Case 1:14-cv-02396-PGG-SN Document 234-1 Filed 11/11/20 Page 1 of 42
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` CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`NETWORK-1 TECHNOLOGIES, INC.,
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`v.
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`Plaintiff,
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`GOOGLE LLC and YOUTUBE, LLC,
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`Defendants.
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`14 Civ. 2396 (PGG)
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`14 Civ. 9558 (PGG)
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`PLAINTIFF NETWORK-1 TECHNOLOGIES, INC.’S
`BRIEF IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`Case 1:14-cv-02396-PGG-SN Document 234-1 Filed 11/11/20 Page 2 of 42
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................................................ 1
`I.
`SUMMARY JUDGMENT STANDARDS .................................................................................. 2
`II.
`III. GOOGLE’S PRIOR ART THEORIES BASED ON “SYSTEMS” FAIL AS A MATTER OF
`LAW ............................................................................................................................................. 3
`A. Background ......................................................................................................................... 4
`i.
`Clango ....................................................................................................................... 4
`ii.
`FreeAmp ................................................................................................................... 5
`B. Legal Standards ................................................................................................................... 5
`i.
`Anticipation .............................................................................................................. 6
`ii. Obviousness ............................................................................................................ 10
`C. The Search Functions Of Clango That Google Relies On To Meet The Claimed Search
`Features Were Not Disclosed To The Public And
` Cannot Qualify As Prior Art ............................................................................................ 11
`i.
`Google relies on the kd-tree search allegedly used by Clango to meet the claimed
`search feature elements. .......................................................................................... 12
`It is undisputed that the kd-tree search of the Clango system was not disclosed to
`the public ................................................................................................................ 13
`iii. Because the Clango search functionality was not disclosed to the public, it cannot
`anticipate the claimed search feature elements under Section 102(a) .................... 15
`It is undisputed that the Clango kd-tree search algorithm was suppressed or
`concealed, so that it cannot serve as prior art under Section 102(g) ...................... 16
`Because the Clango search was not prior art under Section 102, it cannot be relied
`on to show obviousness under Section 103 ............................................................ 17
`D. Google Fails To Establish The Alleged Public Use Or Prior Invention of Clango
`(Specifically The Use Of kd-Tree Search) At The Relevant Time Because It Relies On
`Uncorroborated Testimony ............................................................................................... 17
`i.
`Google’s expert asserts that Clango performed kd-tree search as of particular dates
`based solely on testimony ....................................................................................... 18
`ii. Google failed to procure corroborating evidence that any version of Clango used
`kd-tree search prior to the critical date ................................................................... 19
`iii. Because the testimony is uncorroborated, it cannot support Clango as prior art ... 20
`E. Google Fails To Establish That Clango Could Be Combined With Any Other Prior Art
`To Render Any Patent Claim Obvious ............................................................................. 21
`i.
`Obviousness combinations require proof of a motivation to combine and a
`reasonable expectation of success .......................................................................... 21
`Persons of skill in the art could not have combined Clango with Chen because
`Clango’s search functionality was hidden from the public .................................... 21
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`ii.
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`i
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`ii.
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`iv.
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`v.
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-1 Filed 11/11/20 Page 3 of 42
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`F.
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`ii.
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`iv.
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`The Search Functions Of FreeAmp That Google Relies On To Meet The Claimed Search
`Features Were Not Disclosed To The Public And Cannot Qualify As Prior Art ............. 22
`i.
`Google relies on the “two-level hash” search allegedly used by FreeAmp to meet
`the claimed search feature elements ....................................................................... 23
`It is undisputed that the “two-level hash” search of the FreeAmp system was not
`disclosed to the public ............................................................................................ 24
`iii. Because the FreeAmp search functionality was not disclosed to the public, it
`cannot anticipate or render obvious the claimed search feature elements under
`Section 102(a) ......................................................................................................... 25
`It is undisputed that the FreeAmp two-level hash search algorithm was suppressed
`or concealed, so it cannot serve as prior art under Section 102(g) ......................... 26
`Because the FreeAmp search was not prior art under Section 102, it cannot be
`relied on to show obviousness under Section 103 .................................................. 27
`G. Google Fails To Establish The Alleged Public Use Or Prior Invention Of FreeAmp
`(Specifically The Use Of A Two-Level Hash Search) Prior To The Critical Date Because
`It Relies On Uncorroborated Testimony ........................................................................... 27
`i.
