Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 1 of 49
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`1 MICHAEL A. SHERMAN (SBN 94783)
`masherman@stubbsalderton.com
`JEFFREY F. GERSH (SBN 87124)
`j gersh@stubbsalderton.com
`3 SANDEEP SETH (SBN 195914)
`sseth@ stubbsalderton.com
`4 WESLEY W. MONROE (SBN 149211)
`wmonroe@stubbsalderton.com
`5 STANLEY H. THOMPSON, JR. (SBN 198825)
`sthompson@stubbsalderton.com
`6 VIVIANA B. HEDRICK (SBN 239359)
`vhedrick@stubbsalderton.com
`7 STUBBS ALDERTON MARKTLES, LLP
`15260 Ventura Boulevard, 20Tri Floor
`8 Sherman Oaks, CA 91403
`Telephone:
`(818) 444-4500
`9 Facsimile:
`(818) 444-4520
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`J. DAVID HADDEN (CSB No. 176148)
`dhadden@fenwick.com
`SAINA S. SHAMILOV (CSB No. 215636)
`sshamilov@fenwick.com
`·
`TODD R. GREGORIAN (CSB No. 236096)
`tgre gorian@fenwick.com
`PHILLIP J. HAACK (CSB No. 262060)
`phaack@fenwick.com
`RA VI R. RAN GANA TH (CSB No.
`272981)
`rranganath@fenwick.com
`FENWICK & WEST LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 94041
`Telephone:
`650.988.8500
`Facsimile:
`650.938.5200
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`1 O Attorneys for PERSONAL WEB
`TECHNOLOGIES, LLC
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`Attorneys for Defendant AMAZON.COM,
`INC.
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`[ADDITIONAL ATTORNEYS LISTED
`ON SIGNATURE PAGE]
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`DAVID D. WIER
`david.wier@level3.com
`Assistant General Counsel
`1025 Eldorado Boulevard
`Broomfield, CO 80021
`14 Telephone:
`(720) 888-3539
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`Attorney for LEVEL 3
`COMMUNICATIONS, LLC
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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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`IN RE: PERSONAL WEB TECHNOLOGIES,
`LLC ET AL., PATENT LITIGATION
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`Case No. 5:18-md-02834-BLF
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`PRELIMINARY JOINT CASE
`MANAGEMENT STATEMENT
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`PRELIMINARY Jo!NT CASE MANAGEMENT
`STATEMENT
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`CASE No.: 5: 18-md-02834-BLF
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 2 of 49
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`Pursuant to Federal Rule of Civil Procedure 26(f), Civil Local Rules 16-9 and 16-10, Patent
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`2 Local Rule 2-1, the Standing Order for All Judges of the Northern District of California, this Court's
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`3 Standing Order Re Civil Cases, and the Court's Preliminary Case Management Order of June 18,
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`2018 (Dkt.19) 1, PersonalWeb and Level 3 Communications ("Patent Plaintiffs," "Declaratory
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`Judgment Counterclaimants," or "PersonalWeb"), Amazon.com, Inc. and Amazon Web Services
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`Inc. (collectively, "Amazon" or "Declaratory Judgment Plaintiffs"), and the defendants in the
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`actions filed by PersonalWeb represented by the undersigned counsel (collectively, "Website
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`8 Operator Defendants" or "website defendants") hereby respectfully submit this Joint Case
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`9 Management Statement.
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`A.
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`JURISDICTION AND SERVICE
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`Subject matter jurisdiction of Patent Plaintiffs' claims, Declaratory Judgment Plaintiffs'
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`claims, and Declaratory Judgment Counterclaimants' claims are based on 35 U.S.C. § 1 et seq., 28
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`13 U.S.C. §§ 1331 and 1338(a), and 28 U.S.C. §§ 2201 and 2202. No issues as to personal jurisdiction
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`over any of the parties or venue have been raised to date.
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`1.
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`Patent Plaintiffs' Statement
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`PersonalWeb has been diligently effectuating service of all website operators sued to date.
