Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 1 of 16
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`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@fenwick.com.com
`TODD R. GREGORIAN (CSB No. 236096)
`tgregorian@fenwick.com
`PHILLIP J. HAACK (CSB No. 262060)
`phaack@fenwick.com
`RAVI R. RANGANATH (CSB No. 272981)
`rranganath@fenwick.com
`CHIEH TUNG (CSB No. 318963)
`ctung@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone:
`650.988.8500
`Facsimile:
`650.938.5200
`
`Counsel for AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC.,
`and TWITCH INTERACTIVE, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`IN RE: PERSONALWEB TECHNOLOGIES,
`LLC ET AL., PATENT LITIGATION,
`
`AMAZON.COM, INC., and AMAZON WEB
`SERVICES, INC.,
`Plaintiffs,
`
`v.
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Defendants.
`
`
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`
`Counterclaimants,
`
`v.
`
`
`AMAZON.COM, INC., and AMAZON WEB
`SERVICES, INC.,
`
`
`Counterdefendants.
`
`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
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`
`
` Case No.: 5:18-md-02834-BLF-SVK
`
`Case No.: 5:18-cv-00767-BLF-SVK
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`Case No.: 5:18-cv-05619-BLF-SVK
`
`OPPOSITION OF AMAZON.COM,
`INC., AMAZON WEB SERVICES,
`INC., AND TWITCH INTERACTIVE,
`INC. TO MOTION FOR LEAVE TO
`AMEND INFRINGEMENT
`CONTENTIONS
`
`Courtroom 6, 4th Floor
`Dept:
`Hon. Susan van Keulen
`Judge:
`Trial Date: March 16, 2020
`
`
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`Case No.: 5:18-md-02834-BLF-SVK
`Case No.: 5:18-cv-00767-BLF-SVK
`Case No.: 5:18-cv-05619-BLF-SVK
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 2 of 16
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`PERSONAL WEB TECHNOLOGIES, LLC, a
`Texas limited liability company, and
`LEVEL 3 COMMUNICATIONS, LLC, a
`Delaware limited liability company,
`
`
`
`
`
`Plaintiffs,
`
`v.
`
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`TWITCH INTERACTIVE, INC., a Delaware
`corporation,
`
`
`Defendant.
`
`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
`
`
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`Case No.: 5:18-md-02834-BLF-SVK
`Case No.: 5:18-cv-00767-BLF-SVK
`Case No.: 5:18-cv-05619-BLF-SVK
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 3 of 16
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`
`
`TABLE OF CONTENTS
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`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ------------------------------------------------------------------------------------ 1
`
`FACTUAL BACKGROUND ----------------------------------------------------------------------- 2
`
`A.
`
`B.
`
`C.
`
`AMAZON'S PROPOSED CONSTRUCTIONS FOR
`“AUTHORIZATION” AND “UNAUTHORIZED OR
`UNLICENSED” TRACK JUDGE GILSTRAP’S 2016
`CONSTRUCTIONS ------------------------------------------------------------------------ 2
`
`AMAZON'S PROPOSED CONSTRUCTIONS FOR “PART
`VALUE” AND “BEING BASED ON A FIRST FUNCTION OF
`THE CONTENTS OF THE SPECIFIC PART” ALSO TRACK
`JUDGE GILSTRAP’S 2016 CONSTRUCTIONS ------------------------------------- 4
`
`PERSONALWEB WAITED FOR MONTHS AFTER THE
`PARTIES’ CLAIM CONSTRUCTION DISCLOSURES AND
`UNTIL AFTER THE MARKMAN HEARING TO SEEK LEAVE
`TO AMEND --------------------------------------------------------------------------------- 4
`
`STANDARD ------------------------------------------------------------------------------------------- 7
`
`ARGUMENT ------------------------------------------------------------------------------------------ 7
`
`A.
`
`B.
`
`PERSONALWEB HAS FAILED TO MEET ITS BURDEN TO
`ESTABLISH ITS DILIGENCE WITH RESPECT TO THE
`PROPOSED AMENDMENTS ----------------------------------------------------------- 7
`
`AMAZON WILL BE PREJUDICED IF PERSONALWEB IS
`GRANTED LEAVE TO AMEND ----------------------------------------------------- 10
`
`V.
