Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 1 of 19
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`14 Civ. 2396 (PGG)
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`14 Civ. 9558 (PGG)
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`NETWORK-1 TECHNOLOGIES, INC.
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`Plaintiff,
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`- against -
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`GOOGLE LLC and YOUTUBE, LLC
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`Defendants.
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`DEFENDANTS’ SUR-REPLY CLAIM CONSTRUCTION BRIEF
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`WILLIAMS & CONNOLLY LLP
`Kevin Hardy, pro hac vice
`Samuel Bryant Davidoff
`Andrew V. Trask
`Graham W. Safty, pro hac vice
`725 12th Street, N.W.
`Washington, DC 20005
`Telephone: (202) 434-5000
`Facsimile: (202) 434-5029
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`Counsel for Defendants Google LLC
`and YouTube, LLC
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 2 of 19
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`I. 
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`II. 
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`III. 
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`TABLE OF CONTENTS
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`THE TERM “NON-EXHAUSTIVE SEARCH” IS INDEFINITE .....................................2 
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`A. 
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`B. 
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`C. 
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`D. 
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`E. 
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`F. 
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`The Federal Circuit Has Already Rejected Network-1’s Reading of the
`Specifications of the Patents-In-Suit ........................................................................2 
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`Precedent Dictates That the Term “Non-Exhaustive Search” Is Indefinite .............5 
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`Network-1’s Own Extrinsic Evidence Confirms that “Non-Exhaustive
`Search” Is a Vague Term Subject to Multiple Contradictory Definitions ...............6 
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`The “Sublinear” Limitation Does Not Salvage Claim 17 of the ’988 Patent ..........8 
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`The CBM Review of the ’464 Patent Has No Bearing on This Issue ....................10 
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`There Are No “Factual Disputes” Precluding Resolution of the Parties’
`Arguments Regarding Indefiniteness .....................................................................10 
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`THE TERM “CORRELATION INFORMATION” IS INDEFINITE ..............................12 
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`NETWORK-1’S PROPOSED CONSTRUCTION OF “EXTRACTED
`FEATURES” IS BOTH ERRONEOUS AND UNCLEAR ...............................................14 
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`IV. 
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`CONCLUSION ..................................................................................................................15 
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 3 of 19
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
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`Ave. Innovations, Inc. v. E. Mishan & Sons Inc., 310 F. Supp. 3d 457 (S.D.N.Y. 2018)............. 12
`Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) ............................................................... 12
`Dow Chem. Co. v. Nova Chem. Corp., 803 F.3d 620 (Fed. Cir. 2015) .......................................... 6
`Google LLC v. Network-1 Techs., Inc., 726 F. App'x 779 (Fed. Cir. 2018) ............... 1, 3, 4, 5, 6, 7
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) ................................. 1, 5, 12
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366 (Fed. Cir. 2015) ............... 12
`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) ..................................... 1, 5, 10, 11
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ................................................ 7
`Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306 (Fed. Cir. 2008) ........................................................ 12
`Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) ............................................... 2, 11
`Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) ................. 2, 5, 6, 11, 12
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) ............................................. 12
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 4 of 19
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`Three issues are ripe for resolution by the Court at the Markman hearing in these actions.
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`First, the term “non-exhaustive search” renders indefinite the asserted claims of U.S. Patent
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`Nos. 8,010,988 (the “’988 patent”) and 8,904,464 (the “’464 patent”). Google’s response brief
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`explained that the term does not appear in the patents’ specifications; is not described in their file
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`histories; and has already been interpreted by the Federal Circuit, which identified two different
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`yet “reasonable” constructions of the term and concluded that “the intrinsic and extrinsic evidence
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`… [is] inconclusive as to the broader or narrower construction of the limitation ‘non-exhaustive
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`search.’” Google LLC v. Network-1 Techs., Inc., 726 F. App’x 779, 786 (Fed. Cir. 2018).
