Case 1:14-cv-02396-PGG-SN Document 235-3 Filed 11/11/20 Page 1 of 46
`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
`REPLY STATEMENT OF MATERIAL FACTS FOR WHICH THERE IS NO GENUINE
`ISSUE IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`1
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`I.
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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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`Case 1:14-cv-02396-PGG-SN Document 235-3 Filed 11/11/20 Page 2 of 46
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`Pursuant to Local Civil Rule 56.1, Plaintiff Network-1 Technologies, Inc., hereby submits
`the following reply 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”) in response to the statement submitted by Google.
`
`
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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
`Google Response
`
`Undisputed
`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.
`Google Response
`
`Undisputed
`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
`
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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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`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.
`Google Response
`
`Undisputed
`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.
`Google Response
`
`Undisputed
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “disclosed in the Clango
`system,” and Google disputes this Statement to the extent Network-1 mischaracterizes Dr.
`Darrell’s opinion. Dr. Darrell opines that the prior invention of Clango’s kd-tree search
`algorithm, along with the public use of that search algorithm, meets the limitations in claim 17
`quoted in Network-1’s Statement of Fact No. 4. Ex. 1 (Darrell Report) at ¶¶ 181-99, 207-12.
`Network-1 Reply
`
`Google does not dispute this fact.
`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.
`Google Response
`
`Undisputed
`7. Claims 34 and 35 depend from claim 33 and do not further modify this claim element. Id.
`Google Response
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`3
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`Undisputed
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “disclosed in the Clango
`system,” and Google disputes this Statement to the extent Network-1 mischaracterizes Dr.
`Darrell’s opinion. Dr. Darrell opines that the prior invention of Clango’s kd-tree search
`algorithm, along with the public use of that search algorithm, meets the limitation quoted in
`Network-1’s Statement of Fact No. 6. Ex. 1 (Darrell Report) at ¶¶ 351-52.
`Network-1 Reply
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`Google does not dispute this fact.
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “relies on Clango for
`disclosure,” and Google disputes this Statement to the extent Network-1 mischaracterizes Dr.
`Darrell’s opinion. One of Dr. Darrell’s opinions is that a prior art patent called “Chen,” when
`combined with the prior invention of the Clango system, and/or the public use of that system,
`renders obvious all asserted claims of the ’988, ’237, and ’464 Patents. Ex. 1 (Darrell Report) at
`¶¶ 298-325, 382-98, 433-35, 447-49, 463-96, 500-02, 506-07, 511-12, 520-30, 534-35, 539-40,
`544. In this analysis, Dr. Darrell opines that the non-exhaustive, near neighbor, and/or sublinear
`elements of the search portion of Network-1’s claims are satisfied by the prior invention of
`Clango’s kd-tree search algorithm, and the public use of that search algorithm. Id. Dr. Darrell
`does not otherwise rely on the combination of the prior invention of the Clango system, and/or
`the public use of the Clango system, with another prior art reference.
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`4
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`Network-1 Reply
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`Google does not dispute this fact.
`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.
`Google Response
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`Network-1’s statement is ambiguous with respect to whether Network-1 contends Dr.
`Darrell’s sole reliance on Clango in his analysis of claim 17 of the ’988 patent “relies on a
`combination of Clango with the Chen reference,” and Google disputes this statement to the
`extent Network-1 mischaracterizes Dr. Darrell’s opinion. Dr. Darrell opines that claim 17 of the
`’988 Patent is anticipated by the prior invention of the Clango system, and/or the public use of
`the Clango system. Ex. 1 (Darrell Report) at ¶¶ 158-213. Independently, Dr. Darrell opines that
`claim 17 of the ’988 Patent is obvious in light of Chen combined with the prior invention of the
`Clango system, and/or the public use of that system. Ex. 1 (Darrell Report) at ¶¶ 298-325.
`Network-1 Reply
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`Google does not dispute this fact.
`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.
`Google Response
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`Network-1’s statement is ambiguous with respect to the phrase “disclosing,” and Google
`disputes this statement to the extent Network-1 mischaracterizes Dr. Darrell’s opinions. As
`discussed above, Dr. Darrell opines that claim 17 of the ’988 Patent is obvious in light of Chen
`combined with the prior invention of the Clango system, and/or the public use of that system.