`
`CONCLUSION-------------------------------------------------------------------------------------- 11
`
`
`
`
`
`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
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`i
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 4 of 16
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`
`
`Cases:
`
`Page(s):
`
`TABLE OF AUTHORITIES
`
`Amgen Inc. v. Sandoz Inc.,
`No. 14-cv-04741-RS (MEJ), 2017 WL 1399077 (N.D. Cal. Apr. 18, 2017) ----------------- 7
`
`Apple Inc. v. Samsung Elecs. Co.,
`No. 12-cv-0630-LHK(PSG), 2013 WL 3246094 (N.D. Cal. June 26, 2013) -------------- 7, 9
`
`Apple, Inc. v. Samsung Elecs. Co.,
`No. 11-CV-01846-LHK, 2012 WL 1067548 (N.D. Cal. Mar. 27, 2012) --------------- 10–11
`
`ASUS Comput. Int’l v. Round Rock Research, LLC,
`No. 12-cv-02099 JST (NC), 2014 WL 554561 (N.D. Cal. Feb. 7, 2014) -------------------- 10
`
`Atmel Corp. v. Info. Storage Devices Inc.,
`No. C 95-1987 FMS, 1998 WL 775115 (N.D. Cal. Nov. 5, 1998) --------------------------- 11
`
`CBS Interactive, Inc. v. Etilize, Inc.,
`257 F.R.D. 195 (N.D. Cal. 2009) ---------------------------------------------------------------- 1, 7
`
`EON Corp IP Holdings LLC v. Aruba Networks Inc.,
`No. 12-cv-01011-JST, 2013 WL 12174305 (N.D. Cal. July 30, 2013) ---------------------- 10
`
`GoPro, Inc. v. 360Heros, Inc.,
`No. 16-cv-01944-SI, 2017 WL 1278756 (N.D. Cal. Apr. 6, 2017) --------------------- 1, 9–10
`
`Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc.,
`No. 12-cv-03844-JST, 2014 WL 5361643 (N.D. Cal. Oct. 20, 2014) ------------------------ 10
`
`O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
`467 F.3d 1355 (Fed. Cir. 2006) -------------------------------------------------------------- 7, 9–10
`
`Par Pharm., Inc. v. Takeda Pharm. Co.,
`No. 5:13-cv-01927-LHK-PSG, 2014 WL 3704819 (N.D. Cal. July 23,
`2014) ---------------------------------------------------------------------------------------------------- 9
`
`PersonalWeb Techs., LLC v. IBM,
`No. 6:12-cv-661, Dkt. 103 (E.D. Tex. Mar. 11, 2016) --------------------------------- 1, 3–4, 8
`
`PersonalWeb Techs., LLC v. IBM,
`No. 6:12-cv-661, Dkt. 78-2 (E.D. Tex. Nov. 18, 2015) ----------------------------------- 2, 4, 8
`
`Verinata Health, Inc. v. Ariosa Diagnostics, Inc.,
`236 F. Supp. 3d 1110 (N.D. Cal. 2017) ------------------------------------------------------------ 7
`
`Via Techs., Inc. v. ASUS Computer Int’l,
`No. 14-cv-03586-BLF(HRL), 2017 WL 396172 (N.D. Cal. Jan. 30, 2017)----------- 7–8, 10
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`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
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`ii
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 5 of 16
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`I.
`
`INTRODUCTION
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`PersonalWeb seeks leave to amend its infringement contentions eighteen months into this
`
`case, after the parties completed their claim construction disclosures and briefing, and after the
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`Court conducted the Markman hearing. It does so on the basis that Amazon’s claim constructions
`
`came as a “surprise.” But Judge Gilstrap construed the same patents three years ago, and the claim
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`construction disputes before the Court now are the same as they were in 2016. (Declaration of
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`Saina S. Shamilov in Support of Opposition to Motion for Leave to Amend (“Shamilov Decl.”),
`
`Ex. 1 (PersonalWeb Techs., LLC v. IBM, No. 6:12-cv-661, Dkt. 103 (E.D. Tex. Mar. 11, 2016)
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`(“Prior Order”)).). And Amazon disclosed its proposed constructions in January 2019.1
`
`PersonalWeb inexplicably waited for nearly five months, until the Markman briefing and hearing
`
`were complete, to file this motion. It cannot show good cause for the amendment because it was
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`not diligent. See, e.g., GoPro, Inc. v. 360Heros, Inc., No. 16-cv-01944-SI, 2017 WL 1278756, at
`
`*1 (N.D. Cal. Apr. 6, 2017) (waiting two months until after initial Markman briefing not diligent).
