Case 5:18-md-02834-BLF Document 608-16 Filed 06/18/20 Page 1 of 12
`
`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 MICHAEL A.
`SHERMAN IN SUPPORT OF
`PERSONALWEB TECHNOLOGIES,
`LLC’S OPPOSITION TO MOTION OF
`AMAZON WEB SERVICES, INC.,
`AMAZON.COM, 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 MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 2 of 12
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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 MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 3 of 12
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`I, Michael A. Sherman, declare as follows:
`1.
`I am a member of the bar of the State of California and am admitted to practice before
`the United States District Court for the Northern District of California. I am a partner at Stubbs
`Alderton & Markiles, LLP, counsel for Plaintiffs 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 Motion of Amazon Web Services, Inc., Amazon.com,
`Inc. and Twitch Interactive, Inc. for Attorney Fees and Costs.
`2.
`In Spring, 2017 my firm and I were engaged to provide legal services to
`PersonalWeb, and at that time I began a many months-long process of communicating with Kevin
`Bermeister and expert patent legal counsel including Brian Siritzky, PhD, lawyers Sandeep Seth,
`Lawrence Hadley, Ted Maceiko and Wesley Monroe, and technical consultants/engineers working
`for Patbak and Dr. Samuel Russ, at various times during the time period Spring 2017 through early
`January, 2018, prior to the initial filings of patent infringement complaints against website operators
`involving the True Name patents. Initially, my role was to coordinate and oversee this effort, with
`input and guidance (as needed) every step of the way from one or more of these individuals as I
`deemed appropriate in any particular instance. By separate declarations Messrs. Bermeister,
`Siritzky, Seth and Monroe provide certain details over which they possess greater personal
`knowledge; accordingly, I set forth below in paragraphs 4-7 some of the organizational aspects
`surrounding the review and investigative aspects, pre-filing not covered in those other declarations.
`3.
`As stated, I was coordinating the various activities in the pre-filing review and
`investigative time frame, and I oversaw those activities and regularly communicated with both Mr.
`Bermeister and the various professionals, and I was generally aware of everyone’s activities. I have
`been in the practice of law 40 years and over the course of my career I have regularly represented
`clients in a diverse array of complex business litigation matters and have tried many cases. A true
`and correct copy of my bio drawn from my firm’s website is attached hereto as Exhibit 1.
`4.
`During the foregoing period I consulted with Lawrence Hadley, Esq. primarily
`regarding procedural aspects of the Texas action and other historical matters involved in the True
`
`1
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 4 of 12
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`Name patents where Mr. Hadley had personal knowledge; in addition to Mr. Hadley and his firm
`McKool Smith (as well as a predecessor firm Hennigan Dorman, LLP) having been patent litigation
`counsel involving the True Name patents, Mr. Hadley and his law firm were counsel for
`PersonalWeb in the Texas action and other patent infringement actions. More specifically, pre-filing
`I consulted with Mr. Hadley on the implications of the Texas action, particularly on claim preclusion
`issues. I estimate that between consultations I had with Mr. Hadley on these topics and those that
`others on my team had and reported back to me on (those individuals primarily Messrs. Monroe and
`Maceiko at my direction) I knew that Mr. Hadley had expended at least approximately 25 hours on
`these issues with me and other team members, pre-filing. In late spring/early summer, 2017 I also
`hired as co-counsel Ted Maceiko, Esq. to provide additional expertise and assistance on patent
`litigation matters. At the time of his hiring, Mr. Maceiko was a principal in his own firm; prior, he
`had been a partner at Jones Day, and his practice had for many years emphasized intellectual
`property litigation generally and patent litigation, specifically. During the investigative, pre-filing
`phase, alone, I know that Mr. Maceiko expended 350 hours on investigation, diligence, analysis,
`preparation and review of complaints.
`5.
