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`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 1 of 14
`
`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 PERSONALWEB TECHNOLOGIES,
`
`LLC, ET AL., PATENT LITIGATION
`Case No.: 5:18-cv-05619-BLF
`_______________________________________
`
`
`PERSONALWEB TECHNOLOGIES,
`PERSONALWEB TECHNOLOGIES, LLC, a
`LLC’s NON-OPPOSITION TO TWITCH
`Texas limited liability company, and
`INTERACTIVE, INC. MOTION FOR
`LEVEL 3 COMMUNICATIONS, LLC,
`SUMMARY JUDGEMENT OF
`a Delaware limited liability company,
`NONINFRINGEMENT AND PARTIAL
`
`OPPOSITION TO MOTION TO
`
`Plaintiffs,
`EXCLUDE TESTIMONY OF ERIK DE LA
`v.
`IGLESIA
`
`TWITCH INTERACTIVE, INC. a Delaware
`November 15, 2019
`Date:
`corporation,
`9:00 a.m.
`Time:
`
`Courtroom 3, 5th Floor
`Dept.:
`
`Judge: Hon. Beth Labson Freeman
`
`
`
`
`
`
`
`
`Trial Date: March 16, 2020
`
`Defendant.
`
`
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 2 of 14
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`PersonalWeb does not oppose entry of judgment of noninfringement on all of its claims as set
`forth in Twitch’s Proposed Order, item (1) (Dkt. 542). PersonalWeb does oppose item (2) in the
`Proposed Order, precluding PersonalWeb from offering any expert witness testimony of Erik de la
`Iglesia at trial. PersonalWeb also opposes any opinion, finding or conclusion by the Court that
`includes that summary judgment is entered based on anything other than as a direct result of the
`Court’s Claim Construction Order (Dkt. 485).
`judgment dismissing
`the Court enters
`that
`PersonalWeb also hereby cross-moves
`PersonalWeb’s claims with prejudice under Fed. R. Civ. Proc. 41(a)(2), while preserving
`PersonalWeb’s appellate rights. A Proposed Order for Judgment is submitted herewith.
`I.
`
`INTRODUCTION
`PersonalWeb’s Proposed Order for its cross-motion under Rule 41(a)(2) is not substantively
`different than the order Twitch seeks. Accordingly, PersonalWeb requests that its Cross-Motion for
`Judgment be considered ahead of Twitch’s Motion for Summary Judgment of Noninfringement. The
`granting of PersonalWeb’s cross-motion for judgment would then moot Twitch’s Motion for Summary
`Judgment of Noninfringement.
`After the Court’s Claim Construction Order, PersonalWeb agreed to Twitch’s request that
`PersonalWeb dismiss its ‘544 patent claim against Twitch with prejudice. PersonalWeb agreed to
`dismiss its ‘544 patent claim specifically because of the Court’s construction of the claim term
`“function of the one or more of part values” as “computation where the input is only the one or more
`part values.” In PersonalWeb’s motion to clarify, PersonalWeb also agreed to Twitch’s request that
`PersonalWeb dismiss the remainder of its claims against Twitch if the Court found that PersonalWeb
`was misreading the Claim Construction Order regarding “unauthorized or unlicensed” and
`“authorized,” while maintaining its rights to appeal. PersonalWeb’s motion to clarify did not apply to
`the claims against Amazon because while Amazon controls whether content is provided or accessed,
`it does so based on parameters set or controlled by its customers, not based on whether there are valid
`rights to any specific content; hence, the Claim Construction Order did not have identical application
`to Amazon. The practical effect of the parties’ communications reflects a consensus path moving
`forward to jointly dismiss all of PersonalWeb’s claims with prejudice subject to a subsequent
`
`1
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 3 of 14
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`condition. Twitch has since reneged on accepting dismissals with prejudice and instead moved for
`summary judgment of noninfringement on grounds unrelated to the issues addressed in the Claim
`Construction Order.
