`Paper No. 14
`Filed: September 5, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`PAYPAL, INC.
`UPWORK GLOBAL INC.
`SHOPIFY, INC.
`SHOPIFY (USA), INC.
`STRAVA, INC.
`VALASSIS COMMUNICATIONS, INC.
`RETAILMENOT, INC.
`DOLLAR SHAVE CLUB, INC.
`Petitioners
`
`v.
`
`PERSONALWEB TECHNOLOGIES LLC
`LEVEL 3 COMMUNICATIONS, LLC
`Patent Owners
`
`____________________
`
`
`Case IPR2019-01111
`Patent No. 7,802,310
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`____________________
`
`
`PATENT OWNERS’ PRELIMINARY RESPONSE
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`IPR2019-01111
`Patent No. 7,802,310
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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`II.
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`BACKGROUND ............................................................................................. 1
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`A.
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`B.
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`C.
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`D.
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`The ’310 Patent ..................................................................................... 1
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`The Challenged Claims ......................................................................... 6
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`Prior Post-Grant Proceedings ................................................................ 7
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`The Cited References .......................................................................... 10
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`1.
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`2.
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`Francisco ................................................................................... 10
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`Grube ......................................................................................... 14
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`III. REVIEW SHOULD NOT BE INSTITUTED BECAUSE THE
`PETITION IS TIME-BARRED .................................................................... 15
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`A.
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`B.
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`C.
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`D.
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`PersonalWeb Sued Amazon Years Ago .............................................. 15
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`Amazon Is an RPI and Is in Privity with Its Customers—
`Including Petitioners............................................................................ 17
`
`The District Court Concluded that Amazon and Its Customers
`Are in Privity—Just As Amazon Argued ............................................ 18
`
`The District Court’s Privity Determination Comports with
`Binding Precedent and PTAB Practice ............................................... 22
`
`E.
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`The District Court’s Analysis Confirms that Amazon Is an RPI ........ 23
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`IV. THE BOARD SHOULD DISCRETIONARILY DENY
`INSTITUTION UNDER § 314 ..................................................................... 26
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`V.
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`CLAIM CONSTRUCTION .......................................................................... 29
`
`A.
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`B.
`
`C.
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`Legal Standard ..................................................................................... 29
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`Response to Petitioners’ Proposed Constructions ............................... 29
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`Patent Owners’ Proposed Constructions ............................................. 30
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`1.
`
`“message digest function or a hash function” (claims 20,
`69) ............................................................................................. 30
`
`a.
`
`b.
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`Patent Owners’ Construction Is Correct ......................... 31
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`Petitioners’ Implicit Construction Is Incorrect ............... 36
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`IPR2019-01111
`Patent No. 7,802,310
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`VI. REVIEW SHOULD NOT BE INSTITUTED ON GROUND 1 ................... 37
`
`A.
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`Petitioners Have Not Shown that All Elements of Claims 20
`and 69 Are Present in, or Obvious Over, Francisco ............................ 38
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`“Message Digest Function or a Hash Function.” ...................... 38
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`Allowing Access Based on a “Content-Dependent Name”
`Computed from a “Message Digest Function or Hash
`Function” ................................................................................... 44
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`“Wherein Two Identical Data Items Will Have the Same
`Content-Dependent Name” ....................................................... 45
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`“Controlling Distribution of Content From a First
`Computer to at Least One Other Computer” (Claim 20) .......... 46
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`“Permitting the Content to be Provided to or Accessed by
`the at Least One Other Computer” (Claim 20) ......................... 48
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`Limitation 69(b)(i) (Claim 69) .................................................. 49
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`Limitation 69(b)(ii) (Claim 69) ................................................. 53
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`B.
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`Petitioners Have Not Established a Logical Reason for
`Modifying Francisco, or a Reasonable Expectation of Success
`in Doing So .......................................................................................... 54
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`VII. REVIEW SHOULD NOT BE INSTITUTED ON GROUND 2 ................... 57
`
`A.
`
`B.
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`The Alleged Combination of Grube and Francisco Does Not
`Disclose All Elements of Any Challenged Claim ............................... 57
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`Petitioners Have Not Established a Logical Reason for
`Combining Francisco and Grube, or a Reasonable Expectation
`of Success in Doing So ........................................................................ 61
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`VIII. CONCLUSION .............................................................................................. 64
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`IPR2019-01111
`Patent No. 7,802,310
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`LISTING OF EXHIBITS
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`EX. #
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`Exhibit Description
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`2001 Declaration of Lawrence M. Hadley in Support of Patent Owner’s
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`Motion for Pro Hac Vice Admission
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`2002 Declaration of Samuel H. Russ, Ph.D.
