Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 1 of 20
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`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
`TODD R. GREGORIAN (CSB No. 236096)
`tgregorian@fenwick.com
`RAVI R. RANGANATH (CSB No. 272981)
`rranganath@fenwick.com
`CHIEH TUNG (CSB No. 318963)
`ctung@fenwick.com
`TJ FOX (CSB No. 322938)
`tfox@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone:
`650.988.8500
`Facsimile:
`650.938.5200
`Counsel for AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., and
`TWITCH INTERACTIVE, INC.
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`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,
`PERSONALWEB TECHNOLOGIES, LLC, and
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiffs,
`
`v.
`TWITCH INTERACTIVE, INC.,
`Defendant.
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
`
`Case No.: 5:18-md-02834-BLF
`Case No.: 5:18-cv-00767-BLF
`Case No.: 5:18-cv-05619-BLF
`
`REPLY OF AMAZON.COM, INC., AM-
`AZON WEB SERVICES, INC., AND
`TWITCH INTERACTIVE, INC. IN SUP-
`PORT OF MOTION FOR ATTORNEY
`FEES AND COSTS
`
`Date:
`Time:
`Dept:
`Judge:
`
`August 6, 2020
`9:00 a.m.
`Courtroom 3, 5th Floor
`Hon. Beth L. Freeman
`
`PUBLIC REDACTED VERSION OF
`DOCUMENT SOUGHT TO BE
`SEALED
`
`CASE NOS. 5:18-md-02834-BLF,
`5:18-cv-00767-BLF, and
`5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 2 of 20
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`
`
`I.
`II.
`
`III.
`
`B.
`
`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................................. 1
`PERSONALWEB’S PURPORTED PRE-FILING INVESTIGATION IGNORED
`OBVIOUS AND FATAL DEFECTS. ................................................................................ 1
`A.
`The patents do not cover the basic web functions PersonalWeb
`accused. ................................................................................................................... 2
`Claim preclusion plainly barred PersonalWeb’s claims against
`Amazon customers arising before the judgment in the Texas case. ....................... 4
`PERSONALWEB LITIGATED THIS CASE UNREASONABLY. ................................. 6
`A.
`PersonalWeb changed its infringement positions at every turn. ............................. 6
`B.
`PersonalWeb took frivolous claim construction positions and later
`flouted the Court’s adverse constructions. .............................................................. 8
`1.
`PersonalWeb sought belated leave to amend its infringement
`contentions further after the Court rejected its arguments regarding
`the “authorization” terms. ........................................................................... 9
`Rather than dismiss its claims following claim construction,
`PersonalWeb told its expert to ignore the Court’s constructions
`altogether. .................................................................................................... 9
`PersonalWeb sought reconsideration without leave by moving to
`“clarify” constructions that were clear and unambiguous. .......................... 9
`THE COURT SHOULD NEITHER CONSIDER NOR CREDIT
`PERSONALWEB’S OPINIONS OF COUNSEL. ............................................................. 9
`PERSONALWEB’S STRATEGY WAS CALCULATED SOLELY TO SECURE
`NUISANCE SETTLEMENTS RATHER THAN TEST THE MERITS OF ITS
`CLAIMS. ........................................................................................................................... 11
`PERSONALWEB WAIVED ANY CHALLENGE TO THE
`REASONABLENESS OF THE REQUESTED FEES AND COSTS. ............................. 13
`VII. CONCLUSION ................................................................................................................. 15
`
`
`
`
`2.
`
`3.
`
`IV.
`
`V.
`
`VI.
