1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`Case 5:18-md-02834-BLF Document 693 Filed 06/15/21 Page 1 of 7
`
`
`
`
`
`
`
`MICHAEL A. SHERMAN (SBN 94783)
`
`masherman@stubbsalderton.com
`JEFFREY F. GERSH (SBN 87124)
`
`jgersh@stubbsalderton.com
`WESLEY W. MONROE (SBN 149211)
`
`wmonroe@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
`(Prior to Post Judgment Debtor
`Collection Proceedings)
`
`
`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
`Case No.: 5:18-cv-00767-BLF
`
`Case No.: 5:18-cv-05619-BLF
`REPLY OF STUBBS ALDERTON &
`MARKILES AND THEODORE (“TED”)
`MACEIKO IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR
`PERSONALWEB TECHNOLOGIES, LLC
`DECLARATIONS OF MICHAEL A.
`SHERMAN AND JEFFREY F. GERSH
`
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICE, INC.,
`
` Plaintiffs,
`v.
`PERSONALWEB TECHNOLOGIES, LLC, et
`al.,
` Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC, et
`al.,
`
`
`
`
`v.
`
`TWITCH INTERACTIVE, INC.,
`
`
`
`Plaintiffs,
`
`Defendant.
`
`
`
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`
`
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`Case 5:18-md-02834-BLF Document 693 Filed 06/15/21 Page 2 of 7
`
`Amazon’s Opposition vilifies SAM by suggesting SAM’s Motion is part of a scheme to
`
`
`
`
`thwart Amazon’s enforcement of its judgment. Amazon levels these charges against SAM and two
`
`California-licensed attorneys (Messrs. Sherman and Gersh) who have spent their entire legal careers
`
`
`(over 40 years each) maintaining litigation practices of the highest integrity, with deservedly
`
`exemplary reputations. Amazon begins by asking the Court to deny SAM’s motion because it is
`
`“improper”, and then asserts that SAM seeks to withdraw for no other reason than to prejudice
`
`
`Amazon’s collection efforts. There is no evidence to support these inflammatory claims, and SAM
`
`denies such assertions. (Sherman Decl. ¶4).
`
`Amazon asserts this is SAM’s fifth filing with this Court seeking “identical” relief even
`
`though the Court allegedly “has already ruled” on this issue. (Oppo. 1:1-4.) This is an exaggeration
`
`and highly misleading. The Court is aware of its tentative views expressed on May 12, 2021, at the
`
`CMC, and that exchange was a direct contributor to multiple filings by which SAM did not seek
`
`identical relief. There is a difference between substituting a corporation in pro per versus a motion
`
`to withdraw filed by counsel. (Dkt. 688-4, Dkt. 679, 688-4 at 10, 16, 688, 685.) As set forth in the
`
`Motion, after the Court’s order it became necessary for SAM to file this Motion.
`
`SAM does not contend that PersonalWeb does not need counsel to appear before this Court
`(Oppo 1:4-6.) nor did SAM file this Motion to prejudice Amazon by obstructing its collection
`efforts. Instead, SAM was terminated and is incapable of acting on PersonalWeb’s behalf.
`PersonalWeb decided it wanted different counsel, Ronald Richards, Esq., to represent it in any post-
`judgment collection/discovery issues. (Dkt. 688-3, 671-9, 673-5.) That PersonalWeb chose different
`counsel to handle the post-judgment collection/discovery stage of this case is neither improper,
`impermissible nor unusual. The only issue that remains here is Amazon’s insistence that the Court
`prohibit SAM from withdrawing until Mr. Richards makes an appearance in this case. But SAM has
`no control over when Mr. Richards will enter an appearance. The rationale against self-
`representation by an entity is to protect the client when they have not attempted to secure counsel or
`do not have counsel at all, a fact that does not apply here given Mr. Richard’s engagement as
`
`
`1
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`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 693 Filed 06/15/21 Page 3 of 7
`
`
`
`PersonalWeb’s counsel. See Arch Ins. Co. v. Sierra Equip. Rental, Inc., No. 2:12-cv-00617-KJM-
`
`KJN, 2016 WL 829208, at *2-3 (E.D. Cal. Mar. 3, 2016) (denying motion to withdraw because
`
`counsel had “not indicated he has attempted to locate substitute counsel [for his client] or has
`
`attempted to advise Sierra of the potential consequences it would face in his absence.”). See
`
`Vedatech, Inc. v. St. Paul Fire & Marine Ins. Co., No. C 04-1249 VRW, 2008 WL 2790200, at *5 (N.D.
`
`Cal. July 17, 2008) (and other similar authorities relied on by PersonalWeb in its Motion) where courts
`
`have granted motions by counsel to withdraw, when the entity client had terminated its counsel even
`
`
`though the entity was not represented by licensed counsel. (Dkt. 688 at 5:9-16). (“For the
`uncooperative corporate client who has not been willing to bring in new counsel, granting of the
`withdrawal motion will put extreme pressure on it to obtain new counsel of record for should it fail
`to do so it risks forfeiture of its rights through nonrepresentation.”). Id.
