Google LLC v. Network-1 Technologies, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

GOOGLE LLC,

Appellant

v.

NETWORK-1 TECHNOLOGIES, INC.,

Appellee

______________________

2016-2509, 2016-2510, 2016-2511, 2016-2512

______________________

Appeals from the United States Patent and Trade-

mark Office, Patent Trial and Appeal Board in Nos.

IPR2015-00343, IPR2015-00345, IPR2015-00347,

IPR2015-00348.

______________________

Decided: March 26, 2018

______________________

DAN L. BAGATELL, Perkins Coie LLP, Hanover, NH,

argued for appellant. Also represented by ROBERT

SWANSON, Washington, DC; ANDREW GISH, DOUGLAS R.

NEMEC, Skadden, Arps, Slate, Meagher & Flom LLP, New

York, NY.

GREGORY S. DOVEL, Dovel & Luner, LLP, Santa

Monica, CA, argued for appellee. Also represented by

SEAN LUNER, MATTHAEUS MARTINO-WEINHARDT; JUNG

2 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

SUK HAHM, CHARLES R. MACEDO, Amster Rothstein &

Ebenstein LLP, New York, NY.

______________________

Before DYK, SCHALL, and REYNA, Circuit Judges.

SCHALL, Circuit Judge.

DECISION

Network-1 Technologies, Inc. (“Network-1”), owns

U.S. Patent Nos. 8,640,179 (“the ’179 patent”); 8,205,237

(“the ’237 patent”); 8,010,988 (“the ’988 patent”); and

8,656,441(“the ’441 patent”) (collectively, “the Network-1

Patents”). Network-1 sued Google, Inc. (“Google”) in the

United States District Court for the Southern District of

New York for infringement of the patents. Subsequently,

Google filed petitions with the Patent and Trademark

Office (“PTO”) seeking inter partes review (“IPR”) of

various claims of the patents under 35 U.S.C. §§ 311–319.

The Patent Trial and Appeal Board (“Board”), acting as

the delegate of the PTO’s Director under 37 C.F.R.

§ 42.4(a), instituted reviews and, after conducting the

reviews, concluded, in four separate final decisions, that

Google had failed to demonstrate either anticipation

under 35 U.S.C. § 102 or obviousness under 35 U.S.C.

§ 103 with respect to most of the reviewed claims. It

therefore held that Google had failed to carry its burden

of demonstrating that those claims were not patentable.

Google timely appealed each of the Board’s decisions

under 35 U.S.C. §§ 141(c) and 319. We have jurisdiction

under 28 U.S.C. § 1295(a)(4)(A) and have consolidated the

four appeals. Because we conclude that the Board erred

in its construction of the claim term “non-exhaustive

search,” we (1) vacate the Board’s final decisions with

respect to the ’179 and ’441 patents; (2) vacate-in-part the

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 3

Board’s final decisions with respect to the ’237 and ’988

patents; and (3) remand all four cases to the Board for

further proceedings consistent with this opinion. 1

DISCUSSION

I.

The following claims of the Network-1 Patents are at

issue:

Patent Appealed Claims

’179 1–3, 6, 8–14, 18, 19, 21–27, 29–31, 34–37

’237 25–27, 29, 30

’988 15–16, 21–28, 31–33, 38, 51, 52

’441 1–3, 6, 8–14, 18, 19, 21–27, 29, 30

In its final decision relating to the ’179 patent, the

Board described the invention that is the subject of the

Network-1 Patents:

The ’179 Patent relates to identifying a work, such

as a digital audio or video file, without the need to

modify the work. ’179 patent, col. 1, lines 35–40

and col. 4, lines 38–44. This identification can be

accomplished through the extraction of features

from the work, and comparison of those extracted

features with records of a database or library. Id.

at Abstract. Thereafter, an action may be deter-

mined based on the identification determined. Id.

at col. 4, lines 36–40.

