Case 1:14-cv-02396-PGG-SN Document 265 Filed 07/07/22 Page 1 of 4
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`Brian Ledahl
`bledahl@raklaw.com
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`July 7, 2022
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`Via ECF
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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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`Re: Network-1 Technologies, Inc. v. Google LLC, et al., Nos. 1:14-cv-2396-
`PGG-SN & 1:14-cv-9558-PGG-SN
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`Dear Judge Gardephe:
`Pursuant to the Court’s Memorandum Order (Case No. 2396, Dkt. # 264),
`Plaintiff Network-1 Technologies, Inc. (“Network-1”) and Defendants Google LLC and
`YouTube, LLC (collectively “Google”) respectfully submit this joint letter setting forth
`their respective positions as to whether the stipulated supplemental discovery authorized
`by Judge Netburn’s May 7, 2021 Order, including any supplemental expert reports, has
`any impact on the parties’ pending cross-motions for summary judgment.
`Plaintiff’s Position
`Judge Netburn’s Order, issued pursuant to stipulation of the parties after a hearing
`with the Court, authorized certain discovery after the close of the fact discovery period.
`The Parties completed that fact discovery consistent with the stipulated Order. The Order
`also provided that the parties reserved the right to seek leave to serve supplemental expert
`reports in light of the additional discovery. The parties have discussed the issue of
`additional expert reports and have agreed that service of such additional reports is
`appropriate (without prejudice to Network-1’s positions referenced in paragraph 11 of
`Judge Netburn’s Order).
`In discussion of the service of supplemental expert reports, Network-1 has
`requested that Google also provide supplemental sales/revenue information for time
`periods after the close of fact discovery that are implicated by the claims at issue. This
`will allow any supplemental expert reports to also include this material, rather than
`requiring unnecessary serial rounds of expert supplementation. Google has agreed to
`provide such information, but has not yet done so, and has not provided a specific time by
`which it will provide such information. Once that information is provided, Network-1
`believes that the parties can promptly complete any expert report supplementation.
`Network-1 anticipates that the supplemental expert reports, which have not yet
`been completed, will implicate one issue in connection with Google’s motion for
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`Case 1:14-cv-02396-PGG-SN Document 265 Filed 07/07/22 Page 2 of 4
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`Hon. Paul G. Gardephe
`July 7, 2022
`Page 2
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`summary judgment (Case No. 2396, Dkt. # 223; Case No. 9558, Dkt. # 158). Network-1
`anticipates that this issue will be addressed in a supplemental report from its expert,
`Professor Mitzenmacher, and that the issues relevant to the summary judgment motion
`can be presented in a brief supplemental submission and accompanying declaration.
`Network-1 does not anticipate that any of the pending supplemental expert materials will
`impact Network-1’s pending motion for summary judgment regarding invalidity
`defenses. Google suggests that the parties previously agreed that the supplemental
`discovery would not impact the summary judgment motions, but points to submissions
`before the discovery was actually taken. In the discovery itself, Network-1 learned of
`adjustments to the technical operation of Google’s ContentID system which Google had
`not disclosed prior to the supplemental discovery authorized by Judge Netburn. That
`information contradicted factual assertions made by Google in its summary judgment
`motion, and confirmed factual assertions made by Network-1 in opposing that motion.
`Network-1 should be permitted to present that material to the Court.1
`Accordingly, Network-1 respectfully requests that the Court order Google to
`provide its updated sales/revenue information by not later than July 21. Network-1
`proposes that it will provide its supplemental expert report(s) within 21 days after receipt
`of that material, and that Google may provide any supplemental rebuttal reports within 21
`days thereafter. Network-1 will then submit any supplemental material regarding
`Google’s pending summary judgment motion within 7 days after completion of those
`reports and Google may provide any response within 7 days thereafter. While Google is
`correct that the parties agreed to work cooperatively to arrive at such a schedule,
`Network-1 has been seeking to get Google’s supplemental financial information for
`nearly a year without success, suggesting that assistance from the Court is now needed.
`Google’s Position
`The stipulated supplemental discovery authorized by Judge Netburn involves
`issues in the case that are not the subject of either party’s motion for summary judgment,
`and the supplemental discovery therefore has no impact on those pending motions. As
`Google stated in a letter to the Court dated April 7, 2021, “[t]he new evidence does not
`affect the pending summary judgment motions.” See 1:14-cv-2396, Dkt. 249, at 3-4.
`Network-1 confirmed the same to Judge Netburn at a hearing on April 22, 2021: “You
`had also asked about the effect on the summary judgment briefing that’s currently
`outstanding with the Court. It’s Network-1’s view that this evidence does not affect that
`briefing.” See 1:14-cv-2396, Dkt. 253, at 7:12-15.
`Google denies that it has ever infringed any claim of Network-1’s patents.