`Ex. 1 (Darrell Report) at ¶¶ 298-325. In this opinion, Dr. Darrell opines that the non-exhaustive,
`near neighbor, and/or sublinear elements of the search portion of claim 17 are satisfied by the
`prior invention of Clango’s kd-tree search algorithm, and the public use of that search algorithm.
`Id.
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`Network-1 Reply
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`Google does not dispute this fact.
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “same combination,” and
`Google disputes this statement to the extent Network-1 mischaracterizes Dr. Darrell’s opinions.
`Dr. Darrell opines that these claims of the ’237 Patent are obvious over the prior invention of the
`Clango system, and/or the public use of that system. Ex. 1 (Darrell Report) at ¶¶ 341-60,
`401-05, 438-41. Independently, Dr. Darrell opines that these claims are rendered obvious by the
`Chen reference when combined with the prior invention of the Clango system, and/or the public
`use of that system. Ex. 1 (Darrell Report) at ¶¶ 382-98, 433-35, 447-49.
`Network-1 Reply
`
`Google does not dispute this fact.
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the term “disclosing,” and Google
`disputes this statement to the extent Network-1 mischaracterizes Dr. Darrell’s opinions. As
`discussed above, Dr. Darrell opines that claims 33, 34, and 35 of the ’237 Patent are obvious in
`light of Chen combined with the prior invention of the Clango system, and/or the public use of
`that system. Ex. 1 (Darrell Report) at ¶¶ 382-98, 433-35, 447-49. In these opinions, Dr. Darrell
`opines that the “approximate nearest neighbor” and “sublinear” aspects of the search portion of
`these claims are satisfied by the prior invention of Clango’s kd-tree search algorithm, and the
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`6
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`public use of that search algorithm. Id.
`Network-1 Reply
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`Google does not dispute this fact.
`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.
`Google Response
`
`Undisputed
`15. Asserted claims 8, 10, and 16 of the ’464 patent depend from claim 1 and do not further
`modify this claim element. Id.
`Google Response
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`Undisputed
`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.
`Google Response
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`Undisputed
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “same combination,” and
`Google disputes this statement to the extent Network-1 mischaracterizes Dr. Darrell’s opinions.
`Dr. Darrell opines that these claims of the ’464 Patent are rendered obvious in light of the Chen
`reference when combined with the prior invention of the Clango system, and/or the public use of
`the Clango system. Ex. 1 (Darrell Report) at ¶¶ 463-96, 500-02, 506-07, 511-12, 520-30,
`534-35, 539-40, 544.
`Network-1 Reply
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`Google does not dispute this fact.
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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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “disclosing the search
`claim elements,” and Google disputes this statement to the extent Network-1 mischaracterizes
`Dr. Darrell’s opinions. Dr. Darrell opines that all asserted claims of the ’464 Patent are rendered
`obvious in light of the Chen reference when combined with the prior invention of the Clango
`system, and/or the public use of the Clango system. Ex. 1 (Darrell Report) at ¶¶ 463-96, 500-02,
`506-07, 511-12, 520-30, 534-35, 539-40, 544. In this analysis, Dr. Darrell opines that the
`“non-exhaustive” and “neighbor” aspects of the search portion of the claims are satisfied by the
`prior invention of Clango’s kd-tree search algorithm, and/or the public use of that search
`algorithm. Id.
`Network-1 Reply
`
`Google does not dispute this fact.
`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.
`Google Response
`
`Network-1’s statement is ambiguous with respect to the phrase “separate from any ‘user’
`of the system.” Google does not dispute that Clango’s kd-tree search physically took place at a
`centralized Audible Magic server that worked in conjunction with the Clango client application
`on users’ computers. But to the extent Network-1 suggests that Clango users were not given
`access to, did not use, or did not benefit from Clango’s kd-tree search algorithm, Google disputes
`this statement. Audible Magic distributed and members of the public used the Clango system in
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`the form of a commonplace client-server architecture—i.e., a “distributed computational
`system”—wherein Clango users received a “client application” that worked in conjunction with
`Audible Magic’s centralized server to perform audio identifications. Ex. 30 (Audible Magic
`Dep. Tr.) at 14:3-13, 29:21-30:22, 274:8-278:4; Ex. 1 (Darrell Report) at ¶¶ 45-47. Each audio
`identification requested by a user on his or her client application made use of the kd-tree search
`algorithm employed at Audible Magic’s centralized server. Ex. 30 (Audible Magic Dep. Tr.) at
`14:3-13, 29:21-30:22, 274:8-278:4.
