Network-1 Technologies, Inc. v. Google, L.L.C.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

NETWORK-1 TECHNOLOGIES, INC.,

Plaintiff, MEMORANDUM

OPINION & ORDER

-against-

GOOGLE LLC and YOUTUBE, LLC, 4 a jess PCG)

Defendants.

PAUL G. GARDEPHE, U.S.D.J.:

Plaintiff Network-1 Technologies, Inc. alleges that Defendants Google LLC and

YouTube LLC (collectively, “Defendants” or ““Google”) have infringed three of Plaintiff's

patents in connection with Defendants’ “Content ID system and its implementation . . . [on] the

YouTube [web]site.” (Cmplt. (Dkt. No. 2) J§ 28, 34; 14 Civ. 9558 Cmplt. (Dkt. No. 1) 28)!

Plaintiff alleges that Defendants have infringed the following patents: United States Patent No.

8,010,988 (the “’988 Patent”); U.S. Patent No. 8,205,237 (the “’237 Patent’); and U.S. Patent

No. 8,904,464 (the “’464 Patent”).

Pending before the Court are (1) the parties’ proposed construction of claims; (2)

Defendants’ motion for summary judgment on grounds of non-infringement: (3) Plaintiff s

cross-motion for summary judgment as to certain affirmative defenses; and (4) Plaintiff's appeal

from an October 14, 2022 discovery order issued by Magistrate Judge Sarah Netburn.

For the reasons stated below, the Court concludes that the asserted claims of the

°988 and °464 Patents are invalid as indefinite, and that Defendants are entitled to summary

judgment on Plaintiff's infringement claim premised on the asserted claims of the *237 Patent.

Unless otherwise noted, all citations refer to the docket in 14 Civ. 2396.

Plaintiffs cross-motion for summary judgment will be denied, and Plaintiff's appeal from Judge

Netburn’s discovery order will be denied as moot.

IL FACTS?

A. Plaintiff’s Patents

All three patents at issue were originally issued to Dr. Ingemar Cox, a professor of

computer science at University College London. These patents are now owned by Plaintiff.

(See Cmplt. (Dkt. No. 2) §f] 7-10)

The patents at issue “link[] traditional media to new interactive media, such as

that provided over the [i]nternet,” and address the “identif[ication] [of] a [media] work without

the need of inserting an identification code into a [media] work.” (988 Patent (Dkt. No. 148-4)

col. 1, 4); °237 Patent (Dkt. No. 148-5) col. 1, 4 (same); Patent (Dkt. No. 148-6) col. 1, 4

(same))* “[E]mbodiments consistent with the [patents at issue] provide a computer-implemented

method, apparatus, or computer-executable programs for linking a media work to an action.

Such embodiments might (a) extract features from the media work, (b) determine an

identification of the media work based on the features extracted using a sub-linear time search,

such as an approximate nearest neighbor search for example, and (c) determine an action based

2 To the extent that this Court relies on facts drawn from a party’s Local Rule 56.1 statement, it

has done so because the opposing party has either not disputed those facts or has not done so

with citations to admissible evidence. See Giannullo v. City of New York, 322 F.3d 139, 140

(2d Cir. 2003) (“If the opposing party . . . fails to controvert a fact so set forth in the moving

party’s Rule 56.1 statement, that fact will be deemed admitted.” (citations omitted)). Where the

non-moving party disputes the moving party’s characterization of cited evidence, and has

presented an evidentiary basis for doing so, the Court relies on the non-moving party’s

characterization of the evidence. See Cifra v. Gen. Elec. Co., 252 F.3d 205, 216 (2d Cir. 2001)

3 Except as to deposition transcripts and patents, the page numbers of documents referenced in

this Order correspond to the page numbers designated by this District’s Electronic Case Files

(“ECF”) system. With respect to deposition transcripts, the Court cites to the page numbers

originally assigned by the court reporter. With respect to patents, the Court cites to the internal

sheet, figure, and column numbers.

on the identification of the media work determined.” (’237 Patent (Dkt. No. 148-5) col. 4; °464

Patent (Dkt. No. 148-6) col. 4 (same); ’988 Patent (Dkt. No. 148-4) col. 4 (same))

Claim 15 of the ’°988 Patent concerns:

A method for associating an electronic work with an action, the electronic work

comprising at least one of audio and video, the method comprising:

a) electronically extracting features from the electronic work;

b) electronically determining an identification of the electronic work based on the

extracted features, wherein the identification is based on a non-exhaustive search

identifying a neighbor;

c) electronically determining an action based on the identification of the

electronic work; and

d) electronically performing the action.

Patent (Dkt. No. 148-4) col. 25-26)

Claim 17 of the ‘988 Patent concerns “[t]he method of claim 15, wherein the

non-exhaustive search is sublinear.” (Id. at col. 26 (emphasis in original))

Claim 33 of the ’237 Patent concerns:

A computer-implemented method comprising:

a) obtaining, by a computer system including at least one computer, media work

extracted features that were extracted from a media work, the media work

uploaded from a client device;

b) determining, by the computer system, an identification of the media work using

the media work extracted features to perform a sublinear approximate nearest

neighbor search of reference extracted features of reference identified media

works; and

c) determining, by the computer system, an action based on the determined

identification of the media work.

Patent (Dkt. No. 148-5) col. 28)

Claim 34 of the ’237 Patent concerns “[t]he method of claim 33, wherein the

action comprises providing to and/or displaying, at another client device, additional information

in association with the media work.” (Id. (emphasis in original))

Claim 35 of the ’237 Patent concerns “{t]he method of claim 34 wherein the

additional information is an advertisement.” (Id. (emphasis in original))

Claim 1 of the ’464 Patent concerns:

A method comprising:

receiving, by a computer system including at least one computer, a first electronic

media work;

correlating, by the computer system using a non-exhaustive, near neighbor search,

the first electronic media work with an electronic media work identifier;

storing, by the computer system, correlation information associating the first

electronic media work and the electronic media work identifier;

accessing, by the computer system, associated information related to an action to

be performed in association with one or more electronic media works

corresponding to the electronic media work identifier;

generating, by the computer system, a tag associated with the first electronic

media work;

providing, from the computer system to a user electronic device, the first

electronic media work and the associated tag;

obtaining, by the computer system from the user electronic device, a request

related to the associated tag;

generating, using the computer system, machine-readable instructions based upon

the associated information to be used in performing, at the user electronic device,

the action; and

providing, from the computer system to the user electronic device, the machine-

readable instructions to perform the action in response to the request.

(464 Patent (Dkt. No. 148-5) col. 24-25)

Claim 8 of the ’464 Patent concerns “[t]he method of claim 1, wherein the first

electronic media work is received from a first electronic device, the associated information is

received from a second electronic device, and the first electronic device, the second electronic

device, and the user electronic device are different from one another.” (Id. at col. 25 (emphasis

in original))

Claim 10 of the ’464 Patent concerns “[t]he method of claim 1, wherein the

associated information is related to an advertisement.” (Id. (emphasis in original))

Claim 16 of the ’464 Patent concerns “[t]he method of claim 1, wherein the

machine-readable instructions comprise a hyperlink to a URL.” (Id. (emphasis in original))

Claim 18 of the ’464 patent concerns:

A method comprising:

receiving, by a computer system including at least one computer, associated

information related to an action to be performed in association with a first

electronic media work identifier;

receiving, by the computer system, a first electronic media work;

correlating, by the computer system using a non-exhaustive, near neighbor search,

the first electronic media work with the first electronic media work identifier;

storing, by the computer system, correlation information associating the first

electronic media work and the first electronic media work identifier;

generating, by the computer system, a tag associated with the first electronic media

work;

providing, from the computer system to a first user electronic device, the first

electronic media work and the tag;

receiving, at the computer system, a request generated at the first user electronic

device and related to the tag;

generating, using the computer system, machine-readable instructions based upon

the associated information to be used in performing, at the user electronic device,

the action; and

providing, from the computer system to the first user electronic device, the

machine-readable instructions to perform the action in response to the request.

(Id. at col. 25-26).

Claim 25 of the ’464 Patent concerns “[t]he method of claim 18, wherein the first

electronic media work is received from a first electronic device, the associated information is

received from a second electronic device, and the first electronic device, the second electronic

device, and the user electronic device are different from one another.” (Id. at col. 26 (emphasis

in original))

Claim 27 of the ’464 Patent concerns “[t]he method of claim 18, wherein the

associated information is related to an advertisement.” (Id. (emphasis in original))

Claim 33 of the ’464 Patent concerns “[t]he method of claim 18, wherein the

machine-readable instructions comprise a hyperlink to a URL.” (Id. (emphasis in original))

C. Defendants’ Websites

Defendants operate the website www.youtube.com and the mobile website

m.youtube.com and related mobile applications (collectively, “YouTube”). (See Def. R. 56.1

Stmt. (Dkt. No. 225) 921) YouTube allows internet users to upload content — whether video,

audio, or melody — to the internet, where content is generally viewable by the public. (See id. □□□

22-24)

Google employs a “Content ID” system in connection with YouTube. The

Content ID system allows content owners — “e.g., individuals and entities that own rights to

music, television shows, and movies” — to control how their content is used on YouTube. (Id.

§ 22) The Content ID system determines “whether videos uploaded by YouTube users contain []:

video, audio, or melody content” that “belongs” to another person — for example, a copyright

holder. (Id. 9 23-24; Pltf. R.56.1 Counterstmt. (Dkt. No. 240-61) § 23) “For example, if a

YouTube user uploads a video of herself dancing to a popular song, then the Content ID system

may generate a match between the . . . user-uploaded video and . . . the popular song (i.e., the

reference work)” and take some predetermined action based on that match. (Def. R. 56.1 Stmt.

(Dkt. No. 225) § 25) The Content ID system generates matches by comparing uploaded videos

(“query works”) to a database of reference works. The reference works may have been uploaded

to YouTube by users, or otherwise provided to YouTube by the reference work’s author or

owner, or another rightsholder. (See id. § 28, 32)

According to Plaintiff, there are two versions of Google’s Content ID system that

infringe on Plaintiff's patents: an “older” version known as the “LSH” version, and a “newer”

version known as “Siberia.” (See id. {§ 26-27) Implementation of the Siberia system began in

approximately 2014. (See Pasula Dep. (Dkt. No. 240-5) at 11)

1. The LSH Version of Content ID

The LSH version of Google’s Content ID system generates “fingerprints” that

each represent an individual piece of “video, audio, [or] melody content. . . uploaded or

otherwise provided to YouTube.” (Def. R. 56.1 Stmt. (Dkt. No. 225) 69-70) Each fingerprint

is comprised of several “subfingerprints” corresponding to short snippets of that content. (Id. §

70) Subfingerprints for both query works and reference works are generated in the same manner.

(Id. §§] 71-72) For indexing purposes, subfingerprints are organized into a

called “locality sensitive hashing” (“LSH”) bands. (Id. {| 73-75) “The number of unique LSH

bands is finite; specifically, there are [il MD’ and the same LSH band

could be associated with multiple videos. (Id. □□ 77-78)

“(T]he LSH index [can] be visualized as a ‘table’ in which each unique LSH band

is assigned its own ‘row’ and each reference video is assigned its own ‘column.”” (Id. {| 84)

Indeed, the structure used to store the LSH bands for reference videos is known as Big Table.

(Pltf. R. 56.1 Counterstmt (Dkt. No. 240-61) 4 159; Erbo Dep. (Dkt. No. 240-3) at 75 (“[The

LSH Version of Content ID was] implemented in terms of a Google Technology called Big

Table, which is a distributed key value store.”)) Each new reference video added to the LSH

index represents a new column in the table, reflecting the LSH bands associated with the new

reference video. (Def. R. 56.1 Stmt. (Dkt. No. 225) § 91-93)

“Stage I of the LSH version of the Content ID system [begins] by searching [the]

index . . . for any LSH bands [associated with reference works] that are exact matches to any of

the [query] LSH bands of the user-uploaded video.” (Id. § 80) “A search of the LSH index

using a particular query LSH band searched only the row assigned to that particular LSH band

and did not search any of the other rows in the conceptual table.” (Id. 7 85) In other words, a

search of the LSH index returns only the references associated with a particular LSH band, and

Re (Pitf. R. 56.1 Counterstmt (Dkt. No. 240-61)

159-62)

The output for a Stage I search of the LSH version of Content ID is a list of all of

the reference videos associated with the query LSH bands of a newly uploaded video, “as well as

the pertinent point(s) in time in each reference video with which the LSH band{[s] are

associated.” (Def. R. 56.1 Stmt. (Dkt. No. 225) 4.87) “A typical user-uploaded or reference

GE. 204 one subfingerprint corresponds to only a short snippet or frame of video,

audio, or melody content.” (Id. § 90)

The “index hits” returned by a Stage I search are then further processed “to

eliminate candidates unlikely to be a match, which involves the use of various thresholds that

compare features extracted from reference work to features extracted from the [query video].”

(Mitzenmacher Rpt. (Dkt. No. 226-6) § 201; see also Def. R. 56.1 Stmt. (Dkt. No. 225) 94)

The “projection filter” first analyzes the videos by (IS

a to determine whether the query video and a particular reference video share sufficient

similarities over time — that is, over enough time of the reference video — to be considered a

match.* (Mitzenmacher Rpt. (Dkt. No. 226-6) § 202)

Stage II of the LSH search compares full fingerprints of query videos to each

reference video to determine the number of “raw matches.” (Def. R. 56.1 Stmt. (Dkt. No. 225)

{ 96)

The raw matches are then passed through the “claiming logic” to determine

whether the owner of the relevant reference video could “claim” the matching portion of the

query work and which “match policy” should be applied to the query work. (Id. {| 97-99)

2. The Siberia Version of Content ID

The Siberia version of Google’s Content ID system generates “embeddings”

corresponding “to a short snippet or frame of [the] video, audio, or melody content” uploaded to

YouTube. (Id. §29) As explained by Google, each embedding represents a single frame in a

video, and represents a point ina ee. (Id. § 30; Pasula Dep. (Dkt. No. 240-

4 The Court understands “Hamming similarities” to refer to a form of “Hamming distance,”

which generally measures “the number of . . . places in which [works] differ from one another.”

Andrew Butterfield, et al., A Dictionary of Computer Science (7th ed. 2016). Here, “Hamming

similarities” refer to the number of places in which works are similar. (See Mitzenmacher Dep.

(Dkt. No. 240-9) at 292 (“[T]he [H]amming similarity . . . essentially counts the number of

matching positions. . . . [I]n this case, the score is meant to correspond to a level of similarity

between the two objects specifically.”)).

5) at 22-24 (“[An embedding] . .. is a point in a ||... 2 vector which is a

description of a point in space. ... [A]n individual embedding .. . [is] a single frame [in a

video].”)) For each video uploaded to YouTube, Siberia generates a “‘sequence of embeddings’

corresponding to the [work’s] video, audio, and melody content.” (Def. R. 56.1 Stmt. (Dkt. No.

225) § 28 (quoting Pasula Dep. (Dkt. No. 240-5) at 29)) The embeddings are generated by a

GE 1:21 is part of a Google artificial intelligence project. (Id. The same

process is used to create both the “query” embeddings “corresponding to videos uploaded by

YouTube users” and the “reference” embeddings “corresponding to content . . . provided or

identified by copyright holders or other YouTube partners.” (Id. {| 32)

The reference embeddings are then “further manipulated” into uniformly

structured {i which are in turn stored in multiple references indices for

searching. (Id. J] 33-35; Pasula Dep. (Dkt. No. 240-5) at 45-46 ee

GEE) Whe hashing enables the Siberia system to store the reference

embeddings in a smaller form and to search the reference indices more quickly. (See Pasula

Dep. (Dkt. No. 240-5) at 47, 56

ee

I ) 2. fer2n02 indice

that are searched as part of the Siberia Version of the Content ID system are

> (Def. R. 56.1 Stmt. (Dkt. No. 225) 4 35)

5 Plaintiff denies that the indices store only “hash values,” and contends that “complete

embeddings for the reference work are also retained in the reference index and are used for

comparisons as part of the Siberia system search algorithm.” (PItf. R. 56.1 Counterstmt. (Dkt.

No. 240-61) § 35) In support of this assertion, Plaintiff cites an excerpt from a report prepared

by Dr. Michael Mitzenmacher, its expert witness. The excerpt cited by Plaintiff states, however,

that “[t]he {J of each embedding is what is stored in the reference index.”

10

The Siberia Content ID system contains multiple indices that are organized

primarily by content type, for example, video as opposed to audio. (See Mitzenmacher Rpt.

