Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 1 of 35
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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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`Case No. 18-md-02834-BLF
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`ORDER GRANTING AMAZON.COM,
`INC., AMAZON WEB SERVICES, INC.,
`AND TWITCH INTERACTIVE, INC.’S
`MOTION FOR ATTORNEY FEES AND
`COSTS; SUA SPONTE LIFTING THE
`STAY ON ALL CUSTOMER ACTIONS
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`[Re: ECF 593]
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`
`Case No.: 5:18-cv-00767-BLF
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`[Re: ECF 184]
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`Case No.: 5:18-cv-05619-BLF
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`[Re: ECF 88]
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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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`In this multidistrict litigation (“MDL”), PersonalWeb Technologies, LLC (“PersonalWeb”)
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`alleged patent infringement by Amazon.com, Inc. and Amazon Web Services, Inc., (collectively,
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`“Amazon”) and separately by dozens of Amazon’s customers, related to the customers’ use of
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`Amazon’s Simple Storage Service (“S3”) and Amazon’s CloudFront content delivery network
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`(“CloudFront”). The Court designated PersonalWeb’s suit against Twitch Interactive, Inc.
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`(“Twitch”) as the representative customer case. Amazon and Twitch prevailed at summary
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 2 of 35
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`judgment and now bring the present Motion for Attorney Fees and Costs.1 Motion, ECF 593. The
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`Court heard oral arguments on August 6, 2020 (the “Hearing”). For the reasons stated below,
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`Amazon and Twitch’s Motion is GRANTED.
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`I. BACKGROUND
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`The tale of this patent infringement battle began nearly nine years ago when PersonalWeb
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`sued Amazon and its customer Dropbox, Inc. in the Eastern District of Texas, alleging infringement
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`by Amazon S3. See PersonalWeb Techs., LLC v. Amazon.com Inc., No. 6:11-cv-00658 (E.D. Tex.
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`Filed Dec. 8, 2011) (the “Texas Action”). After the district court issued its claim construction order
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`in the Texas Action, PersonalWeb stipulated to the dismissal of all its claims against Amazon with
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`prejudice and the court entered judgment. ECF 315-7; ECF 315-8.
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`Nearly four years later, starting in January 2018, PersonalWeb filed 85 lawsuits against
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`different Amazon customers in various courts around the country, alleging that those customers’ use
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`of Amazon S3 service infringed the same patents at issue in the Texas Action. See ECF 295; ECF
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`1, Schedule A. In the earliest complaints filed in the customer cases, PersonalWeb alleged
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`infringement of U.S. Patent Nos. 5,978,791 (the “’791 patent”), 6,928,442 (the “’442 patent”),
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`7,802,310 (the “’310 patent”), 7,945,544 (the “’544 patent”), and 8,099,420 (the “’420 patent”)
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`(collectively, “patents-in-suit” or “True Name patents”). See, e.g., PersonalWeb Technologies LLC
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`et al v. Airbnb, Inc., Case No. 18-cv-00149-BLF (N.D. Cal.), ECF No. 1 ¶ 1.2 All five patents-in-
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`suit share a specification and each claims priority to a patent filed on April 11, 1995. All of the
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`patents-in-suit have expired and PersonalWeb’s allegations are directed to the time period prior to
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`their expiration. See e.g., PersonalWeb Technologies, LLC et al v. Twitch Interactive, Inc., Case
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`No. 5:18-cv-05619 (N.D. Cal.) (the “Twitch case”), ECF 1 ¶ 18.
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`According to the shared specification of the True Name patents, the goal of the invention
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`was to solve a problem with the way prior art computer networks identified data in their systems
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`because there was “no direct relationship between the data names” and the contents of the data item.
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`1 This Motion seeks a fee award against PersonalWeb and not Level 3, the Co-Plaintiff. ECF 630.
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` 2
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` PersonalWeb later dropped the ’791 patent from its complaints against the customers in the
`amended complaints filed in April-June 2018.
