Case 1:14-cv-02396-PGG-SN Document 202 Filed 11/27/19 Page 1 of 4
`
`
`
`KEVIN HARDY
`(202) 434-5257
`khardy@wc.com
`
`
`
`
`
`
`
`Via ECF
`
`Hon. Paul G. Gardephe
`United States District Court
`Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
`
`
`Re:
`
`November 27, 2019
`
`
`
`
`
`Network-1 Technologies, Inc. v. Google LLC and YouTube, LLC, Case Nos.
`1:14-cv-2396-PGG-SN and 1:14-cv-9558-PGG-SN
`
`
`Dear Judge Gardephe:
`
`I write on behalf of Defendants Google LLC and YouTube, LLC (collectively,
`
`“Google”). During the final minutes of the claim construction hearing on November 21, 2019,
`Plaintiff Network-1 Technologies, Inc. (“Network-1”) proffered a “Proposed Alternate
`Construction” of the claim term “non-exhaustive search,” a copy of which I have enclosed for
`reference. I informed the Court that although Network-1 clearly prepared this slide in advance,
`Google first received the “Proposed Alternate Construction” when Network-1’s counsel provided
`it to the Court, without explanation or justification, at the end of the hearing. The Court
`accordingly invited Google to submit a letter in a week’s time addressing Network-1’s
`“Proposed Alternate Construction.” See Nov. 21, 2019 Hearing Tr. at 115. In the meantime, on
`November 26, 2019, Network-1 filed an unsolicited letter brief rehashing the arguments that the
`parties advanced in two rounds of briefing earlier this year and over the course of approximately
`three hours of argument last week. See Case No. 1:14-cv-2396-PGG-SN (“Case I”) D.I. 201.
`
`In response to the Court’s invitation, Google respectfully submits that Network-1’s
`
`attempt to pivot to a “Proposed Alternate Construction” of “non-exhaustive search” is grossly
`out of time and should be disregarded. The end of last week’s hearing marked the first time that
`Network-1 ever intimated that it intended to offer an alternative construction of “non-exhaustive
`search”—this, despite the fact that the parties first exchanged constructions on March 29, 2019,
`and that Network-1 submitted two briefs and two expert declarations defending its construction
`in the following months, without ever mentioning any alternative construction. See Case I D.I.
`137, 148, and 158. Even if Network-1’s “Proposed Alternate Construction” were considered on
`its merits, however, it serves only to reinforce that the term “non-exhaustive search” is indefinite.
`Network-1’s consistent position has been that “non-exhaustive search is a term of art that was
`
`
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 202 Filed 11/27/19 Page 2 of 4
`
`
`
`
`Hon. Paul G. Gardephe
`November 27, 2019
`Page 2
`
`well understood by those skilled in the art….” E.g., Network-1’s Opening Br. (Case I D.I. 148)
`at 13. That assertion is contradicted by Network-1’s own evidence, as Google explained at last
`week’s hearing, and it is now contradicted by Network-1 itself. The mere fact that Network-1
`has advanced two different constructions for “non-exhaustive search” highlights that the claim
`term lacks any established, plain and ordinary meaning to persons of ordinary skill in the art. In
`short, Network-1’s proposed “alternate” construction of “non-exhaustive search” is not only
`untimely; it also underscores the indefiniteness all of the asserted claims in which this term
`appears.
`
`With respect to the unsolicited letter brief that Network-1 filed on November 26 (Case I
`
`D.I. 201), Google does not wish to burden the Court with another round of argument on matters
`that have been thoroughly addressed, including most recently at the hearing on November 21.
`Because of Network-1’s highly unorthodox decision to submit an unauthorized brief retreading
`the merits of the parties’ dispute, however, I feel compelled to make the following brief
`observations regarding Network-1’s submission.
`
`First, Network-1 filed its letter brief without leave of Court, in contravention of the Case
`
`Management Plan and Scheduling Order setting forth the framework for claim construction
`briefing, and in violation of the Court’s Individual Rules of Practice governing the length of
`letters. See Case I D.I. 189; Individual Rule I.A. Accordingly, Google respectfully requests that
`the Court strike Network-1’s letter brief in its entirety.
`
`Second, the Supreme Court’s opinion in Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.
`
`Ct. 831 (2015), speaks for itself, and Google accurately conveyed its import in its claim
`construction briefs and at last week’s hearing. Network-1’s citation to the unpublished opinion
`in Bombardier Recreational Prods. Inc. v. Arctic Cat Inc., No. 2018-2388, 2019 WL 4593479
`(Fed. Cir. Sept. 20, 2019), simply lends further support to Google’s observation at the claim
`construction hearing that courts encounter two distinct species of indefiniteness arguments. In a
`case in which the pertinent claim terms have been construed, and the issue is whether the claim
`as construed is indefinite, any genuine disputes of material fact underlying that issue may be
`submitted to a jury. Bombardier is an example of such a case. See, e.g., id. at *3, *6–7
`(explaining that “[t]he district court adopted in large part the definition of ‘seat position’
`identified in the specification and proposed by Bombardier” and “denied partial summary
`judgment of invalidity to Arctic Cat, holding that it could not determine whether the term ‘seat
`position defined by the seat’ in claim 88 of the ’669 patent was indefinite because Arctic Cat had
`focused its indefiniteness argument on the ambiguity of the court’s construction, not on the term
`as used in the patent”).
