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`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 1 of 8
`
`Michael A. Sherman (SBN 94783)
`masherman@stubbsalderton.com
`Jeffrey F. Gersh (SBN 87124)
`jgersh@stubbsalderton.com
`Sandeep Seth (SBN 195914)
`sseth@stubbsalderton.com
`Wesley W. Monroe (SBN 149211)
`wmonroe@stubbsalderton.com
`Stanley H. Thompson, Jr. (SBN 198825)
`sthompson@stubbsalderton.com
`Viviana Boero Hedrick (SBN 239359)
`vhedrick@stubbsalderton.com
`STUBBS, ALDERTON & MARKILES, LLP
`15260 Ventura Blvd., 20th Floor
`Sherman Oaks, CA 91403
`Telephone:
`(818) 444-4500
`Facsimile:
`(818) 444-4520
`
`Attorneys for Plaintiffs
`[Additional Attorneys listed
`below]
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`Case No.: 5:18-md-02834-BLF
`IN RE PERSONALWEB TECHNOLOGIES,
`
`LLC, ET AL., PATENT LITIGATION
`Judge Hon. Beth L. Freeman
`
`
`
`
`_______________________________________
`PLAINTIFFS PERSONALWEB
`
`TECHNOLOGIES, LLC AND LEVEL 3
`Related Cases:
`COMMUNICATIONS, LLC OMNIBUS
`
`REPLY IN SUPPORT OF THEIR
`PersonalWeb Technologies, LLC, et al., v.
`MOTION FOR LEAVE TO EXTEND
`LESSON NINE GMBH, a Germany Limited
`PERIOD OF SERVICE TO DEFENDANTS
`Liability Company, Case No.: 5:18-CV-03453-
`NUNC PRO TUNC
`BLF
`
`
`
`PersonalWeb Technologies, LLC, et al., v.
`DATE: March 7, 2019
`MWM MY WEDDING MATCH LTD., a Canada
`TIME: 9:00 AM
`limited company, Case No.: 5:18-CV-03457-
`PLACE: Courtroom 3, 5TH Floor
`BLF
`
`
` 280 South First Street
`
` San Jose, CA 95113
`PersonalWeb Technologies, LLC, et al., v. OUR
`FILM FESTIVAL, INC., a Delaware corporation,
`doing business as FANDOR, INC., Case No.,
`5:18-CV-00159-BLF
`
`PersonalWeb Technologies, LLC, et al., v.
`PAYPAL, INC. a Delaware Corporation, Case
`No.: 5:18-Cv-00177-BLF
`
`
`
`
`
`
`
`PLAINTIFFS’ OMNIBUS REPLY ISO MOTION FOR LEAVE
`TO EXTEND PERIOD OF SERVICE TO
`
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
`
`

`

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`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 2 of 8
`
`PersonalWeb Technologies, LLC, et al., v.
`UNDER ARMOUR, INC. A Maryland
`Corporation: Case No.: 5:18-Cv-00166-BLF
`
`
`PersonalWeb Technologies, LLC, et al., v.
`YOTPO LTD., An Israel Corporation Case No.:
`5:18-Cv-03452-BLF
`
`
`
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`PLAINTIFFS’ OMNIBUS REPLY ISO MOTION FOR LEAVE
`TO EXTEND PERIOD OF SERVICE TO
`
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 3 of 8
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`I.
`
`INTRODUCTION
`PersonalWeb acknowledges it was unable to accomplish service within 90 days as required
`under the Federal Rules, but it was not because of inadvertent error or ignorance of the rules as
`Defendants suggest. The facts belie Defendants’ narrative. The record demonstrates that, as to
`foreign defendant Yotpo, PersonalWeb has attempted but not completed service, and PersonalWeb
`has successfully served Lesson Nine, facts which squarely constitutes good cause warranting an
`extension of time to effect service. Fed. R. Civ. P. 4(m); AF Holdings LLC v. Does 1-135, No. 11-
`CV-03336, 2012 WL 1038671, at *3 (N.D. Cal. Mar. 27, 2012). And, while PersonalWeb was
`prevented from serving Our Film Festival, Under Armour and PayPal because they were
`inadvertently misnamed in the original complaints, PersonalWeb successfully served these three
`entities on October 16, 2018, a factor warranting this Court’s grant of an extension for service nunc
`pro tunc. Efaw v. Williams, 473 F.3d 1038, 1040 (9th Cir.2007).
