`Case 5:18-md-02834—BLF Document 457-1 Filed 07/03/19 Page 1 of 6
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:18-md-02834-BLF Document 457-1 Filed 07/03/19 Page 2 of 6
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`From:
`Sent:
`To:
`Cc:
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`Subject:
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`Sandy Seth <sseth@stubbsalderton.com>
`Monday, July 1, 2019 4:43 PM
`Melanie Mayer; Ravi Ranganath; David Hadden; Amazon_PersonalWeb_Team
`Viviana Boero Hedrick; Ted Maceiko; Wesley Monroe; Jeffrey Gersh; Stanley H. Thompson Jr.; Michael
`Sherman
`RE: PersonalWeb Patent Litigation - Invalidity Contentions/Report
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`Melanie, following up on the email below please advise on some available times tomorrow when we can discuss.
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`Thank you.
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`Regards,
`
`Sandy
`
`From: Sandy Seth
`Sent: Friday, June 28, 2019 4:55 PM
`To: Melanie Mayer <mmayer@fenwick.com>; Ravi Ranganath <rranganath@fenwick.com>; David Hadden
`<DHadden@fenwick.com>; Amazon_PersonalWeb_Team <Amazon_PersonalWeb_Team@fenwick.com>
`Cc: Viviana Boero Hedrick <vhedrick@stubbsalderton.com>; Ted Maceiko <ted@maceikoip.com>; Wesley Monroe
`<wmonroe@stubbsalderton.com>; Jeffrey Gersh <jgersh@stubbsalderton.com>; Stanley H. Thompson Jr.
`<sthompson@stubbsalderton.com>; Michael Sherman <masherman@stubbsalderton.com>
`Subject: RE: PersonalWeb Patent Litigation ‐ Invalidity Contentions/Report
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`Melanie:
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`Why do you believe Amazon would be entitled to rely upon any obviousness combinations? Rule 3‐3(b) requires a
`disclosure of ‘[w]hether each item of prior art anticipates each asserted claim or renders it obvious,’ and if ‘obviousness
`is alleged, an explanation of why the prior art renders the asserted claim obvious, including an identification of any
`combinations of prior art showing obviousness.’ Vague or ‘catch‐all phrases’ of obviousness are insufficient.” Slot
`Speaker Technologies, Inc. v. Apple, Inc. 2017 WL 235049 at *5 (N.D. Cal 2017).
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`Amazon and Twitch charted 24 references in their invalidity contentions. Amazon and Twitch did not chart even a single
`obviousness combination nor did they provide any explanation of why any given combination of references would
`render any given claim obvious. In the more than seven months since providing its invalidity contentions has Amazon
`ever provided any excuse for such failure or moved to supplement its invalidity contentions .
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`As we already stated in our email to Ravi, it is our position that Amazon and Twitch’s expert report cannot include any
`obviousness combinations in light of the above. The report is limited to discussing why any of the 24 charted references
`anticipate or individually render each asserted claims obvious.
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`PersonalWeb therefore is not inclined to enter any stipulation that would allow the invalidity report to include any
`obviousness combinations without an agreed limit to a reasonable number of anticipation references and obviousness
`combinations.
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`We would welcome a discussion to see what, if any, stipulation can be reached. Are you and Ravi available Monday?
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`Regards,
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`1
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`Case 5:18-md-02834-BLF Document 457-1 Filed 07/03/19 Page 3 of 6
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`Sandy
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`From: Melanie Mayer <mmayer@fenwick.com>
`Sent: Tuesday, June 25, 2019 3:24 PM
`To: Sandy Seth <sseth@stubbsalderton.com>; Ravi Ranganath <rranganath@fenwick.com>; David Hadden
`<DHadden@fenwick.com>; Amazon_PersonalWeb_Team <Amazon_PersonalWeb_Team@fenwick.com>
`Cc: Viviana Boero Hedrick <vhedrick@stubbsalderton.com>; Ted Maceiko <ted@maceikoip.com>; Wesley Monroe
`<wmonroe@stubbsalderton.com>; Jeffrey Gersh <jgersh@stubbsalderton.com>; Stanley H. Thompson Jr.
