Google LLC v. Network-1 Technologies, Inc. ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GOOGLE LLC,
Appellant
v.
NETWORK-1 TECHNOLOGIES, INC.,
Appellee
______________________
2016-2509, 2016-2510, 2016-2511, 2016-2512
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-00343, IPR2015-00345, IPR2015-00347,
IPR2015-00348.
______________________
Decided: March 26, 2018
______________________
DAN L. BAGATELL, Perkins Coie LLP, Hanover, NH,
argued for appellant. Also represented by ROBERT
SWANSON, Washington, DC; ANDREW GISH, DOUGLAS R.
NEMEC, Skadden, Arps, Slate, Meagher & Flom LLP, New
York, NY.
GREGORY S. DOVEL, Dovel & Luner, LLP, Santa
Monica, CA, argued for appellee. Also represented by
SEAN LUNER, MATTHAEUS MARTINO-WEINHARDT; JUNG
2 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
SUK HAHM, CHARLES R. MACEDO, Amster Rothstein &
Ebenstein LLP, New York, NY.
______________________
Before DYK, SCHALL, and REYNA, Circuit Judges.
SCHALL, Circuit Judge.
DECISION
Network-1 Technologies, Inc. (“Network-1”), owns
U.S. Patent Nos. 8,640,179 (“the ’179 patent”); 8,205,237
(“the ’237 patent”); 8,010,988 (“the ’988 patent”); and
8,656,441(“the ’441 patent”) (collectively, “the Network-1
Patents”). Network-1 sued Google, Inc. (“Google”) in the
United States District Court for the Southern District of
New York for infringement of the patents. Subsequently,
Google filed petitions with the Patent and Trademark
Office (“PTO”) seeking inter partes review (“IPR”) of
various claims of the patents under 35 U.S.C. §§ 311–319.
The Patent Trial and Appeal Board (“Board”), acting as
the delegate of the PTO’s Director under 37 C.F.R.
§ 42.4(a), instituted reviews and, after conducting the
reviews, concluded, in four separate final decisions, that
Google had failed to demonstrate either anticipation
under 35 U.S.C. § 102 or obviousness under 35 U.S.C.
§ 103 with respect to most of the reviewed claims. It
therefore held that Google had failed to carry its burden
of demonstrating that those claims were not patentable.
Google timely appealed each of the Board’s decisions
under 35 U.S.C. §§ 141(c) and 319. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A) and have consolidated the
four appeals. Because we conclude that the Board erred
in its construction of the claim term “non-exhaustive
search,” we (1) vacate the Board’s final decisions with
respect to the ’179 and ’441 patents; (2) vacate-in-part the
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 3
Board’s final decisions with respect to the ’237 and ’988
patents; and (3) remand all four cases to the Board for
further proceedings consistent with this opinion. 1
DISCUSSION
I.
The following claims of the Network-1 Patents are at
issue:
Patent Appealed Claims
’179 1–3, 6, 8–14, 18, 19, 21–27, 29–31, 34–37
’237 25–27, 29, 30
’988 15–16, 21–28, 31–33, 38, 51, 52
’441 1–3, 6, 8–14, 18, 19, 21–27, 29, 30
In its final decision relating to the ’179 patent, the
Board described the invention that is the subject of the
Network-1 Patents:
The ’179 Patent relates to identifying a work, such
as a digital audio or video file, without the need to
modify the work. ’179 patent, col. 1, lines 35–40
and col. 4, lines 38–44. This identification can be
accomplished through the extraction of features
from the work, and comparison of those extracted
features with records of a database or library. Id.
at Abstract. Thereafter, an action may be deter-
mined based on the identification determined. Id.
at col. 4, lines 36–40.
1 Google does not appeal the Board’s determina-
tions regarding independent claims 1, 5, and 33 of the
’237 patent and their related dependent claims. It also
does not appeal the Board’s determination regarding
dependent claim 17 of the ’988 patent.
4 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
Google Inc. v. Network-1 Techs., Inc., IPR2015-00343,
2016 WL 3438931, at *2 (P.T.A.B. June 20, 2016) (“Final
Decision”).
For purposes of this appeal, the parties agree that
claim 1 of the ’179 patent is representative of all the
claims at issue. That claim reads as follows, with italics
added to highlight “non-exhaustive,” the critical claim
term:
1. A computer-implemented method comprising:
(a) maintaining, by a computer system including
at least one computer, a database comprising:
(1) first electronic data related to identification
of one or more reference electronic works;
and
(2) second electronic data related to action in-
formation comprising an action to perform
corresponding to each of the one or more
reference electronic works;
(b) obtaining, by the computer system, extracted
features of a first electronic work;
(c) identifying, by the computer system, the first
electronic work by comparing the extracted
features of the first electronic work with the
first electronic data in the database using a
non-exhaustive neighbor search;
(d) determining, by the computer system, the ac-
tion information corresponding to the identi-
fied first electronic work based on the second
electronic data in the database; and
(e) associating, by the computer system, the de-
termined action information with the identi-
fied first electronic work.