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`PersonalWeb has attempted and is continuing to attempt service on the following website
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`operator defendants, who remain to be served:
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`Amicus FTW, Inc.: Defendant's California agent for service of process cannot be located(cid:173)
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`now attempting to serve Delaware agent for service of process with new summons;
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`Fandor, Inc.: Named party needs to be amended prior to service due to afiiliate transactions,
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`which was not pe1missible given the stay;
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`MyFitnessPal, Inc.: Named party needs to be amended prior to service due to affiliate
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`transactions, which was not permissible given the stay;
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`Venmo, Inc.: Named party needs to be amended prior to service due to affiliate transactions,
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`which was not permissible given the stay; and
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`1 Unless otherwise specified, docket citations are to the master docket of MDL Case No. 5:18-
`md-02834-BLF.
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`PRELIMINARY JOINT CASE MANAGEMENT
`STATEMENT
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`CASE No.: 5: l 8-md-02834-BLF
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 3 of 49
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`Lesson Nine GMBH: Hague Convention service pending.
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`Service of My Wedding Match Ltd. and Yotpo Ltd. via the Hague Convention was
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`commenced in Canada on April 24, 2018 and in Israel on May 2, 2018, respectively, and is currently
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`4 pending. Personal Web sought waiver of service of Y otpo Ltd., in light of the fact that their counsel
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`is Fenwick & West, who represents Amazon and a multitude of Website Operator Defendants in
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`this MDL proceeding, but such waiver was refused. Rockethub, Inc., and ELEQT Group Ltd.,
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`though both served, have not appeared in the action.
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`Personal Web filed complaints against another 19 defendants on September 13 and 14, 2018.
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`2.
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`Amazon and Website Defendants' Statement
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`At least 14 customer parties sued by PersonalWeb have not yet appeared. No waiver or
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`proof of service has been filed for the following parties, and these cases should be dismissed for
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`failure to prosecute: (a) Amicus FTW, Inc.; Fandor, Inc.; MyFitnessPal, Inc.; Venmo, Inc.; and
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`13 Lesson Nine GMBH; (b) LIVE CHAT Software SA; and Vend Ltd.; and ( c) Y otpo, Inc.; and MWM
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`14 My Wedding Match Ltd. PersonalWeb admits that the parties in groups (a) and (c) have not yet
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`been served, and states that it will dismiss the cases against the parties in group (b ).
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`B.
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`FACTS
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`1.
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`Procedural Background
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`As of today, this multi district litigation includes 67 actions. Personal Web filed 66 of them,
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`asserting infringement of several U.S. patents by the Website Operator Defendants. Amazon filed
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`the remaining one, a declaratory judgment action seeking declarations that PersonalWeb is barred
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`from asserting its claims and the patents are not infringed.
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`In January 2018, Personal Web filed 55 patent infringement actions in six judicial districts.
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`On February 5, 2018, Amazon filed a declaratory judgment action against PersonalWeb
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`("the DJ Action") 2 seeking a declaration that PersonalWeb's infringement claims against Amazon
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`and the website defendants were barred by claim preclusion and the Kessler doctrine based on aa
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`prior case brought by PersonalWeb against Amazon, Case No. 6:11-cv-00658-LED (E.D. Tex.)
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`("the Texas Action"), or alternatively, that Amazon and the website defendants did not infringe any
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`2 5:18-cv-00767-BLF, N.D. Cal.
`PRELIMINARY JOINT CASE MANAGEMENT
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 4 of 49
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`claim of the patents-in-suit. Personal Web originally filed a motion to dismiss, which it withdrew
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`and counterclaimed in the declaratory judgment action. Id., Dkt. 62 at 12-13. Amazon answered,
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`asserting a defense of invalidity.
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`On February 22, 2018, Personal Web appealed to the Federal Circuit a decision of the PTAB
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`in inter partes review IPR2013-00596 involving one of the patents-in-suit, U.S. Patent 7,802,310
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`(the '310 patent). See Personal Web Technologies, LLCv. Apple, Inc. (CAFC-18-1599). The '310
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`7 Appeal is referenced because it is factored into the streamlining proposal made by PersonalWeb
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`8 herein.
