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`Case 5:18-md-02834-BLF Document 466 Filed 07/24/19 Page 1 of 5
`
`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@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. and
`AMAZON WEB SERVICES, INC.
`
`
`
`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 B. HEDRICK (SBN 239359)
`vhedrick@stubbsalderton.com
`STUBBS ALDERTON MARKILES, LLP
`15260 Ventura Boulevard, 20TH Floor
`Sherman Oaks, CA 91403
`Telephone:
`(818) 444-4500
`Facsimile:
`(818) 444-4520
`
`Attorneys for PERSONALWEB
`TECHNOLOGIES, LLC
`
`DAVID D. WIER
`david.wier@level3.com
`Assistant General Counsel
`1025 Eldorado Boulevard
`Broomfield, CO 80021
`Telephone:
`(720) 888-3539
`
`Attorney for LEVEL 3
`COMMUNICATIONS, LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`IN RE PERSONAL WEB TECHNOLOGIES, LLC,
`Case No.: 5:18-md-02834-BLF-SVK
`ET AL., PATENT LITIGATION
`
`AMAZON.COM, INC., et al.,
` Plaintiffs,
`v.
`PERSONALWEB TECHNOLOGIES, LLC, et al.,
`
` Defendants.
`
`Case No. 5:18-cv-00767-BLF-SVK
`JOINT STATEMENT ON MOTION
`BY AMAZON.COM, INC. AND
`AMAZON WEB SERVICES, INC. TO
`COMPEL PERSONALWEB TO
`PROVIDE FURTHER
`INTERROGATORY RESPONSES
`Discovery Cut-Off: August, 16, 2019
`
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
` Counterclaimants,
`v.
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
` Counterdefendants.
`
`
`1
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`

`

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`Case 5:18-md-02834-BLF Document 466 Filed 07/24/19 Page 2 of 5
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`I. AMAZON’S STATEMENT
`Amazon requests the Court’s assistance with the discovery disputes described below. Fact
`discovery closes on August 16, 2019, and there are 213 days remaining until trial begins on March 16,
`2020. The discovery requests at issue are attached as Exs. 1 & 2.1 Amazon first raised these issues
`by letter on March 19, 2019. The parties conducted a two-hour conference on April 5, 2019, and
`Amazon served this motion on April 14.
`After several additional conferences the parties have resolved all issues in the original motion
`except for one: (1) PersonalWeb agreed to conduct a reasonable search and produce the non-privileged
`documents in its possession custody and/or control for RFP Nos. 1, 21, 23-24, 35-37, 41, 46-48, 50-
`53, 57-58, 62-66, 74, 81-85 and 87. It will serve supplemental responses to that effect. (2)
`PersonalWeb agreed to serve a further response to Interrogatory No. 3 that states that the products and
`services that it contends practice the alleged inventions of each patent-in-suit are the accused products
`in each litigation that it has filed claiming infringement of such patent(s). Amazon agrees that such a
`narrative response will resolve the issue that it raised with respect to PersonalWeb’s compliance with
`Rule 33(d). (3) PersonalWeb agreed to serve these supplemental responses by July 30, 2019.
`Amazon requests the Court order PersonalWeb to supplement its response to Interrogatory No.
`4, the remaining disputed request, within 7 days.
`Interrogatory 4 requires PersonalWeb to state in detail secondary considerations or objective
`evidence of non-obviousness. Amazon needs this information urgently for preparation of its opening
`expert report on invalidity. PersonalWeb’s response refers to the success of the accused Amazon
`technology and others but does not disclose any facts that connect that commercial success to the
`purported non-obviousness of the patents-in-suit. Nor is PersonalWeb willing to confirm its response
`is complete. A responding party must answer an interrogatory to the full extent of its knowledge. See
`Haggarty v. Wells Fargo Bank, N.A., No. 10–2416 CRB (JSC), 2012 WL 4113341, at *1 (N.D. Cal.
`Sept. 18, 2012) (“The responding party must answer interrogatories using not only personal knowledge
`but also ‘information immediately available to him or under his control.’”) (citation omitted). At a
`
`
`1 The same discovery disputes at issue for Amazon are also at issue for Twitch. See Exs. 3 & 4;
`Twitch’s First Set of Interrogatories Nos. 3-4; Twitch’s First Set of Requests for Production Nos. 1,
`
`18, 20-21, 32-35, 40-42, 44-47, 51-52, 56-60, 68, 75-79, 81.
`2
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`Case 5:18-md-02834-BLF Document 466 Filed 07/24/19 Page 3 of 5
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`minimum, the Court should compel PersonalWeb to provide the facts in its possession.
`Recently, PersonalWeb has also argued it cannot respond because Amazon did not identify
`specific obviousness combinations in its invalidity contentions. This objection is bogus for two
`reasons. First, the requested facts concern PersonalWeb’s purported invention and do not depend in
`any way on Amazon’s contentions in a lawsuit.2 Second, PersonalWeb never objected or sought any
`relief in the months it has had Amazon’s invalidity contentions. See, e.g., Fujifilm Corp. v. Motorola
`Mobility LLC, No. 12–cv–03587–WHO, 2015 WL 757575, at *29 (N.D. Cal. Feb. 20, 2015)
`(explaining proper recourse is a motion to compel). Regardless, Amazon did identify specific
`combinations in the charts included with the contentions. It mapped each limitation in the claims to a
`primary prior art reference and included pin citations to the other references that disclose the same
`limitation.3 Local Patent Rule 3-3(b) does not require anything more. See Avago Techs. Gen. IP PTE
`Ltd. v. Elan Microelectronics Corp., No. C04 05385 JW HRL, 2007 WL 951818, at *4 (N.D. Cal.