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 3 of 20
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`
`
`Cases:
`
`TABLE OF AUTHORITIES
`
`Page(s):
`
`Bd. of Trs. of Laborers Health and Welfare Trust Fund for N. Cal. v. RMT
`Landscape Contractors, Inc.,
`No. 4:19-cv-01771-KAW, 2020 WL 978622 (N.D. Cal. Feb. 28, 2020) ...........................14
`
`Brain Life, LLC v. Elekta Inc.,
`746 F.3d 1045 (Fed. Cir. 2014) .............................................................................................6
`
`Chevron Corp. v. Pennzoil Co.,
`974 F.2d 1156 (9th Cir. 1992) .............................................................................................10
`
`Earthquake Sound Corp. v. Bumper Indus.,
`352 F.3d 1210 (9th Cir. 2003) .............................................................................................13
`
`Garcia v. Resurgent Capital Servs., L.P.,
`No. C-11-1253 EMC, 2012 WL 3778852 (N.D. Cal. Aug. 30, 2012) ................................14
`
`Gilead Scis., Inc. v. Merck & Co., Inc.,
`No. 5:13-cv-04057-BLF, 2016 WL 4242216 (N.D. Cal. Aug. 11, 2016) ..........................14
`
`Gilead v. Merck,
`No. 5:13-cv-04057-BLF, Dkt. 444 (N.D. Cal. Jul. 19, 2016) .......................................14, 15
`
`Goodell v. Ralphs Grocery Co.,
`207 F. Supp. 2d 1124 (E.D. Cal. 2002), abrogated on other grounds by
`Hubbard v. Sobreck, LLC, 554 F.3d 742 (9th Cir. 2009) ...................................................14
`
`Hernandez v. Tanninen,
`604 F.3d 1095 (9th Cir. 2010) .............................................................................................10
`
`In re PersonalWeb Techs. LLC,
`961 F.3d 1365 (Fed. Cir. 2020) .........................................................................................2, 5
`
`In re PersonalWeb Techs. LLC Pat. Litig.,
`No. 18-md-2834, 2019 WL 1455332 (N.D. Cal. Mar. 13, 2019) .........................................5
`
`Nye v. Sage Prods., Inc.,
`98 F.R.D. 452 (N.D. Ill. 1982) ............................................................................................10
`
`SpeedTrack, Inc. v. Office Depot, Inc.,
`791 F.3d 1317 (Fed. Cir. 2015) .............................................................................................5
`
`ThermoLife Int’l LLC v. GNC Corp.,
`922 F.3d 1347 (Fed. Cir. 2019) .....................................................................................11, 13
`
`ThermoLife Int’l, LLC v. Myogenix Corp.,
`No. 13cv651 JLS (MDD), 2017 WL 1235766 (S.D. Cal. Apr. 4, 2017) ................10, 11, 13
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 4 of 20
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`
`Other Authorities:
`
`Fed. R. Civ. P. 11 ........................................................................................................................6
`
`Fed. R. Civ. P. 54 ......................................................................................................................13
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 5 of 20
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`
`
`I.
`
`INTRODUCTION
`This case was never about the underlying merits. It was always about the in terrorem effect
`of suing nearly a hundred customers (including medium-sized businesses) of a single company, and
`leveraging customer fear of being forced to pay millions to defend someone else’s technology into
`a lucrative settlement. That tactic is as cynical as it is corrosive to our institutions. It squanders
`scarce judicial resources from more deserving claimants who daily petition our courts for redress
`of real injuries. It diverts otherwise useful capital away from innovation and job creation and to-
`wards dead-weight windfalls for the undeserving. And it has brought worldwide opprobrium onto
`our nation’s patent system. Amazon could and did defend this case on behalf of its customers, but
`the unfortunate fact is that many targets of patent abuse do not because they cannot. For every case
`that has reached this point—where a defendant has the will and the wherewithal to see a case
`through—there are hundreds, even thousands, that never benefit from the disinfecting sunlight of a
`final judgment.
`Here, we have three such final judgments. And each shows just how frivolous this case has
`always been. None of PersonalWeb’s hundreds of pages of post-hoc, cherry-picked, self-serving
`and (formerly) privileged declarations and exhibits justifies the cascade of increasingly frivolous
`positions that PersonalWeb actually advanced in this case. Amazon respectfully urges the Court to
`seize this unique opportunity to remind all litigants that invoking the coercive power and careful
`attention of our courts is more than a right. It is also a great privilege—one of the very blessings
`of liberty—and may not be cynically abused without meaningful consequence.
`
`II.