1 Google does not appeal the Board’s determina-

tions regarding independent claims 1, 5, and 33 of the

’237 patent and their related dependent claims. It also

does not appeal the Board’s determination regarding

dependent claim 17 of the ’988 patent.

4 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

Google Inc. v. Network-1 Techs., Inc., IPR2015-00343,

2016 WL 3438931, at *2 (P.T.A.B. June 20, 2016) (“Final

Decision”).

For purposes of this appeal, the parties agree that

claim 1 of the ’179 patent is representative of all the

claims at issue. That claim reads as follows, with italics

added to highlight “non-exhaustive,” the critical claim

term:

1. A computer-implemented method comprising:

(a) maintaining, by a computer system including

at least one computer, a database comprising:

(1) first electronic data related to identification

of one or more reference electronic works;

and

(2) second electronic data related to action in-

formation comprising an action to perform

corresponding to each of the one or more

reference electronic works;

(b) obtaining, by the computer system, extracted

features of a first electronic work;

(c) identifying, by the computer system, the first

electronic work by comparing the extracted

features of the first electronic work with the

first electronic data in the database using a

non-exhaustive neighbor search;

(d) determining, by the computer system, the ac-

tion information corresponding to the identi-

fied first electronic work based on the second

electronic data in the database; and

(e) associating, by the computer system, the de-

termined action information with the identi-

fied first electronic work.

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 5

For purposes of this appeal, the parties also agree

that the written description of the ’179 patent is repre-

sentative, and that our determination of the correct

construction of “non-exhaustive search,” as it appears in

claim 1 of the ’179 patent, disposes of the claim construc-

tion issue in all four of the Network-1 Patents. Google’s

Corrected Opening Br. 7 n.1; Network-1’s Br. 5 n.1, 6 n.2.

We therefore focus our discussion on the ’179 patent.

In its decision instituting review of the ’179 patent,

the Board construed a “non-exhaustive search” as “a

search that locates a match without a comparison of all

possible matches.” Google Inc. v. Network-1 Techs., Inc.,

IPR2015-00343, 2015 WL 3902007, at *3–4 (P.T.A.B.

June 23, 2015) (“Institution Decision”) (emphasis added).

In so doing, the Board declined to adopt Google’s construc-

tion of the term: “a search that locates a match without

conducting a brute force comparison of all possible match-

es, and all data within all possible matches.” Institution

Decision at *3. Thereafter, in its final decision with

respect to the ’179 patent, the Board maintained its

construction of “non-exhaustive search.” Final Decision at

*2. Based upon that construction, the Board determined

that Google had failed to demonstrate that the cited prior

art rendered the challenged claims of the ’179 patent

unpatentable as either anticipated or obvious. 2

2 Since we conclude that the Board erred in its con-

struction of “non-exhaustive search,” and since, for that

reason, all four of the Board’s decisions must be remanded

for further proceedings under the correct construction of

that term, it is not necessary for us discuss the prior art

asserted by Google against the Network-1 Patents.

6 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

II.

We review an IPR decision under the standards set

forth in the Administrative Procedure Act, 5 U.S.C. § 706.

Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d

1307, 1313 (Fed. Cir. 2016). We must set aside the

Board’s decision if it is “arbitrary, capricious, an abuse of

discretion, or otherwise not in accordance with law” or

“unsupported by substantial evidence.” 5 U.S.C. § 706(2).

We review the Board’s legal conclusions de novo and its

factual findings for substantial evidence. In re Gartside,

203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding of fact is

supported by substantial evidence if a reasonable mind

might accept the evidence as adequate support for the

finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229

(1938).

The issue before us is one of claim construction. We

review the Board’s ultimate construction of claim lan-

guage de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,

135 S. Ct. 831, 835 (2015). However, when, in construing

a claim, the Board reviews extrinsic evidence and makes

subsidiary fact findings with respect to that evidence, we

review such findings for substantial evidence. Perfect

Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d

1004, 1012 (Fed. Cir. 2016); Prolitec, Inc. v. Scentair

Techs., Inc., 807 F.3d 1353, 1358–59 (Fed. Cir. 2015).

