Case 6:11-cv-00492-LED-JDL Document 374
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`Filed 01/25/13 Page 1 of 19 Page|D #: 2579
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`UNITED STATES DISTRICT COURT
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`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`NETWORK-1 SECURITY SOLUTIONS, INC.
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`Plaintiff,
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`) Civil Action No.2 6:11-cv—00492-LED-JDL
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`) )
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`V.
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`ALCATEL-LUCENT USA, INC., et al.,
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`Defendants.
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`DEFENDANTS’ MOTION TO STAY PENDING INTER PAR TES REVIEW
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`With the enactment of the America Invents Act, Congress replaced the pre-existing inter
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`partes reexamination procedure (“IPX”) with an improved inter partes review procedure
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`(“1PR”).1 Congress’s intent was to provide a “faster, less costly alternative[] to civil litigation to
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`challenge patents.”2 To date, the only federal court known to rule on a motion to stay pending an
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`IPR granted the motion. 3 The Semiconductor court based its decision in part on the strengthened
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`IPR provisions, which set a strict timeline for considering validity challenges.4 While this Court
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`has yet to address the issue, the Court has noted in the context of stays pending ex parte
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`reexaminations that it “generally makes sense to await the conclusion of a reexamination before
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`1
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`2
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`Pub. L. No. 112-29, § 314(a), 125 Stat. 284 (2011).
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`157 CONG. REC. S952 (daily ed. Feb. 28, 2011) (statement by Senator Grassley).
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`Semiconductor Energy Lab. Co. v. Chimei Innolux Corp., No. 8: 12—cv—0O021-JST—JPR,
`3
`ECF No. 116, at 4 (C.D. Cal. Dec. 19, 2012) (reasoning, inter alia, that the “amended standards
`for granting inter partes review probably results in an even higher likelihood than under the prior
`standard that the issues in this action will be simplified by [review]”) (Exhibit A).
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`Id., at 6 (noting that the timing is “significantly less than the delay caused by the old
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`[IPX] procedure”).
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`N1—20l0
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`resuming litigation.”5 As discussed herein and as reflected in the Semiconductor opinion, the
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`same logic applies with greater force due to inherent safeguards and emphasis on speed in the
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`new IPR procedure.
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`Taking advantage of this new procedure, Defendants Avaya Inc. (“Avaya”), Sony
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`Corporation of America (“Sony”), and Axis Communications AB and Axis Communications Inc.
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`(collectively “Axis”) have collectively filed two IPR petitions with the United States Patent and
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`Trademark Office (“PTO”) challenging the validity of U.S. Patent No. 6,218,930 (“the ’930
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`patent”), the only patent asserted by Plaintiff Network-1 Security Solutions, Inc. (“Network-1”)
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`in this case. The IPR petitions, one filed on December 5, 2012 and the other filed on December
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`19, 2012, each set forth bases for the cancellation of claims 6 and 9 (the only two claims asserted
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`by Network-1) of the ’930 patent.6 Prior art asserted in the petitions is highly relevant,
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`invalidates claims 6 and 9, and was not considered by the PTO during the original examination
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`of the ’930 patent application. Also, once the PTO grants either IPR petition,7 the PTO will rule
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`that the petitions have a reasonable likelihood of success, a higher standard than the prior IPX
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`standard. The PTO will then face an obligation under 35 U.S.C. § 316(a)(11) to issue a final
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`determination within one year.
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`Spa Syspatronic, AG v. VeriFone, Inc., No. 2:07-CV-00416-JDL, 2008 WL 1886020, at
`5
`*1 (E.D. Tex. Apr. 25, 2008) (Love, J .).
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`The petition filed by Sony and Axis also seeks the cancellation of claim 8 of the ’930
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`6
`patent.
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`The PTO has yet to grant either petition, and thus has not initiated either IPR.
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`Defendants have moved now to have this motion fully briefed by the time the PTO grants the
`IPRS. See Spa Syspatronic, AG v. VeriF0ne, Inc., No. 2:07-CV-00416—JDL, Order, ECF No. 79
`(E.D.Tex. Apr. 2, 2008) (Love, J.) (taking under advisement motion that was fully briefed before
`the PTO granted an ex parte reexamination) (Exhibit B). Alternatively, the Court could also
`grant the motion before the PTO grants the IPRs. See Semiconductor, No. 8: 12-cv—0OO21-JST-
`JPR, ECF No. 116, at 4 (granting stay before PTO granted the IPR based on reasoning that “if
`the [PTO] rejects the inter partes requests, the stay will be relatively short”).