`Network-1 Reply
`
`Google’s response does not actually dispute this fact. The cited testimony confirms the
`accuracy of the fact that Network-1 identified, specifically that the alleged operation of the entire
`Clango “system” was not operated in public, but rather involved a public facing portion from
`which “users” could send requests and receive responses, but the method of processing those
`requests, specifically any search algorithm, was performed entirely on servers that were not
`accessible to the public using techniques that could not be discovered by the public.
`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.
`Google Response
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`Disputed. Audible Magic disclosed Clango’s kd-tree search algorithm to the public, and
`made that search accessible to the public. For example, members of the public used Clango and
`its kd-tree search algorithm before the September 14, 2000 priority date of Network-1’s patents.
`Ex. 36 (Schrempp Dep. Tr.) at 44:18-46:11, 56:17-65:6, 79:10-20, 83:19-91:13; Exs. 40-43, 46,
`48-50 (Exs. 5-8, 11, 13-15 to Schrempp Dep.) (emails reflecting public use of Clango system).
`Audible Magic also disclosed Clango’s kd-tree search to the public in its patent filings. Ex. 26
`(App. No. 60/304,647) at 26-28; Ex. 23 (U.S. Patent No. 6,968,337) at 10:20-67; Ex. 66 (Nov. 7,
`2019 Discovery Hearing Transcript) at 34 (Network-1’s counsel explaining to the court that this
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`patent filing “claims, as far as we can tell, the same thing that Mr. Wold is testifying was the
`Clango system”). Further, Audible Magic made “casual mentions” of Clango’s kd-tree
`search—which was taken from a publicly available, open source code repository—to others. Ex.
`30 (Audible Magic Dep. Tr.) at 101:20-102:11, 212:15-213:6, 215:1-9, 272:16-273:9; Ex. 29
`(Darrell Dep. Tr.) at 109:4-11.
`Network-1 Reply
`
`Google’s cited evidence does not actually dispute this fact. The fact is addressed to what
`the public could discern from the mere availability of the Clango application. Google recites that
`the system was used by the public, but that says nothing about what such “use” would disclose.
`Next, Google points to a patent application filed in 2001. No testimony or evidence connects
`this patent application to Clango. In fact, since Google contends that Clango was first released
`publicly no later than July 5, 2000, the patent application affirmatively indicates that it did not
`relate to Clango since the inventor submitted a sworn declaration with the application (originally
`filed July 10, 2001) stating that the inventions of the application had not been in use more than
`one year prior to the filing. Ex. 68. Further, regardless of the disclosure in a patent application,
`that is not evidence of what the public could discern from the alleged public use of the Clango
`system. Finally, the testimony regarding “casual mentions” of the functioning of Clango, even if
`true, has nothing to do with what the public could discern from the alleged public use of Clango.
`
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`C.
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`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).
`Google Response
`
`Disputed. As discussed above in connection with Google’s response to Network-1’s
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`Statement of Fact No. 20, Audible Magic disclosed the kd-tree search algorithm in its patent
`filings. Ex. 26 (App. No. 60/304,647) at 26-28; Ex. 23 (U.S. Patent No. 6,968,337) at 10:20-67.
`Google disclosed its reliance on these patent filings to Network-1 during discovery. Ex. 67
`(Excerpts of Google’s Fourth Supp. Resp. & Obj. to Network-1’s ROG Nos. 1, 2, 5-7, 9-11,
`13-15, & 19) at 2-3 (“Aspects of Clango relevant to the Patents-in-Suit are described in U.S.
`Patent No. 6,968,337.”). Moreover, Clango used a publicly available, open source
`implementation of the kd-tree search, and Audible Magic made “casual mentions” of that search
`algorithm to others. Ex. 30 (Audible Magic Dep. Tr.) at 101:20-102:11, 212:15-213:6, 215:1-9,
`272:16-273:9; Ex. 29 (Darrell Dep. Tr.) at 109:4-11; Ex. 33 (Ex. 10 to Audible Magic Dep.) at 1
`(kd-tree source code annotation citing several papers describing kd-tree search methodologies).
`Google further disputes that Audible Magic currently maintains the confidentiality of computer
`code, documents, and testimony regarding the Clango search functionality—certain documents
`in Audible Magic’s production regarding Clango’s search functionality were erroneously
`designated confidential in this case, but Audible Magic has since confirmed that these documents
`are not confidential. Ex. 20 (2020.10.16 Correspondence).