`Google also has explained that even if Network-1’s patents were valid and infringed (and
`they are neither), the patents have relatively little value, because it would have been
`simple to design around them by moving relevant functionality outside the United States.
`In January 2021, Google did just that, removing any argument regarding ongoing
`infringement and demonstrating the relative ease and minimal cost of designing around
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`1 Google inserts a number of arguments about the merits that are neither correct, nor germaine to this submission.
`Network-1 will not address them here, but reiterates its request that the Court conduct an oral hearing on the parties’
`cross-motions for summary judgment.
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`Case 1:14-cv-02396-PGG-SN Document 265 Filed 07/07/22 Page 3 of 4
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`Hon. Paul G. Gardephe
`July 7, 2022
`Page 3
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`the patents. See 1:14-cv-2396, Dkt. 249, at 3-4. The parties then engaged in targeted
`supplemental discovery relating to the relocation.
`Neither the supplemental discovery nor the relocation of portions of Google’s
`accused system is relevant to the pending motions for summary judgment. Network-1’s
`summary judgment motion is limited to issues involving patent invalidity. Google’s
`motion likewise addresses patent invalidity, as well as certain bases on which Google’s
`systems do not infringe Network-1’s patents. Critically, the non-infringement issues in
`Google’s motion involve the alleged infringement of Google’s systems prior to their
`relocation abroad in 2021.
`Until the parties filed this joint letter, they agreed that the relocation-related
`supplemental discovery would not affect the pending motions for summary judgment. As
`noted above, both Google and Network-1 informed the Court in April 2021 that (in
`Network-1’s words) “this evidence does not affect” the summary judgment briefing. In
`granting the supplemental discovery, the Court likewise assumed it would not affect the
`parties’ summary judgment motions: “Whether or not this evidence would affect the
`pending motions for summary judgement, nobody has suggested that so I’m assuming
`that that is true that it does not affect those motions.” See 1:14-cv-2396, Dkt. 253, at
`6:2-5. And the parties’ agreement is consistent with the terms of the Court-ordered
`stipulation regarding supplemental discovery, in which Network-1 reserved the right to
`file “motions in limine and/or Daubert motions” but never sought a right to file any
`supplemental summary-judgment submission. See 1:14-cv-2396, Dkt. 256, at ¶ 11.
`Because the supplemental discovery has no impact on the parties’ summary
`judgment motions, Google respectfully requests that the Court deny Network-1’s request
`for leave to supplement its summary judgment papers.
`Although the Court did not solicit the parties’ input on the other issues raised in
`Network-1’s portion of this joint letter, Google offers the following brief response. There
`is no need for the Court to order a schedule for supplemental expert discovery at this
`time. Judge Netburn ordered the parties to “work cooperatively in an attempt to reach a
`mutually agreeable expert discovery schedule.” See 1:14-cv-2396, Dkt. 256, at ¶ 10.
`Google is confident the parties can agree on a schedule that is workable for all parties and
`experts. The Court likewise need not address the issue of updated financial data. As
`Network-1 acknowledges, Google has already agreed to provide such data to Network-1.
`Google will do so as soon as possible, and in all events no later than August 5, 2022.
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`Case 1:14-cv-02396-PGG-SN Document 265 Filed 07/07/22 Page 4 of 4
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`Hon. Paul G. Gardephe
`July 7, 2022
`Page 4
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`Dated: July 7, 2022
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`Respectfully submitted,
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`RUSS, AUGUST & KABAT
`BY: s/ Brian D. Ledahl
`
`Marc A. Fenster (pro hac vice)
`Brian D. Ledahl (pro hac vice)
`Adam S. Hoffman (pro hac vice)
`Paul A. Kroeger (pro hac vice)
`Jacob R. Buczko (pro hac vice)
`Amy E. Hayden (pro hac vice)
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
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`mfenster@raklaw.com
`bledahl@raklaw.com
`ahoffman@raklaw.com
`pkroeger@raklaw.com
`jbuczko@raklaw.com
`ahayden@raklaw.com
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`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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`
`
`WILLIAMS & CONNOLLY LLP
`BY: s/ Andrew V. Trask (w/ permission)
`
`Thomas H. L. Selby (pro hac vice)
`Samuel Bryant Davidoff
`Andrew V. Trask
`Melissa Collins (pro hac vice)
`Graham W. Safty (pro hac vice)
`680 Maine Ave., SW
`Washington, DC 20024
`Phone: (202) 434-5000
`Fax: (202) 434-5029
`tselby@wc.com
`sdavidoff@wc.com
`atrask@wc.com
`mcollins@wc.com
`gsafty@wc.com
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`Kevin Hardy (pro hac vice)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
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`Washington, DC 20005
`Phone: (202) 538-8000
`Fax: (202) 538-8100
`kevinhardy@quinnemanuel.com
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`Attorneys for Google LLC and
`YouTube, LLC
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`