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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 1 of 20
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`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 PersonalWeb Technologies, LLC
`[Additional Attorneys listed below]
`
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`CASE NO.: 5:18-md-02834-BLF
`IN RE PERSONAL WEB TECHNOLOGIES,
`
`LLC, ET., AL., PATENT LITIGATION
`
`
`AMAZON.COM, INC., et., al.,
`
` Plaintiffs,
`v.
`PERSONALWEB TECHNOLOGIES, LLC,
`et., al.,
`
`
` Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`Counterclaimants,
`v.
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`Counterdefendants.
`
`
`Case No.: 5:18-cv-00767-BLF
`Case No.: 5:18-cv-05619-BLF
`PERSONALWEB TECHNOLOGIES,
`LLC’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM
`CONSTRUCTION BRIEF
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 2 of 20
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`
`
`PERSONALWEB TECHNOLOGIES, LLC, a
`Texas limited liability company, and
`LEVEL 3 COMMUNICATIONS, LLC,
`a Delaware limited liability company,
`
`
`Plaintiffs,
`
`v.
`
`TWITCH INTERACTIVE, INC. a Delaware
`corporation,
`
`
`
`Defendant.
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 3 of 20
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`TABLE OF CONTENTS
`
`INTRODUCTION………………………………………………………………………….…1
`THE INVENTION OF THE PATENTS-IN-SUIT IMPROVED COMPUTER SYSTEMS
`BY ADDING TRUE NAMES, NOT BY ELIMINATING CONVENTIONAL NAMES…...2
`DISPUTED CLAIM TERMS…………………………………………………………………4
`A.
`Amazon’s argument that “authorization” and “licensing” are the same thing is
`circular and ignores the intrinsic evidence…………………………….……………...4
`1.
`The specification shows that authorization and licensing are different and the
`claim language does not support Amazon’s position…………………………4
`PersonalWeb’s infringement theory is based on the teachings of the
`specification………………………………………………………………...…5
`Amazon mischaracterizes the prior litigation and administrative proceedings
`involving the patents-in-suit…………………………………………………..6
`The invention of the patents-in-suit is about improving the operation of a
`system of networked devices using content-based values to improve its
`efficiency………………………………………………………………………6
`The currently asserted claims do not have the same scope as invalidated
`claims in the ’791 patent…………………………………………………...….8
`The parties dispute whether a request must be for a data item, as opposed to
`a request for information about a data item…………………………………………...9
`Amazon’s proposed construction for “content-dependent name” and
` “name for a data file” is based on an erroneously narrow characterization of the
`inventive system……………………………………………….……………………..11
`Amazon’s proposal for “digital key” and “file key” contradicts the specification…..13
`Amazon’s proposed inclusion of “within a file” in the construction for “part”
`improperly incorporates a preferred embodiment……………………………………14
`“part value” and “being based on a first function of the contents of the
`specific part”……………………………………………………………………...….15
`“function of the one or more of part values”………………………………………...15
`
`2.
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`3.
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`4
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`5.
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`B.
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`C.
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`D.
`E
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`F.
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`G.
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`
`
`I.
`II.
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`III.
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
`
`
`
`i
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`

`

`
`
`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 4 of 20
`
`TABLE OF AUTHORITIES
`
`Cases Page(s)
`
`
`
`
`
`
`
`Alfred E. Mann Found. for Sci. Research v. Cochlear Corp.,
`841 F.3d 1334 (Fed. Cir. 2016)....................................................................................................... 11
`
`Epistar Corp. v. Int'l Trade Comm'n,
`566 F.3d 1321 (Fed.Cir.2009)........................................................................................................... 1
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)......................................................................................................... 14
`PersonalWeb Technologies, LLC v. Apple, Inc.,
`917 F.3d 1376 (Fed. Cir. 2019)......................................................................................................... 8
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005)....................................................................................................... 11
`Thorner v. Sony Computer Entm't Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)....................................................................................................... 14
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
`442 F.3d 1322 (Fed. Cir. 2006)..................................................................................................... 1, 6
`
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`
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`ii
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 5 of 20
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`I.
