Case 5:18-md-02834-BLF Document 550-7 Filed 10/25/19 Page 1 of 6
`Case 5:18-md-02834—BLF Document 550-7 Filed 10/25/19 Page 1 of 6
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`EXHIBIT 3
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`EXHIBIT 3
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`Case 5:18-md-02834-BLF Document 550-7 Filed 10/25/19 Page 2 of 6
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`I, Ronald D. Lachman, hereby declare and state as follows:
`1.
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`The facts herein are based upon personal knowledge, or where indicated, based on my
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`good faith belief and understanding. If called upon to do so, I would competently testify thereto.
`2.
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`I am one of the inventors of the technology of the TrueName patents, along with
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`David Farber. Besides the TrueName patents, I am a named inventor or co-inventor on 15 United
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`States patents, primarily involving computer networking and Internet infrastructure.
`3.
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`For about forty years, I have been a Technology Entrepreneur, and have co-founded
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`and sold a number of companies, predominately in the computer networking and information
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`technology infrastructure technologies. I also have extensive early stage venture capital experience
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`and have invested in over 100 private companies since 1996. I have served on over thirty boards of
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`directors,
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`including public companies.
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` I have also been extensively
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`involved
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`in
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`the
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`commercialization of intellectual property rights associated with networking and Internet
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`infrastructure technologies. The technologies of a number of companies in which I have been
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`involved were based on patents on which I was a named inventor.
`4.
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`Among the companies I have been involved with include Kinetech, Inc. (“Kinetech”),
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`and Sandpiper Networks, Inc. (“Sandpiper”) which later merged with Digital Island, Inc. (“Digital
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`Island”).
`5.
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`In 1994, when Kinetech was formed, I was the president. In 1995, David Farber (the
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`other named inventor of the TrueName patents) and I assigned our rights in the TrueName
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`technology to Kinetech, so that Kinetech could commercialize the inventions that would be the
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`subject of the family of TrueName patents.
`6.
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`I also co-founded Sandpiper, and I served on its Board of Directors. We invented
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`technology to selectively replicate content at locations where it was needed and to match clients (i.e.,
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`browser users) with appropriate (oftentimes the geographically closest) content servers. The effect
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`of this invention required that CDN servers would need to be strategically placed throughout the
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`world to reduce the physical distances over which messages containing content would have to travel
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`over the Internet. Sandpiper coined the term Content Delivery Network or CDN for this technology.
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`The capital constraints for then fledgling CDN companies made it most effective that CDN servers
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`LACHMAN DECL ISO PW’S OPPOSITION TO
`MOTION FOR JUDGMENT ON THE PLEADINGS
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`1
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`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 550-7 Filed 10/25/19 Page 3 of 6
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`be located at Internet Service Provider (“ISP”) sites. That was because there were very few other
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`CDN companies at the time, and our company did not want to spend the money or incur the time to
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`raise capital to develop the infrastructure necessary for CDN companies to place CDN servers at
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`locations other than at ISP sites, i.e., put the CDN servers geographically where there was already
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`infrastructure. Furthermore, there was also a synergy created by locating CDN servers at ISP sites
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`because this helped relieve the load on ISP long-haul lines created by the content they were
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`receiving.
`7.
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`The Field of Use definition that would later be agreed upon by Kinetech and Digital
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`Island, and that was limited to “many of said CDN servers being at ISP sites” was consistent with
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`the state of technology and the Internet existing in the late 1990s and in 2000 when the Agreement
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`was executed. This is because the early CDN companies in existence – Digital Island and Akamai
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`Technologies, Inc. (“Akamai”) – did not have the infrastructure to distribute content by themselves;
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`so their servers were located at ISP sites.
`8.
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`After co-founding Sandpiper, I played an active role at the company and worked with
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`a number of individuals who worked there. Later, in 1999, Sandpiper merged with Digital Island. I
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`became a Digital Island shareholder, and a number of individuals I had worked with at Sandpiper
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`then worked for Digital Island. I continued my relationships with these former Sandpiper employees,
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`now working at Digital Island. Furthermore, Digital Island continued on with the CDN technology
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`that we had started at Sandpiper. As such, I was very familiar with Digital Island’s CDN technology
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`in 1999 and 2000.
`9.
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`In 1999 and 2000 I also had relationships with several people at Akamai and I had
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`knowledge about their technology. In 2000, Akamai and Digital Island had discussions about co-
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`existing in the field of CDN technology. I was aware of these discussions given that I had co-
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`invented CDN technology, because I had relationships with individuals at both Digital Island and
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`Akamai, and because I was knowledgeable about Digital Island’s technology and had knowledge of
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`Akamai’s technology.
`10.
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`By the time of the Digital Island/Akamai discussions, the first TrueName patent –
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`U.S. Patent No. 5,978,791 (“’791 patent”) – had issued. Based on my knowledge of Akamai’s
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`LACHMAN DECL ISO PW’S OPPOSITION TO
`MOTION FOR JUDGMENT ON THE PLEADINGS
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`2
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`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 550-7 Filed 10/25/19 Page 4 of 6
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`PERSONALWEB047084
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`technology, I knew that Akamai’s CDN technology practiced the ‘791 patent. I later learned that the
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`Digital Island/Akamai discussions broke down and Akamai started claiming that Digital Island
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`infringed Akamai’s intellectual property rights. Akamai then obtained a U.S. patent on CDN
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`technology, and Akamai sued Digital Island shortly thereafter for infringement. Based on my
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`working relationships with individuals at Digital Island and Akamai, and based on my knowledge of
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`their CDN technology, I knew that both companies’ CDN technology involved many CDN servers
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`being located at ISP sites.
