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`Case 5:18-md-02834-BLF Document 456 Filed 07/02/19 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 PersonalWeb Technologies, LLC
`[Additional Attorneys listed below]
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`IN RE PERSONAL WEB TECHNOLOGIES,
`LLC, ET., AL., PATENT LITIGATION
`
`
`CASE NO.: 5:18-md-02834-BLF
`
`
`AMAZON.COM, INC., et., al.,
`
` Plaintiffs,
`
`
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC,
`et., al.,
`
`
`
` Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`
`
`v.
`
`Counterclaimants,
`
`Case No.: 5:18-cv-00767-BLF
`
`Case No.: 5:18-cv-05619-BLF
`
`
`PERSONALWEB TECHNOLOGIES
`LLC’S REPLY IN SUPPORT OF
`MOTION FOR LEAVE TO AMEND ITS
`INFRINGEMENT CONTENTIONS
`
`
`
`
`
`
`
`
`Trial Date: March 16, 2020
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`
`
`Counterdefendants.
`
`
`
`
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`
`
`
`
`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 456 Filed 07/02/19 Page 2 of 8
`
`
`
`PERSONALWEB TECHNOLOGIES, LLC, a
`Texas limited liability company, and
`LEVEL 3 COMMUNICATIONS, LLC,
`a Delaware limited liability company,
`
`
`
`v.
`
`TWITCH INTERACTIVE, INC. a Delaware
`corporation,
`
`
`Plaintiffs,
`
`
`
`Defendant.
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 456 Filed 07/02/19 Page 3 of 8
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`
`I.
`
`ARGUMENT
`
`A.
`
`PersonalWeb Did Not Have Reasonable Notice of Amazon’s
`“Authorization” Claim Construction Position Until March 2019 and of
`Twitch’s “Only” Claim Construction Position Until April 18, 2019.
`
`1.
`
`Prior Court Ruling
`
`Prior to the present suits before this Court, the PersonalWeb patents have been the subject of
`
`ten federal district court cases, one arbitration, eighteen Inter partes reexaminations, and seven ex
`
`parte reexaminations. Amazon now, with the benefit of hindsight, wants to focus on one particular
`
`non-final ruling and one filing out of the hundreds of rulings and filings in these 36 proceedings as
`
`putting PersonalWeb on notice of what Amazon was going to, but had not yet argued, regarding claim
`
`construction. Further, these prior proceedings involved very different products and methods than are
`
`accused in the present cases, in many cases involved different PersonalWeb patents or different claims
`
`of the PersonalWeb patents that are in common. None of the prior cases went to trial or were disposed
`
`of by summary judgment and thus none of the rulings were subject to appeal. Yet, in its opposition,
`
`Amazon argues that PersonalWeb should have anticipated that Amazon would argue the construction
`
`of two particular terms found in one particular claim construction ruling. Opp. at 2, 4. This despite
`
`Amazon not even expressly taking one of the positions expressed in a prior claim construction ruling
`
`until the Markman hearing on May 24, 2019.
`
`That the prior court rulings are not the same as the claim construction issues just argued in the
`
`present cases is shown by Amazon’s careful choice of words comparing them. For example, Amazon
`
`states, “Amazon’s proposed construction for ‘authorization’ and ‘unauthorized or unlicensed’ track
`
`Judge Gilstrap’s 2016 constructions.” Opp. at 2 (emphasis added).
`
`Similarly, Amazon also states, “Amazon proposed constructions for ‘part value’ and ‘being
`
`based on a first function of the contents of the specific part’ that, consistent with Judge Gilstrap’s
`
`order, required the function’s input to be only the data in the file and nothing else. ([Shamilov Decl.,]
`
`Ex. 5 (Ex. A to Amazon’s Patent L.R. 4-2 Disclosures) at 9, 11.)” Opp. at 4 (emphasis added).
`
`It is noteworthy that Amazon’s Patent L.R. 4-2 Disclosures that Amazon cites here actually
`
`propose the constructions, “a value created by a computation on the sequence of bits that makes up
`
`the part” and “being based on a computation where the input is the all of the data in the specific part,”
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`1
`
`
`
`
`
`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 456 Filed 07/02/19 Page 4 of 8
`
`respectively, for these two claim terms. (Dkt 452-6, Declaration of Saina S. Shamilov in Support of
`
`Opposition to Motion for Leave to Amend (“Shamilov Decl.”), Ex. 5 at 9, 11). However, the proposed
`
`construction from the IBM case that Amazon relies on so heavily to show PersonalWeb had early
`
`notice of Amazon’s claim construction in this case is very different from the construction Amazon
`
`proposed in its Patent L.R. 4-2 disclosure. As Amazon states in their opposition:
`
`In the same November 2015 joint claim construction statement, defendants IBM and
`
`GitHub proposed construing “given function of the data [in the data file]” as
`
`“computation where the input is all of the data in the data file, and only the data in
`
`the data file.” (Prior Joint Statement at 2 (alteration in original).) PersonalWeb
`
`argued that the function to generate a True Name could be open-ended—i.e., it could
`
`use something other than “all of the data in the data file.” (Prior Order at 15-16.)
