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`Case 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 1 of 7
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`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@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
`[Additional Attorneys listed below]
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`IN RE PERSONAL WEB TECHNOLOGIES,
`Case No.: 5:18-md-02834-BLF-SVK
`LLC, ET AL., PATENT LITIGATION
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`v.
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`Counterclaimants,
`
`Plaintiffs,
`
`Case No.: 5:18-cv-00767-BLF-SVK
`JOINT STATEMENT REGARDING
`MOTION TO COMPEL: PRODUCTION
`OF DOCUMENTS AND FURTHER
`INTERROGATORY RESPONSES FROM
`PERSONALWEB
`
`
`
`v.
`AMAZON.COM, INC., and AMAZON WEB
`SERVICES, INC.,
`Counterdefendants.
`
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`
`
`
`
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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 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 2 of 7
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`I.
`
`AMAZON’S STATEMENT
`Amazon requests the Court’s assistance with discovery issues that relate to requests (attached
`as Exhibits 1 & 2) served on April 25, 2019. Fact discovery closes on August 16, 2019; trial is set on
`March 16, 2020. The parties conducted a conference on July 17, 2019.
`Interrogatory Nos. 11-14 ask PersonalWeb to disclose the facts that support its positions on
`patent validity. The PTAB invalidated a slew of claims in the patents during IPR proceedings.
`(Amazon can provide the PTAB decisions to the Court on request). No. 11 therefore asks
`PersonalWeb to explain the difference between each asserted claim and those held invalid, including
`how those differences are material to the Court’s analysis of invalidity.1 Nos. 12-14 request a
`comparison of the asserted claims to the invalid claim 70 of the ’310 patent. PersonalWeb provided a
`non-response that its patents are “presumed” valid and the interrogatories are “premature.” The Court
`should compel a full response. The requested information is plainly relevant: if the asserted claims
`are not patentably distinct from those held invalid, then they, too, are invalid. See, e.g., MaxLinear,
`Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1377 (Fed. Cir. 2018). PersonalWeb cannot dispute this: it
`did not assert any objection to the requests based on relevance, and therefore waived such objections.2
`And just because an expert may rely on the requested facts later does not make the requests
`“premature”; PersonalWeb must still turn over the facts in its possession now. See Amgen Inc. v.
`Sandoz Inc., No. 14-CV-04741-RS (MEJ), 2017 WL 1352052, at *2 (N.D. Cal. Apr. 13, 2017)
`(rejecting objection that requests were premature); see also Facedouble, Inc. v. Face.com, Inc., No.
`12CV1584-DMS MDD, 2014 WL 585868, at *3 (S.D. Cal. Feb. 13, 2014) (same); In re NCAA
`
`
`1 The Court should not credit PersonalWeb’s claim of burden in having to address “253 different
`claim combinations.” It did not object to the interrogatory based on burden, and has never proposed
`any compromise that would reduce its purported burden.
`2 PersonalWeb’s contention that it need not provide discovery on this issue because Amazon did
`not plead a defense of collateral estoppel lacks merit. First, Amazon pled a defense of invalidity, and
`the similarity of the asserted claims to those previously held invalid bears on that issue. Second, the
`Court may consider collateral estoppel sua sponte. See, e.g., Hawkins v. Risley, 984 F.2d 321, 324
`(9th Cir. 1993) (holding courts have such authority so long as “the parties ha[ve] adequate opportunity
`to examine and contest the application of preclusion”); Clements v. Airport Auth. of Washoe Cty., 69
`F.3d 321, 329-30 (9th Cir. 1995) (applying issue preclusion and declining to find waiver based on
`defendants’ failure to plead affirmative defense). In fact, Amazon requires PersonalWeb’s response
`to decide whether to amend its pleadings.
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`CASE NO: 5:18-MD-02834-BLF-SVK
`CASE NO: 5:18-CV-00767-BLF-SVK
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`Case 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 3 of 7
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`Student-Athlete Name & Likeness Licensing Litig., No. 09-CV-01967 CW NC, 2012 WL 4111728, at
`*4 (N.D. Cal. Sept. 17, 2012) (compelling response). The scheduling order also requires Amazon to
`disclose its expert’s invalidity opinion first: PersonalWeb should not be allowed to withhold evidence
`to ambush Amazon in rebuttal.