(Dkt. No. 226-6) § 220 (“Each of the reference indices (video, audio, and melody) is comprised

of SE of the embeddings.”); see also Pasula Dep. (Dkt. No. 240-5) at 32-33 (“A. □□□

Se... Vrere is one index for melody . ..Q. How many

indexes for video are there? A. For this copyrighted content, just one... . [There are also] J

ma)

Each of the reference indices is structured in the same manner. (Def. R. 56.1

Stmt. (Dkt. No. 225) § 36) Each index is “sharded,” meaning that the index is “divided into a

bunch of smaller indexes,” known as shards, “that can each fit on one [computer].” (Pasula Dep.

(Dkt. No. 240-5) at 39; see Def. R. 56.1 Stmt. (Dkt. No. 225) 439) For example, the large

SE (the “Video Index”) has MJ. (Pasula Dep. (Dkt. No. 240-

5) at 39; Def. R. 56.1 Stmt. (Dkt. No. 225) § 39-40) An index for different content might have

a different number of shards. (Def. R. 56.1 Stmt. (Dkt. No. 225) {§ 39-40) iy

(Mitzenmacher Rpt. (Dkt. No. 226-6) § 219; see also id. { 220 (“Each of the reference indices

(video, audio, and melody) is comprised of {EJ of the embeddings.”)) And while the

Dr. Mitzenmacher states that, at the final step of the search process, query embeddings are

compared directly to reference embeddings — rather than to J as in earlier stages of the

search (id. J§ 225-26) — that does not mean the indices “retain” “complete embeddings” in

addition to hash values for each reference work. (PItf. R. 56.1 Counterstmt. (Dkt. No. 240-61)

935) The original query embeddings can be recovered from the indexed hashes. (See Pasula

Dep. (Dkt. No. 240-5) at 46-47 (“A. ...

A. Yes.”))

11

(Def. R. 56.1 Stmt. (Dkt. No. 225) § 42) Within the Video Index, for example,

a

(See Pasula Dep. (Dkt. No. 240-5) at 40)

Within each shard, the hash values are further

GE (Def. R. 56.1 Stmt. (Dkt. No. 225) | 37)

ee (Pasula Dep. (Dkt. No. 240-5) at 43-44

ee

SS 20) □□□ os

Mitzenmacher Rpt. (Dkt. No. 226-6) § 221))

The search performed by the Siberia Content ID system has “three main stages:

‘Index Lookup,’ ‘Sparse,’ and ‘Verifier.’” (Def. R. 56.1 Stmt. (Dkt. No. 225) 4 43) As

discussed above, when a new video is uploaded to YouTube, the Siberia system generates a

sequence of embeddings, with each individual embedding corresponding “to a short snippet or

frame of that... content.” (Def. R. 56.1 Stmt. (Dkt. No. 225) 429) Those embeddings may be

referred to 2s the [il

SS:

Mitzenmacher Rpt. (Dkt. No. 226-6) § 219)

Using the Video Index as an example, at the Index Lookup stage — sometimes

referred to as the “ScaM” algorithm stage, because it was developed by Google’s “Scalable

Matching [] research team” team (Def. R. 56.1 Stmt, (Dkt. No. 225) § 58) — query embeddings

12

are compare

SS. (Mitzenmacher Rpt. (Dkt. No. 226-6) §{] 222-223 (“To be clear, the

system examines ee): Def. R. 56.1 Stmt. (Dkt.

No. 225) 4§ 45-47; Pasula Dep. (Dkt. No. 240-5) at 54 (“(U]p to [i or

something like that would be passed ee”) The Index Lookup

eS

QE £0: cach shard, and then compares the query embeddings to all of the hash values

in each of those I. (Def. R. 56.1 Stmt. (Dkt. No. 125) □ 48-49;

Mitzenmacher Rpt. (Dkt. No. 226-6) § 223 (“The Content ID Siberia Version then examines

cach of the i”)

In or about August 2020, Google modified the Index Lookup step for one of its

indexes to [RS in 2 YouTube-wide effort to cut costs.

(See Pitf, Ex. 86 (Dkt. No. 274-2) at 6 (YouTube presentation indicating

ee Supp. Konrad Dep. (Dkt. No. 274-3) at 30-31 (discussing an

internal Google document that [a

es)

The Index Lookup step outputs the [iy I

ns. (cf □□

56.1 Stmt. (Dkt. No. 225) §§ 51-52) Accordingly, for a search in the Video Index, the Index

Lookup step outputs a total of 12,500 hash values. (Mitzenmacher Rpt. (Dkt. No. 226-6) § 223)

13

At the “Sparse” stage, these a —also referred to as “index hits” —

are then further analyzed through a process called “sparse refiner,” or “[S]parse.” (Def. R. 56.1

Stmt. (Dkt. No. 225) {| 59, 60)

ee

SS | (1c. | 60; Mitzenmacher Rpt. (Dkt. No. 226-6) § 224) Some

reference works may have ee

Ss. (See Mitzenmacher Rpt. (Dkt. No. 226-6) § 224) The Sparse

Ses. (Sce id. Pasula Dep. (Dkt. No. 240-5) at 60, 63,

239.240 (noting that ther.

as )

Finally, the reference videos that pass the Sparse process proceed to the “Verifier”

stage, where

56.1 Stmt. (Dkt. No. 225) 4 61) “The [V]erifier determines whether a portion of any one or more

of the references iis

es” (6. 62)

Google has utilized “at least two versions of the [V]erifier.” (Mitzenmacher Rpt.

(Dkt. No. 226-6) § 226) An earlier version

Ss. (1c.) The more recent version

ES (1.) The final matches output

14

from the Verifier are assigned « [iis

SS 6. 122s)

The Siberia Contact [D’s “claiming system” then determines whether ag

IL. PROCEDURAL HISTORY

The Complaint in 14 Civ. 2396 was filed on April 4, 2014, and alleges that

Defendants’ Content ID system infringes on the ’988 and ’237 Patents.© (Cmplt. (Dkt. No. 2))

The Complaint in 14 Civ. 9558 was filed on December 3, 2014, and alleges that Defendants’

Content ID system infringes on the *464 Patent. (14 Civ. 9558, Cmplt. (Dkt. No. 1)) Defendants

filed their Answer in 14 Civ. 2396 on May 23, 2014, and filed their Answer in 14 Civ. 9558 on

January 23, 2015. (Ans. (Dkt. No. 22); 14 Civ. 9558 Ans. (Dkt. No. 11)) On June 9, 2014, this

Court entered a civil case management plan in 14 Civ. 2396. (Dkt. No. 31)

A. Inter Partes Review

In a June 30, 2015, joint letter, the parties informed the Court that Google had

petitioned the U.S. Patent and Trademark Office (the “PTO”) to institute inter partes review

(“IPR”) of, inter alia, the *237 Patent and the *988 Patent.” (Dkt. No. 83) Accordingly, on July

The Complaint also alleges claims regarding two other patents, but Plaintiff's claims regarding

those patents were later dismissed by stipulation. (Dkt. No. 134)

7 “<TTInter partes review[]’ . . . allows private parties to challenge previously issued patent claims

in an adversarial process before the Patent Office that mimics civil litigation.” SAS Inst., Inc. v.

lancu, 138 S. Ct. 1348, 1352 (2018). “Once inter partes review is instituted, the Patent Trial and

Appeal Board [the “PTAB”] — an adjudicatory body within the [PTO] created to conduct inter

partes review — examines the patent’s validity. .. . The [PTAB] sits in three-member panels of

administrative patent judges. .. . During the inter partes review, the petitioner and the patent

owner are entitled to certain discovery . . . ; to file affidavits, declarations, and written

memoranda . . . ; and to receive an oral hearing before the Board... .” Oil States Energy Servs.,

LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1371 (2018) (citing 35 U.S.C. §§ 6, 316).

15

2, 2015, this Court stayed both actions pending resolution of the PTAB’s IPR proceedings. (DKkt.

No. 85; 14 Civ. 9558 Dkt. No. 35)

The proceedings before the PTAB turned on the disputed claim term “non-

exhaustive search”:

In its decision instituting review of the ’179 patent, the [PTAB] construed a “non-

exhaustive search” as “a search that locates a match without a comparison of all possible

matches.” Google Inc. v. Network-1 Techs., Inc., IPR2015-00343, 2015 WL 3902007, at

*3_4 (P.T.A.B. June 23, 2015) (“Institution Decision”) (emphasis added). In so doing,

the Board declined to adopt Google’s construction of the term: “a search that locates a

match without conducting a brute force comparison of all possible matches, and all data

within all possible matches.” Institution Decision at *3. Thereafter, in its final decision

with respect to the ’179 patent, the Board maintained its construction of “non-exhaustive

search.” Final Decision at *2. Based upon that construction, the Board determined that

Google had failed to demonstrate that the cited prior art rendered the challenged claims of

the ’179 patent unpatentable as either anticipated or obvious.

Google LLC v. Network-1 Techs., Inc., 726 F. App’x 779, 781 (Fed. Cir. 2018) (emphasis in

original).®

Google appealed the PTAB’s decision to the Federal Circuit. In a March 26, 2018

decision, the Federal Circuit vacated the PTAB’s decision, adopted Google’s construction of the

claim term “non-exhaustive search,” and remanded to the PTAB for further proceedings. Id. at

786-87.

The Federal Circuit began its analysis by noting that the parties agreed that, “in

conducting its inter partes review of the Network-1 Patents, the Board was required by its rules

8 The Federal Circuit and the PTAB considered four of Plaintiff's patents: the °988 Patent and

Patent at issue here, as well as Patent Nos. 8,640,179 (the “179 Patent”) and 8,656,441 (the

“°441 Patent”). See id. at 780. Because the parties “agree[d] that the written description of the

patent is representative, and that [the Federal Circuit’s] determination of the correct

construction of ‘non-exhaustive search,’ as it appears in claim 1 of the ’179 patent, disposes of

the claim construction issue in all four of the Network-1 Patents,” the Federal Circuit “focus[ed]

[its] discussion on the *179 patent.” Id. at 781.

16

to apply the broadest reasonable construction of the term ‘non-exhaustive search’ in light of the

patents’ specifications.” Id. at 782.

The Federal Circuit also noted that the parties agreed,

as they did before the [PTAB], that the linchpin of the claim construction analysis in this

case is determining what an “exhaustive search” is. ... That is so because a “non-

exhaustive” search necessarily is a search that is not “exhaustive.” Put another way, the

claim limitation at issue does not require a search that employs a stated method (an

“exhaustive” search). Rather, it requires a search that does not employ a stated method (a

“non-exhaustive” search). As a result, in terms of claim construction, what must be

determined is the meaning of the word “exhaustive.” In that regard, before the Board, the

parties agreed, and the Board concurred, that, generally, an “exhaustive” search means a

“brute-force” search that sequentially considers all possible matches revealed in a search.

Institution Decision at *3. Further, in the Institution Decision, the Board stated that a

“non-exhaustive” search “encompasses anything other than a ‘brute-force’ search.” Id. at

*4. Where the parties part company is with respect to the degree of exhaustion required

in order for a search to be “exhaustive.”

Google argues that the Board erred in accepting Network-1’s contention that a search

qualifies as “exhaustive” as long as it considers “any portion of each potential match—

even a single bit of a long string.” . . . As it did before the Board, Google urges that,

instead, an “exhaustive” search must consider all data within each potential match,

because only such a search will ensure “find[ing] the correct answer.” .. . For example,

consider a musical identification system in which each known piece in a database

contains two parts, an introduction and a chorus. If the system compares an unknown

melody to every known work in the database, but does so only on the basis of the

database songs’ introductions, the search is not “exhaustive” because it ignores the

choruses. Thus, Google would argue, both the introduction (first part) and the chorus

(second part) of each song in the database must be checked in order for a search to be

“exhaustive.”

Google’s argument is based upon the proposition that the broadest construction of “non-

exhaustive” searching corresponds to the narrowest construction of “exhaustive”

searching. According to Google, the narrowest construction of “exhaustive” searching

requires considering the entirety of each’potential match, not just a single part of it.

Id. at 782-83 (footnotes omitted) (emphases in original).?

9 The Federal Circuit offered another illustration of the Board’s construction v. Google’s

construction: “[A] database of court names contains a potential match ‘Court of Appeals for the

Federal Circuit,’ and the query is ‘Federal Circuit.’ The Board’s construction would find a

search ‘exhaustive’ if it looked at the first letter of the query, ‘F,’ determined that it did not

match ‘C,’ and moved on — even if the search was a neighbor search rather than a search for

17

The Federal Circuit concluded that “[o]f the two competing constructions,

Google’s is, in fact, broader.” Id. at 784. “That is because Google’s construction (through its

narrower construction of ‘exhaustive’) necessarily encompasses all of the searches covered by

the Board’s construction. The Board’s construction (through its broader construction of

‘exhaustive’), on the other hand, does not necessarily encompass all of the searches covered by

Google’s construction.” Id. The Federal Circuit went on to find that because the “intrinsic and

extrinsic evidence” was “inconclusive as to the broader or narrower construction,” Google’s

construction was the broadest reasonable interpretation of “non-exhaustive search.” Id. at 786.

B. Markman Hearing

On January 2, 2019, the Court entered a stipulation and order lifting the stays that

had been in place since July 2, 2015. (Dkt. No. 134; 14 Civ. 9558 Dkt. No. 79) The parties

agreed to terminate the IPR proceedings and narrow the claims asserted by Plaintiff in 14 Civ.

2396 to claim 17 of the ’988 Patent and claims 33-35 of the ’237 Patent. (Dkt. No. 134; 14 Civ.

9558 Dkt. No. 79)

On April 30, 2019, the parties filed an Amended Joint Claim Construction Chart.

(Dkt. No. 146) The parties claim construction briefing was fully submitted on August 9, 2019.

(See Def. Claim Construction Sur-Reply (Dkt. No. 163))

On November 21, 2019, the Court conducted a Markman hearing. (Markman Tr.

(Dkt. No. 204)) In a June 29, 2020 order, the Court informed the parties that it would “decide

claim construction and summary judgment simultaneously,” and directed the parties to “submit a

exact matches only. Similarly, if the query were ‘Federal Circuit’ and the database entry were

‘First Circuit,’ considering only the first letter would produce a false positive under the Board’s

construction. . .. Google’s construction avoids false positives and false negatives by considering

all the data within a match.” Id. at 786.

18

joint letter that includes an agreed-upon briefing schedule for summary judgment.” (Dkt. No.

219)

C. Summary Judgment

The parties’ cross motions for summary judgment were initially fully briefed on

November 11, 2020. (Dkt. Nos. 223-241) On July 11, 2022, the Court ordered the parties to

provide additional briefing addressing the impact of supplemental discovery conducted by the

parties after their cross-motions for summary judgment had been filed. (Dkt. No. 266) Plaintiff

filed a supplemental brief in opposition to Defendants’ motion for summary judgment on

September 23, 2022, and Defendants’ filed a response on September 30, 2022. (Dkt. Nos. 274,

278)

DISCUSSION

I. CLAIM CONSTRUCTION

A. Legal Standards

Claim construction is a question of law to be determined by the Court. See

Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-89 (1996). When determining the

scope of a patent, “[t]he words of a claim are generally given their ordinary and customary

meaning as understood by a person of ordinary skill in the art when read in the context of the

specification and prosecution history.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d

1362, 1365 (Fed. Cir. 2012); see also Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319

(Fed. Cir. 2005) (“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather,

we must look at the ordinary meaning in the context of the written description and the

prosecution history.”); V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 13 10 (Fed.

Cir. 2005) (intrinsic record “usually provides the technological and temporal context to enable

19

the court to ascertain the meaning of the claim to one of ordinary skill in the art at the time of

invention”); Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341, 1351 (Fed. Cir.

2004) (proper definition is the “definition that one of ordinary skill in the art could ascertain

from the intrinsic evidence in the record”).

There are two exceptions to this rule: “1) when a patentee sets out a definition

and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim

term either in the specification or during prosecution.” Thorner, 669 F.3d at 1365. Neither

exception is relevant here.

The “ordinary and customary meaning” of a claim term should first be determined

by the intrinsic evidence, which consists of the claims, the specification, and the prosecution

history. See, e.g., Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841, 847-48 (Fed. Cir.

2006); Kinik Co. v. ITC, 362 F.3d 1359, 1365 (Fed. Cir. 2004), The patent specification is an

important guide to claim construction. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d

1576, 1582 (Fed. Cir. 1996) (“[T]he specification is always highly relevant to the claim

construction analysis. Usually, it is dispositive.”); Phillips, 415 F.3d at 1315-16 (“The best

source for understanding a technical term is the specification from which it arose, informed, as

needed, by the prosecution history.”) (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133

F.3d 1473, 1478 (Fed. Cir. 1998)). “A fundamental rule of claim construction is that terms .. .

are construed with the meaning with which they are presented in the patent document. Thus[,]

claims must be construed so as to be consistent with the specification.” Merck & Co., Inc. v.

Teva Pharms. USA, Inc., 347 F.3d 1367, 1370 (Fed. Cir. 2003) (citations omitted).