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`Courts “generally look favorably on granting stays pending reexamination” if the stay is
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`unlikely to prejudice the plaintiff and the motion is filed early in the case.8 With respect to
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`prejudice, patent holding companies——such as Network—1——cannot suffer material prejudice as a
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`result of a stay, for they can be adequately compensated by monetary damages. Moreover, there
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`is no chance of undue prejudice due to delay given the one-year statutory timeline for IPRS,
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`which is far less than the average pendency for IPX or ex parte reexaminations.9 With respect to
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`the stage of this lawsuit, the case is still in its infancy, with neither side having served any
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`written discovery and the Markman hearing and trial dates set for September 2013 and December
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`2014, respectively. Avaya, Axis, Sony, Sony Corporation, Sony Electronics Inc., Alcatel-Lucent
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`USA Inc., Alcatel-Lucent Holdings Inc., Dell Inc., Hewlett-Packard Company, Polycom, 1nc.,
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`ShoreTel, Inc., and Juniper Networks, Inc. (collectively, “Defendants”) therefore move for such
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`a stay pending the IPR proceedings.
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`8
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`Spa Syspatronic, 2008 WL 1886020, at * 1.
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`The average pendency for IPX and ex parte reexaminations are 36.1 months and 25.4
`9
`months, respectively. U.S. Patent and Trademark Office, “Inter Partes Reexamination Filing
`Data — June 30, 2012” (June 30, 2012) (Exhibit C).; U.S. Patent and Trademark Office, “Ex
`Parte Reexamination Filing Data - June 30, 2012” (June 30, 2012) (Exhibit D).
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`BACKGROUND
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`A.
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`Network-1 Does Not Offer Products that Compete with the Defendants’
`Products
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`Network-1 is an “intellectual property licensing company” that “focuses on the
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`acquisition, development, licensing and protection of intellectual property assets.”‘° Network-1
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`has no products (let alone products that compete with Defendants) and its entire revenue stream
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`is based on the royalties for the ’93O patent.“
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`B.
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`The Case is in its Infancy Due to Delays Caused by Network-1
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`On September 15, 2011, Network-1 filed suit against Defendants alleging infringement of
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`the ’93O patent. Through a series of events brought about by Network-1, this case is still in its
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`infancy. Network—1 took over three months to effectuate service on all Defendants. Returns of
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`Service, ECF Nos. 31-46. Network-1 also failed to properly plead its original complaint (see
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`ECF No. 145), and the Court ordered Network-1 to amend its complaint on May 23, 2012.
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`Amended Complaint, ECF No. 148. As a result of these delays, this Court did not set the
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`Markman hearing and trial dates of September 19, 2013 and December 8, 2014, respectively,
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`until September 7, 2012, almost one year from the filing of the original complaint. Docket
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`Control Order, ECF No. 237. The parties have begun to exchange disclosures under the Patent
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`Rules, and in particular Network-1 has asserted just two claims (claims 6 and 9) of the ’930
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`No Longer a Security Software Company, Network—1 Security Solutions, Inc. is Helping
`10
`Other Companies Monetize Their Intellectual Property — the First Being a Patent Covering
`Power Over Ethernet, Which is a New Solution to Bringing Operating Power to Network
`Devices, CFOCEO Magazine (January 28, 2011 Issue), available at
`http://www.ceocfointerviews.com/interviews/NSSI-Network-1I 1.htm (“CFOCEO Article”)
`(Exhibit E).
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`”
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`Form I0-Q, Network-1 Security Solutions, Inc. (Nov. 14, 2012) (Exhibit F).
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`patent in its September 20, 2012 Patent Rule 3-1 disclosures. 12 Neither side has served any
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`discovery requests, including interrogatories, requests for admission, or deposition notices or
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`subpoenas.
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`C.
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`The Sparse Original Prosecution History Does Not Help to Simplify the
`Issues
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`The prosecution history of the ’930 patent is virtually non-existent. Without a single
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`rejection or objection of any pending claim, the Examiner allowed the application and stated that
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`“no prior art reference utilizes the an [sic] apparatus for remotely powering access equipment in
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`a data network” with all of the limitations of claim 1.” Notice of Allowability, at 2 (Exhibit H).