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 3 of 35
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`’310 patent col. 2, ll. 39-43. The patents purport to solve that problem by claiming a method of
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`naming a computer file with a “substantially unique” identifier created from the contents of the file
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`(i.e., True Name). Id. col. 6, ll. 20-24. The summary of the invention describes multiple uses for
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`these True Names, including (1) to avoid keeping multiple copies of a given data file, regardless of
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`how files are otherwise named; (2) to avoid copying a data file from a remote location when a local
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`copy is already available; (3) to access files by data name without reference to file structures; (4) to
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`maintain consistency in a cache of data items and allow corresponding directories on disconnected
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`computers to be resynchronized with one another; (5) to confirm whether a user has a particular
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`piece of data according to its content, independent of the name, date, or other properties of the data
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`item; (6) to verify that data retrieved from a remote location is the intended data; and (7) to prove
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`and track possession of a specific data item for purposes of legal verification. See id. col. 4, ll. 1–
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`52. The patents-in-suit are directed to various specific aspects of this system.
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`Shortly after PersonalWeb filed the initial lawsuits against Amazon’s customers, Amazon
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`intervened and undertook the defense of its customers. In addition, Amazon filed its own lawsuit
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`against PersonalWeb, seeking an injunction against further litigation against its customers and
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`declarations that PersonalWeb’s claims against its customers are barred and that, if not barred,
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`Amazon’s technology does not infringe the asserted patents. Amazon.com, Inc. et al v. Personal
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`Web Technologies, LLC et al, 18-5:18-cv-00767-BLF (N.D. Cal. Filed February 5, 2018) (the “DJ
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`Action”), ECF 62. PersonalWeb counterclaimed for infringement against Amazon. DJ Action, ECF
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`62; 71.3
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`PersonalWeb sought to centralize all the customer cases and Amazon’s Declaratory
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`Judgment Action in an MDL. ECF 592-14 at 6-7 (In re PersonalWeb Techs., LLC & Level 3
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`Commc’ns, LLC Patent Litig., MDL No. 2834 (“MDL Action”), Dkts. 1-1, 133). On June 7, 2018,
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`the Judicial Panel on Multidistrict Litigation (the “MDL Panel”) consolidated the customer cases
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`3 Amazon includes the ’544 patent and the ’791 patent in its complaint in the DJ Action. DJ Compl.
`at 18. PersonalWeb, however, did not allege infringement of the ’791 patent in its counterclaim
`against Amazon. ECF No. 257. And PersonalWeb dropped the ’544 patent from its counterclaim
`against Amazon on October 16, 2018. DJ Action, ECF 71.
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 4 of 35
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`and the Amazon DJ Action in this MDL proceeding and assigned the consolidated cases to this
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`Court. ECF 1.
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`To promote judicial efficiency and based on input from the parties, including PersonalWeb’s
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`identification of Twitch as a party charged with infringement under all four of its theories and
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`Twitch’s agreement (ECF 96-1 at 2), the Court selected the Twitch case as the representative
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`customer action to proceed in parallel with the Declaratory Judgment action and stayed all other
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`customer cases pending resolution of those two cases. ECF 313. PersonalWeb asserted claims
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`against Twitch on four of the five patents (the ’442 patent, the ’310 patent, the ’420 patent, and the
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`’544 patent). ECF 198.
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`On October 29, 2018, PersonalWeb served its infringement contentions accusing the use of
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`Amazon’s S3 and CloudFront. See e.g., ECF 315-13. Amazon moved for summary judgment in its
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`Declaratory Judgment Action and in the Twitch case, on the ground that in light of the with-
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`prejudice dismissal of PersonalWeb’s action against Amazon in the Texas Action, PersonalWeb
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`was barred from suing Amazon or its customers for infringement based on Amazon’s S3 system.
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`Kessler Motion, ECF 315. On March 13, 2019, the Court granted Amazon’s motion in part. Kessler
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`Order, ECF 394. The Court held that claim preclusion barred PersonalWeb’s claims of infringement
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`relating to S3 occurring prior to the final judgment in the Texas Action, and that the Kessler doctrine,
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`first adopted by the Supreme Court in Kessler v. Eldred, 206 U.S. 285, 27 (1907), barred
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`PersonalWeb’s claims of infringement relating to S3 after the final judgment in the Texas action.
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`Id. The Federal Circuit affirmed. In re PersonalWeb Techs. LLC, 961 F.3d 1365 (Fed. Cir. 2020).
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`PersonalWeb’s claims relating to the use of CloudFront remained.
