Case 1:14-cv-02396-PGG-SN Document 269-5 Filed 09/07/22 Page 1 of 8
`Case 1:14-cv-02396-PGG-SN Document 269-5 Filed 09/07/22 Page 1 of 8
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`EXHIBIT E
`EXHIBIT E
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`Case 1:14-cv-02396-PGG-SN Document 269-5 Filed 09/07/22 Page 2 of 8
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`Plaintiff,
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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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`GOOGLE, INC. and YOUTUBE, LLC
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`Defendants.
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`GOOGLE INC. AND YOUTUBE, LLC'S THIRD
`SUPPLEMENTAL RESPONSES AND OBJECTIONS
`TO PLAINTIFF'S INTERROGATORY NOS. 2, 6, 7, 9-11, and 13
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`Pursuant to Rules 26(e) and 33 of the Federal Rules of Civil Procedure, Google Inc.
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`Case No. 1:14-cv-02396-PGG
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`("Google") and YouTube, LLC ("YouTube") (collectively "Defendants") by and through their
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`undersigned counsel, hereby further respond and object to Interrogatory Nos. 2, 6, 7, 9-11, and
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`13 (the "Interrogatories") of plaintiff Network-1 Technologies, Inc. ("Network-1" or "Plaintiff").
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`Defendants' investigation of the matters raised by Plaintiff's interrogatories is continuing and
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`pursuant to Fed. R. Civ. P. 26(e), Defendants expressly reserve the right to amend and/or
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`supplement their responses.
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`GENERAL RESPONSES & OBJECTIONS
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`Defendants incorporate by reference all general and specific responses and objections
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`previously made in Defendants' original Responses and Objections to Plaintiff's First and Second
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`Sets of Interrogatories.
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`SPECIFIC RESPONSES AND OBJECTIONS
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`Each of the General Responses and Objections are incorporated by reference into each
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`and every specific response set forth below. Notwithstanding the specific response to any
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`Case 1:14-cv-02396-PGG-SN Document 269-5 Filed 09/07/22 Page 3 of 8
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`language), the Asserted Patents fail to inform with reasonable certainty a person skilled in the art
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`of their scope:
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`• "non-exhaustive search" (Present in at least claims 15, 17, 31, 32, 51, and 52 of
`the '988 Patent; claims 25, 26, and 27 of the '237 Patent; and their dependent
`claims.)
`• "non-exhaustive neighbor search" (Present in at least claims 13, 24, 34, and 35 of
`the '179 Patent; claims 1, 2, 3, 9, 11, 22, 23, 25, and 26 of the '441 Patent; and
`their dependent claims.)
`• "associating" an action with a work (Present in at least claims 15, 17, 31, 32, 51,
`and 52 of the '988 patent; claims 13, 24, 34, and 35 of the '179 Patent; claims 1,
`2, 3, 9, 11, 22, 23, 25, and 26 of the '441 patent; and their dependent claims.)
`• "transmitting" (Present in at least claim 34 of the '179 patent; and its dependent
`claims.)
`• "(f) obtaining, by the computer system, second extracted features of a second
`electronic work; (g) searching, by the computer system, for an identification of
`the second electronic work by comparing the second extracted features of the
`second electronic work with the first electronic data in the database using a non-
`exhaustive neighbor search; and (h) determining, by the computer system, that
`the second electronic work is not identified based on results of the searching
`step" (Present in at least claim 24 of the '179 Patent; claims 23 and 26 of the '441
`Patent; and their dependent claims.)
`• "electronically determining an identification," and "identifying, by the computer
`system, a matching reference electronic work" (Present in at least claim 15 of the
`'988 Patent; claim 13 of the '179 Patent; claims 1 and 25 of the '441 patent; and
`their dependent claims.)
`• "determining an action," "determining, by the computer system, an action"
`(Present in at least claims 15, 17, 31, 32, 51, and 52 of the '988 Patent; claim 25
`of the '237 Patent; claims 13, 34, and 35 of the '179 Patent; claims 1, 2, 3, 9, 11,
`22, 23, 25, and 26 of the '441 Patent; and their dependent claims.)
`• "commercial transaction data" (Present in at least claim 9 of the '441 Patent and
`its dependent claims.)