`Amazon criticizes SAM’s lack of response on PersonalWeb’s behalf to Amazon’s discovery
`
`requests to PersonalWeb, ignoring that an attorney may not act on behalf of its client once it is
`
`discharged. Acting contrary would violate California Rule of Professional Conduct 1.16(a)(4) which
`
`requires that an attorney “shall withdraw from the representation” when discharged by its client.
`
`PersonalWeb, through Mr. Richards, advised SAM that it is “not to do anything post judgment” and
`
`that SAM was only retained for handling the “appeals” since he was retained to represent SAM in
`
`post-judgment collection/discovery proceedings. (Dkt. 688-1, 2 and 3) In further support of SAM
`
`having been discharged, PersonalWeb’s President, Michael Weiss confirmed
`
`in writing
`
`PersonalWeb’s consent to SAM’s substituting out. (Dkt. 679, 683, 683-1) SAM therefore did the
`
`only thing it could: it notified Amazon’s counsel in writing as soon as it was discharged and notified
`
`the Court as well. (Dkt. 671-2, 671-3, 671-4, 674, 688-1, and 688-4.) SAM has continued to forward
`
`all of Amazon’s discovery requests, Court orders and motion documents to PersonalWeb and Mr.
`
`Richards. (Gersh Decl., ¶ 6.)
`
`Amazon contends SAM’s representation of PersonalWeb in pending appeals is evidence that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`no “breakdown in the attorney-client relationship” occurred. (Oppo, 19:19-21.) This is beside the
`
`
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`2
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`Case 5:18-md-02834-BLF Document 693 Filed 06/15/21 Page 4 of 7
`
`
`
`point. SAM’s withdrawal motion is not predicated on that dynamic, nor is that required. CA. ST.
`
`RPC Rule 1.16(a). Relationship or engagement break-down is not a requirement for discharge. Id.
`
`PersonalWeb has the right to retain different counsel with expertise for particular issues of law.
`
`
`Wanting new or separate representation does not equate to nefarious behavior by SAM and SAM
`
`ought to not be forced into involuntary servitude in remaining as counsel once discharged. SAM has
`
`no issue with the Court allowing it to withdraw with logical and reasonable conditions attached, e.g.,
`
`
`that it must continue to forward post-judgment collection discovery to Mr. Richards and/or to
`
`PersonalWeb until Mr. Richard’s enters an appearance, or any other reasonable condition.
`
`A. Withdrawal Will Not Prejudice Amazon’s Enforcement of the Judgment.
`
`The withdrawal motion in WB Music cited and relied upon by Amazon (Oppo. at 5:4-12) is
`unlike the one at issue here. There is a major factual difference between (i) when an attorney “may
`withdraw” (CA. ST. RPC Rule 1.16(b)(4) and (5) “a lawyer may withdraw”) versus (ii) when an
`attorney “shall withdraw” (“shall withdraw” Id. at (a)(4)), and the difference is as plain as non-
`payment of fees or unreasonable difficulty (“may”) versus discharged as counsel (“shall”). In the
`latter, withdrawal is manifest because “[i]t is axiomatic that an attorney cannot continue to represent
`a client in a lawsuit in contravention of that client’s explicit instruction to the contrary.” Trulis v.
`Barton, 107 F.3d 685,693 (9th Cir. 1995), and other cases cited in Motion at 7. Unlike the defendant
`in WB Music where the court was left to speculate that “there may [be] an innocent explanation” for
`why counsel sought to withdraw in that case, but simultaneously appeared for that same client in an
`appeal, here the Court has the explanation: PersonalWeb discharged SAM and hired Mr. Richards as
`its counsel to assist it with the post judgment discovery/collection issues, while keeping SAM as its
`counsel for the pending appeals. This is legally permissible and a fact that SAM did not hide from
`the Court or Amazon’s counsel. (Dkt.688-1, 3.) Presumptively (and logically) Amazon’s interest in
`collecting on its judgment coupled with its claim of prejudice, ought to require some comparison
`between (a) what action it has taken to domesticate the judgment outside of California and seeking
`an order for a judgment debtor examination of PersonalWeb to issue where PersonalWeb might be
`
`
`
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`
`
`3
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`Case 5:18-md-02834-BLF Document 693 Filed 06/15/21 Page 5 of 7
`
`
`
`compelled under lawful state process in that other state to produce records at an oral examination,
`
`versus (b) delay that Amazon claims it is now experiencing with its more limited discovery
`
`procedures available in this Court (i.e. inability to obtain an order for a judgment debtor examination
`
`of PersonalWeb in California). Amazon presents no facts comparing any such efforts in any state it
`
`might domesticate to collect the judgment to the present circumstances in this Court, nor does it
`
`explain why it is prejudiced other than it cannot get the full discovery it seeks in California.
`
`Theoretically any action taken by a judgment debtor or any counsel (discharged or not) now or
`
`
`previously representing that judgment debtor could conceivably relate to some argument of
`“prejudice”. Here, Amazon presents no tie in that because of SAM’s withdrawal motion, therefore
`Amazon is now being substantially prejudiced in some tangible way – because no connection or
`prejudice exists.
