Network-1 Technologies (NTIP), the patent licensing company run by CEO Corey Horowitz, reached a settlement with Sony Corp., in an infringement action filed against Sony and 27 other companies who allegedly infringed Network 1’s patent for an apparatus and method for remotely powering access equipment over a 10/100 switched ethernet network.
“Plaintiff Network-1 Technologies, Inc. and Defendants Sony Corporation, Sony Corporation of America, and Sony Electronics Inc. file this Joint Motion to Stay All Deadlines and Notice of Settlement,” according to a June 24 filing in the U.S. District Court in Tyler Texas. “Plaintiff and the Sony Defendants hereby notify the Court that all causes of action asserted in this case between Plaintiff and the Sony Defendants have been resolved in principle. Plaintiff and the Sony Defendants request that the Court stay all unreached case deadlines applicable between Plaintiff and the Sony Defendants for thirty (30) days to allow the parties’ time to prepare the appropriate settlement and dismissal papers.”
New York-based Network-1 has said it entered 20 licensing agreement and has generated more than $87 million from U.S.Patent No. 6,218,930 B1 patent from May 2007 through March 31.
Network-1 has reached agreements with with Cisco Systems Inc., Extreme Networks Inc., Netgear Inc., Microsemi Corp., Motorola Solutions Inc., NEC Corp., Samsung Electronics Co. Ltd., Huawei Technologies Co. Ltd. and ShoreTel Inc. and several other major data networking equipment manufacturers.
“Sony tried everything – IPR, ex parte reexamination, and even a CBM (even though the patent relates to power over Ethernet – clearly not a covered business method),” said Mark Gober, a senior director at 3LP Advisors in Silicon Valley. “Finally Sony has settled."
Network-1 said in a filing with the Securities and Exchange Commission that its “current strategy includes continuing our licensing efforts with respect to our Remote Power Patent and our efforts to monetize our Cox Patent Portfolio and our Mirror Worlds Patent Portfolio which we acquired in 2013.”
The company also continues to seek to acquire additional intellectual property assets to develop, commercialize, license or otherwise monetize such intellectual property.
“Our strategy includes working with inventors and patent owners to assist in the development and monetization of their patented technologies. We may also enter into strategic relationships with third parties to develop, commercialize, license or otherwise monetize their intellectual property. Our acquisition strategy is to focus on acquiring high quality patents which management believes have the potential to generate significant licensing opportunities as we have achieved with respect to our Remote Power Patent. “
Earlier this week, Network-1 announced that the Patent Trial and Appeal Board on June 21 held that eighty-six claims of four patents related to content identification were found to be valid, and in total, 119 out of 129 claims or 92% of the challenged claims of the patents survived Google Inc.’s inter partes review challenges.
In 2014, Google and YouTube petitioned the PTAB to cancel as unpatentable 129 claims of four U.S. patents which constitute part of Network-1's Cox Patent Portfolio. In June 2015, the PTAB agreed to review 96 of those claims. A hearing on the merits of the IPR proceeding was held in March 2016. In its decisions, the PTAB ruled that Google failed to show that any of the 66 claims of U.S. Patents Nos. 8,010,988, 8,640,179, and 8,656,441 were unpatentable. With respect to U.S. Patent No. 8,205,237, the PTAB ruled that 20 claims were patentable and that 10 claims were not patentable.
According to the USPTO's statistics, as of May 31, only 5% of the total IPR petitions filed at the USPTO resulted in no instituted claims being found not patentable in a final written decision.
Network-1 said none of the asserted claims in its pending litigations against Google and YouTube in the U. S. District Court for the Southern District of New York were found invalid.
"We are extremely pleased with these PTAB decisions", Horowitz said in a statement. Corey M "We have worked very hard with Professor Cox to develop and protect the value of his inventions and we will continue to do so," he added.
In April 2014 and December 2014, Network-1 initiated litigation against Google and YouTube in the U.S. District Court for the Southern District of New York for infringement of several of its patents within the Cox patent portfolio acquired from Dr. Ingemar Cox which relate to the identification of media content on the Internet.
The lawsuits allege that Google and YouTube have infringed and continue to infringe certain of the Network-1's patents by making, using, selling and offering to sell unlicensed systems and related products and services, which include YouTube's Content ID system. The action had been stayed pending the outcome of the IPRs.
—To reach the reporter responsible for this story, please contact Dan Lonkevich or email@example.com