`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`NETWORK-1 TECHNOLOGIES, INC., a
`Delaware corporation,
`
` Plaintiff,
`
`vs.
`
`Ubiquiti Inc., a Delaware corporation,
`
` Defendant.
`
`
`
`
`
`CASE NO. 22-cv-1321-MN
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Network-1 Technologies, Inc. (“Network-1”) sues Defendant Ubiquiti Inc.
`
`
`
`
`
`
`
`(“Ubiquiti”) and, on information and belief, alleges as follows:
`
`INTRODUCTION
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`
`
`1.
`
`Plaintiff Network-1 owns the invention described and claimed in United States
`
`Patent No. 6,218,930 entitled “Apparatus and method for remotely powering access equipment
`
`over a 10/100 switched ethernet network” (the “‘930 Patent”).
`
`2.
`
`Defendant, without Plaintiff’s permission,
`
`(a)
`
`used Plaintiff’s patented technology in connection with products that it made,
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`used, sold, and offered to sell which distributed or used power transferred through
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`Ethernet cables (“Power over Ethernet” or “PoE”), including Power Sourcing
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`Equipment (“PSEs”) and Powered Devices (“PDs”) that are compliant with the
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`IEEE 802.3af and 802.3at standards, and
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`
`
`1
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`
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 2 of 41 PageID #: 118
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`(b)
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`contributed to or induced others, including Defendant’s customers who purchase
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`Power over Ethernet products from Defendant, to infringe the method claims of
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`the ‘930 Patent.
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`Plaintiff Network-1 seeks damages for patent infringements of the method claims of the ‘930
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`Patent.
`
`THE PARTIES
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`
`
`3.
`
`Plaintiff Network-1 Technologies, Inc. is a Delaware corporation, with its
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`principal place of business in New Canaan, Connecticut.
`
`4.
`
`Upon information and belief, Ubiquiti Inc. is a Delaware corporation, with its
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`principal place of business in New York, New York.
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`JURISDITION AND VENUE
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`
`
`5.
`
`This is an action for patent infringement arising under the patent laws of the
`
`United States, 35 U.S.C. §§ 271 and 281, et seq.
`
`6.
`
`The Court has original jurisdiction over this patent infringement action under 28
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`U.S.C. §§ 1331 and 1338(a).
`
`7.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
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`because Defendant is incorporated under the laws of the State of Delaware, Defendant does
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`business in Delaware, Defendant is responsible for acts of infringement in Delaware, and
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`Defendant delivered or caused to be delivered products that infringed in Delaware.
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`
`
`
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`
`
`THE ‘930 PATENT
`
`2
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`
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 3 of 41 PageID #: 119
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`
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`8.
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`The United States Patent and Trademark Office issued the ‘930 Patent on April
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`17, 2001. A copy of the ‘930 Patent is attached as Exhibit 1.
`
`9.
`
`Through assignment, Plaintiff Network-1 is the owner of all right, title, and
`
`interest in the ‘930 Patent, including all rights for damages for past infringements.
`
`10.
`
`The validity of the ‘930 Patent has been confirmed in multiple proceedings in
`
`multiple forums.
`
`11. Five parties accused of infringing the ‘930 Patent (all of them have since licensed
`
`the ‘930 Patent) filed five Inter Partes Reviews and one Covered Business Method Review
`
`challenging the validity of the ‘930 Patent. The Patent Trial and Appeal Board issued a final
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`written decision, holding that none of the challenged claims of the ‘930 Patent were
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`unpatentable. The Federal Circuit affirmed the PTAB’s final written decision holding that none
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`of the challenged claims of the ‘930 Patent were unpatentable. Avaya Inc. v. Network-1 Techs.,
`
`Inc., 612 F. App’x 613, 614 (Fed. Cir. 2015).
`
`12.
`
`13.
`
`The ‘930 Patent was also reexamined twice before the Patent Office.