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`On August 16, 2019, the Court issued its claim construction order. Claim Construction
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`Order, ECF 485. Relevant to this Motion, the Court construed the claim term “unauthorized or
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`unlicensed” as “not compliant with a valid license” and the claim term “authorization” as “a valid
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`license.” Id. at 12, 33. Shortly after the Court issued the Claim Construction Order, Counsel for
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`Amazon/Twitch reached out to PersonalWeb’s counsel because Amazon/Twitch believed that
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`PersonalWeb had no viable patent infringement theories in light of the Court’s constructions. ECF
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`507 at 1. In response, PersonalWeb asserted that it understood “licensed/unlicensed” to mean
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`“valid/invalid rights to content” and that it intended to apply that understanding to its infringement
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`analysis. Id. at 1-2. Over Amazon/Twitch’s strong objection and threats of sanctions,
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`PersonalWeb’s expert did apply that understanding to his infringement analysis in his report, which
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`PersonalWeb served on Twitch on August 23, 2019. Id. at 2. The following business day,
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`PersonalWeb filed a motion seeking clarification of the Court’s construction – specifically, whether
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`the word “license” in the Court’s construction “meant something different than ‘valid rights to
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`content’ (i.e., a narrower/license instrument-type of meaning).” Id. The Court rejected
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`PersonalWeb’s understanding of its Claim Construction Order and determined that the word
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`“license” does not require clarification or supplementation. ECF 537.
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`Shortly thereafter, PersonalWeb moved for Entry of Judgment of Non-Infringement. ECF
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`538. PersonalWeb argued that the Court’s Claim Construction Order has “a dispositive effect on
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`the claims and defenses at issue in this case, and as a consequence thereof, PersonalWeb cannot
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`meet its burden of proving infringement.” Id. at 1-2. Amazon opposed that motion because it would
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`not have resolved the claims against Twitch and because Amazon and Twitch sought findings of
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`non-infringement based on additional grounds independent of the Court’s claim construction. See
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`ECF 547. The Court agreed with Amazon and denied PersonalWeb’s motion for Entry of Judgment.
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`ECF 559.
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`Two days after PersonalWeb filed its Motion for Entry of Judgment, in accordance with the
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`case schedule, Amazon and Twitch moved for summary judgment of non-infringement. ECF 541,
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`542. Amazon and Twitch moved for summary judgment based on the Court’s claim construction
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`but also on additional grounds, independent of claim construction. The Court granted summary
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`judgment for Amazon and Twitch on all claims finding: (1) no determination of compliance with a
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`valid license (’310 and ’420 patents); (2) no “permitting/allowing content to be provided or
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`accessed” (’442, ’310 and ’420 patents); (3) no “determining whether a copy of the data file is
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`present using the name” (’442 patent); and (4) no “comparison to a plurality of identifiers” (’420
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`patent). Summary Judgment Order, ECF 578. The Court also granted summary judgment of non-
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`infringement of ’544 and ’791 patents as to Amazon’s Declaratory Judgment Action because
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`PersonalWeb brought forth no infringement contentions related to those patents against Amazon.
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`Id. at 10-11. Similarly, the Court granted summary judgment of non-infringement of ’544 patent as
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`to PersonalWeb’s claims against Twitch because PersonalWeb’s expert had conceded that there was
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`no infringement. Id. at 12.
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`Concurrent with the Summary Judgment Order, the Court issued an order inquiring about
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`the parties’ respective positions on whether the Summary Judgment Order should be entered as to
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`all remaining (and stayed) customer cases. ECF 580. On February 17, 2020, the parties filed a joint
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`statement. Statement, ECF 584. Amazon, Twitch, and the remaining customer defendants
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`submitted that the Court should enter the Summary Judgment Order of non-infringement in all
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`remaining cases. Id. at 6. PersonalWeb, on the other hand, represented to the Court that although
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`at least one basis for the Court’s Summary Judgment Order applies to each of the customer
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`defendants (making entry of judgment appropriate in all cases), PersonalWeb now believes that the
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`Twitch case is not representative of all customer cases and thus, not all of the Court’s findings of
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`non-infringement apply to the remaining customer cases. Id. at 3.
