Case 5:18-md-02834-BLF Document 561-4 Filed 11/01/19 Page 1 of 9
`Case 5:18-md-02834—BLF Document 561-4 Filed 11/01/19 Page 1 of 9
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`EXHIBIT 4
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`EXHIBIT 4
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`

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`Case 5:18-md-02834-BLF Document 561-4 Filed 11/01/19 Page 2 of 9
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`Michael Sherman <masherman@stubbsalderton.com>
`Monday, September 23, 2019 10:15 AM
`David Hadden
`Wesley Monroe; Sandy Seth; Stanley H. Thompson Jr.; Jeffrey Gersh; Viviana Boero Hedrick; Saina
`Shamilov; Todd Gregorian
`Amazon DJ Action
`2019-09-20- Amazon- Joint Stipulation of Non-Infringement and Motion for Final Judgment
`(003).docx
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`Dear Dave:
`
`In my letter to you dated August 19 I proposed stipulating to judgment of non-infringement on the Amazon DJ action
`and to judgment of non-infringement as respects that ‘544 patent claims asserted against Twitch and all other website
`operators that are part of the MDL. In a call we had shortly after that letter, I reiterated our willingness and inquired
`about our working together to get some form of stipulation on file to accomplish same; you indicated you would raise
`with Amazon and get back to me.
`
`I have not heard back from you on that issue, and to move the ball forward send to you a draft stipulation that accounts
`for the Amazon DJ action (it is attached). Please review and get back to me, and let’s see if we can get this taken care of
`ASAP. In a manner of speaking, I do believe we both “owe” this to the Court, so that the Court needn’t concern itself
`with the pending motion for judgement on the pleadings directed to CloudFront, set for hearing on October 3. I’m sure
`the Court will soon be working this up, and it seems as though the sooner we can get this or a comparable stipulation to
`the Court, the better, so as to save the Court the need for work-up on the motion for judgment issues.
`
`As for the Twitch/’544 issues, on further reflection I presume you’d agree that there’s no procedural mechanism that
`would now apply to a partial judgment on just that issue. You are certainly aware that we’ve not submitted an expert
`report on infringement as respects the ‘544 patent. Are you interested in the preparation of some joint stipulation to
`the Court, covering this issue?
`
`Regards
`Michael
`
`Stubbs Alderton & Markiles, LLP
`15260 Ventura Blvd., 20th Floor
`Sherman Oaks, CA 91403
`
`1316 3rd Street Promenade, Suite 107
`Santa Monica, CA 90401
`
`V-card
`
`Bio
`
`Website
`
`Michael A. Sherman
`Business Litigation Group Chair
`masherman@stubbsalderton.com
`
`Voice/Text/Fax: 818.444.4528
`Cell: 818.631.9109
`
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`Case 5:18-md-02834-BLF Document 561-4 Filed 11/01/19 Page 3 of 9
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`Case 5:18-md-02834-BLF Document 561-4 Filed 11/01/19 Page 4 of 9
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`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
`[Additional attorneys listed on signature page]
`
`
`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
`PHILLIP J. HAACK (CSB No. 262060)
`phaack@fenwick.com
`RAVI R. RANGANATH (CSB No. 272981)
`rranganath@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
`
`Attorneys for Amazon.com, Inc. and Amazon
`Web Services, Inc.
`
`
`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
`
`
`AMAZON.COM, INC., et al.,
`
` Plaintiffs,
`v.
`PERSONALWEB TECHNOLOGIES, LLC, et
`al.,
`
`
` Defendants.
`
`Case No.: 5:18-cv-00767-BLF
`JOINT STIPULATION OF NON-
`INFRINGEMENT AND MOTION FOR
`FINAL JUDGMENT
`
`
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`
`Counterclaimants,
`v.
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`
`Counterdefendants.
`
`
`
`
`
`JOINT STIPULATION OF NON-INFRINGEMENT
`AND MOTION FOR FINAL JUDGMENT
`
`
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`
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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 561-4 Filed 11/01/19 Page 5 of 9
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`Based upon the below stipulations, and as a result of the Court’s construction of the disputed
`terms “unauthorized or unlicensed” and “authorization” in the Claim Construction Order (Dkt. 485),
`Plaintiff PersonalWeb Technologies, LLC (“PersonalWeb”) and Defendants Amazon.com, Inc. and
`Amazon Web Services, Inc. (collectively, “Amazon”) move for: (1) entry of 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 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, and ‘420 patent; (2) entry of final declaratory judgment that claim
`preclusion bars 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, 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, 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 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 Court of
`Appeals or the Supreme Court reverses, modifies or vacates the Final Judgment.
`Based on the Court’s construction of the terms “unauthorized or unlicensed” and
`“authorization” in the Claim Construction Order (Dkt. 485), PersonalWeb cannot meet its burden of
`proving infringement. Entering final judgment of non-infringement in favor of Amazon in this case
`for declaratory judgment will allow the parties to forego further litigation in this case (5:18-cv-00767-
`BLF), while preserving PersonalWeb’s right to appeal the Court’s Claim Construction Order (Dkt.
`485). PersonalWeb intends to appeal the Court’s forthcoming entry of a final judgment of non-
`infringement.
`
`STIPULATION
`
`
`
`
`JOINT STIPULATION OF NON-INFRINGEMENT
`AND MOTION FOR FINAL JUDGMENT
`
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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 561-4 Filed 11/01/19 Page 6 of 9
`
`IT IS HEREBY STIPULATED AND AGREED by PersonalWeb and Amazon, subject to the
`approval of the Court, as follows:
`1.