`Google’s expert asserts that FreeAmp performed two-level hash search prior to Dr.
`Cox’s invention based solely on testimony ............................................................ 28
`ii. Google failed to procure corroborating evidence that FreeAmp used a two-level
`hash search as of the date asserted by Google ........................................................ 28
`iii. Because the testimony is uncorroborated, it cannot support FreeAmp as prior art 28
`H. Google Fails To Establish That FreeAmp Could Be Combined With Any Other Prior Art
`To Render Any Patent Claim Obvious ............................................................................. 29
`i.
`Obviousness combinations require proof of a motivation to combine and a
`reasonable expectation of success .......................................................................... 30
`Persons of skill in the art could not have combined FreeAmp because FreeAmp’s
`two-level hash search functionality was hidden from the public ........................... 30
`A. Google’s Inter Partes Reviews of the Challenged Claims of the ‘988 and ‘237 Patents
`Resulted in Final Written Decisions Affirming Their Validity ........................................ 31
`Section 315 Estoppel Applies to Prior Art Google Raised or Reasonably Could Have
`Raised In Its IPR Petitions ................................................................................................ 32
`C. Google Is Estopped From Challenging The Asserted Claims of the ‘237 and ‘988 Patents
`Based On the Combination of Chen and Arya .................................................................. 35
`V. CONCLUSION .......................................................................................................................... 36
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`v.
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`ii.
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`B.
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`ii
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`
`TABLE OF AUTHORITIES
`
`Cases
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ........................................................................................................................... 3
`Apotex USA, Inc. v. Merck & Co.,
`254 F.3d 1031 (Fed. Cir. 2001) ............................................................................................. 8, 17, 28
`BASF Corp. v. SNF Holding Co.,
`955 F.3d 958 (Fed. Cir. 2020) ....................................................................................................... 7, 8
`Cal. Inst. of Tech. v. Broadcom Ltd.,
`No. CV 16-3714 GW (AGRX), 2018 WL 7456042 (C.D. Cal. Dec. 28, 2018) ........................ 35, 36
`Carella v. Starlight Archery & Pro Line Co.,
` 804 F.2d 135 (Fed. Cir. 1986) .......................................................................................................... 7
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ........................................................................................................................... 3
`Cobalt Boats, LLC v. Sea Ray Boats, Inc.,
`No. 2:15-cv-21, 2017 WL 2605977 (E.D. Va. June 5, 2017) .......................................................... 36
`Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ........................................................................................... 11, 22, 31
`Dey, L.P. v. Sunovian Pharmaceuticals, Inc.,
`715 F.3d 1351 (Fed. Cir. 2013) ............................................................................................. 8, 16, 26
`Douglas Dynamics, LLC v. Meyer Prods. LLC,
`No. 14-CV-886-JDP, 2017 WL 1382556 (W.D. Wis. Apr. 18, 2017) ........................................... 35
`Finnigan Corp. v. ITC,
`180 F.3d 1354 (Fed. Cir. 1999) ....................................................................................................... 10
`Graham v. John Deere Co. of Kansas City,
`85 S. Ct. 684 (1966) ............................................................................................................. 11, 18, 28
`Horvath v. Lee,
`564 F.2d 948 (CCPA 1977) ............................................................................................................... 8
`Int’l Glass Co. v. United States,
`408 F.2d 395 (Ct. Cl. 1969) ............................................................................................................... 9
`Juicy Whip, Inc. v. Orange Bang, Inc.,
`292 F.3d 728 (Fed. Cir. 2002) ............................................................................................. 10, 21, 30
`Kimberly -Clark Corp. v. Johnson & Johnson,
`745 F.2d 1437 (Fed. Cir. 1984) ......................................................................................................... 9
`KSR Int’l. Co. v. Teleflex, Inc.,
`127 S. Ct. 1727 (2007) ..................................................................................................................... 11
`Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc.,
`322 F.3d 1335 (Fed. Cir. 2003) ........................................................................................... 10, 21, 30
`
`iii
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-1 Filed 11/11/20 Page 5 of 42
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`Lockwood v. American Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ......................................................................................................... 8
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009 ......................................................................................................... 10
`Microsoft Corp. v. i4i Ltd. Partnership,
`131 S. Ct. 2238 (2011) ...................................................................................................................... 6
`Novartis Pharm. Corp. v. Par Pharm. Inc.,
`No. 14-1289, 2019 U.S. Dist. LEXIS 62489 (D. Del. Apr. 11, 2019) ............................................. 35
`Oddzon Prods., Inc. v. Just Toys, Inc.,
`122 F.3d 1396 (Fed. Cir. 1997) ......................................................................................................... 9
`Parallel Networks Licensing, LLC v. Int’l Bus. Machs. Corp., No. CV 13-2072 (KAJ), 2017 WL