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`On March 20, 2020, Amazon and Twitch filed the present Motion for Attorney Fees and
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`Costs. ECF 593.
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`II. LEGAL STANDARD
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`“The court in exceptional cases may award reasonable attorney fees to the prevailing party.”
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`35 U.S.C. § 285. In Octane Fitness, the Supreme Court explained that an exceptional case “is simply
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`one that stands out from others with respect to the substantive strength of a party’s litigating position
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`(considering both the governing law and the facts of the case) or the unreasonable manner in which
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`the case was litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554,
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`(2014). “District courts may determine whether a case is ‘exceptional’ in the case-by-case exercise
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`of their discretion, considering the totality of the circumstances.” Id.; see also Eon-Net LP v.
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`Flagstar Bancorp, 653 F.3d 1314, 1324 (Fed. Cir. 2011) (“[W]e are mindful that the district court
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`has lived with the case and the lawyers for an extended period.”). In considering the totality of the
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`circumstances, the Supreme Court suggested that “district courts could consider ‘nonexclusive’
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`factors it previously set forth concerning a similar provision in the Copyright Act, including
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`‘frivolousness, motivation, objective unreasonableness (both in the factual and legal components of
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 7 of 35
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`the case) and the need in particular circumstances to advance considerations of compensation and
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`deterrence.’” Octane Fitness, 572 U.S. at 554 n.6 (citing Fogerty v. Fantasy, Inc., 510 U.S. 517,
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`534 (1994)). A movant must establish its entitlement to attorneys’ fees under § 285 by a
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`preponderance of the evidence. Id. at 557.
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`Attorneys’ fees are not awarded as “a penalty for failure to win a patent infringement suit.”
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`Octane Fitness, 572 U.S. at 548. (quotation marks and citation omitted). “The legislative purpose
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`behind § 285 is to prevent a party from suffering a ‘gross injustice,’” and not to punish a party for
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`losing. Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir. 2017).
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`III. DISCUSSION
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`Amazon contends that the claims asserted were substantially weak and the case was
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`unreasonably litigated. Motion at 1-2. Amazon argues that “PersonalWeb never had a viable claim
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`for relief” because (1) its claims were barred by PersonalWeb’s prior litigation against Amazon in
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`Texas and (2) PersonalWeb’s infringement theories were baseless. Id. at 8-10. Amazon also takes
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`issue with PersonalWeb’s conduct in litigating this case noting (1) PersonalWeb’s repeated change
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`of positions, (2) prolonging the case after claim construction, and (3) PersonalWeb’s “[v]iolations
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`of court rules and the duty of candor.” Id. at 10-14.
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`PersonalWeb responds that it had a “good faith basis” for bringing its claims, its
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`infringement theory remained consistent throughout the case, and its conduct was “a model of
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`reasonable litigation conduct.” See PersonalWeb’s Opposition to Motion (“Opp’n”) at 1, 23, ECF
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`608.
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`A. The Strength of PersonalWeb’s Claims
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`1. Preclusion
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`Amazon/Twitch contend that PersonalWeb’s claims against Amazon S3 were “baseless”
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`from the start because they were clearly barred by the dismissed Texas Action and should have
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`never been brought. Motion at 9.
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`There is no question that Amazon prevailed on this issue. On March 13, 2019, the Court
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`partially granted Amazon’s motion holding that claim preclusion barred PersonalWeb’s claims
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`regarding acts of infringement occurring prior to the final judgment in the Texas action, and that the
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`Kessler doctrine barred PersonalWeb’s claims of infringement relating to S3 after the final judgment
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`in the Texas action. Kessler Order. Consequently, the Court dismissed with prejudice eight
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`customer cases which alleged infringement based on S3 only. ECF 411. On June 17, 2020, the
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`Federal Circuit affirmed. ECF 606.
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`Of course, the goal of 35 U.S.C. § 285 is “not to punish a party for losing.” Munchkin, Inc.
