Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 1 of 19
`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 1 of 19
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`UNITED STATESDISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`NETWORK-1 TECHNOLOGIES, INC.,
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`Plaintiff,
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`Vv.
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`GOOGLELLC and YOUTUBE,LLC,
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`
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`Defendants.
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`14 Civ. 2396 (PGG-SN)
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`14 Civ. 9558 (PGG-SN)
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`PLAINTIFF NETWORK-1 TECHNOLOGIES,INC.’S
`OBJECTIONS TO THE MAGISTRATE’S ORDER STRIKING PORTIONSOF ITS
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`EXPERT’S SUPPLEMENTAL EXPERT REPORT
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`

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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 2 of 19
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION .............................................................................................................. 1
`II.
`FACTUAL BACKGROUND ............................................................................................. 2
`A. Overview of Asserted Patents, Accused Products, and Google’s Initial Damages Theories
`Concerning Purported Non-Infringing Alternatives ................................................................... 2
`B. Google’s Unilateral Late Disclosure of New Contentions Related to Non-Infringing
`Alternatives Necessitated Supplemental Discovery ................................................................... 3
`C. Network-1’s Supplemental Expert Reports and Google’s Motion to Strike ...................... 5
`D. The Magistrate Judge Grants Google’s Motion to Strike ................................................... 6
`III.
`ARGUMENT ...................................................................................................................... 7
`A. The Magistrate’s Order Is Clearly Erroneous Because It Is Based on a False Factual
`Predicate ...................................................................................................................................... 7
`B. The Finding in the Magistrate’s Order that Google Is “Unduly Prejudiced” by Dr.
`Clearly Erroneous ....................................................................................................................... 9
`C. The Magistrate’s Order Is Clearly Erroneous Because It Fails to Recognize that Network-
`2021 Supplemental Discovery .................................................................................................. 10
`D. The Magistrate’s Order Is Clearly Erroneous Because It Fails to Recognize that the ’216
`Patent Analysis Relies on the Supplemental Discovery ........................................................... 13
`E. The Magistrate’s Order is Clearly Erroneous Because It Reflects a Cursory Ruling on a
`Complex Issue Via a Cursory Procedure .................................................................................. 14
`IV.
`CONCLUSION ................................................................................................................. 15
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`Mitzenmacher’s Analysis Concerning the ’216 Patent in his Supplemental Expert Report Is
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`1’s Expert Could Not Have Presented the ’216 Patent Analysis Prior to Receiving Google’s
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`
`i
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 3 of 19
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`TABLE OF AUTHORITIES
`
`Cases
`Largan Precision Co. v. Samsung Elecs. Co.,
`No. 13-cv-2740, 2015 WL 11251758 (S.D. Cal. Nov. 20, 2015) ............................................... 5
`NTP, Inc. v. Research in Motion,
`418 F.3d 1282 (Fed. Cir. 2005)............................................................................... 11, 12, 13, 14
`Smart Skins LLC v. Microsoft Corp.,
`No. 15-cv-544, 2016 WL4148091 (W.D. Wash. July 1, 2016) ................................................ 11
`SPEX Techs. v. Apricorn, Inc.,
`No. 16-cv-07349, 2020 WL 1289546 (C.D. Cal. Jan. 21, 2020) .............................................. 11
`Velocity Patent LLC v. FCA US LLC,
`319 F. Supp. 3d 950 (N.D. Ill. 2018) ........................................................................................ 11
`WhereverTV, Inc. v. Comcast Cable Commc’ns, LLC,
`No. 18-cv-529, 2022 WL 2751752 (M.D. Fla. July 14, 2022) ................................................. 11
`Rules
`Federal Rule of Civil Procedure 26(a)(1) ................................................................................... 6, 9
`Federal Rule of Civil Procedure 72(a) ............................................................................................ 1
`
`ii
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 4 of 19
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`I.
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`INTRODUCTION
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`Pursuant to Federal Rule of Civil Procedure 72(a), Plaintiff Network-1 Technologies, Inc.
