Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 1 of 11
`Case 1:14-cv-02396—PGG-MHD Document 176-5 Filed 10/01/19 Page 1 of 11
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`Case 1:14-cv-02396—PGG-MHD Document 176-5 Filed 10/01/19 Page 1 of 11
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`EXHIBIT E
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 2 of 11
`J1OVNETC
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`1
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`------------------------------x
`
`NETWORK-1 TECHNOLOGIES, INC.,
`
` Plaintiff,
`
` v. 14 CV 2396 (PGG)
` 14 CV 9558 (PGG)
`
`
`
`GOOGLE LLC, et ano,
`
` Defendants. CONFERENCE
`
`------------------------------x
` New York, N.Y.
` January 24, 2019
` 10:10 a.m.
`
`Before:
`
`
`HON. PAUL G. GARDEPHE,
`
`
` District Judge
`
`
`APPEARANCES
`
`RUSS AUGUST & KABAT
` Attorneys for Plaintiff
`BY: MARC A. FENSTER
` -AND-
`AMSTER ROTHSTEIN & EBENSTEIN
`BY: CHARLES R. MACEDO
`
`WILLIAMS & CONNOLLY
` Attorneys for Defendants
`BY: KEVIN HARDY
` ANDREW TRASK
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 3 of 11
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`2
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`THE DEPUTY CLERK: Calling the case of Network-1
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`Technologies, Inc. v. Google LLC, et al.
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`Is the plaintiff ready?
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`MR. FENSTER: Yes.
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`THE DEPUTY CLERK: Please state your appearances.
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`MR. FENSTER: Good morning, your Honor.
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`Marc Fenster with Russ, August & Kabat, on behalf of
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`plaintiff.
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`With me is Charles Macedo from Amster Rothstein.
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`THE DEPUTY CLERK: Defendant ready?
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`MR. HARDY: Yes, we are.
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`THE DEPUTY CLERK: Please state your appearance.
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`MR. HARDY: Kevin Hardy from Williams & Connolly.
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`With me is Andrew Trask, also with Williams &
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`Connolly.
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`THE COURT: All right.
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`This case has been long delayed as a result of related
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`proceedings in the patent office and then appeals related to
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`what was going on there.
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`The parties recently agreed that the stays on the
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`matters pending before me could be lifted, and they have
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`submitted a lengthy stipulation concerning a wide variety of
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`matters. Let me just address one.
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`And that is, I believe there's a stipulation that
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`Counts Three and Four from the case ending in 2396, that those
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 4 of 11
`J1OVNETC
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`3
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`Counts Three and Four should be dismissed without prejudice.
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`Is that correct?
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`MR. FENSTER: Yes, your Honor.
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`THE COURT: All right.
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`So I am going to enter an order today dismissing
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`Counts Three and Four of the complaint in Docket No.
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`14 CV 2396. I'll be dismissing those complaints without
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`prejudice on consent.
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`The parties have submitted a proposed case management
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`plan which, as always in patent cases, is quite lengthy. The
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`proposal is that fact discovery continue through September of
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`this year.
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`Let me inquire of plaintiff what exactly fact
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`discovery is going to look like, how many depositions are
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`likely to be taken, etc.?
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`MR. FENSTER: Good morning, your Honor.
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`So just to recap, from the first case we had completed
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`most of the discovery at the time of the stay back in 2015; and
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`the second case regarding the '464, discovery had yet to begin.
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`So now the parties have agreed to consolidate the
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`cases and extend discovery through September. So we'll be
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`taking additional depositions primarily related to updating the
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`technology.
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`So Google has changed their system, made some changes
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`to the accused system that were contemplated at the time, and
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 5 of 11
`J1OVNETC
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`have now been implemented. So we'll have a few tech
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`depositions, some regarding licensing and damages, and so I
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`anticipate maybe five to seven depositions or so.
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`We've agreed that the discovery that was exchanged and
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`conducted in connection with the first case applies to the
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`second case, so the parties won't be duplicating any of the
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`discovery that had been previously done.
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`So there will be some written updated discovery with
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`respect to the '464. There's still some document discovery
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`that needs to be done. Most specifically, updating the
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`technical documents, some damages documents, and the source
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`code have not yet been produced. Prior to the stay, the
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`parties had reached an agreement regarding what source code
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`would be produced and some of the procedures around that at the
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`time of the stay. So source code will be a big part of the
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`ongoing discovery.
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`THE COURT: All right. Let me give the same question
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`to defense counsel: How do you see fact discovery proceeding,
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`and why is it necessary for it to continue through September of
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`this year?
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`MR. HARDY: Sure.
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`So Kevin hardy for the defendants, your Honor.
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`I believe Mr. Fenster has accurately summarized the
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`state of play.
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`I think significantly, for purposes of the timing for
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 6 of 11
`J1OVNETC
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`5
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`discovery, essentially the case proceeded in 2015 where the
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`accused technology as it existed at that time was the subject
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`of fairly extensive discovery. We now find ourselves with --
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`there have been significant changes to and, in fact, sort of
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`the new system that had just been identified at the time and
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`stage and place in 2015, but is now the operable, relevant
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`accused system. And with respect to that system, the parties
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`really have not engaged in any meaningful discovery. For
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`example, document collection had not occurred.
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`And this particular accused technology is not located
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`in one specific office of Google or even necessarily in one
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`country; so it will require sort of a de novo search for and
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`production of what I anticipate will be a fairly significant
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`number of documents. And then we will -- as Mr. Fenster
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`alluded to, I think it will be appropriate to go back and
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`update some of the written discovery responses and also some of
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`the deposition testimony to account for the new system.