III.

The claim construction issue in this case is, in terms

of its scope, a narrow one. The parties agree that, in

conducting its inter partes review of the Network-1 Pa-

tents, the Board was required by its rules to apply the

broadest reasonable construction of the term “non-

exhaustive search” in light of the patents’ specifications.

37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,

136 S. Ct. 2131, 2142–46 (2016). They also agree, as they

did before the Board, that the linchpin of the claim con-

struction analysis in this case is determining what an

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 7

“exhaustive search” is. Google’s Corrected Opening Br.

36–37; Network-1’s Br. 5. That is so because a “non-

exhaustive” search necessarily is a search that is not

“exhaustive.” Put another way, the claim limitation at

issue does not require a search that employs a stated

method (an “exhaustive” search). Rather, it requires a

search that does not employ a stated method (a “non-

exhaustive” search). As a result, in terms of claim con-

struction, what must be determined is the meaning of the

word “exhaustive.” 3 In that regard, before the Board, the

parties agreed, and the Board concurred, that, generally,

an “exhaustive” search means a “brute-force” search that

sequentially considers all possible matches revealed in a

search. Institution Decision at *3. Further, in the Institu-

tion Decision, the Board stated that a “non-exhaustive”

search “encompasses anything other than a ‘brute-force’

search.” Id. at *4. Where the parties part company is

with respect to the degree of exhaustion required in order

for a search to be “exhaustive.”

Google argues that the Board erred in accepting Net-

work-1’s contention that a search qualifies as “exhaustive”

as long as it considers “any portion of each potential

match—even a single bit of a long string.” Google’s Cor-

3 In the district court, Google has advanced the ar-

gument that the claim term “non-exhaustive search” is

indefinite. See Nautilus, Inc. v. Biosig Instruments, Inc.,

134 S. Ct. 2120, 2124 (2014) (“a patent is invalid for

indefiniteness if its claims, read in light of the specifica-

tion delineating the patent, and the prosecution history,

fail to inform, with reasonable certainty, those skilled in

the art about the scope of the invention”). In an IPR, the

Board cannot declare claims indefinite. See 35 U.S.C.

§ 311(b). The issue of indefiniteness is therefore not

before us, and we express no view on it.

8 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

rected Opening Br. 32. As it did before the Board, Google

urges that, instead, an “exhaustive” search must consider

all data within each potential match, because only such a

search will ensure “find[ing] the correct answer.” Id. at

32–33. For example, consider a musical identification

system in which each known piece in a database contains

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

compares an unknown melody to every known work in the

database, but does so only on the basis of the database

songs’ introductions, the search is not “exhaustive” be-

cause it ignores the choruses. Thus, Google would argue,

both the introduction (first part) and the chorus (second

part) of each song in the database must be checked in

order for a search to be “exhaustive.”

Google’s argument is based upon the proposition that

the broadest construction of “non-exhaustive” searching

corresponds to the narrowest construction of “exhaustive”

searching. According to Google, the narrowest construc-

tion of “exhaustive” searching requires considering the

entirety of each potential match, not just a single part of

it. Id. at 34. 4

4 Logic dictates that, in terms of exhaustiveness, all

searches must be either “exhaustive” or “non-exhaustive.”

No third option exists. Consider, then, a finite number of

searches. As the construction for “exhaustive” narrows

(i.e., the number of searches that qualify as “exhaustive”

decreases), the definition for “non-exhaustive” must

broaden (i.e., the number of searches that qualify as “non-

exhaustive” must increase to continue adding up to the

total, finite number of searches). Thus, a narrower inter-

pretation of “exhaustive” corresponds to a broader inter-

pretation of “non-exhaustive.” Google’s urged

construction, requiring an exhaustive search to consider

all data within each potential match (both introductions

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 9

Google states that the ’179 patent’s written descrip-

tion nowhere refers to “exhaustive” or “non-exhaustive”

searches and nowhere identifies the types of searches that

fall into the former rather than the latter category. Id. at

33. For this reason, Google argues, there is no basis to

infer a definition of “non-exhaustive search” from any of

the various exemplary searches discussed in the specifica-

tion. Id. See ’179 patent, col. 8, line 44–col. 9, line 55.

