Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 1 of 12
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`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@fenwick.com
`MELANIE L. MAYER (admitted pro hac vice)
`mmayer@fenwick.com
`TODD R. GREGORIAN (CSB No. 236096)
`tgregorian@fenwick.com
`RAVI R. RANGANATH (CSB No. 272981)
`rranganath@fenwick.com
`SHANNON E. TURNER (CSB No. 310121)
`sturner@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 Defendants AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., and TWITCH
`INTERACTIVE, INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`IN RE: PERSONAL WEB TECHNOLOGIES,
`LLC ET AL., PATENT LITIGATION
`
`AMAZON.COM, INC., and AMAZON WEB
`SERVICES, INC.,
`Plaintiffs
`
`v.
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Defendants,
`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Counterclaimants,
`
`v.
`
`AMAZON.COM, INC., and AMAZON WEB
`SERVICES, INC.,
`Counterdefendants.
`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
`
`
`Case No.: 5:18-md-02834-BLF
`
`Case No. 5:18-cv-00767-BLF
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`
`
`
`OPPOSITION OF AMAZON.COM,
`AMAZON WEB SERVICES, INC., AND
`TWITCH INTERACTIVE, INC. TO
`MOTION TO “CLARIFY” OR
`“SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
`
`Date:
`December 12, 2019
`9:00 AM
`Time:
`Dept:
`Courtroom 3, 5th floor
`Judge:
`Hon. Beth L. Freeman
`
`Trial Date: March 16, 2020
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`CASE NO.: 5:18-cv-00767-BLF
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`ATTORNEYS AT LAW
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`FENWICK & WEST LLP
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 2 of 12
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`PERSONALWEB TECHNOLOGIES, LLC and
`LEVEL 3 COMMUNICATIONS, LLC,
`Counterclaimants,
`
`v.
`
`TWITCH INTERACTIVE, INC. a Delaware
`corporation
`
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`Counterdefendants.
`
`Case No. 5:18-cv-05619-BLF
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`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 3 of 12
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`INTRODUCTION
`PersonalWeb requests that the Court “supplement” the claim construction order by plugging
`into the Court’s construction of the term “unauthorized or unlicensed” a construction by a different
`court of a different claim term not at issue here. In doing so, it seeks reconsideration and reversal of
`the Court’s prior ruling. At claim construction, the parties disputed whether “unauthorized” and
`“unlicensed” referred to determining compliance with a license or instead meant some sort of generic
`permission or approval. Amazon argued the former, and the Court agreed: it construed
`“unauthorized or unlicensed” to mean “not compliant with a valid license.” (Dkt. 485 at 6-
`12.) PersonalWeb now seeks reconsideration, asking the Court to rule that the word “license” in the
`Court’s construction itself does not necessarily mean “license” at all, but rather a more abstract “right
`to content.” In PersonalWeb’s view, once the Court’s construction no longer literally refers to a
`license, it will be free to pursue infringement theories that depend on the generic permission-or-
`approval concept the Court rejected.
`PersonalWeb presents no new claim term for the Court to construe; instead it repackages the
`same dispute that the Court already resolved against PersonalWeb on a complete record. That makes
`this a motion for reconsideration. But PersonalWeb has offered no actual grounds for
`reconsideration; nor did it request leave to file a motion for reconsideration, as required; nor is there
`any need for the Court to offer a “construction of a construction” for the term “license,” because the
`Court already properly construed the claims the first time; nor would reconsideration save
`PersonalWeb’s case because its infringement theory still isn’t viable under the construction it
`requests.
`PersonalWeb’s primary argument is that it needs clarity about what a license is. But “clarity”
`is the opposite of what PersonalWeb hopes to achieve. During claim construction PersonalWeb
`itself argued license did have a clear meaning (and thus “authorization” needed a different
`construction). PersonalWeb does not like that the Court used “license” in its construction precisely
`because it is clear, and clearly defines the boundaries of the asserted claims. PersonalWeb seeks to
`muddy those boundaries and introduce ambiguity (i.e., with its “rights to content” proposal) so that
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`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 4 of 12
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`its expert can play a free-form word association game to try to keep the case alive.