`
`In the first reexamination, the Patent Office issued a reexamination certification
`
`confirming the patentability of all challenged claims and adding fourteen new claims. Exhibit 2.
`
`14.
`
`In the second reexamination, the Patent Office issued a reexamination certificate
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`confirming the patentability of all challenged claims. Exhibit 3.
`
`15.
`
`The ‘930 Patent has been extensively licensed. To date, twenty-eight companies
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`that made, used, and sold PoE products that comply with the IEEE 802.3af and 802.3at standards
`
`have licensed the ‘930 Patent. Licensees of the ‘930 Patent include Cisco Systems, Inc., Alcatel-
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`Lucent USA, Sony Corporation, Shoretel Inc., Microsemi Corporation, Motorola Solutions, Inc.,
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`NEC Corporation, Samsung Electronics Co., Ltd., and other companies that made or sold PoE
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`
`
`3
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 4 of 41 PageID #: 120
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`networking products. Network-1 licensed its ‘930 Patent both in the context of litigation and
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`outside of litigation.
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`16.
`
`To date, licensees have paid Network-1 more than $187,000,000 to license the
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`‘930 Patent. 1
`
`17.
`
`Although not required under any RAND or FRAND obligation, Network-1 has
`
`been, and continues to be, willing to license its ‘930 Patent on reasonable and non-discriminatory
`
`terms.
`
`18.
`
`The claims of the ‘930 Patent are directed to patent-eligible subject matter.
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`Generally speaking, the ‘930 Patent claims an electronic detection circuit that (a) determines
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`whether a remote access device connected to an Ethernet data cable (e.g., a VoIP telephone) is
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`capable of accepting power over the Ethernet cable (“remote power”), and (b) delivers operating
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`power to remote devices that can accept remote power.
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`19.
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`The ‘930 Patent addresses the problem of detecting whether a device attached to
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`an Ethernet data cable can accept remote power before delivering remote power that might
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`otherwise damage equipment that is not designed to receive remote power.
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`20. Determining whether a remote device in an Ethernet environment can accept
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`remote power is a central aspect of the invention claimed in the ‘930 Patent because the devices
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`that connect to Ethernet cables include both devices that can accept remote power (such as a
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`VoIP phone) and devices that cannot (such as a computer).
`
`21.
`
`As set forth in the claims of the ‘930 Patent, the claimed invention makes these
`
`determinations using a “low level current”—a current delivered from the “data node” (e.g., an
`
`
`1 See https://ir.network-1.com/press-releases/detail/208/ (“Network-1’s Remote Power Patent
`generated licensing revenue in excess of $187,000,000.”)
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`
`
`4
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 5 of 41 PageID #: 121
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`Ethernet switch or hub) to the access device (e.g., a VoIP phone) over the “data signaling pair”
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`that is insufficient to operate the access device. The delivered “low level current” generates a
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`voltage level on the return path that identifies the electronic characteristics of the attached remote
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`access device. The resulting voltage level can be sensed by the internal circuitry of the data
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`node. If the sensing based on the “low level current” reveals that the access device can accept
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`remote power, then the detection circuit controls the power by providing remote operating power
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`over the data signaling pairs (the Ethernet cable) to the access device (the VoIP phone).
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`22.
`
`The Federal Circuit described the ‘930 Patent as follows:
`
`The ‘930 patent is titled “Apparatus and Method for Remotely Powering Access
`Equipment over a 10/100 Switched Ethernet Network.” It discloses an apparatus
`and methods for allowing electronic devices to automatically determine if remote
`equipment is capable of accepting remote power over Ethernet. See ‘930 patent
`col. 1 ll. 13-17. According to the patented method, a “low level current” is
`delivered over a data signaling pair to an access device (also called remote
`equipment or remote access equipment). Id. at col. 2 ll. 8-10. After the low level
`current is sent, a network switch senses the resulting “voltage level” on the data
`signaling pair. Id. at col. 1 l. 65-col. 2 l. 14. If the device can accept remote
`power, the sensed voltage level will match a “preselected condition” of the
`voltage, such as a particular “varying voltage” level. Id. at col. 2 ll. 10-14, col. 3
`ll. 2-17. Upon detecting the preselected condition, the network switch will
`increase the current from the low level to a higher level sufficient to allow the
`“remote equipment [to] become[] active.” Id. at col. 3 ll. 17-22. If the
`preselected condition of the voltage is not detected, the network switch will
`determine that the device cannot accept remote power and will not transmit a
`higher current. Id. at col. 3 ll. 3-11.