`11.
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`As a shareholder with working relationships with Digital Island, which was facing a
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`patent infringement claim by Akamai; and as president of Kinetech, which owned the TrueName
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`patents, I believed that it made sense to consider transferring certain rights in the ‘791 patent from
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`Kinetech to Digital Island. This represented a way for Digital Island to better defend itself against
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`Akamai’s infringement claims, and also represented a means for Kinetech to commercialize the ‘791
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`patent and the TrueName technology.
`12.
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`On behalf of Kinetech, along with Kinetech’s Vice President, Ezra Goldman, I was
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`personally involved in the negotiations with Digital Island that led to the September 1, 2000 License
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`Agreement Between Kinetech and Digital Island (“Agreement”). One of the points we negotiated
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`was the scope of the rights being transferred to Digital Island, which was ultimately defined by the
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`Field of Use set forth in Schedule 1.2 to the Agreement.
`13.
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`During negotiations, Digital Island wanted the Field of Use to be broadly defined,
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`while Kinetech wanted it to be narrowly defined. Specifically, Kinetech wanted to define the Field
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`of Use as narrow as possible to cover only what Digital Island needed to cover its own CDN
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`business and to assert the ‘791 patent against Akamai. Kinetech and Digital Island negotiated back
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`and forth on the definition of the Field of Use, and it was ultimately agreed that the Field of Use
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`would be limited to a subset of CDN technology where “many of said CDN servers being at ISP
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`sites.” While Mr. Goldman took the lead on writing the language for the Agreement, including the
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`definition for the Field of Use, he and I discussed the scope of the Field of Use during the
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`negotiations, including the language on which we ultimately agreed.
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`LACHMAN DECL ISO PW’S OPPOSITION TO
`MOTION FOR JUDGMENT ON THE PLEADINGS
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`3
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`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 550-7 Filed 10/25/19 Page 5 of 6
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`14.
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`I have read the Motion of Amazon.com, Inc. and Amazon Web Services, Inc. for
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`Judgment on the Pleadings on Infringement Claims Against CloudFront (the “Motion”). I noted
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`Amazon’s criticism of the language used to define the Field of Use in the Agreement, where
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`Amazon stated: “Reasonable parties would not use such loose language to allocate patent rights.”
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`(Motion, p. 6, lines 11-12.) However, as agreed during the negotiations on the scope of the Field of
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`Use definition, and as set forth in the Field of Use definition in Schedule 1.2 to the Agreement,
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`Kinetech did not transfer the rights in the ‘791 patent to all CDN technology and businesses, but
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`instead transferred the rights for only a subset of CDN technology where “many of said CDN servers
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`being at ISP sites.”
`15. Mr. Goldman and I, as Vice President and President of Kinetech, respectively, were
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`acutely aware of the scope of rights being transferred, and there was nothing either “unreasonable”
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`in Kinetech’s position or “loose” in the language, given the circumstances that surrounded the
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`negotiations leading to the Agreement. Indeed, I had been involved in coining the term CDN and
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`had co-invented CDN technology several years earlier. Accordingly, the language defining the Field
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`of Use in the Agreement clearly reflects that Kinetech was transferring rights to only a subset of
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`CDN technology. In large measure, the “many of said CDN servers being at ISP sites” limitation on
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`the Field of Use was my desire to provide Digital Island with the narrowest scope of rights possible
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`in order for Digital Island to run its own CDN business and also for Digital Island to effectively
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`litigate with Akamai, while
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`simultaneously not hampering Kinetech
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`in
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`its
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`future
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`endeavors/operations. Furthermore, I believed that CDN technology would become adopted over
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`time and that future CDNs would not need to locate many of the CDN servers at ISP sites. In fact,
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`this is what happened over the last almost twenty years.
`16.
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`That the scope of the definition of the Field of Use was limited only to rights
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`sufficient for Digital Island to assert patent infringement against Akamai (and for Digital Island to
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`run its own CDN business) is confirmed by the fact that, shortly after the Agreement was executed,
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`Digital Island sued Akamai for infringement of the ’791 patent. Furthermore, I understand that the
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`limited scope of the definition of the Field of Use applies to Level 3, LLC’s CDN business today.
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`LACHMAN DECL ISO PW’S OPPOSITION TO
`MOTION FOR JUDGMENT ON THE PLEADINGS
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`4
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`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 550-7 Filed 10/25/19 Page 6 of 6
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`PERSONALWEB047086
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`The scope of the definition of the Field of Use was also consistent with Kinetech’s
`17.
`During negotiations with
`plan to license the True Name patents in various fields or businesses.
`Island that the scope ofthe Field of Use needed to be limited
`Island, we made clear to Digital
`Digital
`so that Kinetech could license the True Name patents in other areas.
`I declare under penalty of perjury under the laws of the United States that the foregoing is
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`true and correct.
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`Executed this
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`day of May, 2019, ino
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`Ronald AfaA—
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`CACHMAN DECL ISO PW’S OPPOSITION TO
`MOTI ON FOR JUDGMENT ON THE PLEADINGS
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`5
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`NO: 5:18-md-0
`CASE
`ERSE NO:
`Fgev-00767- “BLF
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`BORe
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`BO
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`BO
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