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 5
For purposes of this appeal, the parties also agree
that the written description of the ’179 patent is repre-
sentative, and that our determination of the correct
construction of “non-exhaustive search,” as it appears in
claim 1 of the ’179 patent, disposes of the claim construc-
tion issue in all four of the Network-1 Patents. Google’s
Corrected Opening Br. 7 n.1; Network-1’s Br. 5 n.1, 6 n.2.
We therefore focus our discussion on the ’179 patent.
In its decision instituting review of the ’179 patent,
the Board construed a “non-exhaustive search” as “a
search that locates a match without a comparison of all
possible matches.” Google Inc. v. Network-1 Techs., Inc.,
IPR2015-00343, 2015 WL 3902007, at *3–4 (P.T.A.B.
June 23, 2015) (“Institution Decision”) (emphasis added).
In so doing, the Board declined to adopt Google’s construc-
tion of the term: “a search that locates a match without
conducting a brute force comparison of all possible match-
es, and all data within all possible matches.” Institution
Decision at *3. Thereafter, in its final decision with
respect to the ’179 patent, the Board maintained its
construction of “non-exhaustive search.” Final Decision at
*2. Based upon that construction, the Board determined
that Google had failed to demonstrate that the cited prior
art rendered the challenged claims of the ’179 patent
unpatentable as either anticipated or obvious. 2
2 Since we conclude that the Board erred in its con-
struction of “non-exhaustive search,” and since, for that
reason, all four of the Board’s decisions must be remanded
for further proceedings under the correct construction of
that term, it is not necessary for us discuss the prior art
asserted by Google against the Network-1 Patents.
6 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
II.
We review an IPR decision under the standards set
forth in the Administrative Procedure Act, 5 U.S.C. § 706.
Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d
1307, 1313 (Fed. Cir. 2016). We must set aside the
Board’s decision if it is “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law” or
“unsupported by substantial evidence.” 5 U.S.C. § 706(2).
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding of fact is
supported by substantial evidence if a reasonable mind
might accept the evidence as adequate support for the
finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229
(1938).
The issue before us is one of claim construction. We
review the Board’s ultimate construction of claim lan-
guage de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 835 (2015). However, when, in construing
a claim, the Board reviews extrinsic evidence and makes
subsidiary fact findings with respect to that evidence, we
review such findings for substantial evidence. Perfect
Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d
1004, 1012 (Fed. Cir. 2016); Prolitec, Inc. v. Scentair
Techs., Inc., 807 F.3d 1353, 1358–59 (Fed. Cir. 2015).
III.
The claim construction issue in this case is, in terms
of its scope, a narrow one. The parties agree that, in
conducting its inter partes review of the Network-1 Pa-
tents, the Board was required by its rules to apply the
broadest reasonable construction of the term “non-
exhaustive search” in light of the patents’ specifications.
37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
136 S. Ct. 2131, 2142–46 (2016). They also agree, as they
did before the Board, that the linchpin of the claim con-
struction analysis in this case is determining what an
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 7
“exhaustive search” is. Google’s Corrected Opening Br.
36–37; Network-1’s Br. 5. That is so because a “non-
exhaustive” search necessarily is a search that is not
“exhaustive.” Put another way, the claim limitation at
issue does not require a search that employs a stated
method (an “exhaustive” search). Rather, it requires a
search that does not employ a stated method (a “non-
exhaustive” search). As a result, in terms of claim con-
struction, what must be determined is the meaning of the
word “exhaustive.” 3 In that regard, before the Board, the
parties agreed, and the Board concurred, that, generally,
an “exhaustive” search means a “brute-force” search that
sequentially considers all possible matches revealed in a
search. Institution Decision at *3. Further, in the Institu-
tion Decision, the Board stated that a “non-exhaustive”
search “encompasses anything other than a ‘brute-force’
search.” Id. at *4. Where the parties part company is
with respect to the degree of exhaustion required in order
for a search to be “exhaustive.”