`As the Court noted at the telephone conference (Dkt. 515), it directed the parties to finalize
`their terms and proposed constructions months ago, in April. (See Dkt. 401.) PersonalWeb had
`every opportunity to seek construction of different terms, or to seek different constructions of
`“unauthorized” or “unlicensed,” or to oppose Amazon’s proposed construction that the Court
`adopted because it was “unclear” – PersonalWeb did none of those things. The Court should reject
`PersonalWeb’s attempt to circumvent the local rules by captioning its motion with a creative
`title. The Court should summarily deny the motion.
`FACTUAL BACKGROUND
`As the Court is aware, the patents in suit purport to solve the problem of consistently locating
`files (i.e., “data items”) in a computer system and controlling access to files that contain licensed
`content to prevent unauthorized sharing. (Dkt. 485 at 2:11-13; 10:12-14.) To accomplish this, files
`are identified using “True Names”—names computed from the data in the file itself—instead of
`other, purportedly less reliable means such as user-provided file names. (Id. at 2:16-23.) According
`to the patents, this allows a file to be uniquely identified regardless of its context, which in turn
`allows a system to reliably limit access to the file to authorized or licensed users. (E.g., ’310 patent
`at 3:52-58; 31:4-12.)
`PersonalWeb’s infringement theory in this and its past cases has nothing to do with licensing
`or content authorization. It accuses conditional GET requests using If-None-Match headers on the
`world wide web. (Dkt. 507 at 5-6.) These requests use ETags to determine whether a user already
`has a cached copy of the current object found at a given web location, or URL. If so, no new object
`is sent; if not, the current object is sent to the browser. This process – specified in the HTTP standard
`– is anonymous and generic – it does not depend on the user making the request or the nature of the
`content requested. No user is refused a requested object based on whether he has a valid license.
`And nothing prevents the user from accessing the old object after it is no longer current. This process
`simply does not check whether the user has a license to a file or is otherwise “authorized” by the
`owner to use it. It checks only whether the locally cached version of the file is the current version
`
`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 5 of 12
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`available at the web server.
`In PersonalWeb’s earlier case against IBM and GitHub, the defendants contended that the
`concept of “authorization” in the patents referred to a valid license. (See Dkt. 452-3 (PersonalWeb
`Techs., LLC v. IBM, No. 6:12-cv-661, Dkt. 78, Ex. B at 10 (E.D. Tex. Nov. 18, 2015)).)
`PersonalWeb opposed, arguing that “authorization” meant only some generic approval, rather than
`authorization to access licensed content. (Dkt. 452-2 at 26-27.) In March 2016, Judge Gilstrap
`issued a claim construction order construing “unauthorized” as “not compliant with a valid license”
`and “authorization” as “a valid license.” (Id. at 25-28.)
`Just as had happened in PersonalWeb’s past cases, at claim construction in this case the
`parties disputed whether “authorized” as used in the patents means having a valid license to content,
`or instead could refer to simple approval or permission. Even though PersonalWeb was clearly
`aware of Judge Gilstrap’s constructions, it chose not to apply or even mention them in its
`infringement contentions. (Dkt. Nos. 452-7 & 452-8.) And it argued against those constructions at
`claim construction. (Dkt. 406 at 7.)
`To accommodate its “cache-control” infringement theories, discussed above, which have
`nothing to do with policing access to licensed content, PersonalWeb contended the Court should
`either not construe the relevant claim terms at all or should adopt its generic “permission” concept:
`
` “unauthorized or unlicensed” (’310 patent, claim 20)
`PersonalWeb’s Proposal
`Amazon and Twitch’s Proposal
`Plain and ordinary meaning.
`not compliant with a valid license
`Alternative construction: not permitted or
`not legally permitted
`[or: not permitted under a license – see Dkt.
`485 at 6 n.1]
`
`“authorization” (’420 patent, claims 25, 166)
`PersonalWeb’s Proposal
`Amazon and Twitch’s Proposal
`plain and ordinary meaning.