`One of my duties in coordinating all attorneys and technical expert/providers was to
`regularly stay abreast of the actual time expended by each of them. During the pre-filing time period
`(January 8, 2018) the time spent by technical experts/consultants, co-counsel, and professionals
`working under my direction, exceeded 3,500 hours, in the aggregate.
`6.
`The potential applicability of various preclusion principles was an important part of
`our pre-filing activities. In late 2017, I had become aware of attorney Rod Dorman’s (Mr. Hadley’s
`law partner) written opinion of 2014 shortly before dismissal of the Texas Action, concerning the
`inapplicability of certain preclusion doctrines (Mr. Dorman’s written opinion is specifically
`referenced in paragraph 4 of Mr. Bermeister’s declaration). In addition to that written opinion,
`PersonalWeb pursued obtaining additional opinions on the general subject, ie., whether principles of
`res judicata, collateral estoppel or the Kessler doctrine prevented PersonalWeb from asserting patent
`infringement for cache control-related infringement against website operators in light of dismissal of
`the Texas action. I actively participated in the activities of both Mr. Monroe and Mr. Maceiko in the
`
`2
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 5 of 12
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`analysis and opinion formulation that culminated, pre-filing in a memo that Mr. Monroe principally
`authored, dated January 3, 2018 – a set of conclusions that I shared with Mr. Bermeister.
`7.
`Prior to the filing of any of the complaints that were filed in January 2018, I was
`familiar with the content of Dr. Russ’ written opinions shared with us between January 3 and 19,
`2018, and independent opinions formulated by and arrived at by Dr. Siritzky and Mr. Seth—all of
`which were shared with Mr. Bermeister. Our obtaining each of those opinions regarding each of the
`website operators sued as well as the opinions referenced in paragraph 4 were pre-conditions to
`PersonalWeb’s filing of the subject complaints in January 2018.
`8.
`Shortly following the filing of these initial complaints, PersonalWeb and our
`litigation team set about to centralize this litigation in one forum, to attempt to promote efficiency
`through centralization. Our papers filed before the panel on multidistrict were largely completed
`before its filing on February 27, 2018, which was also the first time I spoke with counsel for
`Amazon, David Hadden. In my first conversation with Mr. Hadden, I called to advise him of our
`intent to centralize this litigation and to solicit Amazon’s agreement to same. Neither during that
`call nor at any time prior to the hearing before the Judicial Panel on Multi-District Litigation did
`Amazon indicate a willingness to centralize these cases, and in fact Amazon actively opposed
`PersonalWeb’s efforts.
`9.
`The Motion repeatedly references a PersonalWeb litigation strategy to “extract” and
`“coerce” “nuisance-value” settlements. (Opening Br. at 1, 2, 3, 10.) These are false statements. As
`the leader of our litigation team, I know that at all times I (a) opposed any strategy to maintain suit
`against website operator defendants who we did not believe were using content based ETags and
`cache control headers specifying max-age values to control and limit the use of cached content by a
`web browser in manners opined on by our experts to infringe, and (b) never agreed to settle – or
`proposed to resolve or settle – any claims against any website operator defendants for nuisance
`value/cost-of-defense amounts, and at all times I made it clear in our dealings with counsel for
`website operator defendants that PersonalWeb would not proceed in that fashion, but was open to
`entertaining a reasonable resolution that reflected a consideration of genuine risk of liability and
`damages, adjusted appropriately for an earlier resolution.
`
`3
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 6 of 12
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`At all times, pre and post filing, in consultation with Mr. Bermeister, he and I adopted
`10.