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`4848-1422-0692, V. 1
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`INTRODUCTION
`Amazon’s proposed constructions are all cooked from the same recipe. First, propose an
`unduly narrow characterization of invention in the patents-in-suit. Second, based on that narrow
`characterization, argue to incorporate only the most limiting preferred embodiment into the
`constructions of the terms in the asserted claims.
`But the invention and claims are not as narrow as Amazon asserts. The invention in the patents-
`in-suit is about improving the operation of a system of networked devices using several mechanisms
`to improve its efficiency. The Web is a system of networked devices that benefits from the mechanisms
`taught in the patents-in-suit. Although the specification provides examples of ways such a system can
`be constructed, it does not limit the scope of the asserted claims to those examples.
`Amazon also repeatedly—and improperly—refers to the accused instrumentalities to bolster
`its arguments. The law is clear that the Court should reject attempts to fashion claim constructions
`from the operation of the accused infringing instrumentality, rather than from the language of the
`claims and teachings of the specification. Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442
`F.3d 1322, 1330–31 (Fed. Cir. 2006) (“This court, of course, repeats its rule that claims may not be
`construed with reference to the accused device.”) (Citations and internal quotation marks omitted).
`Because Amazon supports its proposed constructions with misrepresentations about the accused
`instrumentalities and PersonalWeb’s infringement contentions, PersonalWeb will correct those
`misrepresentations herein, but not engage in infringement and invalidity argument that is beyond the
`scope of the present claim construction proceedings.
`Further, besides repeatedly misrepresenting statements made in the file histories of the patents-
`in-suit, Amazon improperly relies extensively on these statements without the required showing that
`by these statements, PersonalWeb expressly relinquished claim scope. See Epistar Corp. v. Int'l Trade
`Comm'n, 566 F.3d 1321, 1334 (Fed.Cir.2009) (“A heavy presumption exists that claim terms carry
`their full ordinary and customary meaning, unless it can be shown the patentee expressly relinquished
`claim scope.” (emphasis added)).
`Adopting Amazon’s proposed constructions would be contrary to law and thus they should be
`rejected.
`
`
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
`
`
`
`1
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`

`

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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 6 of 20
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`II.
`
`THE INVENTION OF THE PATENTS-IN-SUIT IMPROVED COMPUTER SYSTEMS
`BY ADDING TRUE NAMES, NOT BY ELIMINATING CONVENTIONAL NAMES
`The patents-in-suit teach a powerful method for integrating True Names into a computer
`system to mitigate the problems that result from having multiple names for the same content, or the
`same name for different content. ’310 at 2:41-43. In order to ensure that a True Name will avoid this
`defect in prior systems, the specification defines the requirements for generating a True Name. ’310
`at 12:21-46. Moreover, the specification discloses that while the preferred embodiment uses a True
`Name that was based only upon the data of a data item to track the content, other embodiments could
`use a content-based identifier that used more than the content of a data item: “While the invention is
`described herein as using the True Name of a data item as the identifier for the data item, other
`preferred embodiments used tagged, typed, categorized or classified data items and use a combination
`of both the True name and the tag, type, category or class of the data item as an identifier.” See ’310
`patent at 13:17-22. The inventors were also explicit that “for some less preferred embodiments, lower
`probabilities of uniqueness may be acceptable, depending on the types of applications and mechanism
`used.” Id. at 13:10-13.
`The True Names are incorporated into a new layer that complements an existing operating
`system. See, e.g., ’310 at 6:57-63 (“Operating system mechanisms provide typical familiar file system
`mechanisms, while maintaining the data structures required to offer the mechanisms of the, present
`invention. Operating system mechanisms are designed to augment existing operating systems, and
`in this way to make the present invention compatible with, and generally transparent to, existing
`applications.”).