`a valid license
`Alternative constructions: permission
`
`
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`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 6 of 12
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`(Dkt. 406 at 1, 8.) PersonalWeb did not argue that Judge Gilstrap’s constructions should apply,
`either directly or in the alternative; it argued that it was not estopped from arguing against those
`constructions. (Id. at 7.)
`PersonalWeb also expressed no confusion about what the word “license” meant over the
`course of months of claim construction briefing. Instead, it argued that “license” had a clear meaning
`that was different from “authorization,” requiring the Court give them separate constructions:
`
`
`A “license,” on the other hand, means something narrower. It is a
`specific kind of authorization. The specification discusses licenses
`in the sense of having legal permission to have a copy of a file. For
`example, the specification states that a license table 136 maintains a
`record of the True Names of “key files in the product (that is, files
`which are required in order to use the product, and which do not
`occur in other products)[.] Typically, for a software product, this
`would include the main executable image and perhaps other major
`files such as clip-art, scripts, or online help.” ’310 at 31:17-22. This
`demonstrates the specification contemplates having a license is
`having legal permission to possess things like program executables
`and images such as clip-art, items that may be the subject, for
`example, of a copyright license, or a license granted by an End User
`License Agreement (EULA).
`(Id. at 2-3 (emphasis added); see also id. at 7:23-25 (“If Amazon’s proposed construction is adopted,
`it should be clarified that ‘unauthorized’ is not limited to the legal and/or contractual sense of the of
`term ‘unlicensed’”).
`
`The Court resolved this dispute by rejecting PersonalWeb’s arguments. Although it noted
`PersonalWeb’s position had “superficial appeal,” “the intrinsic record reveals that the patentee used
`the words ‘authorized’ and ‘licensed’ interchangeably.” (Dkt. 485 at 8:17-19.) In fact, “the
`specification explicitly equates holding a ‘valid license’ with ‘authorization.’” (Id. at 9:2-3.) The
`Court therefore construed “unauthorized or unlicensed” as “not compliant with a valid license.” (Id.
`at 11-12.)
`PersonalWeb well understood that this ruling would leave it without an infringement theory.
`It also clearly understood what “license” meant, because shortly after the Markman hearing,
`PersonalWeb attempted to amend its infringement contentions to identify a license. (Dkt. 448 at 4
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`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 7 of 12
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`(explaining that PersonalWeb sought to amend its infringement contentions “to address the
`possibility the terms ‘unauthorized’ and ‘authorization’ were interpreted by the Court as requested
`by Amazon”).) The new theory alleged that claims requiring “authorization” to content are infringed
`where access to a website is governed by “Terms of Service or an End User License.” (Dkt. 452-9
`(Proposed Amendments to Infringement Contentions, Ex. A) at 4.) The hope apparently was that if
`some websites’ terms of service prohibit use of outdated content, PersonalWeb could argue that a
`conditional GET using an ETag infringes when it returns current content, because that content is
`“authorized” by the terms of service. That theory fails for the same reasons as the others. ETags
`and conditional GET requests are not used to determine whether website content is compliant with
`the website’s Terms of Service or any other license. And even when a conditional GET returns a
`new file, that has no effect on a user’s ability to access the older cached version of the file. But in
`any event, the Court denied leave to amend, ruling that Judge Gilstrap’s claim constructions on the
`authorization/licensing terms put PersonalWeb on notice that it should have come forward with all
`of its theories from the outset. (See Dkt. 481 at 10:12-13 (“PersonalWeb cannot disguise a prior
`claim construction order on the patents-at-issue as a differing claim construction in this
`action . . . .”).)
`Once the Court issued its claim construction order, Amazon and Twitch wrote to
`PersonalWeb to request it dismiss the case. Rather than comply, PersonalWeb devised its current
`strategy: to re-construe the Court’s construction using the same order from Judge Gilstrap that
`PersonalWeb had previously argued was not binding and should not be followed in this case. In that
`order, Judge Gilstrap construed the term “licensed” in claims not asserted here (he did not construe
`“valid license”), to resolve a dispute about whether the license at issue was to the system or instead
`the specific content of the requested file. (Dkt. 452-2 at 25.) Judge Gilstrap construed “licensed” as
`“valid rights to content” to resolve this dispute in the defendants’ favor (PersonalWeb, for its part,
`had contended that “licensed” was clear and did not require construction). (Id. at 22, 25.) Of note,
`Judge Gilstrap himself did not combine his constructions of “unauthorized” and “licensed” in the
`way PersonalWeb suggests the Court do here.