`RFPs No. 94 & 95. PersonalWeb’s right to assert the patents-in-suit is governed by license
`agreements between Kinetech, Inc. and Digital Island, Inc., the predecessors in interest of
`PersonalWeb and Level 3, respectively. Although the Kinetech License grants Level 3 the exclusive
`right to enforce the patents against content delivery networks (“CDNs”), PersonalWeb asserted
`infringement by Amazon’s CloudFront CDN. Amazon therefore contends that PersonalWeb lacks
`standing to assert this claim. The Kinetech License also contains terms that determine how the parties
`report and divide revenue from licenses to the patents in suit. Thus, Amazon requested documents
`related to the Kinetech License (No. 94) and communications between PersonalWeb and Level 3 (No.
`95). These are highly relevant. They bear on whether PersonalWeb has standing, as they will show
`the parties’ course of dealing under the Kinetech License, including how the parties interpreted the
`exclusive field terms and whether PersonalWeb gave the required written notice of its intent to sue in
`Level 3’s field. The documents are also relevant to damages, since they reflect licensing
`communications and the amounts paid under those licenses.
`After prolonged negotiation, PersonalWeb finally offered to produce draft licenses,
`communications of Kinetech and Digital Island, and communications with Level 3 regarding license
`administration only, but reiterated that it is withholding its other communications with Level 3 based
`on “common-interest privilege.” At 9:18 p.m. on July 23, 2019, Amazon emailed that it “would accept
`supplemental responses” that reflect this compromise. But the very next day, July 24, Level 3
`disclosed that PersonalWeb had initiated an arbitration against it “related to issues before this Court”
`including Amazon’s standing defense. (Dkt. 465.) The arbitration demand states that PersonalWeb
`had already provided Level 3 with “numerous written notices” about their dispute over the exclusive
`field terms in the Kinetech License and Level 3’s alleged failure to “cooperate” in the litigation against
`Amazon. Indeed, on July 25, PersonalWeb’s counsel represented to Judge Freeman that PersonalWeb
`and Level3 have engaged in “months” of communications about their dispute directly related to the
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`CASE NO: 5:18-MD-02834-BLF-SVK
`CASE NO: 5:18-CV-00767-BLF-SVK
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`Case 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 4 of 7
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`issues in this case. (See July 25, 2019 CMC Tr. at 6:15-17.)
`Yet, in negotiating its discovery dispute with Amazon, PersonalWeb concealed the fact that it
`had for months communicated with Level 3 about issues in the case for which those parties are adverse
`and therefore share no common interest. See Mondis Tech., Ltd. v. LG Elecs., Inc., No. 2:07-CV-565-
`TJW-CE, 2011 WL 1714304, at *4 (E.D. Tex. May 4, 2011) (“any communications in which the
`parties are negotiating their rights and relationships to each other are not to be protected”) (citation
`omitted).3 Amazon has also learned that PersonalWeb also intervened to prevent Level3 from
`producing documents that Level3 itself did not intend to withhold. All of these must be produced.
`The court should also require PersonalWeb furnish a privilege log of withheld documents: (1)
`PersonalWeb bears the burden to establish application of the privilege (see Leader Techs., Inc. v.
`Facebook, Inc., 719 F. Supp. 2d 373, 375-76 (D. Del. 2010); and (2) PersonalWeb’s prior concealment
`of its dispute with Level 3 and its related communications means its privilege claims should be
`scrutinized carefully.
`II.
`PERSONALWEB’S STATEMENT
`Interrogatories 11-14 seek PersonalWeb’s contentions regarding differences between the
`claims asserted in the present case with 23 invalidated claims spread among the 10 “TrueName”
`patents. These interrogatories seek no facts—only contentions that would ordinarily be contained in a
`patent owner’s rebuttal expert report. Indeed, Amgen v. Sandoz, cited by Amazon for “rejecting
`objection that requests were premature” explicitly found that while obviousness related interrogatories
`“are not improper to the extent they seek only facts”, they “are improper where they ask the respondent
`to provide an expert opinion” as Amazon does here. 2017 WL 1352052 at *2 (emphasis added).