`The Court should grant PersonalWeb’s Motion because, in addition to demonstrating good
`cause, none of the Defendants are prejudiced if the Court grants PersonalWeb’s Motion; indeed,
`none of the Defendants argue in their oppositions that they would suffer any prejudice. To the
`contrary, each Defendant has had actual notice of the lawsuits against each of them since at least
`February 2018, when PersonalWeb filed its MDL motion with the Judicial Panel on Multidistrict
`Litigation. Moreover, because Fenwick & West, counsel for Our Film Festival, Under Armour,
`Lesson Nine and Yotpo, and Kirkland & Ellis, counsel for PayPal, were both active participants in
`the meet and confer conferences held before the Preliminary CMC and appeared at and participated
`in the Preliminary CMC, the defendants are privy to all rulings and hearing and motion practice that
`has occurred thus far. (See Sept. 20, 2018 Tr. at 5:1-3; 6:20-24.)
`PersonalWeb’s diligent efforts meet the Ninth Circuit’s characterization of good cause,
`warranting this Court exercising its broad discretion to extend PersonalWeb’s time to serve all six
`defendants nunc pro tunc1. The Court should thus grant PersonalWeb’s Motion.
`
`
`1 This Reply brief is filed in response to both Response/Oppositions filed to the Motion.
`Defendant My Wedding Match did not oppose or respond to PersonalWeb’s Motion. As such, that
`Defendant is not addressed in detail herein.
`
`1
`
`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO EXTEND PERIOD OF SERVICE TO
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 4 of 8
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`II.
`
`GOOD CAUSE EXISTS TO EXTEND THE TIME TO SERVE OUR FILM
`FESTIVAL, UNDER ARMOUR AND PAYPAL
`The Ninth Circuit has ruled that “[d]istrict courts have broad discretion to extend time for
`service under Rule 4(m).” AF Holdings LLC, 2012 WL 1038671, at *3 citing Efaw, 473 F.3d at
`1041. Indeed, “[r]ule 4(m) requires a district court to grant an extension of time when the plaintiff
`shows good cause for the delay. Good cause means “service has been attempted but not completed”
`or that plaintiff was “prevented from serving defendants by factors beyond his control”, among other
`things. AF Holdings LLC, 2012 WL 1038671, at *3. Additionally, the rule permits the district court
`to grant an extension even in the absence of good cause.” Efaw v. Williams, 473 F.3d at 1040
`(internal citations omitted) (emphasis in original). “In making extension decisions under Rule 4(m) a
`district court may consider factors like a statute of limitations bar, prejudice to the defendant, actual
`notice of a lawsuit, and eventual service.” Id. at 1041 (internal quotation marks and citation omitted).
`Good Cause Exists for the Delay in Serving Our Film Festival Because
`A.
`PersonalWeb Previously Attempted Service and Has Now Accomplished Service.
`As stated in its Motion at p. 2, PersonalWeb attempted to serve Our Film Festival under
`F.R.C.P. 4 via a Request for Waiver of Service of Process sent to its then counsel Ryan Hubbard of
`Kirkland & Ellis, who refused and stated he would “not accept service of process naming an
`incorrect entity.” See Hedrick Reply Decl. ¶ 2, Ex. A; Response to Motion for Leave, at 3:14-16.)
`However, it bears note that the incorrect entity, Fandor, Inc., is a d/b/a of Our Film Festival, Inc. As
`such, PersonalWeb’s unsuccessful service attempt constitutes good cause requiring an extension of
`time as to Our Film Festival. AF Holdings LLC, 2012 WL 1038671, at *3 (holding attempted but not
`completed service constitutes good cause); see also Fed. R. Civ. P 4(m) (“But if the plaintiff shows
`good cause for the failure, the court must extend the time for service for an appropriate period.”)
`Moreover, since the filing of its Motion, PersonalWeb successfully served Our Film Festival
`on October 16, 2018, a factor that weighs in favor of granting an extension of time. Efaw, 473 F.3d
`at 1041; Case No. 18-cv-159 (Our Film Festival) Dkt. No. 34 (Summons Returned Executed, served
`on 10/16/18). The Court should therefore grant PersonalWeb’s Motion for an extension of time to
`
`
`2
`
`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO EXTEND PERIOD OF SERVICE TO
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 5 of 8
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`serve Our Film Festival, nunc pro tunc, to October 16, 2018, the date on which PersonalWeb
`completed service on this defendant.
