Network-1 Technologies Inc. (NTIP), the patent licensing company run by CEO Corey Horowitz, said on Wednesday, Oct. 19, the Patent Trial and Appeal Board rejected a Google Inc. and YouTube LLC covered business method (CBM) challenge of one of the patents of Network-1's Cox Patent Portfolio.
New York-based Network-1 said the PTAB ruled that Google had failed to show that any of the thirty-four claims of U.S. Patent 8,904,464 were invalid.
In April 2015, Google and YouTube petitioned the PTAB to cancel the claims of the patent which is one of 12 issued patents of Network-1's Cox Patent Portfolio. In October 2015, the PTAB agreed to review all of the claims. A hearing on the merits of the CBM proceeding was held in May 2016.
"We are extremely pleased with today's PTAB decision," Horowitz said. "We have worked very hard with Professor Ingemar Cox to develop and protect the value of his inventions and we will continue to do so.”
This isn’t the first time Network-1 has beaten back a challenge of its patents by Google and YouTube. In June 2016, the PTAB upheld most of the claims of four of Network-1’s Cox patents challenged in four inter partes reviews proceedings.
Network-1 said as a result of the PTAB's decisions in the CBM proceeding and the four prior IPRs, 120 claims have been found to be valid, and in total, 153 out of 163 claims or 93% of the challenged claims of the patents have survived Google's patent challenges in the IPRs and the CBM. None of Network-1's asserted claims from the patents in its pending litigations against Google and YouTube in the United States District Court for the Southern District of New York were found invalid.
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 above referenced litigations are currently subject to a stay which has been in effect since July 2015 as a result of the then pending IPRs and CBM proceedings at the PTAB.
The PTAB ruling means that the enforcement action against Google and YouTube will continue.
Network-1 has been highly successful this year in winning licensing settlements from infringers. Earlier this month, the company won a settlement from Polycom Inc. for more than $5 million. It was at least the fifth major settlement achieved by Network-1 this year and followed a $25 million settlement with Apple Inc. over infringement of a patent entitled "Document stream operating system," a $6 million settlement with Dell Inc., a $4.3 million settlement with Alcatel-Lucent, and another with Sony Corp. The terms of the Sony settlement weren't disclosed.
The Cox Patent Portfolio includes patents relating to enabling technology for identifying media content, such as music and videos, and taking further actions to be performed based on such identification. Since the acquisition of the portfolio, Network-1 has filed 12 additional patent applications, 7 of which have been issued, bringing the total portfolio of granted patents to 12. Another 5 applications relating to the original specification are still pending and Network-1 anticipates further issuances of additional claims for this portfolio.
Dr. Ingemar Cox is currently a Professor at the University of Copenhagen and a Professor at the University College London where he is Head of its Media Futures Group. Dr. Cox was formerly a member of the Technical Staff at AT&T Bell Labs and a Fellow at NEC Research Institute. In connection with the acquisition of the Portfolio, Dr. Cox provides consulting services to Network-1 with respect to the acquired patents and the related pending and future patent applications and assists in Network-1's efforts to develop the portfolio.
—To reach the reporter responsible for this story please contact Dan Lonkevich at 707 318-7899 or at firstname.lastname@example.org