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`objects to Dkt. No. 2831 (“Magistrate’s Order”) granting a motion to strike brought by Defendants
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`Google LLC and YouTube LLC (collectively, “Google”). The Magistrate’s Order strikes portions
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`of Network-1’s supplemental expert report addressing one reason why the late-proposed non-
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`infringing alternative that Google was allowed to introduce through the supplemental discovery
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`authorized by the Magistrate is not viable—because it would have infringed another, non-asserted
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`Network-1 patent, U.S. Patent No. 9,538,216 (“the ’216 patent”). To avoid any confusion on this
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`point, Network-1 is not attempting to assert the ’216 patent against Google via this supplemental
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`report and is not seeking damages for infringement of this patent in the presently pending cases;
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`rather, infringement of the ’216 patent by Google’s proposed alternative is simply one of many
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`reasons why the alternative that was the subject of the supplemental discovery is not a viable non-
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`infringing alternative to products that infringe the asserted patents. Network-1 also notes that
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`neither the Magistrate’s Order, nor this Objection, bear on the parties’ pending motions for
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`summary judgment, which are fully briefed.
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`Network-1 respectfully requests this Court overrule the Magistrate’s Order in its entirety.
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`First, the Magistrate Judge clearly erred in granting Google’s motion to strike Dr.
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`Mitzenmacher’s analysis concerning the ’216 patent because the primary factual predicate
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`underlying the order (that the ’216 patent was not disclosed prior to the close of the supplemental
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`fact discovery period) is false. Rather, Google’s own expert analyzed multiple documents
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`disclosing the ’216 patent in his initial expert report. The Magistrate’s Order should be set aside
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`in its entirety on this basis alone.
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`1 Citations to the docket are to the docket of Case No. 14 Civ. 2396 (PGG-SN).
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`1
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`The Magistrate Judge also clearly erred by finding that Google would be unduly prejudiced
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`if the motion to strike were not granted; this finding was based on the same false factual predicate,
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`and in any event, Google would not be prejudiced if Dr. Mitzenmacher’s analysis were not struck
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`because its expert had ample time to respond to it.
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`In addition, the Magistrate Judge clearly erred in striking Dr. Mitzenmacher’s ’216 patent
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`analysis by not recognizing that (a) he could not have presented his opinions concerning the ’216
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`patent in his initial report because he needed information disclosed in the supplemental discovery
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`period in order to do that under the governing law, and (b) his ’216 patent analysis thus did indeed
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`rely on information only disclosed during the supplemental discovery period.
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`Finally, the Magistrate Judge clearly erred by deciding these complex issues via an
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`abbreviated letter briefing process, which caused confusion of the issues and prejudiced Network-
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`1 because it did not have ample opportunity to fully present the facts and law underlying the motion
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`to the Court. If Google wishes to raise this issue, it needs to be addressed with full briefing, for
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`example, at the in limine stage, as this is when Network-1 will seek to exclude Google’s late-
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`disclosed non-infringing alternative contentions, which necessitated supplemental discovery and
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`the portions of the supplemental expert report that Google now seeks to strike in the first place.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`Overview of Asserted Patents, Accused Products, and Google’s Initial
`Damages Theories Concerning Purported Non-Infringing Alternatives
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`A brief overview of the patents and technology involved is useful to understand the instant
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`dispute. In the presently pending cases, Network-1 has asserted three patents against Google’s
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`Content ID systems. As noted above, this does not include the ’216 patent. For purposes of
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`understanding this dispute, claim 33 of U.S. Patent No. 8,205,237 (“the ’237 patent”) can serve as
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`a representative patent claim:
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`2
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 6 of 19
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`33. A computer-implemented method comprising:
`a) obtaining, by a computer system including at least one computer, media
`work extracted features that were extracted from a media work, the media
`work uploaded from a client device;
`b) determining, by the computer system, an identification of the media work
`using the media work extracted features to perform a sublinear approximate
`nearest neighbor search of reference extracted features of reference
`identified media works; and
`c) determining, by the computer system, an action based on the determined
`identification of the media work.
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`Dkt. No. 2 at 67. Like claim 33, all of the asserted claims are method, rather than system, claims.
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`At a high level, Network-1 accuses two versions of Google’s Content ID systems (LSH and
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`Siberia) of infringing the asserted patents, for example, mapping Content ID’s “fingerprinting” to
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`claim element 33(a), Content ID’s “matching” or “Match System” to claim element 33(b), and
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`Content ID’s “claiming” to element 33(c).
