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`Case 1:14-cv-02396-PGG-SN Document 234-21 Filed 11/11/20 Page 1 of 10
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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
`STATEMENT OF MATERIAL FACTS FOR WHICH THERE IS NO GENUINE ISSUE
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`Pursuant to Local Civil Rule 56.1, Plaintiff Network-1 Technologies, Inc., herby submits the
`following statement of material facts for which it contends there is no genuine issue to be tried in
`support of motion for summary judgment against Google LLC and Youtube, LLC (collectively
`“Google”).
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`
`FACTS FOR WHICH THERE IS NO GENUINE ISSUE CONCENING
`GOOGLE’S INVALIDITY ASSERTIONS REGARDING THE “CLANGO”
`PRIOR ART REFERENCE
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`A.
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` Google Relies On The “kd-tree search algorithm” Allegedly Present
`In The Clango “System” To Satisfy At Least One Element Of Every
`Claim For Which That System Is Claimed To Be Prior Art
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`I.
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`Case 1:14-cv-02396-PGG-SN Document 234-21 Filed 11/11/20 Page 2 of 10
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`1. On or about December 20, 2019, Google served the expert report of Dr. Trevor Jackson
`Darrell regarding invalidity of the Patents in suit. Affidavit of Brian D. Ledahl, Ex. 1, Darrell
`report.1
`2. In his report, Dr. Darrell asserts that Clango was a system offered by a company called
`Audible Magic for identifying music that a computer user was playing on their computer over
`the Internet. Ex. 1, Darrell Report at pp. 64-65.
`3. Dr. Darrell opines that the Clango “system” anticipated all elements of claim 17 of the
`asserted U.S. Patent No. 8,010,988 (the “‘988 patent”), rendered obvious asserted claims 33, 34,
`and 35 of the asserted U.S. Patent No. 8,205,237 (the “‘237 patent”) (standing alone), and also
`rendered obvious all of the asserted claims of the patents-in-suit, including claims 1, 8, 10, 16,
`18, 25, 27, and 33 of the asserted U.S. Patent No. 8,904,464 (the “‘464 patent”) in combination
`with a prior art patent called Chen. Ex. 1, Darrell Report at pp. 89, 170, 187, 204, 209, 226, 227,
`231, 236, 251, 253, 254, 257, 262, 263, 265.
`4. Claim 17 of the ‘988 patent (which depends on claim 15) requires identification of an
`electronic work “based on a non-exhaustive search identifying a neighbor,” “wherein the non-
`exhaustive search is sublinear.” Ex. 2, ’988 Patent.
`5. Dr. Darrell contends that this claim element of claim 17 was disclosed in the Clango
`system through the “lookup algorithm” of the system that Dr. Darrell describes as a “kd-tree
`search algorithm.” Ex. 1, Darrell Report at ¶¶ 181; 187; 207.
`6. Claim 33 of the ‘237 patent requires “using the media work extracted features to perform
`a sublinear approximate nearest neighbor search of reference extracted features.” Ex. 3, ’237
`Patent.
`7. Claims 34 and 35 depend from claim 33 and do not further modify this claim element. Id.
`
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`1 All exhibits are attached to the concurrently filed affidavit of Brian D. Ledahl.
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`2
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`8. Dr. Darrell contends that this element of claims 33-35 was disclosed in the Clango
`system by the same “kd-tree search algorithm” referenced above in connection with the ‘988
`patent. Ex. 1, Darrell Report at ¶¶ 351-352.
`9. Where Dr. Darrell relies on Clango in combination with some other asserted prior art, he
`also relies on Clango for disclosure of the search elements of the claims. See Ex. 4, Darrell
`Deposition at 236:7-15.
`10. With respect to claim 17 of the ‘988 patent, Dr. Darrell relies on a combination of Clango
`with the Chen reference. Ex. 1, Darrell Report at ¶ 298.
