Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 1 of 10
`
`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 PERSONAL WEB TECHNOLOGIES,
`LLC, ET AL., PATENT LITIGATION
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`Plaintiffs,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC,
`and LEVEL 3 COMMUNICATIONS, LLC,
`Defendants.
`
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`DECLARATION OF SANDEEP SETH IN
`SUPPORT OF PERSONALWEB
`TECHNOLOGIES, LLC’S OPPOSITION
`TO MOTION OF AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., AND
`TWITCH INTERACTIVE, INC. FOR
`ATTORNEY FEES AND COSTS
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`Counterclaimants,
`
`v.
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`Counterdefendants.
`
`Date: August 6, 2020
`Time:
`9:00 a.m.
`Courtroom 3, 5th Floor
`Dept.:
`Judge: Hon. Beth Labson Freeman
`
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 2 of 10
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`PERSONALWEB TECHNOLOGIES, LLC, a
`Texas limited liability company, and
`LEVEL 3 COMMUNICATIONS, LLC, a
`Delaware limited liability company
`Plaintiffs,
`
`v.
`TWITCH INTERACTIVE, INC. a Delaware
`corporation,
`Defendant.
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`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 3 of 10
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`I, Sandeep Seth, declare as follows:
`1.
`I am over the age of 18 and competent to make this declaration. I am Of Counsel at
`Stubbs Alderton & Markiles, LLP in connection with the firm’s representation of Plaintiff
`PersonalWeb Technologies, LLC (“PersonalWeb”). The facts herein are, unless otherwise stated,
`based upon personal knowledge, and if called upon to do so, I could, and would testify to their truth
`under oath. I submit this declaration in support of PersonalWeb’s Opposition to Amazon Web
`Services, Inc., Amazon.com, Inc. and Twitch Interactive, Inc.’s Motion for Attorney Fees and Costs.
`2.
`I have a degree in Aerospace Engineering from University of Texas, Austin, and a Juris
`Doctorate from University of Houston. I am a registered patent attorney with the USPTO and have
`been practicing patent litigation for nearly 25 years. In addition to passing the patent bar exam, I have
`passed the bar exams of the states of Texas, Colorado and California, and am registered to practice
`before the Supreme Courts of those states, as well several federal district courts, the Court of Appeals
`for the Federal Circuit, and the United States Supreme Court. After starting my practice as a patent
`prosecution and litigation associate for a patent litigation boutique in Denver, Colorado, most of my
`career has been spent in my own practice either as a solo or partner in my own firm. I have also been
`an in-house patent litigation and licensing counsel for nearly seven years for an injection molding
`company based in San Diego. I am currently working on several patent litigation matters in California
`and Delaware. My cases have spanned mechanical patents, computer networks, electronic signaling,
`chip technology, television transmission, satellite systems, video games and devices, electronic
`payments, and word processing improvements, among others.
`3.
`From late 2008 to early 2015, I practiced at Susman Godfrey, LLP as Of Counsel to
`exclusively work on some of their patent infringement cases assigned to me for my assistance in
`working particularly on infringement and validity issues. During that time, I worked on a plethora of
`internet and cloud related cases, including cases against Yahoo!, Google, two different cases against
`Microsoft, and others. During my tenure there, I estimate having helped secure nearly $100 million in
`settlements or offers of settlement in cases on which I worked on the infringement and validity side.
`4.
`The focus of my work at Susman Godfrey involved investigating potential infringement
`and developing infringement contentions. During that time, I began working with vendors to help
`
`1
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 4 of 10
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`centralize this process, and I continued doing so after I left Susman, starting a company called PatBak
`comprised of a team of engineers whom I hired and trained to work under my direction to help obtain
`infringement information and to assist in infringement charting.
`5.
`While at Susman Godfrey, I represented PersonalWeb between 2012-2014 in a case
`against Microsoft, Case No. 6-12-cv-00663 (E.D. Tex), which involved some of the True Name
`patents asserted by PersonalWeb in this case. The accused technology in the Microsoft case involved
`cloud storage and focused on improvements in bandwidth reduction on uploads as well as controlling
`the storage of duplicate content. I worked up the infringement read in the Microsoft case on
`PersonalWeb’s behalf and became knowledgeable about the True Name patent portfolio. That lawsuit
`was successfully concluded with Microsoft taking a substantial license under the True Name portfolio.