`
`Network-1 Techs. v. Hewlett-Packard Co., 976 F.3d 1301, 1305 (Fed. Cir. 2020).
`
`23.
`
`The claims of the ‘930 Patent fall into patent-eligible categories authorized by
`
`Section 101. Moreover, the claims of the ‘930 Patent are not directed to any patent-ineligible
`
`exception.
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`INDUSTRY KNOWLEDGE THAT THE ‘930 PATENT COVERS THE
`802.3af AND 802.3at POWER OVER ETHERNET STANDARDS
`
`
`
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`5
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 6 of 41 PageID #: 122
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`24. When the IEEE 803.af Power over Ethernet standard was developed, the ‘930
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`Patent was identified as a patent that covers the IEEE 802.3af standard.
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`25.
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`The IEEE (Institute of Electrical and Electronics Engineers) is a standard-based
`
`organization comprising representatives of the major players in the networking industry. The
`
`IEEE created an 802.3af task force committee to develop an industry standard for providing
`
`Power over Ethernet.
`
`26.
`
`By the summer of 2001, the IEEE 802.3af task force had already selected a
`
`detection method for the new Power over Ethernet standard. That detection method is identical
`
`to the one found in the final 802.3af standard used in Defendant’s Power over Ethernet products.
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`At that time, some members of the 802.3af task force became aware of the ‘930 Patent and
`
`realized that its claims covered the detection method that the 802.3af task force was adopting as
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`part of the Power over Ethernet standard. As a result, the Chairman of the IEEE 802.3af task
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`force committee placed the ‘930 Patent on the agenda for the July 2001 802.3af task force
`
`meeting of the committee in the form of a “Call for Patents”:
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`
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`6
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 7 of 41 PageID #: 123
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`
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`Agenda, July 2001 Plenary Meeting of the 802.3af DTE Power via MDI Task Force.
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`27.
`
`As explained on the IEEE’s website, a Chairman of an IEEE standard committee
`
`would include a “Call for Patents” on an agenda and call out a patent (e.g., the ‘930 Patent)
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`because those involved in developing the standard believed that the patent was essential for
`
`practicing the proposed standard.
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`28.
`
`The ‘930 Patent was the only patent that was ever identified by the 802.3af task
`
`force in a “Call for Patents” and placed on an agenda for a task force meeting.
`
`29.
`
`This Agenda identifying the ‘930 Patent as an essential patent for practicing the
`
`802.3af standard was publicly available to any person or company who was interested in or
`
`concerned about whether the 802.3af Power over Ethernet standard infringed any patent.
`
`30. After the ‘930 Patent was called out, the members of the 802.3af committee took
`
`information about the ‘930 Patent back to their respective networking companies for further
`
`investigation. Over the following six weeks, key networking manufacturers expressed concerns
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`
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`7
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 8 of 41 PageID #: 124
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`that the ‘930 Patent “has become a major show stopper” to practicing the proposed 802.3af
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`standard. The Chairman of the 802.3af committee wrote in an email that “key players” in the
`
`networking industry were “very worried about the Merlot 2 patent, specifically the detection
`
`scheme which is pretty much what we do in 802.3af.”
`
`31.