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`Accordingly, Google explained, the “claims, read in light of the specification delineating the
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`patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the
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`art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
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`(2014). In its reply, Network-1 blows past the Federal Circuit’s opinion yet again by asserting that
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`the patents’ specifications describe the contours “non-exhaustive search,” see Reply Br. at 6–11,
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`even though the appellate court concluded as a matter of law that the specifications do not “draw
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`a clear line between ‘exhaustive’ and ‘non-exhaustive’ searching,” Google, 726 F. App’x at 785.
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`Second, the term “correlation information” renders indefinite the asserted claims of the
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`’464 patent. Even with a second bite at the apple, Network-1 cannot point to any portion of the
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`specification that explicitly describes “correlation information” or any example of what the claim
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`term might encompass or exclude. Because of the absence of anything that elucidates “correlation
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`information,” “[t]he claims when read in light of the specification and the prosecution history” do
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`not “provide objective boundaries for those of skill in the art” and should be declared indefinite.
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`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`Third, the Court should reject Network-1’s attempt to modify the construction of “extracted
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`1
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 5 of 19
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`features” and “extracting features.” Network-1’s reply brief all but admits that its new construction
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`sweeps in countless “calculations” performed on data that are not within the purview of the
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`“feature extraction operation” described by the patents. Reply Br. at 15. The Court should either
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`adopt the parties’ previously agreed-upon construction or clarify the construction in a manner that
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`conforms to the language of the patents and the written testimony of Network-1’s own declarant.
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`I.
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`THE TERM “NON-EXHAUSTIVE SEARCH” IS INDEFINITE
`A.
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`The Federal Circuit Has Already Rejected Network-1’s Reading of the
`Specifications of the Patents-In-Suit
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`Most of Network-1’s arguments regarding the term “non-exhaustive search” are nothing
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`more than an attempt to re-litigate the way in which the Federal Circuit—as a matter of law—read
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`the specifications of the patents-in-suit. As the Supreme Court recently reiterated, when a “court
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`reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the
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`patent’s prosecution history), the judge’s determination will amount solely to a determination of
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`law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). In other words, “[t]he
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`internal coherence and context assessment of the patent, and whether it conveys claim meaning
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`with reasonable certainty, are questions of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d
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`1335, 1342 (Fed. Cir. 2015). Thus, when Network-1 asserts in its reply brief that the specifications
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`describe “an exhaustive search” through their reference to “a linear search of all N entries” and
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`“provide[] several examples of non-exhaustive searches,” Reply Br. at 6–7, it is making a legal
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`argument. And when Network-1 insists that a skilled artisan would “know the patent is drawing a
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`distinction between searches that compare to all records (exhaustive) and those that do not (non-
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`exhaustive),” id. at 8, it is asking this Court to adopt a legal conclusion. See Teva, 789 F.3d at
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`1342 (“The meaning one of skill in the art would attribute to the term molecular weight in light of
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`2
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 6 of 19
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`its use in the claims, the disclosure in the specification, and the discussion of this term in the
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`prosecution history is a question of law.”).
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`The problem for Network-1, however, is that these are the very same legal arguments that
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`the Federal Circuit rejected last year. As Google explained in its response brief, the parties’ appeal
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`to the Federal Circuit arose from an inter partes review (“IPR”) of the ’988 patent, the ’237 patent,
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`and two other patents. Resp. Br. at 8–12. In the IPR proceedings, the U.S. Patent and Trademark
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`Office (“PTO”) accepted Network-1’s argument “that a non-exhaustive search makes a
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`comparison without [comparing] all possible matches, but does not concern itself with whether all
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`data within all possible matches have been compared.” Case I, Dkt. No. 153-8 at 5. On appeal to
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`the Federal Circuit, Google explained that the “written description nowhere refers to ‘exhaustive’
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`or ‘non-exhaustive’ searches and nowhere identifies the types of searches that fall into the former
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`rather than the latter category,” such that “there is no basis to infer a definition of ‘non-exhaustive
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`search’ from any of the various exemplary searches discussed in the specification.” Google, 726
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`F. App’x at 783. Accordingly, Google argued, the PTO “should have chosen the broader
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`construction (Google’s) rather than the narrower construction (Network-1’s) of the ambiguous
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`term ‘non-exhaustive’ as the broadest reasonable construction of the term.” Id.
