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`Case 5:18-md-02834-BLF Document 548 Filed 10/23/19 Page 1 of 6
`
`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
`
`IN RE PERSONAL WEB TECHNOLOGIES,
`LLC, ET., AL., PATENT LITIGATION
`
`
`CASE NO.: 5:18-md-02834-BLF
`
`
`AMAZON.COM, INC., et., al.,
`
` Plaintiffs,
`
`
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC,
`et., al.,
`
`
`
` Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`Case No.: 5:18-cv-00767-BLF
`
`
`PERSONALWEB TECHNOLOGIES,
`LLC’S REPLY IN SUPPORT OF
`MOTION FOR ORDER AND ENTRY OF
`JUDGMENT OF NON-INFRINGEMENT
`
`
`
`
`
`
`
`
`
`
`v.
`
`Counterclaimants,
`
`Trial Date: March 16, 2020
`
`
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`Counterdefendants.
`
`
`
`
`
`
`
`
`
`PERSONALWEB’S REPLY IN SUPPORT OF
`MOTION FOR ORDER AND ENTRY OF JUDGMENT
`OF NON-INFRINGEMENT
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`
`
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 548 Filed 10/23/19 Page 2 of 6
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`I.
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`INTRODUCTION
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`Amazon dangles the risk of inefficient and disorderly appeals to avoid getting the very result
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`they demanded from PersonalWeb over two months ago--dismissal of this action. Amazon cites to
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`law that discourages an appellate court from “hav[ing] to decide the same issues more than once
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`even if there are subsequent appeals” (Oppo. at 2:20-23), but then contradicts itself by admitting that
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`the arguments it wants this Court to hear on summary judgment are “independent of the claim
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`construction PersonalWeb wishes to appeal.” (Oppo. at 2:5-6.) There are few overlapping issues
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`between the Court’s findings in the Claim Construction Order and Amazon’s motion for summary
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`judgment (Dkt. 541.) The Court should enter a judgment and dismiss the entire action between
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`PersonalWeb and Amazon now to avoid having to work up the entirety of the summary judgment
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`motion based on issues that Amazon had never raised until now—work that will be entirely wasted if
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`Amazon prevails in the appeal on claim construction, as Amazon is so confident it will. Moreover,
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`the hypothetical efficiency of avoiding a remand and second appeal by proceeding now to summary
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`judgment fails to consider that if this case is ever remanded back to this Court by the Federal Circuit
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`(assuming reversal on claim construction) there would most likely be additional appeals in that
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`scenario (e.g., damages determinations, invalidity) regardless of the precise outcome of the
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`proceedings on remand. Amazon’s efficiencies argument is speculative.
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`18
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`II.
`
`ARGUMENT
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`Amazon acknowledges that it “has raised additional non-infringement arguments at summary
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`judgment that are independent from the claim construction issue PersonalWeb plans to appeal”.
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`(Oppo. at 3:4-5.) PersonalWeb agrees that these arguments are independent.
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` ’544 and ’791 patents not in infringement contention:
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`PersonalWeb’s operative counterclaim does not include claims of the ’544 and ’791 patents.
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`(Dkt. 71.) PersonalWeb is agreeable to modifying its proposed order and final judgment to include a
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`declaratory judgment of noninfringement regarding the ’544 and ’791 patents. Further, as
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`PersonalWeb’s operative counterclaim does not include claims of infringement of the ’544 patent,
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`the inclusion in the proposed order and final judgment for Amazon regarding PersonalWeb’s
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`counterclaim of infringement of the ’544 patent was mistakenly included and should be removed.
`
`
`
`
`
`PERSONALWEB’S REPLY IN SUPPORT OF
`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
`
`