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`
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`During the initial fact discovery period, Google contended that damages for its
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`infringement of Network-1’s patents should be limited in light of thirteen purported non-infringing
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`alternatives that it listed in an interrogatory response. See Dkt. No. 268-5 at 20-23. Network-1’s
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`technical expert Dr. Mitzenmacher addressed these enumerated alleged alternatives in his initial
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`December 20, 2019 expert report. See Dkt. No. 226-6 ¶¶501-519. The instant discovery dispute
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`involves just the first of these alleged non-infringing alternatives (the “offshoring” alternative),
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`which Google only described in the initial fact discovery period as “geographically locating the
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`servers running the Accused Instrumentalities, or a portion of the Accused Instrumentalities,
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`outside the United States.” Dkt. No. 268-5 at 20; see also Dkt. No. 226-6 ¶505 (Dr. Mitzenmacher
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`addressing this purported “offshoring” alternative as described by Google).
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`B.
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`Google’s Unilateral Late Disclosure of New Contentions Related to Non-
`Infringing Alternatives Necessitated Supplemental Discovery
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`These cases have been pending since 2014. By the end of 2020, the initial fact and expert
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`3
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`discovery periods had long since ended, and summary judgment briefing was completed and both
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`parties had requested oral argument on the dispositive motions. See Dkt. Nos. 201, 213, 242, 243,
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`246. Despite the advanced stage of the case, on February 19, 2021, without leave of Court and
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`completely out of the blue, Google served supplemental contention interrogatory responses,
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`providing new contentions concerning the alleged “offshoring” non-infringing alternative, and
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`produced more than 1500 pages of documents shortly thereafter. Dkt. No. 268-6 at 2-5; see also
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`Dkt. No. 248 at 1. In short, Google expanded the single vague sentence about its “offshoring”
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`alternative in its prior interrogatory response to three pages of text detailing, for the first time, the
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`precise nature of its proposed alternative—a system in which only the “matching” step or “Match
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`System” portion of the Content ID system was “offshored,” i.e., performed on servers located in
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`Europe rather than on servers in the United States.
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`On April 7, 2021, Network-1 sought assistance from the Court, asking the Court to find
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`that Google had not shown good cause to unilaterally reopen discovery to amend its contentions
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`and assert this new damages-related theory, and moved to strike the supplemental responses and
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`production. See Dkt. No. 248 at 1-3. This Court referred this dispute to the Magistrate Judge. Dkt.
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`No. 250. On April 23, 2021, the Magistrate Judge denied Network-1’s motion to strike,2 but found
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`that Network-1 may conduct additional discovery even though both fact and expert discovery had
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`long-since closed and ordered that “the scope of this limited discovery shall be determined by the
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`parties through a meet-and-confer process.” Dkt. No. 252.
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`2 At the discovery hearing on this issue, the Magistrate Judge suggested that the issue of Google’s
`unilateral reopening of discovery to assert new damages-related contentions “might be raised at a
`motion in limine at a trial.” Dkt. No. 253 at 26:8-20. Network-1 intends to move in limine, at the
`time contemplated by Your Honor’s Individual Rules of Practice X.A, X.D.1 and any subsequent
`orders from this Court, to exclude the portions of Google’s supplemental discovery responses,
`production, deposition testimony, and expert reports related to its late-disclosed non-infringing
`alternative theories. See Dkt. No. 256 ¶11; see also Ex. B at 24:17-25:5, 27:14-18.
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`4
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`In accordance with the Magistrate Judge’s order denying Network-1’s motion to strike, the
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`parties submitted, and the Court endorsed, a Joint Stipulation for Limited Discovery After the
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`Close of Fact Discovery, which set forth the scope of the additional fact discovery in detail. Dkt.
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`No. 256 ¶¶1-7. The parties also reserved the right to serve supplemental expert reports related to
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`that fact discovery. Id. ¶10. The Court subsequently granted leave for supplemental reports and set
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`the deadline for Network-1’s supplemental expert reports for August 26, 2022, and Google’s
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`deadline for its supplemental rebuttal expert reports for September 16, 2022. Dkt. No. 266 at 1.
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`C.