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`v. Luv n’ Care, Ltd., 960 F.3d 1373, 1378 (Fed. Cir. 2020). “In Octane Fitness, the Supreme Court
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`made clear that it is the ‘substantive strength of the party’s litigating position’ that is relevant to an
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`exceptional case determination, not the correctness or eventual success of that position.” SFA Sys.,
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`LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015) (quoting Octane Fitness, 572 U.S. at
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`554). “In determining whether a case is substantively weak, courts look for objective baselessness
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`or frivolousness[.]” PersonalWeb Techs. LLC v. EMC Corp., No. 5:13-CV-01358-EJD, 2020 WL
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`3639676, at *4 (N.D. Cal. July 6, 2020). “As to the substantive strength (or weakness) of a party’s
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`litigation position, courts in this district tend to award fees when a plaintiff persists with a clearly
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`untenable claim, or adduces no evidence in support of its position.” Location Based Servs., LLC v.
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`Niantic, Inc., No. 17-CV-04413 NC, 2018 WL 7569160, at *1 (N.D. Cal. Feb. 16, 2018).
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`Thus, the task before the Court is to determine whether PersonalWeb’s claims related to
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`Amazon S3 were objectively baseless or clearly untenable. PersonalWeb argues that its claims were
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`not baseless because (1) the precedential opinion of the Federal Circuit affirming this Court’s
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`Kessler Order, “illustrates that the reach of Kessler had not been a well-settled issue” and (2) it
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`relied on opinion of counsel that its claims were not precluded. Opp’n at 3-4.
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`a. Kessler Doctrine
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`PersonalWeb argues that it was reasonable to proceed with the customer actions, despite
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`resolution of the Texas Action, because the precedential opinion of the Federal Circuit affirming
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`this Court’s Kessler Order, “while adverse to PersonalWeb, illustrates that the reach of Kessler had
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`not been a well-settled issue” and “extended Kessler to situations where non-infringement had not
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`previously been adjudicated.” Opp’n at 4 (citing In re PersonalWeb Techs. LLC, 961 F.3d 1365
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`(Fed. Cir. 2020)).
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`The Court disagrees with PersonalWeb’s characterization of the Federal Circuit’s opinion.
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`While it is true that the Federal Circuit issued a precedential decision affirming this Court’s Kessler
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`Order, the opinion itself belies PersonalWeb’s contention that it had a reasonable belief that the
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`claims against S3 could be brought. Specifically, the Federal Circuit rejected PersonalWeb’s
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`assertion that the Kessler doctrine was essentially equivalent to issue preclusion – and did so not by
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`setting new precedent, but by reiterating its existing caselaw and explaining that the Kessler doctrine
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`precludes relitigation of claims that were brought or could have been brought in the prior action. In
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`re PersonalWeb, 961 F.3d at 1377 (citing Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1058-59
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`(Fed. Cir. 2014)). The Federal Circuit further explained:
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`Id. at 1377.
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`As Brain Life, [SpeedTrack, Inc. v. Office Depot, Inc., 791 F.3d 1317
`(Fed. Cir. 2015)], and [SimpleAir, Inc. v. Google LLC, 884 F.3d 1160
`(Fed. Cir. 2018)] illustrate, we have treated the Kessler doctrine as a
`close relative to claim preclusion, without its temporal limitation,
`rather than as an early version of non-mutual collateral estoppel, as
`PersonalWeb characterizes it.
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`Thus, contrary to PersonalWeb’s position, the Federal Circuit did not “extend” the reach of
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`the Kessler doctrine, but rejected PersonalWeb’s arguments based on established precedent noting
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`that “[t]he policy that drove the Supreme Court’s decision in Kessler would be ill-served by adopting
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`the rule proposed by PersonalWeb.” Id. at 1378.
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`The Court agrees with Amazon/Twitch that PersonalWeb’s claims related to S3 were clearly
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`barred based on existing Federal Circuit precedent on the Kessler doctrine and thus, were objectively
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`unreasonable when brought.
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`b. Claim Preclusion
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`Even if some ambiguously existed as to the application of the Kessler doctrine to
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`PersonalWeb’s claims against Amazon’s customers, the law of claim preclusion was straightforward
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`and well-settled when PersonalWeb filed this case. And PersonalWeb’s arguments against the
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`application of claim preclusion were not well founded.