`
`The Court’s Patent Local Rules aim to deter such behavior. They force the parties to
`
`disclose their theories early in the case precisely to prevent them from becoming a “moving target.”
`
`See CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009). PersonalWeb’s
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`motion flies in the face of those requirements, with no good cause to justify any deviation from
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`them. Allowing PersonalWeb to amend its infringement contentions now would also prejudice
`
`Amazon,2 who relied on PersonalWeb’s infringement contentions to develop defenses and claim
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`construction positions. The Court should deny PersonalWeb’s motion.
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`
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`1 PersonalWeb’s claim that it first learned of Amazon’s proposed constructions on March 12,
`2019 is inaccurate. (See PersonalWeb’s Motion for Leave to Amend (“Mot.”), Dkt. 448 at 1, 5.)
`2 Unless otherwise stated, “Amazon” as used herein refers to Amazon.com, Inc. Amazon Web
`Services, Inc., and Twitch Interactive, Inc.
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`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 6 of 16
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`II.
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`FACTUAL BACKGROUND
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`The patents in suit purport to solve the problem of consistently locating files (i.e., “data
`
`items”) in a computer system, and controlling access to files that contain licensed content to prevent
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`unauthorized sharing. To accomplish this, files are identified using “True Names”—names
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`computed from the data in the file itself—instead of other, purportedly less reliable means such as
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`user-provided file names. According to the patents, this allows a file to be uniquely identified
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`regardless of its context, which in turn allows a system to reliably limit access to the file to
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`authorized or licensed users.
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`PersonalWeb’s infringement theory in this and its past cases, however, has nothing to do
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`with licensing or content authorization. It accuses conditional GET requests using If-None-Match
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`headers on the World Wide Web. These requests use ETag values to determine whether a user
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`already has a copy of the current object found at a given web location, or URL. If so, no new object
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`is sent; if not, the current object is sent to the browser.
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`Two disputes consistently arise in PersonalWeb’s infringement litigation: (1) whether
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`“authorized” as used in the patents means having a valid license to content; and (2) whether a “True
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`Name” is computed only from the data in a file, or if it can be based on other non-unique
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`information as well. Those disputes arose in this case, just as they had in PersonalWeb’s past cases.
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`Nothing about those disputes is a “surprise” to PersonalWeb, and neither justifies PersonalWeb
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`waiting until after the Markman hearing to try to change its infringement theories.
`
`A.
`
`Amazon’s proposed constructions for “authorization” and “unauthorized or
`unlicensed” track Judge Gilstrap’s 2016 constructions.
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`In PersonalWeb’s earlier case against IBM and GitHub, it filed a joint claim construction
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`statement in November 2015 in which the defendants contended that the concept of “authorization”
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`in the patents referred to a valid license. (See Shamilov Decl., Ex. 2 (PersonalWeb Techs., LLC v.
`
`IBM, No. 6:12-cv-661, Dkt. 78, Ex. B at 10 (E.D. Tex. Nov. 18, 2015) (“Prior Joint Statement”)).)
`
`PersonalWeb opposed, arguing that “authorization” meant only some generic approval, rather than
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`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 7 of 16
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`
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`authorization to access licensed content. (Prior Order at 26-27.) In March 2016, Judge Gilstrap
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`issued a claim construction order construing “unauthorized” as “not compliant with a valid license”
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`and “authorization” as “a valid license.” (Id. at 25-28.) Even though it was clearly aware of these
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`constructions, PersonalWeb chose not to apply or even mention them in its infringement
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`contentions in this case.
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`At the September 2018 preliminary case management conference in this case, Amazon and
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`Twitch made clear that they would seek the same constructions here: “Judge Gilstrap . . . found
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`that what [unauthorized or unlicensed] means is you have to determine whether you are compliant
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`with a valid license” and “[t]hat’s what these claims require.” (Shamilov Decl., Ex. 3 (Tr. of Sept.
