Case 5:18-md-02834-BLF Document 597 Filed 04/20/20 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`IN RE: PERSONALWEB
`TECHNOLOGIES, LLC ET AL., PATENT
`LITIGATION
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`AMAZON.COM, INC., and AMAZON
`WEB SERVICES, INC.,
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`Plaintiffs
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`v.
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`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
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`Defendants,
`PERSONALWEB TECHNOLOGIES, LLC,
`a Texas limited liability company, and
`LEVEL 3 COMMUNICATIONS, LLC, a
`Delaware limited liability company,
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`Plaintiffs,
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`v.
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`TWITCH INTERACTIVE, INC. a Delaware
`corporation,
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`Defendant.
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`Case No. 18-md-02834-BLF
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`ORDER DENYING PERSONALWEB’S
`REQUEST TO DENY OR DEFER
`CONSIDERATION OF MOTION FOR
`ATTORNEYS’ FEES AND BILL OF
`COSTS PENDING RESOLUTION OF
`PERSONALWEB’S APPEALS;
`RESETTING HEARING ON THE
`MOTION TO AUGUST 6, 2020 AT 9:00
`A.M.
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`[Re: ECF 594]
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`Case No.: 5:18-cv-00767-BLF
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`Case No.: 5:18-cv-05619-BLF
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`On April 10, 2020, the parties filed a joint statement regarding PersonalWeb’s request to
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`deny or defer consideration of the motion for attorneys’ fees and bill of costs of Amazon.com, Inc.,
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`Amazon Web Services, Inc., and Twitch Interactive, Inc. (collectively, “Amazon”) at ECF 593,
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`pending resolution of PersonalWeb’s Federal Circuit appeals. Request, ECF 594. The Court set a
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`telephonic case management conference on April 16, 2020 (the “CMC”) and heard the parties’
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`respective positions on the issue. For the reasons stated on the record and discussed below, the
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`Case 5:18-md-02834-BLF Document 597 Filed 04/20/20 Page 2 of 4
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`Court DENIES PersonalWeb’s Request.
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`While the Court recognizes that the determination of the issues on appeal may affect
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`Amazon’s motion for attorneys’ fees, the Court is not persuaded that any of the facts or issues
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`presented in this case warrant a deviation from the Court’s usual course, which is “to consider
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`attorneys’ fees promptly after the merits decision rather than stay a motion for attorneys’ fees until
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`resolution of the appeal.” PersonalWeb Techs., LLC v. EMC Corp., No. 5:13-cv-01358-EJD, 2020
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`WL 1557441, at *1 (N.D. Cal. Apr. 1, 2020) (citation omitted).
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`Courts consider four factors to determine whether to stay awarding attorneys’ fees and costs
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`pending appeal: (1) “whether the stay applicant has made a strong showing that he is likely to
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`succeed on the merits;” (2) “whether the applicant will be irreparably injured absent a stay;” (3)
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`“whether issuance of the stay will substantially injure the other parties interested in the proceeding;”
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`and (4) “where the public interest lies.” Hilton v. Braunskill, 481 U.S. 770, 776 (1987).
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`First, PersonalWeb has failed to make a strong showing that it is likely to succeed in its
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`appeal. PersonalWeb argues that delaying Amazon’s motion in this case is “particularly compelling
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`because of a change in law that occurred after the first summary judgment ruling.” Request at 4
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`(citing Huang v Huawei Technologies Co., Ltd., 787 Fed. Appx. 723 (Fed. Cir. Oct. 9. 2019). The
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`Court is not persuaded. Setting aside the fact that a non-precedential opinion is not a “change in
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`law” as PersonalWeb asserts, the Federal Circuit’s Huang decision has no impact on this Court’s
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`grant of summary judgment based on claim preclusion and the Kessler doctrine. PersonalWeb
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`claims that it is likely to succeed on appeal because in the Huang decision, the Federal Circuit
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`“explicitly used the infringement contention rather than the complaint to determine the subject
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`matter of the prior action for claim preclusion purposes,” while this Court “primarily determined
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`the scope of the Texas action based on the allegations in the complaint.” Request at 4. But
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`PersonalWeb fails to note that nowhere in the Huang decision did the Federal Circuit hold or even
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`suggest that looking to the complaint allegations in the preclusion analysis would be improper. See
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`Huang, 787 Fed. Appx. at 726. And more importantly, in this case, the Court did consider the
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`infringement contentions in the Texas case in deciding the claim preclusion issue:
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`Second, PersonalWeb argues that the scope of the Texas Action
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`Case 5:18-md-02834-BLF Document 597 Filed 04/20/20 Page 3 of 4
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`should be limited to what was included in the infringement
`contentions, and not the complaint. Trans., ECF No. 376 at 44-45.