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`Network-1’s Supplemental Expert Reports and Google’s Motion to Strike
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`On August 26, 2022, Network-1 served supplemental expert reports from both its technical
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`expert Dr. Mitzenmacher as well as its damages expert Mr. Kinrich, addressing issues and
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`information that arose in the supplemental discovery period, including that related to Google’s
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`new alleged non-infringing alternative theory related to offshoring the “matching” portion of
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`Content ID. Dr. Mitzenmacher included an analysis in his report detailing why Google had not
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`shown that such offshoring was a viable non-infringing alternative. Dkt. No. 268-1 ¶¶27-146. One
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`of the many reasons presented by Dr. Mitzenmacher was that a version of Content ID that offshores
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`the “matching” step still infringes another Network-1 patent that is not asserted in the presently
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`pending cases, the ’216 patent—a system patent. Id. ¶¶38-146. As noted above, to be clear,
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`Network-1 is not attempting to assert another patent via this supplemental report and is not seeking
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`damages for infringement of this patent, but, as Dr. Mitzenmacher explains, infringement of
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`Network-1’s non-asserted ’216 patent by Google’s late-proposed “offshoring” alternative is
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`simply one of many reasons why this is not a viable non-infringing alternative to the infringing
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`Content ID systems. See generally id. at ¶¶27-43; see also, e.g., Largan Precision Co. v. Samsung
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`Elecs. Co., No. 13-cv-2740, 2015 WL 11251758, at *7 (S.D. Cal. Nov. 20, 2015).
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`On September 7, 2022, prior to service of its rebuttal expert reports, Google moved to
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`strike, via this Court’s joint letter brief procedure, the portions of Dr. Mitzenmacher’s report that
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`explained why Google’s new offshoring alternative infringes the ’216 patent (paragraphs 38-146
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`of the report). Dkt. No. 268 at 1-3. The thrust of Google’s arguments was that “[t]he opinion now
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`offered in Dr. Mitzenmacher’s supplemental report regarding the ’216 patent could have been
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`provided in the same form in December 2019” in his opening expert report, and that “the opinions
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`in paragraphs 38-147 of Dr. Mitzenmacher’s supplemental report are not ‘based upon’
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`supplemental discovery from Google.” Id. at 2-3. In the letter brief, Network-1 explained that, to
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`the contrary, such expert opinions could not have been provided by Dr. Mitzenmacher in 2019 for
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`the simple reason that at that time Google had not yet provided the specifics concerning what
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`portion or portions of Content ID are “offshored” in their proposed alternative and how that
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`offshoring would be achieved, let alone identify the Match System portion of Content ID as it did
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`in its 2021 contentions. Id. at 4-5. Network-1 also explained how Dr. Mitzenmacher’s analysis
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`does indeed rely on the supplemental discovery. Id. This Court again referred this dispute to the
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`Magistrate Judge. Dkt. No. 270.
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`D.
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`The Magistrate Judge Grants Google’s Motion to Strike
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`After an October 6, 2022 hearing, the Magistrate Judge granted the motion in a single-
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`paragraph decision, stating that “Plaintiff’s failure to affirmatively identify the ‘216 patent,
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`especially during the supplemental discovery period, violated [its] duty [under Rule 26(a)(1)].
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`Defendants relied on Plaintiff’s silence and would be unduly prejudiced by being made to
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`challenge the ‘216 patent without the aid of additional discovery.” Dkt. No. 283. Disclosure of the
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`’216 patent in fact discovery was not the basis of Google’s motion to strike, and as such the parties
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`did not address this issue in the joint letter briefing on this motion. See Dkt. No. 268. And in any
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`event, as detailed below, the ’216 patent was in fact disclosed even before supplemental fact
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 10 of 19
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`discovery. See infra § III.A.
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`III. ARGUMENT
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`A.
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`The Magistrate’s Order Is Clearly Erroneous Because It Is Based on a False
`Factual Predicate
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`The sole basis cited in the Magistrate’s Order for granting Google’s motion to strike is that
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`the ’216 patent was purportedly not disclosed in fact discovery (or before the conclusion of the
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`supplemental fact discovery) and thus “Google maybe never knew about it.” Dkt. No. 283; Ex. B.