`11. In this combination, Dr. Darrell points to the same “kd-tree search” discussed above as
`allegedly disclosing the “non-exhaustive search identifying a neighbor” “wherein the non-
`exhaustive search is sublinear” claim element. Ex. 1, Darrell Report at ¶¶ 311, 313, 319.
`12. Dr. Darrell relies on the same combination of Clango with the Chen reference in
`connection with his opinions regarding obviousness of claims 33, 34, and 35 of the ‘237 patent.
`Ex. 1, Darrell Report at ¶¶ 382, 433, 447.
`13. In the combination of Clango and Chen, Dr. Darrell points to the same “kd-tree search”
`discussed above as allegedly disclosing the “using the media work extracted features to perform
`a sublinear approximate nearest neighbor search of reference extracted features” claim element.
`Ex. 1, Darrell Report at ¶¶ 389, 392, 397.
`14. Independent claims 1 and 18 of the ‘464 patent requires “correlating, by the computer
`system using a non-exhaustive, near neighbor search.” Ex. 5, ’464 patent.
`15. Asserted claims 8, 10, and 16 of the ’464 patent depend from claim 1 and do not further
`modify this claim element. Id.
`16. Asserted claims 25, 27, and 33 of the ’464 patent depend from claim 18 and also do not
`further modify this claim element. Id.
`17. For claims 1, 8, 10, 16, 18, 25, 27, and 33 of the ’464 Patent, Dr. Darrell relies on the
`same combination of Clango and the Chen reference discussed above. Ex. 1, Darrell Report at
`¶¶ 463, 499, 505, 510, 520, 533, 538, 543.
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`18. Dr. Darrell further points to the same “kd-tree search algorithm” functionality of Clango
`as allegedly disclosing the search claim elements as discussed with respect to the ‘988 and ‘237
`patents above. Ex. 1, Darrell Report at ¶¶ 467, 469, 523.
`B.
`Statement Of Facts Showing a Lack of Public Use of the Relevant Portions of
`Clango Under 35 U.S.C. § 102(a)
`19. The Clango “system” performed the “kd-tree search algorithm” upon which Google relies
`on an Audible Magic server separate from any “user” of the system. Ex. 6, Wold Depo. at 14:3-
`13; 29:21-30:22.
`20. The kd-tree search algorithm functionality of Clango was not disclosed to the public
`through the availability or use of the Clango system. Ex. 7, Schrempp Depo. at 161:22-162:9;
`Ex. 6, Wold Depo. at 93:8-94:1; 98:19-22; 204:17-205:1; 212:15-213:6; Ex. 4, Darrell Depo. at
`152:6-13; 153:5-13; 237:2-240:11.
`C.
`Statement Of Facts Showing Suppression or Concealment of the Relevant
`Portions of Clango Under 35 U.S.C. § 102(g)
`21. Google offered no evidence that Audible Magic ever publicly disclosed the kd-tree search
`functionality of the Clango “system” to the public. Ex. 4, Darrell Depo. at 45:1-46:7; 155:9-20;
`Ledahl Decl. ¶ 20 (Audible Magic continues to this day to maintain the confidentiality of
`computer code, documents and testimony regarding the Clango search functionality).
`
`
`Statement Of Facts Showing a Lack of Corroboration of Testimony
`Regarding The Relevant Features Of The Clango System
`22. Google assets that the relevant Clango system was embodied in alpha and beta releases
`that took place in July 2000 (alpha) and August 2000 (beta). Ex. 1, Darrell Report at ¶¶ 131,
`135.
`23. With respect to the search functionality of Clango, Dr. Darrell, does not suggest that there
`was any difference between these two alleged releases. Ex. 4, Darrell Depo. at 97:21-99:19.
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`D.