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`2003 Request for Ex Parte Reexamination in Rexam No. 90/014,368
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`2004 U.S. Pat. No. 7,802,310
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`2005 Markman decision from In re PersonalWeb Technologies, LLC et al.
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`Patent Litigation, 18-md-02834, Dkt. No. 485 (N.D. Cal. 2019)
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`2006 10/26/2017 Samuel Russ Declaration, submitted by Patent Owners in
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`Reexamination Control No. 90/013,487 of U.S. Pat. No. 6,415,280
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`2007
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`July 22, 2019 Appeal Brief in Reexamination Control No. 90/013,764
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`2008 Complaint from PersonalWeb Technologies LLC v. Amazon Web
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`Services LLC et al, 6-11-cv-00658 (E.D. Tex.)
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`2009 Order of Dismissal from PersonalWeb Technologies LLC v. Amazon
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`Web Services LLC et al, 6-11-cv-00658 (E.D. Tex.)
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`2010 Complaint from PersonalWeb Technologies, LLC et al. v. Venmo, Inc.,
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`3:18-cv-177 (N.D. Cal.)
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`2011 Complaint from Amazon.com, Inc. et al. v. PersonalWeb Technologies,
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`LLC et al., 5-18-cv-00767 (N.D. Cal.)
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`2012 Order Granting in Part and Denying in Part Amazon’s Motion for
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`Summary Judgment from In re: PersonalWeb Technologies, LLC et al.
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`Patent Litigation, 5:18-md-02834-BLF, Dkt. 394 (N.D. Cal. 3/13/2019)
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`2013 Stipulation Re Remaining Customer Cases from In re: PersonalWeb
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`Technologies, LLC et al., Patent Litigation, Case Nos. 5:18-md-02834-
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`BLF and 5:18-cv-00767-BLF, Dkt. 417 (N.D. Cal. April 26, 2019)
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`iii
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`IPR2019-01111
`Patent No. 7,802,310
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`2014 Amazon’s Motion for Summary Judgment from In re: PersonalWeb
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`Technologies, LLC et al., Patent Litigation, Case Nos. 5:18-md-02834-
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`BLF and 5:18-cv-00767-BLF, Dkt. 315, (N.D. Cal. November 28, 2018)
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`2015 Public excerpts from Amazon’s Interrogatory Responses from In re:
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`PersonalWeb Technologies, LLC et al., Patent Litigation, Case Nos.
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`5:18-md-02834-BLF and 5:18-cv-00767-BLF, (N.D. Cal. November 1,
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`2018)
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`2016 Certificate of Service for Dollar Shave Club, Inc.
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`IPR2019-01111
`Patent No. 7,802,310
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`I.
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`INTRODUCTION
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`U.S. Patent No. 7,802,310 (“the ’310 Patent”) belongs to a patent family that
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`revolutionized the field of computer file storage, by pioneering the concept of
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`content-based “True Names.” Petitioners assert that claims 20 and 69 of the ’310
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`Patent are obvious over Francisco. Pet. at 21-46. Petitioners further assert that
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`these claims are obvious over the combination of Francisco and Grube. Id. at 40-
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`49.
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`The Petition is time-barred under 35 U.S.C. § 315(b). The Board should also
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`discretionarily deny review under 35 U.S.C. § 314.
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`The Petition should also be denied on the merits. Seven separate elements of
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`the claims are neither disclosed in, nor obvious over, Francisco or Grube, nor any
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`alleged combination thereof. Moreover, Petitioners have failed to prove that a
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`person of ordinary skill in the art (“POSITA”) would have had a logical rationale
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`to modify Francisco, or to combine it with Grube in the way alleged.
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`Petitioners have not shown a reasonable likelihood of success on either
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`ground of the Petition. Thus, the Petition must be denied.
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`II. BACKGROUND
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`A. The ’310 Patent
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`The ’310 Patent is part of the True Name family of patents. These patents
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`1
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`teach a novel way of identifying and locating data in any computer system. On a
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`single computer, or within a small network, the task is relatively easy: Simply
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`name the data or file, and identify it by that name and its location. Early operating
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`systems facilitated this approach with standardized conventions for naming files,
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`creating folders, and designating storage devices, which allowed the system to
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`locate data. Ex. 1001, 1:50-2:5. A familiar example might look like this:
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`c:\mydocuments\Budget_Forecast_1993.doc.