`This is a declaratory judgment action brought by Amazon. Amazon initially filed this
`declaratory judgment action against PersonalWeb on February 5, 2018, and it 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 pending
`counterclaims are for infringement of claims 10 and 11 of the ‘442 patent, claim 20 of the ‘310
`patent, and claims 25, 26, 27, 29, 30, 32, 34, 35, 36, and 166 of the ‘420 patent.
`2.
`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 the following two disputed terms as follows:
`a) Construed the disputed term “unauthorized or unlicensed” in claim 20 of the ’310
`patent as “not compliant with a valid license.” (Dkt. 485 at 5:9-12:3); and
`b) Construed the disputed term “authorization” in claims 25 and 166 of the ’420
`patent as “a valid license”. (Id. at 12:4-13).
`
`
`PersonalWeb contends that had the Court adopted PersonalWeb’s alternate proposed constructions
`for these two disputed terms instead of Amazon’s proposed constructions, PersonalWeb could meet
`its burden of proving infringement against the accused products.
`3.
`Based on the Court’s construction of the terms “unauthorized or unlicensed” and
`“authorization” in the Claim Construction Order (Dkt. 485), and only based on the Court’s
`
`
`
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`JOINT STIPULATION OF NON-INFRINGEMENT
`AND MOTION FOR FINAL JUDGMENT
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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 561-4 Filed 11/01/19 Page 7 of 9
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`construction of these two claim terms, PersonalWeb contends that it cannot meet its burden of
`proving infringement.
`4.
`PersonalWeb contends that: It had argued for constructions of “authorization” either
`standing alone or as part of “unauthorized or unlicensed” as equating to permission. The Court’s
`constructions, even if “valid license” means “valid rights to content,” involves some defining of
`when and under what circumstances rights are valid or not. CloudFront permits and does not permit
`
`according to the parameters set by website operators, and therefore is not involved in defining when
`and under what circumstances permission may be granted.
`5.
`As a result of the Court’s construction of the terms “unauthorized or unlicensed” and
`“authorization” in the Claim Construction Order (Dkt. 485), Amazon and PersonalWeb stipulate to
`entry of 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. Amazon and PersonalWeb further stipulate to entry of Final Declaratory Judgment that
`claim preclusion 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, 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. Amazon and PersonalWeb further stipulate to entry of an order, on terms that
`the Court considers proper, that Amazon’s claim for declaratory judgment of non-infringement of
`the ’791 patent is dismissed without prejudice. Amazon and PersonalWeb agree 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.
`MOTION FOR ENTRY OF ORDER
`Accordingly, based upon the stipulation above, and to conserve judicial resources and to
`
`avoid the time and expense of further discovery and motion practice related to the asserted patents,
`
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`JOINT STIPULATION OF NON-INFRINGEMENT
`AND MOTION FOR FINAL JUDGMENT
`
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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 561-4 Filed 11/01/19 Page 8 of 9
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`Amazon and PersonalWeb move the Court to enter Final Judgment of non-infringement by Amazon
`of the ‘442 patent, ‘310 patent, ‘420 patent, and ‘544 patent, in favor of Amazon.
`
`Upon entry of final judgment, PersonalWeb intends to appeal i) the Court’s forthcoming
`entry of judgment of non-infringement based on this stipulation; and ii) the Court’s construction of
`the terms “unauthorized or unlicensed” and “authorization” in the Claim Construction Order (Dkt.
`485). Additionally, PersonalWeb will continue its appeal of the Court’s entry of summary judgment
`
`(Appeal 19-1918) and this Stipulation and the entry of final judgment of non-infringement are not
`intended to affect the pendency or disposition of said appeal. PersonalWeb contends that reversal,
`modification or vacation of the Court’s construction of the terms “unauthorized or unlicensed” and
`“authorization” in the claim construction order underlying this stipulated judgment of non-
`infringement would vitiate the stipulated judgment of non-infringement and should result in a
`remand for further proceedings consistent with the mandate.
`
`In view of the Court’s claim construction order, 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 as to the asserted patents in favor of Amazon 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 and entry of Final Declaratory Judgment that claim preclusion bars 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, and that the Kessler doctrine bars 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.
`
`The parties further move for an order under Fed. R. Civ. P. 41(a)(2), (c), on terms that the
`Court considers proper, to dismiss without prejudice Amazon’s claim for declaratory judgment of
`non-infringement of the ’791 patent, 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.
`
`
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`JOINT STIPULATION OF NON-INFRINGEMENT
`AND MOTION FOR FINAL JUDGMENT
`
`
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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 561-4 Filed 11/01/19 Page 9 of 9
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`Respectfully submitted,
`
`Dated: November 1, 2019
`
`
`STUBBS, ALDERTON & MARKILES, LLP
`
`
`
`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 PersonalWeb Technologies, LLC
`MACEIKO IP
`
`
`
`By:
`Theodore S. Maceiko (SBN 150211)
`ted@maceikoip.com
`MACEIKO IP
`420 2nd Street
`Manhattan Beach, California 90266
`Telephone: (310) 545-3311
`Facsimile: (310) 545-3344
`
`Attorneys for PersonalWeb Technologies, LLC
`
`
`
`
`
`
`
`FENWICK & WEST LLP
`
`
`
`By:
`J. David Hadden
`Saina S. Shamilov
`Melanie Mayer (admitted pro hac vice)
`Phillip J. Haack
`Ravi R. Ranganath
`Chieh Tung
`
`Attorneys for Amazon.com, Inc. and Amazon Web
`Services, Inc.
`
`Dated: November 1, 2019
`
`
`
`Dated: November 1, 2019
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`JOINT STIPULATION OF NON-INFRINGEMENT
`AND MOTION FOR FINAL JUDGMENT
`
`
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`5
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`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
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