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

> District Court, S.D. New York · April 26, 2024

URL: https://www.frixlaw.com/law-library/cases/10660365

## Case

- **Court:** District Court, S.D. New York
- **Decided:** April 26, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

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 “ (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)).

51

“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: The Clerk of Court is directed to terminate the motions (Dkt.
Nos. 223, 233), to enter judgment for Defendants, and to close this case.
Dated: New York, New York
April 24, 2024
SO ORDERED.
A dl A Parchoobe
Paul G. Gardephe
United States District Judge

23 As noted above, Plaintiff has appealed Magistrate Judge Netburn’s October 14, 2022 order
striking portions of Plaintiff's Supplemental Expert Report concerning a “late-proposed non-
infringing alternative that Google was allowed to introduce through [] supplemental discovery.”
According to Plaintiff, its Supplemental Expert Report demonstrates that Google’s “non-
infringing alternative . . . is not viable.” (See Oct. 14, 2022 Discovery Order (Dkt. No. 283);
Pitf. Discovery Appeal Br. (Dkt. No. 235) at 4) Plaintiff states, however, that “neither the
Magistrate’s Order, nor [Plaintiff's] Objection, bear on the parties’ [] motions for summary
judgment.” (Pltf. Discovery Appeal Br. (Dkt. No. 235) at 4) Given this Court’s decision
granting Defendants’ motion for summary judgment, Plaintiff's appeal of the magistrate judge’s
discovery order is denied as moot.
77

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10660365. Public record. Not legal advice.