.
- Evidence for a Narrower Interpretation: The specification discloses a specific corresponding structure: a "movable clamping means 12" with "jaws 34" that not only clamps the pages but also "transport[s] said book block through the rest of the process," such as the glueing station (’890 Patent, col. 6:11-13; Fig. 11). This suggests the claim requires a structure that both clamps and transports, potentially narrowing its scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Google induces and contributes to infringement by providing the electronic book files through Google Books, knowing they will be used in ODB's machines to create physical books (Compl. ¶¶ 22, 23, 26). The electronic book file is alleged to be a non-staple component especially adapted for infringing use (Compl. ¶27).
- Willful Infringement: Willfulness is alleged against all defendants based on alleged pre-suit knowledge. The complaint cites "good faith letters" sent to Google in 2005 (Compl. ¶37), a response from ODB to a cease and desist letter in 2006 (Compl. ¶45), and a meeting with Jason Epstein in 2000 (Compl. ¶51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural equivalence: as the asserted claims are dominated by means-plus-function limitations, the case will likely turn on whether the Plaintiff can prove that the components of Google's modern, cloud-based content delivery system and ODB's Espresso Book Machine are legally equivalent to the specific "central distribution unit" and mechanical binding structures described in the 1996-priority-date patent.
- A key evidentiary question will be one of technical proof: the complaint's allegations are based largely on public-facing descriptions of the accused system. The viability of the infringement claims will depend on whether discovery reveals that the internal mechanisms of the Espresso Book Machine operate in a manner that corresponds to the patent's detailed descriptions of cutting, clamping, glueing, and binding.