`The new layer did not replace the conventional pathname layer, but rather added a content-
`based layer on top of existing conventional pathname-based functionality so that the system could
`track the location of content within the system and perform content-based operations to augment
`existing systems. The specification teaches that it is at times possible, but not required, for the system
`to bypass conventional names and paths by using True Name to access a True File registry, which,
`like the local directory extensions (LDE) table 124, stores a True File ID that includes the “identity or
`disk location of the actual physical representation of the file or file segment.” ’310 at 9:55-56. The
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 7 of 20
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`specification goes on to say “[i]t is sufficient to use a filename in the registration directory of the
`underlying operating system” as the identity or disk location. Id. at 9:55-58 (emphasis added).
`“Operating system mechanisms are designed to augment existing operating systems, and in this way
`to make
`the present
`invention compatible with, and generally
`transparent
`to, existing
`applications.” ’310 at 6:57-63. Conventional filenames in conventional operating systems are naturally
`still used in connection with the invention. If they were “replaced,” as Amazon contends, a user would
`have to browse his or her vacation pictures by examining hashes that look something like
`“c2a8c4e71b5bde0794395814c8a13e43.”
`Similarly, conventional pathnames are not “replaced”:
`
`
`’310 at 19:50-60. This passage expressly shows that a file is opened by using a pathname as an input.
`The new data structures provided by Lachman and Farber are “extensions” of the native file
`system. ’310 at 8:27-34 (“The local directory extensions (LDE) table 124 is a data structure which
`provides information about files 120 and directories 118 in the data processing system 100. The local
`directory extensions table 124 is indexed by a pathname or contextual name (that is, a user provided
`name) of a file and includes the True Name for most files. The information in local directory extension
`table 124 is in addition to that provided by the native file system of the operating system.”).
`Thus, Amazon’s statement that “[t]he purported invention replaced these conventional names
`with True Names calculated solely from the data in the data item itself” (Resp. Br. at 1) is demonstrably
`false. The functionalities using True Names form an added layer over the “underlying operating
`system,” not a replacement for it. The True Name layer is used to provide enhanced functionality such
`as how identify the presence of content, track the location, use and transfer of content for accounting
`purposes, authorize (or deauthorize) access to content, validate the use of licensed content, determine
`where is the fastest cheapest source of content, replicate and de-duplicate content, and prevent the
`
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`unnecessary transfer of content. See ’310 at 31:34-38, 31:49-66, 32:1-4, 32:7-28, 32:55:64, 33:8-10,
`33:50-54, 33:54-34:4, 34:4-17, 34:42-57, 35:1-11, 35:26-38, 36:64-37:3.
`III. DISPUTED CLAIM TERMS
`Amazon’s argument that “authorization” and “licensing” are the same
`A.
`thing is circular and ignores the intrinsic evidence.
`The specification shows that authorization and licensing are
`1.
`different and the claim language does not support Amazon’s
`position.
`Amazon ignores the specification’s teachings that True Names can be used to control access
`to content such as to prevent a computer from write accessing a file that that owner has only authorized
`read access to the file, or a computer unauthorizing any other computer from deleting a file. See ’310
`at 21:18-22 (describing that a True Name can be used to determine whether a particular True File is
`in a read only location which would not permit a write access to the file to succeed); see also, ’310 at
`34:36-41 (describing that the Reserve True File operation deauthorizes the deletion of content with a
`specific True Name) and 23:35-50, 24:20-30 (describing how to reserve and cancel the reservation of
`a True File). Both “lock flag” and “read-only access” permissions are perfect examples of
`deauthorizing accesses to content. One is an absolute, one is conditional. A “lock flag” precisely
`deauthorizes accesses to content the contents of a True File requested by its True Name just it would
`prevent access to a file requested by its pathname, and nowhere does Amazon argue otherwise.