Google argues that the Board erred in accepting Net-
work-1’s contention that a search qualifies as “exhaustive”
as long as it considers “any portion of each potential
match—even a single bit of a long string.” Google’s Cor-
3 In the district court, Google has advanced the ar-
gument that the claim term “non-exhaustive search” is
indefinite. See Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2124 (2014) (“a patent is invalid for
indefiniteness if its claims, read in light of the specifica-
tion delineating the patent, and the prosecution history,
fail to inform, with reasonable certainty, those skilled in
the art about the scope of the invention”). In an IPR, the
Board cannot declare claims indefinite. See 35 U.S.C.
§ 311(b). The issue of indefiniteness is therefore not
before us, and we express no view on it.
8 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
rected Opening Br. 32. As it did before the Board, Google
urges that, instead, an “exhaustive” search must consider
all data within each potential match, because only such a
search will ensure “find[ing] the correct answer.” Id. at
32–33. For example, consider a musical identification
system in which each known piece in a database contains
two parts, an introduction and a chorus. If the system
compares an unknown melody to every known work in the
database, but does so only on the basis of the database
songs’ introductions, the search is not “exhaustive” be-
cause it ignores the choruses. Thus, Google would argue,
both the introduction (first part) and the chorus (second
part) of each song in the database must be checked in
order for a search to be “exhaustive.”
Google’s argument is based upon the proposition that
the broadest construction of “non-exhaustive” searching
corresponds to the narrowest construction of “exhaustive”
searching. According to Google, the narrowest construc-
tion of “exhaustive” searching requires considering the
entirety of each potential match, not just a single part of
it. Id. at 34. 4
4 Logic dictates that, in terms of exhaustiveness, all
searches must be either “exhaustive” or “non-exhaustive.”
No third option exists. Consider, then, a finite number of
searches. As the construction for “exhaustive” narrows
(i.e., the number of searches that qualify as “exhaustive”
decreases), the definition for “non-exhaustive” must
broaden (i.e., the number of searches that qualify as “non-
exhaustive” must increase to continue adding up to the
total, finite number of searches). Thus, a narrower inter-
pretation of “exhaustive” corresponds to a broader inter-
pretation of “non-exhaustive.” Google’s urged
construction, requiring an exhaustive search to consider
all data within each potential match (both introductions
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 9
Google states that the ’179 patent’s written descrip-
tion nowhere refers to “exhaustive” or “non-exhaustive”
searches and nowhere identifies the types of searches that
fall into the former rather than the latter category. Id. at
33. For this reason, Google argues, there is no basis to
infer a definition of “non-exhaustive search” from any of
the various exemplary searches discussed in the specifica-
tion. Id. See ’179 patent, col. 8, line 44–col. 9, line 55.
According to Google, then, in its inter partes review, the
Board should have chosen the broader construction
(Google’s) rather than the narrower construction (Net-
work-1’s) of the ambiguous term “non-exhaustive” as the
broadest reasonable construction of the term. Id. at 28,
33–35.
Responding, Network-1 argues that the Board’s claim
construction was correct. Network-1 relies upon the
Wikipedia entry that it introduced in response to Google’s
petition for review. In relevant part, the entry states
that, “[i]n computer science, brute-force search or exhaus-
tive search . . . is a very general problem solving tech-
nique that consists of systematically enumerating all
possible candidates for the solution and checking whether
each candidate satisfies the problem’s statement.” J.A.
1393. In the Institution Decision, the Board referenced
Network-1’s reliance on the Wikipedia entry (“Patent
Owner supplies an example of the ordinary meaning of
‘exhaustive search’ or ‘brute force search’”), and it noted
that the entry did not mention “the evaluation of all data
and choruses in the example above), is a narrower con-
struction of “exhaustive” and a broader construction of
“non-exhaustive” than a search that considers only some
data within each match (either introductions or choruses);
fewer searches qualify as “exhaustive” under Google’s
construction.
10 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
within each possible match.” Institution Decision at *4.
Network-1 argues that this entry confirms that a “brute
force” search or “exhaustive” search consists of systemati-
cally enumerating all possible candidates for the solution
and checking whether each candidate satisfies the search
criteria. Network-1’s Br. 21. Network-1 continues that
the Wikipedia entry does not state that, for a search to be
“exhaustive,” all data within each candidate must be
examined, as argued by Google.