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`After describing Google’s arguments, the Federal Circuit summarized Network-1’s
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`position in a passage that bears emphasis because it reveals the identity between the failed
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`argument that Network-1 made on appeal and the legal conclusion it now urges this Court to adopt:
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`Network-1 also points to the declaration testimony of its expert witness, Dr. George
`Karypis, which was introduced by Network-1 after review was instituted. 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.
`Dr. Karypis also stated that “[a] ‘non-exhaustive search’ uses an intelligent algorithm to
`narrow the database to only a subset of potential matches,” and he pointed to what he
`described as examples of non-exhaustive search algorithms in the specification of the
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 7 of 19
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`’179 patent. Specifically, Dr. Karypis directed the Board’s attention to column 9, lines
`14–17 of the specification, where the specification states that “other forms of matching
`include those based on clustering, kd-trees, vantage point trees and excluded middle
`vantage point forest….”
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`Id. at 784 (emphasis added, citations to briefs and record omitted). In short, Network-1 relied on
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`the same examples in the same passages of the same specifications that it cites yet again in its reply
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`brief to argue that the patents-in-suit describe the contours of the term “non-exhaustive search.”
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`See Reply Br. at 6–9; Mitzenmacher Reply Decl. ¶¶ 8–10.
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`Try as it might, however, Network-1 cannot escape the fact that the Federal Circuit
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`rejected its argument that the patents or their file histories support one “reasonable”
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`construction of “non-exhaustive search” to the exclusion of another. The Court concluded that
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`“[t]he specification … does not suggest the narrower construction of ‘non-exhaustive search’
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`urged by Network-1,” and expressly rejected Network-1’s argument that “the specification
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`draw[s] a clear line between ‘exhaustive’ and ‘non-exhaustive’ searching in terms of how much
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`data within a record a search must consider in order to qualify as one or the other.” Google,
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`726 F. App’x at 785. Thus, when Network-1 asserts that a skilled artisan would know that
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`“[t]he amount of data in each record compared is not the relevant distinction” and that “[t]he
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`relevant distinction as described in the specification is the number of records compared,” Reply
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`Br. at 8, it is simply asking this Court to disagree with the Federal Circuit.
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`To be clear, there is no dispute that the Federal Circuit was applying a different claim-
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`construction standard than the one that applies here. Resp. Br. at 9–10. And because the issue of
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`indefiniteness cannot be raised in an IPR, that issue was not before the Federal Circuit on appeal.
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`Id.; see Google, 726 F. App’x at 782 n.3. The crucial point, however, is that the Federal Circuit
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`studied the same passages of the same specifications that Network-1 relies on here and concluded
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`that the text “does not suggest the narrower construction of ‘non-exhaustive search’ urged by
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 8 of 19
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`Network-1” and is “inconclusive as to the broader or narrower construction of the limitation ‘non-
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`exhaustive search.’” Google, 726 F. App’x at 785–86. The Court’s interpretation of what the
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`specifications disclose—or fail to disclose—is a matter of law that does not change based on the
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`ultimate question presented. See Teva, 789 F.3d at 1342 (“Determining the meaning or
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`significance to ascribe to the legal writings which constitute the intrinsic record is legal analysis….
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`Determining the significance of disclosures in the specification or prosecution history is also part
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`of the legal analysis.”). In the parties’ appeal, the Federal Circuit’s legal analysis of the
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`specifications led to the ultimate conclusion that the PTO should have applied the broader of the
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`two “reasonable” constructions identified by the Court. Google, 726 F. App’x at 786. Here, the
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`same legal analysis of the same instruments leads to the ultimate conclusion that the claims
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`containing the term “non-exhaustive search” are indefinite.
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`B.