`The argument that Amazon makes regarding “authorization” is directed to one specific
`implementation, described at ’310 at 31:3-32, in which a table used in conjunction with a True Name
`to verify whether licensed content is used by “authorized parties.” This part of the specification is
`directed to “a safe way to identify licensed material” and allows “proof of possession of specific files
`according to their contents” based upon True Name. Id. at 31:5-8. Moreover, as described, the
`enforcement of a license may be active or passive, wherein the True Name may be used to simply
`record a violation in a license violation table, and not even control access to content. See, e.g., ’310 at
`31:24-26 (“Occasionally compare the contents of each user processor against the licensed table”) and
`at 31:30-32 (“If the user processor is found to have a file that it is not authorized to have, record the
`user processor and True Name in a license violation table.”). A system employing the True Name layer
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`can certainly use a license table to determine if access to a file is licensed. See ’310 at 11:33-43. But
`the part of the specification that Amazon cherry picked in Column 31 is labeled “Track for Licensing
`Purposes,” so it naturally refers to the license table. However, the specification here is describing a
`feature that the inventive system can use, not one that it must use.
`Finally, Amazon mistakenly (and circularly) argues that “[e]very asserted claim in
`the ’310, ’442, and ’420 patents requires using a True Name to determine who is authorized to receive
`or access specific licensed content.” Resp. Br. at 3:17-18. The claim language neither requires the
`identification of a “who” nor requires that the content is “licensed,” but rather allows a file to be
`provided or accessed based upon a determination that the access is either authorized or licensed. The
`claims do not mention, much less require, determining that a user is authorized.
`Amazon also incorrectly argues the language of “claim 20 makes it clear that ‘transferring
`data’ is exactly what the claim is about.” Resp. Br. at 10:10-13. Amazon is again incorrect. The claim
`says “controlling distribution” not providing access. In fact, it only requires making a determination
`whether or not to provide access or to provide a data item. One way of controlling distribution is by
`not sending something when it is requested, and another is by not providing something that is already
`there (and just determining whether or not access will be permitted).
`Amazon accused PersonalWeb of what Amazon itself is doing, conflating “authorized” with
`“licensed” notwithstanding that in the specification, being licensed is only one form of being
`authorized and given that the example Amazon relies upon does not even require disallowing either
`access to or the sending of any data.
`PersonalWeb’s infringement theory is based on the teachings of the
`2.
`specification.
`Amazon’s analysis of PersonalWeb’s infringement theory is both improper and erroneous.
`First, it is improper because by arguing that “[t]he [accused] process simply has nothing to do with
`controlling access to content” (Resp. Br. at 4), Amazon is soliciting the Court to refer to the accused
`instrumentality to construe the claims based on whether it purportedly should not be infringing. Wilson
`Sporting Goods, 442 F.3d at 1330–31. This is contrary to law. Amazon is not merely apprising the
`Court “of the specific issues presented by the infringement inquiry.” Id. at 1331.
`
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
`
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`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Second, ETags are used to control authorized access to content. An ETag match indicates that
`the content on a user’s device is current and the user’s device is authorized to use it. An ETag mismatch
`indicates that the content on a user’s device is stale or inaccurate in some way, and the user’s device
`in not authorized to use it and should instead use the new content that the server sends in the case of a
`mismatch. The asserted claims do not require an affirmative step of “forc[ing] the user to discard the
`old object” as Amazon suggests. Moreover, most commercial websites have very specific Terms of
`Service that severely restrict or prohibit use of website assets apart from current webpages of the
`website.
`
`3.
`
`Amazon mischaracterizes the prior litigation and administrative
`proceedings involving the patents-in-suit.