`1045912, at *10 n.13 (D. Del. Feb. 22, 2017) ................................................................................. 34
`SAS Institute Inc. v. Iancu,
`138 S.Ct. 1348 (2018) .......................................................................................................... 33, 34, 36
`SiOnyx, LLC v. Hamamatsu Photonics K.K.,
`330 F. Supp. 3d 574 (D. Mass. 2018) .................................................................................. 35, 36, 37
`Trustees of Columbia Univ. in the City of New York v. Symantec Corp.,
`No. 3:13CV808, 2019 WL 2814682 (E.D. Va. July 2, 2019) ............................................. 34, 35, 36
`W.L. Gore & Assoc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ............................................................................................. 8, 16, 26
`Woodland Trust. v. Flowertree Nursery, Inc.,
`148 F.3d 1368 (Fed. Cir. 1998) .................................................................................................. 7, 10
`ZitoVault, LLC v. Int’l Bus. Machs. Corp.,
`No. 3:16-cv-0962-M, 2018 WL 2971178 (N.D. Tex. Apr. 4, 2018) ............................................... 37
` Rules
`Federal Rules of Civil Procedure 56(a) ................................................................................................. 1
`Statutes
`35 U.S.C. § 102 .............................................................................................................................. 1, 3, 6
`35 U.S.C. § 103 ........................................................................................................................ 1, 3, 6, 10
`35 U.S.C. § 282 ...................................................................................................................................... 6
`35 U.S.C. § 311(b) ............................................................................................................................... 34
`35 U.S.C. § 315 ............................................................................................................................. passim
`Other Authorities
`157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) (statement of Sen. Grassley) ............................... 36
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) ............................................ 35
`America Invents Act: Hearing on H.R. 1249 Before the House Comm. on the Judiciary, 112th Cong.
`52-53 (2011) .................................................................................................................................... 35
`
`iv
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`Case 1:14-cv-02396-PGG-SN Document 234-1 Filed 11/11/20 Page 6 of 42
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`I.
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`INTRODUCTION
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`This motion addresses various defenses of invalidity of asserted claims of the three patents-
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`in-suit advanced by defendants (collectively “Google”) in this case. Specifically, Google asserts
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`defenses that one of the asserted claims, claim 17 of U.S. Patent 8,010,988 (“the ‘988 patent”) is
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`anticipated by prior art under 35 U.S.C. § 102, and that claim 17 of the ‘988 patent, as well as all of
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`the asserted claims of the other two patents-in-suit, U.S. Patent 8,205,237 (“the ‘237 patent”) and U.S
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`Patent 8,904,464 (“the ‘464 patent”) are rendered obvious by prior art under 35 U.S.C. § 103. Each
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`defense relies on assertions that the inventions of the patents-in-suit were publicly disclosed before
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`the inventions by Dr. Ingemar Cox, the inventor of all of the patents-in-suit. Google bears an
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`elevated clear and convincing burden of proof as to all of these defenses. Google cannot meet its
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`burden as a matter of law.
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`First, Google’s prior art defenses rely extensively on assertions that two alleged prior art
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`“systems” utilized all or nearly all of the elements of the claims of the patents-in-suit. The three
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`patents-in-suit (referred to herein collectively as the “Cox patents”) all claim priority to a provisional
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`patent application filed by Dr. Ingemar Cox on September 14, 2000.1 Google contends that a system
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`called Clango was released in an “alpha” test form to a small number of members of the public in
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`July 2000, and that a subsequent “beta” test version of that system was released to some members of
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`the public in August 2000. Google also contends that another system called FreeAmp was made
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`available to members of the public in August 2000.
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`Google’s prior art contentions regarding these systems fail for several independent reasons.
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`First, Google lacks evidence that the relevant aspects of these systems qualify as prior art because
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`they were never publicly disclosed. Under clear Federal Circuit precedent, aspects of a system that
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`1 For purposes of this motion only, Network-1 assumes the date of invention to be September 14,
`2000 which is the priority date of the provisional application to which each of the patents-in-suit
`claim priority. Network-1 reserves the right to present at trial evidence that the relevant date of
`invention was earlier.