`
`Opp. at 4 (emphasis added). The emphasized “only” language in the IBM Joint Construction
`
`Statement is nowhere to be found in Amazon’s proposed construction in its Patent L.R. 4-2
`
`Disclosures. Further, as discussed in more detail below, Judge Freeman forced Amazon to modify
`
`this proposed construction to expressly include the “only” language to match what Amazon was
`
`arguing at the Markman hearing.
`
`Plainly, neither of Amazon’s original proposed constructions “required the function’s input to
`
`be only the data in the file and nothing else” as Amazon now argues. Id.
`
`2.
`
`September 2018 Preliminary Case Management Conference
`
`Amazon states “At the September 2018 preliminary case management conference in this case,
`
`Amazon and Twitch made clear that they would seek the same constructions here: ‘Judge Gilstrap . .
`
`. found that what [unauthorized or unlicensed] means is you have to determine whether you are
`
`compliant with a valid license’ and ‘[t]hat’s what these claims require.’ (Shamilov Decl., Ex. 3 (Tr. of
`
`Sept. 20, 2018 Proceedings at 50:4-7).)
`
`This is a complete misrepresentation of what Amazon told the Court, reversing the order of the
`
`two quotes and omitting the predicate for “that.”
`
`What Amazon actually said was, “So the idea is you look at all the true names on a Person's
`
`computer, you compare those against a list of people who have rights to that particular content,
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`2
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 456 Filed 07/02/19 Page 5 of 8
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`software, or music, right. That's what these claims require.” (Shamilov Decl., Ex. 3 at 50:1-4)
`
`PersonalWeb’s proposed Amended Infringement Contentions have nothing to do with comparing
`
`people to a list of licensed users. It is immediately after this (incorrect) explanation of what the claims
`
`require that Amazon told the Court, “Two judges have construed them, Judge Gilstrap and Judge
`
`Davis, and they both found that what this means is you have to determine whether you are compliant
`
`with a valid license.” (Shamilov Decl., Ex. 3 at 50:4-7) (emphasis added). This is anything but the
`
`“clear” expression of the claim construction position that Amazon eventually took, particularly as
`
`Judge Davis’ construction is conspicuously absent from Amazon’s opposition.
`
`3.
`
`January 2019 Claim Constructions
`
`As discussed in PersonalWeb’s moving papers, Amazon and PersonalWeb exchanged
`
`preliminary claim constructions for 35 different claim terms in January 2019. Per the Patent Local
`
`Rules, Amazon and PersonalWeb knew that this list of 35 terms would have to be pared down to only
`
`ten that the Court would actually construe (Patent L.R. 4-1(b)) and that proposed constructions are
`
`often changed during the meet and confer process that lead to the selection of the final ten terms
`
`selected for construction by the Court. Under Amazon’s logic, though, PersonalWeb (or any other
`
`patent owner) would have to immediately decide whether any of the 35 preliminary claim
`
`constructions necessitated amending their infringement contentions, even though it was known that
`
`25 of these claim terms would later be dropped. This is an unreasonable burden to impose on a patent
`
`plaintiff and Amazon has not cited any cases that support the idea that the proper time to amend
`
`infringement contentions is only after the Preliminary Claim Constructions under Patent L.R. 4-2 and
`
`before the parties submit the Joint Claim Construction and Prehearing Statement under Patent L.R. 4-
`
`3. Indeed, if Amazon’s logic were accepted, patent defendants would be incentivized to include as
`
`many claim terms as possible into their Preliminary Claim Constructions just so the patent plaintiff
`
`would have to consider amending their infringement contentions for every one of the claim terms in
`
`the Preliminary Claim Constructions, regardless of how spurious they are and how likely it is a term
`
`will make the final ten.
`
`The date that Amazon took its official claim construction positions was March 12, 2019 in the
`
`Joint Claim Construction and Prehearing Statement. This is the date that PersonalWeb should be
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`3
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 456 Filed 07/02/19 Page 6 of 8
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`considered to be on notice of Amazon’s “authorization” claim construction contentions.
`
`Even if the Court considers the date of the Preliminary Claim Constructions, January 28, 2019,
`
`to be significant as to the “authorization” claim terms, PersonalWeb provided red-lined proposed
`
`amended infringement contentions to Amazon on April 18, 2019. This was more than a month before
`
`the May 24, 2019 Markman hearing.
`
`The constructions Amazon proposed to the Court for the “part value” and “given function”
`
`claim terms, on the other hand, were not in Amazon’s Preliminary Claim Constructions. Without
`
`actually including “only” in their proposed constructions, Amazon argued in their April 22, 2019
`
`Claim Construction Responsive Brief that the terms “part value” and “given function” included an
`
`“only” requirement. At the Markman hearing on May 24, 2019, at the Court’s strong suggestion,
`
`Amazon finally agreed to change its proposed construction to match its arguments, adding “only.”