“Extrinsic evidence is that evidence which is external to the patent and file

history, such as expert testimony, inventor testimony, dictionaries, and technical treatises and

20

articles.” Vitronics, 90 F.3d at 1584. While a district court may consult extrinsic evidence as

part of the claim construction analysis, such evidence is considered less reliable than the intrinsic

evidence. See, e.g., Phillips, 415 F.3d at 1319 (“[T]he court should keep in mind the flaws

inherent in each type of evidence and assess that evidence accordingly.”).

“A claim is invalid for indefiniteness if its language, read in light of the

specification and prosecution history, ‘fail[s] to inform, with reasonable certainty, those skilled

in the art about the scope of the invention.”” HZNP Medicines LLC v. Actavis Labs. UT, Inc.,

940 F.3d 680, 688 (Fed. Cir. 2019) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.

898, 901 (2014)). “The ‘reasonable certainty’ standard established in Nautilus reflects a delicate

balance between the inherent limitations of language and providing clear notice of what is

claimed.” Guangdong Alison Hi-Tech Co. v. Int] Trade Comm’n, 936 F.3d 1353, 1359 (Fed.

Cir. 2019) (internal quotation marks omitted). “[A] patentee need not define his invention with

mathematical precision in order to comply with the definiteness requirement[, however].” Id.

(internal quotation marks omitted). “At bottom, the indefiniteness test ‘mandates clarity, while

recognizing that absolute precision is unattainable.’” Focus Prod. Grp. Int’l, LLC v. Kartri Sales

Co., Inc., 15 Civ. 10154 (PAE), 2018 WL 3773986, at *7 (S.D.N.Y. Aug. 9, 2018) (quoting One-

E-Way, Inc. v. Int’] Trade Comm’n, 859 F.3d 1059, 1063 (Fed. Cir. 2017)). The party asserting

indefiniteness has “the burden of proving indefiniteness by clear and convincing evidence.”

BASE Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017).

B. Agreed-Upon Constructions

The parties having agreed to the following constructions of claim terms in the

asserted patents and claims, this Court adopts these constructions for purposes of this action:

21

Claim Term Agreed Construction Asserted

Claims in

which Term

Appears!®

“sublinear” “A search whose execution time scales with a less than patent: 17

[search] linear relationship to the size of the data set to be searched, | °237 patent:

assuming computing power is held constant.” 33, 34, 35

“neighbor” “A close, but not necessarily exact or the closest, match of | °988 patent:

“near a feature vector, compact electronic representation, or set of | (15), 17

neighbor” extracted features to another, wherein the distance or

difference between the two feature vectors, compact °464 patent: 1,

electronic representations, or sets of extracted features falls | 8, 10, 16, 18,

within a defined threshold.” 25, 27, 33

“near neighbor | “A search using an algorithm designed to identify a close, °464 patent: 1,

search” but not necessarily exact or the closest, match of a feature 8, 10, 16, 18,

vector, compact electronic representation, or set of 25, 27, 33

extracted features to another, wherein the distance or

difference between the two feature vectors, compact

electronic representations, or sets of extracted features falls

within a defined threshold.”

“approximate | “A search using an algorithm designed to identify a close, °237 patent:

nearest but not necessarily exact or the closest, match ofa feature | 33, 34, 35

neighbor vector, compact electronic representation, or set of

search” extracted features to another, wherein the distance or

difference between the two feature vectors, compact

electronic representations, or sets of extracted features falls

within a defined threshold.”

“machine- “code or pseudocode that is executed using a °464 patent: 1,

readable computer processor, i.e., that is discernable by 8, 10, 16, 18,

instructions” | a computer processor and dictates steps to be 25, 27, 33

carried out by one or more computer

processors”

(Am. Jt. Claim Construction Chart (Dkt. No. 146) at 2)

10 “Bold numbers indicate claims explicitly reciting the claim term. Non-bold numbers indicate

claims depending from claims that explicitly recite the claim term. Numbers in parentheses

indicate a claim that is not currently asserted [that] recites the claim term, and a claim depending

from that non-asserted claim is asserted.” (Am. Jt. Claim Construction Chart (Dkt. No. 146) at 2

n.2)

22

C. Disputed Terms

The parties dispute four claim terms: (1) “non-exhaustive search”; (2)

“correlation information”; (3) “extracted features”; and (4) “extracting features.”

As discussed below, Plaintiff proposes constructions for all four terms.

Defendants propose constructions for “extracted features” and “extracting features,” but contend

that “non-exhaustive search” and “correlation information” are indefinite.

Claim Terms Plaintiff's Construction Defendants’ Asserted

Construction Claims in

which Term

Appears!

“non-exhaustive | “A search designed to locate a Indefinite °988 patent:

search” “non- {near] neighbor without (15), 17

exhaustive... comparing to all possible matches

search” (i.e., all records in the reference °464 patent:

data set), even if the search does 1, 8, 10, 16,

not locate a [near] neighbor.” 18, 25, 27, 33

“correlation Ordinary meaning. Indefinite. °464 patent:

information” 1, 8, 10, 16,

Alternatively: “information that 18, 25, 27, 33

associates the first electronic

media work with an electronic

media work identifier”

“extracted ‘“Flectronic data sampled, “Electronic data °988 patent:

features” calculated, or otherwise derived derived from a work (15), 17

from a work itself, as opposed to | itself, as opposed to

from information added or from information added | ’237 patent:

appended to the work.” or appended to the 33, 34, 35

work.”

“extracting “Sampling, calculating, or “Deriving electronic 988 patent:

features” otherwise deriving electronic data | data from a work itself, | (15), 17

from a work itself, as opposed to _| as opposed to from

from information added or information added or

appended to the work.” appended to the work.”

(Am. Jt. Claim Construction Chart (Dkt. No. 146) at 3)

1! See supra n.10.

23

1. “Non-Exhaustive Search”

The chart below depicts the various constructions of “non-exhaustive search” at

issue here:

Claim Term Plaintiff's Construction Defendants’ Federal Circuit’s

Construction “Broadest Reasonable

Construction”

“non- “A search designed to locate a | Indefinite “A search that locates a

exhaustive [near] neighbor without match without conducting

search” “non- | comparing to all possible a brute force comparison

exhaustive... | matches (i.e., all records in of all possible matches,

search” the reference data set), even if and all data within all

the search does not locate a possible matches.”

near] neighbor.”

The disputed term “non-exhaustive search” is used in (1) independent claim 15 of

the patent, which is not asserted in this case; (2) dependent claim 17 of the 988 patent; and

(3) all asserted claims of the ’464 patent. (See Pltf. Am. Infringement Contentions (Dkt. No.

226-2) at 2; Am. Jt. Claim Construction Chart (Dkt. No. 146) at 3)

The relevant claims from the ’988 patent, with the disputed term underlined, are

as follows:

15. A method for associating an electronic work with an action, the electronic

work comprising at least one of audio and video, the method comprising:

a) electronically extracting features from the electronic work;

b) electronically determining an identification of the electronic work based on

the extracted features, wherein the identification is based on a non-

exhaustive search identifying a neighbor;

c) electronically determining an action based on the identification of the

electronic work; and

d) electronically performing the action

17. The method of claim 15, wherein the non-exhaustive search is sublinear.

Patent (Dkt. No. 148-4) at 27)

24

Defendants argue that “non-exhaustive search” is indefinite because the term

“fails to ‘provide objective boundaries for those of skill in the art’” in that (1) the intrinsic

evidence does not “define the term’s contours” and (2) the extrinsic evidence cited by Plaintiff

“only amplifies the ambiguity inherent in the phrase ‘non-exhaustive search.’”” (Def. Claim

Construction Br. (Dkt. No. 151) at 15-16 (quoting Interval Licensing, 766 F.3d at 1371))

a. Intrinsic Evidence

(i) Claim Language

While neither side has discussed the claim language, frequently “the claims

themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips,

415 F.3d at 1314. Here, claim 15 refers to a “non-exhaustive search identifying a neighbor” and

claim 17 refers to a “non-exhaustive search [that] is sublinear.” (’988 Patent (Dkt. No. 148-4) at

27) The use of this language “strongly implies that the term [‘non-exhaustive search’] does not

inherently mean” a search that identifies a neighbor or is sublinear. Phillips, 415 F.3d at 1314

(“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies

that the term ‘baffles’ does not inherently mean objects made of steel.’””); see also Enzo Biochem,

Inc. v. Applera Corp., 599 F.3d 1325, 1334 (Fed. Cir. 2010) (“‘Under the doctrine of claim

differentiation, dependent claims are presumed to be of narrower scope than the independent

claims from which they depend.’” (quoting AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,

1242 (Fed.Cir. 2003)).

Omitting the “neighbor” limitation from the definition of “non-exhaustive

search,” Plaintiff's proposed construction is “[a] search designed to locate a [match] . . . without

comparing to all possible matches (i.e., all records in the reference data set), even if the search

25

does not locate a [match]... .” (Pltf. Claim Construction Br. (Dkt. No. 148) at 14) Aside from

this insight, the claims do not shed light on the meaning of “non-exhaustive search.”

(ii) Specification

As to the specification, Plaintiff cites the following language:

The extracted feature vector is then passed to a recognition (e.g., feature look-up)

operation, during which, the vector is compared to entries of known vectors 114

in a content identification (WID) database 110. It is important to realize that the

matching of extracted and known vectors is not equivalent to looking up a word in

an electronic dictionary. Since the extracted vectors contain noise or distortions,

binary search might not be possible. Instead, a statistical comparison is

often made between an extracted vector and each stored vector. Common

statistical measures include linear correlation and related measures such as

correlation coefficient, but other methods can also be used including mutual

information, Euclidean distance and Lp-norms. ...

If binary search was possible, then a database containing N vectors would require

at most log(N) comparisons. Unfortunately, binary search is not possible when

taking a noisy signal and trying to find the most similar reference signal. This

problem is one of nearest neighbor search in a (high dimensional) feature space.

In previous work, it was not uncommon to perform a linear search of all N entries,

perhaps halting the search when the first match is found. On average, this will

require N/2 comparisons. If N is large, this search can be computationally very

expensive.

Other forms of matching include those based on clustering, kd-trees, vantage

point trees and excluded middle vantage point forests are possible and will be

discussed in more detail later.

If binary search was possible, then a database containing N vectors would require

at most log(N) comparisons. However, in current advertisement monitoring

applications there is no discussion of efficient search methods. Thus, a linear

search of all N entries may be performed, perhaps halting the search when the

first match is found. On average, this will require N/2 comparisons. If N is large,

this can be computationally expensive. Consider a situation in which one out of

100,000 possible commercials is to be identified. Each 30-second commercial

consists of 900 video frames. If all 900 frames are stored in the database, then

N=90,000,000. Even if only every 10th video frame is stored in the database, its

size is still nine million. While databases of this size are now common, they rely

on efficient search to access entries, i.e., they do not perform a linear search. A

26

binary search of a 90,000,000-item database requires less than 20 comparisons.

In contrast, a linear search will require an average of 45,000,000!

The recognition system described can be considered to be a form of nearest

neighbor search in a high dimensional feature space. This problem has been very

well studied and is known to be very difficult as the dimensionality of the vectors

increases. A number of possible data structures are applicable including kd-trees

and vantage point trees. These data structures and associated search algorithms

organize a N-point dataset (N=90,000,000 in our previous example) so that

sublinear time searches can be performed on average. However, worst-case

search times can be considerably longer. Recently, Yianilos proposed an

excluded middle vantage point forest for nearest neighbor search. See, e.g., the

Yianilos reference. This data structure guarantees sub-linear worst-case search

times, but where the search is now for a nearest neighbor within a fixed radius, T.

The fixed radius search means that if the database contains a vector that is within

X of the query, then there is a match. Otherwise, no match is found. In contrast,

traditional vantage point trees will always return a nearest neighbor, even if the

distance between the neighbor and the query is very large. In these cases, if the

distance between the query and the nearest neighbor exceeds a threshold, then

they are considered not to match. This is precisely what the excluded middle

vantage point forest implicitly does.

Patent (Dkt. No. 148-8) at col. 8-9, 21-22 (citations omitted))

While the specification states that the “problem . . . of nearest neighbor search in a

(high dimensional) feature space” is best solved by application of a search method that is not

“computationally very expensive,” these descriptions are addressed by the “nearest neighbor”

and “sublinear” limitations on which the parties have agreed-to constructions. (Id.)

The Court concludes that the specification does not shed light on the correct

interpretation of “non-exhaustive search.” Indeed, the words “exhaustive” and “non-exhaustive”

do not appear in the specification. And contrary to Plaintiff's arguments, the specification does

not list “binary search, clustering, kd-trees, vantage point trees, excluded middle vantage point

forests, and searches for neighbors” as “examples of non-exhaustive search methodologies.”

(See Pltf. Claim Construction Br. (Dkt. No. 148) at 15) Nor does the specification “explain[]

27

that an exhaustive search potentially requires comparing the query to every record in a data set to

be searched” (id.) when discussing a “linear search of all N entries.” (988 Patent (Dkt. No. 148-

4) col. 9:25-27) As Google points out, Network-1 made these same arguments during the IPR

appeal, and the Federal Circuit rejected them.!?2 See Google LLC, 726 F. App’x at 785 (“We do

12 The parties dispute the significance of the Federal Circuit decision to this Court’s analysis.

Defendants argue that the “Federal Circuit addressed” the appropriate construction of “non-

exhaustive search” in the IPR appeal, “which involved the same claim term and specifications

_.. [and] intrinsic record that Network-1 relies upon here.” (Def. Claim Construction Br. (Dkt.

No. 151) at 16 (citing Google LLC, 726 F. App’x at 780)) According to Defendants, the

“Federal Circuit’s opinion expressly rejected Network-1’s argument that the specification

“identified? a ‘non-exhaustive search’ through its description of binary search, clustering, kd-

trees, and other search techniques.” (Id.) While the Court agrees with that characterization, that

ruling is not dispositive here, because a different standard applies.

The Federal Circuit reversed the PTAB’s construction of the term “non-exhaustive search” under

the “broadest reasonable interpretation standard.” Google LLC, 726 F. App’x at 782 (“[T]he

Board was required by its rules to apply the broadest reasonable construction of the term ‘non-

exhaustive search’ in light of the patents’ specifications.”) (citing 37 C.F.R. § 42.100(b)).

“(Under the broadest reasonable construction standard, where two claim constructions are

reasonable, the broader construction governs.” Id. at 784. And in order for a broader

construction “to be found reasonable, it is not necessary that a claim be given its correct

construction under the framework laid out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.

2005) (en banc).” Id. (emphasis in original).

Under the Phillips framework, however, where two or more “reasonable” constructions of a term

exist, it is possible that a “person of ordinary skill in the art” would find the narrower reasonable

construction to be “the [claim term’s] ordinary and customary meaning.” Phillips, 415 F.3d

1303. The Federal Circuit’s analysis of the patent’s claims and specification, and its conclusion

that they do not render Google’s broader construction of “non-exhaustive search” unreasonable,

is thus not per se incompatible with a different construction under the Phillips standard. See,

e.g., PPC Broadband, Inc. v. Corning Optical Comme’ns RF, LLC, 815 F.3d 747, 756 (Fed. Cir.

2016) (“If we were tasked with reviewing the Board's construction according to Phillips, and in

fact if the Board had applied the Phillips standard rather than the broadest reasonable

construction, this case would be straight-forward. PPC Broadband's construction is the only

construction of the term consistent with the use of the same term throughout the specification.

But this case is much closer under the broadest reasonable interpretation standard given the

ordinary meanings attributable to the term at issue.”); Convolve, Inc. v. Compaq Comput. Corp.,

812 F.3d 1313, 1325 (Fed. Cir. 2016) (“Our task is to interpret the scope of the claims per the

28

not agree, however, that these parts of the specification draw a clear line between ‘exhaustive’

and ‘non-exhaustive’ searching in terms of how much data within a record a search must

consider in order to qualify as one or the other.”).

Finally, it is worth noting that the specification undermines — rather than supports

— Plaintiffs proposed construction. While Claims 15 and 17 require a search that “does not

employ” an “exhaustive” method, Google LLC, 726 F. App’x at 782, the specification does not

state that “linear correlation” or “a linear search of all N entries” should not be used. (7988

Patent (Dkt. No. 148-4) col. 9:1-25) Indeed, the specification describes “linear correlation” as

among the “[c]ommon statistical measures” used to compare “an extracted vector [to] each

stored vector” (id. col. 9:3-5, 23-25 (“[In solving the] problem . . . of nearest neighbor search ina

(high-dimensional) feature space[] . . . it was not uncommon to perform a linear search of all N

Phillips standard. ... Thus, the examiner’s finding under the broadest reasonable interpretation .

cannot be dispositive.); Personal Audio, LLC v. Google LLC, 2019 WL 1150576, at *11 (D.