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`The Examiner’s search uncovered only 5 references, none of which were applied against the
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`claims and none of which correspond to the prior art cited in the IPR petitions. Notice of
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`References Cited (Exhibit 1). The PTO subsequently issued the ’93O patent on this thin record.
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`D.
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`The Recently—Discovered New Anticipatory Prior Art and IPR Petitions
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`On or about October 1, 2012, Avaya discovered a new prior art reference—U.S. Pat. No.
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`5,754,644 to Akhteruzzaman (“Akhteruzzaman”)—that anticipates at least claims 6 and 9 of the
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`’930 patent. 13 Around the same time, Sony and Axis first obtained a filii English translation of a
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`second prior art reference—Japanese Unexamined Patent Application No. 6-189535 to Satou
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`(“Satou”)——that anticipates claims 6, 8, and 9 of the ’930 patent. None of this prior art was
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`considered by the Examiner of the ’930 patent application.
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`This Court has already invalidated method claims 1-5 in a prior litigation. Mem. Op. and
`12
`Order, Netw0rk~1 Security Solutions, Inc v. Cisco Systems, Inc, et al., No. 6:08—cv—30-LED, ECF
`No. 251 (E.D. Tex. Feb. 26, 2010) (Exhibit G).
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`Avaya discloses the fact of when it discovered Akhteruzzaman without waiver of any
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`attomey-client, work—product, or common interest privilege concerning other matters.
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`After the discovery of these two new pieces of prior art, Avaya timely petitioned the PTO
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`for inter partes review of the ’930 patent on December 5, 2012 seeking cancellation of claims 6
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`and 9 based on Akhteruzzaman and other prior art references. See Petition for Inter Partes
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`Review of U.S. Patent No. 6,218,930 (“Avaya IPR Petition”) (attached as Exhibit J). And on
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`December 19, 2012, Sony and Axis timely filed a second petition for inter partes review seeking
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`cancellation of claims 6, 8, and 9 of the ’930 patent based on Satou and other prior art references.
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`See Petition for Inter Partes Review of U.S. Patent No. 6,218,930 (“Sony-Axis IPR Petition”)
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`(attached as Exhibit K). ‘4 Network-1 has until March 13, 2013 and March 20, 2013,
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`respectively, to file an optional preliminary response to the Avaya and Sony-Axis IPRs. As soon
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`as Network-1 files its preliminary responses (or the dates pass), the PTO is statutorily required to
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`grant or deny both petitions within three months of these dates—i.e., no later than June 20, 2013.
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`Network-1 may optionally notify the PTO if it does not intend to file an optional preliminary
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`response, which would advance the date of required action by the PTO. 15 Once the petitions are
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`instituted, the PTO will have one year to issue final decisions. 35 U.S.C. § 316(a)(l 1).
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`A third post-grant proceeding, an ex parte reexamination, is also pending. On July 20,
`14
`2012, an anonymous party filed a request for ex parte reexamination based on grounds entirely
`independent from the two IPR petitions. On September 5, 2012, the PTO granted the ex parte
`request ordering reexamination of the ’930 in view of substantial new questions of patentability
`relating to six prior art references and claims 6, 8, and 9. The PTO subsequently issued an office
`action that rejected claims 6, 8, and 9 on both anticipation and obviousness grounds. See Exhibit
`L. The PTO has since stayed the ex parte reexamination pending the outcome of the two IPR
`proceedings.
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`In the pending ex parte reexamination, Network-1 did not file an optional patent owner
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`response to the petition, but allowed the two-month period to lapse.
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`ANALYSIS
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`A district court has the inherent power to control its own docket, including the power to
`stay proceedings. Soverain Software LLC Amazon.com, Inc., 356 F. Supp. 2d 660, 662 (E.D.
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`Tex. 2005) (Davis, 1.); see also Landis v. N. Am. C0,, 299 U.S. 248, 254 (1936) (“[T]he power to
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`stay proceedings is incidental to the power inherent in every court to control the disposition of
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`the causes on its docket with economy of time and effort for itself, for counsel, and for
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`litigants”). Optimal management of the Court’s docket “calls for the exercise ofjudgment,
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`which must weigh competing interests and maintain an even balance.” Id at 254—55.