`Nonetheless, PersonalWeb does not oppose the entry of Twitch’s Proposed Order as submitted
`to the Court as it relates to noninfringement because it does not expressly reference Twitch’s new
`grounds for noninfringement. However, PersonalWeb does oppose Twitch’s new noninfringement
`grounds, i.e.: (1) permitting content to be provided or accessed, (2) determining whether a copy of a
`data file is present, or (3) comparison to a plurality of identifiers. All three of these new arguments are
`the subject of disputed, material facts. Moreover, none of these new grounds relates to the
`“unauthorized or unlicensed” issue that was the subject of PersonalWeb’s motion to clarify. Nor do
`any of these new grounds relate to any of the other claim terms construed in the Claim Construction
`Order. PersonalWeb also opposes granting summary judgment based on an exclusion of Mr. de la
`Iglesia’s expert report.
`As to the substance of the new non-licensing noninfringement arguments, Twitch is now doing
`what it chastised PersonalWeb for purportedly doing in its motion to clarify—namely seeking a redo
`of claim construction. In all three of its new noninfringement arguments, Twitch asks the court to read
`claim language to be substantively narrower than the plain meaning of the claim language (e.g., “not
`permitting the content to be provided to or accessed” as “not permitting the content to be provided to
`or accessed forever;” “determining, using at least the name, whether a copy of the data file is present
`on at least one of said computers” as “determining, using only the name, whether a copy of the data
`file is present on at least one of said computers”; “whether a … name … corresponds to one of the
`plurality of identifiers” as a name is “compared to a plurality of identifiers or values”). Throughout its
`motion, Twitch only argues that it does not meet the limitation as it wishes it was written, not as it was
`actually written. As the claims are actually written, Twitch meets each of the claim limitations it raises.
`Should Twitch’s substantive new noninfringement arguments fail, it argues a procedural
`gimmick that because Mr. de la Iglesia’s followed PersonalWeb’s reading of the Claim Construction
`Order regarding licensing that the Court has now explicitly rejected, the rest of his report, wholly
`unrelated to the licensing construction issue, should be excluded.
`
`2
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 4 of 14
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`The Court issued its Claim Construction Order on August 16, 2019, construing the terms
`“unauthorized or unlicensed,” “authorized,” and “function of the one or more of part values,” among
`others. Twitch immediately threatened PersonalWeb with Rule 11 sanctions if PersonalWeb did not
`immediately dismiss its claims with prejudice. The next business day, PersonalWeb agreed to dismiss
`its claim regarding the ‘544 patent, but not the remaining claims. Further discussions between
`PersonalWeb and Twitch revealed that the parties did not read the Claim Construction Order the same
`way regarding “unauthorized or unlicensed” and “authorized” leading to PersonalWeb filing its
`motion to clarify. As this disagreement, regarding the reading of the Claim Construction Order
`happened days before expert reports were due, PersonalWeb’s infringement expert report was
`premised on its reading of the Claim Construction Order.
`The “unauthorized or unlicensed” and “authorized” claim terms, though, only appear in one
`clause in one element of the asserted claims and thus affect a small portion of the overall infringement
`analysis. Indeed, of the 197 paragraphs in Mr. de la Iglesia’s report, only six are substantively related
`to the “unauthorized or unlicensed” and “authorized” issue. Accordingly, PersonalWeb is withdrawing
`those portions of Mr. de la Iglesia’s report. See, Exhibit 1, Redacted de la Iglesia Report of August 23,
`2019. Nonetheless, Twitch seeks exclusion of Mr. de la Iglesia’s entire report based on Mr. de la
`Iglesia’s use of PersonalWeb’s reading of the Court’s construction of “unauthorized or unlicensed”
`and “authorized,” while simultaneously making new noninfringement arguments that require expert
`testimony. Mot. at 8. Twitch is overreaching and it should not be rewarded.
`As to the ‘544 patent, Twitch wants it both ways. First, Twitch said that submitting an expert
`report of infringement once the Court had ruled against PersonalWeb on claim construction would
`violate Rule 11. Now, Twitch says that PersonalWeb’s “failure” to submit an expert report on
`infringement of the ‘544 patent entitles it to summary judgment of noninfringement based on grounds
`that have nothing to do with the Court’s claim construction.