`
`The Chairman of the 802.3af committee emailed his supervisor at the IEEE and
`
`declared the ‘930 Patent a “Red Alert!!!” to the proposed 802.3af standard. As a result, the
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`Chairman of the 802.3af committee and his supervisor attempted to get a letter of assurance from
`
`Merlot, the owner of the ‘930 Patent at the time. In a letter of assurance, Merlot would agree to
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`license the ‘930 Patent on reasonable terms to networking companies that manufactured products
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`that would comply with the proposed 802.3af standard. Representatives of networking
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`companies on the 803.3af standard committee believed that “[i]f IEEE can get an assurance letter
`
`from Merlot, everybody is happy” because the owner of the ‘930 Patent would be willing to
`
`license the patent to the industry.
`
`32. But Merlot did not initially provide a letter of assurance. As a result, the IEEE
`
`802.3af task force was motivated to look for an acceptable alternative detection method that
`
`would not infringe the ‘930 Patent. But despite spending significant time and effort evaluating
`
`other options, the committee was not able to come up with an acceptable alternative that could be
`
`used for high data speed applications. As a result, although the IEEE 802.af task force had not
`
`yet obtained a letter of assurance, the IEEE voted on and formally adopted the 802.2af standard
`
`covered by the ‘930 Patent.
`
`
`2 At this time, the ‘930 Patent was owned by Merlot (before it was assigned to Network-1) and
`was referred to as the “Merlot patent.”
`
`
`
`8
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 9 of 41 PageID #: 125
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`33. Although not required, after the 802.3af standard was formally adopted, Merlot
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`did provide a Letter of Assurance to the IEEE. This Letter of Assurance identified the ‘930
`
`Patent as essential for any networking company who wanted to manufacture an 802.3af standard
`
`product. Any person or company who was interested in or concerned about whether the 802.3af
`
`standard infringed any patent could find the ‘930 Patent Letter of Assurance using a simple
`
`Google search:
`
`
`
`34.
`
`The IEEE maintains a spreadsheet of patents that are essential for practicing any
`
`802.3 standard (the Power over Ethernet 802.3af standard is one of these 802.3 standards). The
`
`spreadsheet identifies the ‘930 Patent as essential to practicing the 802.3af standard (one of only
`
`ten patents identified as essential to practicing the 802.3af standard) and includes a link to the
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`Letter of Assurance for the ‘930 Patent:
`
`Any person or company who was interested in or concerned about whether the 802.3af Power
`
`over Ethernet standard infringed any patent could find the IEEE’s spreadsheet using a simple
`
`
`
`Google search.
`
`
`
`9
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 10 of 41 PageID #: 126
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`35.
`
`Since 2005, the ‘930 Patent (often referred to in the Power over Ethernet industry
`
`as the “Remote Power Patent”), has been widely known and recognized as a “hugely important”
`
`patent in the tight-knit standard-based Power over Ethernet industry. As described below in
`
`detail, the following was highly publicized in press releases and business, technical, industry,
`
`and legal articles and publications:
`
`(a) Network-1’s ‘930 Patent licensing campaigns;
`
`(b) Network-1’s lawsuits asserting its ‘930 Patent against more than 25 major
`
`companies in the Power over Ethernet industry based on the Power over Ethernet
`
`standard;
`
`(c)
`
`over 25 licenses for the ‘930 Patent generating over $180 million dollars
`
`in royalties covering products that comply with the Power over Ethernet standard; and
`
`(d)
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`two trials in which the ‘930 Patent was asserted against seven major
`
`Power over Ethernet manufacturers based on their standard-based products.
`
`36.
`
`Because Network-1 is a public company, Network-1 has to satisfy its SEC
`
`disclosure obligations. Certain details regarding Network-1’s ‘930 Patent licensing campaigns,
`
`its lawsuits asserting its ‘930 Patent, and the terms of its significant licenses for the ‘930 Patent,
`
`were required to be publicly disclosed through press releases and periodic SEC filings to satisfy
`
`Network-1’s SEC disclosure obligations. As a result, detailed information about Network-1’s
`
`‘930 Patent, its ‘930 Patent licensing campaigns, its lawsuits involving the ‘930 Patent, and
`
`licenses for its ‘930 Patent were widely disseminated through press releases to the public and in
`
`business, technical, industry, and legal articles and publications in the Power over Ethernet
`
`industry.