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`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 8 of 12
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`On August 23, 2019, PersonalWeb served an opening expert report on infringement by Erik
`de la Iglesia. (Declaration of Todd R. Gregorian (“Gregorian Decl.”), Ex. 1.) Mr. de la Iglesia’s
`report discusses the same “cache-control” techniques (discussed above) that confirm whether a user
`has the current version of a file already stored in the browser cache. He does not identify any license,
`as the Court’s construction requires. He does not identify even a single right to content, under the
`new construction PersonalWeb requests here. Instead he offers the following tortured chain. The
`Court’s construction requires a valid license, but, “the Court did not rule on what a ‘valid license’
`is.” (¶ 64.) Therefore, Mr. de la Iglesia will construe “valid license” himself. (Id.) To do so, he
`turns to his “understand[ing]” of Judge Gilstrap’s claim construction order, which came “from
`counsel.” (Id.) He then re-construes “valid license” in this Court’s construction of the terms
`“unauthorized” and “unlicensed” as “valid rights to content,” using the construction Judge Gilstrap
`issued to resolve a different dispute over a different term from claims different than those asserted
`here. (Id.)
`Mr. de la Iglesia then applies his own construction. When an accused system checks for the
`current version of a web file, Mr. de la Iglesia refers to that as checking for a “valid copy.” (¶¶ 69,
`70, 114.) If the user already has the current version of an object in her browser cache, she will
`receive a 304 NOT MODIFIED response. (¶ 102.) This is designated as a “not modified” response
`in the HTTP standard because it signifies only that the requested object has not been modified, not
`that is “complaint with a valid license.” Mr. de la Iglesia refers to it instead as a “renewal of valid
`rights” that he argues is “analogous” to the license table of the patents. (¶ 103.) But the license table
`in the patent identifies specific objects and users who have license rights to those objects. (E.g.,
`’310 patent at 31:3–32.) ETags do neither of those things. The comparison only determines whether
`the object at the server is different than what the user has already cached. And indeed, beyond his
`“analogy,” Mr. de la Iglesia identifies no check of whether the user holds a valid license or any rights
`to the requested content, nor does he identify even a single license or any other source of “rights” to
`content. Nor still does Mr. de la Iglesia contest the facts that no user is denied access to a current
`file based on a purported lack of “rights,” or that a user may continue to access and use expired files
`
`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`Case 5:18-md-02834-BLF Document 521 Filed 09/06/19 Page 9 of 12
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`PersonalWeb’s Proposal
`not compliant with a valid right to content
`
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`to which—in his view—they no longer have such “rights.”
`The Court conducted a telephonic conference about PersonalWeb’s motion on September 4,
`2019. Following the conference, PersonalWeb provided a “box” with its new proposed construction:
`
`Claim term
`“unauthorized or unlicensed”
`(’310 patent, claim 20)
`
`(See Gregorian Decl., Ex. 3.) As seen from the above, PersonalWeb has chosen to frame its
`requested relief as seeking reconsideration of the Court’s construction of “unauthorized or
`unlicensed.” The parties also conferred further about the motion. At the conference, PersonalWeb
`took the position that its motion was not a motion for reconsideration, and therefore it was
`unprepared to disclose how it believed its motion complied with the Civil Local Rule 7-9(b)
`requirements for reconsideration. (Id., ¶ 5.)
`ARGUMENT
`Amazon and Twitch did request that PersonalWeb dismiss its claims with prejudice given
`the Court’s claim construction order. Given the above history, however, that request did not come
`as an actual surprise to PersonalWeb, and it is not the cause of any real confusion about the claim
`construction order itself that requires clarification. There is no new “unconstrued term.” (Dkt. 507
`at 3.) There is no “ironic” exposure of “tensions” in the parties’ positions. (Id. at 2.) And there is
`no question as to whether the Court’s ruling “appear[s] fully dispositive” of what the claims require.