`After I left Susman Godfrey in 2015, I continued working on other PersonalWeb matters.
`6.
`In the spring of 2017, I was retained by PersonalWeb to commence the pre-litigation
`investigation that ultimately resulted in the filing of the lawsuits in this MDL action. I was
`substantially involved in the months-long pre-filing investigation of this suit, and in that capacity, I
`undertook to first understand what method of practice the website operators believed to be infringing
`were using. I came to understand that there were two related techniques of cache control that were
`believed to be infringing. The primary method used “max-age” directives in “cache-control” headers
`to specify the amount of time a browser was permitted to cache content, and MD5 ETags to decide
`whether or not the permitted time would be extended. The secondary cache control technique used
`content-based fingerprints appended to the filenames of asset files whose filenames were included in
`the content of the index files.
`7.
`In the summer of 2017, I spent considerable time working with PatBak to investigate
`and chart the believed infringement of certain True Name patents. With the assistance of PatBak, I
`investigated and obtained an understanding of webservers, intermediate cache servers, and browser
`caches as well as certain required and optional aspects the HTTP 1.1 protocol. I also investigated and
`obtained an understanding of the operation of Ruby On Rails (“RoR”) with regard to the generation
`of fingerprints and ETags. Along with PatBak, I also studied how ETag headers and max-age values
`could be added to basic HTTP messages to implement advanced methods of cache control.
`
`2
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 5 of 10
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`I.
`
`In approximately mid-2017 I began working with another patent attorney, Dr. Brian
`8.
`Siritzky (a Ph.D. expert in distributive computing and the internet) who wrote the True Name patents
`specification and claims, in pursuing PersonalWeb’s pre-filing investigation efforts. I also began
`working with others on the team assembled by Stubbs, Alderton and Markiles, LLP, including Michael
`Sherman and Ted Macieko. We also enlisted the assistance of a technical expert, Dr. Samuel Russ, a
`computer and electronical engineering professor at the University of South Alabama with significant
`education and experience in the field of computer networking and content delivery over the internet
`and other networks. And in late 2017, Wesley W. Monroe joined the team as well.
`9.
`I personally obtained the following factual understanding based upon my review:
`In the baseline infringement (for example via S3):
`(a) Certain website operators were using two optional cache control features of the HTTP 1.1
`protocol in connection with their service of certain webpage files;
`(b) These two features, which were added to an HTTP 200 response to a GET request for a
`webpage file were: (1) an ETag header with a content based-ETag value; and (2) a cache-
`control header with a “max-age” directive;
`(c) By adding these two headers (neither of which were included in HTTP version 1.0 or
`required by HTTP version 1.1) to the HTTP 200 message, these website operators were: (1)
`setting an original time period the file’s content was permitted to be cached/used; and (2)
`after that original time period had expired, requiring the recipient to check whether it was
`still permitted to use that cached content by sending a conditional HTTP GET request with
`the ETag in an “If-None-Match” header;
`(d) The website operators extended the permitted time for the content to be used after the
`original time period had expired (but the file’s content had not changed) by comparing the
`received ETag with its current ETag for that file and, if they matched, sending an HTTP 304
`response;
`(e) The website operators declined to extend the permitted time for the cached content to be used
`after its original permitted time period had expired and the file’s content had changed by
`comparing the received ETag with its current ETag for that file and, if they did not match,
`
`3
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 6 of 10
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`II.
`
`sending the new content in a new HTTP 200 response with a new max-age and ETag header;
`and
`(f) The website operators authorized the cache to access the new content instead of the old
`content for a new time period set by the new max-age value in the new HTTP 200 response.
`In the ‘544 infringement (for example via RoR):
`The website operators, by using a fingerprint in the filename, performed cache control by (1)
`providing a new index file to the cache when the content of one or more asset file named in
`the index file had changed and (2) informing the cache exactly which previously cached asset
`file had new content that needed to be obtained via the fingerprint.
`10.
`After obtaining a factual understanding of the transactions involved, the team and I also
`sought to identify claims that were the most distinguishable from the prior art because if any case was
`to be brought, we did not wish to rely upon any presumption of validity alone, but rather to only assert
`claims that could survive an invalidity challenge. As part of this review, Dr. Russ, Dr. Siritzky and I
`analyzed prior IPR decisions as well as undertook our own independent review of the prior art that
`had been used to invalidate some of the other claims from True Name patents.