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`20, 2018 Proceedings at 50:4-7).) On January 7, 2019, Amazon served its Patent L.R. 4-1
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`disclosure of proposed terms for construction identifying “unauthorized” and “authorization” as
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`previously construed terms. (Id., Ex. 4 (Amazon’s Patent L.R. 4-1 Disclosures) at 3.) A few weeks
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`later, on January 28, 2019, Amazon disclosed its preliminary proposed constructions under Patent
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`L.R. 4-2, in which it proposed construction of “unauthorized” as “not compliant with a valid
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`license” and “authorization” as “a valid license.” (Id., Ex. 5 (Ex. A to Amazon’s Patent L.R. 4-2
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`Disclosures) at 12.) Amazon also proposed the same construction for the related term
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`“unauthorized or unlicensed,” relying on Judge Gilstrap’s prior order. (Id. at 13.)
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`The parties here have the same dispute that Judge Gilstrap resolved three years ago.
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`Amazon and Twitch seek constructions that clarify that “authorization,” as described and claimed
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`in the patents, requires a valid license, both because the invention purports to police access to
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`licensed content and because “authorized” and “licensed” are used interchangeably in the patents
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`to refer to the same idea. (Id. at 12-13.) PersonalWeb, however, contends here, as it has done in
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`its past cases, that “authorization” in the claims means only generic permission and does not
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`specifically refer to licensing. (See Prior Order at 26-27; PersonalWeb’s Amended Opening Claim
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`Construction Brief, Dkt. 406 at 4 (“Amazon’s proposal erroneously makes the term ‘unauthorized’
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 8 of 16
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`synonymous with the term ‘unlicensed’ contradicting the specification and prosecution history.”);
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`see also Dkt. 406 at 1-9.)
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`B.
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`Amazon’s proposed constructions for “part value” and “being based on a
`first function of the contents of the specific part” also track Judge Gilstrap’s
`2016 constructions.
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`The second set of terms PersonalWeb identifies as justifying its amendment shares a similar
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`history. In the same November 2015 joint claim construction statement, defendants IBM and
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`GitHub proposed construing “given function of the data [in the data file]” as “computation where
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`the input is all of the data in the data file, and only the data in the data file.” (Prior Joint Statement
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`at 2 (alteration in original).) PersonalWeb argued that the function to generate a True Name could
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`be open-ended—i.e., it could use something other than “all of the data in the data file.” (Prior Order
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`at 15-16.) Judge Gilstrap adopted the defendants’ construction. (Id. at 15-21.) In doing so, he
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`“expressly reject[ed] [PersonalWeb]’s argument that the use of the word ‘comprises’ means that
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`there is no limit as to whether the data item identification can be based on information other than
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`the data in the data item.” (Id. at 20.) Again, even though it was aware of Judge Gilstrap’s ruling,
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`PersonalWeb chose not to address it in its infringement contentions in this case.
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`Here too, in January 2019 Amazon proposed constructions for “part value” and “being based
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`on a first function of the contents of the specific part” that, consistent with Judge Gilstrap’s order,
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`required the function’s input to be only the data in the file and nothing else. (Ex. 5 (Ex. A to
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`Amazon’s Patent L.R. 4-2 Disclosures) at 9, 11.) The parties’ constructions in this case therefore
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`raise the same dispute that the Texas court already resolved against PersonalWeb. (See, e.g.,
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`PersonalWeb’s Reply to Amazon’s Opposition Claim Construction Brief, Dkt. 420 at 15 (“Amazon
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`also wrongly contends that the invention somehow would not work if anything more than the data
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`in a data item is used.”).)
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`C.
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`PersonalWeb waited for months after the parties’ claim construction
`disclosures and until after the Markman hearing to seek leave to amend.