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`First, PersonalWeb argued that because the Texas case involved only the multipart upload
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`feature of S3, it was free to accuse a different feature of S3 in this action. In re PersonalWeb, 961
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`F.3d at 1375. This position was factually and legally untenable. As the Federal Circuit explained,
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 10 of 35
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`“[c]ontrary to PersonalWeb’s assertions, PersonalWeb did not limit its infringement contentions in
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`the Texas case to S3’s multipart upload functionality” and to claim otherwise was “at odds with the
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`representations PersonalWeb made in the Texas case.” Id. at 1376; see also Kessler Order at 19
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`(“In sum, the Court finds that both the complaint and the infringement contentions in the Texas
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`Action indisputably support the Court’s conclusion that the Texas Action asserted infringement
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`against all of S3 and was not limited only to MPU.”). Moreover, “under well-settled principles of
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`claim preclusion, different arguments or assertions in support of liability do not all constitute
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`separate claims.” In re PersonalWeb Techs. LLC, 961 F.3d at 1375. In this case, “[a]t most,
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`PersonalWeb [showed] that it emphasized different facts in support of a different theory of
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`infringement in the prior case” and “that is not enough to avoid claim preclusion.” Id. at 1376.
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`Second, PersonalWeb argued that even if claim preclusion applied, it would preclude claims
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`based only on conduct before the date of the complaint filing in the Texas Action, and not through
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`final judgment. See ECF 334 at 15, see also Kevin Bermeister (“Bermeister Decl.”) ¶ 4, ECF 608-
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`1. The Court rejected this argument, which was inconsistent with Federal Circuit precedent
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`establishing that the principles of claim preclusion in patent cases “bar the assertion of infringement
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`of either the method or system claims to the extent the alleged acts of infringement predate the final
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`judgment in the [first litigation].” Brain Life, 746 F.3d at 1053; see also Kessler Order at 22-23.
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`Unsurprisingly, PersonalWeb elected not to pursue this argument on appeal. See In re PersonalWeb,
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`961 F.3d at 1374 n.3.
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`Third, PersonalWeb argued that there was no prior final judgment on the merits for purposes
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`of claim preclusion because the contracted stipulation of dismissal in the Texas Action contained a
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`provision limiting the dismissal’s preclusive effect. Kessler Order at 11. Again, “[t]hat [was]
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`plainly not so” because that provision “protects Amazon, not PersonalWeb, and therefore does not
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`in any way qualify the effect of the with-prejudice dismissal of PersonalWeb’s claims in the Texas
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`case.” In re PersonalWeb, 961 F.3d at 1378 n. 5; Kessler Order at 12 (“The stipulation is remarkably
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`and unequivocally one-sided in favor of Amazon.”).
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`Thus, PersonalWeb’s claims related to the use of Amazon S3 were objectively baseless
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`under the well-established principles of claim preclusion and PersonalWeb’s arguments to the
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 11 of 35
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`contrary were frivolous.
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`c. Reliance on Opinion of Counsel
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`PersonalWeb asserts that its counsel in the Texas Action, Mr. Roderick Dorman, had
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`analyzed claim preclusion and had delivered an opinion to Mr. Bermeister, PersonalWeb’s Non-
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`Executive Chairman, that “[a]ny act of infringement occurring after the filing of complaint is not
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`precluded by res judicata and can be asserted in a later proceeding.” Exh. 1 to Bermeister Decl.,
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`ECF 608-2 (email from Mr. Dorman to Mr. Bermeister and others, dated May 22, 2014)4; Opp’n at
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`3-4. Moreover, PersonalWeb claims that its “present legal counsel again conducted that analysis,
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`and concluded it unlikely that either claim preclusion or the Kessler doctrine would preclude the
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`claims.” Opp’n at 4 (citing Bermeister Decl. ¶ 4, ECF 608-1, Exh. 1 to Bermeister Decl., ECF 608-
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`2; Declaration of Michael A. Sherman (“Sherman Decl.”) ¶ 6, ECF 608-16; Declaration of Wesley
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`W. Monroe (“Monroe Decl.”) ¶ 25, ECF 608-6, Exh. 2 to Monroe Decl., ECF 608-6 (Mr. Monroe’s
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`memorandum titled “Potential Effects of prior Amazon Litigation and Dismissal with Prejudice,”
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`dated January 3, 2018)).5
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`Amazon/Twitch argue that the Court should give the submitted declarations “no weight”
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`because “[n]early all of the declarants have an interest in the outcome of this litigation and this
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`motion.” Amazon and Twitch’s Reply in Support of Motion (“Reply”) at 11, ECF 611-4. Mr.
