Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 1 of 9
`Case 1:14-cv-02396—PGG-MHD Document 176-11 Filed 10/01/19 Page 1 of 9
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` EXHIBIT K
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`EXHIBIT K
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`Case 1:14-cv-02396-PGG-MHD Document 137 Filed 01/17/19 Page 1 of 3Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 2 of 9
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`12424
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`Wilshire Boulevard
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`12th Floor
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`Los Angeles
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`California
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`90025
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`Tel 310.826.7474
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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 3Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 3 of 9
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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 3Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 4 of 9
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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
`
`
`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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`Case 1:14-cv-02396-PGG-MHD Document 137-1 Filed 01/17/19 Page 1 of 5Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 5 of 9
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`NETWORK-1 TECHNOLOGIES, INC.
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`Plaintiff,
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`- against -
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`GOOGLE LLC and YOUTUBE LLC
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`Defendants.
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`PAUL G. GARDEPHE, U.S.D.J.:
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`JOINT PROPOSED
`CIVIL CASE MANAGEMENT PLAN
`AND SCHEDULING ORDER
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`14 Civ. 2396 (PGG)
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`14 Civ. 9558 (PGG)
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`After consultation with counsel for the parties, the Court adopts the following Civil Case
`Management Plan and Scheduling Order, in accordance with Federal Rules of Civil Procedure 16
`and 26(f).
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`All parties do not consent to conducting further proceedings before a Magistrate Judge,
`including motions and trial, pursuant to 28 U.S.C. § 636(c).
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`This case is to be tried to a jury.
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`No additional parties may be joined except with leave of the Court. Except for good
`cause shown, any motion to join additional parties must be filed within 30 days from the
`date of this Order.
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`A party may not amend its pleadings except with leave of the Court. Except for good
`cause shown, any motion to amend pleadings must be filed within 30 days from the date of
`this Order.
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`Pursuant to Local Patent Rule 6, Plaintiff shall supplement its Disclosure of Asserted
`Claims and Infringement Contentions which identifies for each opposing party, each
`claim of each patent-in-suit that is allegedly infringed and each product or process of
`each opposing party of which the party claiming infringement is aware that allegedly
`infringes each identified claim no later than January 31, 2019.
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`Pursuant to Local Patent Rule 7, Defendants shall supplement any Invalidity Contentions
`which identify each item of prior art that the party contends allegedly anticipates or
`renders obvious each asserted claim, and any other grounds of invalidity, including any
`under 35 U.S.C. § 101 or § 112, or unenforceability of any of the asserted claims no later
`than March 15, 2019.
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`The parties must complete fact discovery no later than September 30, 2019.
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`Case 1:14-cv-02396-PGG-MHD Document 137-1 Filed 01/17/19 Page 2 of 5Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 6 of 9
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`8.
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`If all parties consent in writing, they may extend the following interim deadlines without
`application to the Court, provided that the parties complete all fact discovery by the date
`set forth in paragraph 7. Under this Order’s interim deadlines, the parties must:
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`a.
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`b.
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`c.
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`d.
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`e.
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`Serve initial requests for production of documents by February 14, 2019.
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`Propound any contention interrogatories no earlier than June 30, 2019.
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`Complete substantial production of documents by no later than June 14, 2019.
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`Serve privilege logs by September 9, 2019.
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`Complete depositions of fact witnesses by September 30, 2019.
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`i. Unless the parties agree or the Court so orders, the parties may not hold
`depositions until all parties have responded to initial requests for
`document production.
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`ii. There is no priority in deposition by reason of a party’s status as plaintiff
`or defendant.
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`iii. Unless the parties agree or the Court so orders, non-party depositions must
`follow initial party depositions.
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`iv. Consistent with Federal Rule of Civil Procedure 30(d), the parties may not
`extend depositions beyond one business day without prior leave of the
`Court.
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`f.
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`Serve requests to admit no later than August 23, 2019.
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`Protective Order and Electronic Discovery Submission: The parties agree to entry of the
`Protective Order entered in Case No. 14-cv-02396 (PGG) (“Case I”) in the consolidated
`case with Case No. 14-cv-09558 (PGG) (“Case II”). The parties further agree that
`discovery material produced or provided in Case I or II shall be deemed to be produced or
`provided in the consolidated case.
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`Claim Construction:
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`a.
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`The parties shall exchange a list of those claim terms that they believe need
`construction and their proposed claim construction of those terms by March 29,
`2019. This document will not be filed with the Court. Subsequent to exchanging
`such lists, the parties will meet and confer to prepare a Joint Claim Construction
`Chart to be submitted pursuant to paragraph 10(b) below.
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`Joint Claim Chart: The parties shall cooperate and jointly file a Joint Claim
`Construction Chart listing the disputed claim terms and each party’s proposed
`construction on or before April 30, 2019.
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`b.
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`9.
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`10.
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`Case 1:14-cv-02396-PGG-MHD Document 137-1 Filed 01/17/19 Page 3 of 5Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 7 of 9
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`c.
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`d.
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`e.
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`f.
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`g.
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`Opening Brief: The party asserting infringement must serve and file an opening
`claim construction brief and all supporting evidence and testimony on May 30,
`2019.