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`4
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`24. Google did not produce or identify the computer code actually compiled into either the
`alpha or beta release of Clango. Ex. 4, Darrell Depo. at 102:5-103:6; 104:16-108:8; 110:18-
`111:2; 111:3-112:16; 113:3-115:18; 132:21-133:15; Ex. 1, Darrell Report at ¶ 193.
`E.
`Statement Of Facts Showing a Lack of Motivation for a POSITA to Combine
`Clango With Chen With An Expectation Of Success
`25. With respect to claim 17 of the ‘988 patent, Dr. Darrell relies on a combination of Clango
`with the Chen reference. Ex. 1, Darrell Report at ¶ 298.
`26. Dr. Darrell relies on the same combination of Clango with the Chen reference in
`connection with his opinions regarding obviousness of claims 33, 34, and 35 of the ‘237 patent.
`Ex. 1, Darrell Report at ¶¶ 382, 433, 447.
`27. For claims 1, 8, 10, 16, 18, 25, 27, and 33 of the ’464 Patent, Dr. Darrell relies on the
`same combination of Clango and the Chen reference discussed above. Ex. 1, Darrell Report at
`¶¶ 463, 499, 505, 510, 520, 533, 538, 543.
`28. A person skilled in the art would not have known of the search algorithm functionality of
`the Clango system at the filing date of the Cox patents. Ex. 7, Schrempp Depo. at 161:22-162:9;
`Ex. 6, Wold Depo. at 93:8-94:1; 98:19-22; 204:17-205:1; 212:15-213:6; Ex. 4, Darrell Depo. at
`152:6-13; 153:5-13; 237:2-240:11.
`II.
`FACTS FOR WHICH THERE IS NO GENUINE ISSUE CONCENING
`GOOGLE’S INVALIDITY ASSERTIONS REGARDING THE
`“FREEAMP” PRIOR ART REFERENCE
`
`
`
`A.
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` Google Relies On The “two-level hash structure” search algorithm
`Allegedly Present In The FreeAmp “System” To Satisfy At Least One
`Element Of Every Claim For Which That System Is Claimed To Be
`Prior Art
`29. Claim 17 of the ‘988 patent (which depends on claim 15) requires identification of an
`electronic work “based on a non-exhaustive search identifying a neighbor,” “wherein the non-
`exhaustive search is sublinear.” Ex. 2, ’988 Patent.
`30. Dr. Darrell contends that this claim element was disclosed in the FreeAmp system
`through the “search algorithm” of the FreeAmp system in August of 2000 that Dr. Darrell
`describes as a “two-level hash structure.” Ex. 1, Darrell Report at ¶¶ 242-243.
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`31. Claim 33 of the ‘237 patent requires “using the media work extracted features to perform
`a sublinear approximate nearest neighbor search of reference extracted features.” Ex. 3, ‘237
`Patent.
`32. Claims 34 and 35 depend from claim 33 and do not further modify this claim element.
`33. Dr. Darrell contends that this element was disclosed (though without a sublinear search)
`in the FreeAmp system by the same “two-level hash structure” search algorithm referenced
`above in connection with the ‘988 patent. Ex. 1, Darrell Report at ¶¶ 369-370.
`34. Dr. Darrel also asserts combinations of FreeAmp with the Chen reference as rendering
`obvious ‘237 patent claims 34 and 35. Ex. 1, Darrell Report at ¶¶ 416.
`35. In connection with this combination of FreeAmp with Chen, Dr,. Darrell relies on
`FreeAmp to allegedly satisfy the search elements of the asserted claims. Ex. 1, Darrell Report at
`¶¶ 416-421 (identifying nothing from the Chen reference as disclosing the search functionality of
`the asserted claims).
`B.
`Statement Of Facts Showing a Lack of Public Use of the Relevant Portions of
`FreeAmp Under 35 U.S.C. § 102(a)
`36. The FreeAmp “system” performed the “two-level hash structure” search upon which
`Google relies on TRM server separate from any “user” of the system. Ex. 7, Ward Depo. at
`42:10-44:19; 94:17-95:15; 96:18-97:1; 114:14-17; Ex. 4, Darrell Depo. at 187:20-188:2.