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`at 25:12-19; see also id. at 5:11-15 (“THE COURT: . . . I further understand that the 216 patent
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`that’s at issue in today’s dispute was never disclosed by Network-1 including during the
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`supplemental discovery and was first raised as part of this supplemental report.”); id. at 25:9-11
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`(“THE COURT: . . . it seems to me that this patent is something you are now relying on and you
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`never disclosed it as part of the discovery process.”); id. at 25:12-19. In other words, the Magistrate
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`Judge struck the portions of Dr. Mitzenmacher’s supplemental expert report addressing the ’216
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`patent because that patent was purportedly not disclosed during either initial or supplemental fact
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`discovery. But this is not so; rather, the ’216 patent was identified during the initial fact discovery
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`period and Google was well aware of it.
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`Google’s own damages expert Mr. Leonard produced and cited to a Network-1 Form 10-
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`K that lists the ’216 patent as part of the “Cox Patent Portfolio,” the same portfolio as the three
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`asserted patents. Ex. A3 at LEONARD_0000446 (listing the ’216 patent as well as the three
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`asserted patents (U.S. Patent Nos. 8,101,998; 8,205,237; and 8,904,464)). In addition, Network-1
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`produced a license agreement which designates a certain set of patents as “Network-1 Patents,”
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`with that set listed on Exhibit B-2 and including both the application that matured into the ’216
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`3 Citations to alphanumeric exhibits refer to the exhibits of the concurrently-filed Hayden
`Declaration.
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 11 of 19
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`patent (14/981,219) as well as the three asserted patents. Google’s expert Mr. Leonard analyzed
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`this license agreement in his initial expert report, including noting in paragraph 100 that the
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`agreement covers a certain number of issued U.S. patents and U.S. patent applications. Ex. C
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`¶¶100-101.
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`In addition, the basis of Google’s motion to strike was that, in its view, “[t]he opinion now
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`offered in Dr. Mitzenmacher’s supplemental report regarding the ’216 patent could have been
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`provided in the same form in December 2019” in his opening expert report, and that “the opinions
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`in paragraphs 38-147 of Dr. Mitzenmacher’s supplemental report are not ‘based upon’
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`supplemental discovery from Google.” Dkt. No. 268 at 2-3 (emphasis added); see also supra §
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`II.C; Ex. B at 23:17-24:2. Therefore, the joint letter briefing and Network-1’s preparation for the
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`discovery hearing focused on those issues, not the disclosure of the ’216 patent during fact
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`discovery. See generally Dkt. No. 268; Ex. B. Until these objections, Network-1 therefore did not
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`have a full and fair opportunity to respond to whether or not the ’216 patent was disclosed prior to
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`or during the supplemental fact discovery period. The evidence presented with these objections
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`demonstrates that it was, and also that Google was indeed aware of the ’216 patent.
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`As noted above, from the face of the Magistrate’s Order, the sole basis for granting
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`Google’s motion to strike was that the ’216 patent was purportedly not disclosed in fact discovery,
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`but that is false. To the extent the Magistrate Judge struck certain portions of Dr. Mitzenmacher’s
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`supplemental expert report because Network-1 did not disclose its contentions rebutting Google’s
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`late-disclosed “offshoring” alternative during the supplemental fact discovery period rather than
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`during the supplemental expert discovery period (see Ex. B at 9:22-10:14, 11:12-23), that was also
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`clear error. Google did not propound any interrogatories (or any other discovery) seeking
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`disclosure of Network-1 rebuttal contentions concerning non-infringing alternatives, either in the
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`initial or the supplemental discovery periods. And there is no requirement under Rule 26(a)(1) or
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`any other operative rule that Network-1 do so absent a discovery request seeking that information.
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`There was therefore no mechanism for Network-1 to disclose these contentions in advance of
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`supplemental expert reports, which is where it did so. Indeed, Google agrees that disclosure of
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`rebuttal non-infringing alternative contentions is the purview of expert reports, not unsolicited
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`disclosures of contentions during fact discovery. See Dkt. No. 268 at 2.
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`Because the ’216 patent was identified during discovery, the sole factual predicate for the
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`Magistrate’s Order is incorrect. The entirety of the Magistrate’s Order should be set aside on this
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`basis alone.
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`B.