`
`PERSONALWEB’S PURPORTED PRE-FILING INVESTIGATION IGNORED
`OBVIOUS AND FATAL DEFECTS.
`PersonalWeb spends nearly half of its opposition describing the “multiple prefiling legal
`opinions” that it commissioned before filing. (Opp. at 2-13; Dkt. 608-1 (“Bermeister Decl.”) ¶ 10;
`Dkt. 608-16 (“Sherman Decl.”) ¶ 5.) Setting aside that those opinions were prepared by people
`having a financial interest in the outcome of this litigation, those opinions hardly show that Person-
`alWeb reasonably believed in seeing this case through on the merits.
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 6 of 20
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`A.
`The patents do not cover the basic web functions PersonalWeb accused.
`PersonalWeb knew from the start that one of the key requirements of every asserted claim
`is permitting/allowing or not permitting/allowing access to content depending on whether the re-
`quested content is authorized or licensed. (See, e.g., ’310 patent, cl. 20 (“permitting the content to
`be provided or accessed by the at least one other computer if it is not determined that the content is
`unauthorized or unlicensed”); ’420 patent, cl. 25 (“selectively allowing [content] . . . to be provided
`to or accessed by or from at least one of the computers”), cl. 166 (“selectively permit the particular
`data item to be made available for access and to be provided to or accessed by”); ’442 patent, cl.
`11 (“allowing the file to be provided from one of the computers having a licensed copy of the
`file”).) But to satisfy these claim elements, PersonalWeb accused a basic and ubiquitous feature of
`the standard and publicly available HTTP protocol: conditional GET requests. In re PersonalWeb
`Techs. LLC, 961 F.3d 1365, 1370 & n.1 (Fed. Cir. 2020) (noting PersonalWeb’s allegations against
`Amazon’s S3 targeted “Hyper Text Transfer Protocol (‘HTTP’) ‘GET’ request[s],” and “HTTP is
`a standard communication protocol that web browsers and web servers follow in order to com-
`municate with each other on the Internet.”); (Dkt. 578 (Second MSJ Order) at 7-8; Dkt. 540-6
`(Weissman Report) ¶¶ 26, 94; Dkt. 543-1 (de la Iglesia Report) ¶¶ 18-47, 86-180, 194.)
`Even a cursory review of the HTTP specification would have revealed that it has no notion
`of permitting (or not permitting) access to content. The HTTP protocol assumes that all content
`can be accessed anonymously by any browser asking for it. Nor does the HTTP protocol deny a
`browser access to stale content that it already has in its cache. To the contrary, the HTTP protocol
`requires the web browser to display expired content when a user requests to see the browser history
`or uses the browser’s “back” button. (Second MSJ Order at 16; see also id. at 18 (“As the parties
`agree, the browser continues to have access to the stale cached file via the browser’s ‘history’ and
`‘back’ functions.”).). The hundreds of hours PersonalWeb spent confirming the server configura-
`tions of each Amazon customer and pasting different customer names into claim charts are irrele-
`vant, as it was always obvious that the patents had nothing to do with the web functions Personal-
`Web was “investigating.”
`This fundamental difference between PersonalWeb’s patents and the HTTP protocol is one
`AMAZON AND TWITCH REPLY RE MOTION FOR
`CASE NOS. 5:18-md-02834-BLF,
`5:18-cv-00767-BLF, and
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 7 of 20
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`of the reasons why the Court granted Amazon summary judgment of non-infringement. (Second
`MSJ Order at 18-19.) This was not a close case, in the Court’s own words: “There is simply no
`evidence of not permitting/not allowing of any kind by the accused products.” (Id. at 18 (emphasis
`added).) The Court arrived at this part of its holding merely by comparing the plain language of
`the claims with the HTTP specification—no claim construction was required. PersonalWeb could
`and should have done this same comparison before filing these cases. (See id.) And perhaps it did
`and proceeded anyway. Either way, the consequences for this motion are the same.
