Case 1:14-cv-02396-PGG-SN Document 214 Filed 06/16/20 Page 1 of 4
`
`12424
`Wilshire Boulevard
`
`12th Floor
`Los Angeles
`California
`90025
`
`
`Tel 310.826.7474
`Fax 310.826.6991
`www.raklaw.com
`
`
`
`
`
`
`
`
`
`
`Amy E. Hayden
`ahayden@raklaw.com
`
`
`June 16, 2020
`
`Via ECF
`
`Hon. Paul G. Gardephe
`United States District Court
`Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
`
`Re: Network-1 Technologies, Inc. v. Google LLC, et al., Nos. 1:14-cv-2396-
`PGG-SN & 1:14-cv-9558-PGG-SN
`
`
`Dear Judge Gardephe:
`
`Plaintiff Network-1 Technologies, Inc. (“Network-1”) and Defendants Google LLC and
`
`YouTube, LLC (collectively “Google”) respectfully seek the Court’s guidance in setting a deadline
`for filing letters describing the grounds for proposed dispositive motions in accordance with Rule
`IV.A of the Court’s Individual Rules of Practice in Civil Cases.
`
`The Court held an initial claim construction hearing in these cases on November 21, 2019.
`
`The Court has not yet set a date to continue that claim construction hearing. Since then, the parties
`have exchanged expert reports and agreed to a deadline of July 31, 2020 for completing expert
`discovery. See Dkt. No. 213 (order entering the parties’ stipulation).1 The parties have been unable
`to reach agreement on the appropriate deadline for seeking leave to file motions for summary
`judgment or other dispositive motions pursuant to Rule IV.A. Both parties agree that the deadline
`for filing the letters described in Rule IV.A should be after the close of expert discovery. Network-
`1 submits that the deadline should be 14 days after the completion of expert discovery. Google
`submits that the deadline should be the later of 14 days after the completion of expert discovery or
`14 days after the Court’s resolution of the outstanding claim construction issues.
`
`The parties conferred about this issue by telephone on March 6, 2020, but were unable to
`reach agreement. The parties’ positions on the matter are set forth below.
`
`
`
`
`
`
`1 All citations to the docket refer to docket entries in Case No. 1:14-cv-2396-PGG-SN.
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 214 Filed 06/16/20 Page 2 of 4
`
`Hon. Paul G. Gardephe
`June 16, 2020
`Page 2
`
`Network-1’s Position
`
`In Network-1’s view, the Court should not postpone the submission of letters concerning
`
`proposed dispositive motions until all claim construction issues are resolved.
`
`First, prior to the Court entering the parties’ stipulations to extend the expert discovery
`period (Dkt. Nos. 209, 211, 213), the Court’s scheduling orders did not contemplate tying
`dispositive motion letter briefing deadlines to a resolution of all claim construction issues. See,
`e.g., Dkt. Nos. 189, 200. Rather, the deadline for letters seeking leave to file dispositive motions
`was set for fourteen days after the close of expert discovery, with opposition letters due seven days
`later. See, e.g., Dkt. No. 200 at 1. Network-1 sees no reason to deviate from the previously set
`forth schedule for letter briefing concerning proposed dispositive motions.
`
`Second, proceeding with the dispositive motion letter briefing shortly after expert
`discovery is completed, as contemplated by the Court’s prior scheduling orders, will not result in
`inefficiencies. Rather, the letter briefing process will allow the parties and the Court to evaluate
`whether the proposed summary judgment grounds are of the type that truly rest on the resolution
`of claim construction issues or not. At that time, there would be more information available to the
`Court to decide whether or not formal summary judgment briefing should proceed before a
`Markman order issues. Indeed, the parties may raise summary judgment issues that are entirely
`unrelated to claim construction, or may raise issues that in some sense involve terms yet to be
`construed, but for which briefing may efficiently proceed. Moreover, some Courts in this district
`elect to handle claim construction and summary judgment simultaneously, which depending on
`the issues raised, could be appropriate here. See, e.g., Financeware, Inc. v. UBS Fin. Servs., No.
`11-cv-5503, 2011 U.S. Dist. LEXIS 140608, at *9-10 (S.D.N.Y. Dec. 7, 2011) (Keenan, J.). It is
`impossible for the Court to fully evaluate whether formal summary judgment briefing should
`proceed if the letter briefing process is put on hold.
`
`Third, it is unlikely that the Court’s Markman order will moot the need for summary
`judgment briefing here. As Google recognizes, it challenges only two claims terms as indefinite,
`and those indefiniteness challenges only touch on two of the three patents involved in this case—
`the term “non-exhaustive search” appears in the ’988 and ’464 patent claims and the term
`“correlation information” appears in only the ’464 patent claims. The claims of the ’237 patent do
`not contain any terms that Google contends are indefinite. And the only other disputed term is
`“extracted features,” for which the parties offer similar constructions.