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`PersonalWeb served its Patent L.R. 3-1 infringement contentions against Amazon on
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`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 9 of 16
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`October 29, 2018.3 (Shamilov Decl., Ex. 6.) Amazon served its preliminary proposed constructions
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`for “authorization” and “unauthorized or unlicensed” (the “authorization terms”); and “part value”
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`and “being based on a first function of the contents of the specific part” (the “part value terms”),
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`on January 28, 2019. (Id., Ex. 5 (Ex. A to Amazon’s Patent L.R. 4-2 Disclosures) at 9, 11-13.) The
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`parties then conferred and submitted their joint claim construction statement on March 12, 2019.
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`(Dkt. 380.) PersonalWeb submitted its opening claim construction brief a month later, on April 8,
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`2019, and an amended version a few days later. (Dkts. 399, 406.)
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`It was not until April 18—almost three months after receiving Amazon’s proposed
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`constructions and just four days before Amazon’s deadline to file its responsive claim construction
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`brief—that PersonalWeb raised the possibility of amending its infringement contentions. In that
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`correspondence, PersonalWeb suggested it would like to amend its theories for claims that included
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`the “authorization” terms, but it did not discuss the “part value” terms. (Shamilov Decl., Ex. 8.)
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`PersonalWeb also sent its proposed amendments for Amazon only, and said that contentions for
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`Twitch “will be sent shortly in a separate email” and would “generally correspond with the
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`proposed amendments in the Amazon Infringement Contentions.” (Id.) Rather than respond
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`piecemeal, counsel for Amazon and Twitch waited for the full set of proposed amendments before
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`providing their position. (Shamilov Decl., Ex. 10.)
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`PersonalWeb did not send the full set for another three weeks, on May 8. (Id., Ex. 9.) The
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`new Twitch contentions included amendments to the claims reciting the authorization terms, but
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`also amended contentions for claims reciting the “part value” terms. (Id.) PersonalWeb’s
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`amendments would add never previously disclosed infringement theories, in anticipation of the
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`Court rejecting the claim construction positions PersonalWeb has advanced in briefing here and
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`lost in the prior case.
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`The new theories attempt to change the scope of the case and to avoid summary judgment
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`3 PersonalWeb served similar infringement contentions against Twitch in December 2018, after
`the Court lifted the stay on the Twitch case. (Shamilov Decl., Ex. 7.)
`Case No.: 5:18-md-02834-BLF-SVK
`Case No.: 5:18-cv-00767-BLF-SVK
`Case No.: 5:18-cv-05619-BLF-SVK
`
`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
`
`5
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`

`

`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 10 of 16
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`
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`in the event the Court adopts Judge Gilstrap’s claim constructions. First, PersonalWeb proposes
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`that claim limitations that require determining “authorization” to content are infringed where access
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`to a website is governed by “Terms of Service or an End User License.” (Shamilov Decl., Ex. 8
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`(Proposed Amendments to Infringement Contentions, Ex. A) at 4.) It does so because the accused
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`features—the use of ETags and conditional GET requests—have nothing to do with policing access
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`to licensed content to prevent unauthorized sharing. Instead, they ensure that a user accesses the
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`most recent website content rather than using outdated information stored in a local cache. The
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`terms of service for some websites prohibit use of outdated versions of the website, and
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`PersonalWeb hopes that the Court will permit it to argue to the jury the far-fetched theory that
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`ETags infringe when website content is “authorized” by the Terms of Service.4
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`Second, PersonalWeb’s amendments for the “part value” terms seek to broaden the claims
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`to cover subject matter that the patents do not describe. PersonalWeb alleges infringement based
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`on the application of an MD5 hash algorithm to a file that has a “constant seed string” added to it.
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`This theory is precluded by Judge Gilstrap’s constructions, which require that to infringe, the “True
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`Name” must be created by applying a hash function to only the data in the file. Accordingly,
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`PersonalWeb now belatedly attempts to assert infringement under the doctrine of equivalents. This,
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`too, is simply a hedge in case the Court adopts Judge Gilstrap’s prior constructions.
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`Because
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`these amendments would make substantive changes
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`to PersonalWeb’s
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`infringement theories based not on any newly discovered evidence, but instead based on arguments
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`PersonalWeb had been aware of for years, Amazon and Twitch opposed amendment. (Id., Ex. 10.)
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`PersonalWeb then waited until June 11, after the Court conducted the Markman hearing, to file this
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`motion.