`PersonalWeb argues that its “reading of ‘permitting/not permitting’ claim elements was
`reasonable because (a) the max-age value received in the original HTTP 200 response set an orig-
`inal time that the content was permitted to be used; and (b) the 304 response gave new permission
`to use the content for the amount of time set by the max-age value.” (Opp. at 6.) This is a rehash
`of the same frivolous argument PersonalWeb made in opposing summary judgment: “freshness”
`of an asset file has nothing to do with whether a browser is “permitted” access to that file. (Second
`MSJ Order at 18 (“the server’s response to a conditional GET request is ‘a version control mecha-
`nism’ and does not ‘not permit’ the browser from continuing to use the version it already has”).)
`PersonalWeb’s other infringement allegations were no better. For example, claims 25 and
`166 of the ’420 patent require comparison of a content-dependent name—as accused by Personal-
`Web, the ETags generated by Amazon’s CloudFront—to a plurality of identifiers/data items. (See
`Second MSJ Order at 22.) It was undisputed that, following the HTTP protocol, CloudFront per-
`formed a one-to-one comparison of the ETag for the data item in the browser’s cache with the
`version of the file stored on the server. (Id. at 22-23) Whether or not it is fair to charge Personal-
`Web with knowledge of this fact before this case was filed, it was inexcusable for PersonalWeb to
`proceed with these claims afterwards by asking the Court to read the word “plurality” out of the
`patent. (Id. at 23.) As the Court put it, PersonalWeb was simply asking the Court to “make rookie
`mistakes” that would “be reversed” and “fast.” (Dkt. 573 (Nov. 14, 2019 Hrg. Tr.) at 91:8-12;
`Second MSJ Order at 23.)
`PersonalWeb’s indignation at the suggestion that it accused basic web functionality rings
`especially hollow. (Opp. at 4.) It argues that it has not “accused the entire web of infringing its
`AMAZON AND TWITCH REPLY RE MOTION FOR
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`5:18-cv-00767-BLF, and
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 8 of 20
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`patents” based solely on the fact that it did not literally sue all (as opposed to merely 85) web-based
`businesses that use the same basic technology. (See id.) That rhetorical point aside, suing the web
`was in fact PersonalWeb’s aspiration:
` testified
`PersonalWeb executive Kevin Bermeister. (Gregorian Decl., Ex. 1 (Bermeister Dep. Tr.) at 205:9-
`23.) PersonalWeb did not conceal this strategy during the case: Its technical expert described the
`patents as “relat[ing] to ubiquitous and universally practiced web protocols and standards such as
`HTTP.” (de la Iglesia Report at ¶ 194.) Indeed, PersonalWeb’s own description of its infringement
`theory prompted the Court to ask whether PersonalWeb would “go after every website in the uni-
`verse.” (Nov. 14, 2019 Hrg. Tr. at 52:8-20.) PersonalWeb’s response—which it criticizes Amazon
`for omitting in the motion—was hardly reassuring, stating that PersonalWeb accused “specific as-
`pects of HTTP, basically responding to conditional GETs with 304 and 200 messages.” (Id. at
`53:7-9; see also id. at 55:13-17.) But these are basic HTTP operations in widespread use. And
`while some (long expired) patent theoretically could cover them, PersonalWeb’s patents do not.
`Any reasonable pre-filing investigation would have revealed this basic fact. Instead of doing this
`investigation, however, as evidenced by its countless pages of supporting declarations and docu-
`ments, PersonalWeb merely cataloged the specific ways myriad different websites use the same
`non-infringing HTTP operations, with no confirmation that those operations actually map to its
`claims—which is why, when pressed, PersonalWeb could muster “simply no evidence” in support
`of its infringement claims. (Second MSJ Order at 18.)
`
`B.
`
`Claim preclusion plainly barred PersonalWeb’s claims against
`Amazon customers arising before the judgment in the Texas case.