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`The Finding in the Magistrate’s Order that Google Is “Unduly Prejudiced” by
`Dr. Mitzenmacher’s Analysis Concerning the ’216 Patent in his Supplemental
`Expert Report Is Clearly Erroneous
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`As noted above, the Magistrate’s Order states the following basis for striking portions of
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`Dr. Mitzenmacher’s supplemental report: “Plaintiff’s failure to affirmatively identify the ‘216
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`patent, especially during the supplemental discovery period, violated [its] duty [under Rule
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`26(a)(1)]. Defendants relied on Plaintiff’s silence and would be unduly prejudiced by being made
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`to challenge the ‘216 patent without the aid of additional discovery.” Dkt. No. 283 (emphasis
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`added). The Magistrate’s Order does not explain what undue prejudice Google would face if its
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`motion to strike is denied; nor what additional discovery Google would need to conduct concerning
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`the ’216 patent, particularly since Google did not identify any such discovery.
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`First, the Magistrate’s Order’s prejudice finding is solely rooted in the same false factual
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`predicate addressed in the preceding section—that the ’216 patent was not disclosed prior to or
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`during supplemental fact discovery period. But as addressed above, the ’216 patent was indeed
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`disclosed during fact discovery and Google was aware of it. See supra § III.A.
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 13 of 19
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`Second, aside from the two-page analysis addressing the impact of governing case law on
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`the specific offshoring configuration of Google’s late-proposed alternative (Dkt. No. 268-1 ¶¶38-
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`43), the remainder of the portion of Dr. Mitzenmacher’s report that the Magistrate’s Order strikes
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`largely mirrors the analysis of the asserted claims presented in Dr. Mitzenmacher’s 2019 report
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`due to the similarities in the patent claims. Dkt. No. 268 at 5; compare Dkt. No. 268-1 ¶¶44-147
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`(analysis of system claim 1 of the ’216 patent in supplemental report) with, e.g., Dkt. No. 226-6
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`¶¶163-259 (analysis of method claim 33 of the asserted ’237 patent). Google’s technical expert
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`was thus able to fulsomely respond to Dr. Mitzenmacher’s supplemental opinions concerning the
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`’216 patent with more than 35 pages of analysis. Ex. B at 26:24-27:13; see also id. at 24:3-8 (noting
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`that Google’s expert had three weeks to prepare a response to the narrow supplemental report
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`issued by Network-1, just shy of the default of thirty days for a rebuttal expert report addressed to
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`all issues).
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`Because the ’216 patent was identified during fact discovery, the sole factual predicate for
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`the finding of “undue prejudice” in the Magistrate’s Order is incorrect. The entirety of the
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`Magistrate’s Order should be set aside on this basis alone, and as demonstrated above, Google is
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`not otherwise prejudiced by the portion of Dr. Mitzenmacher’s supplemental expert report it seeks
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`to strike.
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`C.
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`The Magistrate’s Order Is Clearly Erroneous Because It Fails to Recognize
`that Network-1’s Expert Could Not Have Presented the ’216 Patent Analysis
`Prior to Receiving Google’s 2021 Supplemental Discovery
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`In requesting to strike the opinions concerning why the ’216 patent rendered Google’s
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`purported non-infringing alternative non-viable, Google argued that the opinions should have been
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`included in Dr. Mitzenmacher’s 2019 expert report. The Magistrate Judge did not adopt this
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`contention as a basis for granting the motion, relying instead on an argument that Google did not
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`make and that was raised sua sponte by the Magistrate Judge at a telephonic hearing. Since Google
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`may argue that this presents an alternative basis to affirm the Magistrate Judge’s ruling, Network-
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`1 addresses why Google’s argument fails.
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`First, it is well-established that Google bears the burden of proof concerning the existence
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`of non-infringing alternatives in the context of determination of a reasonable royalty for patent
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`infringement. See, e.g., SPEX Techs. v. Apricorn, Inc., No. 16-cv-07349, 2020 WL 1289546, at *2
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`(C.D. Cal. Jan. 21, 2020) (“The accused infringer bears the burden of proving the existence of non-
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`infringing alternatives.”); see also Smart Skins LLC v. Microsoft Corp., No. 15-cv-544, 2016
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`WL4148091, at *2 (W.D. Wash. July 1, 2016); WhereverTV, Inc. v. Comcast Cable Commc’ns,
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`LLC, No. 18-cv-529, 2022 WL 2751752, at *2 (M.D. Fla. July 14, 2022); Velocity Patent LLC v.