`Network-1 Reply
`
`Initially, Google does not address the clear admissions from Audible Magic that it
`“never” publicly disclosed the search functionality of Clango. The evidence Google cites also
`does not actually dispute this fact. First, as discussed in connection with Fact No. 20, above,
`Google’s reliance on a patent application filed in 2001 by Audible Magic is misplaced. No
`testimony or evidence connects this patent application to Clango. In fact, since Google contends
`that Clango was first released publicly no later than July 5, 2000, the patent application
`affirmatively indicates that it did not relate to Clango since the inventor submitted a sworn
`declaration with the application (originally filed July 10, 2001) stating that the inventions of the
`application had not been in use more than one year prior to the filing. Ex. 68. Google’s own
`interrogatory responses are not admissible evidence when offered by Google and cannot support
`its opposition. Google’s assertion that Clango allegedly used open source kd-tree search
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`algorithms is of no moment because that fact was not disclosed with respect to the operation of
`Clango and nothing in the testimony cited by Google suggests otherwise. Likewise, references
`to the existence of kd-tree search algorithms in literature similarly offer no connection to Clango
`(and indeed predate the alleged existence of Clango). No witness suggests that Audible Magic
`made any public disclosure connecting those algorithms to Clango. The testimony cited by
`Network-1 shows the opposite. Finally, Google’s reliance on Ex. 20 merely confirms that until
`October 16, 2020, Audible Magic continued to maintain the confidentiality of the search
`functionality of Clango and only withdrew that confidentiality for the first time (at Google’s
`request) more than 20 years after its purported release.
`
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`D.
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`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.
`Google’s Response
`
`Undisputed
`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.
`Google’s Response
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`Undisputed
`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.
`Google’s Response
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`Disputed. Dr. Darrell identified and analyzed considerable source code produced by
`Audible Magic that implemented Clango’s search functionality, dated contemporaneously with
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`the releases of the Clango alpha and beta programs. Ex. 1 (Darrell Report) at ¶ 187-98; Exs. 33,
`34 (Exs. 10-11 to Audible Magic Dep.). Audible Magic testimony establishes that this source
`code was (or closely reflected) the code actually compiled in the Clango alpha and beta releases.
`Ex. 30 (Audible Magic Dep. Tr.) at 93:1-7; 99:1-101:1, 103:2-104:1, 135:5-137:13,
`271:4-274:6.
`Network-1 Reply
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`As an initial matter, Google equivocates in its purported dispute of this fact by stating
`that the Audible Magic testimony “establishes that the source code was (or closely reflected) the
`code actually compiled in the Clango alpha and beta releases.” The testimony cited by Network
`1 admitted that the code cited by Google was not necessarily the code in either release. Further,
`the code files, such as Ex. 33, states on its face that it was “created” on July 26, 2000. Google
`asserts that the Clango alpha release (which it contends had the same search code as the beta
`release) was released on July 5, 2000 – three weeks before the creation of the code Google
`contends was included in the release. Thus, Google’s own evidence confirms that it is not the
`code that was included in those releases, and Audible Magic admitted that it did not have the
`code actually compiled into either release and could not connect the code cited by Google to the
`Clango releases. Ex. 30 at 271:12-273:2.
`
`
`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.
`Google’s Response
`
`Network-1’s statement is ambiguous with respect to whether Network-1 contends Dr.
`Darrell’s sole reliance on Clango in his analysis of claim 17 of the ’988 patent “relies on a
`combination of Clango with the Chen reference,” and Google disputes this statement to the
`extent Network-1 mischaracterizes Dr. Darrell’s opinion. Dr. Darrell opines that claim 17 of the
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`’988 Patent is anticipated by the prior invention of the Clango system, and/or the public use of
`the Clango system. Ex. 1 (Darrell Report) at ¶¶ 158-213. Independently, Dr. Darrell opines that
`claim 17 of the ’988 Patent is obvious in light of Chen combined with the prior invention of the
`Clango system, and/or the public use of that system. Ex. 1 (Darrell Report) at ¶¶ 298-325.
`Network-1 Reply
`
`Google does not dispute this fact.
`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.
`Google’s Response
`
`Network-1’s statement is ambiguous with respect to the phrase “same combination,” and
`Google disputes this statement to the extent Network-1 mischaracterizes Dr. Darrell’s opinions.