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`INTERROGATORY NO. 13:
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`To the extent that you contend that there exist commercially acceptable and available
`non-infringing alternatives to the Accused Instrumentalities with respect to the patents-in-suit,
`identify with particularity such non-infringing alternatives, the dates on which such alternatives
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`were available, the cost of implementation for each, and the effect of implementation for each,
`including any studies, tests or analyses of these costs and effects.
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`RESPONSE TO INTERROGATORY NO. 13:
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`Defendants incorporate by reference each of their general objections above. Defendants
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`object to this Interrogatory to the extent that it contains discrete subparts within the meaning of
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`FED. R. CIV. P. 33.
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`Subject to the foregoing, Defendants respond as follows: In the first instance, Defendants
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`contend that the Accused Instrumentalities do not infringe the Asserted Patents. Additionally, at
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`least thirteen non-infringing alternatives exist. By providing the below descriptions, Defendants
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`do not concede that the Accused Instrumentalities are distinct from or equivalent to any
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`particular alternative.
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`The first available non-infringing alternative is geographically locating the servers
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`running the Accused Instrumentalities, or a portion of the Accused Instrumentalities, outside of
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`the United States. See, e.g., NTP, Inc. v. Research In Motion, 418 F.3d 1282 (Fed. Cir. 2005).
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`The second available non-infringing alternative is a content recognition system
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`employing a brute force search to identify matches. Because a brute force search is not "non-
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`exhaustive," as all asserted claims of the Asserted Patents require, such a system could not
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`infringe the Asserted Patents. Systems and techniques for brute force searching were known to
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`persons skilled in the art and readily available prior to August 30, 2011, the date when the first
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`patent-in-suit issued. Indeed, Network-1 has asserted in its preliminary responses to petitions for
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`Inter Partes Review of the Asserted Patents before the Patent Trial and Appeals Board that
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`several prior art references disclose brute force searching.
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`The third available non-infringing alternative is a content recognition system that
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`identifies matches by searching for bit-for-bit identical copies of a query work. Because such a
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`system does not require extracting features from a work, as all asserted claims of the Asserted
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`Patents require, such a system could not infringe the Asserted Patents. Additionally, because
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`such a system searches only for exact matches, it does not require conducting a "neighbor" or
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`"near neighbor" search, as all asserted claims of the Asserted Patents require, and cannot
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`infringe. Such systems were known to persons skilled in the art and readily available prior to
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`August 30, 2011, the date when the first patent-in-suit issued.
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`The fourth available non-infringing alternative is a content recognition system that
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`identifies matches by conducting a neighbor search based on full copies query and known
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`works, not extracted features. Because such a system does not extract features from a work, as
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`all asserted claims of the Asserted Patents require, such a system could not infringe the Asserted
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`Patents. Such systems were known to persons skilled in the art and readily available prior to
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`August 30, 2011, the date when the first patent-in-suit issued.
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`The fifth available non-infringing alternative is a content recognition system that
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`identifies matches by computing a hash of a query work and searching for exact matches to the
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`hashes of known works. Because a hash is a derived from the binary code of a work, rather than
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`its audio or visual features, such a system does not extract features, as all asserted claims of the
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`Asserted Patents require, and therefore cannot infringe. Additionally, because such a system
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`searches only for exact matches, it does not require conducting a "neighbor" or "near neighbor"
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`search, as all asserted claims of the Asserted Patents require, and cannot infringe. Such systems
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`were known to persons skilled in the art and readily available prior to August 30, 2011, the date
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`when the first patent-in-suit issued.
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`The sixth available non-infringing alternative is a content recognition system that
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`identifies matches by computing a hash of a query work searching for neighbors among the
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`Case 1:14-cv-02396-PGG-SN Document 269-5 Filed 09/07/22 Page 6 of 8
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`hashes of known works. Because a hash is a derived from the binary code of a work, rather than
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`its audio or visual features, such a system does not extract features, as all asserted claims of the
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`Asserted Patents require, and therefore cannot infringe. Such systems were known to persons
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`skilled in the art and readily available prior to August 30, 2011, the date when the first patent-in-
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`suit issued.