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`But as networks grew, particularly with the development of the Internet,
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`conventional naming and locating systems could not keep pace. As systems
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`evolved, files could be divided and stored across different devices in dispersed
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`locations. While offering benefits, this also created a problem: Different users
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`could give identical names to different files or parts of files—or unknowingly give
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`different names to identical files. Existing systems had no means to ensure that
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`identical names referred to the same data, and conversely, that different names
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`referred to different data. Lachman and Farber, the inventors of the True Name
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`patents, realized that, if these limitations were not surmounted, it would become
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`infeasible to accurately identify, locate, retrieve, de-duplicate, replicate, and
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`synchronize data within advanced systems. Ex. 1001, 2:26-3:29.
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`Lachman and Farber found a solution: They developed a new system that
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`replaced conventional naming with “substantially unique,” content-based
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`identifiers. Id., 3:30-48. If the item’s content were unique, its identifier would be
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`unique. This approach could assign substantially-unique identifiers to an endless
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`variety of “data items”—“the contents of a file, a portion of a file, a page in
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`memory, an object in an object-oriented program, a digital message, a digital
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`scanned image, a part of a video or audio signal, or any other entity which can be
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`represented by a sequence of bits.” Id., 2:16-25. Applied system-wide, this
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`approach, with pinpoint precision, would permit any data item to be stored,
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`located, managed, synchronized, and accessed using its content-based identifier.
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`But how could a system generate a “substantially-unique identifier” for any
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`size data item, system-wide? For this, Lachman and Farber turned to cryptography.
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`Cryptographic hash functions, including MD4, MD5, and SHA, had been used in
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`computer systems to verify the integrity of retrieved data—a so-called
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`“checksum.” Id., 12:21-51. Lachman and Farber recognized that these same hash
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`functions could be devoted to a vital new purpose: If a cryptographic hash function
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`were applied to a sequence of bits (a “data item”), it would produce a unique value
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`that: (1) is “virtually guarantee[d]” to produce a different value if the data item is
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`changed; (2) is “computationally difficult” to reproduce with a different sequence
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`of bits; and (3) cannot be used to recreate the original sequence of bits. Id., 12:21-
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`3
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`51. These cryptographic hash functions can assign any unique sequence of bits—
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`based on content alone—a substantially-unique identifier. Lachman and Farber
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`estimated that the odds of these hash functions producing the same identifier for
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`two different sequences of bits (i.e., the “probability of collision”) was at least 1 in
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`229. Id., 12:58-13:8. With such a low probability of collision, Lachman and Farber
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`dubbed their content-based identifier a “True Name.” Id., 12:21-51.
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`With this insight, Lachman and Farber crafted novel ways for using True
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`Names to manage the universe of data in a network, no matter its complexity. They
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`conceived various data structures, including a “Local Directory Extension Table”
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`(LDE) and “True File Registry” (TFR), for tracking and managing information
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`about every data item, and associating each True Name with any user-provided
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`name, location, dependency, and migration information:
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`Id., Fig. 1(b); 8:27-43. These data structures permitted a key-map organization,
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`allowing rapid determinations of whether a particular data item exists in a system
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`and, if so, its location everywhere on that system. This functionality was simply
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`not possible using the conventional art.
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`The ’310 Patent envisions and allows for all data operations within the
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`system to be managed using the True Name and associated information. This
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`includes assimilating, identifying, and accessing all data items in the system by
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`True Name, regardless of their actual storage location and user-designated name.
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`In one embodiment, the ’310 Patent uses True Names to “track” data items
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`“for licensing purposes.” Id., 31:3-32. In this embodiment, the True Name is used
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`to “ensure[] that licensed files are not used by unauthorized parties.” Id. The ’310
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`Patent discloses two different types of “licensing” functions: (i) “active”
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`monitoring; and (ii) “passive” monitoring. Id. In “active” monitoring, the ’310
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`Patent uses the True Name to “refus[e] to provide access to a file without
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`authorization.” Id. The challenged claims are directed to “active” monitoring.