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`In
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`deciding whether to stay litigation pending reexamination, 16 courts primarily consider three
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`factors: (1) whether a stay will unduly prejudice or present clear tactical disadvantage to the
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`nonmoving party, (2) whether a stay will simplify the issues in question and the trial of the case,
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`and (3) whether discovery is complete and whether a trial date has been set. Soverain Software,
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`356 F. Supp. 2d at 562.”
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`In this case, all three factors weigh in favor of granting a stay pending the two IPRs of the
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`’930 patent.
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`As noted by the Semiconductor court, because IPR replaced IPX, the three—factor analysis
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`previously applied to [PX stays should also be applied to IPR stays. Semiconductor, No. 8:12-
`cv-0OO2l—JST-JPR, ECF No. 116, at 2.
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`District courts have also noted a number of other advantages in granting a stay to allow
`17
`the PTO to determine the validity of the patent, including: (1) all prior art presented to the court
`will have been first considered by the PTO with its particular expertise, (2) many discovery
`problems relating to the prior art can be alleviated by the PTO examination, (3) in those cases
`resulting in effective invalidity of the patent, the suit will likely be dismissed, (4) the outcome of
`the reexamination may encourage a settlement without the further use of the court, (5) the record
`of reexamination would likely be entered at trial, thereby reducing the complexity and length of
`the litigation, (6) issues, defenses, and evidence will be more easily limited in pre-trial
`conferences after a reexamination, and (7) the cost will likely be reduced both for the parties and
`the court. See Datatreasury Corp. v. Wells Fargo & Co., 490 F. Supp. 2d 749, 754 (E.D. Tex.
`2006); GPAC, Inc. v. D. W W Enter, Inc., 144 F.R.D. 60, 63 (D.N.J. 1992).
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`A.
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`Network-1 Will Not Suffer Undue Prejudice
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`Network-1 will suffer no undue prejudice if the Court stays the case. See Photoflex
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`Products, Inc. v. Circa 3 LLC, No. C 04——03715, 2006 WL 1440363 at *2 (N.D. Cal. May 24,
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`2006) (“The delay inherent to the reexamination process does not constitute, by itself, undue
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`prejudice”). In particular, Network-1 will not suffer any harm if Defendants continue to make
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`and use the accused products during the stay because Network—1 is a patent holding company
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`that does not make or sell any product or service covered by the ’930 patent. See Implicit
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`Networks, Inc. v. Advanced Micro Devices, Inc., No. C08-184JLR, 2009 WL 35 7902, at *3
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`(W.D. Wash. Feb. 9, 2009) (holding that a technology licensing company “cannot be prejudiced
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`by a stay because monetary damages provide adequate redress for infringement” and noting that
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`courts have “consistently found” accordingly); Roblar Marketing Group, Inc. v. GPS Industries,
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`Inc., 633 F. Supp. 2d 1341, 1347 (S.D. F1. 2008) (finding “no material prejudice” due to the stay
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`pending reexamination where patentee does not produce a product, has no substantial operations,
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`and “appears to exist only as a holding company whose only asset is the [patent in suit]”). Even
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`if Network—1 ultimately prevails without having to amend claims 6 and 9, it will still be entitled
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`to collect damages accrued during the stay. See Patlex Corp. v. Mossinghojj’, 758 F.2d 594, 603
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`(Fed. Cir. 1985).
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`Network—1 has also failed to pursue this case with any urgency. As early as January
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`2011, Network-1 was aware of “over two hundred other companies practicing the same Power
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`over Ethernet standard that we would like to license.” CFOCEO Article. Yet Network-1 waited
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`until September 2011 to bring suit. Once the case was filed, Network-1 also failed to
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`demonstrate any particular urgency to prosecute this case. It has not moved for a preliminary
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`injunction, took over three months to effectuate service of the original complaint, improperly
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`pled its original complaint, and has also failed to serve any discovery requests. See Roblar, 633
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`F. Supp. 2d at 1347 (basing a finding of “no material prejudice” additionally on patentee’s not
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`seeking a preliminary injunction). 18
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`Finally, Avaya, Sony, and Axis have acted diligently in filing their IPR petitions within
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`the statutory period specified by 35 U.S.C. § 315(b). Moreover, the IPR procedure only became
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`available on or alter September 16, 2012, and Defendants could not have petitioned for an IPR
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`prior to that date. See 77 C.F.R. 157, at 48612. The petitions for IPR were also prompted in part
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`by Network-1’s September 20, 2012 infringement contentions, which rely on broad claim
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`constructions that further invite invalidity challenges. Defendants became aware of three of the
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`anticipating pieces of prior art only after searching conducted in response to Network-1 ’s
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`complaint.” The most-recently discovered prior art reference was identified on October 1, 2012.