`
`Contrary to Amazon’s mischaracterization, however, PersonalWeb did not wait until the Markman
`
`hearing for Amazon to expressly change its proposed construction, but rather it provided redlined
`
`proposed amended infringement contentions to Twitch reflecting the possible “only” construction on
`
`May 8, 2019. Not until May 14, 2019 did Amazon and Twitch inform PersonalWeb that it would
`
`oppose PersonalWeb’s amendment of its Infringement Contentions.
`
`B.
`
`PersonalWeb Did Not Wait Until After the Markman Hearing to Seek to
`Amend Its Infringement Contentions.
`
`As Amazon admits, PersonalWeb asked Amazon if they would agree to allowing the
`
`“authorization” amendments on April 18, 2019—before Amazon’s Markman brief was due. Opp. at
`
`5. Amazon also does not contest that PersonalWeb asked Twitch if they would agree to allow the
`
`“only” amendments 10 days after they filed their Markman opposition and 10 days before the
`
`Markman hearing. Mot. at 2. Amazon’s repeated reference to the date when PersonalWeb filed its
`
`motion for leave to amend its infringement contentions rather than the dates when PersonalWeb asked
`
`Amazon and Twitch for consent to amend its Infringement Contentions is disingenuous. This is
`
`particularly disingenuous when Amazon waited almost a full month after PersonalWeb sent Amazon
`
`the redlined proposed Amended Infringement Contentions to inform PersonalWeb that it would
`
`oppose PersonalWeb’s amendment. PersonalWeb filed its Motion for Leave to Amend only ten days
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`4
`
`
`
`
`
`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 456 Filed 07/02/19 Page 7 of 8
`
`after Amazon changed its “part value” and “given function” proposed claim constructions in open
`
`court.
`
`C.
`
`Amazon’s Lack of Diligence Arguments Are Belied by Its Seeking to
`Amend Its Invalidity Contentions despite Receiving No New Information
`After the Invalidity Contentions Were Served.
`
`Concurrently with Amazon’s opposition to PersonalWeb’s Motion for Leave to Amend Its
`
`Infringement Contentions, Amazon is seeking PersonalWeb’s agreement to stipulate to a court order
`
`that would allow Amazon to amend its Invalidity Contentions to disclose combinations of specific
`
`prior art references to render claims of the patents-in-suit obvious. (Declaration of Wesley W. Monroe
`
`in Support of Reply to Motion for Leave to Amend (“Monroe Decl.”), ¶ 2). Amazon is seeking
`
`PersonalWeb’s agreement to allow it to amend its Invalidity Contentions despite the fact that its
`
`request is not based on its receipt of any new information after Amazon served its Invalidity
`
`Contentions on December 24, 2018 and Twitch served its Invalidity Contentions on February 5, 2019.
`
`What this shows is that both the patent holder and the allegedly infringing parties are continuing to
`
`further particularize and refine infringement/invalidity allegations, and that neither side is now
`
`experiencing any prejudice as a result.
`
`D.
`
`Amazon Has Failed to Identify Any Specific Prejudice
`
`While Amazon offers general platitudes regarding the purpose behind the patent local rules,
`
`Amazon does not point to any specific prejudice it would suffer should PersonalWeb’s motion be
`
`granted. The only prejudice Amazon alleges at all is a general statement that “claim construction
`
`briefing has concluded and the Markman hearing is now complete.” Opp. at 10. However, Amazon
`
`points to nothing it would have argued differently in its Markman brief or at the Markman hearing had
`
`it been aware of PersonalWeb’s proposed Amended Infringement Contentions. Of course, this makes
`
`perfect sense as PersonalWeb provided its proposed Amended Infringement Contentions for Amazon
`
`before Amazon filed its Markman brief and more than a month before the Markman hearing, and
`
`further PersonalWeb provided its proposed Amended Infringement Contentions for Twitch ten days
`
`before the Markman hearing (and ten days after Twitch first made the argument that prompted the
`
`amendment).
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`5
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 456 Filed 07/02/19 Page 8 of 8
`
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`II.
`
`CONCLUSION
`
`PersonalWeb was diligent in seeking to amend its Infringement Contentions a month after
`
`receiving Amazon’s final proposed claim constructions for “authorization” in March 2019 and ten
`
`days after receiving Twitch’s Markman brief. Amazon has failed to show that it will suffer any
`
`prejudice should PersonalWeb be allowed to amend its Infringement Contentions. The Court should
`
`grant PersonalWeb’s motion.
`
`Dated: July 2, 2019
`
`Respectfully submitted,
`
`8
`
`
`
`
`
`STUBBS, ALDERTON & MARKILES, LLP
`
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`Dated: July 2, 2019
`
`
`
`
`By: /s/ Michael A. Sherman
`Michael A. Sherman
`Jeffrey F. Gersh
`Sandeep Seth
`Wesley W. Monroe
`Stanley H. Thompson, Jr.
`Viviana Boero Hedrick
`Attorneys for Patent Plaintiffs
`PERSONALWEB TECHNOLOGIES, LLC
`
`
`MACEIKO IP
`
`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
`
`
`
`
`PERSONALWEB’S REPLY ISO
`MOTION FOR LEAVE TO AMEND
`INFRINGEMENT CONTENTIONS
`
`
`6
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`