`<sthompson@stubbsalderton.com>; Michael Sherman <masherman@stubbsalderton.com>
`Subject: RE: PersonalWeb Patent Litigation ‐ Invalidity Contentions/Report
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`Sandy,
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`Under Amazon and Twitch’s proposal, Amazon and Twitch will identify the specific prior art references and obviousness
`combinations they will rely on. The local rules of the Court do not require Amazon and Twitch to limit the number of
`prior art references or combinations and we are not proposing any such limits.
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`Regards,
`Melanie
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`MELANIE MAYER
`Partner | Fenwick & West LLP | +1 206‐389‐4569 | mmayer@fenwick.com
`Admitted to practice in Washington.
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`From: Sandy Seth [mailto:sseth@stubbsalderton.com]
`Sent: Friday, June 21, 2019 3:53 PM
`To: Ravi Ranganath <rranganath@fenwick.com>; David Hadden <DHadden@fenwick.com>;
`Amazon_PersonalWeb_Team <Amazon_PersonalWeb_Team@fenwick.com>
`Cc: Viviana Boero Hedrick <vhedrick@stubbsalderton.com>; Ted Maceiko <ted@maceikoip.com>; Wesley Monroe
`<wmonroe@stubbsalderton.com>; Jeffrey Gersh <jgersh@stubbsalderton.com>; Stanley H. Thompson Jr.
`<sthompson@stubbsalderton.com>; Michael Sherman <masherman@stubbsalderton.com>
`Subject: RE: PersonalWeb Patent Litigation ‐ Invalidity Contentions/Report
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`Ravi,
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`Thanks for your email.
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`Before we respond, how many anticipation references and how many obviousness combinations are you willing to limit
`your identification to three weeks before your expert reports are due? Also are you willing to limit the obviousness
`references to be selected only from the charted set?
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`Regards,
`
`Sandy
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`Case 5:18-md-02834-BLF Document 457-1 Filed 07/03/19 Page 4 of 6
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`From: Ravi Ranganath <rranganath@fenwick.com>
`Sent: Thursday, June 20, 2019 5:15 PM
`To: Sandy Seth <sseth@stubbsalderton.com>; David Hadden <DHadden@fenwick.com>; Amazon_PersonalWeb_Team
`<Amazon_PersonalWeb_Team@fenwick.com>
`Cc: Viviana Boero Hedrick <vhedrick@stubbsalderton.com>; Ted Maceiko <ted@maceikoip.com>; Wesley Monroe
`<wmonroe@stubbsalderton.com>; Jeffrey Gersh <jgersh@stubbsalderton.com>; Stanley H. Thompson Jr.
`<sthompson@stubbsalderton.com>; Michael Sherman <masherman@stubbsalderton.com>
`Subject: RE: PersonalWeb Patent Litigation ‐ Invalidity Contentions/Report
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`Sandy:
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`While Amazon and Twitch’s invalidity contentions fully complied with the patent local rules, we agree it is in the parties’
`interests to help narrow issues in advance of expert reports.
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`Along these lines, PersonalWeb’s Patent L.R. 3‐8 damages contentions provide no information about its actual damages
`theory. For example, the contentions do not identify specific licenses on which PersonalWeb and its expert will rely, do
`not describe how the claimed inventions drive Amazon or Twitch’s revenue or success, or provide any analysis under the
`Georgia‐Pacific factors. Instead, those contentions merely lay out basic principles of law and describe approaches and
`factors PersonalWeb “plans to consider” without any specific contentions related to damages or factual support for
`those contentions. Amazon and Twitch thus have no reasonable notice of PersonalWeb’s damages theories.