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`Precedent Dictates That the Term “Non-Exhaustive Search” Is Indefinite
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`In its reply, Network-1 builds a strawman by accusing Google of “urg[ing] this Court to
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`apply a novel, unsupported indefiniteness standard—if there are two possible ‘reasonable’
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`constructions, then the term is indefinite.” Reply Br. at 4. Google is making a far narrower
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`argument—namely, that when there are at least two “reasonable” constructions of a key claim
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`term, and the Federal Circuit has held as a matter of law that the intrinsic record provides no way
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`to select between them, then the claim is indefinite. See, e.g., Nautilus, 572 U.S. at 901; Interval
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`Licensing, 766 F.3d at 1371 (“[T]here is an indefiniteness problem if the claim language might
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`mean several different things and no informed and confident choice is available among the
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`contending definitions.” (internal quotation marks omitted)).
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`Not surprisingly, Network-1 has little to say about Nautilus and the cases applying its
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`holding. Google explained in its response brief that an important guidepost is the above-referenced
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`opinion in Teva, where the patents-in-suit claimed a mixture of molecules with a given “molecular
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 9 of 19
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`weight,” but the claims “offer[ed] no guidance on which measure of ‘molecular weight’ the claims
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`cover” and “[t]here [was] no express definition of ‘molecular weight’ in the [patent’s]
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`specification.” Teva, 789 F.3d at 1338, 1341. Network-1 argues that Teva is “inapposite” because
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`“the parties agreed that there were three entirely different ways to measure molecular weight and
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`the specification provided no guidance.” Reply Br. at 9. But that is a point of similarity, not
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`distinction. The facts of this case parallel those in Teva precisely because there at least two
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`different yet “reasonable” ways to measure whether a search is “non-exhaustive,” and “the intrinsic
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`and extrinsic evidence … [i]s inconclusive as to the broader or narrower construction of the
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`limitation “non-exhaustive search.’” Google, 726 F. App’x at 786.
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`Network-1 also offers no persuasive answer to Dow Chem. Co. v. Nova Chem. Corp., 803
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`F.3d 620 (Fed. Cir. 2015), which explains that “the patent and prosecution history must disclose a
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`single known approach or establish that, where multiple known approaches exist, a person having
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`ordinary skill in the art would know which approach to select.” Id. at 630. In reply, Network-1
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`merely argues that certain portions of the specifications differentiate between exhaustive and non-
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`exhaustive searches. Reply Br. at 9. Again, however, the Federal Circuit has already rejected
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`Network-1’s argument that those “parts of the specification draw a clear line between ‘exhaustive’
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`and ‘non-exhaustive’ searching.” Google, 726 F. App’x at 785.
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`C.
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`Network-1’s Own Extrinsic Evidence Confirms that “Non-Exhaustive
`Search” Is a Vague Term Subject to Multiple Contradictory Definitions
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`Network-1 next contends that “Defendants fail to prove the extrinsic evidence supports the
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`Federal Circuit’s BRI construction.” Reply Br. at 11. In essence, Network-1 is launching a
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`collateral attack on the Federal Circuit’s legal determination that the BRI “is consistent with how
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`the inventor described his invention in the specification,” Google, 726 F. App’x at 786, by pointing
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`to a smattering of references that purportedly reflect a different usage of the term.
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`As an initial matter, Network-1’s attempt to override the Court’s conclusion should be
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`viewed with skepticism; as the Federal Circuit has cautioned, extrinsic evidence “in general [is]
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`less reliable than the patent and its prosecution history in determining how to read claim terms.”
