Case 5:18-md-02834-BLF Document 482 Filed 08/07/19 Page 1 of 4
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`
`
`
`
`IN RE: PERSONALWEB
`TECHNOLOGIES, LLC, ET AL. PATENT
`LITIGATION
`
`
`
`
`
`Case No. 18-md-02834-BLF (SVK)
`
`
`ORDER REGARDING THE PARTIES’
`JULY 24, 2019 DISCOVERY DISPUTE
`
`Re: Dkt. No. 466
`
`
`
`
`
`
`
`Before the Court is the Parties’ joint statement on a motion by Amazon.com, Inc. and
`
`Amazon Web Services, Inc. (collectively “Amazon”) to compel PersonalWeb Technologies, LLC
`
`and Level 3 Communications, LLC (collectively “PersonalWeb”) to supplement their response to
`
`Amazon’s Interrogatory No. 4. ECF 466. The Court reviewed the Parties’ submission and held a
`
`telephonic hearing on August 7, 2019. For the reasons stated on the record and set forth herein,
`
`the Court GRANTS Amazon’s motion.
`
`I.
`
`BACKGROUND
`
`Amazon’s Interrogatory No. 4 requests:
`
`If you contend that there exist any secondary considerations or
`objective evidence of nonobviousness with respect to each of the
`claimed inventions of the patents-in-suit, state in detail the full factual
`and legal basis for your contention, including identifying all persons
`and documents supporting this contention. Your answer should also
`identify and explain any nexus you contend exists between the
`claimed invention(s) and any evidence of secondary considerations or
`objective evidence of non-obviousness, including without limitation
`a claim-by-claim description of the connection between each of the
`asserted claims and any evidence of commercial success.
`
`
`Amazon’s First Set of Interrogatories, Ex. 1, ECF 466-1 at 7–8.
`
`////
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:18-md-02834-BLF Document 482 Filed 08/07/19 Page 2 of 4
`
`
`
`In response, PersonalWeb asserted various objections. Its substantive response is as
`
`follows:
`
`
`The non-obviousness of the Patents-in-Suit’s claimed inventions is
`reflected by the tremendous commercial success achieved by AWS’
`S3 and CloudFront products and services. Upon information and
`belief, Amazon’s accused products have produced millions of dollars
`in revenues due in part to its use of the inventions of the Patents-in-
`Suit.
`
`The non-obviousness of the Patents-in-Suit is also reflected by the
`commercial success achieved by
`the other defendants
`that
`PersonalWeb has sued and/or parties licensed under the True Names
`patents, including, but not limited to products referenced in
`PersonalWeb’s Response to Interrogatory No. 3, herein.
`
`
`PersonalWeb’s Response to Amazon’s First Set of Interrogatories, Ex. 1, ECF 466-1 at 13.
`
`Amazon argues that PersonalWeb’s response refers to the success of the accused
`
`technology of Amazon and others but “does not disclose any facts that connect that commercial
`
`success to the purported non-obviousness of the patent-in-suit.” ECF 466 at 2 (emphasis in
`
`original). Amazon further complains that PersonalWeb is unwilling to confirm that its response is
`
`complete. Id.
`
`PersonalWeb argues that its response is as complete as it realistically can be, in light of
`
`Amazon’s invalidity contentions. Id. at 3–4. In particular, PersonalWeb complains that Amazon’s
`
`contentions of obviousness combinations are not sufficiently specific, and therefore PersonalWeb
`
`cannot tether its secondary considerations to specific claims as requested by Interrogatory No. 4.
`
`Id. PersonalWeb further argues that in light of the state of Amazon’s invalidity contentions,
`
`obviousness “is no longer an issue in this case and Interrogatory No. 4 does not relate to any
`
`relevant issue in the case . . . .” Id. at 4. PersonalWeb closes its argument by suggesting that it is
`
`not challenging Amazon’s invalidity contentions per se, but rather that the contentions “do not
`
`provide enough information to allow PersonalWeb to answer Interrogatory No. 4.” Id. at 5.
`
`II.
`
`DISCUSSION
`
`As an initial matter, the Court takes PersonalWeb at its word that it points to Amazon’s
`
`invalidity contentions solely as an explanation as to why it cannot provide a more complete
`
`response to Interrogatory No. 4. Accordingly, the Court looks to Amazon’s obviousness
`
`2
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:18-md-02834-BLF Document 482 Filed 08/07/19 Page 3 of 4
`
`
`
`contentions solely for the purpose of evaluating PersonalWeb’s argument here.
`
`PersonalWeb argues that it cannot provide more precise secondary considerations or the
`
`nexus between the claimed inventions and evidence of secondary considerations because Amazon
`
`has not linked its obviousness combinations to specific claim elements. ECF 466 at 4.
`
`PersonalWeb further complains that “[a]sking 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 . . . is completely unreasonable, overbroad,
`
`and unduly burdensome.” Id. In support of its argument, PersonalWeb generally relies upon
`
`Novartis v. Torrent Pharma. Ltd., 853 F. 3d 1316, 1330 (Fed. Cir. 2017).
`
`The Court disagrees with PersonalWeb’s position. First, the guidance Novartis actually
`
`provides is that for evidence of secondary considerations to be “accorded substantial weight,”
`
`there must be a nexus “between the evidence (of secondary consideration) and the merits of the
`
`claimed invention.” 853 F. 3d at 1330. Interrogatory No. 4 is directed at the nexus between
`
`claimed inventions and secondary considerations. There is no requirement, as PersonalWeb seems
`
`to be suggesting, that PersonalWeb link its evidence of secondary considerations to each and every
`
`combination of obviousness.
`
`Second, PersonalWeb’s suggestion that it cannot discern which claims Amazon contends
`
`are obvious because of how Amazon organized its contentions is unavailing. After first noting
`
`that its contentions are not properly at issue in this motion, Amazon states that, “[i]t 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.” ECF 466 at 3. The Court reviewed Amazon’s
`
`invalidity contention claim charts and verified Amazon’s statement. Further, at the hearing,
`
`Amazon confirmed that to the extent it relies upon prior art combinations in support of
`
`obviousness, those combinations are as set forth in the claim charts attached to its invalidity
`
`contentions. Amazon further confirmed that there are obviousness allegations, supported by cites
`
`to prior art, for each claim in suit.
`
`////
`
`////
`
`3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`

`

`Case 5:18-md-02834-BLF Document 482 Filed 08/07/19 Page 4 of 4
`
`
`
`
`
`Accordingly, in consideration of the law and facts discussed above, the Court finds that
`
`PersonalWeb has an obligation to respond to Amazon’s Interrogatory No. 4 with facts in support
`
`of secondary considerations properly linked to each claimed invention. Novartis, 853 F. 3d at
`
`1330.
`
`III. CONCLUSION
`
`The Court GRANTS Amazon’s motion to compel and ORDERS PersonalWeb to
`
`supplement its response to Interrogatory No. 4 in compliance with this Order by Friday, August
`
`16, 2019.
`
`SO ORDERED.
`
`
`
`Dated: August 7, 2019
`
`
`
`
`
`
`
`SUSAN VAN KEULEN
`United States Magistrate Judge
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Northern District of California
`
`United States District Court
`
`