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
`
`
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 1 of 7
`
`
`
`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 Boero Hedrick (SBN 239359)
`vhedrick@stubbsalderton.com
`STUBBS, ALDERTON & MARKILES, LLP
`15260 Ventura Blvd., 20th Floor
`Sherman Oaks, CA 91403
`Telephone:
`(818) 444-4500
`Facsimile:
`(818) 444-4520
`
`Attorneys for PersonalWeb Technologies, LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`CASE NO.: 5:18-md-02834-BLF
`IN RE PERSONAL WEB TECHNOLOGIES,
`LLC, ET., AL., PATENT LITIGATION
`
` Defendants.
`
`AMAZON.COM, INC., et., al.,
`
` Plaintiffs,
`v.
`PERSONALWEB TECHNOLOGIES, LLC,
`et., al.,
`
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`Counterclaimants,
`v.
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`Counterdefendants.
`
`Case No.: 5:18-cv-00767-BLF
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`Date: January 23, 2020
`Time: 9:00 a.m.
`Dept: Courtroom 3, 5th Floor
`Judge: Hon. Beth L. Freeman
`
`Trial Date: March 16, 2020
`
`
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`1
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`

`

`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
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 2 of 7
`
`
`
`PERSONALWEB TECHNOLOGIES, LLC
`
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`
`
`Plaintiffs
`v.
`TWITCH INTERACTIVE, INC., a Delaware
`corporation,
`
`Defendant.
`
`
`
`
`
`
`
`
`TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
`PersonalWeb Technologies, LLC (“PersonalWeb”) will and hereby does moves for final
`judgment pursuant to Federal Rule of Civil Procedure 54(b), including: (1) entry of an order and final
`judgment of non-infringement of U.S. Patent Nos. 6,928,442 (the “’442 patent”), 7,802,310 (the “’310
`patent”), 7,945,544 (the “’544 patent”), and 8,099,420 (the “’420 patent”) in favor of declaratory
`judgment plaintiffs Amazon.com Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) with
`respect to Amazon’s claims for declaratory judgment of non-infringement by Amazon of the ‘442
`patent, ‘310 patent, ‘420 patent, and ‘544 patent, and PersonalWeb’s counterclaims of infringement
`by Amazon of the ‘442 patent, ‘310 patent, ‘420 patent and ‘544 patent; (2) entry of an order and final
`declaratory judgment that claim preclusion and the Kessler doctrine (Kessler v. Eldred, 206 U.S. 285
`(1907)) bar PersonalWeb’s claims against Amazon’s customers for infringement of the ‘442 patent,
`‘420 patent, ‘310 patent, and ‘544 patent based solely on their use of Amazon S3, both subject to
`reversal, modification, or vacation based on Appeal No. 19-1918 now pending before the United States
`Court of Appeals for the Federal Circuit or any other appellate court decision or order; and (3)
`dismissal without prejudice of all of Amazon’s remaining claims for declaratory judgment, e.g., of
`non-infringement of U.S. Patent No. 5,978,791 (the “’791 patent”), and of all of Amazon’s defenses
`to PersonalWeb’s counterclaims of patent infringement, all without prejudice to Amazon’s rights to
`reassert those claims or defenses in this action if the United States Federal Court of Appeals or the
`United States Supreme Court reverses, modifies, or vacates the final judgment entered herein.
`PersonalWeb moves for entry of judgment in favor of Amazon to expeditiously facilitate final
`
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`1
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`