`Interrogatory 11 asks PersonalWeb to identify differences that “materially alter the question
`of invalidity”—language that appears to be taken from Ohio Willow Wood Co. v. Alps South, LLC,
`735 F.3d 1333, 1342 (Fed. Cir. 2013). Ohio Willow Wood used this language in the context of collateral
`
`
`3 United States v. Gonzalez, 669 F.3d 974 (9th Cir. 2012), cited by PersonalWeb, is not at all to
`the contrary. It affirms that the privilege exists so that persons who share “a common interest in
`litigation” can communicate with their attorneys “to more effectively prosecute or defend their claims”
`and that the attorneys “at a minimum” need to be engaged in that process for the communications to
`be protected. Id. at 978, 980.
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`CASE NO: 5:18-MD-02834-BLF-SVK
`CASE NO: 5:18-CV-00767-BLF-SVK
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`Case 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 5 of 7
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`estoppel due to the previous invalidation of a claim related to a later asserted claim. Neither Amazon
`nor Twitch raised collateral estoppel as an affirmative defense generally, or specifically regarding the
`invalidation of claim 70 of the ‘310 patent. See Fed. R. Civ. Proc. 8(c)(1)4. Accordingly, the
`differences that “materially alter the question of invalidity” vis-à-vis claim 70 of the ‘310 patent are
`not relevant to any claim or defense in this case and thus PersonalWeb should not be forced to provide
`contentions for such a non-issue in violation of Rule 26’s proportionality standard.
`Further, Interrogatory 11 is particularly burdensome and disproportionate to the needs of the
`case as it asks PersonalWeb to identify differences between each of 23 claims in the definition of
`“invalidated claims” and each of the 11 asserted claims. This would require PersonalWeb to identify
`differences between 253 different claim combinations (23 x 11 = 253).
`Interrogatories 12-14 asked for “elements or limitations” that “make the claim narrower or
`otherwise materially different from the scope of claim 70 of the ‘310 patent.” In these interrogatories,
`what “materially” relates to is not stated. While Interrogatory 11 specifies “materiality” as to the
`“question of invalidity,” Interrogatories 12-14 do not indicate whether “material” relates to invalidity,
`infringement, or some other issue. It is not up to PWeb to guess to which issue materiality is intended.
`As to Interrogatories 11-14, absent collateral estoppel or res judicata, the difference between
`the claims is not material to the issue of the invalidity of the asserted claims. The invalidity of each
`claim is determined independently. The prior art and reasoning used to previously invalidate a claim
`would have to be applied anew to each asserted claim regardless of the similarities or differences to
`the invalidated claims. Amazon’s motion should be rejected as to Interrogatories 11-14.
`RFP Nos. 94-95. In supplemental responses served 8/4/19, PersonalWeb committed to
`produce non-privileged, non-protected, responsive documents “prepared in the ordinary course of business
`
`
`4 Amazon also did not raise this issue in its invalidity contentions. Amazon argues that pleading a
`defense of invalidity somehow obviates the Rule 8(c)(1) requirement to plead the affirmative defense
`of collateral estoppel but cites no authority for this proposition. Ironically, Amazon now defends its
`failure to include a defense based on a prior proceeding after it argued that PersonalWeb should not
`be allowed to amend its infringement contentions because of matter from prior proceedings. The case
`Amazon cites for the proposition that a court may consider issue preclusion sua sponte, Hawkins v.
`Riley, involved issue preclusion based on a judgment that was issued after the pleadings were filed—
`the invalidations Amazon now wants to rely on happened before the present cases were even filed.
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`CASE NO: 5:18-MD-02834-BLF-SVK
`CASE NO: 5:18-CV-00767-BLF-SVK
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`Case 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 6 of 7
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`for the administration of the Kinetech License, including, payments” (RFP 94) and “prepared in the
`
`ordinary course of business constituting communications between PersonalWeb and Level 3” (RFP 95).
`PWeb maintained its objection to Amazon seeking documents protected by the common interest privilege.