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`And then, in addition to that, with respect to what we
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`have called Case 1, as your Honor is aware, there has been a
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`substitution of claims for one of the patents. Some of the
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`claims that are now being asserted were not previously
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`asserted. And there are some claim terms in those additional
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`claims that the parties hadn't previously addressed either or
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`exchanged proposed constructions or, for example, addressed
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`from an invalidity perspective.
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 7 of 11
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`6
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`So I anticipate, from the defendants' perspective, we
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`will be responding to and supplementing our existing discovery,
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`but also we will be seeking third-party discovery to potential
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`prior art patents and other invalidity defenses.
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`THE COURT: Can you estimate how many depositions you
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`might be taking?
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`MR. HARDY: I think probably in the order -- a similar
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`magnitude that Mr. Fenster indicated, around half a dozen, I
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`anticipate is what we are looking at from the defense side.
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`THE COURT: All right.
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`Well, I think, unfortunately, this is one of those
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`situations where the technology has been sort of a moving
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`target. And based on what I've heard from the lawyers, it is
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`apparent that despite the fact the case has been pending for so
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`many years, there's still a substantial amount of discovery to
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`be taken.
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`So I will adopt your suggestion as to the time period
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`for fact discovery. You have laid out a briefing schedule
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`regarding claim construction which takes us through July of
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`2019.
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`So my question is when do counsel think it would be
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`useful for me to schedule a hearing on claim construction,
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`given all of the moving parts in the case? I was thinking
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`October, but tell me what you think.
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`MR. FENSTER: Your Honor, for the plaintiff, we would
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 8 of 11
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`think that a claim construction hearing in August would be
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`preferable. If we can get some guidance, although I know we
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`may not have a claim construction order. But having the
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`hearing in advance of the close of fact discovery would be
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`helpful from our perspective and certainly before the expert
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`discovery starts and expert reports.
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`So having the claim construction -- we want to
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`maximize the chance -- I think both parties do -- that the
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`Court is able to give us a claim construction order, if we have
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`a hearing, prior to expert reports.
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`THE COURT: Right.
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`All right. Does defense counsel have any views on
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`when it would be most desirable to have a claim construction
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`hearing?
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`MR. HARDY: Nothing really additional to what
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`Mr. Fenster said. I think we share the view that it would be
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`helpful -- if the Court is able and it works with the Court's
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`schedule -- to try to get a hearing and, if possible, a ruling
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`before expert discovery begins so that that process can proceed
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`as efficiently as possible.
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`THE COURT: All right.
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`Okay. Let's find a date.
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`I think I'm going to put it down for the last week of
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`August. Probably pretty open then, I suspect.
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`THE DEPUTY CLERK: August 26th at 9:30 or 10 o'clock
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 9 of 11
`J1OVNETC
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`is available, your Honor.
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`THE COURT: Do the lawyers have any problems or
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`difficulties the last week of August I should be aware of? No?
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`MR. FENSTER: No, your Honor, not for plaintiff.
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`MR. HARDY: Nor for defense.
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`THE COURT: All right.
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`So we'll put it on for August 26th at 10 a.m.
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`MR. FENSTER: Your Honor, may I inquire as to whether
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`it's the Court's practice or desire to have a tutorial in
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`advance of/at the beginning of the hearing?
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`THE COURT: Yes.
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`MR. FENSTER: At the beginning of the hearing on
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`August 26?
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`THE COURT: At the beginning of the hearing, yes.
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`MR. FENSTER: Thank you, your Honor.
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`THE COURT: All right. In terms of the remaining
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`dates in the case management plan, I'll adopt your proposals as
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`to expert discovery and a submission of post-discovery
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`dispositive motion letters. I won't set a conference yet on
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`discussion of those letters.
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`I'm going to see you just to check in with you as to
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`how discovery is going during the discovery period that we've
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`agreed to. So I'd like to check in with you in, say, four
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`months from now just to make sure that things are proceeding in
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`an appropriate fashion.
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 10 of 11
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`So today is the 24th. So I guess what we are talking
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`about is May -- in the vicinity of May 23rd, Mike.
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`THE DEPUTY CLERK: Your Honor, May 23rd, 12:30 is
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`available.
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`THE COURT: How is that for everybody, May 23rd,
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`12:30, for check-in on discovery?
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`MR. FENSTER: Fine for plaintiff, your Honor.
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`MR. HARDY: Likewise.
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`THE COURT: Okay. All right.
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`So we'll have a conference on May 23rd at 12:30 just
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`to check in, see how discovery is going. I'll enter a case
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`management plan consistent with what we've discussed today.
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`Anything anyone else wants to say today?
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`MR. FENSTER: Not for plaintiff, your Honor.
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`Just for the record, the parties' goal, given the long
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`delay in this case, is to get to trial -- certainly for
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`plaintiff -- as quickly as possible. We've put together a
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`schedule -- and I thank your Honor for adopting it -- that we
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`aim to get to trial. The parties were aiming for late June
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`2020, just so you had that in mind.
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`THE COURT: Okay. I'm anxious to move the case
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`forward too, but patent cases, they always take a long time.
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`And this one, obviously we've lost years because of the
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`parallel proceedings going on. So there's not much I can do
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`about that.
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`Case 1:14-cv-02396-PGG-MHD Document 176-5 Filed 10/01/19 Page 11 of 11
`J1OVNETC
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`But certainly now that the cases are going to be
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`proceeding before me, I will join you in that desire to move it
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`forward as fast as we can, understanding the complexities.
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`Anything else?
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`MR. HARDY: Not from the defendants, your Honor.
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`Thank you.
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`THE COURT: All right. Thank you, all.
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`* * *
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