`B. SAM Has Not Engaged in Sanctionable Conduct Nor Attempted to Obstruct
`Enforcement of Amazon’s Judgment.
`Amazon persists in impugning SAM attorneys by name-calling SAM’s Motion a “tactic” and
`seeking sanctions. Unlike the other authority that Amazon cites, Wyman v. High Times Prods., Inc.,
`No. 2:18-CV-02621-TLN-EFB, 2020 WL 6449236, at *2 (E.D. Cal. Nov. 3, 2020), there the court
`denied a motion to withdraw because the “may withdraw” in contrast to the “shall withdraw”
`language/facts were operative under California Rules of Professional Conduct 1.16(b)(4). In Wyman,
`the court further found that counsel “did not identify substitute counsel as required for corporate
`entities like Defendant” which was necessary because “[i]t is the duty of the trial court to see that the
`client is protected, so far as possible, from the consequences of an attorney’s abandonment.” Id. at
`*1-2. That is not the case here. It is evident that there is no abandonment taking place; rather,
`PersonalWeb has chosen other counsel to represent it in the further proceedings. In Wyman, the
`court found plaintiff would be prejudiced because withdrawal would delay plaintiff’s payment under
`a settlement agreement. That is also, not the case here. To the contrary, the record reveals Mr.
`Richards’ attempts to reach out to Amazon’s counsel to meet and confer, in an instance where
`presumably Amazon chose, strategically, to ignore him. (Dkt. 671-8, 671-9:4-6.)
`Amazon also alludes to wrongdoing by PersonalWeb’s creditors as a result of the creditors
`
`
`
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`
`
`4
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`Case 5:18-md-02834-BLF Document 693 Filed 06/15/21 Page 6 of 7
`
`
`
`having sought and obtained the appointment of a receiver over PersonalWeb’s assets to protect their
`
`secured interests in a state receivership action. PersonalWeb would be allowed to file bankruptcy if it
`
`so chose and that would not be wrongful or illegal. To be clear however, SAM does not represent
`
`anyone in connection the receivership action. (Gersh Decl., ¶ 5.)
`
`Amazon’s claim that SAM intentionally listed a false address on PersonalWeb’s notice of
`
`substitution is not true. (Gersh Decl., ¶ ¶ 2-3) It appears that Amazon attempted to serve
`
`PersonalWeb at a different mailbox number that is listed on the Texas Secretary of State’s website
`
`
`(which is incorrect) rather than the correct mailbox address that was provided by SAM on the
`Consent Order Granting Substitution.
`Amazon further claims that SAM advocated on PersonalWeb’s behalf on a meet and confer
`call for Amazon’s motion to compel post-judgment discovery, but SAM made clear that it was
`joining the call and filing its statement solely on SAM’s behalf. (Gersh Decl., ¶ 4.)
`Amazon relies on Wordtech Sys., Inc. v. Integrated Network Sols., Inc., No. CIV S-04-1971-
`MCE-EFB, 2009 WL 3126409, at *3-4 (E.D. Cal. Sept. 24, 2009) to support a sanction award. That
`case does not support Amazon’s request. There, the court issued an order to show cause to
`withdrawing counsel because he “never informed the court or plaintiff that he only represented INSC
`in a limited capacity.” Id. at *4. In contrast, SAM informed Amazon’s counsel numerous times that
`it did not represent PersonalWeb in post-judgment collection proceedings on April 22, 2021 (Dkt.
`671-2), April 23, 2012 (Dkt. 671-3), and again April 27, 2021 (Dkt. 671-4) and informed the Court
`on May 12, 2021 (Dkt. 674), and again on May 13, 2021 (Dkt. 688-4) of that fact.
`
`Dated: June 15, 2021
`
`STUBBS, ALDERTON & MARKILES, LLP
`
`
`
`By: /s/ Michael A. Sherman
`Michael A. Sherman
`Jeffrey F. Gersh
`Wesley W. Monroe
`Viviana Boero Hedrick
`Sandeep Seth
`Attorneys for PERSONALWEB
`TECHNOLOGIES, LLC
`(Prior to Post Judgment Debtor
`Collection Proceedings)
`
`
`
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`
`
`5
`
`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 693 Filed 06/15/21 Page 7 of 7
`
`
`
`Dated: June 15, 2021 MACEIKO IP
`
`
`
`
`
`
`
`
`
`By: /s/ Theodore S. Maceiko
`Theodore S. Maceiko (SBN 150211)
`ted@maceikoip.com
`MACEIKO IP
`420 2nd Street
`Manhattan Beach, California 90266
`Telephone: (310) 545-3311
`Facsimile: (310) 545-3344
`Attorneys for PERSONALWEB
`TECHNOLOGIES, LLC,
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`REPLY IN SUPPORT OF MOTION TO
`WITHDRAW AS COUNSEL FOR PERSONALWEB
`
`
`
`
`
`6
`
`CASE NO: 5:18-md-02834-BLF
`CASE NO: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`
`