`PersonalWeb admits that when it decided to sue 85 Amazon customers, despite having al-
`ready lost against Amazon, it “[r]ecogniz[ed] the possibility of a defendant raising preclusion in
`defense” to those claims. (Opp. at 4.) PersonalWeb haled 85 companies into court despite these
`concerns and carried on the litigation until its claims were barred a second time by a second judge-
`ment. PersonalWeb’s focus on the purported uncertainty as to the application of the Kessler doc-
`trine is a distraction; when it decided to pursue its claims, there was no ambiguity with respect to
`claim preclusion law, which barred all of its claims for alleged infringement occurring prior to the
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 9 of 20
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`judgment in the Texas case.
`PersonalWeb’s arguments against the straightforward application of claim preclusion were
`frivolous. First, it argued that because the Texas case involved only the multipart upload feature
`of S3, it was free to accuse a different feature of S3. Id. at 1375. To support this argument, Per-
`sonalWeb submitted a declaration from its counsel Mr. Hadley stating that the Texas case involved
`only the multipart upload feature of S3 and not the conditional GET requests at issue in this case.
`(Dkt. 337.) That argument was both factually and legally wrong. Indeed, the Court rejected the
`declaration of Mr. Hadley as “troubling,” “self-serving,” and “contrary to the evidence from his
`own case,” including PersonalWeb’s infringement contentions and discovery requests, both iden-
`tifying conditional GET requests as accused in the Texas case. In re PersonalWeb Techs. LLC Pat.
`Litig., No. 18-md-2834, 2019 WL 1455332, at *11 (N.D. Cal. Mar. 13, 2019) (“the evidence shows
`that the discovery and infringement contentions in the Texas Action . . . also encompassed the
`HTTP GET (download) command [and] [n]o reasonable jury could conclude otherwise”); (Dkt 394
`(First MSJ Order) at 18:12-13; Dkt. 376 at 53:19-22.) The Court also noted that “nothing in the
`relevant Federal Circuit precedent” supported PersonalWeb’s argument that it could accuse differ-
`ent features of the same product in successive cases. PersonalWeb, 2019 WL 1455332, at *13.
`The Federal Circuit agreed, finding PersonalWeb’s argument that it had not accused conditional
`GET requests in the Texas case to be “at odds with the representations PersonalWeb made in the
`Texas case” and confirming that PersonalWeb could not circumvent claim preclusion by asserting
`“different legal theories” or “emphasiz[ing] different facts” in subsequent cases. PersonalWeb,
`961 F.3d at 1376.
`Second, PersonalWeb argued before this Court (an argument it dropped on appeal) that even
`if claim preclusion applied, it would preclude claims based only on conduct before the date of the
`complaint filing in the Texas action. (See Bermeister Decl. ¶ 4.) PersonalWeb purportedly relied
`on the opinion of its then-counsel Roderick Dorman that “any act of infringement occurring after
`the filing of the complaint is not precluded by res judicata and can be asserted in a later proceed-
`ing.” (Id.; Dkt. 608-2 (May 22, 2014 Email from Dorman).) If PersonalWeb indeed relied on this
`single 2014 email from its former lawyer—the same lawyer who lost in the Federal Circuit in
`AMAZON AND TWITCH REPLY RE MOTION FOR
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`SpeedTrack, Inc. v. Office Depot, Inc., 791 F.3d 1317 (Fed. Cir. 2015)—in deciding to sue 85 Am-
`azon customers four years later, that reliance was undoubtedly unreasonable because the law is
`clear that claim preclusion bars claims arising through final judgment in the first lawsuit. Brain
`Life, LLC v. Elekta Inc., 746 F.3d 1045, 1053 (Fed. Cir. 2014) (“principles [of claim preclusion]
`bar the assertion of infringement of either the method or system claims to the extent the alleged
`acts of infringement predate the final judgment in the [first] MIDCO Litigation”) (emphasis added).
`Relying on bad law is not an excuse for an unreasonable litigation campaign. If PersonalWeb and
`its counsel were diligent, as they were required to be under Rule 11, they would have known that
`their claims could not succeed. For example, in its amended complaint against Twitch, Personal-
`Web attached an exhibit purportedly “list[ing] specific examples of files that were . . . served by or
`on behalf of Defendant during the relevant time period.” (Case No. 18-cv-05619, Dkt. 13 at ¶ 51.)