`Dr. Darrell opines that these claims of the ’237 Patent are obvious over the prior invention of the
`Clango system, and/or the public use of that system. Ex. 1 (Darrell Report) at ¶¶ 341-60,
`401-05, 438-41. Independently, Dr. Darrell opines that these claims are rendered obvious by the
`Chen reference when combined with the prior invention of the Clango system, and/or the public
`use of that system. Ex. 1 (Darrell Report) at ¶¶ 382-98, 433-35, 447-49.
`Network-1 Reply
`
`Google does not dispute this fact.
`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.
`Google’s Response
`
`Network-1’s statement is ambiguous with respect to the phrase “same combination,” and
`Google disputes this statement to the extent Network-1 mischaracterizes Dr. Darrell’s opinions.
`Dr. Darrell opines that these claims of the ’464 Patent are rendered obvious in light of the Chen
`reference when combined with the prior invention of the Clango system, and/or the public use of
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`the Clango system. Ex. 1 (Darrell Report) at ¶¶ 463-96, 500-02, 506-07, 511-12, 520-30,
`534-35, 539-40, 544.
`Network-1 Reply
`
`Google does not dispute this fact.
`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.
`Google’s Response
`
`Disputed. Network-1’s Statement of Fact No. 28 is not a factual statement, but a legal
`position. The “person skilled in the art” is “a theoretical construct used in determining
`obviousness under § 103, and is not descriptive of some particular individual.” Endress +
`Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd. , 122 F.3d 1040, 1042 (Fed. Cir. 1997). That
`hypothetical person is legally defined as having knowledge of all relevant prior art. In re
`Carlson , 983 F.2d 1032, 1037-38 (Fed. Cir. 1992). As Google explains in its Memorandum of
`Law in Opposition to Network-1’s Motion for Summary Judgment, the search functionality of
`the Clango system is prior art to Network-1’s patents, and therefore the person of skill in the art,
`by definition, had knowledge of that search algorithm as of the priority date of the Cox patents.
`Network-1’s Reply
`
`Google’s response does not actually dispute this fact. It cites no evidence of any kind,
`nor does it dispute that the testimony cited confirms the stated fact. Google seems to parse this
`fact to suggest that something can be prior art even if it is entirely secret and unknowable by the
`public. None of Google’s cases support such an assertion. Rather, as discussed extensively in
`the briefs, prior art based on alleged public use by a third party may anticipate only with respect
`to that which the public use places in the possession of the public. The cited testimony reflects
`admissions that even a skilled artisan would not be able to discern from the alleged public use of
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`Clango the steps of the method claimed in the Cox patents. This disqualifies it from public use.
`Google’s references to cases do not dispute this fact.
`
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`II.
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`FACTS FOR WHICH THERE IS NO GENUINE ISSUE CONCENING
`GOOGLE’S INVALIDITY ASSERTIONS REGARDING THE
`“FREEAMP” PRIOR ART REFERENCE
`
`
`
`A.
`
` 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.
`Google’s Response
`
`Undisputed
`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.
`Google’s Response
`
`Network-1’s statement is ambiguous with respect to the phrase “disclosed in the
`FreeAmp system,” and Google disputes this statement to the extent it mischaracterizes Dr.
`Darrell’s opinion. Dr. Darrell opines that claim 17 of the ’988 Patent is rendered obvious over
`the FreeAmp system in two, alternative ways. First, Dr. Darrell opines that the claim is obvious
`over the prior invention of the FreeAmp system, and/or the public use of the FreeAmp system, in
`August of 2000. Ex. 1 (Darrell Report) at ¶¶ 215-71. In that analysis, Dr. Darrell opines that the
`FreeAmp search algorithm, which made use of a two-level hash structure, satisfied the
`“non-exhaustive” and “neighbor” aspects of the search of claim 17 (Ex. 1 (Darrell Report) at ¶¶
`242-58), and that it would have been obvious to one of skill in the art to use a “sublinear” search
`with the FreeAmp application (Ex. 1 (Darrell Report) at ¶¶ 267-70). Second, Dr. Darrell
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`independently opines that claim 17 of the ’988 Patent is obvious over the combination of the
`FreeAmp client application (i.e., not the Relatable server component of the system) and a prior
`art reference called “Arya.” Ex. 1 (Darrell Report) at ¶¶ 272-97. In that analysis, Dr. Darrell
`opines that the “non-exhaustive,