Case 1:14-cv-02396-PGG-MHD Document 137 Filed 01/17/19 Page 1 of 3
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`12424
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`Los Angeles
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`January 17, 2019
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`Filed Via ECF with Courtesy Copy Hand Delivery
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`Hon. Paul G. Gardephe
`United States District Court
`Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
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`Fax 310.826.6991
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`www.raklaw.com
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`Re: Network-1 Technologies, Inc. v. Google Inc., et al.,
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`Case Nos. 1:14-cv-2396-PGG & 1:14-cv-9558-PGG
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`Dear Judge Gardephe:
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`Pursuant to the Court’s January 2, 2019 Order Regarding Lifting of Stays in Case No. 1:14-cv-
`2396-PGG (“Case I”) and the Court’s January 2, 2019 Order Regarding Lifting of Stays and Order
`Setting Status Conference in Case No. 1:14-cv-9558-PGG (“Case II”), the parties respectfully
`submit the following information and the enclosed proposed Case Management Plan and
`Scheduling Order in advance of the status conference scheduled for January 24, 2019.
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`(1) An update on the status of the proceedings:
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`Network-1 initiated Case I on April 4, 2014 by filing a complaint alleging that YouTube’s Content
`ID system infringes U.S. Patent Nos. 8,010,988; 8,205,237; 8,640,179; and 8,656,441. On
`December 3, 2014, Network-1 initiated Case II by filing a complaint alleging that the same system
`also infringes a fifth U.S. Patent that issued the day before (December 2, 2014): No. 8,904,464.
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`After the complaints were filed, Google petitioned the U.S. Patent and Trademark Office (PTO)
`to institute post-grant reviews of the five patents asserted by Network-1. While Google’s petitions
`were pending before the PTO, the parties began fact discovery in Case I and “agree[d] that
`discovery material produced or provided in [Case I] shall be deemed to be produced or provided
`in [Case II].” Case II, Dkt. 23-1 at 2–3. On July 2, 2015, after the PTO began instituting post-
`grant reviews of the above-referenced patents, all proceedings before this Court were stayed
`“pursuant to agreement between the parties.” Case I, Dkt. 85; Case II, Dkt. 35.
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`The PTO subsequently issued five final written decisions. For the ’988, ’179, ’441, and ’464
`patents, the PTO held that all of the claims for which review was instituted had not been shown to
`be unpatentable. For the ’237 patent, the PTO held that some of the claims had been shown to be
`unpatentable, but that several of the claims challenged by Google had not been shown to be
`unpatentable. Google appealed at least a portion of each of the five PTO final written decisions to
`the U.S. Court of Appeals for the Federal Circuit, which affirmed the PTO’s decision with respect
`to the ’464 patent, vacated-in-part the PTO’s decisions with respect to the other four patents, and
`remanded the cases to the PTO for further proceedings concerning those four patents. Among
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`Case 1:14-cv-02396-PGG-MHD Document 137 Filed 01/17/19 Page 2 of 3
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`Hon. Paul G. Gardephe
`January 17, 2019
`Page 2
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`other claims, Google did not appeal the PTO’s decision regarding claim 17 of the ’988 patent and
`claims 33-35 of the ’237 patent.
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`In December 2018, while the remanded proceedings were pending before the PTO, the parties
`stipulated that the stays in Case I and Case II may be lifted, and that in Case I, Network-1 would
`only assert claim 17 of the ’988 patent and three claims of the ’237 patent that it had not previously
`asserted, claims 33-35. Case I, Dkt. 133; Case II, Dkt. 77. The parties further agreed that Network-
`1 would not assert certain other claims against Google and that Google would terminate the
`remanded proceedings before the PTO. On January 2, 2019, the Court entered the Joint Stipulation
`and Order Regarding Stays. Case I, Dkt. 134; Case II, Dkt. 79. On January 4, 2019, the PTO
`terminated the remanded proceedings.
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`(2) Consolidation of Case I and Case II and Proposed Schedule
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`The parties have agreed to the consolidation of Case I and Case II. The parties have also reached
`agreement as to a suitable schedule for the consolidated cases, as reflected in the attached Joint
`Proposed Civil Case Management Plan and Scheduling Order.
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`The parties look forward to meeting with the Court at the January 24 Status Conference.
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`Case 1:14-cv-02396-PGG-MHD Document 137 Filed 01/17/19 Page 3 of 3
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`Hon. Paul G. Gardephe
`January 17, 2019
`Page 3
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`Dated: January 17, 2019
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`Respectfully submitted,
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`RUSS, AUGUST & KABAT
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`WILLIAMS & CONNOLLY LLP
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`BY: s/ Marc A. Fenster
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`Marc A. Fenster (pro hac vice)
`Brian D. Ledahl (pro hac vice)
`Adam S. Hoffman (pro hac vice)
`Paul A. Kroeger (pro hac vice)
`Amy E. Hayden (pro hac vice)
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`mfenster@raklaw.com
`bledahl@raklaw.com
`ahoffman@raklaw.com
`pkroeger@raklaw.com
`ahayden@raklaw.com
`
`Charles R. Macedo
`AMSTER, ROTHSTEIN &
`EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`Phone: (212) 336-8074
`Fax: (212) 336-8001
`cmacedo@arelaw.com
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`Attorneys for Network-1
`Technologies, Inc.
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`BY: s/ Samuel Bryant Davidoff
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`Samuel Bryant Davidoff
`650 Fifth Avenue, Suite 1500
`New York, NY 10022
`212-688-9224
`sdavidoff@wc.com
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`Bruce R. Genderson (pro hac vice)
`Kevin Hardy (pro hac vice)
`Daniel P. Shanahan (pro hac vice)
`Andrew V. Trask (pro hac vice)
`Christopher A. Suarez (pro hac vice)
`725 Twelfth St. NW
`Washington, DC 20005
`Phone: (202) 434-5000
`Fax: (202) 434-5029
`bgenderson@wc.com
`khardy@wc.com
`dshanahan@wc.com
`atrask@wc.com
`csuarez@wc.com
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`Attorneys for Google LLC and
`YouTube LLC
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