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`Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc). In any event, Network-
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`1’s extrinsic evidence merely confirms that a skilled artisan reasonably could conclude, as the
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`Federal Circuit did, that an “exhaustive search” entails “conducting a brute-force comparison of
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`all possible matches, and all data within all possible matches.” Google, 726 F. App’x at 786. For
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`example, the Orwant reference submitted by Network-1 provides that “[t]he technique of
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`generating and analyzing all of the possible states of a situation is called exhaustive search.” Storer
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`Decl. ¶¶ 52–54 (citing Case I, Dkt. No. 148-20 at 180). Likewise, the 2001 edition of the
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`Dictionary of Computer Science, Engineering, and Technology defines “exhaustive search” as “a
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`search strategy that systematically examines every possible path through a decision tree or
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`network…. Also called brute force search.” Id. ¶¶ 55–56 (citing Case I, Dkt. No. 153-17 at 170).1
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`In reply, Network-1 asserts that Google “offer[s] no expert testimony that the Federal
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`Circuit’s BRI is the ordinary meaning under Phillips,” Reply Br. at 9, and observes that Google’s
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`declarant testified that these references “were ambiguous” with respect to whether an “exhaustive”
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`search “has to not only consider all possible records, but has to consider all data in the record,”
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`Mitzenmacher Reply Decl. ¶ 11. That is precisely the point. Neither the BRI identified by the
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`1 Notably, Network-1’s declarant disagreed that this was a “proper definition” of “exhaustive
`search,” even though it is the only dictionary definition of the term in the record. Mitzenmacher
`Tr. (Case I, Dkt. No. 153-12) at 187:7–18. He also testified that “exhaustive search” and “brute
`force search” are not synonymous, id. at 61:11–20, even though Network-1 presented the
`Wikipedia entry for “brute force search” to the Federal Circuit in support of its interpretation of
`“exhaustive search,” Google, 726 F. App’x at 783–84. The fact that Network-1’s declarant
`espouses a different understanding of the term “exhaustive search” than a technical dictionary (the
`Dictionary of Computer Science, Engineering, and Technology) and a general purpose
`encyclopedia (Wikipedia) confirms that it has no fixed meaning to persons of skill in the art.
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 11 of 19
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`Federal Circuit nor the construction proffered by Network-1 reflects an unambiguous “ordinary
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`meaning” of the term because the term is irredeemably ambiguous. As the Orwant reference
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`submitted by Network-1 puts it, “the definition of exhaustive search is vague” because “[e]ach
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`problem has its own way of trying everything, and often many different ways.” Dkt. No. 148-20
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`at 183. A skilled artisan would not be able to determine with “reasonable certainty” whether
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`“trying everything” might entail examining all data within all possible matches; a fraction of the
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`data within all possible matches; or something else altogether. See Storer Decl. ¶¶ 47–80.
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`Finally, it bears repeating that the foregoing examples illustrate only one of several ways
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`in which Network-1’s extrinsic evidence is hopelessly inconsistent. Even if the references cited
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`above are read as supporting the notion that an “exhaustive search” need only consider a fraction
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`of the data within every reference, they would still be incompatible with the testimony of Network-
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`1’s declarant, who opined that a search can be “exhaustive” even if it skips some references
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`altogether through a technique called “pruning.” Mitzenmacher Tr. (Case I, Dkt. No. 153-12) at
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`174:5–175:13. A skilled artisan would not be able to determine with “reasonable certainty” what
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`makes a search “non-exhaustive” even if she reviewed only the testimony of Network-1’s declarant
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`and the cherry-picked references that Network-1’s lawyers provided to him.
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`D.
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`The “Sublinear” Limitation Does Not Salvage Claim 17 of the ’988 Patent
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`Network-1 next introduces a new argument by asserting that claim 17 of the ’988 patent is
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`not indefinite because “claim 17 narrows ‘non-exhaustive search’ by specifying its ‘non-
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`exhaustive search’ is ‘sublinear.’” Reply Br. at 11. Under the agreed construction of “sublinear,”
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`however, the linearity of a search is an entirely different characteristic than its exhaustiveness, and
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`thus does not inform whether a search is “non-exhaustive.” The parties agreed that a “sublinear”
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`search is one “whose execution time scales with a less than linear relationship to the size of the
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`data set to be searched, assuming computing power is held constant.” Case I, Dkt. No. 146 at 2
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`(emphasis added). By contrast, even under Network-1’s proposed construction of “non-exhaustive
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`search,” the exhaustiveness of a search depends upon the number and type of comparisons that
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`are made in conducting the search, rather than its execution time. See id. at 3.
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`To illustrate the distinction, consider the example of a word search that Network-1’s
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`declarant offered at deposition when asked to describe the concept of “pruning.” Mitzenmacher
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`Tr. (Case I, Dkt. No. 153-12) at 174:3–175:13. In the declarant’s example, a dataset consists of
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`words sorted by their first letter, as in a dictionary, and the query is a word that begins with the
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`letter “C.” Id. at 174:14–23. The search algorithm is designed such that if all the words on a
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`particular “branch” of the dataset start with the letter “A,” then the algorithm can “prune” that
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`branch without actually comparing the query to each word because none of them will match the
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`word starting with “C.” Id. at 174:21–175:7. This search would be “sublinear” in the sense that
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`the execution time of the search would not increase linearly as words are added to the database
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`because portions of the database can be “pruned” or disregarded if they do not contain a match.