`In demanding that PersonalWeb dismiss with prejudice, Twitch was necessarily also offering
`to stipulate to the entry of judgment as PersonalWeb could not unilaterally dismiss since Twitch had
`answered. After PersonalWeb agreed to Twitch’s demand regarding the ‘544 patent to halt the
`litigation and dismiss with prejudice, PersonalWeb ceased all discovery related solely to the ‘544
`
`3
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 5 of 14
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`patent. Pursuant to the halt in litigation that Twitch demanded, and in reliance on Twitch’s indicated
`desire for immediate dismissal, PersonalWeb did not include the ‘544 patent in its expert report.
`Over a month later, Twitch first conveyed that it had reversed course and would not agree to
`a dismissal. Apparently, Twitch saw an opening to take advantage of PersonalWeb’s acceptance of
`Twitch’s dismissal demand for the ‘544 patent and not including the ‘544 patent in its expert reports
`(saving Twitch from having to rebut them). Now, based on the Twitch-induced absence of the ‘544
`patent in PersonalWeb’s expert reports, Twitch is attempting to receive an essentially “default”
`summary judgment on brand new issues, unrelated to the Claim Construction Order. This type of
`gamesmanship should not be rewarded by this Court.
`Twitch projects confidence it will win any appeal on claim construction. Yet, its anticipated
`reason for seeking summary judgment instead of dismissal is saving the Court from a possible remand
`and further appeal, which would only happen if Twitch loses the appeal. If Twitch wins the appeal,
`the only difference in having the Court rule on Twitch’s new grounds of noninfringement is that
`Twitch will be able to try to use the summary judgment for issue preclusion in other cases. This is not
`a sufficient reason to have the Court go through the work to rule on their new noninfringement
`arguments that would be wasted should Twitch wins on appeal of claim construction.
`II. ARGUMENT
`As detailed in both the de la Iglesia report and the declaration of Erik de la Iglesia in support
`of and accompanying this filing (“de la Iglesia Decl.”), Twitch servers choose to send HTTP 304
`messages which indicates to browsers operating under HTTP 1.1. protocol that they are permitted to
`continue to access expired Twitch webpage content in their caches when Twitch wants the browsers
`to keep using the cached content in rendering Twitch webpages. Twitch servers choose to send HTTP
`200 messages that make new content available that browsers access instead of the previously cached
`content when Twitch no longer wishes the browsers to use the previously cached file content in
`rendering Twitch webpages. Twitch uses MD5 ETags (i.e., ETag values generated by applying the
`MD5 hash algorithm to the file content and only the file content) in making the decision whether or
`not to continue to permit the browsers’ access to the previously cached file content or to provide new
`file content for the browser to access and use instead of the previously cached file content. The MD5
`
`4
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 6 of 14
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`ETags inform Twitch whether a copy of the current version of the webpage file is already cached
`(present) at the browser or needs to be provided. If a copy of the current version is already present at
`the browser, Twitch sends the HTTP 304 message permitting the browser to continue accessing the
`cached copy. If the file at the browser is not a copy of the current file version, Twitch sends the HTTP
`200 message for the browser to access instead of the previously cached version.
`Despite these undisputed facts, Twitch asserts that it “neither permits nor denies access to any
`data item stored by web browsers” because “web browsers can access any locally-stored Twitch data
`item, whether current or expired, licensed or unlicensed.” Twitch supports this argument by citing to
`situations wherein a browser uses expired content in its cache anyway based upon a manual user input
`(e.g. pressing the “back” button). But these situations do not involve communications or interactions
`with the Twitch server and do not address the actual infringement scenario in which the Twitch server
`decides whether to permit continued access to previously cached content or to provide new content
`for access. Twitch also argues that it does not infringe because it does not compare the MD5 ETag
`received from a browser in a conditional GET request to a plurality of MD5 ETag values. But this
`argument is also unavailing because none of the asserted claims require such a one-to-many
`comparison.
`A.
`
`There is Uncontroverted Evidence that the CloudFront System Controls
`Whether Content is Provided or Accessed
`1) Claim 20 of the ’310 patent recites, in relevant part:
`based at least in part on said content-dependent name of said
`particular data item, the first device (A) permitting the content to
`be provided to or accessed by the at least one other computer if it is
`not determined that the content is unauthorized or unlicensed,
`otherwise, (B) if it is determined that the content is unauthorized or
`unlicensed, not permitting the content to be provided to or
`accessed by the at least one other computer.