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`Also, as discussed below with respect to overall timeliness, Defendants move prior to completion
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`of a Markman hearing or significant discovery, all of which weighs in favor of granting a stay.
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`See Spa Syspatronic, 2008 WL 1886020, at *2 n.2.
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`Defendants are aware that this Court, in the context of IPX, has factored in what it
`18
`In
`characterized as the “extreme delay” for inter partes reexamination proceedings to conclude.
`particular, this Court noted one study finding that IPXS took on average 43.5 months to conclude
`where the patentee contested the matter. BarTex Research, LLC v. FedEx Corp., 611 F. Supp.2d
`647, 651 (E.D. Tex. 2009). This is no longer a concern, for the new IPR procedure must
`conclude within one year from granting the petition, absent certain exceptions. 35 U.S.C. §
`316(a)(11). Any appeal time is also streamlined, since [PR5 are appealed directly to the Federal
`Circuit (as opposed to the prior IPX procedure which required appeal first to the Board of Patent
`Appeals and lnterferences and then to the Federal Circuit).
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`New references include the previously mentioned Akhteruzzaman and Satou references,
`19
`in addition to U.S. Patent No. 5,345,592 to Woodmas (“Woodmas”), asserted as a Section 102
`reference in the Sony-Axis IPR petition.
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`B.
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`The Two IPRs Will Simplify the Issues
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`Under the new IPR procedures, the threshold for initiating review is elevated from
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`“significant new question of patentability”—the standard for IPX—to a standard requiring
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`petitioners to present information showing that their challenge has a “reasonable likelihood of
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`success.” This new, higher standard results in an “even higher likelihood than under the prior
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`standard that the issues in this action will be simplified.” See Semiconductor, No. 8: l2—cv0O02l-
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`J ST-JPR, at 4.
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`This Court has noted other factors (all of which are present here) that would tend to
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`simplify the issues:
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`The PTO’s guidance will also have a greater probability of
`simplifying the issues for trial in this case because all of the patents
`and claims that are the subject of this litigation will be before the
`PTO during the reexamination. Even if the PTO does not modify
`any of the claims, the reexamination still potentially focuses the
`issues in the case by either eliminating or validating some of the
`parties’ present disputes over
`the claim terms. Also, claim
`construction will ultimately be simplified because statements made
`during the reexamination become part of the prosecution history,
`which allows a full development of the intrinsic evidence to be
`considered by the Court.
`
`See Spa Syspatronic, 2008 WL 1886020, at *3 (internal citations omitted).
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`On the last point, and as noted above, the prosecution history for the ’93O patent is
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`virtually non-existent on the merits of validity. The record from the two [PR5 will simplify and
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`clarify the claim construction process. Also, without a stay of the litigation, the Court may be
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`faced with the task of construing claim terms of the ’930 patent that Network—1 later amends in
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`the IPRS or that are part of a claim ultimately found to be invalid.
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`Simplification of the issues will also result from the statutory estoppel provision.
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`Whereas statutory estoppel did not attach in an IPX until all appeals were exhausted, under 35
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`U.S.C. § 3l5(e), once the [PR5 result in a final written decision, Petitioners Avaya, Sony, and
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`10
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`Axis may not assert in a civil patent infringement action “that the claim is invalid on any ground
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`that the petitioner raised or reasonably could have raised during that inter partes review.” 35
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`U.S.C. § 3l5(e).
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`As a result of the IPRs, the asserted claims of the ’930 Patent may be found invalid or
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`may have changed scope to such a degree that Network—1 cannot in good faith continue the case
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`against one or more of the moving Defendants. See Genzyme Corp. v. Cobrek Pharms., Inc., No.
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`10-CV—00112, 2011 U.S. Dist. LEXIS 16287, at *1O (N.D. Ill. Feb. 17, 2011) (a stay is merited
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`when the “suit will likely be dismissed if the reexamination results in effective invalidity of the
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`patent”). As a result, the IPR may require that Network—1 dismiss its complaint or it may
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`encourage settlement among the parties. See ia’. (a stay is merited when the “outcome of the
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`reexamination may encourage settlement”); see also Dennco, Inc. v. Cirone, No. 94-455—SD,
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`1995 U.S. Dist. LEXIS 9988, at *3 (D.N.H. July 12, 1995) (granting motion to stay during the
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`pending USPTO proceeding because the “stay might well result in a reduction in the complexity
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`and length of the litigation and may induce settlement without further court intervention”). The
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`interests ofjudicial economy thus warrant a stay.