`a strict policy of not under any circumstances ever permitting PersonalWeb or any of its
`representatives to engage in behavior that constituted pursuing “cost of defense” or “nuisance-style”
`settlements. Both prefiling and shortly after filing I reached out to an economic consulting firm that
`had familiarity with the True Name patents through their economic consulting efforts in other True
`Name patent litigation (Berkeley Research Group), and as a result of communications with them and
`others I became comfortable with any potential, hypothetical settlement number needing to replicate
`what would otherwise have been an arms-length licensing fee. Both Mr. Bermeister and I discussed
`and agreed, and I communicated to all team members, that PersonalWeb would only entertain
`settlement proposals, if they materialized, that were based on actual metrics and economics
`associated with the alleged infringing activity, e.g., PersonalWeb would require (if still in existence)
`transaction logs demonstrating the number of infringing ETags and/or fingerprints sent, would
`require presentation by the infringing party of economics of the enterprise that explained the use of
`infringing ETags and/or fingerprints in that enterprise’s business, and would otherwise require
`financial information in order to then negotiate an appropriate standard license fee in a range that
`could vary from 0.5% to 1% of website generated revenues depending upon how directly those
`revenues were tied to the website.
`11. Within weeks of the January 8, 2018 filing, we were contacted by representatives of
`Airbnb, a company that had been named in one of the initially filed complaints. The representative
`told me that Airbnb would potentially be interested in discussing an early resolution. In the late
`January/early February 2018 time frame I spoke (along with other colleagues) with one or more
`Airbnb representatives. In response to statements by Airbnb representatives of a potential interest in
`early resolution, I explained on that call that in connection with further discussions, PersonalWeb
`would be willing to enter into a non-disclosure agreement, so that we could obtain and evaluate
`transaction information during the relevant period on ETag usage in the delivery of webpage assets
`as well as other information demonstrating the relative value of ETag usage to Airbnb’s web
`presence. While the Airbnb representatives did not categorically state that they would not entertain
`entry into a NDA, they made it clear during this call that they were only interested in entertaining a
`
`4
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 7 of 12
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`cost of defense-type settlement, to which I expressly demurred and said words to the effect that if
`Airbnb wished to entertain some market-based license with an appropriate discount, to let us know.
`No representative of Airbnb ever got back to us on that issue, and the issue dropped.
`12.
`Again, in March, 2019, PersonalWeb, through our offices, was approached by Brent
`Ray of Kirkland & Ellis, counsel for named defendants Strava, Inc., Shopify (USA) Inc. and
`Shopify, Inc., Upwork Global, Inc., Dollar Shave Club, Inc., Valassis Communications, Inc., PayPal,
`Inc., and RetailMeNot, Inc. with an offer to discuss the possibility of settlement. In a telephone
`conversation I had with him and subsequent e-mails on the topic, Mr. Ray suggested there was a
`small window of opportunity closing because of an intention on behalf of his clients to proceed with
`an IPR, to which I indicated a willingness on PersonalWeb’s part to discuss settlement if first we
`reached agreement on an NDA with each of his clients, by which PersonalWeb would be provided
`(1) revenue and web traffic information during the alleged periods of infringement, (2) information
`regarding how the website conducted its business from a website operation presence, and (3) and
`further detailed information tailored to each potential defendant/named defendant relating to
`revenues, costs of doing business, and profitability. Mr. Ray told me that his clients’ only interest at
`that time was, or words to the effect of seeing if PersonalWeb was interested in resolving its disputes
`with these defendants for very small/nominal amounts. My response was clearly and strongly
`negative.
`PersonalWeb never maintained any actions in this MDL proceeding if it became
`13.
`apparent that, based on our and our experts’ further investigation, or based on non-public
`information provided to us by a defendant, that the infringement believed to have taken place was
`either somehow incorrect or untenable, or in some instances, that the successor of the sued entity did
`not acquire the website that infringed, or the infringing entity was dissolved. I cover these points
`below in paragraphs 14 through 23.
`14.
`PersonalWeb received seven letters early in the litigation on behalf of defendants
`Lithium Technologies, Inc., Optimizely, Inc., HootSuite, Inc., Popsugar, Inc., StumbleUpon, Inc,
`Roblox Corp., and Curebit, Inc. providing factual details and demanding dismissal. Never wanting to
`
`5
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 8 of 12
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`maintain a case that lacked merit, my team and I immediately investigated the allegations in each
`letter and re-investigated the basis for infringement claims.