`Mar. 28, 2007) (contentions sufficient where defendant identified prior art groups and asserted they
`would invalidate however combined, even though that encompassed many combinations); see also
`Keithley v. Homestore.com, Inc., 553 F. Supp. 2d 1148, 1150 (N.D. Cal. 2008) (same).
`II.
`PERSONALWEB’S STATEMENT
`
`Interrogatory 4 ask for PersonalWeb’s contentions regarding secondary considerations of
`non-obviousness and, in a separate sentence (a discrete subpart), the nexus between claimed
`inventions and secondary considerations of non-obviousness. The nexus between secondary
`considerations of non-obviousness and a claim, however, depends on which features of the claims
`are disclosed in a single prior art reference. See Novartis v. Torrent Pharma. Ltd., 853 F.3d 1316,
`1330 (Fed, Cir. 2017).
`Amazon’s Invalidity Contentions list 54 prior art references as anticipating claims of the
`
`
`2 The secondary considerations are: (1) the invention’s commercial success, (2) long felt but
`unresolved needs, (3) the failure of others, (4) skepticism by experts, (5) praise by others, (6) teaching
`away by others, (7) recognition of a problem, (8) copying of the invention by competitors, and (9)
`other relevant factors. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Cardiac
`Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004); In re Rouffet, 149 F.3d
`1350, 1355 (Fed. Cir. 1998); In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992).
`
`3 Amazon can provide copies of the contentions if the Court so requests.
`3
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`Case 5:18-md-02834-BLF Document 466 Filed 07/24/19 Page 4 of 5
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`patents-in-suit and state, “Any of the references listed above may be combined to render obvious,
`and therefore invalidate, each of the asserted claims of the Patent-in-Suit as demonstrated above
`and/or in the accompanying claim charts.” Amazon’s Invalidity Contentions do not identify any
`combinations of two or more specific pieces of prior art as rendering any claims of the patents-in-
`suit obvious. Even if limited to combinations of just two or three references, Amazon’s Invalidity
`Contentions allege obviousness based on 26,235 different combinations of two or three of the 54
`listed prior art references. Asking PersonalWeb to form contentions as to secondary considerations
`of non-obviousness and the nexus between such indicia and each of the thousands of possible
`combinations of prior art Amazon relies on in its Invalidity Contentions is completely unreasonable,
`overbroad, and unduly burdensome. PersonalWeb should not be forced to answer it.
`Amazon ignores Novartis and that the nexus between secondary considerations of non-
`obviousness and a claim, depends on which features of the claims are missing in a single prior art
`reference when it states, incorrectly, that “the requested facts concern PersonalWeb’s purported
`invention and do not depend in any way on Amazon’s contentions in a lawsuit.”
`Further, Amazon’s generic statement, “Any of the references listed above may be combined
`to render obvious, and therefore invalidate, each of the asserted claims of the Patent-in-Suit as
`demonstrated above and/or in the accompanying claim charts,” is not sufficient as an “identification
`of any combinations of prior art showing obviousness” as required by Patent L.R. 3-3(b). See Slot
`Speaker Technologies, Inc. v. Apple, Inc., 2017 WL 235049 at *7 (N.D. Cal. 2017). As to invalidity
`contentions of obviousness based on a single prior art reference, Amazon’s Patent L.R. 3-3
`disclosures show each of the 24 charted references as disclosing every element of each of the charted
`patent claims and thus does not disclose what element of any of the claims is not met by the charted
`references, but would have been obvious in view of the charted reference. Accordingly, Amazon has
`not sufficiently disclosed any obviousness invalidity contention based on a single reference, either.
`Thus, for the additional reason that Amazon has not sufficiently disclosed any specific
`obviousness invalidity contentions in its Patent L.R. 3-3 disclosure, obviousness is no longer an
`issue in this case and Interrogatory No. 4 does not relate to any relevant issue in the case and is not
`reasonably calculated to lead to the discovery of any admissible evidence and thus need not be
`
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`4
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`Case 5:18-md-02834-BLF Document 466 Filed 07/24/19 Page 5 of 5
`
`answered by PersonalWeb.
`Amazon recently raised the argument that PersonalWeb should have objected to Amazon’s
`invalidity contentions earlier. This argument ignores, however, PersonalWeb’s argument here is not
`that Amazon’s invalidity contentions are necessarily deficient in general, just they do not provide
`enough information to allow PersonalWeb to answer Interrogatory No, 4.
`Respectfully submitted,
`
`
`
`Dated: July 24, 2019
`
`STUBBS, ALDERTON & MARKILES, LLP
`
`
`
`By: /s/ Wesley W. Monroe
`Michael A. Sherman
`Jeffrey F. Gersh
`Sandeep Seth
`Wesley W. Monroe
`Stanley H. Thompson, Jr.
`Viviana Boero Hedrick
`Attorneys for Defendants
`
` Attorneys for PERSONALWEB
`TECHNOLOGIES, LLC
`
`
`
`
`
`FENWICK & WEST LLP
`
`
`
`Dated: July 24, 2019
`
`
`
`By: /s/ J. David Hadden
`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@fenwick.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. and
`AMAZON WEB SERVICES, INC
`5
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