`

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`Case 5:18-md-02834-BLF Document 548 Filed 10/23/19 Page 3 of 6
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`The judgments regarding the ’544 and ’791 patents is independent of the Claim Construction Order
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`and thus will not be appealed.
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` No expert opinion testimony presented by PersonalWeb re Amazon:
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`On August 16, 2019, a few hours after the Claim Construction Order was issued, Amazon
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`threatened sanctions if PersonalWeb did not immediately dismiss all of its claims with prejudice. Of
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`course, Amazon knew when it made this demand that Amazon would have to stipulate to such a
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`dismissal. PersonalWeb immediately offered to dismiss its claims as Amazon requested. Based on
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`Amazon’s threat of sanctions should PersonalWeb continue any further prosecution of its case
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`against Amazon, and in reliance on Amazon’s indicated desire for immediate dismissal,
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`10
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`PersonalWeb did not serve an expert witness report in the Amazon case that was due on August 23,
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`2019.
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`Over a month later, Amazon first conveyed that it had reversed course and would not agree
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`to a dismissal. Apparently, Amazon saw an opening to take advantage of PersonalWeb’s acceptance
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`of Amazon’s dismissal demand and not producing expert reports that would force Amazon to rebut
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`them. Now, based on the Amazon-induced absence of PersonalWeb expert reports, Amazon is
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`attempting to receive an essentially “default” summary judgment on brand new issues, unrelated to
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`the Claim Construction Order. This type of gamesmanship should not be rewarded by this Court.
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` Brand new noninfringement arguments completely unrelated to the Claim Construction
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`Order :
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`As Amazon admits, its summary judgment “rests on additional arguments that are both fatal
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`to PersonalWeb’s infringement theories and independent of the claim construction PersonalWeb
`
`wishes to appeal.” Opp. at 2:5-6. Amazon’s new noninfringement arguments have nothing to do
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`with any of the terms construed in the Claim Construction Order. Accordingly, these new issues
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`raised by Amazon will not be based on any common facts, claim terms, or Court rulings as those
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`related to the Claim Construction Order.
`
`Judicial Economy.:
`
`Since the parties agree that infringement cannot be proved under the Court’s construction of
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`“unauthorized or unlicensed” and “authorization” (Oppo. at 3:20-21), there is no risk of piecemeal
`
`
`
`
`
`PERSONALWEB’S REPLY IN SUPPORT OF
`MOTION FOR ORDER AND ENTRY OF JUDGMENT
`OF NON-INFRINGEMENT
`
`
`2
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`
`

`

`
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`Case 5:18-md-02834-BLF Document 548 Filed 10/23/19 Page 4 of 6
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`appeals. Curtiss-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 8 (1980) (affirming district court’s
`
`decision that to certify case for appeal where there was no sound reason to delay appellate
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`resolution.) And the notion raised by Amazon that the Federal Circuit can affirm a judgement of
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`non-infringement based on any ground supported by the record is circular—unless the Court
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`entertains Amazon’s motion for summary judgment, the record will not include anything to support
`
`Amazon’s new noninfringement arguments. This notion also applies the other way and supports
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`entry of judgment now: should the Federal Circuit agree with Amazon on the Claim Construction
`
`Order, it can affirm the judgment, thereby ending the case and preserving the Court’s time, and the
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`parties from an unnecessary expenditure of fees related to Amazon’s summary judgment motion. It
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`defies logic to ask this Court to consider the five aforementioned grounds before the Federal Circuit
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`renders a decision on the Claim Construction Order.
`
`Relying on Solannex, Inc. v. Miasole, Inc., No. CV 11-00171 PSG, 2013 WL 430984, at *3
`
`(N.D. Cal. Feb. 1, 2013), Amazon argues for simultaneous entry of judgement in this action and the
`
`Twitch action. Amazon’s reliance on Solannex is misplaced. There, the Honorable Magistrate Judge
`
`Paul S. Grewal denied the parties’ request for entry of judgment because “[m]any of the same terms
`
`(including the term “pattern”) appear in both the ’810 and ’249 patents as well as the ’568 and ’737
`
`patents” and “[c]laim construction for the ’568 and ’737 patents has not yet taken place. If the court
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`were to certify the claim construction of the ’810 and ’249 patents, it is likely that the parties would
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`appeal claim construction of the same terms at a later date, requiring the appellate court to decide the
`
`same issues—or at least similar—more than once.” (Id.) (emphasis added). Here, the Court has
`
`finished claim construction for all of the terms in all of the patents at issue as to both Twitch and
`
`Amazon. The risk feared of in Solannex does not exist here. The equities involved thus do not
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`suggest any reason for delay. Instead, delaying entry of judgment in this action is burdensome on
`
`the parties and incongruous with protecting judicial economy.
`
`Lastly, PersonalWeb recognizes that Rule 54(b) may not technically be the correct rule for
`
`this motion as the motion seeks a dismissal of all of the claims in this case, not a partial judgment.
`
`However, the Court can dismiss this entire action pursuant to Rule 41(a)(2) under its sound
`
`discretion, to produce a “with prejudice” result so that PersonalWeb can pursue its appellate
`
`
`
`
`
`PERSONALWEB’S REPLY IN SUPPORT OF
`MOTION FOR ORDER AND ENTRY OF JUDGMENT
`OF NON-INFRINGEMENT
`
`
`3
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`
`