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`4 Although irrelevant to this motion, that theory is deeply flawed for several reasons. ETags
`and conditional GET requests do not include any function that checks whether website content is
`compliant with the website’s Terms of Service or any license. And even when a conditional GET
`returns a new file, that has no effect on a user’s ability to access older versions of the file cached
`locally.
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`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
`
`6
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`
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`Case No.: 5:18-md-02834-BLF-SVK
`Case No.: 5:18-cv-00767-BLF-SVK
`Case No.: 5:18-cv-05619-BLF-SVK
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`

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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 11 of 16
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`III.
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`STANDARD
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`A plaintiff may amend its infringement contentions only upon a timely showing of good
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`cause and with leave of the Court. Patent L.R. 3-6. The good cause requirement “disallows
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`infringement contentions from becoming moving targets throughout the lawsuit.” CBS Interactive,
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`Inc., 257 F.R.D. at 201. To demonstrate good cause, the burden is on the moving party to show it
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`“acted with diligence in promptly moving to amend when new evidence is revealed.” O2 Micro
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`Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006).
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`The patent rules contemplate that good cause may exist for amendment of contentions when
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`the Court construes terms in a manner different than that proposed by the party seeking amendment.
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`Patent L.R. 3-6. “But a differing claim construction in and of itself does not constitute good cause
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`to amend; the moving party must still establish its diligence.” Via Techs., Inc. v. ASUS Computer
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`Int’l, No. 14-cv-03586-BLF(HRL), 2017 WL 396172, at *2 (N.D. Cal. Jan. 30, 2017) (quotations
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`and citations omitted). Moreover, as another court in this district recently noted, “[c]oncern over
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`the possibility of a loss at claim construction does not amount to good cause.” Apple Inc. v.
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`Samsung Elecs. Co., No. 12-cv-0630-LHK(PSG), 2013 WL 3246094, at *4 (N.D. Cal. June 26,
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`2013).
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`If the moving party is not diligent, then “the inquiry should end” and the Court should deny
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`leave to amend. Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 236 F. Supp. 3d 1110, 1116
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`(N.D. Cal. 2017). If the moving party establishes diligence, the Court should then consider whether
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`the amendment will prejudice the opposing party and deny the motion where such prejudice would
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`occur. Id. at 1113.
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`IV. ARGUMENT
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`A.
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`PersonalWeb has failed to meet its burden to establish its diligence with
`respect to the proposed amendments.
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`To demonstrate diligence, the moving party must show “(1) diligence in discovering the
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`basis for amendment; and (2) diligence in seeking amendment once the basis for amendment has
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`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
`
`7
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`Case No.: 5:18-md-02834-BLF-SVK
`Case No.: 5:18-cv-00767-BLF-SVK
`Case No.: 5:18-cv-05619-BLF-SVK
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 12 of 16
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`been discovered.” Amgen Inc. v. Sandoz Inc., No. 14-cv-04741-RS (MEJ), 2017 WL 1399077, at
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`*2 (N.D. Cal. Apr. 18, 2017) (citation omitted). PersonalWeb failed to make the requisite showing
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`under either part of the test.
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`The claim construction disputes here are identical to those Judge Gilstrap resolved against
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`PersonalWeb three years ago. In this case, PersonalWeb proposes to construe authorization as
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`distinct from and broader than a valid license. See (Dkt. 380 at 98 (“First Joint Statement”).)
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`PersonalWeb understood this to be a key issue since at least November 18, 2015, when it submitted
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`its joint claim construction statement to Judge Gilstrap. (Prior Joint Statement at 10.) There, the
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`defendants proposed construing “unauthorized” as “non-compliant with a valid license” and
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`“authorization” as “compliance with a valid license.” (Id.) Judge Gilstrap carefully considered this
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`issue and sided with the defendants over PersonalWeb’s objections. (Prior Order at 25-28.)