`
`In sum, to avoid unnecessary delay in this case, Network-1 respectfully requests that the
`Court enter the proposed Scheduling Order attached as Exhibit A to this letter. This proposed
`Scheduling Order sets the deadline for the submission of letters concerning proposed dispositive
`motions for fourteen days after the close of expert discovery and the deadline for opposition letters
`seven days after the opening letter. These are the same timeframes contemplated by the Court’s
`prior scheduling orders, before the expert discovery deadline was extended.
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 214 Filed 06/16/20 Page 3 of 4
`
`Hon. Paul G. Gardephe
`June 16, 2020
`Page 3
`
`Google’s Position
`
`
`
`In Google’s view, the deadline to submit letters concerning proposed dispositive motions
`
`should be the later of 14 days after the close of expert discovery or 14 days after the Court resolves
`the claim construction disputes that the parties briefed last year. See Dkt. Nos. 148, 151–53, 158,
`163–64, and 201–02. Google respectfully submits that it would be far more efficient for the parties
`to seek leave to file motions for summary judgment after the Court has resolved the three pending
`claim construction issues.
`
`The claim construction arguments on November 21, 2019 focused principally on whether
`
`the claim term “non-exhaustive search” is indefinite. That term appears in most of the claims
`asserted by Network-1 and affects every asserted claim in two of the three patents at issue in this
`case. See Claim No. 17 of U.S. Patent No. 8,010,988 and Claim Nos. 1, 8, 10, 16, 18, 25, 27, and
`33 of U.S. Patent No. 8,904,464. The Court’s resolution of the parties’ dispute concerning the
`“non-exhaustive search” term has the potential to significantly affect the scope of this case and the
`parties’ summary judgment submissions. There is no reason for the parties and the Court to devote
`resources to briefing and evaluating potential grounds for summary judgment that may be affected
`or mooted by the Court’s resolution of an issue that has already been fully briefed and argued.
`
`The other two claim construction issues before the Court concern whether the term
`
`“correlation information” is indefinite and how the term “extracted features” should be construed.
`Although the former issue need not be decided if the Court determines that “non-exhaustive
`search” is indefinite, the latter term appears in asserted claims that do not contain the term “non-
`exhaustive search.” See Claim Nos. 33–35 of U.S. Patent No. 8,205,237. Thus, the Court’s
`resolution of these issues could also affect the parties’ summary judgment submissions,
`irrespective of how the Court resolves the dispute concerning the indefiniteness of “non-exhaustive
`search.”
`
`There is no sound basis for Network-1’s proposal to proceed with letter briefing and
`
`evaluating grounds for summary judgment before the outstanding claim construction disputes have
`been resolved. Network-1’s proposal could lead to two rounds of summary judgment
`submissions—one that precedes resolution of the disputed claim construction issues and a second
`that follows it. At the very least, Network-1’s proposal will force the parties and the Court to
`waste resources addressing grounds for summary judgment that may be affected or mooted by the
`Court’s claim construction order.
`
`To avoid these unnecessary inefficiencies, the deadline for requesting leave to file
`
`dispositive motions should follow the Court’s resolution of the parties’ outstanding claim
`construction disputes. Google respectfully requests that the Court enter the proposed Scheduling
`Order attached as Exhibit B to this letter.
`
`
`
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 214 Filed 06/16/20 Page 4 of 4
`
`Hon. Paul G. Gardephe
`June 16, 2020
`Page 4
`
`
`
`
`Dated: June 16, 2020
`
`Respectfully submitted,
`
`RUSS, AUGUST & KABAT
`
`BY: /s/ Amy E. Hayden
`
`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)
`Jacob R. Buczko (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
`jbuczko@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.
`
`
`
`
`
`
`WILLIAMS & CONNOLLY LLP
`
`BY: /s/ Samuel Bryant Davidoff
`
`Samuel Bryant Davidoff
`650 Fifth Avenue, Suite 1500
`New York, NY 10022
`212-688-9224
`sdavidoff@wc.com
`
`Bruce R. Genderson (pro hac vice)
`Andrew V. Trask
`Melissa Collins (pro hac vice)
`Graham W. Safty (pro hac vice)
`Sumeet P. Dang (pro hac vice)
`725 Twelfth St. NW
`Washington, DC 20005
`Phone: (202) 434-5000
`Fax: (202) 434-5029
`bgenderson@wc.com
`atrask@wc.com
`mcollins@wc.com
`gsafty@wc.com
`sdang@wc.com
`
`Attorneys for Google LLC and
`YouTube, LLC
`
`
`
`
`
`
`
`