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`Response Brief: The opposing party must serve and file a response to the
`opening claim construction brief and all supporting evidence and testimony by
`June 28, 2019.
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`Reply Brief: The opening party may serve and file a reply solely rebutting the
`opposing party’s response by July 12, 2019.
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`Sur-Reply Brief: The opposing party may serve and file a sur-reply brief solely
`in response to new arguments raised in the opening party’s reply brief by July
`26, 2019.
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`The hearing on the issue of claim construction is scheduled for
`[To be filled in by Court.]
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`Opinion of Counsel: Not later than August 30, 2019, each party that will rely on an
`opinion of counsel as part of a defense to a claim of willful infringement or inducement
`of infringement, or that a case is exceptional, must (1) produce or make available for
`inspection and copying the opinion(s) and any other documents relating to the opinion(s)
`as to which attorney-client or work product protection has been waived as a result of
`such production and (2) any related privilege logs.
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`The parties must complete expert discovery no later than February 7, 2020.
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`11.
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`12.
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`a. Every party-proponent that intends to offer expert testimony in respect of a claim –
`including any counterclaim, cross-claim or third-party claim – must make the disclosures
`required by Federal Rule of Civil Procedure 26(a)(2) no later than November 25, 2019.
`The supplemental disclosure to contradict or rebut evidence on the same matter identified
`by another party is due January 17, 2020.
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`b.
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` No party may offer expert testimony – whether designated as “rebuttal” or otherwise –
`beyond the scope of the opinions that the aforesaid disclosures cover, except with leave
`of the Court, application for which must be made no later than 7 calendar days after the
`latter of the dates specified in paragraph 12(a). The parties may depose all experts, but
`such depositions must occur within the time limit set forth for expert discovery in
`paragraph 12.
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`c. Plaintiff currently anticipates expert testimony concerning the following issues:
`infringement, validity, damages, willful infringement, and potentially claim construction.
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`d. Defendants currently anticipate expert testimony concerning the following issues:
`infringement, validity, damages, willful infringement, and potentially claim construction.
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`13.
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`No later than 14 days following the close of fact discovery, all counsel must meet face-to-face
`for at least one hour to discuss settlement.
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`14.
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`15.
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`16.
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`17.
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`Parties seeking to make post-discovery dispositive motions should submit a letter to the
`Court in accordance with Rule 4(A) of the Court’s Individual Practices no later than
`February 21, 2020. Opposition letters are due February 28, 2020.
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`If either party or both parties seek to make post-discovery dispositive motions, the Court
`will hold a motion conference on _____________________. [To be filled in by Court.]
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`Opening dispositive motion briefs will be due 21 days after the motion conference;
`opposition briefs are due 21 days after opening briefs; and replies in support of
`dispositive motions are due 14 days after opposition briefs.
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`If either party or both parties seek to make post-discovery dispositive motions, the Court
`will hold dispositive motion hearing on ________________. [To be filled in by Court.]
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`Unless otherwise ordered by the Court, within 30 days from the date for the completion of
`discovery in a civil case or, if a party has filed a dispositive motion, then within 30 days
`of a decision resolving the motion, the parties shall submit to the Court for its approval a
`joint pretrial order prepared in accordance with the Court’s Individual Practices and
`Federal Rule of Civil Procedure 26(a)(3).
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`Counsel for the parties have conferred and their present best estimate of the length of trial
`is: 6–8 days.
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`At the close of discovery or, if a party has filed a dispositive motion, then within 30 days
`of a decision resolving the motion, the Court will set a Ready Trial Date. At any time on
`or after the Ready Trial Date, the Court may call the parties to trial upon 48 hours’ notice.
`Therefore, counsel must notify the Court and their adversaries in writing of any potential
`scheduling conflicts – including, but not limited to, trials and vacations – that would
`prevent a trial at a particular time. Such notice must come before the Court notifies
`counsel of an actual trial date, not after counsel receives notification of the actual trial
`date. Counsel should notify the Court and all other counsel in writing, at the earliest
`possible time, of any scheduling problems involving out-of-town witnesses or other
`exigencies.
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`18. Where the parties resolve the case before the entry of judgment, they must submit a
`stipulation of discontinuance – signed by all parties – before the Court will remove the
`case from the trial calendar. If the parties settle within 48 hours of trial or the filing of a
`dispositive motion, they must immediately notify the Court of such settlement, and fax to
`the Court no less than 36 hours before their planned appearance, a stipulation of
`discontinuance, signed by all parties.
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`19.
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`The next pretrial conference is scheduled for
`filled in by Court.]
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` . [To be
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`This ORDER may not be modified or the dates herein extended, except by further Order of
`this Court for good cause shown. Any application to modify or extend must be made in a written
`application in accordance with the Court’s Individual Practices.
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`Case 1:14-cv-02396-PGG-MHD Document 137-1 Filed 01/17/19 Page 5 of 5Case 1:14-cv-02396-PGG-MHD Document 176-11 Filed 10/01/19 Page 9 of 9
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`Dated: New York, New York
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`SO ORDERED.
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`Paul G. Gardephe
`United States District Judge
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`5
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