`The Court’s Permissive Authority Warrants An Extension of Time as to Under
`B.
`Armour and PayPal because Neither Contends it Has or Will Suffer Prejudice;
`Both Had Actual Notice of the Lawsuits since February 2018, and PersonalWeb
`Has Now Served Both Defendants.
`As the Court is aware, PersonalWeb has amended its original complaints to clarify its
`infringement positions. This constitutes good cause warranting an extension of time nunc pro tunc
`as to Under Armour and PayPal.
`Alternatively, should the Court not find good cause as to these two defendants, the Court
`should still grant an extension under its permissive authority because the majority of the factors
`outlined in AF Holdings LLC weigh in favor of such an extension as (1) neither Under Armour nor
`PayPal contend they have suffered or will suffer any prejudice as a result of the extension; (2) both
`defendants had actual notice of the lawsuit against them since at least February 27, 2018 when
`PersonalWeb filed its Motion for Transfer and Consolidation of Pretrial Proceedings with the
`Judicial Panel on Multidistrict Litigation, which listed the actions against Under Armour (then
`MyFitnessPal) and PayPal (then Venmo) in its accompanying Schedule of Actions (Case MDL No.
`2834 Dkt. No 1 (Motion) and Dkt. No. 1-2 (Schedule of Actions), at p. 4 and 7, respectively); (3)
`both defendants have counsel who have meaningfully participated in the Preliminary CMC, the
`preparation of the Preliminary Joint CMC Statement, and the meet and confer conferences leading
`up to the Preliminary CMC; and (4) since the filing of its Motion, PersonalWeb has successfully
`served Under Armour and PayPal on October 16, 2018. Efaw, 473 F.3d at 1041; (See Case No. 18-
`cv-166 (Under Armour), Dkt. No. 32 (Summons Returned Executed, served on 10/16/18); Case No.
`18-cv-177 (PayPal) Dkt. No. 33 (Summons Returned Executed, served on 10/16/18).)
`Further, while Defendants would not suffer any prejudice by a nunc pro tunc extension,
`PersonalWeb would be prejudiced greatly if no extension is granted, as it would forfeit 10 months of
`damages. Defendants reliance on the unpublished case, Bender v. LG Elecs. USA, Inc., No. C 09-
`
`
`3
`
`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO EXTEND PERIOD OF SERVICE TO
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
`
`

`

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`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 6 of 8
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`02114 WL 4730900, at *3 (N.D. Cal. Dec. 7, 2009), to contend that a district court was
`“unsympathetic” to such harm is inapplicable here, because unlike the plaintiff in Bender who had
`still not served the defendant at the time that court ruled on a motion to dismiss, here, PersonalWeb
`has served Our Film Festival, Under Armour and PayPal. Id. at *2.
`The Court should therefore grant PersonalWeb’s Motion for an extension of time to serve
`Under Armour and PayPal, nunc pro tunc, to October 16, 2018, the date on which PersonalWeb
`completed service on each of these defendants.
`PersonalWeb Acted Diligently By Repeatedly Attempting Service on Foreign
`C.
`Defendants Lesson Nine and Yotpo, Has Successfully Served Lesson Nine and
`Compiled With All Valid Court Orders.
`PersonalWeb diligently attempted service numerous times on Lesson Nine, a German
`Corporation, and Yotpo, an Israeli corporation, since February 2018. Yet, Defendants misstate the
`record as to PersonalWeb’s service efforts. Defendants claim PersonalWeb did not attempt service
`on either Lesson Nine or Yotpo until April 2018. In reality, on February 12, 2018, PersonalWeb sent
`a Request for Waiver of Service of Process to both Lesson Nine and Yotpo. (Hedrick Decl., Ex. 1-2,
`9-10, 12-14.) PersonalWeb acted diligently by attempting service on both of these foreign
`defendants in a manner that would be both cost effective and ensure timely service before
`proceeding to effect service via the Hague Convention, a costly and lengthy process. Importantly,
`defendants do not, because they cannot, refute all of the service attempts PersonalWeb has
`undertaken to serve Yotpo since February of this year via the Hague Convention, including the
`successful request for service on Yotpo on May 2, 2018. (Response, 6:7-8; Hedrick Decl., Ex. 1-
`18.) And significantly, PersonalWeb completed service on Lesson Nine of the First Amended
`Complaint on September 28, 2018. (Response, p. 6, Fn. 3; Case No. 18-cv-3453 (Lesson Nine), Dkt.