Del. Mar. 13, 2019) (“[W]hile construing the algorithm at issue to encompass any ‘conditional’

algorithm might be acceptable under the [broadest reasonable interpretation] standard, it may not

be appropriate under the Phillips standard.”).

This Court must thus undertake its own review of the intrinsic and extrinsic evidence to

determine whether “non-exhaustive search” “fail[s] to inform, with reasonable certainty, those

skilled in the art about the scope of the invention.” Nautilus, 572 U.S. at 901.

To the extent that Google argues that the “Federal Circuit’s decision compels the conclusion that

the term is indeed indefinite” (Def. Claim Construction Br. (Dkt. No. 151) at 13), it is mistaken,

as a footnote in the Google LLC decision makes clear:

In the district court, Google has advanced the argument that the claim term “non-exhaustive

search” is indefinite. See Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. —, 134 S.Ct. 2120,

2124, 189 L.Ed.2d 37 (2014) (“a patent is invalid for indefiniteness if its claims, read in light

of the specification delineating the patent, and the prosecution history, fail to inform, with

reasonable certainty, those skilled in the art about the scope of the invention”). In an IPR, the

Board cannot declare claims indefinite. See 35 U.S.C. § 311(b). The issue of indefiniteness

is therefore not before us, and we express no view on it.

Google LLC, 726 Fed. App’x. at 782 n.3.

29

entries.”)), and states that a linear search “may be performed.” (Id. col. 21:23-27) And the

specification states that a “binary search” — which Plaintiff cites as an exemplary “non-

exhaustive” search methodology (Pltf. Claim Construction Br. (Dkt. No. 148) at 15) — is not

“possible” in the context of the invention. (’988 Patent (Dkt. No. 148-4) col. 21 :23-27)

Similarly, the specification discusses the searches that Plaintiff describes as “non-exhaustive” as

“o]ther forms of matching,” without stating that these searches should be used to the exclusion

of linear correlation or any other methodology. (Id. col. 9:29-32)

It is also not clear that certain of the embodiments listed in the specification and

claims would meet Plaintiff’s proposed construction of “non-exhaustive search.” A “search

designed to locate a [near] neighbor without comparing to all possible matches[,]... even if the

search does not locate a [near] neighbor,” (PItf. Claim Construction Br. (Dkt. No. 148) at 14),

appears to exclude search methodologies that will always locate a neighbor, regardless of how

dissimilar the “matched” stored vector is from the query.

The specification notes that in contrast to “an excluded middle vantage point

forest[,] . . . traditional vantage point trees will always return a nearest neighbor, even if the

distance between the neighbor and the query is very large.” (°988 Patent (Dkt. No. 148-4) col,

22 (emphasis added)) And two of the academic papers that Plaintiff contends are incorporated

by reference into the 988 Patent (see Pltf. Claim Construction Br. (Dkt. No. 148) at 15-16 & n.6,

n.7) state that, “[fJor a worst case query, kd-tree search visits essentially the entire dataset.”

(Pltf. Claim Construction Br., Ex. 6, Peter N. Yianilos, Excluded Middle Vantage Point Forests

for Nearest Neighbor Search, DIMACS Implementation Challenge: Near Neighbor Searches

Workshop (1999) (Dkt. No. 148-17) at 2 (“Yianilos I”) (Dkt. No. 148-17) at 3; see also id. Ex. 7

Peter N. Yianilos, Locally Lifting the Curse of Dimensionality for Nearest Neighbor Search,

30

Symposium on Discrete Algorithms (SODA, 2000) (“Yianilos II”) (Dkt. No. 148-18) at 3

(“{Under certain circumstances] the kd-tree can confidently prune almost nothing.” (emphasis in

original))) “Traditional vantage point trees” and “kd-trees” are claimed as forms of “non-

exhaustive” searches in claims 18 and 19 (°988 Patent (Dkt. No. 148-4) col. 26) despite

potentially requiring “visiting essentially the entire dataset” for “a worst case query.” (Yianilos I

(Dkt. No. 148-17) at 3)

“IT]here is a strong presumption against a claim construction that excludes a

disclosed embodiment.” In re Katz Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1324

(Fed. Cir. 2011). While it is not entirely clear that Plaintiff's construction excludes these

embodiments, nothing in the specification suggests that these embodiments fall within Plaintiff's

proposed construction — i.e., that they do not require comparing a query “to all possible matches”

at least some of the time, under “worst case” circumstances. Indeed, the specification states that

these search methodologies may be useful because “on average” they lead to “sub-linear time

searches.” (See °988 Patent (Dkt. No. 148-4) col. 22) Sublinearity thus is their salient feature,

not “non-exhaustiveness.”

In sum, to the extent the specification distinguishes some types of searches from

others, the relevant fault line is not “exhaustiveness” as defined in Plaintiff's briefing and

proposed construction.

b. Extrinsic Evidence

Having concluded that the intrinsic evidence does not suggest a particular

construction of “non-exhaustive search,” the Court turns to the extrinsic evidence proffered by

the parties.

31

Plaintiff cites first to the declaration of Dr. Michael Mitzenmacher, its expert

witness, “Extrinsic evidence in the form of expert testimony can be useful to a court for a

variety of purposes, such as to provide background on the technology at issue, to explain how an

invention works, to ensure that the court's understanding of the technical aspects of the patent is

consistent with that of a person of skill in the art, or to establish that a particular term in the

patent or the prior art has a particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318

(collecting cases). “However, conclusory, unsupported assertions by experts as to the definition

of a claim term are not useful to a court.” Id.

Here, Dr. Mitzenmacher opines that “non-exhaustive search’ is a term that is well

understood by skilled artisans in the field . . . [and that] Network-1’s proposed definition

accurately reflects the ordinary meaning of this term that would have been understood by persons

of ordinary skill in the art at the time of the patents.” (Mitzenmacher Decl. (Dkt. No. 148-1) fj

40-41) The Mitzenmacher declaration repeats the arguments made in Plaintiff's brief, including

that the °988 Patent’s specification distinguishes between exhaustive and non-exhaustive

searches in its comparison of “linear search” to “several examples of non-exhaustive . . .

searches,” such as binary search, kd-trees, vantage point trees, and excluded middle vantage

point forests. (Id. §{ 42-47) Dr. Mitzenmacher concludes that “the difference between

exhaustive and non-exhaustive searches turns on the number of comparisons that must be

performed between the query and the reference data set to be searched,” and “that an exhaustive

search may involve comparing a query to every record in the data set,” whereas a non-exhaustive

search does not. (id. 4 41-43)

Because Dr. Mitzenmacher’s declaration largely rehashes arguments made in

Plaintiff's briefing, it is of little value as extrinsic evidence. See Bushnell Hawthorne, LLC v.

32

Cisco Sys., Inc., 18 Civ. 760, 2019 WL 2745735, at *5 n.5 (E.D. Va. July 1, 2019), aff'd, 813 F.

App’x 522 (Fed. Cir. 2020) (“[P]laintiff's expert declaration in large part simply repeats

arguments that plaintiff makes in its brief, which do not require the aid of an expert to consider

and resolve here. Accordingly, plaintiff's expert declaration is not entitled to any significant

weight.”). Moreover, Dr. Mitzenmacher’s “ultimate opinion about the meaning of [non-

exhaustive search] is a legal opinion, which is outside his area of expertise.” IBSA Institut

Biochimique, S.A. v. Teva Pharms. USA, Inc., 18 Civ. 555 (RGA), 2019 WL 3936656, at *6 n.5

(D. Del. Aug. 20, 2019), aff'd, 966 F.3d 1374 (Fed. Cir. 2020); id. (“That is why expert opinions

on claim construction are usually worthless.”’).

In any event, Dr. Mitzenmacher’s opinion regarding the meaning of non-

exhaustive search — as set forth in his declaration — is undermined by his deposition testimony.

As discussed above, in his declaration Dr. Mitzenmacher states that “an

exhaustive search may involve comparing a query to every record in the data set.”

(Mitzenmacher Decl. (Dkt. No. 148-1) 942) At his deposition, however, Dr. Mitzenmacher

testified that a search that “prunes” potential matches from a dataset without directly comparing

the query to those entries is nonetheless “exhaustive”:

Q. You used the term “pruning” before. What did you mean by that?

A....[S]o one way of viewing an exhaustive search is by looking at it as a tree[.]

_.. And so if you were saying ... Ineed an exact match, I need a word that starts

with C, and you said, Okay, well, I’m starting at the dictionary and this page of

the dictionary, you know, is the first branch, and all it has are A’s on it, then I

could say, A-ha, well, I’ve actually done a comparison against every word on that

page because I know that every word on that page starts with A. But I don’t need

to actually do... 1,000 A comparisons to determine that [a word that starts with

C will not appear on that page]. That corresponds to a pruning and then a

backtracking approach, where the backtracking means, I can move to the next

page. That’s still exhaustive.

Q. Would that still be exhaustive?

33

A. Yes. Yes.

Q. That example you just gave is an exhaustive search?

A. Yes. According to Denny. And that’s also how I would describe it also.

(Mitzenmacher Dep. (Dkt. No. 153-12) at 174-75)

Dr. Mitzenmacher’s testimony — that an exhaustive search may not “need to

actually do . . . 1,000 [] comparisons” to eliminate 1,000 potential matches — is inconsistent with

Plaintiff's proposed construction of “non-exhaustive” search. (Id.) Because pruning algorithms

can “locate a [match] without comparing to all possible matches (i.e., all records in the reference

data set),” (Pltf. Claim Construction Br. (Dkt. No. 148) at 14), they would fall within Network-

1’s definition of “non-exhaustive” rather than exhaustive searches. Dr. Mitzenmacher’s

testimony thus highlights the uncertain boundaries between exhaustive and non-exhaustive

search methods.

Because (1) Dr. Mitzenmacher’s declaration does little more than repeat the

arguments in Plaintiffs claim construction briefing; and (2) Dr. Mitzenmacher’s deposition

testimony undermines Plaintiff’s proposed construction and the assertions in Dr. Mitzenmacher’s

declaration, Dr. Mitzenmacher’s opinion is entitled to little weight.

Plaintiff also cites to several academic papers that provide definitions of

“exhaustive search” and “non-exhaustive search.” These definitions are of limited value here,

but it is worth noting that they differ from Plaintiff's proposed construction.

For example, the Denny excerpt — cited by Dr. Mitzenmacher at deposition —

defines exhaustive search and non-exhaustive search as follows:

Exhaustive search is a technique for constructing or examining all possible states

within a given search space. . . . In contrast, non-exhaustive search strategies,

such as the probabilistic algorithms studied in the previous chapter, traverse the

search space more or less at random and thus certain states may never be

examined.

34

(Pitf. Claim Construction Br., Ex. 8, Paul C. Denny, Search and Enumeration Techniques for

Incidence Structures (“Denny”) (Dkt. No. 148-19) at 10)

Plaintiffs proposed construction is inconsistent with Denny’s in that it does not

require that the claimed search methods “traverse the search space more or less at random.” (Id.)

There is no evidence in the record that binary search, or any of the other search methodologies

discussed in the specification, proceed in this fashion. The Denny excerpt proffered by Network-

1 also describes “backtracking” as a “technique for performing exhaustive search,” wherein

partial “feasible solutions” are examined systematically to determine if a dataset contains a

match. (Id. at 10-12) Once a “partial solution . . . has been constructed and the feasibility

property □□ (a1, a2, .. . ,ax) = false, then it is known... [that] no extension of the partial solution

(ai, a2,..., ax) can possibly form a valid complete solution. As soon as this situation is detected,

it is then possible to eliminate from consideration [other] infeasible solutions.” (Id. at 12)

Denny thus describes as “exhaustive” a search technique that can “eliminate from consideration”

certain solutions in a dataset without directly comparing them to the search query. 13

Using as an example a dictionary search regarding the query word “cube,” Denny

describes a search that could eliminate from the list of possible solutions every word in the

13 Plaintiff attempts to disclaim Denny’s description of such “pruning techniques” as exhaustive.

According to Plaintiff, “Denny’s ‘pruning’ relates to the length of time needed for individual

comparisons (which Denny explains could be stopped early when the search determines that

there is no match based on that comparison), not the number of comparisons needing to be

performed.” (Pitf. Claim Construction Br. (Dkt. No. 148) at 13-14 n.10) Plaintiff’ s

characterization of Denny’s “pruning” is incorrect. Denny plainly states that pruning

“significantly reduce[s] the required execution time of [backtracking] algorithm[s]” by

considering “partial feasible solutions” and eliminating “infeasible solutions,” without

considering each individual solution. (See Denny (Dkt. No. 148-19) at 11-12) This search —

which Denny describes as “exhaustive” — would be considered “non-exhaustive” under

Plaintiffs construction, because it does “not potentially require a comparison to all records in a

data set.” (Pitf. Claim Construction Br. (Dkt. No. 148) at 15-19)

35

dictionary beginning with the letters A or B, without any comparison of the query word with a

word that begins with one of those letters. The search would likewise eliminate every word

beginning with “ca,” without comparing the cube query word with, for example, the words

“candy” or “crabapple.” While Denny would describe this search as exhaustive, it would be

“non-exhaustive” under Plaintiff's proposed construction.

Another article cited by Plaintiff in support of its proposed construction defines

“exhaustive search” as “[t]he technique of generating and analyzing all of the possible states of a

situation.” (Pltf. Claim Construction Br., Ex. 9, Jon Orwant et al., Mastering Algorithms with

Perl (1999) (“Orwant”) (Dkt. No. 148-20) at 4) Orwant’s definition of exhaustive search appears

similar to Plaintiffs — a search that “potentially requires comparing the query to every record in

a data set to be searched.” (Pltf. Claim Construction Br. (Dkt. No. 148) at 15) Orwant notes,

however, that “the definition of exhaustive search is vague. The exact meaning of ‘try

everything’ depends upon the particular problem. Each problem has its own way of trying

everything, and often many different ways.” (Orwant (Dkt. No. 148-20) at 7) Orwant’s analysis

highlights that while the term “exhaustive search” might, in a general sense, mean “try

everything” (id.), the °988 and °464 Patents do not discuss what “exhaustive” or “non-

exhaustive” search means in the context of a “nearest neighbor search in a high dimensional

feature space.” (°988 Patent (Dkt. No. 148-4) col. 22)

In sum, the extrinsic evidence does not support Plaintiffs proposed construction.

As discussed above, Dr. Mitzenmacher’s declaration merely parrots the arguments in Plaintiff's

briefing, and the opinions expressed in the declaration are undermined by his testimony that

pruning search algorithms are exhaustive, even though these searches do not search the entirety

of the reference set, and thus fall within Plaintiff's proposed construction of “non-exhaustive

36

search.” The limited external sources Plaintiff cites likewise do not support Plaintiff s

construction. Indeed, the extrinsic evidence merely highlight the vague nature of “exhaustive

search” and “non-exhaustive search.”!*

* * * *

The Supreme Court and the Federal Circuit have instructed that “there is an

indefiniteness problem if the claim language ‘might mean several different things and no

informed and confident choice is available among the contending definitions.’” Interval

Licensing, 766 F.3d at 1371 (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,

911 (2014)). Consistent with this guidance, district courts have found claim terms indefinite

where multiple reasonable definitions exist and the evidence does not provide reasonable

certainty as to which definition is correct. See dunnhumby USA, LLC y. emnos USA Coprp., 13

Civ. 399, 2015 WL 1542365, at *18 (NLD. Ill. Apr. 1, 2015) (“Based on the lack of guidance in

the intrinsic evidence and the additional meanings of the term in the extrinsic evidence, the Court

finds the term ‘selection of a query type’ to be indefinite.”); Honeywell Int'l Inc. v. ICM Controls

Corp., 45 F. Supp. 3d 969, 985 (D. Minn. 2014) (“Since the two options [for interpreting the

claim] entail differing limitations for the claim, the missing language in claim 1 results in a lack

of reasonable certainty as to its scope.”); Light Transformation Techs. LLC v. Lighting Science

Grp. Corp., et al., 12 Civ. 826 (MHS) (RSP), 2014 WL 3402125, at *9 (E.D. Tex. July 11,2014)

(finding claims indefinite where (1) the term “axis of light direction” was subject to multiple

14 Although Plaintiff cites the use of “exhaustive search” in two Google patents (Pitf. Claim

Construction Br. (Dkt. No. 148) at 18-19), the use of this term in Google’s patents sheds no light

on the proper construction of “non-exhaustive search” as used in Plaintiff's patents. “Exhaustive

search” is used once in each of the Google patents in a highly specific context, and the term is

not defined in either patent. (U.S. Patent No. 7,831,438 (Dkt. No. 148-21) col. 7-8; U.S. Patent

No. 8,065,733 (Dkt. No. 148-22) col. 9) As such, the use of this term in the Google patents does

not assist the Court in determining the scope of Plaintiff's asserted patents.

37

plausible constructions, and (2) dictionary definitions of axis contradicted plaintiff's proposed

construction).