According to Google, then, in its inter partes review, the

Board should have chosen the broader construction

(Google’s) rather than the narrower construction (Net-

work-1’s) of the ambiguous term “non-exhaustive” as the

broadest reasonable construction of the term. Id. at 28,

33–35.

Responding, Network-1 argues that the Board’s claim

construction was correct. Network-1 relies upon the

Wikipedia entry that it introduced in response to Google’s

petition for review. In relevant part, the entry states

that, “[i]n computer science, brute-force search or exhaus-

tive search . . . is a very general problem solving tech-

nique that consists of systematically enumerating all

possible candidates for the solution and checking whether

each candidate satisfies the problem’s statement.” J.A.

1393. In the Institution Decision, the Board referenced

Network-1’s reliance on the Wikipedia entry (“Patent

Owner supplies an example of the ordinary meaning of

‘exhaustive search’ or ‘brute force search’”), and it noted

that the entry did not mention “the evaluation of all data

and choruses in the example above), is a narrower con-

struction of “exhaustive” and a broader construction of

“non-exhaustive” than a search that considers only some

data within each match (either introductions or choruses);

fewer searches qualify as “exhaustive” under Google’s

construction.

10 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

within each possible match.” Institution Decision at *4.

Network-1 argues that this entry confirms that a “brute

force” search or “exhaustive” search consists of systemati-

cally enumerating all possible candidates for the solution

and checking whether each candidate satisfies the search

criteria. Network-1’s Br. 21. Network-1 continues that

the Wikipedia entry does not state that, for a search to be

“exhaustive,” all data within each candidate must be

examined, as argued by Google.

Network-1 also points to the declaration testimony of

its expert witness, Dr. George Karypis, which was intro-

duced by Network-1 after review was instituted. Net-

work-1’s Br. 20–23. In his declaration, Dr. Karypis stated

that, in the context of the Network-1 Patents, techniques

are described as “linear” with respect to “N”—the number

of records in the database being searched—not with

respect to the length of an individual database in the

record. J.A. 1547 ¶ 72. Dr. Karypis also stated that “[a]

‘non-exhaustive search’ uses an intelligent algorithm to

narrow the database to only a subset of potential match-

es,” J.A. 1554 ¶¶ 7, 9, and he pointed to what he described

as examples of non-exhaustive search algorithms in the

specification of the ’179 patent. Specifically, Dr. Karypis

directed the Board’s attention to column 9, lines 14–17 of

the specification, see J.A. 1554 ¶ 80, where the specifica-

tion states that “other forms of matching include those

based on clustering, kd-trees, vantage point trees and

excluded middle vantage point forests . . . .”

IV.

The parties agree that Google’s construction of “non-

exhaustive search” is broader than the Board’s construc-

tion of the term, which Network-1 supports. See Oral

Argument at 25:50–26:01; 28:10–16. We concur. Of the

two competing constructions, Google’s is, in fact, broader.

That is because Google’s construction (through its nar-

rower construction of “exhaustive”) necessarily encom-

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 11

passes all of the searches covered by the Board’s construc-

tion. The Board’s construction (through its broader

construction of “exhaustive”), on the other hand, does not

necessarily encompass all of the searches covered by

Google’s construction. In the example above, a search

that examines only the introduction of a song and not its

chorus would be “non-exhaustive” under Google’s con-

struction, but not under the Board’s. That is because, by

just examining the song’s introduction, the search is not

examining everything in the match—both the introduc-

tion and the chorus—that must be examined under

Google’s construction of “exhaustive.” On the other hand,

such a search would not be “non-exhaustive” under the

Board’s construction because, by examining the introduc-

tion, the search still would be examining the match. It

thus would be “exhaustive.”