`

`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
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 3 of 7
`
`
`
`resolution of this case and conserve judicial resources. Entry of judgment is warranted in light of the
`
`Court’s Claim Construction Order (Dkt. 485), which has a dispositive effect on the claims and defenses
`
`at issue in this case, and as a consequence thereof, PersonalWeb cannot meet its burden of proving
`
`infringement.
`PersonalWeb sought a stipulation to this effect from Amazon, but Amazon refused to stipulate,
`indicating instead that it wished to proceed to summary judgement. By refusing to stipulate and
`insisting that the parties continue this case at this juncture, Amazon is unnecessarily prolonging this
`litigation. PersonalWeb respectfully moves for entry of judgment in order to advance this case to the
`appeals stage so that the parties can receive a final resolution of this matter.
`This motion will be heard before the Honorable Beth Labson Freeman at 9:00 a.m. on January
`23, 2020, at the Robert F. Peckham Federal Building & United States Courthouse, 280 South 1st Street,
`San Jose, California, in Courtroom 3. The motion is based on this notice, the accompanying
`memorandum of points and authorities, the declaration of Michael A. Sherman, the pleadings and
`records on file, the argument of counsel, and any other such matters as may be presented to the Court.
`MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR AN
`ORDER AND ENTRY OF FINAL JUDGMENT OF NON-INFRINGEMENT
`INTRODUCTION
`I.
`PersonalWeb seeks entry of final judgment of non-infringement in favor of Amazon in order
`to seek appellate review of this Court’s Claim Construction Order (Dkt. 485). PersonalWeb has sought
`a stipulation to that effect from Amazon, but Amazon has refused.
`This motion is precipitated by the Court’s Claim Construction Order and Amazon’s refusal to
`stipulate to dismissal. As a result of the Court’s construction of the disputed terms “unauthorized or
`unlicensed” and “authorization” PersonalWeb cannot meet its burden of proving infringement.
`Entering final judgment of non-infringement in favor of Amazon will allow the parties to forego
`further litigation and conserve judicial resources in this case while preserving PersonalWeb’s right to
`appeal the Court’s Claim Construction Order. See Largan Precision Co, Ltd v. Genius Elec. Optical
`Co., No. 13-CV-02502-JD, 2015 WL 1940200, at *2 (N.D. Cal. Apr. 29, 2015), aff'd sub nom. Largan
`Precision Co. v. Genius Elec. Optical Co., 646 F. App'x 946 (Fed. Cir. 2016), and aff'd sub nom.
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`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
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 4 of 7
`
`
`
`Largan Precision Co. v. Genius Elec. Optical Co., 646 F. App'x 946 (Fed. Cir. 2016) (entering final
`
`judgment after summary judgment of noninfringement). PersonalWeb intends to appeal the Court’s
`
`forthcoming entry of final judgment of non-infringement and reserves its right to do so.
`
`II. FACTS
`This is a declaratory judgment action brought by Amazon. Amazon initially filed this
`declaratory judgment action against PersonalWeb on February 5, 2018, and filed its First Amended
`Complaint for Declaratory Judgment on March 23, 2018 (Dkt. 36). Amazon’s claims are for
`declaratory judgment of non-infringement by Amazon of the ‘791 patent, ‘442 patent, ‘310 patent,
`‘544 patent, and ‘420 patent (Claims Three, Four, Five, Six, and Nine, respectively). Additionally,
`Amazon seeks a declaration that PersonalWeb’s claims against Amazon’s customers are barred by
`claim preclusion (Claim One) and a declaration that PersonalWeb’s claims against Amazon’s
`customers are barred by the Kessler doctrine (Claim Two). PersonalWeb filed an Answer and
`Counterclaims to Amazon’s First Amended Complaint on May 25, 2018. (Dkt. 62.) PersonalWeb
`then filed its First Amended Counterclaim on October 4, 2018. (Dkt. 257.) PersonalWeb’s
`counterclaims were for infringement of claims 10 and 11 of the ‘442 patent, claim 20 and 69 of the
`‘310 patent, and claims 25, 26, 27, 29, 30, 32, 34, 35, 36, and 166 of the ‘420 patent.
`On August 16, 2019, this Court construed certain claim terms found in the ‘442 patent, ‘310
`patent, ‘544 patent, and ‘420 patent. (Dkt. 485.) Specifically, the Court adopted Amazon’s
`proposed constructions and construed two disputed terms as follows:
`a) “unauthorized or unlicensed” in claim 20 of the ’310 patent was construed as “not
`compliant with a valid license.” (Dkt. 485 at 5:9-12:3); and
`b) “authorization” in claims 25 and 166 of the ’420 patent was construed as “a valid
`license.” (Id. at 12:4-13).
`PersonalWeb had argued for a construction of “authorization” as equating to permission and
`sought this construction regardless of whether “authorization” was standing alone or as part of
`“unauthorized or unlicensed.” See e.g., Dkt. 485 at 6:2-8. As discovery has shown, Amazon’s
`instrumentality, CloudFront, permits access to content according to parameters set by website
`operators. Discovery has also shown that CloudFront does not set the access parameters, and
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`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
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 5 of 7
`
`
`
`therefore is not involved in defining when and under what circumstances access to content is
`
`licensed. (Declaration of Sandeep Seth, ¶ 2.) Accordingly, under this construction, Amazon would
`
`not directly infringe because it would not be the party controlling whether or not the access is
`
`compliant with or under a license.
`After receiving this Court’s Claim Construction Order, PersonalWeb immediately began
`engaging with Amazon to explore the prospect of a stipulation to non-infringement while preserving
`its appellate rights. The parties had communications on the subject beginning the week of August
`19, and PersonalWeb specifically asked that Amazon propose a form of stipulation and believed that
`Amazon was in the process of proposing some appropriate stipulation. (Declaration of Michael A.
`Sherman (“Sherman Decl.”), ¶ 2, Ex. 1. ) Following the passage of approximately one month, and
`not hearing anything back on the subject from Amazon, counsel for PersonalWeb took the initiative
`and sent a proposed draft stipulation to Amazon’s counsel for comment, review, and hopeful
`execution. (Sherman Decl., ¶ 3, Ex. 2.) Amazon refused to consider the proposed stipulation,
`without comment or revision, on September 26, 2019. After further inquiry by PersonalWeb,
`Amazon stated that it would wait for summary judgment. (Id., ¶ 4, Ex. 3.) PersonalWeb
`subsequently sought to understand Amazon’s position, particularly why Amazon believes summary
`judgment practice would be more cost effective than a stipulation of non-infringement. (Id.)
`Summary judgment motions are currently scheduled to be heard on November 15, 2019.
`III. ARGUMENT
`PersonalWeb moves the Court to enter this Final Judgment of non-infringement in favor of
`Amazon in order to avoid further discovery and motion practice and to conserve time, money, and
`judicial resources.
`
`Upon entry of final judgment, PersonalWeb intends to appeal the entry of judgment of non-
`infringement and the Court’s construction of the terms “unauthorized or unlicensed” and
`“authorization” in the Claim Construction Order. See St. Paul Mercury Ins. Co. v. Tessera, Inc., No.
`C-12-01827 RMW, 2013 WL 5400521, at *3 (N.D. Cal. Sept. 26, 2013), rev'd and remanded, 624 F.
`App'x 535 (9th Cir. 2015) (granting final judgment in an insurance case when the ultimate resolution
`of the duty to defend would “likely dictate the outcome of the ensuing litigation.”). Additionally,
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`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
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 6 of 7
`
`
`
`PersonalWeb will continue its appeal of the Court’s entry of summary judgment based on claim
`
`preclusion and the Kessler doctrine in Appeal Case No. 19-1918 now pending before the United
`
`States Court of Appeals for the Federal Circuit. The present entry of final judgment of non-
`
`infringement is not intended to affect the pendency or disposition of that appeal. PersonalWeb
`presumes that reversal, modification or vacation of the Court’s construction of the terms
`“unauthorized or unlicensed” or “authorization” in the claim construction order underlying this
`judgment of non-infringement may result in a remand for further proceedings.
`
`In view of the Court’s Claim Construction Order, and in the interest of sound judicial
`administration, there is no just reason for delaying the entry of final judgment under Fed. R. Civ. P.
`54(b) of non-infringement with respect to Amazon’s claims for declaratory judgment of non-
`infringement of the ‘442 patent, ‘310 patent, ‘420 patent, and ‘544 patent and PersonalWeb’s
`counterclaims of patent infringement of the ‘442 patent, ‘310 patent, and ‘420 patent. Nor is there a
`just reason for delaying the entry of final declaratory judgment that claim preclusion and the Kessler
`doctrine bar PersonalWeb’s claims against Amazon’s customers for infringement of the ‘420, ‘310,
`‘544, and ‘420 patents based solely on their use of Amazon S3, both subject to reversal, modification
`or vacation based on Appeal No. 19-1918 now pending before the United States Court of Appeals
`for the Federal Circuit. Furthermore, there is no reason to delay an order dismissing without
`prejudice all of Amazon’s other claims for declaratory judgment and all of its other defenses to
`PersonalWeb’s counterclaims for infringement without prejudice to Amazon’s rights to reassert its
`claims and defenses in this action if the Court of Appeals or the Supreme Court reverses, modifies or
`vacates the final judgment.
`IV. CONCLUSION
`In order to conserve the parties’ time and money, and to conserve judicial resources, the
`Court should enter final judgment of non-infringement in favor of Amazon on Amazon’s claims for
`declaratory judgment of non-infringement of the ‘442 patent, ‘310 patent, ‘544 patent, and ‘420
`patent and PersonalWeb’s counterclaims of patent infringement of the ‘442 patent, ‘310 patent, and
`‘420 patent so that PersonalWeb can immediately pursue its right to appeal the Claim Construction
`Order. It should also enter final declaratory judgment that claim preclusion bars PersonalWeb’s
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`5
`
`
`
`
`
`