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`But the observation that the search is “sublinear” does not illuminate whether it is “non-
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`exhaustive.” Indeed, Network-1’s declarant testified that this example of a word search using
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`pruning is “exhaustive,” even though the query is not compared to every reference in the data set.
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`Id. at 175:2–13. Notably, however, that same “sublinear” search would be “non-exhaustive”
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`under the definitions suggested by some of Network-1’s references, including the Orwant
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`reference quoted above. See Storer Decl. ¶¶ 66–68. Even Network-1’s reply brief asserts—
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`contrary to its declarant’s testimony—that “[t]o be exhaustive, a search must compare to all
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`possible records.” Reply Br. at 3 n.1. Because the determination that a particular search is
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`“sublinear” does not clarify whether the search is “exhaustive” or “non-exhaustive,” the additional
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 13 of 19
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`limitation does not provide the “reasonable certainty … about the scope of the invention” that is
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`necessary to salvage claim 17 of the ’988 patent. See Nautilus, 572 U.S. at 901.2
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`E.
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`The CBM Review of the ’464 Patent Has No Bearing on This Issue
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`Network-1’s reply brief also invokes the purely atmospheric point that “Google could have
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`raised the indefiniteness of [‘non-exhaustive search’] in the covered business method (‘CBM’)
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`proceeding concerning the ’464 patent before the [PTO], but chose not to.” Reply Br. at 1.
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`Network-1 is trying to suggest that Google did not actually think the term was indefinite when it
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`petitioned for CBM review of the ’464 patent in April 2015. But of course it did. Google had
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`already made that exact argument to this Court. Case I, Dkt. No. 53 at 3; 63 at 14. It is irrelevant
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`that Google chose not to use the limited pages in the CBM petition to make the same point again.
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`Furthermore, Network-1 is mistaken when it avers that in the CBM proceeding “Google
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`consistently stated [‘non-exhaustive search’] had a meaning analogous … to the one Network-1
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`now advocates.” Reply Br. at 5. Google and its declarant merely argued that the claims of the
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`’464 patent were invalid as obvious under the construction of “non-exhaustive search” proposed
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`by Network-1 or any other conceivable construction. See, e.g., Case I, Dkt. No. 158-5 at ¶ 25.
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`F.
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`There Are No “Factual Disputes” Precluding Resolution of the Parties’
`Arguments Regarding Indefiniteness
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`Finally, Network-1 asserts that “[a]lthough definiteness may be addressed during the claim
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`construction phase of the case,” the Court should not decide the issue now because “there are
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`2 Network-1 is incorrect that Google’s declarant “admits he did not analyze claim 17” of the ’988
`patent and that Google “put forth no evidence on this point.” Reply Br. at 11. Google’s brief and
`expert declaration focused extensively on claim 17 as the only asserted claim of the ’988 patent.
`See, e.g., Resp. Br. at 7, 12–13; Storer Decl. ¶¶ 37–39. When Network-1 asked Dr. Storer to
`elaborate on his opinions regarding the “sublinear” limitation, he referenced the portions of his
`declaration cited in the preceding paragraph and explained that Network-1’s declarant
`acknowledged that the “sublinear” limitation is uninformative, as sublinear searches could be
`considered “exhaustive” or “non-exhaustive.” Storer Tr. (Case I, Dkt. No. 158-2) at 97:21–101:10.
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 14 of 19
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`material factual disputes, including how one of skill would (1) understand the specification; (2)
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`view the extrinsic references; and (3) more generally, understand this phrase.” Reply Br. at 12.