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`C.
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`The Timing Favors :1 Stay
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`The case is still in its infancy, with the Markman hearing and trial set more than nine
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`months and 24 months, respectively, from the filing of this motion.” Moreover, neither side has
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`served any discovery requests (including interrogatories, subpoenas, or deposition notices) and
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`fact discovery is not set to close until almost a year from now on December 20, 2013. The
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`parties have not yet begun to brief claim construction and the Court has not issued a claim
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`As noted in the Certificate of Conference, Network~1 stipulated, for the purposes of any
`20
`laches or delay arguments, to treat this motion as being filed on January 17, 2013, the day after
`the telephonic meet-and-confer conference between the parties.
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`construction order. Indeed, “considering the general time line of patent litigation, there is more
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`work ahead of the parties and the Court than behind the parties and the Court.” See Tierravision,
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`Inc. v. Google, Inc., No. 11-cv-2170, 2012 WL 559993, at *2 (S.D. Cal. Feb. 21, 2012) (granting
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`stay where Markman briefs were soon due and parties had exchanged proposed claim
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`constructions and extrinsic evidence). Indeed, the requested stay is consistent with the stay
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`granted in Semiconductor Energy, which issued before the petitions for IPR at issue were
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`instituted by the PTO. See Semiconductor, No. 8: l2—cv0002l-JST-IPR, at 2 (noting IPR
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`petitions filed less than a month before issuing the stay order).
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`Finally, the two IPR petitions were filed within the one—year window provided by the
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`AIA, which Congress recognized as a necessary time period for defendants to identify and
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`understand the patent claims. 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (noting that “in
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`light of the present bill’s enhanced estoppels, it is important that the [one year] deadline afford
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`defendants a reasonable opportunity to identify and understand the patent claims that are relevant
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`to the litigation”).
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`CONCLUSION
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`All of the relevant factors weigh in favor of staying the litigation. Consequently,
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`Defendants respectfiilly request that the Court grant the instant motion to stay all proceedings
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`pending final exhaustion of all pending IPR proceedings.
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`Dated: January 25, 2013
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`Respectfully Submitted,
`
`/s/ Deron R. Dacus
`Deron R. Dacus
`State Bar No. 00790553
`Shannon Dacus
`State Bar No. 00791004
`
`THE DACUS FIRM, P.C.
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`

`Case 6:11-cv—OO492-LED-JDL Document 374
`2591
`
`Filed 01/25/13 Page 13 of 19 PagelD #:
`
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Telephone:
`(903) 705-1117
`Facsimile:
`(903) 705-1117
`dclacus((7),dacusfi1'm.com
`
`sdacus@dacusfirm.c-om
`
`/s/ Brian M. Koide
`
`Jeffiey D. Sanok
`Brian M. Koide
`CROWELL & MORING LLP
`
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 2004-2595
`Telephone:
`(202)624-2500
`Facsimile:
`(202) 628-5116
`
`'sanol<,@crowell.com
`bkoide@crowell.com
`
`
`
`Scott L. Bittman
`
`CROWELL & MORING LLP
`590 Madison Avenue, 20”‘ Floor
`New York, NY 10028-2524
`Telephone:
`(212) 895-4223
`Facsimile:
`(212) 895-4201
`
`sbittman(c_Dcrowell.com
`
`Attorneys for Defendant Avaya Inc.
`
`/s/ Elliot C. Cook
`
`Barry W. Graham
`C. Gregory Gramenopoulos
`F INNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`
`Washington, DC 20001-4413
`Tel: (202) 408-4400
`Fax: (202) 408-4400
`barry.graham@finnegan.com
`c.gregory.gramenopou1os@finnegan.com
`
`Elliot C. Cook
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`Two Freedom Square
`11955 Freedom Dr.