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`On February 23, 2018, Amazon moved to enjoin PersonalWeb's claims against the website
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`1 O defendants while the DJ action is being resolved. See DJ Action, Dkt. 20. Between March 23,
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`2018 and May 9, 2018, 35 website operators moved to stay the actions against them until the
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`resolution of the DJ action. See, e.g., 5: 18-cv-00154-BLF, Dkt. 27.
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`On February 27, 2018, PersonalWeb filed a motion before the Judicial Panel on
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`14 Multidistrict Litigation ("JPML") to coordinate or consolidate its infringement actions with this
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`15 multidistrict proceeding. In re Persona/Web Technologies et al., MDL No. 2834, Dkt. 1.
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`On April 13, 2018, PersonalWeb moved to dismiss the DJ action. See DJ Action, Dkt. 43.
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`17 On May 11, 2018, PersonalWeb withdrew its motion to dismiss and on May 25, 2018 filed its
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`counterclaims against Amazon. See DJ Action, Dkt. 59, 62.
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`On June 6, 2018, the JPML granted PersonalWeb's motion and transferred all of
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`20 PersonalWeb's then-pending infringement actions to this Court. Id., Dkt. 134. In its June 18, 2018
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`21 Order, this Court ordered that "all tag-along actions are automatically made part of the centralized
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`proceedings upon filing in, removal to or transfer to this Court; rulings on common issues are
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`deemed tag-along actions without the need for separate motions and orders." Dkt. 19, p. 4. The
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`24 Court also ruled that the June 18 Order would apply to "related cases later filed in, removed to, or
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`transferred to this Court." Id.
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`In July and August 2018, PersonalWeb filed 18 "tag-along" patent infringement actions
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`across five judicial districts. Personal Web filed a Notice of Potential Tag-along Actions with the
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`JPML, identifying the 13 actions that originated outside the Northern District of California. In re
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`PRELIMINARY JOINT CASE MANAGEMENT
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 5 of 49
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`l Persona/Web Technologies et al., MDL No. 2834, Dkt. 139. PersonalWeb also filed a Notice of
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`2 Related Cases before this Court for the remaining five actions it filed in this district. Dkt. 38. On
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`3 August 15, 2018, the JPML conditionally transferred the 13 actions to this Court. Id.; Dkt. 140.
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`4 On August 23, 2018, the JPML's order was finalized. As of this filing, all of those actions have
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`been transfened. And on August 22, 2018, in response to PersonalWeb's Notice of Related Cases,
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`this Court consolidated the remaining five actions under this multidistrict litigation. Dkt. 42.
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`2.
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`PA TENT PLAINTIFFS' STATEMENT
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`On September 12 and 13, 2018 Personal Web filed additional 19 "tag-along" actions.
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`9 PersonalWeb anticipates filing a final tranche of approximately 40 additional "tag-along" actions
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`1 O by November 1, 2018.
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`a.
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`Background Facts.
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`PersonalWeb and Level 3 Communications allege that they jointly own patents that cover
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`certain methods and systems using content-based identifiers for instmcting how website data should
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`be cached at various points in the world wide web, including to reduce or eliminate a browser's use
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`15 of stale website content. Content based identifiers are unique identifiers generated by hash
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`algorithms, which are functions applied to data of arbitrary size that map the data to an
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`alphanumeric value of fixed size, whereby when the data is changed, so is the resulting
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`alphanumeric value.
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`In broad overview, the accused activity that PersonalWeb complains of is a specific fonn
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`20 of "cache busting" which may be described as follows:
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`Website operators have a need to control the distribution of their webpage(s) content to help
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`ensure that browsers only use the latest authorized content. This content includes a given
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`On one hand, the website operators want to be able to allow the browser to use previously
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`3 The webpage base file is a file, typically an HTML file, that provides the browser with the
`instructions to render the framework of the webpage. The asset files are files comprising of
`additional content necessary to render the webpage, such as pictures, text, audio or video and that
`are referenced in the webpage page files so that the browser may obtain them when rendering the
`webpage.
