Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 1 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 1 of 9
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`Plaintiff,
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`V.
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`GOOGLE LLC and YOUTUBE LLC
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`NETWORK-I TECHNOLOGIES, INC.,
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`Defendants.
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`NETWORK-I TECHNOLOGIES, INC.,
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`Defendants.
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`Plaintiff,
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`V.
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`GOOGLE LLC and YOUTUBE LLC
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`Case No. I:14-cv-02396-PGG
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`Case No. I :I4-cv-09558-PGG
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`JOINT STIPULATION AND
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`ORDER REGARDING LIFTING OF STAYS
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 2 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 2 of 9
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`This Stipulation is entered into by and between Plaintiff Network-I Technologies, Inc.
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`("Network-I") on the one hand, and Defendants Google LLC and YouTube LLC (collectively,
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`"Google") on the other (together, the "Parties").
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`WHEREAS, Network-I and Google are parties to Case No. I :14-cv-02396 ("Case I")
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`pending in the U.S. District Court for the S~mthern District of New York;
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`WHEREAS, Network-I has asserted infringement of four U.S. Patents in Case I: U.S.
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`Patent No. 8,010,988 (the '"988 patent"), U.S. Patent No. 8,205,237 (the "'237 patent"), U.S.
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`Patent No. 8,640,179 (the'" 179 patent"), and U.S. Patent No. 8,656,441 (the "'441 patent")
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`( collectively, the "Case I Patents");
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`WHEREAS, Google initiated Inter Partes Review ("IPR") proceedings before the U.S.
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`Patent and Trademark Office ("USPTO") for each of the four Case I patents and those
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`proceedings each led to a final written decision;
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`WHEREAS, Network-I and Google are also parties to Case No. 1:14-cv-09558 ("Case
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`II") pending in the U.S. District Court for the Southern District of New York;
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`WHEREAS, Network-I has asserted infringement of U.S. Patent No. 8,904,464 (the
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`"'464 patent") in Case II;
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`WHEREAS, Google initiated a Covered Business Method ("CBM") review proceeding
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`before the US PTO for the '464 patent and that proceeding led to a final written decision;
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`WHEREAS, Case I and Case II were stayed pending the outcome of the four IPR
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`proceedings (with respect to Case I) and the CBM proceeding (with respect to Case II);
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`WHEREAS, certain claims of some of the Case I Patents were upheld during IPR
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`proceedings and were not the subject of any appeal and all claims of the '464 Patent were upheld
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`2
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 3 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 3 of 9
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`during the CBM proceeding and the decision from the CBM proceeding was affirmed by the
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`Court of Appeals;
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`WHEREAS, Google appealed US PTO decisions holding certain claims of the Case I
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`Patents not unpatentable, and the U.S. Court of Appeals for the Federal Circuit vacated those
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`decisions and remanded to the USPTO for further proceedings;
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`WHEREAS, those remanded IPR proceedings currently remain pending before the
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`USPTO; and
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`WHEREAS, the Parties have reached agreement regarding lifting the stay in Case I and
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`Case II;
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`NOW, THEREFORE, the Parties hereby stipulate, through their respective counsel, as
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`follows:
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`1.
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`2.
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`The stay of proceedings in Case I and Case II may be lifted.
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`In Case I, Network-I may assert only the following claims: claim 17 of the '988
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`patent and claims 33, 34, and 35 of the '237 patent (the "Remaining Case I Claims"). Google
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`agrees that Network-I can substitute claims 33-35 of the '237 patent for previously asserted
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`claims 25-27 of the '237 patent.
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`3.
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`Network-I, and any successor-in-interest to any of the Case I Patents, will not
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`assert any claims of any of the Case I Patents other than the Remaining Case I Claims against
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`Google in Case I or Case II, or any other action. Network-I will dismiss without prejudice
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`Counts III and IV from Case I.
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`4.