`(Id.) All that is at issue now is PersonalWeb’s and its expert’s failure to follow the Court’s actual
`claim constructions. The Court should deny reconsideration of the claim construction order.
`
`I.
`
`THE COURT SHOULD NEITHER RECONSIDER ITS CLAIM CONSTRUCTION
`RULING NOR “SUPPLEMENT” IT IN A WAY THAT WOULD REVERSE ITS
`ORIGINAL DECISION.
`No party may notice a motion for reconsideration without first obtaining leave of court to
`file the motion. N.D. Cal. Civ. L.R. 7-9(a). Moreover, the moving party must specifically show that
`at the time of the motion for leave, a material difference in fact or law exists from that which was
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`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
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`previously presented to the Court. The party must show also that (1) it did not know and could not
`reasonably have known such fact or law at the time of the order; or (2) the emergence of new material
`facts or a change of law occurring after the time of such order; or (3) a manifest failure by the Court
`to consider material facts or dispositive legal arguments which were presented to the Court before
`such order. N.D. Cal. Civ. L.R. 7-9(b); see also Chang v. Rockridge Manor Condo., No. C–07–4005
`EMC, 2010 WL 3504876, at *1 (N.D. Cal. Sept. 7, 2010) (denying reconsideration for failure to
`comply with rule requirements). PersonalWeb’s motion fails and must be denied for several
`independent reasons.
`First, PersonalWeb did not seek leave for the motion, as required. Its motion is unequivocally
`a motion for reconsideration of the Court’s construction of “unauthorized or unlicensed.” The term
`that PersonalWeb originally requested the Court construe, “valid license,” is not a claim term; it
`comes from the Court’s construction. The relief PersonalWeb requests is simply that the Court
`change its construction of the term “unauthorized or unlicensed” from requiring “compliance with a
`valid license” to requiring only “valid rights to content.” In seeking this relief, PersonalWeb itself
`relied on case law regarding motions for reconsideration. (Dkt. 507 at 3 (citing Wi-LAN USA, Inc.
`v. Apple Inc., No. 13-cv-0798 DMS, 2014 WL 12789112 (S.D. Cal. Apr. 11, 2014); EON Corp. IP
`Holdings LLC v. Cisco Sys. Inc., No. 12-cv-1011 JST, 2014 WL 793323 (N.D. Cal. Feb. 25, 2014);
`Syscan, Inc. v. Portable Peripheral Co., No. 03-cv-2367 VRW, 2006 WL 1867637 (N.D. Cal. Jul. 5,
`2006)).) PersonalWeb failed to seek leave for reconsideration and, following the Local Rules, the
`Court should deny the motion on that basis alone. See N.D. Cal. Civ. L.R. 7-9(a).
`
`Second, PersonalWeb identified no new facts or law that it was not already aware of prior to
`the Markman hearing in this case, let alone any “manifest failure” of the Court to consider arguments
`presented at that hearing. PersonalWeb’s argument for changing the Court’s constructions of
`“unauthorized” and “unlicensed” relies on Judge Gilstrap’s claim construction order, which was
`issued years ago. The Court has in fact already ruled this order was known to PersonalWeb long
`before it filed this case (Dkt. 481), and the parties already argued over it extensively at Markman.
`Indeed, PersonalWeb itself concedes that no additional briefing is necessary for the Court to
`
`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
`
`
`
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`8
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`CASE NO.: 5:18-cv-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 521 Filed 09/06/19 Page 11 of 12
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`
`
`reconsider its construction, because “the Court may already have everything it needs on that issue.”
`(Dkt. 507 at 4:12-13.) Judge Gilstrap’s order cannot provide grounds for reconsideration, and the
`Court should therefore deny the motion on this basis as well. See N.D. Cal. Civ. L.R. 7-9(b).
`
`Third, the requested change to the Court’s claim construction also misapplies Judge
`Gilstrap’s order. Judge Gilstrap construed the claim terms “unauthorized” and “unlicensed” in the
`same way as this Court did. The construction that PersonalWeb seeks to adopt, “valid rights to
`content,” was of the adjective “licensed,” not the noun “license” that is in this Court’s construction.