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`cached content when that content has not changed since the time it was cached, i.e., it is still the
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`latest authorized content. On the other hand, the website operators want to be able to instruct the
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`browsers to obtain newly authorized content when the cached content is no longer the latest
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`authorized content. In order to meet both needs in an optimal way, some of the defendant website
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`operators have used content-based identifiers as ETags for their webpage base files. 4 Others have
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`used content base identifiers as ETags for their asset files. Some have used both. Some of the
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`7 website operator defendants that use content-based identifiers as ETags for their asset files used S3
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`to generate the ETags and serve the asset files with the ETags, whereas others do not use S3. Some
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`generated ETags for and served some of their assets using S3 whereas others generated ETags for
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`1 O and served other assets outside of S3. These ETags are used in conjunction with various aspects of
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`the HTTP protocol to instruct the browser whether the cached version of a webpage is or is not still
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`the latest authorized content and, if not, which files it must acquire in order to have all the latest
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`authorized content for that webpage.
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`Some of these defendants have also used, in conjunction with content-based identifier
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`files that are inserted into the filenames for those asset files. These filenames (and hence
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`fingerprints) are in turn made part of the webpage base files so that a webpage base files ETag
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`value will change when an asset file's fingerprint changes due to a change in its underlying content.
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`To summarize, there are four categories of website operator activity involved in the
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`infringement of at least one PersonalWeb patent-in-suit. Specifically, these categories are:
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`1) generating and serving webpage base files and content-based ETags outside of S3;
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`2) generating and serving webpage asset files and content-based ETags outside of S3;
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`3) serving webpage asset files from S3 and generating ETags using S3;
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`4) generating content-based fingerprints for asset files and inserting them into the asset
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`file's filename outside of S3.
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`Patent Plaintiffs allege that website operators that engage in these four activity categories
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`4 A ETag is a parameter used within the HTTP protocol to effectuate certain request and response
`behavior between browsers and responding servers under specific conditions.
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`also infringe the '310, '442 and '420 patents. Patent Plaintiffs allege that website operators that
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`engage in a combination of activity categories 1 and 4 (webpage base file ETags plus fingerprints
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`inserted into the assets' filenames) also infringe the '544 patent.
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`A chart showing the respective activity categories engaged in by each defendant is attached
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`as Appendix A. Of the 81 website operator defendants, Personal Web alleges 64 to have engaged
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`in category 1 activity, 15 engaged in category 2 activity, 59 engaged in category 3 activity, 63
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`engaged in category 4 activity and 59 to have engaged in the combination of category 1 and
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`category 4 activity. Only 1 of the 62 website operator defendants sued between January and August
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`9 2018, and only 7 of the 19 website operator defendants sued on September 12 and 13, 2018 engaged
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`1 O only in category 3 (S3) activity in the relevant period. 5
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`b.
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`Proposal for streamlining proceedings.
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`During the meet and confer process preceding the upcoming CMC, counsel for participating
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`parties discussed methods of streamlining disposition of the cases that comprise this MDL. One
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`item discussed is that Amazon asserts that the website operator cases present the "same cause of
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`action" previously brought in the Texas action and that claim preclusion ( and the Kessler Doctrine)
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`thereby prevent prosecution of the website operator cases. Dispositive of this issue is whether the
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`transactional facts in this action are "essentially the same" as the ones in the Texas action,
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`SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 1167 (Fed. Cir. 2018), including whether the two
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`claims addressed the use of the "same [S3] technology in the same way. " SpeedTrack, Inc. v.
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`20 Office Depot, Inc., No. C 07-3602 PJH, 2014 U.S. Dist. LEXIS 62674, at *21 (N.D. Cal. May 6,
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`2014),aff'dsubnom, 791 F.3d 1317, 1325 (Fed. Cir. 2015).