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`The seventh available non-infringing alternative is a content recognition system that
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`identifies matches by conducting a search that does not employ a threshold. Network-1's
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`proposed construction of "neighbor" and "near neighbor" search—which all asserted claims of
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`the Asserted Patents recite—requires that matches "fall[] within a defined threshold of a query"
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`as computed based on a "distance or difference." Thus, a search that does not employ a
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`"threshold" based on a "distance or difference" cannot infringe under Network-1's construction.
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`Such systems were known to persons skilled in the art and readily available prior to August 30,
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`2011, the date when the first patent-in-suit issued. For example, "nearest neighbor" searches—
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`which simply locate the closest match, regardless of whether it falls within a threshold—have
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`been available for decades.
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`The eighth available non-infringing alternative is a content recognition system that
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`identifies matches by analyzing the metadata of a query work (e.g., artist, title, track, and work
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`length). Because such a system does not extract audio or visual features from a work, perform a
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`non-exhaustive search, or locate a neighbor near neighbor, as all asserted claims of the Asserted
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`Patents require, it cannot infringe. Such systems were known to persons skilled in the art and
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`readily available prior to August 30, 2011, the date when the first patent-in-suit issued. For
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`instance, the Compact Disk Database ("CDDB"), which has been available since 1993, permits
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`users to identify compact disks based on the length and order of tracks.
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`The ninth available non-infringing alternative is Audible Magic, an audio identification
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`technology which was available at least as early as 2006.
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`The tenth available non-infringing alternative is Google's Claim Your Content ("CYC")
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`system, a predecessor to Content ID which used, among other components, Audible Magic to
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`identify media works. CYC launched in beta form in February 2007.
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`The eleventh available non-infringing alternative is Videntifier, from Videntifier
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`Technologies, founded in September 2007.
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`The twelfth available non-infringing alternative is a manual claiming system allowing
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`users to perform keyword, metadata, or other searches to identify and claim content.
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`The thirteenth available non-infringing alternative is the suite of rights management
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`products and services offered by ZEFR.
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`To date, Defendants have not conducted studies, tests or analyses of these costs and
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`effects of implementing the foregoing non-infringing alternatives. However, Defendants reserve
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`the right to conduct such studies, test or analyses as this litigation progresses and update this
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`response accordingly. Additionally, Defendants contend that each of the above alternatives
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`would require only simple modifications to the Accused Instrumentalities.
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`Defendants further contend that there are non-infringing alternatives specific to particular
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`dependent claims. However, because enumerating such alternatives would be unduly
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`burdensome at this stage, Defendants reserve the right to update this response to reflect such
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`non-infringing alternatives in the event that one or more of the asserted independent claims is
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`invalidated or dropped from the litigation, leaving narrower dependent claims at issue.
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`Defendants reserve the right to amend or supplement this response based upon
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`subsequent developments in this litigation, including but not limited to Network-1's claim
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`Case 1:14-cv-02396-PGG-SN Document 269-5 Filed 09/07/22 Page 8 of 8
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`construction briefing, the Court's claim construction ruling, consultation with expert witnesses,
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`further factual investigation, and further legal analysis.
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`Dated: May 14, 2015
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`OF COUNSEL:
`James J. Elacqua
`Ian Chen
`SKADDEN ARPS SLATE
` MEAGHER & FLOM LLP
`525 University Avenue, Ste. 1100
`Palo Alto, CA 94301
`Tel: (650) 470-4500
`Fax: (650) 470-4570
`James.Elacqua@skadden.com
`Ian.Chen@skadden.com
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`Respectfully submitted,
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`/s/ Douglas R. Nemec
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`Douglas R. Nemec
`Marti A. Johnson
`Andrew D. Gish
`SKADDEN ARPS SLATE
` MEAGHER & FLOM LLP
`Four Times Square
`New York, NY 10036
`Tel: (212) 735-3000
`Fax: (917) 777-2419
`Douglas.Nemec@skadden.com
`Marti.Johnson@skadden.com
`Andrew.Gish@skadden.com
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`Attorneys for Defendants Google Inc. and
`YouTube, LLC
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`CERTIFICATE OF SERVICE
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`I, Douglas R. Nemec, counsel for Google Inc. and YouTube, LLC, do
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`hereby certify that the foregoing document and accompanying exhibits were served by electronic
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`mail on counsel for Network-1 Technologies, Inc. on this the 14th day of May, 2015.
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`DATED: May 14, 2015
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`/s/ Douglas R. Nemec
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