`Date Filed: February 1, 2016
`
`
`Filed on behalf of: Google Inc.
`
`By:
`James J. Elacqua
`james.elacqua@skadden.com
`(650) 470-4510
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`Google Inc.
`Petitioner,
`v.
`Network-1 Technologies, Inc.,
`Patent Owner.
`________________
`
`Case IPR2015-00345
`U.S. Patent 8,205,237
`________________
`
`
`
`GOOGLE’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`Petitioner Google Inc. (“Google”) requests oral argument under 37 C.F.R.
`
`§ 42.70(a) and the Board’s June 23, 2015 Scheduling Order (Paper 7). Oral
`
`argument is scheduled for March 9, 2016. (Paper 7, at 5.)
`
`Google specifies the following issues to be argued based on all admissible
`
`evidence of record (including expert testimony):
`
`1. The proper interpretation of the Board’s claim construction of
`
`“approximate nearest neighbor”;
`
`2. Whether claims 1, 3-5, 7-9, 11-13, 15-16, 21-25, 29-30, 33, and 37-38 of
`
`U.S. Patent No. 8,205,237 (the “’237 patent”) are unpatentable under
`
`35 U.S.C. § 102 as anticipated by Iwamura (Ex. 1012, U.S. Patent
`
`No. 6,188,010);
`
`3. Whether claims 1-3, 5-7, 9-11, 13-15, and 21-24 of the ’237 patent are
`
`unpatentable under 35 U.S.C. § 102 as anticipated by Ghias (Ex. 1010,
`
`U.S. Patent No. 5,874,686);
`
`4. Whether claims 26-27 and 34-35 of the ’237 patent are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Iwamura and Chen (Ex. 1008,
`
`U.S. Patent No. 7,444,353); and
`
`5. All other issues briefed with respect to the instituted grounds of
`
`unpatentability of the ’237 patent.
`
`In light of the substantial overlap of prior art references and issues between
`
`
`
`proceedings IPR2015-00343, IPR2015-00345, IPR2015-00347, and IPR2015-
`
`00348, Google requests a single consolidated hearing for the four proceedings. The
`
`parties have met and conferred on this issue, and Google understands that Patent
`
`Owner Network-1 Technologies, Inc. agrees to a single consolidated hearing.
`
`However, the parties do not agree on the time that should be allotted for argument.
`
`Based on the limited number of issues and references that remain in dispute
`
`between the parties, Google requests that the Board allot each party 30 minutes of
`
`argument covering all four proceedings.
`
`The parties have also met and conferred regarding the exchange of
`
`demonstratives, and have agreed to exchange such materials on February 24. The
`
`parties will file demonstratives and objections with the Board pursuant to the
`
`Board’s instructions in its order setting the oral argument.
`
`Google requests the use of a projector capable of displaying PowerPoint
`
`slides.
`
`
`
`Date: February 1, 2016
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`/s/ James J. Elacqua
`James J. Elacqua (Lead Counsel)
`USPTO Reg. No. 28,412
`Skadden, Arps, Slate, Meagher &
`Flom LLP
`525 University Avenue
`Suite 1400
`Palo Alto, California 94301
`Tel: (650) 470-4510
`Fax: (650) 798-6564
`
`2
`
`
`
`Email: James.Elacqua@skadden.com
`
`Douglas R. Nemec (Back-Up Counsel)
`USPTO Reg. No. 41,219
`Skadden, Arps, Slate, Meagher &
`Flom LLP
`Four Times Square
`New York, NY 10036
`Tel: (212) 735-3000
`Fax: (917) 777-2419
`Email: Douglas.Nemec@skadden.com
`
`3
`
`
`
`
`
`
`
`§ 42.6(e) - CERTIFICATION OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105 on the Patent Owner of a copy of this GOOGLE’S REQUEST FOR ORAL
`
`ARGUMENT by email at the corresponding address of record for Patent Owner's
`
`Greg Dovel (pro hac vice)
`Dovel & Luner LLP
`201 Santa Monica Boulevard, Suite 600
`Santa Monica, CA 90941
`Telephone: (310) 656-7066
`E-mail: greg@dovellaw.com
`
`Marc A. Fenster
`Brian D. Ledahl
`Russ, August & Kabat LLP
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`Email: mfenster@raklaw.com
`bledahl@raklaw.com
`
`/James J. Elacqua/
`James J. Elacqua (Reg. # 28,412)
`
`ATTORNEY FOR PETITIONER
`GOOGLE INC.
`
`counsel in IPR2015-00345:
`
`Charles R. Macedo (Reg. No. 32,781)
`Brian A. Comack (Reg. No. 45,343)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336-8074
`Facsimile: (212) 336-8001
`E-mail: cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`
`
`
`
`Dated: February 1, 2016
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