`The evidence shows that Twitch’s system makes a determination to permit or not permit
`cached file content to be accessed based at least on part on an MD5 ETag value (the content-dependent
`
`5
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 7 of 14
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`name of said particular data item.) The Twitch servers operated in accordance with the HTTP 1.1
`protocol, RFC 2616. Specifically, the servers communicated with connected computers communicate
`via messages, including but not limited to those specified in RFC 2616 regarding GET requests
`(“HTTP GET requests”) (e.g., Sec. 9.3), conditional GET requests (“HTTP conditional GET
`requests”) with If-None-Match Headers (e.g., Sec. 14.9.4), ETags (e.g., Sec. 14.19), 304 messages
`(“HTTP 304 messages”) (e.g., Sec. 10.3.5), 200 messages (“HTTP 200 messages”) (e.g., Sec. 10.2.1),
`and cache control directives (e.g., Secs. 13.1, 13.2, 13.3.2-4, 14.9, 14.21, 14.26) to implement cache
`control. (de la Iglesia Decl. at ¶ 11)
`HTTP 1.1 provides a mechanism for using ETags to instruct clients (such as browsers) whether
`or not the file content in their caches may still be used to fulfill requests for content after the original
`time to use the file content has expired. HTTP version 1.1 added the ability to use the max-age and
`ETag in a conditional GET request. If a requested file is served along with a max-age caching directive
`and an ETag value, the client browser cache will store the file, the max-age and the ETag. As long as
`the object age in the cache is less than the max-age, the client cache will reuse the file for future
`requests. (RFC 2616 @ 51-52). However, after the permitted time to use the content has been
`exceeded, conditional GETs must be used to revalidate that the client is permitted to keep using the
`cached file content for some extended period of time. (Id. at ¶ 12) During the relevant time period,
`Twitch servers used content-based ETags that were generated by applying the MD5 hash algorithm to
`the content, and only the content, of the associated file. The evidence also confirms that the servers
`sent the MD5 ETag along with the file content and cache control directives in HTTP 200 messages
`and subsequently compared such MD5 ETags sent by clients (e.g. browsers and intermediate cache
`servers) in conditional GET requests with the current ETag values for the requested file stored at the
`server. (Id. at ¶ 13)
`The source code that Twitch’s server used compares the ETag sent by a browser in a
`conditional GET request with a value for a data item stored at the server:
`if (ngx_strncmp(start, etag->data, etag->len) != 0).
`(de la Iglesia Decl. at ¶ 14) If the server verifies that the ETag in the “If-None-Match” request header
`matches the current ETag of the requested file, it makes a determination to permit a browser to keep
`
`6
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 8 of 14
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`using and accessing the cached content by sending a 304 NOT MODIFIED message to the browser,
`which is accomplished by the following code:
`r->headers_out.status = NGX_HTTP_NOT_MODIFIED;
`r->headers_out.status_line.len = 0;
`r->headers_out.content_type.len = 0;
`ngx_http_clear_content_length(r);
`ngx_http_clear_accept_ranges(r);
`(de la Iglesia Decl. at ¶ 15) This capability relies on the fact that the server will update the ETag value
`for a file when that file changes. RFC 2616 does not describe the generation of ETag validators or
`require the use of content-based ETags that change only when the content itself changes, but rather
`distinguishes weak from strong validators by requiring that strong validators change whenever the
`underlying file changes. (RFC 2616 @ 54-57.) When the server does not find a match, it makes a
`determination not to permit a browser to use cached content and in compliance with HTTP version 1.1
`sends an HTTP 200 OK response with a new file, which the browser will use instead of cached content
`in accordance with the HTTP protocol specification RFC 2616. Twitch’s witness, James Richard,
`provided extensive testimony confirming Twitch’s processing of HTTP conditional GET requests
`containing content-based ETags and sending 200 and 304 responses. (See James Richard Dep. Tr.
`(10/1/19), at 9-21, 33-35, 38-39.) (de la Iglesia Decl. at ¶¶ 14-17)
`2) Claim 25 of the ’420 patent recites, in relevant part:
`(C) based at least in part on said ascertaining in step (B),
`selectively allowing a copy of the particular sequence of bits to be
`provided to or accessed by or from at least one of the computers in
`a network of computers, wherein a copy of the sequence of bits is
`not to be provided or accessed without authorization, as
`determined, at least in part, based on whether or not said first
`content-dependent name of the particular sequence of bits
`corresponds to one of the plurality of identifiers.