The claim limitation at issue requires “using a non-

exhaustive neighbor search.” Bearing in mind what we

have stated above about the unique nature of the claim

limitation at issue (claiming a method that is not “ex-

haustive”), the question becomes whether Google’s nar-

rower construction of “exhaustive”—and hence its broader

construction of “non-exhaustive”—is reasonable. In order

to be found reasonable, it is not necessary that a claim be

given its correct construction under the framework laid

out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir

2005) (en banc). See PPC Broadband, Inc. v. Corning

Optical Commc’ns RF, LLC, 815 F.3d 734, 742–43 (Fed.

Cir. 2016) (citing In re Cuozzo Speed Techs., LLC, 793

F.3d 1268, 1279 (Fed. Cir. 2015), aff’d sub nom. Cuozzo

Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016)). In

other words, under the broadest reasonable construction

standard, where two claim constructions are reasonable,

the broader construction governs.

“[T]he claim-construction inquiry . . . begins and ends

in all cases with the actual words of the claim.” Home-

land Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,

12 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

1375 (Fed. Cir. 2017) (quoting Renishaw PLC v. Marposs

Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)).

The words of a claim “are generally given their ordinary

and customary meaning” as understood by a person of

ordinary skill at the time of invention. Phillips, 415 F.3d

at 1312–13. Because that meaning is often not immedi-

ately apparent, the court looks to the intrinsic record,

including “the words of the claims themselves, the re-

mainder of the specification, [and] the prosecution histo-

ry,” as well as to extrinsic evidence when appropriate, to

construe a disputed claim term. Id. at 1314.

The specification of the ’179 patent does not suggest

the narrower construction of “non-exhaustive search”

urged by Network-1. Network-1 contends that the specifi-

cation specifically identifies “a linear search of all N

entries” as an “exhaustive search.” See ’179 patent, col. 9,

lines 8–10. Further, according to Network-1, its converse,

a “non-exhaustive search” is identified in the next para-

graph at column 9, lines 13 through 37 of the ’179 patent.

See Oral Argument at 20:35–21:37. We do not agree,

however, that these parts of the specification draw a clear

line between “exhaustive” and “non-exhaustive” searching

in terms of how much data within a record a search must

consider in order to qualify as one or the other. Finally,

the prosecution history of the ’179 patent, the third piece

of intrinsic evidence, also does not provide guidance.

That brings us to the extrinsic evidence. At the insti-

tution stage of the IPR, when the claims were construed,

Network-1 presented to the Board the Wikipedia entry

noted above describing a “brute force search.” 5 The

5 At the institution stage of the IPR, the Board also

had before it the declaration testimony of Google’s expert,

Dr. Patrick Moulin. The Board did not credit Dr. Moulin’s

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 13

Wikipedia entry, though, does not answer the question

before us. While the entry describes a “brute force

search,” it does not speak to whether or not a “brute force

search” examines all data within a possible match.

As noted, Network-1 also relies on the testimony of its

expert, Dr. Karypis. However, this extrinsic evidence was

not before the Board when it rendered its claim construc-

tion ruling in the Institution Decision. Moreover, in the

Final Decision, the Board maintained without alteration,

and did not elaborate upon, its construction of “non-

exhaustive search.” The Board simply stated that “[u]pon

review of the parties’ contentions and the Specification, as

well as the entire record, we . . . discern no reason to

modify our claim construction at this juncture.” Final

Decision at * 6. In this passing reference, the Board did

not mention the testimony of Dr. Karypis. Cf. Cardsoft

LLC v. Verifone, Inc., 807 F.3d 1346, 1350 (Fed. Cir. 2015)

(“[I]t is not enough that the district court may have heard

extrinsic evidence . . . rather, the district court must have

actually made a factual finding in order to trigger Teva’s

deferential standard of review.”) Under these circum-

stances, with the exception of the Wikipedia entry, we

view the Board as having rested its claim construction

ruling on intrinsic evidence. 6

testimony, however, Institution Decision at *4, and, on

appeal, Google does not rely on it. Google Reply Br. 7.