`11.
`I also worked with Dr. Russ and Dr. Siritzky on the infringement investigation and the
`infringement charts that ultimately reflected my belief that each element of certain claims of the True
`Name patents were met by the techniques described above.
`12.
`Ultimately, that study resulted in the opinion of Dr. Russ (which I and Dr. Siritzky
`shared), that the prior art did not disclose, teach, or render obvious certain claims of the True Name
`patents, which included all of the claims that ultimately became the asserted claims in this MDL action.
`13.
`Dr. Russ and I further analyzed and considered prior district court claim constructions
`issued by U.S. District Court Judge Leonard Davis and U.S. District Court Judge Rodney Gilstrap in
`prior PersonalWeb cases alleging infringement of certain claims of the True Name patents. After
`extensively reviewing both, we formed a good faith belief in the infringement conclusion based upon
`the factual grounds and analysis set forth in paragraphs 11 through 29 of the Declaration of Dr. Russ
`accompanying PersonalWeb’s opposition to Amazon’s Motion and summarized herein.
`14.
`Of particular importance to me at the time was that the “max-age” cache control
`
`4
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 7 of 10
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`directive set an original time the content recipient was permitted/authorized/licensed to cache and use
`the content, after which, the access rights to the content had to be revalidated by the recipient sending
`a conditional HTTP GET request with the MD5 ETag value (and If-None-Match header), and
`receiving an HTTP 304 response extending the permitted time.
`15.
`I also formed the belief that the accused method was deliberately being used because
`(a) the HTTP 1.1 protocol did not require the use of any max-age directive in cache-control headers
`in sending an HTTP 200 message; (b) the HTTP 1.1 protocol did not require the use of any ETag
`header in sending an HTTP 200 message; (c) the HTTP 1.1 protocol did not require the use of content-
`based identifiers as an ETag, so again this was by deliberate choice; and (d), with regard to the ‘544
`patent claims, the HTTP 1.1 protocol likewise did not require a content-based fingerprint to be
`appended to the filename of any file; this was also being used for cache-control by choice.
`16. We had also formed the good faith belief that this programmed cache-control method
`fell squarely within the claim limitations requiring a determination of whether a data item was
`authorized/unauthorized or licensed/unlicensed in light of the prior claim construction orders of Judge
`Davis and Judge Gilstrap. In the prior Amazon case, to which the Judge Davis opinion applied, I noted
`that neither Amazon nor any party had disputed the term authorization/authorized and there was no
`dispute whether its ordinary meaning should be used. With regard to the dispute over the term
`licensed/unlicensed, I noted Judge Davis observed that in context of the True Name patents, if
`anything, the term licensed/unlicensed was recognized by Amazon to be used synonymously with term
`authorized/unauthorized:
`Defendants argue PersonalWeb’s construction rewrites the Claims to require
`only general authorization to access the entire system, rather than
`authorization to access specific files. Response at 35. Defendants contend all
`authorization is done on a content-specific basis. Id. For example, Claim 1 of
`the ‘442 Patent recites that “a copy of the requested file is only provided to
`licensed parties.” ‘442 Patent, Claim 1, at 39:52–53. Similarly, Claim 3
`references an “unlicensed copy of the data file.” ‘442 Patent, Claim 3, at 39:60.
`Defendants argue these references to the data file indicate authorization is
`done on a file-by-file basis. Response at 36.
`Judge Davis Claim Construction Order (Dkt. 412-7, at 25.)
`
`I also noted Judge Davis did not limit the term licensing to any specified form an in
`17.
`fact rejected Amazon’s proposed limitations regarding the term “licensed,” holding:
`
`5
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 8 of 10
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`Further, there is no language in the specification mandating a particular level of
`specificity of license. There is also no limiting language about the nature in
`which a license must be issued. Accordingly, while a party must have a license
`to access a particular file, there is no restriction on precisely how that license
`grants access to the file
`Id. at 25-26.
`
`This overall view was consistent with my understanding of the True Name patents’
`18.
`specification, which left open what criteria one wished to apply in determining whether access was
`permitted authorized/licensed as long as a content-based identifier was used to determine whether the
`computer was permitted/authorized/licensed to have access to a given file.
`19.