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`1
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`

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`are not disclosed to the public are not prior art. In particular, all of the asserted claims of the Cox
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`patents claim a particular type of search (e.g., non-exhaustive, neighbor, near neighbor, sublinear,
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`etc). The search algorithms used by these prior art systems were secret from the public and therefore
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`cannot support Google’s assertions. Second, Google’s evidence of the alleged functioning of these
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`systems at the critical time before Dr. Cox’s patent filings fails as a matter of law because it consists
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`of only uncorroborated testimony of persons involved at the time. Google cannot present any of the
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`computer code from that time that allegedly performed the relevant functions in either system.
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`Federal Circuit law holds that a claim of prior public use or prior invention cannot rely on
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`uncorroborated testimony (even where multiple witnesses purport to corroborate one another) and
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`that such evidence fails to satisfy the burden of proof as a matter of law. Finally, Google asserts that
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`aspects of these systems could have been combined with other prior art publications or patents to
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`render claims of the Cox patents obvious. Once again, Google’s assertions fail as a matter of law
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`because it cannot show that it would have been obvious to a person of ordinary skill in the art to
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`combine aspects of patents or publications with the hidden, secret functioning of the Clango and
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`FreeAmp systems Google relies on.
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`Google also asserts a prior art theory as to some asserted patent claims based on combining
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`two prior art references (a patent and a printed publication). Google is estopped from asserting this
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`theory as to the ‘988 patent and the ‘237 patent because Google already presented a challenge to the
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`asserted claims of those patents in an Inter Partes Review proceeding before the patent office. The
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`patent office rejected Google’s challenge. Pursuant to 35 U.S.C. § 315, Google is now estopped
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`from advancing this prior art theory in this Court.
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`II.
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`SUMMARY JUDGMENT STANDARDS
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`“The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” FED. R.
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`CIV. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (“Summary judgment is appropriate
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`2
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`

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`if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and the moving party is
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`entitled to a judgment as a matter of law.”). A fact is “material” only if it might affect the outcome
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`of the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Likewise, a dispute as to
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`a material fact is “genuine” only if the evidence is such that “a reasonable jury could return a verdict
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`for the nonmoving party.” Id. The question is “whether a jury could reasonably find either that the
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`[moving party] proved his case by the quality and quantity of evidence required by the governing law
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`or that he did not.” Id. at 254. Accordingly, once the moving party establishes a prima facie case,
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`the burden shifts to the nonmoving party to set forth specific facts by “citing to particular parts of
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`materials in the record” showing that there is a genuine issue for trial. FED. R. CIV. P. 56(c)(1)(A);
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`see also Anderson, 477 U.S. at 250.
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`III. GOOGLE’S PRIOR ART THEORIES BASED ON “SYSTEMS” FAIL AS A
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`MATTER OF LAW
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`Google asserts validity defenses of both anticipation under 35 U.S.C. § 102 and obviousness
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`under 35 U.S.C. § 103. Both assert that the inventions of the asserted Cox patents are invalid based
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`on alleged prior art. Google’s anticipation defense relies solely on a single alleged prior art “system”
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`called Clango. Google also asserts that Clango and another alleged prior art “system” called
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`FreeAmp render various claims of the patents-in-suit obvious either alone or in various
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`combinations. All of the anticipation and obviousness defenses based on one or both of these
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`systems fail as a matter of law because elements of these systems that Google contends disclose
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`claim elements of the asserted Cox patent claims were not publicly disclosed and separately because
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`those key elements were suppressed or concealed by the alleged developers of these systems.
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`Because these elements were not public, they are not prior art. Google bears the burden of proving
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`every element of each of these defenses by clear and convincing evidence, and the evidence
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`proffered fails to meet that standard as a matter of law.
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`3
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`

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`A.
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`Background
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`Google presents its theories of invalidity through its proposed expert witness, Trevor Darrell.
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`A copy of Dr. Darrell’s expert report is attached as Exhibit 1 to the Affidavit of Brian D. Ledahl,
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`submitted herewith. A copy of relevant excerpts of Dr. Darrell’s deposition testimony is attached as
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`Exhibit 4 to the Ledahl Affidavit.2 In presenting those opinions, Dr. Darrell discusses and relies on
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`the two “systems” referenced above, Clango and FreeAmp. Because the pertinent aspects of the
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`systems were not publicly available before September 14, 2000 and/or were suppressed or concealed,
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`those non-public elements of Clango and FreeAmp cannot qualify as prior art as a matter of law, and
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`thus cannot support a defense of invalidity under Section 102 or 103.