`In that exhibit, PersonalWeb alleged that Twitch served webpage files using the accused HTTP
`operations as of May 2014, before the Texas final judgment was entered in June 2014. (Id., Dkt.
`13-1.) Thus, even if PersonalWeb could show that Twitch met the asserted claims (and it could
`not)—the only “evidence” PersonalWeb had of alleged infringement by Twitch related to acts that
`occurred prior to the judgment in the Texas case, when PersonalWeb’s claims were barred by claim
`preclusion.
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`III.
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`PERSONALWEB LITIGATED THIS CASE UNREASONABLY.
`The way PersonalWeb litigated this case after filing—including its constantly shifting in-
`fringement positions—independently supports an exceptional case determination.
`
`A.
`PersonalWeb changed its infringement positions at every turn.
`PersonalWeb contends that “[f]rom the day PersonalWeb filed its first case, its ‘infringe-
`ment theory’ was and remained the same.” (Opp. at 7.) That is true in a sense: PersonalWeb
`always accused the same basic features of the HTTP protocol. But, in an attempt to bob-and-weave
`in response to every adverse ruling or opposition brief, PersonalWeb constantly shifted positions
`solely to keep the plates spinning in the hope of coercing a settlement.
`PersonalWeb’s inconsistent representations to the JPML and this Court provide just one of
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`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`5:18-cv-00767-BLF, and
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 11 of 20
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`many examples of its say-anything approach. When PersonalWeb sought centralization of its cus-
`tomer suits as an MDL—so it could litigate the customer cases simultaneously and maximize its
`settlement leverage—it “argued [to the JPML] that it had accused the website operators of infring-
`ing through their use of Amazon’s S3.” (Opp. at 11 (emphasis added); Dkt. 592-14 (MDL Motion)
`at 7 (“Each defendant is alleged to have contracted with the same third party to serve its content on
`its behalf using the same S3 host system so that it may control its content distribution in an in-
`fringement of the Patents-in-Suit.”).) Later, recognizing that its admission regarding S3’s role
`would make it impossible to avoid a stay or injunction under the customer suit doctrine, Personal-
`Web told this Court, in unmistakably clear language, that its “infringement theory” was not based
`on S3:
`
`But I think, importantly, the Amazon DJ Action will not resolve
`claims against the individual defendants because PersonalWeb’s
`theory of infringement revolves around Ruby on Rails not S3, it is
`the Ruby on Rail website owner that controls and drives the use of
`ETags.
`(Case No. 5:18-cv-00767-BLF (DJ Action), Dkt. 54 at 43:24-44:3 (emphasis added).) Personal-
`Web contends that its representations to this Court and the JPML were consistent because it also
`identified Ruby on Rails to the JPML in addition to S3. (Opp. at 10-11.) But that is beside the
`point: PersonalWeb expressly relied on each defendant’s use of S3 as a common fact issue that
`would make centralization appropriate, and then told this Court its theory was based on “Ruby on
`Rails not S3.” (DJ Action, Dkt. 54 at 44:1-2.) The Court ultimately saw through this tactic, noting
`that PersonalWeb had not “map[ped] [Ruby on Rails] to the claimed elements at all.” (Id. at 11:6-
`8.) Naturally, PersonalWeb would then go on to ignore Ruby on Rails for the remainder of the
`case, it’s potential rhetorical utility having been exhausted: Mr. de la Iglesia offered no infringe-
`ment opinion based on Ruby on Rails, and PersonalWeb did not so much as mention it in opposition
`to Amazon and Twitch’s summary judgment motions. (See generally de la Iglesia Report; Dkt.
`550 (Resp. to Amazon MSJ); Dkt. 551 (Resp. to Twitch MSJ).)