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`To perform “active” monitoring, the ’310 Patent creates a “license table
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`136.” Id., 11:33-45. The table includes a number of “record[s] 150.” Id. Each
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`record “records a relationship between a licensable data item and the user[s]
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`licensed to have access to it.” Id. An example is shown in Fig. 9, below:
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`5
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`In each record, the “True Name” entry lists the True Name of “a data item
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`subject to license validation.” Id., 11:40-45. For instance, if the data item is a
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`“software product” (e.g., Microsoft Word), the license table could list the True
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`Name of the “main executable image” (WINWORD.exe) of the program. Id.,
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`31:17-23. Meanwhile, the “licensee” entry lists the “identity of [each] user
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`authorized to have access to this [data item].” Id., 11:40-45.
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`In operation, a user may try to access a file on the network. Id., 31:3-32.
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`When that happens, the system checks the True Name of the file, and looks it up in
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`the license table 136. Id., 11:33-45. If the True Name appears in the license table,
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`the file is subject to licensing restrictions. Id. In that case, the system looks up the
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`record for the True Name in the license table, then looks up the “licensees” for that
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`True Name. Id. If the user is one of the “licensees,” the system allows the user to
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`access the file. Id., 31:4-31. If not, the system disallows access. Id.
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`B.
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`The Challenged Claims
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`Both challenged claims are independent claims. Claim 20 recites a
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`“computer-implemented method operable in a system which includes a plurality of
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`computers.” Claim 69 recites a “system operable in a network of computers.”
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`Both claims recite using a “content-dependent name” to control access to a
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`“data item.” In both claims, the content-dependent name is computed by applying a
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`“message digest function or a hash function” to the data item. In both claims, a
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`“first computer[/device]” receives a “request” from a “second[/other]
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`computer[/device].” The “request” includes the “content-dependent name” of the
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`data item. In both claims, the first computer/device uses the content-dependent
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`name to determine whether the second computer/device is authorized to access the
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`data item. If the first computer/device determines that the second computer/device
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`is authorized, it permits it to access the data item; otherwise, it does not.
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`C.
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`Prior Post-Grant Proceedings
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`The ’310 Patent has been subject to extensive post-grant proceedings,
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`including three separate IPRs, a reexamination, and two Federal Circuit appeals.
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`First, on 9/18/2013, Apple filed a Petition for Inter Partes Review of claims
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`24, 32, 70, 81, 82 and 86. IPR2013-00596, Paper 1. Apple’s Petition asserted that
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`the challenged claims were anticipated by and/or obvious over five references:
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`Browne, Stefik, Woodhill, Langer, and Farber. Id. at 11. Apple’s Petition was
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`instituted on 3/26/2014, on one ground: obviousness over Woodhill and Stefik.
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`IPR2013-00596, Paper 9 at 13-21. On 3/25/2015, the Board issued a Final Written
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`Decision, finding all challenged claims obvious over Woodhill and Stefik.
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`IPR2013-00596, Paper 33. Patent Owners appealed. Id., Paper 36.
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`On 2/14/2017, the Federal Circuit issued its decision in the Appeal.
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`PersonalWeb Techs., LLC. v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017)
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`(“PersonalWeb I”). The Federal Circuit vacated the obviousness determination,
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`because the Board “did not adequately support its findings.” Id. at 989. The
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`Federal Circuit remanded for further proceedings. Id. at 994.
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`On 2/7/2018, the Board issued its decision after the remand. IPR2013-
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`00596, Paper 44. Again, the Board found all challenged claims obvious over
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`Woodhill and Stefik. Id. at 12-28. Again, Patent Owners appealed. Id., Paper 45.
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`On 3/8/2019, the Federal Circuit issued its decision in the second appeal.
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`PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376 (Fed. Cir. 2019)
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`(“PersonalWeb II”). Once again, the Federal Circuit found for Patent Owners. Id.
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`The Federal Circuit found that neither of the cited references disclosed the claimed
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`feature of “causing the content-dependent name of the particular data item to be
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`compared to a plurality of values.” Id. at 1381-83. Since that element, or an
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`analogous element, was present in all challenged claims, there was no prima facie
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`case of obviousness against any claim. Id. Therefore, the Federal Circuit reversed
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`the Board’s decision, concluding the IPR in Patent Owners’ favor. Id.
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`Second, while IPR2013-00596 was pending, another Petitioner—
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`Rackspace—filed a petition for Inter Partes Review of claims 1, 2, 5-8, 10-12, 14,
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`16-19, 24, 29, 32, 70, 81, 82 and 86. IPR2014-00062, Paper 1 at 4. The Rackspace
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`Petition asserted obviousness over five references: Kinetech, Brunk, Francisco1,
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`Woodhill, and Langer. Id. The Petition was instituted on 4/15/2014. IPR2014-
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`00062, Paper 9.