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`Patent Plaintiffs' position is that the transactional facts are different, there was no prior final
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`adjudication on the merits, the website operators who host their asset files on Amazon S3 are not
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`24 merely "customers" for purposes of application of the Kessler doctrine, the website operators are
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`not parties/in privy with Amazon for purposes of claim preclusion, and the patents and claims are
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`26 different-all of these reasons precluding application of claim preclusion principles and/or the
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`5 The chart and the activity categorization set forth herein is based upon PersonalWeb's best
`understanding based upon the publicly available facts available to it.
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`l Kessler doctrine.
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`While a resolution of the claim preclusion/Kessler issue is not dispositive of the website
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`3 operator cases (other than potentially in 10 cases), a ruling in Amazon's favor would narrow the
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`infringement issues for substantive resolution in the website operator cases in which the website
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`5 operators host their asset files with S3.
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`Another item discussed was the '310 Apple IPR Appeal, which Patent Plaintiffs believe
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`7 will inform and may have bearing on claim construction, infringement and validity issues
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`8 notwithstanding that different claims are asserted here in the '310 patent ( and the other asserted
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`9 patents.) Briefing has been completed in that appeal, and Patent Plaintiffs' best sense is that oral
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`argument may be scheduled for later in 2018/early 2019, with a decision following in due course.
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`In light of this background, Patent Plaintiffs recommend the following streamlining
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`12 protocol: While the '310 Apple IPR Appeal remains pending, first addressing the Claim Preclusion
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`and Kessler Issues raised by Amazon by proceeding with the Amazon case with the limited
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`discovery and a briefing schedule set forth infra. Fact discovery will be initially limited to claim
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`preclusion/ Kessler issues. These issues include the prior accused use of S3 (i.e., multi-pat1 upload
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`set forth in the Texas Action infringement report and final infringement contentions) and the
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`17 website operator's interactions/transactions with S3 in the website operator cases, for at least a
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`representative sample of each website operator activity category, and the reasons for the dismissal
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`To promote efficiency, all website owners who wish to participate m the Claim
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`Preclusion/ Kessler issues agree to actually participate ( or waive their right to participate), and agree
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`to be bound by the Court's ruling. Moreover, PersonalWeb strongly believes that a single claim
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`construction should be engaged in for the four asserted patents with all parties who wish to
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`bound by the Court's claim construction.
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`Therefore, PersonalWeb proposes that claim construction take place after a ruling on Claim
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`believes all remaining issues should be addressed after the Claim Preclusion/Kess/er, after a
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 9 of 49
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`subsequent CMC to select lead cases and set timelines for patent cases for the exchange of
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`infringement and invalidity contentions, claim construction briefing and proceedings, infringement
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`and invalidity reports, damages reports, and dispositive motion briefing.
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`c.
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`Response to Amazon and Website Operators Statement.
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`Civil Local Rule l l-4(a) requires every undersigned attorney to comply with the standards
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`6 of professional conduct required of members of the State Bar of California and to comply with the
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`7 Local Rules of this Court, including by maintaining due respect and practicing with honesty, care
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`and decorum in discharging their obligation to the Court. Amazon and the Website Operator
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`9 Defendants should be required do so as well rather than continuing to make numerous ad hominem
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`1 O attacks as well as numerous incorrect and misleading statements.
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`(1)
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`Improper Ad Hominem Attacks
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`Amazon and the Website Operator Defendants engage in numerous indecorous ad hominem
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`attacks projecting onto PersonalWeb various nefarious motives. Such ad hominem attacks are
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`unnecessary, inc01Tect, improper and violate the rules of this Court. These are the not first of such
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`attacks, and Amazon the Website Operator Defendants should now stop making them.
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`(2)
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`Improper Statements Made With Insufficient Honesty &
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`Amazon and the Website Operator Defendants continue to assert facts they know to be
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`incorrect in an effort to conflate the website owner cases--most of which have little to do with S3
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`and some which have nothing to with S3--with the S3 declaratory judgement action which only
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`addresses one of the four categories of infringement.
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`Both Amazon and the Website Operator Defendants have known from the start what
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`Personal Web has only recently learned -- that their webpage base files and the ETags of such files
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`are always created and served outside of S3,
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`Specifically, as Amazon's counsel acknowledged to this Court on April 27, 2018:
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`" ... when a customer goes to the website, makes a request, typically
`the website will generate some dynamic content, the actual HTML
`that it sends to a specific customer. It sends it back, and that HTML
`has a bunch of embedded requests for these, the images and all of
`that."