`After the Court stayed the customer cases, PersonalWeb subdivided its cases into four “cat-
`egories,” only one of which, according to PersonalWeb, was based on S3. (See Dkt. 96.) Person-
`alWeb still contended that its “infringement theory” never changed and that its discussion of four
`AMAZON AND TWITCH REPLY RE MOTION FOR
`CASE NOS. 5:18-md-02834-BLF,
`5:18-cv-00767-BLF, and
`ATTORNEY FEES
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 12 of 20
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`categories was meant only “[t]o illuminate the differences between the Court-permitted amend-
`ments that would be made to website operator complaints in October 2018.” (Opp. at 10.) This is
`revisionist: the “categories” were meant to convince the Court that not all customer cases are the
`same and entice it to allow the customer cases to move forward in parallel with Amazon’s declar-
`atory judgment action to add expense and better coerce settlements. (See Dkt. 96 at 28-29 (declin-
`ing to identify a representative customer case and requesting that all customer defendants partici-
`pate in the case through the Markman hearing).)
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`B.
`
`PersonalWeb took frivolous claim construction positions and later flouted the
`Court’s adverse constructions.
`PersonalWeb’s litigation strategy with respect to the “authorization” terms further supports
`a finding of exceptionality. In an unrelated prior case in the Eastern District of Texas, Judge Gil-
`strap construed the “authorization” terms to require compliance with a valid license. (Dkt.412-6
`(Gilstrap Order) at 28 (construing “authorized,” “unauthorized,” and “authorization” as “compliant
`with a valid license,” “not compliant with a valid license,” and “a valid license”).) As noted in
`Amazon’s motion, PersonalWeb should have known it did not have a viable claim under these
`constructions because the conditional GET requests specified in the HTTP protocol have nothing
`to do with whether content is licensed. (See Mot. at 9.) PersonalWeb contends it was justified in
`ignoring Judge Gilstrap’s constructions because an earlier order from Judge Davis determined that
`a different term—“license”—“require[d] no further construction.” (Opp. at 6; Dkt. 412-7 (“Davis
`Order”) at 26.) But Judge Davis’s claim construction order should not have given PersonalWeb
`any confidence in its ability to prove that Amazon and its customers met the “authorization” limi-
`tations because (1) he did not construe the “authorization” terms that Judge Gilstrap later construed,
`and (2) he was resolving a separate dispute over “whether the license [of the patents] must be to
`the content of a file or to the system as a whole,” which is not relevant to this case. (Davis Order
`at 25.) PersonalWeb argues in the alternative that it was not “clear” that its claims would fail under
`Judge Gilstrap’s construction of the “authorization” terms. (Opp. at 6.) This argument is meritless.
`
`AMAZON AND TWITCH REPLY RE MOTION FOR
`ATTORNEY FEES
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`8
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`CASE NOS. 5:18-md-02834-BLF,
`5:18-cv-00767-BLF, and
`5:18-cv-05619-BLF
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`Case 5:18-md-02834-BLF Document 612 Filed 07/23/20 Page 13 of 20
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`1.
`
`PersonalWeb sought belated leave to amend its infringement conten-
`tions further after the Court rejected its arguments regarding the “au-
`thorization” terms.
`First, after the Markman hearing, PersonalWeb asked for leave to amend its infringement
`contentions so that it could argue —incredibly—that the limitations requiring “authorization” were
`infringed when access to a website is governed by “Terms of Service or an End User License.”
`(See Dkt. 452 at 6.) That argument, too, was frivolous. And while PersonalWeb argues that this
`was not done in anticipation of an adverse claim construction, its sudden need to amend its infringe-
`ment contentions years into the case is otherwise unexplained.
`
`2.
`
`Rather than dismiss its claims following claim construction,
`PersonalWeb told its expert to ignore the Court’s constructions
`altogether.
`Second, once the Court denied PersonalWeb leave to amend its infringement contentions
`and adopted Judge Gilstrap’s construction of the “authorization” terms, PersonalWeb continued to
`plow ahead. But to do so, PersonalWeb was required simply to ignore the Court’s adverse con-
`structions. (See Mot. at 6, citing Dkt. 543-1 ¶¶ 64, 103.) Indeed, on the advice of counsel, Person-
`alWeb’s expert Mr. de la Iglesia rewrote the Court’s c