`PersonalWeb never argued that a file already on a device cannot be “unauthorized.” Amazon
`erroneously reaches this conclusion by misreading the record in previous proceedings and taking
`certain statements out of context. In the Patent Owner’s Response (Resp. Br., Ex. 2) in an IPR
`involving the ’310 patent, the PersonalWeb stated that “[o]ne would have assumed that the local
`computer 20 is permitted to access a prior version of a file if that computer already has the current
`version of that file.” Resp. Br., Ex. 2 at 19 (emphasis added). The statement was made within the
`context that a computer’s version of a file was already assumed to be current. But Amazon is asserting
`that it applies to a scenario, such as verifying a cached object, in which a system is checking to
`determine whether a file is current. What may be illogical in the first context is entirely reasonable in
`the second. Similarly, what PersonalWeb argued “cannot be done” on appeal (Resp. Br., Ex. 3) is for
`a computer to make a calculation of a Binary Object Identifier (in the prior art, a value based on the
`content of a binary object) when it did not have access to the binary object. Again, this has nothing to
`do with checking whether a cached object is current.
`The invention of the patents-in-suit is about improving the
`4.
`operation of a system of networked devices using content-based
`values to improve its efficiency.
`Contrary to Amazon’s narrow characterization of the invention of the patents-in-suit as only
`about policing licensed content, the specification teaches how integrating content-based values for
`objects in a system of networked devices leads to many advantages, some of which were discussed in
`
`
`
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
`
`
`
`6
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`4848-1422-0692, V. 1
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 11 of 20
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`Section II, supra. The ’442 patent is just one of 10 issued patents in the True Names family of patents,
`and the only one with a title referring to policing licensed content. Policing licensed content is merely
`one application of the concepts described in the specification. Also, as shown above, the entire body
`of the specification belies Amazon’s attempt to use 30 lines in Column 31 of the ’310 patent to
`characterize the entire invention.
`Amazon’s reference to the license table is unremarkable because PersonalWeb has not taken
`the position that a license is not a form of authorization. In fact, PersonalWeb’s alternative proposed
`construction is that a license is a special type of authorization, i.e., legal permission rather than general
`permission. Just because all licenses grant authorization does not mean that all authorizations are
`licenses.
`Amazon’s contention that “the patents disclose the license table as the sole means of
`controlling access to content” (Resp. Br. at 6) is flatly wrong. In the Reserve True File operation a
`requesting processor sends a message request to “reserve” a file stored at another processor. ’310 at
`23:35-50. That that operation “takes a True Name as input,” the True Name being the True Name of
`the content being “reserved.” When that message is received and processed, the True Name in the
`request is compared to the entries in the True File registry. ’310 at 23:40-41 (“Find the True File
`registry entry record 140 associated with the given True File.”). If there is a matching True Name, the
`associated entry’s list of “dependent processors” is updated with the identity of the requesting
`processor. See ’310 at 24:47-49; see also ’310 at 9:52-53. By this operation, the requesting processor
`is able to prohibit any delete request from being processed for the corresponding content.
`PersonalWeb also discussed the “Cancel Reservation” mechanism in the Amended Opening
`Brief. When a processor needs to reauthorize deletion to be able to take place, it sends a “Cancel
`Reservation” request. See ’310 at 24:20-30. The Cancel Reservation message again includes the
`requesting processor ID and True Name of the content which is no longer being prohibited from being
`deleted. The True Name in the request is compared to the True Names in the True File registry and
`the matching record’s field of dependent processors is altered to remove the identity of the requesting
`processor thereby removing the prohibition against deletion for the file with that True Name that was
`created by the processor via the Reserve True File operation described at 23:35-50.
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`7
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 12 of 20
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`PersonalWeb has not conflated the concept of authorization with the concept of preventing
`access. In both the region table and lock flag examples, the first step is to determine if the region
`(directory) or file at issue is read-only or locked, respectively. If the answer is affirmative, then certain
`actions, such as altering them, are unauthorized. Once that is determined, the second step is preventing
`access to make unauthorized alterations.
`The currently asserted claims do not have the same scope as
`5.
`invalidated claims in the ’791 patent.
`Amazon argues that PersonalWeb is trying to recapture the scope of claims that were
`invalidated in U.S. Patent No. 5,978,791. This is false because the scope of the asserted claims in the
`patents-in-suit substantively differ from the scope of the invalidated claims, which Amazon
`characterizes as “determining . . . whether the data item is present at the destination location” and then
`“based on the determining whether the data item is present, providing the destination location with the
`data item only if the data item is not present at the destination.” Resp. Br. at 9.