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`
`
`10
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 11 of 41 PageID #: 127
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`37.
`
`Public disclosure of details of significant patent licenses is rare. As a result, the
`
`publicly disclosed details about the ‘930 Patent licenses attracted significant attention. This was
`
`especially true because the publicly disclosed details of the ‘930 Patent licenses included the
`
`running royalty rates that were being paid by some major companies in the Power over Ethernet
`
`industry for sales of their Power over Ethernet standard-compliant products.
`
`38.
`
`The ‘930 Patent was highlighted and emphasized in these press releases and
`
`publications because Network-1 asserted only a single patent (not a portfolio of patents) against
`
`the Power over Ethernet industry, and there have been few other patents asserted against the
`
`Power over Ethernet standard.
`
`39.
`
`As a result, the existence of the ‘930 Patent and the fact that the ‘930 Patent reads
`
`on the 802.3af and 802.3at Power over Ethernet standards, was widely known by business
`
`executives and managers, engineers, marketing executives and managers, product managers and
`
`developers, and lawyers working at companies that manufactured Power over Ethernet products
`
`or considered introducing Power over Ethernet standard-compliant products into the market.
`
`40.
`
`In 2005, Network-1 asserted its ‘930 Patent against D-Link because D-Link
`
`manufactured Power over Ethernet products that complied with the 802.3af and 802.3at
`
`standards. In August 2007, Network-1 licensed its ‘930 Patent to D-Link Corporation. To
`
`comply with its disclosure obligations, Network-1 issued a press release regarding its license
`
`with D-Link. The release publicized that D-Link would be paying a running royalty for all of its
`
`Power over Ethernet products that comply with the IEEE standards (803.2af and 802.3at) and
`
`that the license to the ‘930 Patent covered the same categories of standard-compliant products
`
`subsequently made by Defendant, specifically Power over Ethernet switches, wireless access
`
`points, and cameras:
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`
`
`11
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`
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 12 of 41 PageID #: 128
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`“The license terms include the agreement by D-Link to license the Remote Power
`Patent … and the payment of monthly royalty payments … based upon a running
`royalty rate of 3.25% of the net sales of D-Link branded Power over Ethernet
`products, including those products which comply with the IEEE 802.3af and
`802.3at Standards.”
`
`“The Remote Power Patent relates to, among other things, the delivery of power
`over Ethernet cables in order to remotely power network connected devices
`including, among others, wireless switches, wireless access points, RFID card
`readers, VoIP telephones and network cameras. In June 2003, the Institute of
`Electrical and Electronic Engineers (IEEE) approved the 802.3af Power over
`Ethernet (‘PoE’) standard which has led to the rapid adoption of PoE.”
`
`“The products covered by the settlement include D-Link Power over Ethernet
`enabled switches, wireless access points, and network security cameras, among
`others.”
`
`41.
`
`In 2008, Network-1, outside the context of litigation, licensed its ‘930 Patent to
`
`Microsemi Corp-Analog Mixed Signal Group Ltd. In addition to manufacturing its own Power
`
`over Ethernet products, Microsemi also manufactures and sells Power over Ethernet chips (i.e.,
`
`integrated circuits) used by other manufacturers in their Power over Ethernet products to support
`
`Power over Ethernet functionality. This license with Microsemi, and Network-1’s industry-wide
`
`licensing program for its ‘930 Patent that Network-1 initiated in connection with the Microsemi
`
`license, was highly publicized in a press release and industry publications. For example, an
`
`industry publication (EE Power) identified the ‘930 Patent, disclosed the license with Microsemi,
`
`and described Network-1’s ‘930 Patent licensing program:
`
`“Network-1 will commence an industry-wide Special Licensing Program for U.S.