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 10 of 49
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`CV-18-00767-BLF, April 27, 2018 Oral Argument, Transcript at 38:7-12.
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`Nonetheless, the Defendants continue to argue based upon the old and incorrect notion, that
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`3 S3 was involved in the ETag generation and service of webpage base files - a notion that
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`4 PersonalWeb has coITected in the later filed cases and in the proposed amendments. In their
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`5 Appendix C hereto and their chart in section B(3)(1), infra, Defendants highlight and still use
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`the old and incorrect allegations in making their arguments and comparisons, in particular
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`7 utilizing the old allegations they know to be incorrect (i.e., they know that the webpage base
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`files and their ETags are neither generated in S3 nor served by S3). Defendants' approach does
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`not meet their obligation to the Court or their responsibilities under the local rules.
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`Quotations attributable to PersonalWeb's counsel made to the JPML are equally flawed.
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`For example, Amazon's states that PersonalWeb's counsel admitted to the JPML that a resolution
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`12 of the DJ action "will resolve PersonalWeb's affirmative suits." To the contrary, PersonalWeb's
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`counsel stated: "If you are a user of infringing methods and devices and don't use Amazon's S3, it
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`doesn't resolve it at all," and that "a substantial amount" of the cases against the website operator
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`defendants would remain if only the DJ action went forward. MDL No. 2834, May 31, 2018 Oral
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`16 Argument, Tr. 7:6-8 and 8:15-18.
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`Nor does their statement that Personal Web has "agreed ... its cases against the website
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`defendants should be stayed while the DJ action proceeds." PersonalWeb has not made any such
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`agreement, as reflected in its statement of how this case should proceed. For one, such an approach
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`20 would mean that PersonalWeb thinks it would be good to exclude the Website Operator Defendants
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`from participating (or even having the opportunity to participate) in the claim construction
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`proceedings now, thereby necessitating a second round of claim construction proceedings later for
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`all non-S3 based infringement scenarios. Persona!Web does not so believe, and for that reason has
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`24 not and would not agree that Amazon's DJ Action take priority simply because one of the four
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`infringement scenarios involves S3. If what Amazon said was true, that would also mean that
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`26 PersonalWeb likewise thinks it would be good to exclude the Website Operator Defendants from
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`the resolution of Claim Preclusion/Kess/er issues now, resulting in the Website Operator
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`28 Defendants not being bound to the extent they use S3 in some of the infringement scenarios. This
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 11 of 49
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`is not PersonalWeb's position. PersonalWeb believes in seriatim proceedings on this issue would
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`be inefficient and that the Website Operator Defendants must be bound to such rulings and must at
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`least be given the opportunity to participate in such proceedings if they so choose.
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`Response to Amazon and Website Operators Proposal.
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`Amazon is an interloper here with regard to much of Personal Web's causes of action against
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`the Website Operator Defendants. Indeed, in only 10 cases (including just filed cases) would a
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`ruling in Amazon's favor on Claim Preclusion/Kessler entirely eliminate the case. The Website
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`8 Operator Defendants who uses a webpage base file ETag always generate and serve those ETags
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`9 outside of S3. The Website Operator Defendants who use content-based fingerprints in their asset
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`file filenames always generate and serve those fingerprints (in webpage base files) outside of S3.