`
`Amazon now asserts that PersonalWeb’s initiation of arbitration proceedings5 on a specific
`issue vitiated the entire common interest privilege, citing two out-of-circuit cases. In the Ninth Circuit,
`the “common interest [privilege] applies when (1) the communication is made by separate parties in
`the course of a matter of common interest; (2) the communication is designed to further that effort;
`and (3) the privilege has not been waived.” United States v. Bergonzi, 216 F.R.D. 487, 495 (N.D. Cal.
`2003). In the present case, Amazon seeks the communications between PersonalWeb and Level 3
`made in the course of this litigation, a matter of which both parties have interest, the communications
`are designed to further that effort, and the privilege has not been waived.6 Further, parties to a common
`interest privilege “need not have identical interests and may even have some adverse motives.” United
`States v. Gonzalez, 669 F.3d 974, 979 (9th Cir. 2012).
`The cases Amazon cites are inapposite. Leader Techs is based on District of Delaware
`precedent (interest must be “identical, not similar”) which is opposite to Ninth Circuit law as stated in
`Gonzalez. Further, the quotation from Leader Techs is from an S.D.N.Y. decision cited in a Federal
`Circuit case applying 7th Circuit law (where the scope of privilege it “narrowly drawn”). The holding
`Amazon cites from Mondis Tech, that communications between parties negotiating their rights and
`relationship are not privileged, is a red herring that is inapplicable here. First, the facts in Mondis Tech
`are contrary to the facts in this case as PersonalWeb and Level 3 already have a legal relationship and
`are not negotiating an agreement—the license already exists. Second, even if PWeb and Level3 were
`negotiating their respective license rights, case law from both the Federal Circuit and more recent
`
`
`5 Amazon’s contention that PersonalWeb “concealed” privileged communications is contrary to
`Section 12.3 of the Stipulated Amended Protective Order (DKT 427 at 20-21) (“The parties further
`agree that attorney-client privileged communications with and work-product materials of Outside
`Counsel of Record in this Action that (1) relate to this Action and (2) were created on or after
`January 8, 2018 … are not discoverable and need not be included on a privilege log in this Action.”)
`6 The common interest privilege is a joint privilege that cannot be unilaterally waived by one of
`the parties (See U.S. v. Gonzalez, 669 F.3d at 982). That Level 3 may, for arguments sake only, be
`willing to waive the privilege does not result in PersonalWeb’s privilege being waived.
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`CASE NO: 5:18-MD-02834-BLF-SVK
`CASE NO: 5:18-CV-00767-BLF-SVK
`
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`Case 5:18-md-02834-BLF Document 489 Filed 08/16/19 Page 7 of 7
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`District Court decisions from the Ninth Circuit disagree with Mondis Tech and support PWeb’s
`assertion of the common interest privilege. See In re Regents of University of California, 101 F.3d
`1386 (1996) (privilege applied to communications between parties negotiating an exclusive license)
`and Regents of University of California v. Affymetrix, 326 F.R.D. (S.D. Cal. 2018) (“Parties may have
`both common commercial and legal interests, such as when the parties are discussing a merger or
`negotiating for a patent license.”). Amazon should be refused discovery of common-interest privilege
`matter.
`
`Dated: August 16, 2019
`
`Respectfully submitted,
`STUBBS, ALDERTON & MARKILES, LLP
`
`
`
`By: /s/ Wesley H. Monroe
`MICHAEL A. SHERMAN
`JEFFREY F. GERSH
`SANDEEP SETH
`WESLEY W. MONROE
`STANLEY H. THOMPSON, JR.
`VIVIANA BOERO HEDRICK
`ATTORNEYS FOR DEFENDANTS
`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
`PERSONALWEB TECHNOLOGIES, LLC,
`FENWICK & WEST LLP
`
`
`
`
`
`
`
`Dated: August 16, 2019
`
`
`
`By: /s/ J. David Hadden
`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@fenwick.com
`RAVI R. RANGANATH (CSB No. 272981)
`rranganath@fenwick.com
`CHIEH TUNG (CSB No. 318963)
`ctung@fenwick.com
`Counsel for AMAZON.COM, INC. and
`AMAZON WEB SERVICES, INC.
`6
`
`
`
`JOINT STATEMENT RE MOTION TO COMPEL
`
`
`
`
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`CASE NO: 5:18-MD-02834-BLF-SVK
`CASE NO: 5:18-CV-00767-BLF-SVK
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