`Patent No. 6,218,930 (the ‘Remote Power Patent’) owned by Network-1 to
`vendors of PoE equipment. The Special Licensing Program … is being
`implemented on an industry-wide basis … for the ’930 Patent to PoE vendors ...
`The new agreement enables Microsemi to assist in its customer’s evaluation of the
`Remote Power Patent and the terms being made available to vendors of PoE.”
`
`“Microsemi designs, develops and supplies … integrated circuits and modules
`that enable the implementation of power over Ethernet.”
`
`
`
`12
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 13 of 41 PageID #: 129
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`“‘As has always been our goal, we are committed to simplifying the licensing of
`this critical technology in order to further accelerate the growth of PoE,’ said
`Corey Horowitz, Chairman and CEO of Network-1.”
`
`42.
`
`In 2008, Network-1 asserted its ‘930 Patent in a lawsuit against eight major
`
`companies in the Power over Ethernet industry based on their Power over Ethernet 802.3af and
`
`802.3at standard-compliant products, the same types of standard-complaint products
`
`subsequently manufactured by Defendant. Network-1’s lawsuit against major companies in the
`
`Power over Ethernet industry was highly publicized in a press release, technical and industry
`
`publications, and legal publications. For example, technical publications (such EE Power)
`
`reported:
`
`“On February 11, 2008, Network-1 announced it had initiated patent litigation
`against several major data networking equipment manufacturers …. for
`infringement of its Remote Power Patent. Named as defendants in the lawsuit
`were Cisco Systems, Inc., Cisco-Linksys, LLC, Enterasys Networks, Inc., 3Com
`Corporation, Inc., Extreme Networks, Inc., Foundry Networks, Inc., NETGEAR,
`Inc., and Adtran, Inc.”
`
`43.
`
`In 2009, Network-1 licensed its ‘930 Patent to NETGEAR, Inc. This license was
`
`highly publicized in a press release and in industry, technical, and legal publications. These
`
`releases and publications identified the ‘930 Patent, described NETGEAR’s license of the ‘930
`
`Patent and Network-1’s ‘930 Patent licensing program, and described how the NETGEAR
`
`license covered the same categories of Power over Ethernet 802.3af and 802.3at standard-
`
`compliant products subsequently made by Defendant, including switches and wireless access
`
`points. For example, the following information was widely disseminated:
`
`“Under the terms of the license, NETGEAR will license the Remote Power
`Patent… and pay quarterly royalties … based on its sales of Power over Ethernet
`(‘PoE’) products, including those PoE products which comply with the Institute of
`Electrical and Electronic Engineers (‘IEEE’) 802.3af and 802.3at Standards.”
`
`
`
`
`13
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 14 of 41 PageID #: 130
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`“Licensed products include NETGEAR’s PoE enabled switches and wireless
`access points. The royalty rates included in the license are 1.7% of the sales price
`of Power Sourcing Equipment, which includes Ethernet switches, and 2% of the
`sales price of Powered Devices, which includes wireless access points.”
`
`“‘This outcome is consistent with Network-1’s goal of making licenses available
`to the technologies covered by the Remote Power Patent to the Power over
`Ethernet industry in a manner that promotes the widespread adoption of this
`important industry standard.’”
`
`“the Texas litigation [is] still currently pending, against Cisco Systems, Inc.,
`Cisco-Linksys, LLC, Enterasys Networks, Inc., 3Com Corporation, Inc., Extreme
`Networks, Inc., Foundry Networks, Inc. and Adtran, Inc. In addition to
`NETGEAR, other companies that signed licenses under the Special Licensing
`Program are Microsemi Corporation, Buffalo Technology, BRG Resources, and
`SEH Corporation.”
`
`“The Remote Power Patent relates to, among other things, delivering power over
`Ethernet cables to remotely power network connected devices including, among
`others, wireless switches, wireless access points, RFID card readers, VoIP
`telephones and network cameras. In June 2003, the IEEE approved the 802.3af
`PoE Standard which led to the rapid adoption of PoE. The IEEE is currently
`working on the 802.3at Power over Ethernet Plus (PoE Plus) Standard which will
`increase the maximum power delivered to network devices.”