Network-1 also points to the declaration testimony of
its expert witness, Dr. George Karypis, which was intro-
duced by Network-1 after review was instituted. Net-
work-1’s Br. 20–23. In his declaration, Dr. Karypis stated
that, in the context of the Network-1 Patents, techniques
are described as “linear” with respect to “N”—the number
of records in the database being searched—not with
respect to the length of an individual database in the
record. J.A. 1547 ¶ 72. Dr. Karypis also stated that “[a]
‘non-exhaustive search’ uses an intelligent algorithm to
narrow the database to only a subset of potential match-
es,” J.A. 1554 ¶¶ 7, 9, and he pointed to what he described
as examples of non-exhaustive search algorithms in the
specification of the ’179 patent. Specifically, Dr. Karypis
directed the Board’s attention to column 9, lines 14–17 of
the specification, see J.A. 1554 ¶ 80, where the specifica-
tion states that “other forms of matching include those
based on clustering, kd-trees, vantage point trees and
excluded middle vantage point forests . . . .”
IV.
The parties agree that Google’s construction of “non-
exhaustive search” is broader than the Board’s construc-
tion of the term, which Network-1 supports. See Oral
Argument at 25:50–26:01; 28:10–16. We concur. Of the
two competing constructions, Google’s is, in fact, broader.
That is because Google’s construction (through its nar-
rower construction of “exhaustive”) necessarily encom-
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 11
passes all of the searches covered by the Board’s construc-
tion. The Board’s construction (through its broader
construction of “exhaustive”), on the other hand, does not
necessarily encompass all of the searches covered by
Google’s construction. In the example above, a search
that examines only the introduction of a song and not its
chorus would be “non-exhaustive” under Google’s con-
struction, but not under the Board’s. That is because, by
just examining the song’s introduction, the search is not
examining everything in the match—both the introduc-
tion and the chorus—that must be examined under
Google’s construction of “exhaustive.” On the other hand,
such a search would not be “non-exhaustive” under the
Board’s construction because, by examining the introduc-
tion, the search still would be examining the match. It
thus would be “exhaustive.”
The claim limitation at issue requires “using a non-
exhaustive neighbor search.” Bearing in mind what we
have stated above about the unique nature of the claim
limitation at issue (claiming a method that is not “ex-
haustive”), the question becomes whether Google’s nar-
rower construction of “exhaustive”—and hence its broader
construction of “non-exhaustive”—is reasonable. In order
to be found reasonable, it is not necessary that a claim be
given its correct construction under the framework laid
out in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir
2005) (en banc). See PPC Broadband, Inc. v. Corning
Optical Commc’ns RF, LLC, 815 F.3d 734, 742–43 (Fed.
Cir. 2016) (citing In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1279 (Fed. Cir. 2015), aff’d sub nom. Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016)). In
other words, under the broadest reasonable construction
standard, where two claim constructions are reasonable,
the broader construction governs.
“[T]he claim-construction inquiry . . . begins and ends
in all cases with the actual words of the claim.” Home-
land Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
12 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
1375 (Fed. Cir. 2017) (quoting Renishaw PLC v. Marposs
Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)).
The words of a claim “are generally given their ordinary
and customary meaning” as understood by a person of
ordinary skill at the time of invention. Phillips, 415 F.3d
at 1312–13. Because that meaning is often not immedi-
ately apparent, the court looks to the intrinsic record,
including “the words of the claims themselves, the re-
mainder of the specification, [and] the prosecution histo-
ry,” as well as to extrinsic evidence when appropriate, to
construe a disputed claim term. Id. at 1314.
The specification of the ’179 patent does not suggest
the narrower construction of “non-exhaustive search”
urged by Network-1. Network-1 contends that the specifi-
cation specifically identifies “a linear search of all N
entries” as an “exhaustive search.” See ’179 patent, col. 9,
lines 8–10. Further, according to Network-1, its converse,
a “non-exhaustive search” is identified in the next para-
graph at column 9, lines 13 through 37 of the ’179 patent.
See Oral Argument at 20:35–21:37. We do not agree,
however, that these parts of the specification draw a clear
line between “exhaustive” and “non-exhaustive” searching
in terms of how much data within a record a search must
consider in order to qualify as one or the other. Finally,
the prosecution history of the ’179 patent, the third piece
of intrinsic evidence, also does not provide guidance.
That brings us to the extrinsic evidence. At the insti-
tution stage of the IPR, when the claims were construed,
Network-1 presented to the Board the Wikipedia entry
noted above describing a “brute force search.” 5 The
5 At the institution stage of the IPR, the Board also
had before it the declaration testimony of Google’s expert,
Dr. Patrick Moulin. The Board did not credit Dr. Moulin’s
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 13
Wikipedia entry, though, does not answer the question
before us. While the entry describes a “brute force
search,” it does not speak to whether or not a “brute force
search” examines all data within a possible match.