Here, the intrinsic evidence provides no definition of the term “non-exhaustive

search,” and the extrinsic evidence suggests that a person skilled in the art might reasonably

define “non-exhaustive search” in multiple ways, including (1) Plaintiff's proposed construction

(modified to remove the reference to locating a “near neighbor”) —“[a] search designed to locate

a [match] without comparing to all possible matches (i.e., all records in the reference data set),

even if the search does not locate a [match]” (Pltf. Claim Construction Br. (Dkt. No. 148) at 14);

(2) the Federal Circuit’s broadest reasonable interpretation construction — “[a] search that locates

a match without conducting a brute force comparison of all possible matches, and all data within

all possible matches,” Google Inc., 726 F. App’x at 780; and (3) Denny — “search strategies]

[that] . . . traverse the search space more or less at random and thus certain states may never be

examined.” (Denny (Dkt. No. 148-19) at 10)

The differences in these reasonable definitions are material to the scope of the

asserted claims because different search algorithms could be considered “exhaustive” or “non-

exhaustive” depending on which definition is applied. As discussed above, Dr. Mitzenmacher

testified that pruning was an exhaustive search method — and it would be under Denny’s

definition. But pruning would not be an exhaustive search method under Plaintiff's proposed

construction.

The scope of the asserted claims using the term “non-exhaustive search” is thus

uncertain; a reader seeking to avoid infringement would not have the understanding necessary to

be reasonably certain that a given search algorithm is exhaustive rather than non-exhaustive

within the meaning of the asserted claims.

38

Plaintiff argues, however, that “[e]ven if the term ‘non-exhaustive search’ did

render unasserted claim 15 indefinite[,] . . . it does not follow that dependent claim 17 is

indefinite[,] [because] claim 17 narrows ‘non-exhaustive search’ by specifying [that] its ‘non-

exhaustive search’ is ‘sublinear.’” (Pltf. Claim Construction Reply (Dkt. No. 158) at 15)

According to Plaintiff, “[b]ecause the execution time of any search that compares to all records

N scales linearly with the size of the data set, a sublinear search necessarily compares to less than

all records in the data set.” (Id. at 16)

As an initial matter, the only case that Plaintiff cites in support of this proposition

is not analogous. In Signal IP v. Am. Honda Motor Co., 2015 WL 5768344, at *34 (C.D. Cal.

Apr. 17, 2015), the district court found that several claims that used the term “relative weight

parameter” were indefinite, because the claims — in using the term “relative” — did not disclose

the basis for comparison. Id. The court further concluded, however, that certain dependent

claims that used the term “relative weight parameter” were not indefinite, because they provided

“detailed embodiments of possible relative weight parameters (the total force, long term average

of sensor outputs, and total load rating, respectively).” Id.

Here, dependent Claim 17 does not do this. Instead, Claim 17 introduces an

additional limitation “wherein the claimed non-exhaustive search is sublinear.” (988 Patent

(Dkt. No. 148-4) col. 26)

And the addition of the sublinear limitation does not clarify the definition of

“non-exhaustive.” Denny states that “pruning” algorithms — which, as discussed above, Denny

and Dr. Mitzenmacher categorize as “exhaustive” — “can significantly reduce the required

39

execution time of [backtracking algorithms in general].”'> (See Denny (Dkt. No. 148-19) at 11;

see also id. (stating in chapter addressing “exhaustive construction of incidence structures” that

“defining intelligent pruning heuristics to speed up the search can result in an exponential saving

in the required running time”)) Plaintiffs extrinsic evidence thus demonstrates that search

methodologies that would qualify, under at least some definitions, as exhaustive can exhibit

sublinear time and resource scaling.

In sum, the phrase “non-exhaustive search” is indefinite, because “read in light of

the specification and prosecution history, [it] ‘fail[s] to inform, with reasonable certainty, those

skilled in the art about the scope of the invention.” HZNP Medicines LLC v. Actavis Labs. UT,

Inc., 940 F.3d 680, 688 (Fed. Cir. 2019) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572

U.S. 898, 901 (2014)). Accordingly, the asserted claims of the *988 and °464 patent are invalid

as indefinite. '®

15 In their Local Rule 56.1 Statements, the parties do not dispute that, “[u]nder the parties’

agreed-upon construction of the term ‘sublinear,’ there are examples of searches that compare to

less than all of the records in a data set that scale linearly, rather than sublinearly,” further

suggesting that one limitation has nothing to do with the other. (See Def. R. 56.1 Stmt. (Dkt. No.

225) J 109; Pitf. R. 56.1 Counterstmt. (Dkt. No. 240-61) J 109 (“Undisputed.”))

16 Plaintiff argues that “there are material factual disputes” that preclude a finding that the term

“non-exhaustive search” is indefinite as a matter of law. (PlItf. Claim Construction Reply (Dkt.

No. 158) at 16) According to Plaintiff, the material issues of fact “includ[e] how one of skill

would (1) understand the specification; (2) view the extrinsic references; and (3) more generally,

understand this phrase.” (Id.) Plaintiff is mistaken. The parties’ disagreements about the

intrinsic evidence and the meaning of a claim term are ultimately legal in nature. See Teva

Pharms. USA, Inc. v. Sandoz, Inc. (“Teva II”), 789 F.3d 1335, 1342 (Fed. Cir. 2015) (“A party

cannot transform into a factual matter the internal coherence and context assessment of the patent

simply by having an expert offer an opinion on it. The internal coherence and context

assessment of the patent [and the intrinsic evidence], and whether it conveys claim meaning with

reasonable certainty, are questions of law.”). Moreover, district courts are permitted to make

“factual findings about extrinsic evidence relevant to the question, such as evidence about

knowledge of those skilled in the art.” BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360,

1365 (Fed. Cir. 2017); see also Teva I, 574 USS. at 332 (noting in the context of a dispute

40

2. “Correlation Information””’

Plaintiff's Construction Defendants’

Construction

“correlation Ordinary meaning. Indefinite.

information”

Alternatively: “information that associates the first

electronic media work with an electronic media work

identifier”

(Am. Jt. Claim Construction Chart (Dkt. No. 146) at 3)

As an initial matter, Plaintiff argues that the Court need not construe the term

“correlation information” because the “ordinary meaning of this term would have been clear to

not only persons of skill in the art, but also to lay persons reading the claims.” (PItf. Claim

Construction Br. Dkt. (No. 148) at 23-24) “‘In some cases, the ordinary meaning of claim

language . . . may be readily apparent even to lay judges, and claim construction in such cases

involves little more than the application of the widely accepted meaning of commonly

understood words.’” O2 Micro Int’] Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360

(Fed. Cir. 2008) (quoting Phillips, 415 F.3d at 1312-13 (Fed.Cir.2005)). “However, in many

regarding indefiniteness that “[i]n cases where those subsidiary facts are in dispute, courts will

need to make subsidiary factual findings about that extrinsic evidence.”); see also Teva I, 789

F.3d at 1339 (“If a district court needs to consult extrinsic evidence, for example, to understand

the meaning of a term in the relevant art at the relevant time, the court may need to make

subsidiary factual findings about that extrinsic evidence.”).

Here, this Court has determined that the extrinsic evidence demonstrates that the term “non-

exhaustive search” has multiple possible meanings such that a person skilled in the art could not

be reasonably certain as to the scope of the asserted claims. This conclusion flowed from the

evidence that Plaintiff proffered, without regard to competing evidence. Plaintiff's citation to

pre-Teva case law for the proposition that the submission of extrinsic evidence creates an issue

of fact for the jury is unpersuasive. See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d

1331, 1335 (Fed. Cir. 2011) (affirming district court’s finding of indefiniteness as to eight

claims).

\7 This term appears only in the *464 Patent. Although the Court has concluded that all of the

asserted claims of the °464 Patent are invalid as indefinite, in the interest of completeness, the

Court considers below whether this term is likewise indefinite.

4]

cases, the meaning of a claim term as understood by persons of skill in the art is not readily

apparent.” Id.

For example, in 02 Micro, the Federal Circuit concluded that the district court

had erred in not construing the term “only if.” While this phrase has a “well understood

definition” amongst lay people, the parties had “presented a dispute to the district court regarding

the scope of [that claim term],” and the district court — in failing to construe the term — had not

resolved the dispute. Id. (“[T]he parties agreed that ‘only if has a common meaning, but then

proceeded to dispute the scope of that claim term.”).

“Correlation information,” unlike “only if,” is not a phrase that has a “well

understood definition.” See id. And contrary to Plaintiff's argument, it matters not that

“correlation” and “information” are each well understood words. (See Pltf. Claim Construction

Br. (Dkt. No. 148) at 24 (citing dictionary definitions); see also O2 Micro, 521 F.3d at 1361 (“In

deciding that “only if” needs no construction’ because the term has a ‘well-understood

definition,’ the district court failed to resolve the parties’ dispute because the parties disputed not

the meaning of the words themselves, but the scope that should be encompassed by this claim

language.”’).

Here, as in O2 Micro, the parties have presented a dispute as to claim scope. As

discussed above, Plaintiff argues for ordinary meaning or, failing that, the following

construction: “information that associates the first electronic media work with an electronic

media work identifier.” (Am. Jt. Claim Construction Chart (Dkt. No. 146) at 3) Defendants

argue that the claim term is indefinite (id.), i.e., that “correlation information” fails to “inform

those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572

U.S. at 910. Accordingly, the Court must construe the claim term. See O02 Micro, 521 F.3d at

42

1360 (“When the parties raise an actual dispute regarding the proper scope of these claims, the

court... must resolve that dispute.”’).

In arguing that this Court should construe “correlation information” to mean

“information that associates the first electronic media work with an electronic media work

identifier” (Pltf, Claim Construction Br. (Dkt. No. 148) at 24-25), Plaintiff contends that this

definition “is rooted in the claim language itself,” in that the ’464 patent “states that the

‘correlation information associates] the first electronic media work and the electronic media

work identifier.’” (Id. at 25 (alteration in original))

Defendants counter that the term is indefinite because there is a “complete

absence of intrinsic evidence” as to the meaning of “correlation information.” (Def. Claim

Construction Br. (Dkt. No. 151) at 23-25; id. (arguing that the term “correlation information”

does not appear in the specification and that the patent “does not describe the creation or

‘storing’ of ‘correlation information’ at all”)) Defendants further argue that reference to the

preceding element of the asserting claims

only raises more questions about the scope of the claims. Does the “correlation

information” referenced in the next element consist of whichever data is created

by “correlating” the “electronic media work” and the “identifier”? Or must the

“correlation information” be distinct from the byproducts of the “correlating”

step, given that the “storing” step was drafted as a separate element of the claims?

Relatedly, does the “correlation information” need to be represented by a distinct

and identifiable entry in a database, such as an alphanumeric code indicating that

an unknown “electronic media work” has been “correlated” with an “identifier”?

And, if not, how and where is the “correlation information” stored?

(Id. at 24-25)

As an initial matter, Defendants err in asserting that there is a “complete absence

of intrinsic evidence” (id. at 23), because a patent’s claims are a critical component of intrinsic

evidence. Immunex Corp. v. Sanofi-Aventis U.S. LLC, 977 F.3d 1212, 1218 (Fed. Cir. 2020)

(“When construing claim terms, we first look to, and primarily rely on, the intrinsic evidence,

43

including the claims themselves. . . .’” (quoting Personalized Media Comme’ns, LLC v. Apple

Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020))).

Moreover, the questions posed by Defendants merely reflect an effort to inject

uncertainty where none exists on the face of the °464 Patent. “‘Mathematical precision’” isnot

required to avoid invalidation. See Interval Licensing, 766 F.3d at 1370 (quoting Invitrogen

Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed.Cir. 2005)). Because the second element

provides that an electronic media work must be “correlate[d]” with an electronic media work

identifier, it follows logically that the “correlation information” is information that was generated

by the previous step. (’464 Patent (Dkt. No. 148-6) col. 24-26) Moreover, the language that

immediately follows instructs that the information to be stored “associat[es] the first electronic

media work and the electronic media work identifier.” (Id. col. 24-25)

Defendants have not responded to Plaintiffs argument that the clause

immediately following “correlation information” defines the term. (See Def. Claim Construction

Br. (Dkt. No. 151); Def. Claim Construction Sur-Reply (Dkt. No. 163)) The patent clearly

teaches that after the two works are correlated, the information “associating the first electronic

media work and the electronic media work identifier” should be stored, and the claim refers to

that information as “correlation information.” (’464 Patent (Dkt. No. 146-6) col. 24-26)

In sum, Defendants have not demonstrated that the term “correlation information”

is indefinite. The Court adopts Plaintiff's proposed construction.

44

3. “Extracting Features” and “Extracted Features”!®

Plaintiff's Construction Defendants’ Construction

“Extracted “Electronic data sampled, calculated, or | “Electronic data derived from a

features” otherwise derived from a work itself, as | work itself, as opposed to from

opposed to from information added or information added or appended to

appended to the work.” the work.”

“Extracting | “Sampling, calculating, or otherwise “Deriving electronic data from a

features” deriving electronic data from a work work itself, as opposed to from

itself, as opposed to from information information added or appended to

added or appended to the work.” the work.”

(Am. Jt. Claim Construction Chart (Dkt. No. 146) at 3 (emphasis added))

The disputed terms appear in the following independent claims:

15. A method for associating an electronic work with an action, the electronic

work comprising at least one of audio and video, the method comprising:

a) electronically extracting features from the electronic work;

b) electronically determining an identification of the electronic work based on the

extracted features, wherein the identification is based on a non-exhaustive

search identifying a neighbor;

c) electronically determining an action based on the identification of the

electronic work; and

d) electronically performing the action.

(°988 Patent (Dkt. No. 148-4) col. 26)

33. A computer-implemented method comprising:

a) obtaining, by a computer system including at least one computer, media work

extracted features that were extracted from a media work, the media work

uploaded from a client device;

b) determining, by the computer system, an identification of the media work

using the media work extracted features to perform a sublinear approximate

nearest neighbor search of reference extracted features of reference identified

media works; and

c) determining, by the computer system, an action based on the determined

identification of the media work.

18 “Extracted features” appears in the ‘988 patent and the ‘237 patent. “Extracting features”

appears in the ‘988 Patent. Although the Court has concluded that the asserted claims of the

‘988 Patent are invalid as indefinite, in the interest of completeness, the Court considers below

whether these terms are likewise indefinite.

45

(237 Patent (Dkt. No. 148-5) col. 28)

At an earlier point in this litigation, the parties agreed to the construction of

“extracted features” that Defendants propose now: “[e]lectronic data derived from a work itself,

as opposed to from information added or appended to the work.” (See Jt. Claim Construction

Chart (Dkt. No. 53) at 2)

Plaintiff now argues, however, that “it became clear from discovery . . . that the

parties have differing views on the scope of ‘derived’ in the context of ‘extracted features’ and

‘extracting features,’” and that Plaintiffs new proposed construction clarifies “how the ‘features’

are ‘extracted’ from a work using computer technology.” ‘(Pltf. Claim Construction Br. (Dkt.

No. 148) at 25-26 (emphasis in original))

Defendants complain that Plaintiff seeks to renege on the agreed-upon

constructions “to broaden the meaning of a claim term after it has engaged in extensive

discovery regarding Defendants’ Content ID system, out of fear that, under the originally agreed

construction, Defendants’ Content ID system does not infringe.” (Def. Claim Construction Br.

(Dkt. No. 151) at 26) According to Defendants, “there is no basis in the specification for

regarding ‘calculating’ as an example of ‘extracting’ a feature or ‘deriving electronic data from a

work.’” (Id. at 27 (emphases omitted))

Plaintiff maintains that its proposed construction is consistent with the following

language from the ’988 Patent’s specification, which explains that feature extraction operations

derive a representation of the work by, for example, sampling the work or performing a

calculation:

“The purpose of the feature extraction operation is to derive a compact electronic

representation of the work that can subsequently be used for the purpose of

recognition. In the case of images and video, this feature vector might bea

pseudo-random sample of pixels from the frame or a low-resolution copy of the

frame or the average intensities of nxn blocks of pixels. It might also be a

46

frequency-based decomposition of the signal, such as produced by the Fourier,

wavelet and or discrete cosine transforms. It might involve principal

component analysis. It might also be a combination of these. For television and

audio signals, recognition might also rely on a temporal sequence of feature

vectors. The recognition literature contains many different representations. For

block-based methods, blocks may be accessed at pseudo-random locations in each

frame or might have a specific structure. For audio, common feature vectors are

based on Fourier frequency decompositions, but other representations are

possible.”

Claim Construction Br. (Dkt. No. 148) at 26 (quoting 988 Patent (Dkt. No. 148-4) col. 7)

(emphasis in Plaintiff's brief); see also ’237 Patent (Dkt. No. 148-5) col. 19-20 (containing

substantively identical language))

According to Plaintiff, its “proposed constructions make clear for the fact-finder

that the sampling actions and mathematical calculations, as disclosed in the specification, are

ways in which an electronic representation can be derived from a media work itself.” (Pltf.