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`i.
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`Clango
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`Dr. Darrell asserts that Clango was a system offered by a company called Audible Magic for
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`identifying music that a computer user was playing on their computer over the Internet. Ex. 1 Darrell
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`Report at pp. 64-65. According to Dr. Darrell, the Clango “system” anticipates claim 17 of the
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`asserted ‘988 patent, renders obvious asserted claims 33, 34, and 35 of the ‘237 patent (standing
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`alone), and also renders obvious all of the asserted claims of the patents-in-suit, (including claims 1,
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`8, 10, 16, 18, 25, 27, and 33 of the ‘464 patent) in combination with a prior art patent called Chen.3
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`Google’s defenses based on the Clango system, alone or in combination with Chen, fail as a
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`matter of law because Google cannot provide the evidence required to show 1) any public disclosure
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`of key elements of the Clango system, including the details of its search functionality, 2) the actual
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`functioning of the Clango system as of the priority date of the asserted patents, or 3) that any person
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`skilled in the art at the time of the invention of the asserted Cox patents would have been motivated
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`to combine Clango, or any part of it, with anything else, because such a person could not have even
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`understood how Clango actually worked. The first two of these failures require summary judgment
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`2 Unless otherwise noted, all exhibits discussed herein are exhibits to the Affidavit of Brian D.
`Ledahl accompanying this motion.
`3 For purposes of this motion, Network-1 assumes that the Chen reference constitutes prior art to the
`asserted patents, but does not concede that fact or otherwise relieve Google of its ultimate burden of
`proof on that issue.
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`4
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`

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`as to every Google defense that relies on Clango. The third requires summary judgment as to all of
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`Google’s obviousness defenses relying on Clango in combination with Chen.
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`ii.
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`FreeAmp
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`Dr. Darrell asserts that FreeAmp was a system for identifying music files that a computer
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`user had on his or her personal computer. Ex. 1 Darrell Report at pp. 78-80. According to Dr.
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`Darrell, the FreeAmp “system” by itself rendered obvious asserted claim 17 of the ‘988 patent, and
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`asserted claims 33 and 34 of the ‘237 patent. Dr. Darrell also asserts that FreeAmp renders obvious
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`claim 17 of the ‘988 patent and claims 33 and 34 of the ‘237 patent in combination with a prior art
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`publication called Arya.4 Dr. Darrell also asserts that FreeAmp renders claim 34 of the ‘237 patent
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`obvious in combination with the Chen reference, and that FreeAmp renders claims 34 and 35 of the
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`‘237 patent obvious in combination with both the Arya reference and the Chen reference together.
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`Google and Dr. Darrell’s reliance on the FreeAmp system, alone or in the various
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`combinations, fails to support its defenses for the same core reasons that Google’s showing for
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`Clango fails. Google fails to provide the evidence required to show 1) any public disclosure of key
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`elements of the FreeAmp system, including the details of its search functionality, 2) the actual
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`functioning of the FreeAmp system as of the priority date of the asserted patents, or 3) that any
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`person skilled in the art at the time of the invention of the asserted Cox patents would have been
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`motivated to combine FreeAmp, or any part of it, with anything else, because such a person could not
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`have even understood how FreeAmp actually worked. The first two of these failures require
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`summary judgment as to every Google defense that relies on FreeAmp. The third requires summary
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`judgment as to all of Google’s obviousness defenses relying on FreeAmp in combination with one or
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`more other references.
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`B.
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`Legal Standards
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`Patent claims issued by the United States Patent and Trademark Office are presumed valid.
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`The burden of establishing invalidity rests with the party asserting such invalidity. 35 U.S.C. § 282.
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`4 For purposes of this motion, Network-1 assumes that the Arya reference constitutes prior art to the
`asserted patents, but does not concede that fact or otherwise relieve Google of its ultimate burden of
`proof on that issue.
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`5
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`

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`Such defenses of invalidity must be proved by clear and convincing evidence. Microsoft Corp. v. i4i
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`Ltd. Partnership, 131 S. Ct. 2238, 2242 (2011). Here, Google asserts challenges of anticipation,
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`which is governed by 35 U.S.C. § 102, and obviousness, which is governed by 35 U.S.C. § 103.
