Case 1:14-cv-02396-PGG-SN Document 294 Filed 03/14/23 Page 1 of 4
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` March 14, 2023
`
`
`Via ECF
`
`Hon. Paul G. Gardephe
`United States District Court
`for the Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
`
`Re: Network-1 Technologies, Inc. v. Google, Inc., et al., Case No. 1:14-cv-
`02396-PGG; Network-1 Technologies, Inc. v. Google, Inc., Case No.
`1:14-cv-09558-PGG
`
`
`Dear Judge Gardephe:
`
`We write on behalf of Plaintiff, Network-1 Technologies, Inc. (“Network-
`1”) in these two related actions to request a scheduling conference at the Court’s
`earliest convenience to set a firm schedule for resolution of the remaining
`motions and trial. These cases have been pending for nearly nine years without
`the setting of a trial date, and the pending motions have been pending for between
`5 and 27 months without action by the Court.
`
`Background
`
`These cases were both filed in 2014. The first (the 2396 Case) was filed on
`April 8, 2014. The second, related case, was filed December 3, 2014. In July 2015,
`after significant fact discovery had been completed, these actions were stayed
`pending the final written decisions in IPR proceedings involving the patents-in-suit
`in the 2396 case and a CBM proceeding involving the patent-in-suit in the 9558
`case. Dkt. # 85.1 After the IPR and CBM proceedings concluded with Final Written
`Decisions upholding all asserted claims, defendants sought further stay pending
`their appeal of these decisions. Network-1 opposed such a further stay. The Court
`granted an extension of the stay on November 17, 2016. Dkt. # 116. The Federal
`Circuit affirmed the decision as to all claims in the CBM proceeding addressing the
`patent at issue in the 9558 case on January 23, 2018. The Federal Circuit issued its
`
`
`1 Unless otherwise noted, all docket number references are to the 2396 case.
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 294 Filed 03/14/23 Page 2 of 4
`
`Hon. Paul G. Gardephe
`March 14, 2023
`Page 2
`ruling in the appeals involving the IPR proceedings for the patents at issue in the
`2396 case on March 26, 2018.
`
`On January 24, 2019, after these actions were stayed for three and one-half
`years, the Court conducted a status conference and formally lifted the stay. The
`parties proceeded with remaining fact discovery and claim construction briefing.
`The claim construction briefing was completed on August 9, 2019, with a claim
`construction hearing initially scheduled for August 26, 2019. The Court
`subsequently adjourned that hearing first to October 25, 2019 (Dkt. # 165) and then
`to November 21, 2019 (Dkt. # 185). The Court conducted a claim construction
`hearing on November 21, 2019 and received supplemental letters regarding issues
`raised by the Court on November 26 and 27, 2019. The Court indicated during the
`claim construction hearing that it intended to schedule some further hearing date to
`address some issues that were not covered during the November 21 hearing. To
`date, the Court has issued no rulings on claim construction and has not set a further
`date for any further claim construction hearing.
`
`Fact discovery in these cases was already completed by the time of the claim
`construction hearing. The parties exchanged opening expert reports on December
`20, 2019 and rebuttal expert reports on February 14, 2020. Pursuant to a stipulation,
`the Court set April 24, 2020 as the date for completion of expert depositions. Dkt.
`# 209. Because of the global pandemic, the parties ultimately stipulated to adjust
`the timing for completion of expert depositions to July 31, 2020, which was
`accepted by the Court. Dkt. # 213. All expert depositions were completed by July
`31, 2020.
`
`On June 29, 2020, the Court indicated that it would decide claim
`construction issues concurrently with summary judgment issues, and directed the
`parties to submit a briefing schedule for summary judgment. Dkt. # 219. Summary
`judgment briefing was completed and submitted to the Court by November 12,
`2020. Both parties requested oral hearing on the parties’ respective summary
`judgment motions on November 19, 2020. On February 17, 2021, pursuant to this
`Court’s Individual Rules of Practice, Network-1 submitted a letter informing the
`Court that the parties’ motions for summary judgment had been fully submitted for
`more than ninety days. Dkt. # 246.
`
`Later in February, 2021, Google purported to serve new supplemental
`responses to its contention interrogatory responses, asserting that it wished to rely
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 294 Filed 03/14/23 Page 3 of 4
`
`Hon. Paul G. Gardephe
`March 14, 2023
`Page 3
`on some new evidence and arguments that were not disclosed during fact or expert
`discovery. Network-1 objected and after attempts to confer regarding these issues,
`the parties submitted a joint discovery letter on these issues. Dkt. # 248. These
`issues were referred to the Magistrate Judge who directed that the parties should
`conduct discovery regarding Google’s new arguments. The parties stipulated that
`such discovery, including depositions of various Google witnesses would be
`completed by July 15, 2021. Due to various scheduling delays for Google
`witnesses, however, the depositions were not completed until November 18, 2021.
`
`Following completion of this additional discovery, the parties submitted a
`letter to the Court regarding supplemental expert reports, and the possible impact
`of such supplemental reports on the pending motions for summary judgment. Dkt.
`# 265. The Court set a schedule for such supplemental reports and for supplemental
`briefing on Google’s pending motion for summary judgment to be completed by
`September 30, 2022. Dkt. # 266. The parties completed the supplemental briefing
`by September 30. On January 6, 2023, pursuant to the Court’s Individual Rules of
`Practice, the parties jointly notified the Court that all summary judgment briefing
`was fully submitted for more than ninety days. Dkt. # 293.
`
`After the parties completed supplemental expert reports, Google sought to
`exclude a portion of Network-1’s supplemental report. This Court referred the issue
`to the Magistrate Judge, who granted Google’s request. Dkt. # 283. Network-1
`timely objected to that order on October 31, 2022. Dkt. # 285. Briefing on
`Network-1’s objection was completed on November 18, 2022. To date the Court
`has issued no ruling on Network-1’s objection.
`
`Network-1’s Position
`
`Network-1 respectfully requests a conference with the Court, either
`telephonic or in-person, to set a firm schedule for the remainder of this case,
`including for resolution of the pending motions for summary judgment, and for
`pretrial and trial proceedings. As noted at the outset, these cases have been pending
`for nearly nine years without setting a timetable for trial. Network-1’s motion for
`summary judgment has been fully submitted for more than twenty-seven months
`without resolution. Google’s motion for summary judgment has also been pending
`for more than twenty-seven months, though the parties provided supplemental
`briefing addressing one particular aspect of that motion more recently, even with
`the supplemental briefing, the motion has been pending for more than five months.
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 294 Filed 03/14/23 Page 4 of 4
`
`Hon. Paul G. Gardephe
`March 14, 2023
`Page 4
`
`Network-1 is happy to discuss with the Court any approaches that might
`lead to timely resolution, but remains concerned with the long pendency of these
`issues. Network-1 is a publicly-traded company with significant rights at stake in
`this lawsuit. The damages claimed in this case exceed $300 million. Network-1
`seeks to have its claims timely adjudicated by a jury and respectfully requests that
`the Court’s set a scheduling conference to set firm deadlines to facilitate such a trial
`on the merits.
`
`Sincerely,
`Russ, August & Kabat
`
`/s/ Marc A. Fenster
`
`Marc A. Fenster
`
`cc: Bruce R. Genderson (via ECF)
`
`