`
`44.
`
`In 2010, Network-1 went to trial against the six major companies in the Power
`
`over Ethernet industry remaining in the pending litigation. At trial, Network-1 asserted its ‘930
`
`Patent against products compliant with the Power over Ethernet 802.3af and 802.3at standards.
`
`The trial was conducted before Judge Leonard Davis. (Judge Davis subsequently joined Fish &
`
`Richardson in 2015, the firm representing Defendant in this action). The trial in which the ‘930
`
`Patent was asserted against the Power over Ethernet standard was highly publicized. As a result
`
`of the 2010 trial, before the jury returned a verdict, the remaining six major Power over Ethernet
`
`companies entered into licenses for the ‘930 Patent including what was (and still is) the largest
`
`known license covering the Power over Ethernet standard. The six licenses were highly
`
`publicized in legal, industry, and technical publications. For example, one industry publication
`
`reported:
`
`
`
`14
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`
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`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 15 of 41 PageID #: 131
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`
`
`
`“The litigation was initiated in February 2008 by Network-1 against Cisco and its
`Linksys division, Foundry Networks (now Brocade), Extreme Networks,
`Enterasys, 3Com (now HP), Adtran and Netgear. At issue was alleged
`infringement of Network-1’s Remote Power Patent, U.S. Patent No. 6,218,930.”
`
`“The settlement calls for approximately $32 million up front with up to
`approximately $80 million in royalty payments from Cisco alone over the next
`nine years. Adtran, Enterasys, Extreme and Foundry have also agreed to enter
`into non-exclusive licenses for the Remote Power Patent.”
`
`“Under the terms of the licenses, the companies agreed to pay to Network-1 an
`aggregate upfront payment of approximately $32 million and have also agreed to
`license the Remote Power Patent …”
`
`“Cisco agreed to pay royalties, beginning in 2011, based on its sales of PoE
`products up to maximum royalty payments per year of $8 million through 2015
`and $9 million per year thereafter for the remaining term of the patent.”
`
`45.
`
`In 2011, Network-1 brought patent infringement lawsuits against 16 additional
`
`major companies in the Power over Ethernet industry, asserting that its ‘930 Patent read on the
`
`Power over Ethernet 802.3af and 802.3at standards. As disclosed in a press release:
`
`“Named as defendants in the lawsuit … are Alcatel-Lucent USA, Inc., Allied
`Telesis, Inc., Avaya Inc., AXIS Communications Inc., Dell, Inc., GarrettCom,
`Inc., Hewlett-Packard Company, Huawei Technologies USA, Juniper Networks,
`Inc., Motorola Solutions, Inc., NEC Corporation, Polycom, Inc., Samsung
`Electronics Co., Ltd, ShoreTel, Inc., Sony Electronics, Inc., and Transition
`Networks, Inc.”
`
`These lawsuits were highly publicized in business, industry, technical, and legal publications.
`
`For example, Bloomberg published:
`
`
`
`15
`
`
`
`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 16 of 41 PageID #: 132
`
`“Network-1 Files Patent Lawsuit Against Motorola, Sony, HP, Dell - Network-1
`Security Solutions Inc., the New York-based company that received a patent
`settlement from Cisco Systems Inc. last year, sued 16 companies including
`Motorola Solutions Inc., Dell Inc., and Sony Corp. The lawsuit … claims
`infringement of patents for delivering power over Ethernet cables.”
`
`46.