`For example, claims 25 and 166 of the ’420 patent require a search of a “plurality of identifiers”
`which is an element the Federal Circuit expressly found was lacking in the Woodhill reference over
`which certain claims of the ’791 patent were invalidated. See PersonalWeb Technologies, LLC v.
`Apple, Inc., 917 F.3d 1376, 1382 (Fed. Cir. 2019) (“We conclude that the Board’s inherency finding
`derived from column 17 of Woodhill for teaching the ‘compared to a plurality of values’ limitation
`lacks substantial evidence.”). The asserted claims of the ’544 patent require a hash of hashes, which
`is not an element included in the invalidated claims of the ’791 patent. Claim 20 of the ’310 patent
`requires a “a request obtained by a first device in the system from a second device in the system,” and
`claim 69 requires “receiv[ing] at a first computer, from a second computer, a request regarding a data
`item,” which are also not elements included in the invalidated claims of the ’791 patent. Lastly, claim
`10 of the ’442 patent differs because it relates to determining whether a copy of a data item is on a
`computer in the network and determines whether a copy of a data item on a computer is an
`unauthorized or unlicensed copy of the data item, whereas the invalided claims of the ’791 patent
`provides the destination with data item if the data item is determined not to be present at the
`destination.
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`8
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 13 of 20
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`B.
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`The parties dispute whether a request must be for a data item, as opposed
`to a request for information about a data item.
`Amazon mischaracterizes the dispute between the parties as whether “the content dependent
`name in the claimed request [must] be the name of the data item that is requested.” Resp. Br. at 9-10.
`This statement assumes that the request is for a data item, but that requirement is not contained in the
`claims. That is the dispute between the parties.
`Amazon’s statement that the “entire point of the patents” is to use True Names to identify
`requested items by their content is both inaccurate and misses the point. As discussed in the Amended
`Opening Brief, and ignored by Amazon, the specification discloses mechanisms such as “Retire True
`File” and “Cancel Reservation” that do not include requests for the contents that was used to generate
`the True Name used in those mechanisms. Amend. Op. Br. at 13. PersonalWeb’s proposed
`construction recognizes that not all requests within the inventive system of the patents-in-suit are
`requests for a data item. There is no dispute that a request includes a content dependent name, because
`the claim expressly requires that.
`Once again Amazon improperly elects to turn Markman briefing into a debate about the merits
`of PersonalWeb’s infringement theory. Resp. Br. at 10. Amazon first points to an activity performed
`by an accused instrumentality—sending content in response to a mismatch of ETags—and asserts
`incorrectly that it is a requirement of the claim, then argues that the specification does not disclose
`performing that activity. Amazon’s willingness to weave unclaimed activity taking place in the
`accused instrumentality into the purported scope of the claim for the purpose of then knocking down
`that strawman highlights why ignoring Wilson Sporting Goods Co. and basing claim construction
`arguments on the accused instrumentalities is problematic. But if one properly focuses on which
`proposed constructions are most harmonious with the claim language, PersonalWeb’s proposed
`constructions should be adopted.
`Claim 20 recites “content-dependent name being based at least in part on a function of at least
`some of the data comprising the particular data item.” Claim 20 further recites “permitting the content
`to be provided to or accessed by the at least one other computer if it is not determined that the content
`is unauthorized or unlicensed.” The claim does not recite that content that is permitted to be provided
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`PERSONALWEB’S REPLY TO AMAZON’S
`OPPOSITION TO CLAIM CONSTRUCTION BRIEF
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`9
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 420 Filed 04/29/19 Page 14 of 20
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`to or accessed by the other computer is the particular data item. Amazon’s proposal to rewrite the
`claim as “permitting the particular data item to be provided to or accessed by the at least one other
`computer” should be rejected.
`Claim 20 does not requ