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`FCA US LLC, 319 F. Supp. 3d 950, 972 (N.D. Ill. 2018).
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`Despite bearing that burden of proof, Google elected to only provide a single sentence
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`concerning its alleged “offshoring” non-infringing alternative during the initial fact discovery
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`period: “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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`Dkt. No. 268-5 at 20. This vague description does not indicate what portions or portions of Content
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`ID Google was proposing would be moved offshore in the alternative, let alone what servers would
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`be moved. As noted above, Content ID involves various subsystems, including the
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`“fingerprinting,” “matching,” and “claiming” components noted above. See supra § II.A. Content
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`ID is a complex system that also has various other components, and many of them (including the
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`“fingerprinting,” “matching,” and “claiming” components) can be broken down into further
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`subsystems, which may or may not run on the same servers. There are therefore at least a dozen,
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`if not more, possible permutations of this alleged “first available non-infringing alternative” as
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`described in Google’s 2015 interrogatory response. Perhaps recognizing the errors of its ways,
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`Google’s post-discovery 2021 supplemental response selected one of those options (offshoring
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`only the servers that run the “matching” step), and for the first time provided further detail on that
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`option. Dkt. No. 268-6 at 2-5. Further, although the existence of non-infringing alternatives is an
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`issue on which Google bears the burden of proof, Google submitted no opening expert report on
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`this issue. Its only expert articulations on the issue were in rebuttal reports,4 to which Network-1
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`was not entitled to a further response.
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`Google’s citation to NTP in its original interrogatory response bears explanation. As noted
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`above, each of the asserted claims in this case is a method claim. See supra § II.A. In NTP, the
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`Federal Circuit held that a method patent claim is not infringed unless each of the method steps is
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`performed within the United States. 418 F.3d at 1318. Thus, “offshoring” a single step of a claimed
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`method would evade infringement. However, NTP also held that “[t]he use of a claimed system
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`under section 271(a) is the place at which the system as a whole is put into service, i.e., the place
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`where control of the system is exercised and beneficial use of the system obtained.” Id. at 1317
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`(emphasis added). In other words, in analyzing system claims like claim 1 of the ’216 patent,
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`whether a partially offshored version of Content ID would infringe is a fact-specific inquiry that
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`would depend on what portion or portions of Content ID is offshored—depending on the specific
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`4 To the extent Google argues it provided additional detail about this proposed alternative in Rule
`30(b)(6) testimony prior to the November 2019 close of the initial fact discovery period and in its
`February 2020 initial rebuttal expert reports, that is not so; at most, that testimony and those reports
`discussed hypothetical concepts untethered to Google’s non-infringing alternative contentions in
`its interrogatory response. See Dkt. No. 268 at 5 n.5 and citations therein. In any event, if Google
`contemplated the specific “offshoring” alternative in which only the “matching” step is offshored
`before the close of the initial fact discovery, it should have amended its contention interrogatory
`response at that time, not more than a year later. But Google did not amend its contention
`interrogatory response prior to initial expert reports. Thus, while Google’s fact witness might have
`testified (in extremely vague terms) about one possible permutation of Google’s contention,
`Google never provided an interrogatory response to limit its contention to even that vague
`permutation.
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`Case 1:14-cv-02396-PGG-SN Document 287 Filed 11/01/22 Page 16 of 19
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`configuration, a partially offshored version of Content ID may or may not have infringed the ’216
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`patent or it may have infringed a different patent in Network-1’s portfolio.
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`Absent analyzing every possible permutation, or somehow guessing what permutation
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`Google was contemplating, Dr. Mitzenmacher therefore could not have conducted the analysis
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`contemplated in NTP for the system claims of the ’216 patent (or any other patent in Network-1’s
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`portfolio) at the time of his original report in 2019. At that time, he (and Network-1) were unaware
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`that Google would later actually contend that the non-infringing alternative was offshoring the
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`“matching” component, but keeping the “fingerprinting” and “claiming” components in the United
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`States. After receiving that information, but not before, Dr. Mitzenmacher was able