`
`
`7
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 9 of 14
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`The evidence shows that Twitch’s system selectively allows a copy of a particular sequence of
`bits (a data item) to be accessed by a computer in a network, namely, a computer running a web
`browser. The source code discussed above determines if the MD5 ETag identifier sent by a browser
`in a conditional GET request matches one of a plurality of identifiers. (de la Iglesia Decl. at ¶ 14)
`When the server finds a match, it determines that the file content at the browser is a copy of the file
`content at the server and allows a browser to access the cached copy when it sends an HTTP 304 Not
`Modified response. (de la Iglesia Decl. at ¶ 15) When the server does not find a match, it makes a
`determination not to allow a browser to access cached content when it sends an HTTP 200 OK
`response with new content, which the browser will then use instead of cached content in accordance
`with the HTTP protocol specification RFC 2616. (de la Iglesia Decl. at ¶ 19)
`3) Claim 166 of the ’420 patent recites, in relevant part:
`(a2) selectively permit the particular data item to be made available
`for access and to be provided to or accessed by or from at least some
`of the computers in a network of computers, wherein the data item is
`not to be made available for access or provided without
`authorization, as resolved based, at least in part, on whether or not at
`least one of said one or more content-dependent digital identifiers for
`said particular data item corresponds to an entry in one or more
`databases, each of said one or more databases comprising a plurality
`of identifiers, each of said identifiers in each said database
`corresponding to at least one data item of a plurality of data items,
`and each of said identifiers in each said database being based, at least
`in part, on at least some of the data in a corresponding data item.
`The evidence shows that Twitch’s system selectively permits access to a data item to be
`accessed by a computer in a network, namely, a computer running a web browser. The evidence
`supporting this limitation of claim 166 of the ’420 patent is the claim as for the limitation in claim 25
`of the ’420 patent discussed above. (de la Iglesia Decl. at ¶ 21)
`
`
`8
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`
`
`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 10 of 14
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`4) Claim 11 of the ’442 patent recites, in relevant part:
`A method as in claim 10 further comprising: allowing the file to be
`provided from one of the computers having an authorized or licensed
`copy of the file.
`The evidence shows that Amazon allows a file provided from a computer in a network, namely,
`the Amazon web server. As discussed above, the Twitch server determines if the ETag sent by a
`browser in an HTTP conditional GET request matches an identifier for a file on the web server. When
`the server does not find a match, the web server is allowed to provide the file and sends an HTTP 200
`OK response with new content for the browser to use instead of cached content in accordance with the
`HTTP protocol specification RFC 2616. (Id. at ¶ 23)
`This description of how the Twitch web server met this specific claim limitations is consistent
`with the plain and ordinary meaning of “allow” and “permit,” for which Twitch did not request
`constructions from the Court. Twitch is applying a construction not adopted by the Court that equates
`“not allowing” and “not permitting” with “preventing” or “prohibiting”: “nothing done by the Twitch
`website and server prevents a user or web browser from accessing and viewing old or expired content
`in their browse histories” and “[n]or does Mr. de la Iglesia identify any mechanism by which the
`accused Twitch website prohibits access to content already cached by a web browser … .” (Motion,
`at 9, 10.) The claims do not require this. All that is required is that in the process of a specific
`transaction between the browser and the server that the system either allows/permits or does not
`allow/permit access to a file based on the processing of a content-based name for that file. In the
`present system, that specific transaction is the processing of a conditional GET request received from
`a browser. As shown above, as part of that transaction the Twitch server either allows/permits or does
`not allow/permit access to a file based on processing an ETag sent with the request, which is a content-
`based name for the requested file. (Id. at ¶ ¶ 24-26)
`Twitch is arguing that the system must “prevent” access by any means forever. Nothing in the
`claims requires this. In the “back” button example provided by Twitch, no request for a file is sent to
`the server, so it cannot be said that the server did not prevent the cache content to be viewed. The
`server is not involved that action at all! Similarly, Twitch’s example of offline viewing of pages is
`
`9
`
`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

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`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 11 of 14
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`irrelevant because offline viewing by definition does not involve communications with the server. The
`fact that one can find non-infringing uses after the infringement does not mean that the infringement
`does not take place. See Vulcan Eng’g Co. v. Fata Aluminium, Inc., 278 F.3d 1366 (Fed. Cir. 2002)
`(“It is irrelevant whether an element has capabilities in addition to that stated in the claim. When the
`claimed function is performed in the accused system, by the same or equivalent structure, infringement
`of that claim element is established.”). Furthermore, the “back” button and offline use cases cited by
`Twitch are orthogonal to what the claims are about and what browsers are for, which is interactions
`between connected computers. The “back” and offline usage examples are no more the primary
`purposes of a browser than using a car just for its sound system is the primary purpose of a car and
`have nothing to do with whether the claim is infringed. (Id.)