`I also read Judge Gilstrap’s claim construction and, in particular, to his construction of
`“unauthorized or unlicensed.” I noted that Judge Gilstrap construed “licensed” to mean “valid rights
`to content” and “unlicensed” as “invalid rights to content.” (Dkt. 452-2 at 26, 37.) Also I noted that
`Judge Gilstrap found no prosecution history estoppel applied and also that “Defendants had not
`adequately justified constraining the scope to access rights as opposed to other types of rights, such as
`rights to use or rights to possess.” Id. I also noted that Judge Gilstrap construed “authorization” as a
`“valid license” and “authorized” as “compliant with a valid license.” I formed a good faith belief that
`even under this construction the claims were met based upon my factual understanding of the accused
`techniques because the recipient was given a license to use the content identified by the MD5 ETag
`for the time specified by the max-age value, therefore providing the recipient both a temporal term
`license term and licensed content. Moreover, the receipt of the 304 response extended the temporal
`term of the license whereas the 200 response terminated the license to the previously cached content
`and granted a new license for the new content sent therein identified by the new MD5 ETag and for
`the time period specified by the max-age value in the 200 response.
`20.
`I noted that Judge Gilstrap had reviewed some passages from the prosecution history
`regarding claims of the ‘442 patent requiring “a copy of the file is not provided without authorization”
`and also claims to the ‘420 patent where “a copy of the requested file is provided only to licensed
`parties” but the order did not state why it was quoting these passages or that it was applying any form
`of prosecution history estoppel.
`21.
`I also understood that the use of the MD5 value of the file’s content as its ETag value
`
`6
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 9 of 10
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`allowed the website operator to know whether two pieces of content were identical, regardless of
`whether any metadata or any other aspect of the file had changed, thereby allowing the website
`operator to know whether a copy of a given file was present in any cache anywhere in the world from
`where it received the conditional GET request. The use of a content-based identifier ETag would
`allow one to know whether the content of the file was the same as the content at the server and was
`therefore a copy. Dr. Russ confirmed that the use of an MD5 ETag allowed confirmation that the file
`content at the browser was a copy of the file content at the server, and vice versa, so that an informed
`decision could be made whether or not to extend the browser’s right to cache and use it to or terminate
`that right because it was not a copy of the file at the server (and therefore the latest content the website
`operator wished be licensed). I formed the reasonable belief that this met the claim limitations that
`require determining if a copy is present.
`22.
`In the pre-suit investigation, with regard to which website operators were using these
`techniques, I requested and had Dr. Russ and PatBak conduct a heuristic analysis to validate whether
`a website used RoR, S3, or both in which they looked at several markers in webpages archived on
`archive.org indicative, but not conclusive, of the use of RoR or S3 in serving that webpage at the time
`it was archived. They also consulted public websites that analyze websites to determine what software
`was used to create the website.
`23.
`If a combination of the markers met a certain threshold, they determined it was very
`likely that website was RoR or S3, respectively. All the defendants sued in January 2018 met the
`heuristics for determining if the site used RoR and the heuristics for determining if the site used S3.
`I understand this heuristic analysis used industry accepted techniques to determine the likelihood
`that a particular website used RoR and/or served webpage assets with Amazon S3 and we only found
`websites to be likely to be infringing if these industry accepted techniques showed a very high
`likelihood that the website used RoR or Amazon S3. I relied upon this analysis for confirmation of
`which website operators were using the accused techniques.
`24.
`Prefiling as to each defendant, I specifically confirmed that Dr. Russ and PatBak had
`performed the heuristic analysis as to each of the website operators proposed as a defendant, and I was
`satisfied that there was factual basis of infringement for each of the original set of defendants to
`
`7
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 608-15 Filed 06/18/20 Page 10 of 10
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`support my legal conclusion of infringement as to that defendant.
`25.
`In sum, in light of the claim terms, the prosecution history that I had reviewed, the
`Judge Davis claim construction opinion, and the Judge Gilstrap claim construction opinion, I formed
`a good faith belief that there was infringement of the claims I was considering.
`I declare under penalty of perjury under the laws of the United States of America that the
`foregoing is true and correct.
`
`Executed on June 18, 2020 in Houston, Texas.
`
`_______________
`Sandeep Seth
`
`8
`DECLARATION OF SANDEEP SETH ISO PWEB’S OPPOSITION TO MOTION OF
`AMAZON AND TWITCH INTERACTIVE, INC. FOR ATTORNEY FEES AND COSTS
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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