`
`13
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`

`

`Case 6:11-ov-00492-LED-JDL Document 374
`2592
`
`Filed 01/25/13 Page 14 of 19 Page1D #:
`
`Reston, VA 20190
`Tel: (202) 571-2700
`Fax: (202) 408-4400
`elliot.cook@finnegan.com
`
`Melvin R. Wilcox, 111
`State Bar No. 21454800
`
`YARBROUGH 0 WILCOX, PLLC
`100 E. Ferguson St., Suite 1015
`Tyler, Texas 75702
`Tel: (903) 595-1133
`Fax: (903) 595-0191
`mrw@yw-lawfirm.com
`
`Counselfor Defendants
`Axis Communications AB and Axis
`
`Communications, Inc.
`
`/s/ Craig E. Davis
`
`Eric H. Findlay (SBN 00789886)
`FINDLAY CRAFT, LLP
`
`6760 Old Jacksonville Highway
`Suite 101
`
`Tyler, TX 75703
`Tel: (903) 534-1100
`Fax: (903)534-1137
`efindlay@f1ndlaycraft.com
`
`Mark D. Selwyn (CA SBN 244180)
`(admitted pro hac vice)
`Joseph F. Haag (CA SBN 248749)
`(admitted pro hac vice)
`Craig E. Davis (CA SBN 221356)
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`
`950 Page Mill Road
`Palo Alto, CA 94304
`
`Tel: (650) 858-6000
`Fax: (650) 858-6100
`mark.se1wyn@wilmerhale.com
`joseph.haag@wilmerhale.com
`craig.davis@wilmerhale.com
`
`William F. Lee — Lead Attorney
`(MA SBN 291960)
`(admitted pro hac vice)
`
`14
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`

`Case 6:11—cv-00492-LED-JDL Document 374
`2593
`
`Filed 01/25/13 Page 15 of 19 Page|D #:
`
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`
`Boston, MA 02109
`
`Tel: (617) 526-6000
`Fax: (617)526-5000
`william.lee@wilmerhale.com
`
`Counselfor Defendants Alcatel-Lucent USA Inc.,
`Alcatel-Lucent Holdings Inc., and S'h0reTel, Inc.
`
`/s/ Robert J. Walters
`
`David H. Dolkas (CA Bar No. 11180)
`MCDERMOTT WILL & EMERY LLP
`
`275 Middlefield Road, Suite 100
`Menlo Park, CA 94025
`
`Tel: (650) 815-7400
`Fax: (650) 815-7401
`ddolkas@mwe.com
`
`Robert J. Walters (D.C. Bar No. 463077)
`McDERMOTT WILL & EMERY LLP
`
`500 North Capitol Street, NW
`Washington, DC 20001
`Tel: (202) 756-8000
`Fax: (202) 756-8087
`rwalters@mwe.com
`
`J. Thad Heartfield (Texas Bar No. 09346800)
`The Heartfield Law Firm
`2195 Dowlen Road
`
`Beaumont, TX 77706
`
`Tel: (409) 866-3318
`Fax: (409) 866-5789
`thad@jth—law.com
`
`Counselfor Defendant
`Hewlett-Packard Co.
`
`15
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`

`

`Case 6:11-cv-00492-LED-JDL Document 374
`2594
`
`Filed 01/25/13 Page 16 of 19 Page|D #2
`
`/s/ J. Michael Woods
`Thomas M. Dunham
`
`(D.C. Bar No. 448407)
`Attorney-in-Charge
`J. Michael Woods
`
`(VA Bar No. 73535)
`Winston & Strawn LLP
`
`1700 K Street, NW
`
`Washington, DC 20006
`Tel: (202) 282-5000
`Fax: (202)282-5100
`tdunham@winston.com
`mwoods@winston.com
`
`Deron R. Dacus
`
`(Texas Bar No. 00790553)
`The Dacus Firm, P.C.
`
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel: (903)705-1117
`Fax: (903)705-1117
`ddacus@dacusfirm.com
`
`Counselfor Defendant Dell Inc.
`
`/s/ Troy L. Gwartney
`Lionel M. Lavenue
`
`Troy L. Gwartney
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`Two Freedom Square
`11955 Freedom Dr.
`
`Reston, VA 20105
`
`Tel: (571) 203-2700
`Fax: (202) 408-4400
`lionel.lavenue@finnegan.com
`troy.gwartney@finnegan.oom
`
`Counselfor Defendants Sony Corporation, Sony
`Corporation ofAmerica, and Sony Electronics Inc.