As noted, Network-1 also relies on the testimony of its
expert, Dr. Karypis. However, this extrinsic evidence was
not before the Board when it rendered its claim construc-
tion ruling in the Institution Decision. Moreover, in the
Final Decision, the Board maintained without alteration,
and did not elaborate upon, its construction of “non-
exhaustive search.” The Board simply stated that “[u]pon
review of the parties’ contentions and the Specification, as
well as the entire record, we . . . discern no reason to
modify our claim construction at this juncture.” Final
Decision at * 6. In this passing reference, the Board did
not mention the testimony of Dr. Karypis. Cf. Cardsoft
LLC v. Verifone, Inc., 807 F.3d 1346, 1350 (Fed. Cir. 2015)
(“[I]t is not enough that the district court may have heard
extrinsic evidence . . . rather, the district court must have
actually made a factual finding in order to trigger Teva’s
deferential standard of review.”) Under these circum-
stances, with the exception of the Wikipedia entry, we
view the Board as having rested its claim construction
ruling on intrinsic evidence. 6
testimony, however, Institution Decision at *4, and, on
appeal, Google does not rely on it. Google Reply Br. 7.
6 In any event, we are not convinced that, even if
the Karypis testimony were considered together with the
Wikipedia entry, it would establish what degree of ex-
haustion qualifies a search as “exhaustive.” Dr. Karypis
explained that non-exhaustive searches use intelligent
algorithms to narrow the database to a subset of potential
matches and thus do not compare the work to all records
in the database. J.A. 1541–42 at ¶¶ 63–64; J.A. 1554 at
14 GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC.
In sum, we view both the intrinsic and extrinsic evi-
dence regarding the meaning of the foundational claim
term “exhaustive” as inconclusive as to the broader or
narrower construction of the limitation “non-exhaustive
search.” Bearing in mind, however, the way in which the
inventor claimed his invention (by saying “do not do what
is exhaustive”) and the way in which the parties have
argued the case to us (focusing on the term “exhaustive”),
we conclude that Google’s claim construction is reasona-
ble. Quite simply, without considering all data within all
possible matches, a search of features is not guaranteed to
find an existing match or a near-match, or it may stop
prematurely before finding one. Google’s search examples
illustrate this point. For example, a database of court
names contains a potential match “Court of Appeals for
the Federal Circuit,” and the query is “Federal Circuit.”
The Board’s construction would find a search “exhaustive”
if it looked at the first letter of the query, “F,” determined
that it did not match “C,” and moved on—even if the
search was a neighbor search rather than a search for
exact matches only. Similarly, if the query were “Federal
Circuit” and the database entry were “First Circuit,”
considering only the first letter would produce a false
positive under the Board’s construction. Viewing the
matter in this light, we conclude that Google’s broader
construction of “non-exhaustive search” (via its narrower
construction of “exhaustive”) is consistent with how the
inventor described his invention in the specification in
terms of finding a best match or a best near-match for the
search query. See ’179 patent, col. 5, lines 40–58 and col.
9, lines 13–55. Google’s construction avoids false posi-
tives and false negatives by considering all the data
¶ 79; J.A.1547 at ¶ 74. He did not, however, discuss the
amount of data considered within each record.
GOOGLE LLC v. NETWORK-1 TECHNOLOGIES, INC. 15
within a match. In short, Google’s claim construction is
both broader than the Board’s and is reasonable.
CONCLUSION
For the foregoing reasons, we hold that, under the
broadest reasonable construction standard, Google’s
proposed construction of the term “non-exhaustive search”
is broader than the construction that the Board adopted
and is reasonable. Therefore, the Board erred in its claim
construction. Also for the foregoing reasons, we hold that
the claim construction most consistent with the broadest
reasonable construction of the term “non-exhaustive
search” is “a search that locates a match without conduct-
ing a brute-force comparison of all possible matches, and
all data within all possible matches.” That construction is
relevant to all of the claims at issue in this appeal: claims
1–3, 6, 8–14, 18, 19, 21–27, 29–31, and 34–37 of the ’179
patent; claims 25–27, 29, and 30 of the ’237 patent; claims
15–16, 21–28, 31–33, 38, 51, and 52 of the ’988 patent;
and claims 1–3, 6, 8–14, 18, 19, 21–27, 29, and 30 of the
’441 patent. As far as those claims are concerned, the
decisions of the Board are vacated and the case is re-
manded to the Board for consideration of patentability
based upon the claim construction stated above. The un-
appealed decisions of the Board, relating to (i) independ-
ent claims 1, 5, and 33 of the ’237 patent and their related
dependent claims; and (ii) dependent claim 17 of the ’988
patent, are not before us and therefore are left undis-
turbed.
VACATED-IN-PART AND REMANDED
COSTS
No Costs.