6 In any event, we are not convinced that, even if

the Karypis testimony were considered together with the

Wikipedia entry, it would establish what degree of ex-

haustion qualifies a search as “exhaustive.” Dr. Karypis

explained that non-exhaustive searches use intelligent

algorithms to narrow the database to a subset of potential

matches and thus do not compare the work to all records

in the database. J.A. 1541–42 at ¶¶ 63–64; J.A. 1554 at

14 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.

In sum, we view both the intrinsic and extrinsic evi-

dence regarding the meaning of the foundational claim

term “exhaustive” as inconclusive as to the broader or

narrower construction of the limitation “non-exhaustive

search.” Bearing in mind, however, the way in which the

inventor claimed his invention (by saying “do not do what

is exhaustive”) and the way in which the parties have

argued the case to us (focusing on the term “exhaustive”),

we conclude that Google’s claim construction is reasona-

ble. Quite simply, without considering all data within all

possible matches, a search of features is not guaranteed to

find an existing match or a near-match, or it may stop

prematurely before finding one. Google’s search examples

illustrate this point. For example, a database of court

names contains a potential match “Court of Appeals for

the Federal Circuit,” and the query is “Federal Circuit.”

The Board’s construction would find a search “exhaustive”

if it looked at the first letter of the query, “F,” determined

that it did not match “C,” and moved on—even if the

search was a neighbor search rather than a search for

exact matches only. Similarly, if the query were “Federal

Circuit” and the database entry were “First Circuit,”

considering only the first letter would produce a false

positive under the Board’s construction. Viewing the

matter in this light, we conclude that Google’s broader

construction of “non-exhaustive search” (via its narrower

construction of “exhaustive”) is consistent with how the

inventor described his invention in the specification in

terms of finding a best match or a best near-match for the

search query. See ’179 patent, col. 5, lines 40–58 and col.

9, lines 13–55. Google’s construction avoids false posi-

tives and false negatives by considering all the data

¶ 79; J.A.1547 at ¶ 74. He did not, however, discuss the

amount of data considered within each record.

GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 15

within a match. In short, Google’s claim construction is

both broader than the Board’s and is reasonable.

CONCLUSION

For the foregoing reasons, we hold that, under the

broadest reasonable construction standard, Google’s

proposed construction of the term “non-exhaustive search”

is broader than the construction that the Board adopted

and is reasonable. Therefore, the Board erred in its claim

construction. Also for the foregoing reasons, we hold that

the claim construction most consistent with the broadest

reasonable construction of the term “non-exhaustive

search” is “a search that locates a match without conduct-

ing a brute-force comparison of all possible matches, and

all data within all possible matches.” That construction is

relevant to all of the claims at issue in this appeal: claims

1–3, 6, 8–14, 18, 19, 21–27, 29–31, and 34–37 of the ’179

patent; claims 25–27, 29, and 30 of the ’237 patent; claims

15–16, 21–28, 31–33, 38, 51, and 52 of the ’988 patent;

and claims 1–3, 6, 8–14, 18, 19, 21–27, 29, and 30 of the

’441 patent. As far as those claims are concerned, the

decisions of the Board are vacated and the case is re-

manded to the Board for consideration of patentability

based upon the claim construction stated above. The un-

appealed decisions of the Board, relating to (i) independ-

ent claims 1, 5, and 33 of the ’237 patent and their related

dependent claims; and (ii) dependent claim 17 of the ’988

patent, are not before us and therefore are left undis-

turbed.

VACATED-IN-PART AND REMANDED

COSTS

No Costs.