`Even if the Court agreed with PersonalWeb, the Texas infringement
`contentions
`included
`the HTTP GET command, and
`thus
`PersonalWeb’s argument fails on its own terms.
`…
`In sum, the Court finds that both the complaint and the infringement
`contentions in the Texas Action indisputably support the Court’s
`conclusion that the Texas Action asserted infringement against all of
`S3 and was not limited only to MPU.
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`In re PersonalWeb Techs., LLC, et al. Patent Litig., No. 18-MD-02834-BLF, 2019 WL 1455332, at
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`*11-*12 (N.D. Cal. Apr. 2, 2019). In sum, the Court is not persuaded that the Huang decision makes
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`PersonalWeb’s appeal likely to succeed. Accordingly, the first factor weighs against a stay.
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`Second, PersonalWeb does not explain how it will be irreparably harmed absent a stay.
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`Instead, PersonalWeb focuses on how everyone—the Court, PersonalWeb, and Amazon—will be
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`spending “substantial time, effort, and cost (in the case of the parties) briefing, arguing, hearing, and
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`deciding these issues” and those efforts “will be wasted should the Federal Circuit rule in favor of
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`one or both of PersonalWeb’s pending appeals.” Request at 2. These generic waste-of-time-and-
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`resources arguments fail to establish irreparable harm. “For instance, [PersonalWeb has] neither
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`argued that [it has] limited financial resources such that ligating attorneys’ fees would result in
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`bankruptcy nor that the costs of litigation would be ‘overwhelming.’” PersonalWeb Techs., LLC v.
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`EMC Corp., 2020 WL 1557441, at *2 (citing Glauser v. GroupMe, Inc., 2015 WL 2157342, at *2–
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`*3 (N.D. Cal. May 7, 2015)). Thus, the second factor supports Amazon and denial of a stay.
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`Third, there is no evidence that other parties will be injured by a stay. That said, Amazon
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`claims that it may be prejudiced by a stay because by the time both of the merits appeals conclude,
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`Amazon may be unable to recover fees – if it is awarded any. Request at 8. The Court has been
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`presented with no evidence on the status of PersonalWeb’s financial health and therefore cannot
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`determine whether Amazon would be injured by a stay. Thus, the Court finds that this factor is
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`neutral.
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`Fourth, public policy considerations weigh in favor of denying a stay. PersonalWeb has
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`made no showing that the public interest would be served by a stay – only that the Court’s
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`“potentially reduced resources” due to COVID-19 health concerns supports a stay. See Request at
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`2. While COVID-19 has certainly impacted the courts’ operations across the country, this Court
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`Case 5:18-md-02834-BLF Document 597 Filed 04/20/20 Page 4 of 4
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`continues to resolve substantive motions. See General Order 72 (“All civil matters will be decided
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`on the papers, or if the assigned judge believes a hearing is necessary, the hearing will be by
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`telephone or videoconference.”). Further, “judicial economy is better served by determining
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`attorneys’ fees promptly while the details of the proceedings are still fresh and when the Federal
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`Circuit has the opportunity to consider any appeal of the calculation at the same time as the appeal
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`on the merits.” Spitz Techs. Corp. v. Nobel Biocare USA LLC, No. SACV1700660JVSJCGX, 2018
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`WL 6016149, at *2 (C.D. Cal. Aug. 13, 2018), aff’d, 773 F. App’x 625 (Fed. Cir. 2019); see also
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`Fed. R. Civ. P. 54(d) advisory committee’s notes to 1993 amendment. Moreover, public interest
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`will be served by holding parties to their stipulation. See PersonalWeb Techs., LLC v. EMC Corp.,
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`2020 WL 1557441, at *2. Here, the parties stipulated to a briefing schedule on Amazon’s motion
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`for attorneys’ fees. See ECF 591. Then, rather than following the stipulated briefing schedule, and
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`weeks after Amazon filed its motion, PersonalWeb requested a stay pending appeal. See Request.
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`In sum, the fourth factor supports denying a stay.
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`In conclusion, because three of the four Hilton factors weigh in favor of denying a stay, the
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`Court DENIES PersonalWeb’s Request to deny or defer consideration of the motion for attorneys’
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`fees and bill of costs.
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`At the CMC, PersonalWeb requested, and Amazon did not object, to reset the hearing from
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`June 6, 2020 at 9:00 a.m. to a later date (depending on the Court’s availability) to allow for a longer
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`briefing period. Accordingly, the Court hereby RESETS the hearing on Amazon’s Motion at ECF
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`593 to August 6, 2020 at 9:00 a.m. The parties are to meet, confer, and submit a stipulation as to
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`the briefing schedule in accordance with this Court’s Standing Order Re Civil Cases.
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`IT IS SO ORDERED.
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`Dated: April 20, 2020
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`______________________________________
`BETH LABSON FREEMAN
`United States District Judge
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