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`Anticipation means that each and every element of a claim is either expressly or inherently disclosed
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`in a single reference. If even one element or aspect of the claim is not disclosed or present, then as a
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`matter of law the claim is not anticipated. Obviousness means that a patented invention may not be
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`disclosed or described identically in a prior art reference (as required for anticipation), but the
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`differences between the patented invention and the prior art are sufficiently limited that the invention
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`as a whole would have been obvious at the time of the patented invention to someone skilled in the
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`relevant field and they would have been motivated to combine or modify the prior to art to make the
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`invention with an expectation of success.
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`The three patents-in-suit all claim priority to a provisional patent application that was filed
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`September 14, 2000. Because this priority is before 2013, pursuant to the provisions of the America
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`Invents Act (“AIA”), Pub. L. 112-29 – Sept. 16, 2011, 125 Stat. 284, et seq., the relevant provisions
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`of Sections 102 and 1035 are the provisions of those sections as they existed prior to the AIA. See
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`Pub. L. 112-29, § 3(e)(3), 125 Stat. 288 (setting the effective date for the amendments as applicable
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`to patent applications filed more than 18 months after enactment of the America Invents Act – Sept.
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`16, 2011).
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`i.
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`Anticipation
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`In his analysis, Dr. Darrell does not specify the particular subsection(s) of Section 102 on
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`which he relies. The context of his report suggests that he relies on two potential sections of Section
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`102: subsection (a) (relating to prior knowledge or use of an invention), and subsection (g) (relating
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`to prior invention by one who did not abandon, suppress or conceal it). Pre-AIA Section 102
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`provides (in relevant part):
`
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`5 Because the 2011 amendments to Sections 102 and 103, as they related to whether something is
`prior art, anticipated and/or rendered obvious do not apply here, all further references to Sections 102
`and 103 will refer to the relevant (pre-AIA) versions of 35 U.S.C. §§ 102 and 103.
`6
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`

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`“A person shall be entitled to a patent unless -
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`(a) the invention was known or used by others in this country, or patented or described in a
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`printed publication in this or a foreign country, before the invention thereof by the applicant
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`for patent
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`. . . .
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`(g) . . . (2) before such person’s invention thereof, the invention was made in this country by
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`such inventor who had not abandoned, suppressed, or concealed it. In determining priority of
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`invention under this subsection, there shall be considered not only the respective dates of
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`conception and reduction to practice of the invention, but also the reasonable diligence of one
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`who was first to conceive and last to reduce to practice, from a time prior to conception by
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`the other.”
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`a.
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`Section 102(a) requires public use that actually discloses the claimed features to
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`the public
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`To sustain a defense of anticipation under Section 102(a), the alleged public use must
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`actually disclose the claimed features to the public. The Federal Circuit recently reiterated “[t]his
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`court has uniformly interpreted the ‘known or used’ prong of §102(a) to mean ‘knowledge or use
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`which is accessible to the public.’” BASF Corp. v. SNF Holding Co., 955 F.3d 958, 964 (Fed. Cir.
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`2020) (quoting Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986)); see
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`also, Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir. 1998) (“in order to
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`invalidate a patent based on prior knowledge or use, that knowledge or use must have been available
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`to the public”). “[I]f members of the public are not informed of, and cannot readily discern, the
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`claimed features of the invention in the allegedly invalidating prior art, the public has not been put in
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`possession of those features.” Dey, L.P. v. Sunovian Pharmaceuticals, Inc., 715 F.3d 1351, 1359
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`(Fed. Cir. 2013); see also Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1570 (Fed. Cir.
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`1997).
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`Similarly, the Federal Circuit holds that a public use of a system (such as a machine) does not
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`reveal to the public (and thus cannot anticipate or render obvious) the process implemented by the
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`machine, where that process would not be evident to the public from the mere operation of the
`7
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`

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`Case 1:14-cv-02396-PGG-SN Document 234-1 Filed 11/11/20 Page 13 of 42
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`machine. W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1549-1550 (Fed. Cir. 1983). The
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`Federal Circuit explained: “Early public disclosure is a linchpin of the patent system. As between a
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`prior inventor who benefits from a process by selling its product but suppresses, conceals, or
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`otherwise keeps the process from the public, and a later inventor who promptly files a patent
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`application from which the public will gain a disclosure of the process, the law favors the latter.” Id.
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`at 1550 (citing Horvath v. Lee, 564 F.2d 948 (CCPA 1977)).
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`Thu