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`Network-I covenants not to sue Google or any Affiliate of Google with respect to
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`claims 15-16, 21-28, 31-33, 38, 51, and 52 of the '988 patent; claims 25-27, 29, and 30 of the
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`'237 patent; claims 1-3, 6, 8-14, 18, 19, 21-27, 29-31, and 34-37 of the' 179 patent; and claims
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`3
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 4 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 4 of g
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`1-3, 6, 8-14, 18, 19, 21-27, 29, and 30 of the '441 patent (collectively the "Covenant Claims")
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`for any infringement of the Covenant Claims. With respect to an Affiliate that is.acquired by
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`Google after the date of this Stipulation, where Network-I has a filed and pending claim of
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`patent infringement against such Affiliate in any court at the time of the acquisition by Google,
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`that pending claim-and only that pending claim and only as to damages accrued prior to the
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`date of the acquisition-shall be excluded from the scope of this Stipulation, and as to that
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`pending claim the Affiliate shall have the right to assert all defenses and counterclaims available
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`to the Affiliate immediately prior to the date of the acquisition by Google. Nothing in the
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`foregoing sentence modifies the covenant in paragraph 5. For purposes of this Stipulation,
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`"Affiliate" or "Affiliates," with respect to a party, shall mean (i) all entities now or in the future
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`controlling, controlled by or under common control with that party; (ii) all entities in the past
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`controlling, controlled by or under common control with that party, for the period of time that
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`such control exists or existed; and (iii) predecessors, successors or successors in interest thereof,
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`including all entities formed or acquired by that party in the future that come to be controlled by
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`that party. As used herein, "control" means possession directly or indirectly of the power to
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`direct or cause the direction of management or policies of a company or entity through the
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`ownership of voting securities, contract, or otherwise, and "entities" includes all persons,
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`companies, partnerships, corporations, associations, organizations, and other entities.
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`5.
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`In addition, Network-I covenants not to sue Google Partners (Google's agents,
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`advisors, attorneys, representatives, suppliers, distributors, customers, advertisers, and users of
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`Google, Google Affiliates, and/or Google Products) for infringement of the Covenant Claims,
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`but only insofar as any liability for such Partners is alleged to be based on their activities relating
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`to any Google Product where a Google Product is alleged to satisfy one or more elements of a
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`4
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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 5 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 5 of 9
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`Covenant Claim. As used herein, "Google Product" or "Google Products" means all former,
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`current and future products, including but not limited to services, components, hardware,
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`software, websites, processes, machines, manufactures, and any combinations and components
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`thereof, of Google and/or Google Affiliates. The covenants in this paragraph 5 apply only with
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`respect to Google Products and are limited to the specific Covenant Claims of the specific Case I
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`Patents.
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`6.
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`For the avoidance of doubt, the Parties further agree as follows regarding the
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`covenants granted herein: The covenants recited in paragraphs 4 and 5 extend only to the
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`Covenant Claims. The covenants do not encompass any other claim of any other patent existing
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`now or in the future, regardless of the scope of any such other claim, even if such other claim has
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`a comparable or broader scope than that of any Covenant Claim. The covenants do not apply to
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`the Remaining Case I Claims, the '464 Patent, or to any other patent related to the '988, '237,
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`'179, or '441 Patents (not including the '988, '237, '179, and '441 Patents themselves) and thus
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`do not restrict Network-1 's ability to assert the Remaining Case I Claims, the '464 Patent, or any
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`other patent related to the '988, '237, '179 or '441 Patents (other than the '988, '237, '179 and
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`'441 Patents themselves) against Google or any other entity. These covenants do not constitute a
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`license, are not transferable, and may not be delegated or extended to any other entity other than
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`as specifically enumerated in this Stipulation. These covenants do not give rise to any license,
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`express or implied, or arising by any kind of estoppel, to Google or to any other entity. Nothing
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`in the covenants shall operate to exhaust or give rise to any implied license to any patent claim
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`other than the Covenant Claims, regardless of the scope of such other patent claim, even if
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`comparable to or broader than that of any of the Covenant Claims.
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`5
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 6 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 6 of 9
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`7.