Claim Construction Br. (Dkt. No. 148) at 27)

Defendants counter that the “previously agreed-upon construction is firmly rooted

in the specifications, which state that ‘[t]he purpose of the feature extraction process is to derive

a compact representation of the work that can subsequently be used for the purpose of

recognition.’” (Def. Claim Construction Br. (Dkt. No. 151) at 26 (quoting °988 Patent (Dkt. No.

148-4) col. 7) (emphasis omitted)) Defendants maintain that “countless examples of

‘calculations’. .. would not create an ‘extracted feature’ in the eyes of a person of skill in the

art.” (Id. at 27) Although calculations are sometimes part of the extraction operation process,

the noteworthy aspect of these operations is not the calculations themselves but the process of

deriving information from the work. (Id.)

As an initial matter, the specification excerpts set forth above clearly contemplate

that the extracting features process may require sampling from a media work. Indeed, the

specification provides as an example a “pseudo-random sample of pixels from the frame” of a

47

video uploaded to YouTube. (°237 Patent (Dkt. No. 148-5) col. 19-20) It is likewise clear even

to a lay person that “sampling” is a method for “extracting” features from a work. A pixel that is

“sampled” from a video frame is also “extracted” from that frame. Defendants do not offer any

argument as to why the inclusion of the term “sampling” is overbroad in light of the intrinsic or

extrinsic evidence. Accordingly, the Court concludes that its inclusion in the construction is

appropriate.

While the specification does not use the word “calculate,” it discloses other

“feature extraction operation[s],” including “Fourier, wavelet and or discrete cosine transforms”

and “principal component analysis.” (1d. col. 6) As to whether these operations constitute

“calculations,” Plaintiff's expert - Dr. Mitzenmacher — offers the following in his declaration:

A person of skill in the art would have understood that both Fourier, wavelet, and

discrete cosine transforms/decompositions and principal component analyses are

types of mathematical operations or calculations that can be performed on an

electronic work to extract features from it to create a “sketch” or “fingerprint” of

the work. Each of these calculations uses computer technology to create a

simplified electronic representation of the media work at issue, and do so using

data from the work itself.

The above computational methods share roughly the same basic framework in

terms of generating “sketches” or “fingerprints” of an electronic work such as an

audio or video file. These methods involve taking large multi-dimensional data

and, using computer technology, transforming that data into a different

representation so that the most important aspects of the data correspond to values

for a small number of dimensions; these numbers correspond to the sketch or

fingerprint. As an example, for images, the discrete cosine transform described in

the specification is used in the well-known JPEG compression algorithm. The

JPEG compression algorithm takes 8 by 8 blocks of pixels, which can be

represented as 64 color values (one for each pixel), and transforms them into

another collection of 64 values that represent the same block of pixels in a

different, more compact way that conveys the critical information about the file.

(Mitzenmacher Decl. (Dkt. No. 148-1) 64-65 (footnote omitted))

48

In response, Defendants have submitted a declaration from Dr. James Storer,

Professor of Computer Science at Brandeis University. (Storer Decl. (Dkt. No. 152)) Dr. Storer

states that these paragraphs of the Mitzenmacher declaration demonstrate that

the defining characteristic of “extracting features” is not that it entails “sampling

or “calculating” from a work. Rather, the process of “extracting features” is

defined by the way in which it entails “creat[ing] a simplified electronic

representation of the media work at issue . . . using data from the work itself,”

such “that the most important aspects of the data correspond to values for a small

number of dimensions.”

(Id. 131 (quoting Mitzenmacher Decl. (Dkt. No. 148-1) {J 64-65) (alteration in original))

But Dr. Storer’s response does not explain how the addition of the word

“calculation” broadens the scope of the claim, or why Dr. Mitzenmacher’s explanation of how a

calculation can be used to extract features from a media work is incorrect. Nor does Dr. Storer’s

declaration address Dr. Mitzenmacher’s opinion that the specification explicitly contemplates the

utilization of “calculations” in order to extract features from a media work.

The Court concludes that Defendants have not rebutted Plaintiff's extrinsic

evidence that “extracting features” can include “calculating . . . electronic data from a work”

(Am. Jt. Claim Construction Chart (Dkt. No. 146) at 3), and finds no merit in Defendants’

argument that there “is no support in the patents or Network-1’s own declaration for its proposed

broadening of the construction of ‘extracting features’ and ‘extracted features.’” (See Def.

Claim Construction Br. (Dkt. No. 151) at 28)

Indeed, Defendants implicitly concede that “calculating” may be a method for

extracting features. (See Def. Claim Construction Br. (Dkt. No. 151) at 27 (“LE]very operation

performed by a computer entails performing a variety of calculations.”) (internal quotation marks

omitted)) Defendants argue, however, that “[t]here are countless examples of ‘calculations’ that

could be performed ‘on data comprising a work’ that would not create an ‘extracted feature’ in

49

the eyes of a person of skill in the art.” (Id.) For example, “a computer might perform

‘calculations on data comprising a work’ by (1) determining the number of bits in an image file

and (2) multiplying by zero.” (Id.) Acknowledging that this hypothetical calculation would both

be meaningless and not represent extracted features — because any number multiplied by zero

would sum to zero — Defendants’ example is not sufficient to rebut the intrinsic and extrinsic

evidence demonstrating that the feature extraction process detailed in the specification

contemplates “calculations.” Moreover, Plaintiffs proposed construction provides that extracted

features are “sampled, calculated, or otherwise derived” from the underlying media work. (PItf.

Claim Construction Reply (Dkt. No. 158) at 18 (emphasis in original)) This language ties the

“sample” or “calculation” to the underlying work.

The Court concludes that Plaintiffs proposed construction of “extracted features”

and “extracting features” is consistent with the intrinsic and extrinsic evidence. Accordingly, the

Court adopts Plaintiffs proposed construction.

Il. SUMMARY JUDGMENT

Having concluded that the asserted claims of the ’988 and ’464 Patents are invalid

as indefinite, the Court considers whether Defendants are entitled to summary judgment on

Plaintiff's claims of infringement as to the ’237 Patent.

A. Legal Standards

1. Summary Judgment

Summary judgment is warranted where the moving party “shows that there is no

genuine dispute as to any material fact” and that it “is entitled to judgment as a matter of law.”

Fed. R. Civ. P. 56(a). “A dispute about a ‘genuine issue’ exists for summary judgment purposes

where the evidence is such that a reasonable jury could decide in the non-movant’s favor.”

Beyer v. Cnty. of Nassau, 524 F.3d 160, 163 (2d Cir. 2008) (quoting Guilbert v. Gardner, 480

50

F.3d 140, 145 (2d Cir. 2007)). “When no rational jury could find in favor of the nonmoving

party because the evidence to support its case is so slight, there is no genuine issue of material

fact and a grant of summary judgment is proper.” Gallo v. Prudential Residential Servs., Ltd.

P’ship, 22 F.3d 1219, 1224 (2d Cir. 1994) (citing Dister v. Cont’] Grp., Inc., 859 F.2d 1108,

1114 (2d Cir. 1988)). “‘[T]hat opposing parties assert competing versions of the same event is

not in itself sufficient to preclude summary judgment,’ in that contradictory testimony only

establishes a ‘genuine’ issue for trial if it ‘lead[s] to a different legal outcome.’” Yi Fu Chen v.

Spring Tailor, L.L.C., No. 14 Civ. 218 (PAE), 2015 WL 3953532, at *4 (S.D.N.Y. June 29,

2015) (alterations in original) (quoting Krynski v. Chase, 707 F. Supp. 2d 318, 322 (E.D.N.Y.

2009)).

In deciding a summary judgment motion, the Court “‘resolve[s] all ambiguities,

and credit[s] all factual inferences that could rationally be drawn, in favor of the party opposing

summary judgment.” Spinelli v. City of New York, 579 F.3d 160, 166 (2d Cir. 2009) (quoting

Brown v. Henderson, 257 F.3d 246, 251 (2d Cir. 2001)). However, “‘[a] party may not rely on

mere speculation or conjecture as to the true nature of the facts to overcome a motion for

summary judgment. . . . [MJere conclusory allegations or denials .. . cannot by themselves create

a genuine issue of material fact where none would otherwise exist.” Hicks v. Baines, 593 F.3d

159, 166 (2d Cir. 2010) (second alteration and omissions in original) (quoting Fletcher v. Atex,

Inc., 68 F.3d 1451, 1456 (2d Cir. 1995)). Moreover, “‘[t]he principles governing admissibility of

evidence do not change on a motion for summary judgment[,]’ and district courts need only

consider admissible evidence in ruling on a motion for summary judgment.” 1M. v. United

States, 362 F. Supp. 3d 161, 174 n.9 (S.D.N.Y. 2019) (quoting Raskin v. Wyatt Co., 125 F.3d 55,

66 (2d Cir. 1997)).

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“Where, as here, the burden of persuasion at trial would be on the non-moving

party[,] ... the party moving for summary judgment may satisfy [its] burden of production under

Rule 56 in either of two ways: (1) by submitting evidence that negates an essential element of

the non-moving party’s claim, or (2) by demonstrating that the non-moving party’s evidence is

insufficient to establish an essential element of the non-moving party’s claim.’” Nick’s Garage,

Inc. v. Progressive Cas. Ins. Co., 875 F.3d 107, 114 (2d Cir. 2017) (quoting Farid v. Smith, 850

F.2d 917, 924 (2d Cir. 1988)).

2. Patent Infringement

While a patent “[i]nfringement [claim presents] a question of fact,” Apple Inc. v.

Samsung Elecs. Co., 839 F.3d 1034, 1040 (Fed. Cir. 2016), “a court may grant summary

judgment if it concludes that no reasonable jury could find infringement.” Kewazinga Corp. v.

Microsoft Corp., 558 F. Supp. 3d 90, 102 (S.D.N.Y. 2021), reconsideration denied, 2022 WL

4236301 (S.D.N.Y. Sept. 14, 2022). “The infringement analysis ‘entails two steps,’ the first of

which is construing the claims, and the second of which ‘is comparing the properly construed

claims to the’ accused products.” Philip Morris Prod. S.A. v. Int’] Trade Comm’n, 63 F.4th

1328, 1348 (Fed. Cir. 2023) (quoting Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d

1347, 1360 (Fed. Cir. 2019)). “To prove literal infringement, the patentee must show that the

accused device contains each and every limitation of the asserted claims.” Ericsson, Inc. v. D-

Link Systems, Inc., 773 F.3d 1201, 1215 (Fed. Cir. 2014) (emphasis omitted). “For

infringement, [Network-1] as the patentee has the burden of persuasion.” SIMO Holdings Inc. v.

Hong Kong Cloudlink Network Tech. Ltd., 983 F.3d 1367, 1380-81 (Fed. Cir. 2021);

Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191, 198-99, (2014) (‘[T]he

burden of persuasion is with the patentee . . . [in] an infringement suit.”).

52

“( A] party may not avoid summary judgment simply by offering an opinion of an

expert that states, in effect, that the critical claim limitation is found in the accused device.”

Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1047 (Fed. Cir. 2000). Rather, “[t]o

satisfy the summary judgment standard, a patentee’s expert must set forth the factual foundation

for his infringement opinion in sufficient detail for the court to be certain that features of the

accused product would support a finding of infringement[,]| . . . with all reasonable inferences

drawn in favor of the non-movant.” Intellectual Sci. & Technology, Inc. v. Sony Elecs., Inc.,

589 F.3d 1179, 1183 (Fed. Cir. 2009); see also SIMO Holdings, 983 F.3d at 1380-81 (same;

applying Second Circuit procedural law); Garcia v. Hartford Police Dep't, 706 F.3d 120, 128 (2d

Cir. 2013) (expert reports containing “speculative or conclusory” assertions are “inappropriate

for consideration on summary judgment”; to defeat summary judgment, an expert report must

“add... facts to the record that create a genuine dispute as to any material fact” (emphasis

omitted)).

B. Analysis

The parties do not dispute how the LSH and Siberia systems function. (See Plef.

R. 56.1 Counterstmt. (Dkt. No. 240-61) {J 28-68) Instead, the parties’ dispute centers on

whether those systems meet the limitations of step b of claim 33 of the ’237 Patent.

Claim 33 of the ’237 Patent concerns:

A computer-implemented method comprising:

a) obtaining, by a computer system including at least one computer, media work

extracted features that were extracted from a media work, the media work

uploaded from a client device;

b) determining, by the computer system, an identification of the media work using

the media work extracted features to perform a sublinear approximate nearest

neighbor search of reference extracted features of reference identified media

works; and

- 53

c) determining, by the computer system, an action based on the determined

identification of the media work.

(°237 Patent (Dkt. No. 148-5) col. 28)

Goo gle claims that it is entitled to summary judgment on Plaintiff's infringement

claim because “neither [the LSH nor the Siberia] version of Google’s Content ID system

performs [a] ‘sublinear’ search,” and accordingly that limitation of Claim 33 is not met. (Def.

Sum. J. Br. (Dkt. No. 224) at 21) Google further argues that — to the extent that a portion of

either version of its Content ID system meets the sublinear limitation of the °237 Patent —

Plaintiff has not offered evidence that either version of Content ID as a whole performs a search

that is at once (1) “sublinear”; (2) an “approximate nearest neighbor search”; and (3) of

“reference extracted features.” (See id. at 30-37)

As to the construction of “‘sublinear’ [search],” the parties agree that it “is [a]

search whose execution time scales with a less than linear relationship to the size of the data set

to be searched, assuming computing power is held constant.” (Am. Jt. Claim Construction Stmt.

(Dkt. No. 146) at 2) The parties further agree that “‘a search whose execution time scales

proportionately with the size of the data set to be searched scales linearly, rather than

sublinearly.” (Def. R. 56.1 Stmt. (Dkt. No. 225) ¥ 111; Pltf. R. 56.1 Counterstmt. (Dkt. No. 240-

61) § 111); see also Linear, McGraw-Hill Dictionary of Scientific and Technical Terms (6th ed.

2003) (“[Linear][:]. . . Having an output that varies in proportion to the input.”). Accordingly,

the accused versions of Google’s Content ID system meet the sublinear limitation if the

execution time of the searches they perform scales in a less than proportional relationship to the

size of the reference set.

54

1. Whether the LSH Version of Content ID Performs a Sublinear Search

Defendants say that “whenever a new reference was added to the LSH index, the

LSH bands associated with that video were populated in the index,” such that each new reference

constituted a new “potential match.” (Def. Sum. J. Br. (Dkt. No. 224) at 27) Asa result, the

LSH version is not sublinear. (Id. at 26-27) According to Defendants, “Network-1 has not

presented any argument or evidence that the number of matches scales in a way that is less than

proportional to the number of references to be searched.” (Id. at 28 (emphasis omitted)) Google

further argues that Dr. Mitzenmacher’s report and testimony demonstrate that “the number of

matches is a function of the number of references to be searched because each reference is

associated with some of the existing finite set of LSH bands.” (Id. (emphasis omitted)) “Dr.

Mitzenmacher’s statement that the LSH lookup returns its results ‘in time proportional to the

number of matches’ is no different from the observation that it returns its results in time

proportional to the number of references to be searched.” (Id. (quoting Mitzenmacher Rpt. (Dkt.

No. 226-6) J 211) (emphasis omitted)) Finally, Google argues that Network-1’s other evidence

“consists of isolated uses of [the] term [‘sublinear’] by a Google witness and in Google

documents that are uninformed by the parties’ agreed construction[,] and thus do[es] not shed

light on whether the LSH version is ‘sublinear’ under the meaning of that term in this case.” (Id.

at 29)

While the Court does not agree with Defendants’ observation that Dr.

Mitzenmacher’s report and testimony “lead[] to the ineluctable conclusion that the LSH version

of the Content ID system did not meet the ‘sublinear’ limitation” (see Def. Sum. J. Br. (Dkt. No.

224) at 27), for the reasons explained below, the Court concludes that Network-1 has not

presented evidence sufficient to create a material issue of fact as to whether the LSH version of

55

‘Content ID meets the “sublinear” limitation in claim 17 of the ’988 Patent and claim 33 of the

°237 Patent.

In opposing Defendants’ summary judgment motion, Plaintiff cites the following

evidence: (1) Dr. Mitzenmacher’s report and testimony; (2) a Google 2010 draft document

describing a potential update to the Content ID system; and (3) the academic work and testimony

of Google research scientist Dr. Shumeet Baluja. (See Pltf. Sum. J. Opp. (Dkt. No. 240) at 7-12)

a. The Mitzenmacher Report

The Mitzenmacher Report’s analysis of whether the LSH version of Content ID

performed a sublinear search is quite sparse. Omitting references, the entirety of the analysis is

as follows:

209. The approximate nearest neighbor (or neighbor or near neighbor) search of

the Content ID LSH Version is sublinear. .