`15.
`Specifically, I received a letter form Curebit’s counsel, Ryan Tyz on February 23,
`2018 demanding the case be dismissed because “the claims of this suit were previously litigated and
`dismissed with prejudice” and suggesting that I may “have neglected to confer with prior counsel at
`McKool Smith about the prior litigation against the dismissal of Amazon, before filing this case” and
`threatening to seek fees under Octane. Attached hereto as Exhibit 2 is a true and correct copy of this
`letter. On February 28, 2018, I responded by informing Mr. Tyz that I had extensively conferred
`with prior counsel regarding the Texas Action and its dismissal, and that I would further respond to
`the allegations in Mr. Tyz’s letter, which I did on March 6, 2018. Therein, I set forth in detail the
`factual and legal reasons why PersonalWeb determined claim preclusion did not apply to this case.
`Attached hereto as Exhibit 3 are true and correct copies of both of the letters I sent to Mr. Tyz. I
`never received a reply from Mr. Tyz or anyone else on behalf of Curebit.
`16.
`Similarly, attorney Ryan Hubbard sent letters seeking dismissal in February and
`March 2018 regarding the complaints filed against his clients, defendants Lithium, Optimizely,
`Hootsuite, Roblox, Popsugar, and StumbleUpon. Attached hereto as Exhibit 4 are true and correct
`copies of these letters. In these letters, Mr. Hubbard did not deny that the accused systems for each
`defendant used content-based ETag headers or fingerprints in URIs, but did dispute that their
`websites were generated using the Ruby on Rails architecture. In response, I had my team re-
`investigate the basis for each complaint. We determined that PersonalWeb could not verify that these
`defendants generated their websites using Ruby on Rails, even though we still believed that the
`defendants likely used content-based ETags and some appeared to use fingerprints in URIs
`generated without using Ruby on Rails. However, to avoid even the possibility that we were
`maintaining actions where we could not fully verify all of the factual basis of the infringement
`allegations, I promptly directed my team to dismiss all five cases (Lithium: March 6, 2018 (5:18-cv-
`164-BLF, Dkt. 17), Optimizely: March 12, 2018 (5:18-cv-167-BLF, Dkt. 18), Hootsuite: March 12,
`2018 (4:18-cv-00048-QLM (E.D. Tex.), Dkt. 7), Popsugar.com: April 9, 2018 (5:18-cv-158-BLF,
`Dkt. 27), Stumbleupon: April 25, 2018 (5:18-cv-174-BLF, Dkt. 31).)
`
`6
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 9 of 12
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`In the same time period, I also had my team re-investigate the basis for each
`17.
`complaint against website operator defendants for which we did not receive a similar letter from
`counsel. This re-investigation determined that, like the defendants discussed in the preceding
`paragraph, PersonalWeb could not verify that Ziff Davis generated the pcmag.com website using
`Ruby on Rails, even though we still believed that Ziff Davis likely used content-based ETags. Again,
`to avoid even the possibility that we were maintaining actions where we could not fully verify all of
`the factual basis of the infringement allegations, and without a request by Ziff Davis, I promptly
`directed my team to dismiss the Ziff Davis case. (April 5, 2018 (1:18-cv-224-UA (S.D.N.Y.), Dkt.
`21).)
`
`Thereafter, Wesley A. Monroe undertook a further infringement analysis using a
`18.
`Python computer program in which he subsequently determined that Optimizely, Hootsuite,
`Popsugar, and Ziff Davis did serve webpage asset files with content-based ETags, and that
`Optimizely and Hootsuite served webpage asset files with fingerprints in URIs generated by an
`architecture other than Ruby on Rails. Based on these results, PersonalWeb filed new complaints
`against these website operators, without the allegation that Ruby on Rails was the architecture used
`to generate fingerprints in URIs.
`19.