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`11 And, given the relative ease with which content-based ETags may be generated, several Defendants
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`12 who use asset file ETags, but do not host their asset files on S3, choose to simply generate those
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`asset file ETags themselves. Because it is important for the Court to fully understand the four
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`categories of activity that are addressed in Appendix A in deciding how to proceed, PersonalWeb
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`15 would like to reserve 15-20 minutes at the hearing for a brief technology tutorial that builds upon
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`the one given by Amazon at the last hearing. This tutorial will help to illuminate the differences
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`between the four categories in Appendix A. Personal Web will provide its slides not later than close
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`The Website Operator Defendants and Amazon object to PersonalWeb's proposal as
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`"unworkable" for three reasons, each of which are easily dismissed. First, they assert that
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`PersonalWeb "proposes that the Court resolve these claims without PersonalWeb serving any
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`infringement contentions." Id. at 6. PersonalWeb's proposal does include serving exemplary
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`infringement contentions for each of the four activity categories prior to the briefing so that there
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`can be a clear decision by the Court as to whether PersonalWeb's cause/s of action against the
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`25 website owner is/are the same as the cause of action against Amazon dismissed in the Texas action.
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`Second, the website operators and Amazon object that "by requiring that this premature
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`determination be final and binding on all parties, it introduces the possibility that PersonalWeb will
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`characterize its complaints in one way to secure a ruling of no preclusion, and then introduce the
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 12 of 49
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`1 precluded infringement theories later." Leaving aside the fact that PersonalWeb would not benefit
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`from introducing "precluded infringement theories later" the issue is moot because PersonalWeb
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`3 proposes to file its Amended Complaints and Counterclaims that already state the basis of its causes
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`4 of action against the website operators, and because PersonalWeb proposes to provide exemplary
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`infringement contentions for each infringement activity category.
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`Lastly, the Defendants assert that "Federal Circuit law ... directs the Court to proceed with
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`the DJ action first in circumstances such as these." PersonalWeb disagrees with the fundamental
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`8 predicate advanced here that the issues raised in its causes of actions against the Website Operator
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`9 Defendants are identical to or even substantially overlap with the declaratory judgment action for
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`the reasons previously discussed.
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`3.
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`AMAZON AND WEBSITE DEFENDANTS' STATEMENT
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`Personal Web started its litigation campaign against Amazon's customers in January of this
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`year. See, e.g., Persona/Web Techs. v. Airbnb, Inc., No. 5:18-cv-00149-BLF (filed Jan. 8, 2018).
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`It filed 56 actions against Amazon's customers then. It subsequently filed 18 additional actions in
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`15 August. It filed 5 more cases yesterday and an additional 14 cases today. 6 And PersonalWeb is
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`promising to file 40 more actions after the Conference. The Federal Circuit mandates a procedure
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`for managing these types of vexatious litigation campaigns:
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`the customer cases must be stayed
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`pending a final resolution of the declaratory judgment action filed by the technology provider, here
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`19 Amazon. In re Google Inc., 588 F. App'x 988, 992 (Fed. Cir. 2014); In re Nintendo of Am., Inc.,
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`756 F.3d 1363, 1366 (Fed. Cir. 2014); Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir.
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`1990). Accordingly, the Court should (1) grant Amazon's pending motion for preliminary
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`injunction; and (2) stay all of the cases against the website defendants while Amazon's DJ Action
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`proceeds. How the DJ Action itself is managed and what schedule the parties follow in that action
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`is a separate question. The DJ Action should follow the schedule imposed by the Local Rules of
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`this district. Amazon does not oppose filing an early motion on its claim preclusion and Kessler
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`claims, but PersonalWeb's specific proposal on how to brief and resolve that motion is
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`6 Many of the defendants that Personal Web sued in August and none of the defendants it sued
`recently had an opportunity to participate in the discussions relating to this CMC Statement.
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`Case 5:18-md-02834-BLF Document 96 Filed 09/13/18 Page 13 of 49
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`1. The DJ Action must proceed first and all other cases must be stayed until
`the final resolution of the DJ Action.
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`Since it started its litigation campaign, at every point when confronted with a request to
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`explain the basis of its infringement allegations, PersonalWeb has changed its story. First, it
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`admitted that it sued Amazon's customers because they use Amazon's S3. Then, when confronted
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`with Amazon's preliminary injunction motion, it changed its position and claimed that it is accusing
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`the use of Ruby on Rails. When this Court expressed skepticism toward that explanation 7,
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`PersonalWeb devised its new "four categories" theory, despite having previously told the Court
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`and the JPML that all of its cases involve the same theory of infringement. But none of this c