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`Bermeister is an officer of PersonalWeb. Bermeister Decl. ¶¶ 1, 6. Mr. Monroe and Mr. Sherman,
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`PersonalWeb’s counsel of record in this action, are attorneys with Stubbs Alderton & Markiles,
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`LLP. Monroe Decl. ¶ 1 (of counsel); Sherman Decl. ¶ 1 (partner). Stubbs Alderton’s venture arm,
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`SAM Venture Partners, is a part-owner of PersonalWeb. See ECF 3 of Case No. 5:18-cv-05619-
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`BLF (Certificate of Interested Parties); Bermeister Dep. Tr. at 62:2-10, ECF 611-5; Gregorian Decl.
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`4 PersonalWeb asserts that it did not submit a declaration from Mr. Dorman in support of its
`opposition to this Motion because he recently passed away. Bermeister Decl. ¶ 4.
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` 5
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` By filing these declarations, PersonalWeb waived attorney-client communication and attorney
`work product privileges as to the contents of those declaration. Amazon/Twitch objected to the
`Court’s consideration of these declarations, arguing that PersonalWeb was withholding other
`“damaging” information by asserting privilege. Reply at 10-11. The Court held a case management
`conference regarding the parties’ purported discovery dispute. ECF 620. Following that
`conference, Amazon/Twitch withdrew their arguments on this issue. ECF 618.
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`Exh. 8. The Court notes that Amazon/Twitch do not contend that Mr. Dorman ever had an interest
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`in this case.
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`Although the persuasive effect of PersonalWeb’s submitted declarations may be somewhat
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`diminished due the identified bias the declarants bring to this case, the key consideration is that the
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`declarations promote the same baseless arguments PersonalWeb presented (and lost) in opposing
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`the Kessler Motion, which were inconsistent with Federal Circuit precedent and the record in the
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`Texas Action. Specifically, in its opposition to the Kessler Motion, PersonalWeb relied on the
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`declaration of its attorney, Lawrence Hadley, who had litigated the Texas Action. ECF 337. In
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`granting summary judgment against PersonalWeb, the Court found Mr. Hadley’s declaration
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`“uncorroborated and self-serving,” misrepresenting the scope of PersonalWeb’s own claims in the
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`Texas Action to avoid claim preclusion. Kessler Order at 17-18.
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`The declarations submitted with PersonalWeb’s opposition to this Motion do little to
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`ameliorate the problem caused by Mr. Hadley’s declaration that mischaracterized the Texas Action
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`he litigated or the baselessness of PersonalWeb’s arguments. First, Mr. Dorman’s email, dated
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`before judgment was entered in the Texas Action, discusses only the damages period the with-
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`prejudice dismissal of the Texas Action would affect and opines that “[a]ny act of infringement
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`occurring after the filing of complaint is not precluded by res judicata and can be asserted in a later
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`proceeding.” ECF 608-2. The Court rejected this argument in its Kessler Order and PersonalWeb
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`did not present it to the Federal Circuit. See Kessler Order at 22-23; In re PersonalWeb, 961 F.3d
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`at 1374 n. 3. Mr. Dorman’s email does not address the scope of claims against Amazon S3 in the
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`Texas Action and says nothing about the Kessler doctrine. To the extent PersonalWeb relied on a
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`4-year-old email that was not drafted for the purpose of this litigation, addresses only one aspect of
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`res judicata, and comes to an untenable legal conclusion contrary to the Federal Circuit precedent
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`before filing 85 lawsuits, that reliance was misplaced and unreasonable.
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`Second, Mr. Monroe’s January 3, 2018 memorandum concluded that it was “unlikely” that
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`claim preclusion would apply to PersonalWeb’s claims and that Kessler doctrine was “less likely
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`than not” to apply. ECF 608-8 at 2. But Mr. Monroe’s memorandum presents some of the same
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`arguments this Court and the Federal Circuit rejected because they were entirely without merit.
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`Case 5:18-md-02834-BLF Document 636 Filed 10/06/20 Page 13 of 35
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`In conclusion, although the Court does not find that PersonalWeb act