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`To address both sides’ concerns, we propose that 3 weeks before the opening expert report deadlines:
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`(1) Amazon and Twitch will identify the specific prior art references and obviousness combinations they will rely on,
`and to the extent not already disclosed in the invalidity contentions, will identify which elements are met by
`each prior art reference in an obviousness combination;
`(2) PersonalWeb will supplement its Patent L.R. 3‐8 damages contentions, identifying separately for Amazon and
`Twitch, at least the following: (i) the type of damages PersonalWeb will seek (e.g., reasonable royalty, lump
`sum, etc.); (ii) the license agreements, if any, PersonalWeb will rely on to support their damages contentions;
`(iii) a description of the factual and legal bases for PersonalWeb’s contention, if any, that the claimed inventions
`drive consumer demand and revenue for Amazon and Twitch’s accused products; and (iv) a description of the
`relevant royalty base and how, if at all, PersonalWeb contends that base should be apportioned.
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`Let us know if PersonalWeb agrees.
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`Best regards,
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`RAVI RANGANATH
`Associate | Fenwick & West LLP | +1 650‐335‐7614 | rranganath@fenwick.com
`Admitted to practice in California.
`
`From: Sandy Seth [mailto:sseth@stubbsalderton.com]
`Sent: Tuesday, June 18, 2019 1:40 PM
`To: David Hadden <DHadden@fenwick.com>; Amazon_PersonalWeb_Team
`<Amazon_PersonalWeb_Team@fenwick.com>
`Cc: Viviana Boero Hedrick <vhedrick@stubbsalderton.com>; Ted Maceiko <ted@maceikoip.com>; Wesley Monroe
`<wmonroe@stubbsalderton.com>; Jeffrey Gersh <jgersh@stubbsalderton.com>; Stanley H. Thompson Jr.
`<sthompson@stubbsalderton.com>; Michael Sherman <masherman@stubbsalderton.com>
`Subject: RE: PersonalWeb Patent Litigation ‐ Invalidity Contentions/Report
`
`Dear David,
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`Case 5:18-md-02834-BLF Document 457-1 Filed 07/03/19 Page 5 of 6
`We write concerning Amazon’s and Twitch’s invalidity contentions.
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`The respective invalidity charts are just shy of 6,000 pages each and chart anticipation/obviousness for 24 references
`and cite to a total 19 patents, 26 non‐patent publications and 8 systems/services. Moreover, in these invalidity
`contentions, Amazon and Twitch take the position that (at least) any one of these 24 charted references may be used in
`combination with any other of the 53 total references in uncharted obviousness combinations. That would include
`thousands of potential obvious combinations. We do not believe in their current form these invalidity contentions give
`us reasonable notice of the actual obviousness combinations you will be relying upon since there is no accompanying
`analysis as to which specific combinations you allege to disclose which specific elements.
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`Consequently, we believe your expert report cannot get into specific element‐by‐element combinations that are not
`disclosed in your contentions, and therefore there would be no obviousness combinations your expert could make in the
`report. In other words, our position is that your expert report could only include the 24 charted references used by
`themselves (and not in combination with any other reference) to opine that a given claim is obvious.
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`Our goal is always to come up with a stipulated solution before troubling Magistrate Van Keulen or the Court with any
`matter. To that end we propose two possible solutions:
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`1. You can inform us six weeks ahead of time (so three weeks before your invalidity expert report is due) what
`precise anticipation references and obviousness combinations the expert report will include and include an
`element‐by‐element disclosure for obviousness combinations as well as the motivation to combine each specific
`prior art combinations; or
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`2. We will have an additional month to submit our rebuttal report after receiving your invalidity expert report.
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`We are happy to discuss further details of either of these solutions in the hopes we can stipulate to one. Please let us
`know a time in the next couple of days that you (or any colleague of yours) can discuss and resolve this with one of us.
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`Thank you.
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`Regards,
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`Sandy
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` Website
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`Sandeep "Sandy" Seth
`Of Counsel
`sseth@stubbsalderton.com
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`Stubbs Alderton & Markiles, LLP
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`Sherman Oaks, CA 91403
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`Case 5:18-md-02834-BLF Document 457-1 Filed 07/03/19 Page 6 of 6
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