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`It was no surprise that the same dispute is critical to this case too, as PersonalWeb accuses
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`the same basic HTTP function that it accused in the earlier case. Amazon disclosed in September
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`2018 that it would rely on Judge Gilstrap’s constructions of the authorization terms. (Shamilov
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`Decl., Ex. 3 (Tr. of Sept. 20, 2018 Proceedings) at 50:4-7.) Nearly five months ago in January
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`2019, Amazon proposed the constructions that PersonalWeb now claims justify amendment. (Id.,
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`Ex. 5 (Ex. A to Amazon’s Patent L.R. 4-2 Disclosures) at 12-13.) Amazon’s proposal cannot
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`possibly constitute good cause for amendment.5
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`The same is true for the “part value” terms. Since at least 2015, PersonalWeb had notice of
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`this claim construction issue and its importance to PersonalWeb’s infringement theories. (Prior
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`Joint Statement at 2.) In March 2016, Judge Gilstrap “expressly reject[ed]” PersonalWeb’s
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`argument that the True Name patents’ functions “can be based on information other than the data
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`5 PersonalWeb contends that it learned of Amazon’s claim construction positions for the first
`time when it reviewed the Joint Claim Construction and Prehearing Statement that it filed on March
`12, 2019. (See Mot. at 1, 5.) That is incorrect. PersonalWeb had notice of Amazon’s proposed
`constructions at least as of January 28, 2019, when Amazon disclosed them. See Via Techs., 2017
`WL 396172, at *3 (finding notice of defendant’s construction from date of service of patent local
`rule disclosures); see also Mot. at 3-4 (citing cases that found notice from date of service of patent
`local rule disclosures).
`
`OPP. TO PERSONALWEB’S MOT. FOR LEAVE
`TO AMEND INFRINGEMENT CONTENTIONS
`
`8
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`Case No.: 5:18-md-02834-BLF-SVK
`Case No.: 5:18-cv-00767-BLF-SVK
`Case No.: 5:18-cv-05619-BLF-SVK
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`Case 5:18-md-02834-BLF Document 452 Filed 06/25/19 Page 13 of 16
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`in the data item.” (Prior Order at 20.) Consistent with Judge Gilstrap’s prior construction, Amazon
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`here argues that the invention in the patents only works when computing the data in the data item
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`and nothing else. (First Joint Statement at 102-03.) PersonalWeb was on notice that Amazon
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`would seek a construction of the “part value” terms consistent with Judge Gilstrap’s opinion as of
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`January 28, 2019, at the very latest.6 (Shamilov Decl., Ex. 5 (Ex. A to Amazon’s Patent L.R. 4-2
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`Disclosures) at 9, 11.)
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`As the Federal Circuit has held, an unexplained delay of several months in seeking leave to
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`amend demonstrates a lack of diligence. See O2 Micro, 467 F.3d at 1367 (affirming district court’s
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`finding that “waiting three months between first learning the facts necessary to develop [plaintiff’s
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`infringement] theory and moving to amend its contentions” was not diligent). Courts in this district
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`have held the same. GoPro, 2017 WL 1278756, at *2 (waiting two months to move for leave to
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`amend was not diligent where it prevented the court from ruling before the parties filed their initial
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`Markman briefs).
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`Here, even assuming—contrary to fact and common sense—that PersonalWeb had no
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`notice of these disputes from the prior case, it waited nearly five months to seek amendment after
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`receiving Amazon’s specific proposed constructions for this case. Indeed, in its moving papers
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`PersonalWeb failed to provide any explanation at all for its decision to wait until after the Markman
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`hearing to file the motion. This delay alone shows a lack of diligence that requires denial of leave
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`to amend.7 See GoPro, 2017 WL 1278767, at *2; see also Par Pharm., Inc. v. Takeda Pharm. Co.,
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`6 PersonalWeb contends that it was unaware of this critical dispute until Amazon filed its
`responsive claim construction brief on April 22, 2019. (See Mot. at 2, 5.) But this is simply not
`credible, as it is the same conceptual dispute about the claims that PersonalWeb faced in its earlier
`case in 2016. Amazon proposed construing “part value” as “a value created by a computation on
`the sequence of bits that makes up the part.” (Shamilov Decl., Ex. 5 (Ex. A to Amazon’s Patent
`L.R. 4-2 Disclosures) at 11 (emphasis added).) For “being based on a first function of the contents
`of the specific part,” Amazon proposed a construction of “being based on a computation where the
`input is all of the data in the specific part.” (Id. at 9 (emphasis added).) The requirement to compute
`only the data is clear in context, and when c