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`The first problem with Network-1’s fallback argument is that at least some of these
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`purported “disputes” do not require factual determinations at all. As noted above, “[t]he internal
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`coherence and context assessment of the patent, and whether it conveys claim meaning with
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`reasonable certainty, are questions of law.” Teva, 789 F.3d at 1342; see id. (“To the extent that
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`Teva argues that the meaning of ‘molecular weight’ in the context of patents-in-suit is itself a
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`question of fact, it is wrong. A party cannot transform into a factual matter the internal coherence
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`and context assessment of the patent simply by having an expert offer an opinion on it.” (citing
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`Teva, 135 S. Ct. at 841–42)). For the reasons discussed, the intrinsic evidence and the Federal
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`Circuit’s opinion summarizing it demonstrate that the “claims, read in light of the specification
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`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
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`skilled in the art about the scope of the invention.” Nautilus, 572 U.S. at 901. Moreover, even in
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`view of Network-1’s extrinsic evidence, there are no “material factual disputes.” The
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`contradictions on the face of the references submitted by Network-1 and the concessions in the
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`testimony of its own declarant are more than sufficient to confirm that “non-exhaustive search” is
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`indefinite. See § I.C. supra; Resp. Br. at 16–20. Finally, even if the Court deems it necessary “to
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`make subsidiary factual findings about that extrinsic evidence” in determining that the term is
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`indefinite, it can and should do so in its claim construction order. See Teva, 135 S. Ct. at 841
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`(“The district judge, after deciding the factual dispute, will then interpret the patent claim in light
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`of the facts as he has found them,” and “[t]his ultimate interpretation is a legal conclusion.”).
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`Although Network-1 observes that courts occasionally have noted that these underlying
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`factual issues may be “amenable to resolution by the jury,” Reply Br. at 13 n.7, that approach is
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 15 of 19
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`neither easy to reconcile with the Supreme Court’s analysis in Teva nor commonplace. Courts
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`routinely determine whether claims are indefinite as part of the claim construction process because
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`“[i]ndefiniteness is a matter of claim construction, and the same principles that generally govern
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`claim construction are applicable to determining whether allegedly indefinite claim language is
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`subject to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008); see,
`
`e.g., Berkheimer v. HP Inc., 881 F.3d 1360, 1363–64 (Fed. Cir. 2018); Media Rights Techs., Inc.
`
`v. Capital One Fin. Corp., 800 F.3d 1366, 1369 (Fed. Cir. 2015); Williamson v. Citrix Online,
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`LLC, 792 F.3d 1339, 1345 (Fed. Cir. 2015); Teva, 789 F.3d at 1340, 1345; Interval Licensing, 766
`
`F.3d at 1368–69; Ave. Innovations, Inc. v. E. Mishan & Sons Inc., 310 F. Supp. 3d 457, 462
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`(S.D.N.Y. 2018). In all events, and for the reasons described above, there simply are no “material
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`factual disputes” that would warrant delaying resolution of this issue.
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`II.
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`THE TERM “CORRELATION INFORMATION” IS INDEFINITE
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`Google’s response brief explained that although every claim of the ’464 patent asserted in
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`this case contains the term “correlation information,” neither Network-1 nor its declarant identified
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`any portion of the specification or prosecution history that describes “correlation information” or
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`even discloses an example of it. Resp. Br. at 20. That shortcoming is not surprising because the
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`term does not appear in the specification and was not added to the claims until more than a decade
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`after the filing of the provisional application. See id. at 7.
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`Network-1’s reply brief asserts in conclusory fashion that “[a] skilled artisan would know
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`it is necessary for the computer system to store the results of the correlation (i.e., correlation
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`information) … to perform subsequent method steps.” Reply Br. at 13. Network-1 also cites
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`deposition testimony of its declarant, who stated that the ’464 patent includes some sort of “implicit
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`description or acknowledgment of correlation information without describing maybe the specific
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`form it would take.” Mitzenmacher Tr. (Case I, Dkt. No. 153-12) at 161:18–20.
`12
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`Case 1:14-cv-02396-PGG-MHD Document 163 Filed 08/09/19 Page 16 of 19
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`The problem with Network-1’s ipse dixit is that it is already on record arguing that a
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`purportedly “implicit description or acknowledgment of correlation information” is not
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`informative to a person of