`

`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
`
`
`Case 5:18-md-02834-BLF Document 538 Filed 10/02/19 Page 7 of 7
`
`
`
`claims against Amazon’s customers for infringement of the ‘442, ‘310, ‘544, and ‘420 patents based
`
`solely on their use of Amazon S3, and that the Kessler doctrine bars PersonalWeb’s claims against
`
`Amazon’s customers for infringement of the ‘442, ‘310, ‘544, and ‘420 patents based solely on their
`
`use of Amazon S3, both subject to reversal, modification or vacation based on Appeal No. 19-1918,
`now pending before the United States Court of Appeals for the Federal Circuit. The Court should
`also order that all of Amazon’s other claims for declaratory judgment and all of its other defenses to
`PersonalWeb’s counterclaims for infringement are dismissed without prejudice, and that Amazon
`may reassert its defenses and counterclaims in this action if the Court of Appeals or the Supreme
`Court reverses, modifies, or vacates the final judgment.
`
`Dated: October 2, 2019
`
`STUBBS, ALDERTON & MARKILES, LLP
`
`
`
`By: /s/ Michael A. Sherman
`Michael A. Sherman
`Jeffrey F. Gersh
`Sandeep Seth
`Wesley W. Monroe
`Stanley H. Thompson
`Viviana Boero Hedrick
`
`Patent Attorneys for PERSONALWEB
`TECHNOLOGIES, LLC
`
`
`
`
`NOTICE OF MOTION AND MOTION
`FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`6
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO. 5:18-CV-00767-BLF
`
`
`