`PersonalWeb never ignored any demand for dismissal or complaining letter. At the
`September 20, 2018 case management conference, Michael Berta, counsel for defendant Heroku,
`threatened to file a “Rule 11 motion to dismiss” in response to PersonalWeb’s complaint against
`Heroku, claiming “there’s literally not one fact that’s pleaded in there.” (Dkt. 121 at 56:21-57:8.)
`Immediately following that hearing I directed my team to engage with Mr. Berta on the facts and the
`merits, and my colleague Mr. Monroe prepared a three-page letter to Mr. Berta on September 24,
`2018 with an attached zip file containing scores of archived webpages showing Heroku’s
`infringement and outlining the applicability of infringement contentions to Heroku, with an express
`invitation to Mr. Berta to dialogue on the issue with PersonalWeb if he or his client had any
`questions. Attached hereto as Exhibit 5 is a true and correct copy of the letter sent to Mr. Berta. No
`response was ever received by my office.
`
`7
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 10 of 12
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`Our office promptly dismissed three actions in instances where we learned that the
`20.
`surviving entity may not bear responsibility for the infringing activity. As examples, my office was
`alerted on March 1, 2018 by counsel for Our Film Festival that PersonalWeb had sued the dba and
`not the actual legal entity. In response, my office issued a new, corrected summons to the correct
`legal entity. Our office also received a letter from Jerry R. Selinger on January 12, 2018 advising
`that SmugMug had gone out of business and that the new purchasing entity did not acquire any of
`SmugMug’s assets or liabilities, nor operated the SmugMug website. In response, after verifying the
`claims in this letter, PersonalWeb dismissed its case against SmugMug on January 17, 2018. See
`5:18-cv-00172-BLF, Dkt. 9.
`21.
`As another example of the circumstances present in paragraph 20, our office
`dismissed PersonalWeb’s case against My Wedding Match when we learned from the former CEO
`of that entity that the corporation was no longer in business and that the infringing codebase was
`removed from the infringing website when it was sold to a third party. See 5:18-cv-03457-BLF, Dkt.
`29. Similarly, our offices dismissed defendant LeTote, Inc. on September 18, 2018 when we learned
`from opposing counsel that LeTote did not acquire the infringing website. See 5:18-cv-05199-BLF,
`Dkt. 9.
`
`PersonalWeb did not maintain actions in instances where its counsel came into
`22.
`possession of information that the action ceased having full factual and legal support. In September
`2018, after conducting further investigation, my team discovered that the evidence in support of the
`complaints against three defendants, LiveChat Software, SA, Vend, Inc., and Group Nine Media,
`Inc., was insufficient to prove infringement. Therefore, in consultation with PersonalWeb, I directed
`my team to dismiss these actions. See 5:18-cv-00196-BLF, Dkt. 42 (Vend, Inc.); 5:18-cv-03461-
`BLF, Dkt. 26 (LiveChat Software, SA.); 5:18-cv-03581-BLF, Dkt. 58 (Group Nine Media, Inc.)
`23.
`Beginning in April 2019, PersonalWeb had multiple discussions with counsel for
`Stack Exchange, Mr. Robert Kent, who claimed that Stack Exchange did not infringe PersonalWeb’s
`patents because it did not use ETags, and then alleging that any such infringement should only be
`attributed to defendant Imgur. My colleagues, Stanley Thompson, Jeffrey Gersh and I responded to
`these assertions, and dialogued with Stack Exchange’s counsel repeatedly, including having phone
`
`8
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 11 of 12
`
`calls with Mr. Kent. to proffer PersonalWeb’s evidence in support of its causes of action and inviting
`Stack Exchange to provide further facts in support of its contentions if it believed we had missed any
`facts germane to their position. Neither I nor any of PersonalWeb’s counsel has received a
`substantive response back from Stack Exchange since PersonalWeb’s last response sent to counsel
`on November 12, 2019.
`24.