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`The covenants herein will attach to the Case I Patents, and any subsequent
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`transfer of the Case I Patents will be subject to this Stipulation.
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`8.
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`The Parties may not introduce or rely on this Stipulation as evidence on any issue
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`other than an issue relating to the enforcement or effect of its express terms in Case I, Case II, or
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`in any subsequent proceeding involving any other patent or patents held by Network-I. Google
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`agrees that it will not raise or maintain a defense or argument asserting an implied license, patent
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`exhaustion, estoppel, or any other affirmative defense or counterclaim based on the existence or
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`terms of this Stipulation with respect to any patent claim other than the Covenant Claims. The
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`Parties agree that this Stipulation is not relevant to any damages issue in any case and reflects
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`neither a license nor information that would inform the possible reasonable royalty applicable to
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`infringement of any patent. The limitations set forth herein regarding the covenants, including
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`without limitation that Google will not raise or maintain, with respect to any patent claim other
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`than the Covenant Claims, any implied-license, patent exhaustion, estoppel, or other affirmative
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`defense or counterclaim based on this Stipulation, is a material part of the agreement reflected in
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`this Stipulation, and the covenants herein shall be null and void if Google raises or maintains any
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`such defense or counterclaim based on this Stipulation.
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`9.
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`Google will promptly move to terminate the pending remand proceedings for the
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`Case I Patents currently before the Patent Trial and Appeal Board and take all reasonable steps
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`necessary to effectuate said termination.
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`6
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 7 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 7 of 9
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`Dated: December 17, 2018
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`Respectfully submitted,
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`Isl Charles R. Macedo
`
`Isl Samuel Bryant Davidoff
`
`Charles R. Macedo
`AMSTER, ROTHSTEIN
`& EBENSTEIN LLP
`90 Park A venue
`New York, New York 10016
`Telephone: (212) 336-8074
`Fax: (212) 336-8001
`cmacedo@arelaw.com
`
`OF COUNSEL:
`Marc A. Fenster (pro hac vice)
`Brian D. Ledahl (pro hac vice)
`Benjamin T. Wang (pro hac vice)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Fax: (310) 826-6991
`mfenster@raklaw.com
`bledahl@raklaw.com
`bwang@raklaw.com
`
`Samuel Bryant Davidoff
`WILLIAMS & CONNOLLY LLP
`650 Fifth Avenue, Suite 1500
`New York, NY 10022
`212-688-9224
`sdavidoff@wc.com
`
`OF COUNSEL:
`Bruce R. Genderson
`Kevin Hardy
`Daniel P. Shanahan
`Christopher A. Suarez
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 434-5000
`Fax: (202) 434-5029
`bgenderson@wc.com
`khardy@wc.com
`dshanahan@wc.com
`csuarez@wc.com
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`Attorneys for Network-I
`Technologies, Inc.
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`Attorneys for Defendants Google LLC
`and YouTube LLC
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`7
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 8 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 8 of 9
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`CERTIFICATION REGARDING SIGNATURES
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`Pursuant to Rule 8.5 of the Court's Electronic Filing Rules and Procedures, all parties
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`whose signatures are set forth above other than the filer of this document were included with the
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`consent of those parties.
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`Isl Charles R. Macedo
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`8
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`

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`Case 1:14-cv-09558-PGG Document 79 Filed 01/02/19 Page 9 of 9
`Case 1:14-cv-09558-PGG Document 77 Filed 12/17/18 Page 9 of 9
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`[PROPOSED] ORDER
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`Pursuant to the foregoing stipulation of the parties, the Court hereby ORDERS that the
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`stipulation is GRANTED. The stay of proceedings in Case No. 1: 14-cv-02396-PGG, and in
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`Case No. 1: 14-cv-09558-PGG is hereby lifted. The Court sets a status conference to address
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`further scheduling in these matters for ~ 2 '::/... -:;..,, Io/ ()J-. /o: cJv 19 ~ /11 .
`f l
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`Date: ~ - ~ /0/ $>
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`SO ORDERED.
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`HonM. t.l::::fA
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`United States District Judge
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`9
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