210. Starting from the first step, the Content ID LSH Version system is designed

to determine a very small subset of the reference works in the database, in

particular a sublinear subset, that could be possible matches to the input work

being queried. This is through the creation of what is commonly referred to as an

“inverted index data structure, based on LSH bands: only reference works that

match in terms of the LSH bands are subject to further analysis.

211. The inverted index is designed to be a sublinear data structure; that is, the

inverted index on a query. Rather in this setting, when given an LSH band, the

inverted index can directly return a list of the reference works that match that

LSH band, in time proportional to the number of matches. Hence the work done

by the inverted index corresponds to the number of index hits, not the number of

references. This is a general property of inverted indexes.

212. Review of source code produced by the Defendants in this case confirms my

analysis of this claim element . . . [description of Content ID Source Code]

213. It is my opinion that the Content ID LSH Version meets claim element 33b)

literally...

(Mitzenmacher Rpt. (Dkt. No. 226-6) ff 209-13 (addressing Claim 33 of the Patent); see

also id. §§ 144-47 (Claim 17 of the ’988 Patent))

56

These paragraphs do not state that the LSH version of Content ID, by virtue of its

“inverted index” structure, performed a “search whose execution time scales with a less than

linear relationship to the size of the data set to be searched, assuming computing power is held

constant.” (Am. Jt. Claim Construction Stmt. (Dkt. No. 246) at 2) Rather, Dr. Mitzenmacher

contends that the LSH version was an “inverted index[, | designed to be a sublinear data

structure,” and to “determine a very small subset of the reference works in the database, in

particular a sublinear subset.” (Mitzenmacher Rpt. (Dkt. No. 226-6) 210-211) But the

asserted claims require that the LSH version of Content ID perform a sublinear search, not that it

“determine” a “sublinear subset” of the total reference works. Indeed, the “sublinear” claim

limitation construed by the parties specifically references a “search.” (See Am. Jt. Claim

Construction Stmt. (Dkt. No. 146) at 2 (reflecting parties’ agreed construction that a “‘sublinear

search’ is [a] search whose execution time scales with a less than linear relationship to the size of

the data set to be searched, assuming computing power is held constant”)) Dr. Mitzenmacher

does not explain in his report or in his testimony what he means in positing a “sublinear subset

[of data].”

In any event, to the extent that the Mitzenmacher Report can be read as stating

that the LSH version of Content ID performed a sublinear search, any such assertion is — as

discussed below — conclusory and lacks an adequate factual basis. See Intellectual Sci. &

Technology. Inc., 589 F.3d at 1183 (“To satisfy the summary judgment standard, a patentee’s

expert must set forth the factual foundation for his infringement opinion in sufficient detail for

the court to be certain that features of the accused product would support a finding of

infringement[,] . . . with all reasonable inferences drawn in favor of the non-movant.”).

57

According to Dr. Mitzenmacher, the LSH version of Content ID is structured as

an “inverted index.” For this proposition, Dr. Mitzenmacher relies on a draft document produced

in discovery by Google. (Mitzenmacher Rpt. (Dkt. No. 226-6) § 210 (citing Pltf. Ex. 40 (Dkt.

No. 240-15) at 3 NNN

GEE As discussed below, this document is a draft from 2010 that does not purport to

describe the LSH version of Content ID that Google ultimately implemented. Even assuming

arguendo that the accused LSH version of Content ID is structured as an inverted index, that

characteristic does not explain what a “sublinear subset” of a dataset is, nor does it demonstrate

that the LSH version of Content ID necessarily performed a sublinear search.

In asserting — in Paragraph 211 of his report — that an “inverted index is designed

to be a sublinear data structure,” and that it “is a general property of inverted indexes” that “the

work done by the inverted index corresponds to the number of index hits, not the number of

references,” Dr. Mitzenmacher cites only to a Wikipedia entry. (See Mitzenmacher Rpt. (Dkt.

No. 226-6) § 211)

The Wikipedia entry states that

an inverted index . . . is a database index storing a mapping from content, such as

words or numbers, to its locations in a table, or in a document or a set of

documents (named in contrast to a forward index, which maps from documents to

content). ...

The inverted index data structure is a central component of a typical search engine

indexing algorithm. A goal of a search engine implementation is to optimize the

speed of the query: find the documents where word X occurs. Once a forward

index is developed, which stores lists of words per document, it is next inverted to

develop an inverted index. Querying the forward index would require sequential

iteration through each document and to each word to verify a matching document.

The time, memory, and processing resources to perform such a query are not

always technically realistic. Instead of listing the words per document in the

forward index, the inverted index data structure is developed which lists the

documents per word.

58

With the inverted index created, the query can be resolved by jumping to the word

ID (via random access) in the inverted index.

Inverted Index, Wikipedia.org, https://en.wikipedia.org/wiki/Inverted_index (last visited Apr. 23,

2024).

Accepting the Wikipedia entry’s representation that the use of inverted indices is

far more efficient in terms of “time, memory, and processing resources” than the use of forward

indices for word queries, see id., it does not follow that as the size of the reference set increases,

the number of index hits — and thus resources expended on a search of the index — does not also

grow proportionally. Indeed, the Wikipedia entry states that inverted indices are designed to

“allow fast full-text searches, at a cost of increased processing when a document is added to the

database.” Id. The Wikipedia entry thus acknowledges that — as the size of the reference set

increases — the number of index hits, and the resources expended on a search of the index, will

likewise increase. And nothing in the Wikipedia entry suggests that the resources expended will

grow at anything less than a linear rate. See id. Finally, the Wikipedia entry does not use the

terms “sublinear search” or “sublinear subset.” See id.

Plaintiff has conflated the resource efficiency of a search with the scaling of

resource costs as a dataset grows. The Wikipedia entry tells us that a query directed to an

inverted index structure — such as that allegedly employed in the LSH system — is more efficient

(in terms of time and computing resources) at retrieving matches than a query directed to a

forward index. But the Wikipedia entry tells us nothing about whether a search of an inverted

index is “sublinear” under the parties’ agreed upon construction.

Consider the following: assume that a search of an inverted index with 5 million

reference records takes 5 minutes. Further assume that computing power is held constant. Does

a search of the same index with 10 million records take 10 minutes, and thus scaling linearly, or

59

does the search of the 10 million records take between 5 and 9 minutes, thus scaling sublinearly?

The fact that a search of a traditional forward index containing 5 million records might take five

hours instead of five minutes is irrelevant to this question. And “[u]nder the parties’ agreed-

upon construction of the term “sublinear,’ a search can scale linearly, rather than sublinearly,

even if it ‘is designed to determine a very small subset of the reference works in the database.’”

(Def. R. 56.1 Stmt. (Dkt, No. 225) 4 110 (quoting Mitzenmacher Rpt. (Dkt. No. 226-6) § 210);

Pltf. R. 56.1 Counterstmt. (Dkt. No. 240-61) § 110) In short, the Wikipedia entry cited in the

Mitzenmacher Report does not support Plaintiffs assertion that the LSH version of Content ID

meets the sublinear limitation.

As to Dr. Mitzenmacher’s assertion in paragraph 212 that his “review of

[Google’s] source code . . . confirm[ed]” his view that the LSH version of Content ID meets the

sublinear limitation, Dr. Mitzenmacher’s assertion is devoid of analysis. (Mitzenmacher Rpt.

(Dkt. No. 226-6) § 212) He merely describes the steps the source code takes to complete a

search, listing out each function as it is called. As to Stage I of the search — the LSH index

lookup portion of the LSH version on which the Mitzenmacher Report focuses — Dr.

Mitzenmacher states only that

60

(Mitzenmacher Rpt. (Dkt. No. 226-6) § 212) Nothing in this recitation suggests that the LSH

version of Content ID performed a “search whose execution time scales with a less than linear

relationship to the size of the data set to be searched, assuming computing power is held

constant.” (Am. Jt. Claim Construction Stmt. (Dkt. No. 246) at 2)

Plaintiff argues, however, that Dr. Mitzenmacher explained at deposition that “it

logically follows from [his discussion of source code in the Mitzenmacher Report] . . . that the

number of matches scales in a sublinear (and not in a proportional or linear) fashion as the

number of references to be searched increases.” (PlItf. Sum. J. Opp. (Dkt. No. 240) at 9)

Plaintiff cites the following testimony in support of this assertion:

Q. So just explain to me what you mean — what does it mean to say that the

Content ID LSH version system determines a sublinear subset [of matches]?

A. So I think the point is that the work going in to like the number of things in

the subset were sublinearly with the corresponding work or execution time to

handle such objects, while also grow sublinearly in the setting of the context of

claim construction.

(Id. (quoting Mitzenmacher Dep. (Dkt. No. 240-9) at 169) This gibberish does not clarify

anything in the Mitzenmacher Report, nor does it provide a factual basis for concluding that the

LSH version of Content ID meets the sublinear limitation.

In sum, nothing in the Mitzenmacher Report, in Dr. Mitzenmacher’s testimony, or

in the record as a whole would permit a reasonable jury to conclude that the LSH version of

61

Content ID performed the required sublinear search.'? See Arthur A. Collins, Inc., 216 F.3d at

1047 (“[A] party may not avoid summary judgment simply by offering an opinion of an expert

that states, in effect, that the critical claim limitation is found in the accused device. . . . [T]he

affidavit of an expert submitted in opposition to a motion for summary judgment must do more

by ‘set[ting] forth specific facts showing that there is a genuine issue for trial.’”) (quoting

Celotex Corp. v. Catrett, 477 U.S. 317, 323, 325 (1986)).

b. The CoverCat Draft

In opposing Defendants’ summary judgment motion, Network-1 also cites a

January 5, 2010 Google “draft” document entitled i

Plaintiff argues that the varying testimony of the parties’ experts presents a material issue of

fact. In this regard, Plaintiff notes that Defendants’ expert, Dr. Samrat Bhattacharjee, opines that

“¢lt]he search performed by the LSH Version of the Content ID system is not sublinear because

the system searches the LSH index is

(Pitf. Sum. J. Opp. (Dkt. No. 240) at 10 (quoting Bhattacharjee Decl. (Dkt. No. 240-59) § 290)),

while Dr. Mitzenmacher testified that the LSH version’s

. (id. at 11) Testimony

from David Erb — the “tech lead and manager of Content ID” since December 2011 — confirms

that Dr. Mitzenmacher’s understanding is correct. See Erb Dep. (Dkt. No. 240-3) at 77 (“The

BigTable is actually a sparse key value store, meaning that the only columns that actually exist

for that row are the ones that have content in them. And the content of each column... [is the

reference] video ID.”))

For purposes of their summary judgment motion, Defendants do not dispute Plaintiff's assertion

that “[a] search of the LSH index using a particular LSH band

(Pltf. R. 56.1

Counterstmt (Dkt. No. 240-61) §§ 159-62; Def. Reply R. 56.1 Stmt. (Dkt. No. 232) □□ 159-62

(“Undisputed ....”)) The fact that a search of the LSH index (I

ee (0es not necessarily mean that a search of the

index is sublinear as that term has been construed by the parties, however. (See Def. R. 56.1

Stmt. Dkt. No. 225) § 109 (“Under the parties’ agreed-upon construction of the term ‘sublinear,’

there are examples of searches that compare to less than all of the records in a data set that scale

linearly, rather than sublinearly.”); id. § 110 (“Under the parties’ agreed-upon construction of the

term ‘sublinear,’ a search can scale linearly, rather than sublinearly, even if it ‘is designed to

determine a very small subset of the reference works in the database.’”) (quoting Mitzenmacher

Rpt. (Dkt. No. 226-6) § 210); Pltf. R. 56.1 Counterstmt. (Dkt. No, 240-61) 109-10

(“Undisputed.”)) Nor has Plaintiff attempted to explain why that would necessarily be the case.

62

ie = el (Pltf. Sum. J. Opp. (Dkt. No. 240) at 7 (citing Pltf. Ex. 40 (Dkt. No, 240-15))) The

stated purpose of this project is to ee ee

SSS

Ss (Pith. Ex. 40 (Dkt. No, 240-15) at 2 (emphasis

omitted)) The document —_—_—_—— ee

Pe (c.) The match system described in

this document would use —_—SS—= SS (Id. at 3)

Plaintiff highlights the following language in this Google document:

(PItf. Sum. J. Opp. (Dkt. No. 240) at 7 (quoting Pltf. Ex. 40 (Dkt. No. 240-15) at 9) (emphasis in

Pitf. Sum. J, Opp.)) Plaintiff argues, and Defendants do not dispute, that “CPU (central

processing unit) and RAM (random access memory) resources are related to the amount of

computing power” used by a particular search method, (Id.) The more computing resources that

are used, the less time that is required to complete a search.

As an initial matter, the Google document quoted by Plaintiff is marked “draft,”

and Plaintiff has not proffered evidence demonstrating that the design(s) outlined in the

document were ever implemented, and if so, to what extent. (PItf. Ex. 40 ( Dkt. No. 240-15) at 1;

see MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc., 816 F.3d 1374, 1379 (Fed. Cir. 2016)

(“As to the CAD drawing, there is no evidence that it represented the actual product marketed

and sold.”))

Moreover, Plaintiff has quoted this document out of context. When the relevant

language from this 2010 draft document is considered as a whole, it becomes clear that Google

63

was considering two design options, iii

es. Tc record is

silent as to whether either of these options was chosen, or whether Google pursued an entirely

different option.

As to scaling, the document states that [a

NN x. 40 (DE No. 240-15) at 9) The

document’s next sentence — omitted by Plaintiff — states that, iy

ns (c.) By

contest, he □□

NNN © 1. 21psisakded)) The document

thus identifies a tadeo‘t betvecn (1

es (2)

GE). (See id.) The document concludes by stating tha i

IN 21203 res0 00 options. Ud)

eS

NN (12) Pei □□

64

proffered evidence that either version of Content ID described in the draft document was actually

implemented, much less that the IJ version was implemented instead of the J

a version.

Given these circumstances, the Google document cited by Plaintiff does not show

that the LSH version of Content ID is “capable of infringing,” see ePlus, Inc. v. Lawson

Software, Inc., 700 F.3d 509, 520 (Fed. Cir. 2012), much less actual infringement. Even where

there is “no dispute” that an accused device is “technically capable” of infringing, the patentee

must present evidence that it is “more likely than not [that] . . . the accused system[] []

perform[s] the [specific claim limitation].” See id. “Unless the claim language only requires the

capacity to perform a particular claim element, . . . it is not enough to simply show that a product

is capable of infringement; the patent owner must show evidence of specific instances of direct

infringement.” Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed. Cir. 2010); see also

ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (“In order to

prove direct infringement, a patentee must either point to specific instances of direct

infringement or show that the accused device necessarily infringes the patent in suit.”).

For the reasons explained above, the CoverCat draft does not constitute evidence

of “specific instances of direct infringement,” nor does it show that the LSH system “necessarily

infringes the patent[s] in suit.” Acco Brands, 501 F.3d at 1313.

c. Dr. Baluja’s Scientific Papers and Deposition Testimony

In arguing that there are material issues of fact as to whether the LSH version of

the Content ID system performs a sublinear search, Plaintiff also cites to a scientific abstract

written by two Google employees, Drs. Shumeet Baluja and Michele Covell, entitled “Learning

to Hash: Forgiving Hash Functions and Applications,” and to Dr. Baluja’s deposition testimony.

65

(Pitf. Sum. J. Opp. (Dkt. No. 240) at 7-8) The abstract — published in 2008 — addresses the

problem of “retriev[ing] examples from a database that are similar to a [query] example in a

manner that is [] efficient.” (Pltf. Ex. 56 (Dkt. No. 240-31) at 4; Baluja Dep. (Dkt. No. 240-4) at

178-81) The paper discusses several then-existing forms of hashing and notes that “LSH

[locality-sensitive hashing] and other hash functions are sublinear in the number of elements

examined compared to the size of the database.” (Pltf. Ex. 56 (Dkt. No. 240-31) at 4)

Dr. Baluja has been employed at Google since 2003 as a staff research scientist.

(Baluja Dep. (Dkt. No. 240-4) at 10, 16) He holds a bachelor’s degree in computer science and

philosophy from the University of Virginia, and a Ph.D from Carnegie Mellon in computer

science and robotics. (Id. at 10-11) He held a variety of research and scientific positions at tech

companies prior to joining Google. (Id. at 12-16) At Google, Dr. Baluja has held a variety of

basic research positions in the areas of wireless communications, image processing, social

networks advertising, and video recognition. (Id. at 16-26, 135) Dr. Baluja was part of the

Google research team that developed the core matching technology utilized in Content ID. (Id.

at 116) Dr. Baluja is not involved in the commercial applications resulting from his research.