`Neither Amazon nor Twitch ever sent PersonalWeb a Rule 11 letter at any point of
`this litigation prior to the issuance of the claim construction order. At no point prior to the claim
`construction order had counsel for Amazon ever engaged me in a conversation explaining why that
`person believed infringement could not be proved and/or suggesting full dismissal or, for that matter,
`threatening sanctions. Such communication occurred for the first time only after the Court’s claim
`construction order issued on August 16, 2019 when Amazon and Twitch’s counsel for the first time
`threatened both Rule 11 sanctions and suggested that the litigation Amazon and Twitch could be
`deemed exceptional if PersonalWeb maintained its case against them in light of the court’s
`constructions issued that day which “make[] clear that PersonalWeb has no viable infringement
`claim against either Amazon or Twitch.” Dkt. 507-2. While my receipt of that letter could be likened
`to Amazon’s proverbial “stake in the ground,” even without the letter, I knew that the Court’s claim
`construction was adverse, and that PersonalWeb would need to promptly and responsibly address it.
`25.
`Beginning immediately following the Claim Construction Order, I made an effort on
`PersonalWeb’s behalf to wind down and/or significantly limit the litigation. Specifically, when the
`the next business day, on August 19, 2019 I contacted J. David Hadden and informed him that
`PersonalWeb was prepared to stipulate to judgment of non-infringement as respects all claims for
`patent infringement asserted against Amazon’s “CloudFront” and S3 products, to stipulate to
`judgment of non-infringement on all U.S. Patent No. 7,945,544 claims asserted against Twitch and
`all other website operators asserted within the MDL, and proposed that we agree to a stipulation for
`judgment of non-infringement in favor of Amazon against PersonalWeb. Attached hereto as Exhibit
`6 is a true and correct copy of the letter I sent to Mr. Hadden.
`26.
`Having not reached an accord with Amazon’s counsel regarding our proposed
`dismissal, on August 26, 2019, my office filed PersonalWeb’s motion for clarification to ensure that
`
`9
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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 608-16 Filed 06/18/20 Page 12 of 12
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`the parties were clear and had the same understanding of the Court’s construction of the term
`“license” because if PersonalWeb was incorrect in its understanding of how the Court ruled as to this
`term, it could not prove infringement and it would immediately withdraw the report of its technical
`expert, Mr. de la Iglesia, and dismiss the case in order to preserve its appellate rights.
`27.
`In communications with Mr. Hadden the week of August 19, Mr. Hadden had
`informed me that Amazon would get back to PersonalWeb on the stipulation for judgment I had
`proposed on August 19. On September 23, after not having received a definitive response to the
`terms of a dismissal that I had offered, I sent a draft stipulation of non-infringement to Mr. Hadden.
`None of Amazon’s counsel meaningfully responded again to our proposal but instead ignored my
`correspondence. After further inquiry, Mr. Hadden responded that Amazon would wait for summary
`judgment.
`On October 1, the Court denied PersonalWeb’s clarification motion. The very next
`28.
`day, my office filed a motion for entry of judgment of non-infringement on PersonalWeb’s behalf. I
`again contacted Amazon and Twitch’s counsel on October 2, 2019 to discuss dismissal of
`PersonalWeb’s claims against Amazon, Twitch and the withdrawal of Mr. de la Iglesia’s report in
`light of the Court’s order denying clarification issued the day before. I did not hear back from Mr.
`Hadden with regard to his clients’ response to PersonalWeb’s proposed stipulation. When I saw Mr.
`Hadden at the October 3, 2019 hearing on the motion for judgment on the pleadings, I asked Mr.
`Hadden again as to the status of my proposed stipulation. Mr. Hadden said that there was no update.
`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 Sherman Oaks, California.
`
`/s/ Michael A. Sherman
`Michael A. Sherman
`
`10
`DECLARATION OF MICHAEL A. SHERMAN ISO PERSONALWEB’S OPPOSITION TO
`MOTION OF AMAZON AND TWITCH 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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