`
`In 2015, the Cision PR Newswire headlined the fact that the United States Patent
`
`Office confirmed the validity of the ‘930 Patent, referencing the pending litigation and the major
`
`companies in the Power over Ethernet industry that licensed the ‘930 Patent or were in litigation
`
`involving the ‘930 Patent:
`
`“the United States Patent and Trademark Office (‘USPTO’) issued Notice of
`Intent to Issue Ex Parte Reexamination Certificate (‘NIRC’) rejecting another
`challenge to the patentability of Network-1’s Remote Power Patent (U.S Patent
`No. 6,218,930). … The Remote Power Patent covers the remote delivery of power
`over Ethernet networks and has generated licensing revenue in excess of $78
`million from May 2007 to date. Network-1 currently has nineteen license
`agreements with respect to its Remote Power Patent, which include, among
`others, license agreements with Cisco Systems, Inc., Cisco Linksys, Inc., Extreme
`Networks, Inc., Netgear Inc., Motorola Solutions, Inc., Allied Telesis, Inc., NEC
`Corporation, Samsung Electronics, Shoretel, Inc. and several other data
`networking vendors. In September 2011, the Company initiated patent litigation
`against sixteen (16) data networking equipment manufacturers … for
`infringement of its Remote Power Patent. Network-1 has now reached settlement
`and license agreements with eight of the original defendants. The remaining eight
`defendants in the lawsuit are Alcatel-Lucent USA, Inc., Avaya Inc., AXIS
`Communications Inc., Dell, Inc., Hewlett-Packard Company, Juniper Networks,
`Inc., Polycom Inc., and Sony Electronics, Inc.”
`
`47.
`
`Network-1 eventually licensed its ‘930 Patent to each of the 16 manufacturers of
`
`Power over Ethernet equipment in the lawsuit that Network-1 filed in 2011. These licenses were
`
`extensively publicized. Here are some examples:
`
`48.
`
`ShoreTel: In 2015, Network-1 licensed it ‘930 Patent to ShoreTel for ShoreTel’s
`
`Power over Ethernet products. This ‘930 Patent license with ShoreTel was highly publicized.
`
`For example, as reported on the Bloomberg, Cision, and Telecomworldwire newswires:
`
`
`
`16
`
`
`
`Case 1:22-cv-01321-MN Document 14 Filed 01/18/23 Page 17 of 41 PageID #: 133
`
`“Network-1 Technologies, Inc. (NYSE MKT: NTIP) announced today that it
`agreed to settle its patent litigation against Shoretel … for infringement of
`Network-1’s Remote Power Patent (U.S. Patent No. 6,218,930). Shoretel was one
`of sixteen (16) original defendants named in the litigation. As part of the
`settlement, Shoretel entered into a settlement agreement and non-exclusive license
`agreement for the Remote Power Patent. Under the terms of the license, Shoretel
`will license the Remote Power Patent … and pay a license initiation fee and
`quarterly royalties based on its sales of Power over Ethernet (‘PoE’) products,
`including those PoE products which comply with the Institute of Electrical and
`Electronic Engineers (‘IEEE’) 802.3af and 802.3at Standards. The Remote Power
`Patent covers the remote delivery of power over Ethernet networks and has
`generated licensing revenue in excess of $76 million from May 2007 through
`March 31, 2015. Network-1 currently has nineteen (19) license agreements with
`respect to its Remote Power Patent, which include, among others, license
`agreements with Cisco Systems, Inc., Extreme Networks, Inc., Netgear Inc.,
`Microsemi Corporation, Motorola Solutions, Inc., NEC Corporation, Samsung
`Electronics Co., Ltd. and several other data networking vendors.”
`
`49.
`
`Sony: In 2016, Network-1 licensed its ‘930 Patent to Sony Corporation for
`
`Sony’s Power over Ethernet products. This ‘930 Patent license with Sony was highly publicized.
`
`For example, legal publications disclosed the ‘930 Patent, the ‘930 Patent license with Sony, and
`
`that the accused products were Power over Ethernet products, e.g.:
`
`“Sony Settles Network-1 Suit After Fed. Circ. Upholds Patent. … It alleges the
`companies were infringing its patent relating to the delivery of power over
`Ethernet cables to remotely run network-connected devices like wireless