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`After institution, Patent Owners and Rackspace executed a settlement
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`agreement, settling IPR2014-00062 and several other IPRs. IPR2014-00062, Paper
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`29 at 1. Pursuant to that agreement, on 10/16/2014, the parties filed a Joint Motion
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`to Terminate IPR2014-00062. Id. That Motion was granted, and IPR2014-00062
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`was terminated, on 10/28/2014. IPR2014-00062, Paper 32.
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`Third, while the other two IPRs were pending, yet another Petitioner—
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`Google—filed a Petition for Inter Partes Review of the ’310 Patent. IPR2014-
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`00978, Paper 1. Google asked the Board to initiate review on the “identical
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`grounds as those asserted by petitioners Rackspace … in IPR2014-00062.” Id. at 1.
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`On 10/30/2014, the Board denied institution of Google’s Petition, because it was
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`barred by 35 U.S.C. § 315(b), and Google did not timely file a motion to join its
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`Petition with IPR2014-00062. IPR2014-00978, Paper 11.
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`1 This is the same “Francisco” reference asserted in the present Petition.
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`Thus, the ’310 patent has already been subjected to three IPRs.
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`Moreover, on 8/20/2019, Apple filed a request for Ex Parte Reexamination
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`of the ’310 patent. Ex. 2003. The Request challenges claims 70, 81, 82 and 86. Id.
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`at 1. In the Request, Apple argues that the challenged claims are obvious over
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`Browne in view of Langer. Id. at 23-48. The Examiner has not yet decided whether
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`to grant Apple’s Request.
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`D. The Cited References
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`1.
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`Francisco
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`Francisco describes a “method of maintaining software program integrity
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`and security.” Ex. 1003, Abstract. Francisco discloses two different techniques to
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`do so: (i) an “authentication” technique, which uses “electronic identification
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`indicia” (“EID”) to determine whether a copy of a program “differs in some
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`respects from the base or true program;” (id., 3:5-16); and (ii) an “authorization”
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`technique, which determines whether a user is authorized to use the program, and
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`if so, allows the user to access the program. Id., 3:20-36. Francisco’s entire written
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`disclosure takes up less than three columns. Id., 1:1-3:35.
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`In its “authentication” technique, Francisco generates EIDs from the
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`contents of a “true” or “base” program. Id., 2:11-50. Francisco discloses one, and
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`only one, algorithm to generate EIDs:
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`[T]he total number of ones and zeroes in the binary
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`coded input Program A could be totalled; the total
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`number of “ones” multiplied by an arbitrary number, e.g.
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`22; the product of such multiplication could then be
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`divided by the number of zeros in the binary coded
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`program; and the remainder thereof be modified by
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`addition to (or subtraction therefrom) of an arbitrary
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`number, i.e. 7.
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`Id., 2:29-45. According to Francisco, “[t]he resulting electronic numerical indicia
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`would then, in all probability, be selectively unique for the particular program.” Id.
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`Francisco is mistaken. Francisco’s algorithm can be summarized as follows:
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`1. Count all 1s in Program A; store result as C1(A).
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`2. Count all 0s in Program A; store result as C0(A).
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`3. Compute EID(A) = rem((X*C1(A))/C0(A)) ± Y
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`a. where, e.g., X = 22, Y = 7, “rem()” = remainder function.
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`As seen above, the only inputs used to calculate EID(A) are : (i) C1(A), the
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`count of the “1s” in A; (ii) C0(A), the count of the “0s” in A; (iii) X, an arbitrary
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`constant; and (iv) Y, an arbitrary constant. Ex. 2002, ¶¶ 22-24
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`Critically, the counts of the “1s” and “0s” in a file are unaffected by
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`reordering the file’s contents. Id., ¶¶ 25-26. Thus, any two files with the same
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`contents, in a different order, will produce the exact same EID. Id. That will
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`happen even though any two such files are clearly different files. Id.
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`Thus, contrary to what Francisco says, its EID is not “selectively unique for
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`a particular program.” Rather, it is trivial to find a large number of files that will
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`produce the same EID as Program A, simply by reordering its contents. Id.
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`Once Francisco has generated the EID from a “true” copy of a program, it
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`adds it to the “EID library 14.” Ex. 1003, 2:45-50. Francisco calls these “true”
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`EIDs the “first electronic identification indicia.” Id.