`
`Conversely, in a case like this one, where the issue is whether the pertinent claim term
`
`can be construed at all, the Court can and should decide whether the claims at issue are indefinite
`in connection with the claim construction process. Teva is a paradigmatic example of such a
`case. See Teva, 135 S. Ct. at 835–36, 841–42; Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d
`
`
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 202 Filed 11/27/19 Page 3 of 4
`
`
`
`
`Hon. Paul G. Gardephe
`November 27, 2019
`Page 3
`
`1335, 1342, 1344–45 (Fed. Cir. 2015). In deciding whether the claims at issue are susceptible to
`construction or are indefinite, the Court can and should resolve any disputes regarding the
`“subsidiary facts” that are part of this inquiry, including whether the extrinsic evidence informs
`the meaning of the terms used in the patents. See Teva, 135 S. Ct. at 841 (“In some cases,
`however, the district court will need to look beyond the patent’s intrinsic evidence and to consult
`extrinsic evidence in order to understand, for example, the background science or the meaning of
`a term in the relevant art during the relevant time period. In cases where those subsidiary facts
`are in dispute, courts will need to make subsidiary factual findings about that extrinsic
`evidence.” (internal citation omitted, emphasis added)).
`
`Third, neither the assertions of Network-1’s declarant, Dr. Michael Mitzenmacher, nor
`
`any other “extrinsic evidence” supply “genuine issues of fact” that “preclude[] summary
`judgment of indefiniteness.” Network-1’s Letter Brief (Case I D.I. 201) at 5–6. Dr.
`Mitzenmacher’s assertions that “a skilled artisan would have understood with reasonable
`certainty what searches were within the scope of the claims based on the specification’s focus on
`efficient searching,” id. at 5, do not create disputes of fact at all. See Teva, 789 F.3d at 1342
`(“To the extent that Teva argues that the meaning of ‘molecular weight’ in the context of patents-
`in-suit is itself a question of fact, it is wrong. 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.” (citing Teva, 135 S. Ct. at 841–42)). Moreover, Dr. Mitzenmacher’s assertions
`that the phrase “non-exhaustive search” “had a clear, ordinary meaning to persons skilled in the
`art,” Network-1’s Letter Brief (Case I D.I. 201) at 5, are belied by both his deposition testimony
`and the references submitted by Network-1, which establish that “the definition of exhaustive
`search is vague” because, among other things, “[e]ach problem has its own way of trying
`everything, and often many different ways.” Jon Orwant, et al., Mastering Algorithms with Perl
`(1999) (Case I D.I. 148-20; Network-1’s Ex. 9) at 183. And try as Network-1 might to explain
`away Dr. Mitzenmacher’s testimony that a search can be “exhaustive” even if, contrary to
`Network-1’s argument, it does not compare the query to each record in the dataset, his testimony
`was clear and unambiguous on this point. Deposition Tr. of Dr. Mitzenmacher (Case I D.I. 153-
`12; Google’s Ex. K) at 174:3–175:13. In any case, all of the testimony and references provided
`by Dr. Mitzenmacher in this matter have been submitted to the Court, which can decide whether
`Network-1’s extrinsic evidence is “contradictory” or “inconsistent” without further
`characterization from the parties. Network-1’s Letter Brief (Case I D.I. 201) at 6.
`
`Fourth, there is nothing unclear about the Federal Circuit’s opinion concerning the term
`
`“non-exhaustive search” and its examination of the specifications of the patents-in-suit, and the
`parties addressed the import of the Court’s opinion at length in their briefs and at the claim
`construction hearing. Rather than reiterating those points, Google respectfully directs the Court
`to the Federal Circuit’s opinion, its two claim construction briefs, and the answers it provided in
`response to the Court’s questions at last week’s hearing. See Google LLC v. Network-1 Techs.,
`Inc., 726 F. App’x 779 (Fed. Cir. 2018); Google’s Response Br. (Case I D.I. 151) at 10–16;
`Google’s Sur-Reply Br. (Case I D.I. 163) at 2–6; Nov. 21, 2019 Hearing Tr. at 76–84.
`
`
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 202 Filed 11/27/19 Page 4 of 4
`
`
`
`
`Hon. Paul G. Gardephe
`November 27, 2019
`Page 4
`
`Fifth, Network-1’s request for “a live evidentiary hearing with Dr. Mitzenmacher,”
`
`Network-1’s Letter Brief (Case I D.I. 201) at 7, is both unwarranted and untimely. In August
`2019 the parties reached agreement on the framework for the claim construction hearing, and at
`Network-1’s suggestion they advised the Court in a joint letter that “the parties do not intend to
`present expert testimony as part of the tutorial or at the remainder of the hearing.” Case I D.I.
`169 at 1. The Court has permitted the parties ample opportunity to present their arguments and
`evidence, including two declarations from Dr. Mitzenmacher and a wide-ranging oral argument
`from Network-1’s counsel at last week’s hearing. The question whether the term “non-
`exhaustive search” is indefinite is ripe for determination, and Network-1 is not entitled to yet
`another bite at the apple, whether through a live evidentiary hearing or otherwise.
`
`If the Court wishes to hear argument on the remaining claim terms—“correlation
`
`information” and “extracted features”—Google will be available at the Court’s convenience.
`
`
`
`
`
`
`
`
`
`
`
`Sincerely,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Kevin Hardy
`
`Kevin Hardy
`
`
`
`
`
`
`
`
`
`
`Enclosure
`
`
`
`