(Id. at 26 (“One could always hope that your research is used in the real world, but that’s not my

concern.”))

At deposition, Dr. Baluja was first asked about a 2008 paper he and Covell

published in the scientific journal Pattern Recognition in May 2008. The paper is entitled

“Waveprint: Efficient Wavelet-based Audio Fingerprinting.” (Pltf. Ex. 54 (Dkt. No. 240-29))

Baluja testified that the locality sensitive hashing approach in matching technology permits the

scaling of the matching system to be sublinear:

Q Toward the end of the first paragraph, it says, “The system also provides good

scaling characteristics. When the database size is increased by 50 percent, we see

66

that we can have a sublinear computation increase while having no significant

impact on recognition.” Do you see that?

A Yes, yes.

Q What does that mean?

A So what that means is we will still consider all the elements in our repository

without having to examine them in detail.

Q So using this LSH approach allows the scaling of the system to be sublinear in

that sense? Is that what you're saying?

A Yes.

(Baluja Dep. (Dkt. No. 240-4) at 138)

Dr. Baluja was then questioned about the 2008 abstract entitled “Learning to

Hash: Forgiving Hash Functions and Applications,” in which he states that “LSH and other hash

functions are sublinear in the number of elements examined compared to the size of the

database.” (Pltf. Ex. 56 (Dkt. No. 240-31) at 4; Baluja Dep. (Dkt. No. 240-4) at 180-181) Dr.

Baluja confirmed that this reference to sublinear is “the same sublinearity that we discussed

earlier.” (Id. at 181)

Plaintiff argues that Dr. Baluja’s references to sublinearity in the abstract and

journal article, as well as his deposition testimony, create a material issue of fact as to whether

the LSH version of the Content ID system performs a sublinear search. (Pltf. Sum. J. Opp. (Dkt.

No. 240) at 7-8)

As an initial matter, while Dr. Baluja was part of the Google research team that

developed the core matching technology utilized in Content ID (Baluja Dep. (Dkt. No. 240-4) at

116), he is a scientist who does basic research. He is not an engineer and has no role in the

commercial applications resulting from his research. At deposition, he was not asked about —

and did not testify regarding — the functioning of the LSH version of Content ID. (See id. at 99

(“But I'm not an engineer. . . . [I]f I wrote a system for Google, it would probably crash entire

67

Google. So that’s why I do research.”)) Similarly, the journal article and abstract that he was

questioned about at deposition do not address or describe the LSH version of Content ID (see

Pitf. Ex. 56 (Dkt. No. 240-31) at 4 (proposing a hashing system that “far surpasses, in terms of

both efficiency and accuracy, a state-of-the-art Locality-Sensitive-Hashing-based technique for

the same problem and data set”)), and say nothing about whether the LSH version of Content ID

performed a “search whose execution time scales with a less than linear relationship to the size

of the data set to be searched, assuming computing power is held constant.” (Am. Jt. Claim

Construction Stmt. (Dkt. No. 246) at 2)

For these reasons, Dr. Baluja’s references to sublinearity in his scientific papers

do not demonstrate that the LSH version of Content ID performs sublinear searches.

* * * *

In sum, the evidence cited by Plaintiff does not create a material issue of fact as to

whether the LSH version of Content ID performs a sublinear search.*? Accordingly, Defendants

Plaintiff's infringement claim fails for another and independent reason. In arguing that the

LSH version of Content ID performs a sublinear search, Plaintiff addresses only Stage I of that

system. It is undisputed, however, that there are two stages in the LSH version of the Content ID

system, and that it is the combination of these two stages that result in a complete search. (See

Pltf. Sum. J. Opp. (Dkt. No. 240) at 24-25 (“The search algorithm of the LSH version of the

system has two main stages referred to as ‘Stage I’ and ‘Stage II.’... Defendants’ documents

explain the combination of these stages as a complete search... .”)) And “[uJnder the parties’

agreed-upon construction of the term ‘sublinear,’ a multi-step search scales linearly, rather than

sublinearly, if at least one of the steps of the multi-step search scales linearly.” (Def. R. 56.1

Stmt. (Dkt. No. 225) J 107; Pltf. R. 56.1 Counterstmt. (Dkt. No. 240-61) J 107 (“Undisputed.”))

Accordingly, in order for this Court to conclude that the LSH version of Content ID performs a

sublinear search, there would have to be evidence that at both Stage I and Stage II the system

performs a sublinear search. There is no such evidence.

While Plaintiff argues that paragraph 209 of the Mitzenmacher Report “explains that the entire

search (involving two stages) is sublinear” (Pltf. Sum. J. Opp. (Dkt. No. 240) at 24), Paragraph □

209 merely states that “[t]he approximate nearest neighbor (or neighbor or near neighbor) search

of the Content ID LSH Version is sublinear.” (Mitzenmacher Rpt. (Dkt. No. 226-6) 209) The

68

are entitled to summary judgment on Plaintiff's infringement claim to the extent it is premised on

the LSH version of Content ID.

2. Siberia Version of Content ID

a. Whether the Siberia Version of Content ID Performs

a Sublinear Search at the Index Lookup Stage

The parties dispute whether the Siberia version of Content ID meets the sublinear

limitation. Google argues that Dr. Mitzenmacher “admitted in his report and confirmed at his

deposition that the Siberia search algorithms scale linearly, rather than sublinearly.” (Def. Sum.

J. Br. (Dkt. No. 224) at 21) Plaintiff responds that Dr. Mitzenmacher testified that the “‘the

[Siberia] algorithm [] is sublinear because it has [the] ability to change and adapt’” by adjusting

the number of shards and partitions as the data set size grows. (Pltf. Sum. J. Opp. (Dkt. No. 240)

at 12-13 (quoting Mitzenmacher Dep. (Dkt. No. 240-9) at 128-29) (emphasis omitted))

In his report, Dr. Mitzenmacher states that he “generally agree[s]” “that if

additional references were added to the existing shard/partition structure, the [Index Lookup]

portion of the search would scale linearly.” (Mitzenmacher Rpt. (Dkt. No. 226-6) 229

subsequent paragraphs in the Mitzenmacher Report — which are discussed above — address only

the Index Lookup portion of Stage I, and the evidence cited in Paragraph 209 does not concern

the issue of whether Stage II performs a linear or sublinear search. (See id. (citing Dr. Baluja’s

deposition and the CoverCat draft document)) Accordingly, to the extent that Dr. Mitzenmacher

expresses an opinion in his report that the entire search conducted by the LSH Version of

Content ID is sublinear, any such opinion is unsupported and conclusory. See Arthur A. Collins,

Inc., 216 F.3d at 1047 (“[A] party may not avoid summary judgment simply by offering an

opinion of an expert that states, in effect, that the critical claim limitation is found in the accused

device. .. . [T]he affidavit of an expert submitted in opposition to a motion for summary

judgment must do more by ‘set[ting] forth specific facts showing that there is a genuine issue for

trial.’”) (quoting Celotex, 477 U.S. at 323, 325). Nor has Plaintiff articulated any theory for

why, even assuming Stage I of the LSH Version performs a sublinear search, Stage IT must

likewise be found to perform a sublinear search. Because Plaintiff has offered no evidence that

the entire search performed by the LSH version of Content ID is sublinear, Defendants are

entitled to summary judgment on Plaintiff's infringement claim to the extent it is premised on the

LSH version of Content ID.

69

(emphasis in original)) Dr. Mitzenmacher further acknowledges that “doubling the size of a

reference index by simply adding references to the existing shards . . . could result in the [Index

Lookup] portion of the search taking approximately twice as long.” (Id. 230) Despite these

concessions, Plaintiff contends that “the search algorithm Content ID Siberia Version was

designed to be used” in a way that makes the entire system sublinear, and that the number of

partitions per shard is a “turnable knob” that makes “the search algorithm Content ID Siberia

Version” sublinear. (Pltf. Sum. J. Opp. (Dkt. No. 240) at 14-16; see also Mitzenmacher Rpt.

(Dkt. No. 226-6) § 230 (“[D]oubling the size of a reference index by simply adding those

references to the existing [structure] is not what would be done.”); id. 238-39 (“[I]ncreasing

the {EG 2s the size of the data set [] increases would result in sublinear

scaling.”))

Plaintiff also points to on

a. (See Pitf. Supp. Sum. J. Opp. (Dkt. No. 274) at 3-5) According to Plaintiff, this

development “confirms that the Siberia version of Google’s Content ID system uses a sublinear

search.” (Id. at 3 (capitalization altered))

Plaintiff is mistaken. Assuming arguendo that reducing the

GE 21s0 reduced the time or computing resources needed to perform a search,”

Plaintiff does not dispute that if additional references were added to the index as it existed as of

Accordingly, standing alone, does not demonstrate that the Siberia Version of

Content ID performs a sublinear search.

70

Ss. search execution time would still scale linearly.

(Mitzenmacher Rpt. (Dkt. No. 226-6) { 229)

The °237 Patent teaches that the invention must perform a “sublinear . . . search.”

(°237 Patent (Dkt. No. 148-5) col. 28) The specification states that “a linear search of all N

entries” in a database is “computationally expensive,” and lists exemplary sublinear search

algorithms and data structures with sublinear search times, including binary search, kd-trees,

vantage point trees, and middle vantage point forest. (Id. col. 21) The specification does not

suggest, however, that a linear search algorithm can be adapted to the problem using parameters

~“turnable knobs” — that can be periodically adjusted to improve the search’s consumption of

resources. Indeed, Plaintiff conflates the Siberia system as a whole — which conceptually

encompasses multiple steps that map onto the ’237 Patent, including indexing and taking an

action after finding a match — with the required search step. (Pltf. Sum. J. Opp. (Dkt. No. 240) at

16 (referring to the entirety of the Siberia Version of Content ID as “the search algorithm

Content ID Siberia Version”))

In sum, the undisputed evidence is that the Siberia version of Content ID uses

search algorithms that scale linearly as the size of the database increases. The evidence also

shows that Google can periodically adjust certain parameters to lower the resource costs imposed

by the increased size of the database. But that fact does not transform a linear search algorithm

or database architecture into a sublinear one.

71

In arguing to the contrary, Plaintiff places great weight on the following graph

and similar documents produced by Google during discovery:

(Id. at 14; Pltf. Ex. 67 (Dkt. No. 240-42) at 6) Plaintiff asserts that the graph depicts I

GEE (Pf. Sum. J. Opp. (Dkt. No. 240) at 14) The two solid lines represent

es. According to Dr.

Mitzenmacher, the currently implemented version [EEE algorithm. But

“lrJegardless” of which algorithm is used, the graph demonstrates that “the search scales

sublinearly.” (Mitzenmacher Rpt. (Dkt. No. 226-6) □□ 157-58)

The graph cited by Plaintiff plainly contemplates that as the dataset grows, so

does the number of “machines.” As discussed above, in the Siberia system, data is stored in

shards on individual “machines,” or computers. (Def. R. 56.1 Stmt. (Dkt. No. 225) { 39; Pasula

Dep. (Dkt. No. 240-5) at 39, 77; Mitzenmacher Rpt. (Dkt. No. 226-6) § 153 iy

72

GE graph does not suggest that any search performed by the Siberia

system is sublinear “assuming computing power is held constant,” because what it shows is an

increase in the total amount of computing resources as the size of the dataset increases. (Am. Jt.

Claim Construction Chart (Dkt. No. 146) at 2) Plaintiff does not address the fact that — in the

graph it cites — computing power is not “held constant,” nor does Plaintiff attempt to explain why

the Court should ignore this fact. (Pltf. Sum. J. Opp. (Dkt. No. 240) at 14) Nor does the mere

use of the term “sublinear” on the graph demonstrate that the claim limitation is meant. Finally,

because Dr. Mitzenmacher, Plaintiff's expert witness, concedes that the index-lookup algorithm

scales linearly, the graph and other documents containing the word “sublinear” are not sufficient

to create a material issue of fact.

b. Whether the Siberia Version Performs the

Required Nearest Neighbor Search

Defendants argue that even that assuming the Index Lookup portion of the search

is sublinear, Plaintiff has not shown that “the allegedly sublinear Siberia Index Lookup uses

media work extracted features to perform an ‘approximate nearest neighbor search of reference

extracted features.’” (Def. Sum. J. Br. (Dkt. No. 224) at 30-31) According to Defendants, “Dr.

Mitzenmacher admits that the Index Lookup does not meet those limitations and, instead,

[impermissibly] tries to mix and match different aspects of the Siberia system to show

infringement.” (Id. (emphasis omitted))

The parties agree that the Siberia version of Content ID “has three main stages”:

Index Lookup, Sparse, and Verifier. (See Def. R. 56.1 Stmt. (Dkt. No. 225) 4 43; Pltf. R. 56.1

Counterstmt. (Dkt. No. 240-61) § 43) Neither side has argued that any one stage constitutes a

single “search” for purposes of proving infringement. And Plaintiff does not argue that an

73

“approximate nearest neighbor search” is performed at the Index Lookup stage.” (Pltf. Sum. J.

Opp. (Dkt. No. 240) at 17-23) Similarly, Defendants do not contend that an “approximate

nearest neighbor search” is performed at the Sparse and Verifier stages, whether separately or

together. (See Def. Sum. J. Reply (Dkt. No. 227))

Moreover, and as discussed above, “[u]nder the parties’ agreed-upon construction

of the term ‘sublinear,’ a multi-step search scales linearly, rather than sublinearly, if at least one

of the steps of the multi-step search scales linearly.” (Def. R. 56.1 Stmt. (Dkt. No. 225) § 107;

Pitf. R. 56.1 Counterstmt. (Dkt. No. 240-61) § 107; Mitzenmacher Dep. (Dkt. No. 240-9) at 105-

09 (noting that a function with a linear term and a logarithmic term scales linearly))

According to Plaintiff, the Mitzenmacher Report “explains that the entire, three

stage, search algorithm of” the Siberia Version of Content ID “is a sublinear search algorithm.”

(Pltf. Sum. J. Opp. (Dkt. No. 240) at 17-18)

The Mitzenmacher Report addresses the alleged sublinearity of the Sparse and

Verifier stages as follows:

The time that the overall search takes (e.g., the combination of [Index Lookup],

Sparse, and Verifier steps) would increase by less than a factor of two if the

number of hashed embeddings in the reference index were doubled. This is

because the amount the latter two steps take would remain roughly constant since

the number of index hits [coming] out of the [Index Lookup] step would remain

the same. In other words, the data set size and the search time of the Content ID

Version do not have a one to one relationship.

(Mitzenmacher Rpt. (Dkt. No. 226-6) § 230 n.197) The remainder of Dr. Mitzenmacher’s report

is directed to the Index Lookup stage. (Id. | 229-46)

2 Because the Index Lookup stage

(Def. R.

56.1 Stmt. (Dkt. No. 225) § 52) —it does not involve the use of a “defined threshold” as required

under the parties agreed-upon construction of “nearest neighbor search.” (Am. Jt. Claim

Construction Chart (Dkt. No. 146) at 2)

74

As an initial matter — because Dr. Mitzenmacher’s remarks concerning the Sparse

and Verifier stages are not supported by any citations to evidence — he has not “set forth the

factual foundation for his infringement opinion in sufficient detail for the court to be certain that

features of the accused product would support a finding of infringement.” Intell. Sci. & Tech..

Inc., 589 F.3d at 1183.

Moreover, other portions of Dr. Mitzenmacher’s opinion contradict his assertion

that the amount of time the Sparse and Verifier steps would take “would remain roughly

constant.” (Mitzenmacher Rpt. (Dkt. No. 226-6) § 230 n.197) As discussed above, it is

undisputed that for the Video Index, the Index Lookup step [I

GH (Def. R. 56.1 Stmt. (Dkt. No. 225) 4] 48-49; Mitzenmacher Rpt. (Dkt. No. 226-6)

{ 223) The system then i ie

Ses (Def. R. 56.1 Stmt. (Dkt. No. 225) ff] 51-52)

Accordingly, for a search of the Video Index, the Index Lookup step outputs

See 2:<! passes those on to the Sparse and Verifier

steps. (Mitzenmacher Rpt. (Dkt. No. 226-6) § 223; see Def. R. 56.1 Stmt. (Dkt. No. 225) 44 59,

60) Itis correct that in the example given above {ns

ES 5

es. (us, the time necessary to execute the

Sparse and Verifier steps would be “constant” such that if the Index Lookup portion is sublinear,

the entire Siberia search would also be sublinear. (See PItf. Sum. J. Opp. (Dkt. No. 240) at 18-19

(explaining the “basic mathematical principle” that “y = Vx + 1+ 1 is still a sublinear function”

75

where “y” is the time it takes to execute a search, “x” is the number of references in the data set,

is the time it takes to complete the Index Lookup step for a given search, and “1 + 1”

represents the time taken to complete the Sparse and Verifier steps))

This text is long and has been trimmed here. Open the source document for the complete record.