`37. The two-level has structure search functionality of FreeAmp was not disclosed to the
`public through the availability or use of the FreeAmp system. Ex. 7, Ward Depo. at 115:8-
`116:18; 117:7-14; 119:6-20; Ex. 4, Darrell Depo. at 188:15-17; 193:1-4.
`
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`C.
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`Statement Of Facts Showing Suppression or Concealment of the Relevant
`Portions of FreeAmp Under 35 U.S.C. § 102(g)
`38. Google offered no evidence that anyone associated with the FreeAmp system ever
`publicly disclosed the two-level hash structure search functionality of the FreeAmp “system” to
`the public. Ex. 8, Ward Depo. at 115:8-116:18; 117:7-14; Ex. 9, Breslin Depo. at 142:5-7;
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`Case 1:14-cv-02396-PGG-SN Document 234-21 Filed 11/11/20 Page 7 of 10
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`159:8-160:22; Ex. 4, Darrell Depo. at 193:5-11; Ex. 1, Darrell Report at ¶¶ 242-258; Ledahl
`Decl. ¶ 21 (TRM continues to this day to maintain the confidentiality of computer code,
`documents and testimony regarding the FreeAmp search functionality).
`D.
`Statement Of Facts Showing a Lack of Corroboration of Testimony
`Regarding The Relevant Features Of The FreeAmp System
`39. Google asserts that the relevant FreeAmp system was embodied in a release of August
`18, 2000. Ex. 1, Darrell Report at ¶ 145.
`40. Google did not produce or identify the computer code actually compiled into the alleged
`August 2000 FreeAmp system. Ex. 8, Ward Depo. at 112:10-113:1; 113:14-114:13; Ex. 1,
`Darrell Report at ¶¶ 242-258; Ex. 4, Darrell Depo. at 186:20-187:15.
`
`E.
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`Statement Of Facts Showing a Lack of Motivation for a POSITA to Combine
`FreeAmp With Other Prior Art With An Expectation Of Success.
`41. With respect to claim 17 of the ‘988 patent, Dr. Darrell relies on FreeAmp in
`combination with a reference called Arya. Ex. 1, Darrell Report at ¶¶ 272, 284.
`42. In that proposed combination, Dr. Darrell asserts that the search functionality of
`FreeAmp would be replaced by a search algorithm from Arya. Ex. 1, Darrell Report at ¶¶ 272,
`284.
`43. Dr. Darrell relies on the same combination of Freeamp and Arya in connection with
`Claim 33 of the ‘237 patent. Ex. 1, Darrell Report at ¶¶ 377, 379.
`44. Dr. Darrell also asserts combinations of FreeAmp with the Chen reference (‘237 patent
`claims 34 and 35), and FreeAmp in combination with both Arya and Chen (‘237 patent claims 34
`and 35). Ex. 1, Darrell Report at ¶¶ 416, 427, 445.
`45. In connection with the combination with Chen, Dr. Darrell relies on FreeAmp to
`allegedly satisfy the search elements of the asserted claims. Ex. 1, Darrell Report at ¶¶ 416-421
`(identifying nothing from the Chen reference as disclosing the search functionality of the
`asserted claims).
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`46. With respect to the combination of FreeAmp with both Arya and Chen, Dr. Darrell
`asserts that the search functionality of FreeAmp would be replaced by a search algorithm from
`Arya. Ex. 1, Darrell Report at ¶¶ 429, 445-446.
`47. A person skilled in the art would not have known of the search algorithm functionality of
`the FreeAmp system at the filing date of the Cox patents. Ex. 8, Ward Depo. at 115:8-116:18;
`117:7-14; 119:6-20; Ex. 1, Darrell Depo. at 188:15-17; 193:1-4.
`III.