`B.
`
`There is Uncontroverted Evidence Twitch Determines Whether A Copy Of A
`Data File Is Present Using The Name
`Asserted claim 10 [and dependent claim 11] of the ‘442 patent requires: “determining, using
`at least the name, whether a copy of the data file is present on at least one of said computers.”
`Twitch asserts that this limitation is not met because “ETags are not used to locate files in the
`accused Twitch website or to determine if they are present.” [Dkt. 542 at pg. 11 (PDF at 14 of 16)]
`In making this argument, Twitch appears to mistake the infringement read. PersonalWeb does
`not assert that ETags are used to “locate files in the accused Twitch website.” PersonalWeb asserts
`that the accused ETags are used by Twitch servers to determine whether various Twitch webpage files
`in browser caches are copies of various Twitch webpage files at Twitch webpage servers. As
`PersonalWeb asserts, if Twitch determines that a file at the browser cache is a copy of the file at the
`server, then Twitch can send an HTTP 304 message instructing the browser to keep using the cached
`copy for some extended time period. And, conversely, if Twitch determines that a copy of the file at
`the Twitch server is not already present at the browser cache, Twitch can send an HTTP 200 message
`to provide the browser with a copy and instructions for how long of a period the browser can use the
`copy without having to check back with Twitch whether it may keep using it. As Mr. De La Iglesia
`explains, the ETag is used to match content in order to determine whether that content is present at a
`given location, i.e., to determine whether a copy is present:
`
`10
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`NON-OPPOSITION TO TWITCH’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT AND PARTIAL
`OPPOSITION TO MOTION TO EXCLUDE DE LA IGLESIA
`TESTIMONY
`
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

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`Case 5:18-md-02834-BLF Document 551 Filed 10/25/19 Page 12 of 14
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`The Twitch web servers receive the conditional GET request and
`compare the ETag value obtained in the request with stored ETag
`values to determine whether the received ETag value matches the
`current ETag value for the content of the object referenced in the
`request. The name (ETag value) is used to locate a file as present at
`least in a browser cache when there is an ETag match, and locate a file
`as present in the Twitch web servers if there is an ETag mismatch.
`(de la Iglesia Rep. at ¶ 112.) (emphasis supplied.) (see also de la Iglesia Decl. at ¶¶ 27-29)
`Twitch however argues that, “[b]efore the ETags can be compared, the files must already
`have been located, and are thus deemed present. The comparison of the ETags determines only if
`two files match, not whether the files are present in any computer system.” This is not a factual
`argument. By making it, Twitch posits that “determining…whether a copy of a data file is present”
`means exactly the same thing as “locating” a file. It does not, and Twitch has never advanced such a
`claim construction position. It is not a file that is being determined as present, the claim specifically
`requires determining whether a “copy” of a file is present; which is precisely what Twitch does.
`Twitch does not dispute that by merely receiving an ETag in a conditional GET request,
`without doing anything further with it, Twitch cannot know whether a copy of a given file is present
`at the browser cache. That is because it is necessary for Twitch to compare the content-based ETag
`with another ETag to determine whether the file located at the browser is actually a copy of the file
`located at the server, i.e., that the content of the file at the browser cache is a copy of the content of
`the file at the server. Indeed, without this determination, Twitch could not know whether to send the
`HTTP 304 (extending the permitted time that the browser can use the cached copy of the file) or to
`send an HTTP 200 message with a copy of the current version of the file. (see also Id.)
`The point Twitch misses in making its argume