Network-1 Technologies (NTIP) Receives Favorable PTAB Decision in CBM Review of Cox Patent Portfolio

October 19, 2016 8:47 AM EDT

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Network-1 Technologies, Inc. (NYSE: NTIP) announced that the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("USPTO") issued its Final Written Decision in the pending Covered Business Method Patent Review proceeding ("CBM") relating to a challenge made by Google, Inc. ("Google") and YouTube, LLC ("YouTube") to the patentability of one of the patents of Network-1's Cox Patent Portfolio.

In the Final Written Decision, the PTAB ruled that Google had failed to show that any of the thirty-four (34) claims of U.S. Patent 8,904,464 were unpatentable. In April 2015, Google and YouTube petitioned the USPTO to cancel as unpatentable 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," said Corey M. Horowitz, Chairman and CEO of Network-1. "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," he added.

As previously announced, in June 2016, the PTAB issued its Final Written Decisions in four Inter Partes Review proceedings ("IPRs") relating to challenges made by Google, Inc. ("Google") and YouTube, LLC ("YouTube") to the patentability of four other patents from Network-1's Cox Patent Portfolio. As a result of the PTAB's latest Final Written Decisions in the CBM proceeding and the four prior IPRs, one-hundred twenty (120) claims have been found to be "not unpatentable" (i.e. valid), and in total, one hundred and fifty-three (153) out of one hundred and sixty-three (163) claims or ninety-three percent (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 United States 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 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 twelve (12) additional patent applications (seven (7) of which have been issued) bringing the total portfolio of granted patents to twelve (12). Five (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.

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