`FACTS FOR WHICH THERE IS NO GENUINE ISSUE SHOWING DR.
`DARELL’S INVALIDITY OPINIONS REGARDING THE ARYA AND CHEN
`COMBINATION ARE BARRED BY IPR ESTOPPEL.
`48. On or about December 3, 2014, Google filed a Petition for Inter Partes Review of claims
`33, 34, and 35, among others, of U.S. Patent No. 8,205,237 (“’237 Patent”) with the United
`States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), Case IPR2015-
`00345. Ex. 10, ‘237 IPR Petition at 2)
`49. In IPR2015-00345, the prior art references that Google asserted invalidated the
`challenged claims of the ’237 Patent included (1) U.S. Patent No. 7,444,353 to Alexander Chen
`(“Chen”) and (2) the prior art publication “An Optimal Algorithm for Approximate Nearest
`Neighbor Searching in Fixed Dimensions” by Sunil Arya, et. al. dated July 6, 1998 (“Arya”). Ex.
`10, ‘237, IPR Petition at 2; Ex. 11, Arya Reference; Ex. 12, Chen Reference.
`50. On or about June 23, 2015, the PTAB issued an Order instituting Inter Partes Review of
`claims 33, 34, and 35, among others, of the ’237 Patent. Ex. 14.
`51. On or about June 20, 2016, the PTAB issue a Final Written Decision finding that Google
`failed to show that claims 33, 34, and 35 of the ‘237 Patent, among others, were unpatentable.
`Ex. 15.
`52. On or about December 3, 2014, Google file for Inter Partes Review of claim 17, among
`others, of U.S. Patent No. 8,010,988 (“’988 Patent”) with the United States Patent and
`Trademark Office, Patent Trial and Appeal Board (“PTAB”), Case IPR2015-00347. Ex. 17,
`Petition at 2.
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`53. Arya was included in the prior art references that Google used to challenge claim 17 of
`the ’988 Patent in IPR2015-00347. Ex. 17, Petition at iii, 2, 25.
`54. On or about June 23, 2015, the PTAB issued an Order instituting Inter Partes Review of
`claim 17, among others, of the ’988 Patent. Ex. 17, Institution Decision.
`55. On or about June 20, 2016, the PTAB issue a Final Written Decision finding that Google
`failed to show that claim 17 of the ’988 Patent, among others, was unpatentable. Ex. 18, Final
`Written Decision.
`56. On or about December 20, 2019, Google served the expert report of Dr. Trevor Jackson
`Darrell regarding invalidity of the Patents in suit. Ex. 1, Darrell Report.
`57. Dr. Darrell’s report includes opinions that the combination of Chen and Arya invalidates
`claim 17 of the ’988 Patent and Claims 33, 34, 35 of the ’237 Patent. Ex. 1, Darrell Report at
`table of contents, pages 170-179, 204-209, 226-227, 231-232.
`58. Google identified Arya and Chen in its invalidity contentions served in this matter which
`pre-date its IPR filings. Ex. 19, Invalidity Contentions at 2-5.
`
`
`Dated: September 11, 2020
`
`
`/s/ Brian D. Ledahl
`Marc A. Fenster (pro hac vice)
`Brian D. Ledahl (pro hac vice)
`Adam S. Hoffman (pro hac vice)
`Paul A. Kroeger (pro hac vice)
`Amy E. Hayden (pro hac vice)
`RUSS, AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`mfenster@raklaw.com
`bledahl@raklaw.com
`ahoffman@raklaw.com
`pkroeger@raklaw.com
`ahayden@raklaw.com
`
`Charles R. Macedo
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
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`Case 1:14-cv-02396-PGG-SN Document 234-21 Filed 11/11/20 Page 10 of 10
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`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336-8000
`Facsimile: (212) 336-8001
`cmacedo@arelaw.com
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`Attorneys for Network-1 Technologies, Inc.
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