`

`
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`Case 5:18-md-02834-BLF Document 548 Filed 10/23/19 Page 5 of 6
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`rights. Sams v. Beech Aircraft Corp., 625 F.2d 273, 277 (9th Cir. 1980) (internal citation omitted).
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`A district court should grant a motion for voluntary dismissal under Rule 41(a)(2) unless a defendant
`
`can show that it will suffer some plain legal prejudice as a result. Smith v. Lenches, 263 F.3d 972, 75
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`(9th Cir. 2001). Legal prejudice in the 9th Circuit means “prejudice to some legal interest, some
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`legal claim, some legal argument.” Smith v, 263 F.3d at 76 (internal quotations omitted). No legal
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`prejudice will befall Amazon if the Court dismisses this entire action now, in the manner proposed.
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`That a subsequent litigation may be necessary following PersonalWeb successfully pursuing an
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`appeal would not constitute legal prejudice. See Westlands Water Dist. v. United States, 100 F.3d
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`94, 97 (9th Cir. 1996) (holding that “[u]ncertainty because a dispute remains unresolved” or because
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`“the threat of future litigation ... causes uncertainty” does not result in plain legal prejudice). Id. at
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`96–97. As is stated above, there is no risk of piecemeal appellate review here because PersonalWeb
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`seeks entry of judgment and dismissal of its entire case against Amazon to enable PersonalWeb to
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`pursue its appellate rights. Should PersonalWeb prevail on the Claim Construction Order on appeal,
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`there will necessarily be more than one appeal because a remand will be necessary, and a subsequent
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`appeal will likely ensue, brought by the party that loses at trial thereafter. But if PersonalWeb does
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`not prevail on the Claim Construction Order appeal, the matter is over. Entry of judgment now,
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`before adjudication of Amazon’s summary judgement motion, is the only procedural path that can
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`lead to the result of a single appeal. The Court should therefore grant this Motion. See Smith v. Half
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`Hollow Hills Cent. Sch. Dist., 298 F.3d 168, 172 (2d Cir. 2002) (“[T]he federal policy against
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`piecemeal appeals is not implicated where an entire case can be decided in a single appeal.”)
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`III. CONCLUSION
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`Entry of judgment and dismissal of this action is proper to avoid usurping of the Court’s
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`resources now that the parties have agreed that infringement cannot be proven under the Claim
`
`Construction Order. The doomsday risk of the Federal Circuit vacating partial final judgements that
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`raise the potential for multiple overlapping risks does not exist here because PersonalWeb is not
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`seeking entry of partial judgment but instead entry of judgment and dismissal of this entire action
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`between PersonalWeb and Amazon. Amazon’s reliance on Federal Circuit law to make this
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`inapplicable point is therefore misplaced. See e.g. Linear Tech. Corp. v. Impala Linear Corp., 31 F.
`
`
`
`
`
`PERSONALWEB’S REPLY IN SUPPORT OF
`MOTION FOR ORDER AND ENTRY OF JUDGMENT
`OF NON-INFRINGEMENT
`
`
`4
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`
`

`

`
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`Case 5:18-md-02834-BLF Document 548 Filed 10/23/19 Page 6 of 6
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`App'x 700, 702 (Fed. Cir. 2002) (Finding Rule 54(b) judgment giving permission to appeal a claim
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`construction order was not appropriate where the parties did not contend “that claim construction
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`determined one way or another will definitely decide the case”). Unlike the parties in that case,
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`entering judgment and dismissing this entire case, “and granting the petition for permission to
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`appeal, in the words of the statute, ‘may materially advance the ultimate termination of the
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`litigation.’” (Id.) PersonalWeb respectfully requests the Court grant this Motion.
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`Dated: October 23, 2019
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`Respectfully submitted,
`
`8
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`STUBBS, ALDERTON & MARKILES, LLP
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`By: /s/ Michael A. Sherman
`Michael A. Sherman
`Jeffrey F. Gersh
`Sandeep Seth
`Wesley W. Monroe
`Stanley H. Thompson, Jr.
`Viviana Boero Hedrick
`
`Attorneys for Patent Plaintiffs
`PERSONALWEB TECHNOLOGIES, LLC
`
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`
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`PERSONALWEB’S REPLY IN SUPPORT OF
`MOTION FOR ORDER AND ENTRY OF JUDGMENT
`OF NON-INFRINGEMENT
`
`
`5
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`
`