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`
`
`BRUCE GENDERSON
`(202) 434-5999
`bgenderson@wc.com
`
`
`
`
`
`
`VIA CM/ECF
`
`Hon. Paul G. Gardephe
`United States District Court Judge
`United States District Court for the
`Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
`
`
`November 13, 2018
`
`
`
`Re:
`
`Network-1 Technologies, Inc. v. Google LLC, et al. Case No. 1:14-cv-2396 (PGG)
`(“Case 1”) (MHD), and Network-1 Technologies, Inc. v. Google LLC, et al., Case
`No. 1:14-cv-9558 (PGG) (“Case 2”)
`
`Dear Judge Gardephe:
`
`We write to update the Court in response to its memo endorsement (ECF No. 116), dated
`November 16, 2016, ordering the parties “to advise the Court every 90 days as to the status of the
`Federal Circuit appeals” pertinent to the above-captioned proceedings.
`
`As noted in previous letters to the Court, the relevant Federal Circuit appeals are No. 17-
`1379 (the “CBM Appeal”) and Nos. 16-2509, -2510, -2511, -2512 (the “Consolidated IPR
`Appeals”). In the CBM Appeal (relating to the sole patent at issue in Case 2), the Federal Circuit
`has issued a decision affirming the Patent Trial and Appeal Board’s final decision with respect to
`the only patent at issue in that appeal. The parties have made a joint submission regarding the
`stay in connection with that case (Case No. 14-cv-9558, Dkt. # 71).
`
`In the Consolidated IPR Appeals (relating to the patents at issue in Case 1), the Federal
`Circuit has issued a decision vacating the Board’s final decisions with respect to two patents,
`vacating in part the Board’s final decisions with respect to the remaining two patents, and
`remanding all four decisions to the Board for further proceedings. Some claims in some of the
`asserted patents were upheld by the Board, but not challenged on appeal. Those claims were not
`the subject of the Federal Circuit’s remand. On July 10, 2018, the Federal Circuit denied a
`petition for panel rehearing or rehearing en banc filed by Network-1 Technologies, Inc. The
`Federal Circuit’s mandate issued on July 19, 2018, and the four decisions have now been
`remanded to the Board for further proceedings (except with respect to the claims that were
`
`
`
`Case 1:14-cv-02396-PGG-MHD Document 131 Filed 11/13/18 Page 2 of 2
`
`
`
`
`November 13, 2018
`Page 2
`
`upheld and not appealed). Those remanded proceedings remain pending before the Board, which
`has not yet issued a schedule governing the proceedings.
`
`Network 1’s Statement
`
`Based on the above-reported status, there are a number of claims that have been
`confirmed as valid in the IPR’s and either affirmed on appeal, or not appealed (the “Confirmed
`Claims”). Network 1 is prepared to proceed with its claims based on these Confirmed Claims
`and agree to dismiss the Remand Claims with prejudice from this litigation. Accordingly,
`Network 1 believes the stay should be lifted and these long-delayed cases should now proceed.
`Network 1 has been working with Google on a stipulation to lift the stay and limit the case to the
`Confirmed Claims. Network 1 intends to file either a stipulation or a letter motion to lift the stay
`by November 20, 2018. Network 1 requests a status conference at the Court’s earliest
`convenience.
`
`Defendants’ Statement
`
`At present the remanded IPR proceedings remain pending and there have been no
`changes that warrant lifting the stays in the cases. Google confirms that the parties are in
`discussions concerning potentially limiting these cases; those discussions may or may not lead to
`an agreement concerning the stays currently in place. To date, the parties have not reached
`agreement on an appropriate path forward, but their discussions are continuing.
`
`*
`
`*
`
`*
`
`The parties are available for a telephone conference if the Court believes that would be
`helpful.
`
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`
`
`Sincerely,
`
`//Bruce Genderson//
`
`
`
`
`Bruce Genderson
`Counsel for Google LLC
`
`
`
`
`
`
`
`
`
`
`
`//Brian Ledahl//
`
`
`
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`
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`
`
`Brian Ledahl
`Counsel for Network-1 Technologies, Inc.
`
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