`Judge Gilstrap’s construction referred to “rights to content” to resolve an entirely different dispute
`relating to patent claims not asserted in this case: whether the license was to a system or the specific
`content of a requested file. (Dkt. 452-2 at 22, 25.) There is no similar dispute here, nor is there any
`real confusion about what a “license” is. PersonalWeb itself argued in both this and its past cases
`that “licensed” and “unlicensed” were simple concepts understandable to a lay jury that did not
`require construction.
`Fourth, reconsideration of the Court’s claim construction would be a futile exercise because
`it would not save PersonalWeb’s infringement theory. The ETags and other accused aspects of the
`HTTP protocol are used to determine whether an object at a URL has changed. No “rights” to access
`or use content are checked or enforced. The browser of any website visitor can request and receive
`its current content. And that same website visitor can access and use the stale content in its cache
`even if is no longer “valid.” (As just one example, under the HTTP 1.1 standard, a browser will
`purposely display stale content when the user hits the “back” button or views her browse history.
`(Gregorian Decl., Ex. 2 at 98 (R. Fielding, et al., RFC 2616: HTTP/1.1, ch. 13.13 History Lists (June
`1999))).) PersonalWeb is attempting to conflate the notion of “current” with “valid,” which it then
`changes to a “valid right,” the term it is trying to substitute for the court’s construction “compliant
`with a valid license.” But nowhere does PersonalWeb point to actual “rights to content” let alone
`any accused technology that actually checks such rights or controls access to content based on them.
`Since PersonalWeb has no viable infringement theory even under the reconsidered construction it
`requests, the Court should deny the motion.
`
`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
`
`
`
`
`9
`
`CASE NO.: 5:18-cv-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 521 Filed 09/06/19 Page 12 of 12
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`II.
`
`THE COURT SHOULD NOT OFFER A PREMATURE OPINION ON WHETHER
`PERSONALWEB’S CONDUCT SUBJECTS IT TO RULE 11 SANCTIONS OR A FEE
`AWARD UNDER 35 U.S.C. § 285.
`Part of PersonalWeb’s motion appears to seek guidance as to whether it has engaged in
`sanctionable conduct. (Dkt. 507 at 2:22-23.) PersonalWeb’s decision to pursue these cases after the
`claim construction order foreclosed its infringement claims—including by having its expert apply
`his own claim constructions—is one basis of several on which the Court could eventually award
`fees. See MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 919 (Fed. Cir. 2012) (plaintiff’s
`“decision to continue the litigation after claim construction further supports the district court’s
`finding that this is an exceptional case”); Taurus IP, LLC v. Daimlerchrysler Corp., 559 F. Supp. 2d
`947, 968 (W.D. Wisc. 2008) (plaintiff’s “decision to proceed in the face of [the] court’s constructions
`prolong[s] . . . litigation in bad faith”), aff’d in relevant part, 726 F.3d 1306 (Fed. Cir. 2013). But
`no party has moved for fees or sanctions against PersonalWeb yet, and the issue is not ripe. The
`Court should therefore decline to rule or offer an advisory opinion about it, beyond, if the Court
`deems it appropriate, instructing PersonalWeb that the pursuit of infringement theories for which it
`no longer has a Rule 11 basis places it at risk.
`
`CONCLUSION
`For the foregoing reasons, the Court should deny PersonalWeb’s motion and decline to
`reconsider its claim construction order or advise PersonalWeb on the likelihood of sanctions.
`
`September 6, 2019
`
`FENWICK & WEST LLP
`
`
`
`By: /s/ J. David Hadden
`J. David Hadden
`Saina Shamilova Hadden
`Melanie L. Mayer
`Todd R. Gregorian
`Ravi R. Ranganath
`Shannon E. Turner
`Chieh Tung
`
`Counsel for Defendants AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., and
`TWITCH INTERACTIVE, INC.
`
`OPPOSITION TO PERSONALWEB’S MOTION TO
`“CLARIFY” OR “SUPPLEMENT” CLAIM
`CONSTRUCTION ORDER
`
`
`
`
`10
`
`CASE NO.: 5:18-cv-02834-BLF
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
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`