`No. 23 (Certificate of Service on 9/28/18; Hedrick Reply Decl., Ex. B.) The attempts as to Yotpo
`and successful service on Lesson Nine alone warrants grant of PersonalWeb’s Motion.
`Further, defendants contend PersonalWeb failed to comply with Judge Mazzant’s order in the
`Eastern District of Texas setting June 11, 2018 as the service deadline for Lesson Nine and Yotpo
`
`
`4
`
`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO EXTEND PERIOD OF SERVICE TO
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 7 of 8
`
`before the JPML transferred the cases out of the Eastern District of Texas and to this district.
`(Response, 6:19-20.) But Judge Mazzant ordered service on Lesson Nine and Yotpo by June 11,
`2018 and the JPML issued its Transfer Order on June 6, 2018. (Case MDL No. 2834, Dkt. No. 134
`(Transfer Order); 18-cv-46 (Lesson Nine) Dkt. No. 12 (Transfer Order); 18-cv-45 (Yotpo) Dkt. No.
`12 (Transfer Order).) Thus, the JPML transferred both cases before the June 11, 2018 deadline.
`Once the JPML issued its Transfer Order, any motions or other matters pending in the
`transferor court, the Eastern District of Texas, were transferred for consideration by the transferee
`court. The transferor court is without jurisdiction to enter rulings once transfer is ordered. See,
`e.g., In re Aircrash Near Duarte, California, On June 6, 1971, 357 F. Supp. 1013, 1015 (C.D. Cal.
`1973) (“It is settled that when an action is transferred by the Panel, until the time it is remanded, the
`transferor court is without authority to issue any orders or to entertain ... any other motion.”) The
`June 6, 2018 Transfer Order therefore divested the Eastern District of Texas of jurisdiction over this
`case, preventing PersonalWeb from seeking additional time past the June 11, 2018 deadline to effect
`service. And, shortly after the Eastern District of Texas was divested of jurisdiction, this Court
`issued its Order Setting Case Management Conference which vacated all prior orders of the
`transferor courts. (Case MDL No. 2834 Dkt. No. 19.) Since that time, PersonalWeb has not been
`dilatory, but rather has continued its efforts to serve Lesson Nine and Yotpo via the Hague
`Convention, and has indeed successfully served Lesson Nine. (Hedrick Decl., Ex 5-8, 18-19;
`Hedrick Reply Decl. Ex. B.)
`The Court should therefore grant PersonalWeb’s Motion for an extension of time to serve
`Lesson Nine and Yotpo.
`Respectfully submitted,
`Dated: November 1, 2018
`
`STUBBS, ALDERTON & MARKILES, LLP
`
`By: /s/ Viviana Boero Hedrick
`Viviana Boero Hedrick
`Attorneys for Plaintiffs
`
`
`
`
`5
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`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO EXTEND PERIOD OF SERVICE TO
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
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`Case 5:18-md-02834-BLF Document 285 Filed 11/01/18 Page 8 of 8
`
`Dated: November 1, 2018
`
`
`MACEIKO IP
`
`
`
`By: /s/ Theodore S. Maceiko
`Theodore S. Maceiko (SBN 150211)
`ted@maceikoip.com
`MACEIKO IP
`420 2nd Street
`Manhattan Beach, California 90266
`Telephone:
`(310) 545-3311
`Facsimile:
`(310) 545-3344
`Attorneys for Plaintiff
`PERSONALWEB TECHNOLOGIES, LLC,
`
`DAVID D. WIER
`
`
`
`By: /s/ David D. Wier
`David D. Wier
`david.wier@level3.com
`Vice President and Assistant General Counsel
`Level 3 Communications, LLC
`1025 Eldorado Boulevard
`Broomfield, CO 80021
`Telephone: (720) 888-3539
`Attorneys for Plaintiff
`LEVEL 3 COMMUNICATIONS, LLC
`
`Dated: November 1, 2018
`
`
`
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`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO EXTEND PERIOD OF SERVICE TO
`DEFENDANTS NUNC PRO TUNC
`
`5:18-MD-02834-BLF
`RELATED CASES
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