`
`

`

`Case 6:11-cv-00492-LED-JDL Document 374
`2595
`
`Filed 01/25/13 Page 17 of 19 Page|D #:
`
`/s/ James H. Hall
`Keith A. Rutherford
`
`(Texas State Bar No. 17452000)
`Lead Attorney
`Susan K. Knoll
`
`(Texas State Bar No. 11616900)
`James H. Hall
`
`(Texas State Bar No. 24041040)
`WONG, CABELLO, LUTSCH,
`RUTHERFORD & BRUCCULERI, L.L.P.
`
`20333 SH 249, Ste. 600
`Houston, TX 77070
`Tel: (832) 446-2400
`Fax: (832)446-2424
`krutherford@counselip.com
`sknoll@counse1ip.com
`jha11@counse1ip.com
`
`Counselfor Defendant Polycom, Inc.
`
`/s/ Alan M. Fisch
`Alan M. F isch
`
`(D.C. Bar No. 453068)
`FISCH HOFFMAN SIGLER LLP
`
`5335 Wisconsin Avenue, NW
`
`Eighth Floor
`Washington, DC 20015
`Tel: (202) 362-3500
`Fax: (202)362-3501
`alan.fisch@fischl1p.com
`
`Counselfor Defendant Juniper Networks, Inc.
`
`

`

`Case 6:11-CV—OO492-LED-JDL Document 374
`2596
`
`Filed 01/25/13 Page 18 of 19 Page|D #:
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing document was filed electronically in
`
`compliance with Local Rule CV—5(a). Therefore, this document was served on all counsel who
`
`are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A). Pursuant to Fed.
`
`R. Civ. P. 5(d) and Local Rule CV—5(e), all other counsel of record not deemed to have
`
`consented to electronic service were served with a true and correct copy of this document via
`
`email, facsimile and/or U.S. First Class Mail this 25”‘ day of January, 2013.
`
`/s/ Deron R. Dacus
`Deron R. Dacus
`
`CERTIFICATE OF CONFERENCE
`
`I hereby certify that I have complied with the meet and confer requirement in Local Rule
`
`CV—7(h), and that Network-1 Security Solutions, Inc. (“Network—l”) opposes the motion.
`
`Personal conference or conferences required by this rule have been conducted. On January 16,
`
`2013 the parties held a telephonic conference with counsel for all moving defendants and counsel
`
`for the plaintiff, including the following counsel of record : Brian M Koide and Scott L. Bittman
`
`(counsel for Avaya Inc.), Deron R. Dacus (counsel for Avaya Inc. and Dell Inc.), Elliot C. Cook
`
`(counsel for Axis Communications AB and Axis Communications, Inc.), Lionel M. Lavenue and
`
`Troy L. Gwartney (counsel for Sony Corporation, Sony Corporation of America, and Sony
`
`Electronics Inc.), Craig E. Davis (counsel for Alcatel-Lucent USA Inc., Alcatel-Lucent Holdings
`
`Inc., and ShoreTel, Inc.), J. Michael Woods (counsel for Dell Inc.), Robert J. Walters (counsel
`
`for Hewlett-Packard Co.), Alan M. Fisch (counsel for Juniper Networks, Inc.), James H. Hall
`
`(counsel for Polycom, Inc.), and Sean Luner (counsel for Network-1 Security Solutions, Inc.).
`
`On the January 16th telephonic conference, Mr. Luner indicated that Network—1 did not know
`
`18
`
`

`

`Case 6:11-cv-O0492—LED—JDL Document 374
`2597
`
`Filed 01/25/13 Page 19 of 19 Page|D #:
`
`whether they would oppose the motion or not, and asked for one additional week to consider its
`
`position on the motion. Network-l agreed to treat the motion as being filed on January 17, 2013
`
`for purposes of any laches or delay arguments. On January 22, 2013, Mr. Koide emailed Mr.
`
`Luner (copying all counsel of record) asking Network-1 to respond with its position on the
`
`motion by January 24, 2013, and that the motion would be filed on January 25, 2013 absent a
`
`response from Network-1. On January 25, 2013, Mr. Luner responded by email indicating that
`
`Network-1 has not had an opportunity to finish processing the issues concerning the stay motion,
`
`and stated that the motion should be accordingly filed on an opposed basis if filed on January 25,
`
`20l3. Given these meet and confer efforts, Network—l did not consent to a stay and the
`
`discussions have conclusively ended in an impasse, leaving an open issue