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`Subsequently, when a user wishes to run a program—e.g., “Program S” —
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`Francisco passes Program S to an “electronic indicia generator 32,” which is a
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`“section of a general purpose digital computer.” Id., 2:10-28, 2:65-3:16. The
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`“indicia generator” applies the above-described algorithm to Program S, generating
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`an EID for Program S (“EID-Program S.”) Id., 2:65-3:16. Francisco compares
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`EID-Program S with the EID stored in the library for the “base” version of
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`Program S. Id. If the EIDs match, Francisco concludes that Program S is
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`“authentic” (i.e., has not been modified). Id., 3:17-20. If they do not match,
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`Francisco concludes that “the requested program differs in some respects from the
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`base or true program.” Id., 3:8-16.
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`If Francisco determines that the EID of Program S matches the “true” EID, it
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`proceeds to the second step, which asks whether the user is authorized to run
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`Program S. Id., 3:16-36. To do this, Francisco maintains an “authorized user
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`profile library.” Id., 2:51-64. The user profile library stores a “correlative relation”
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`between the “base” EID of a program and the “electronic identification of all
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`authorized users thereof.” Id. As Petitioners admit, “Francisco does not specify the
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`structure of the authorized user profile library.” Pet. at 36.
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`However the “authorized user library” is structured, Francisco uses it as
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`follows: First, Francisco introduces the “electronic identification of the user
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`making the request” to a “second comparator 40.” Ex. 1003, 3:16-36. The “second
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`comparator” is “the automatic logic unit of a general purpose digital computer.” Id.
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`Francisco also introduces the EID generated from the user’s copy of the program to
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`the comparator. Id. Finally, Francisco introduces the “authorized user profile” from
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`the “authorized user library” to the comparator. Id.
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`Once all of these values are introduced to the comparator, Francisco
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`compares them. Id. If they “match,” then “the requested program [is] released for
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`use by the particular identified user.” Id. If they do not match, then “the requested
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`program will not be released for use.” Id.
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`Francisco does not disclose, or render obvious, several elements recited in
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`the challenged claims. Accordingly, Ground 1 must be denied.
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`2. Grube
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`Grube discloses a system for detecting unauthorized uses of programs in a
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`computer network. Grube uses a “monitoring computer 115” to monitor the
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`communications of “processing devices” in the network. Ex. 1004, 3:25-60. The
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`monitoring computer maintains “database tables,” shown in Fig. 2. Id., 3:60-4:59.
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`These tables identify each processing device by a “device ID code,” or identify
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`groups of processing devices by a “group ID code.” Id. For each device ID or
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`group ID, the table lists “Application Serial Nos.” of the programs the device or
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`group is authorized to use. Id. The “serial number” is typically “the application
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`manufacturer’s unique serial number.” Id., 5:64-6:3.
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`When a computer sends a communication over the network, the monitoring
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`computer scans it to see whether it contains content generated by any of the
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`programs listed in the databases. Id., 5:45-6:33. If it does, the monitoring computer
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`checks the databases to see whether the sending computer is authorized to use that
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`program. Id. If so, the system does nothing. Id. If not, the monitoring computer
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`“generate[s] a report (405) to indicate that at least one processing device … is
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`using an unauthorized … software application.” Id.
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`Petitioners rely on Grube solely in Ground 2, and solely for its disclosure of:
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`(i) a “network[/plurality] of computers” (Pet. at 40-44); and (ii) “compared to a
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`plurality of values” (Pet. at 44-49). Even if Grube does disclose these features
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`(which Patent Owners do not concede), it does not cure the other deficiencies in
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`Francisco, described in Section VI.A infra. Therefore, Ground 2 must be denied.
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`III. REVIEW SHOULD NOT BE INSTITUTED BECAUSE THE
`PETITION IS TIME-BARRED
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`The Northern District of California recently found that Petitioners are in
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`privity with Amazon.com, Inc. and Amazon Web Services, Inc. (collectively,
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`“Amazon”). But, more than seven years prior to the filing of the instant Petition,
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`PersonalWeb filed a complaint against Amazon, alleging infringement of (inter
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`alia) the ’310 Patent. The District Court’s findings are dispositive: The Petition is
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`time-barred under 35 U.S.C. § 315(b).
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`A.
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`PersonalWeb Sued Amazon Years Ago
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`PersonalWeb sued Amazon in PersonalWeb Technologies LLC v. Amazon
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`Web Services LLC et al, 6-11-cv-00658 (E.D. Tex.) on 12/8/2011, alleging
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`infringement of the ’310 Patent, based on Amazon’s Simple Storage Service
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`(“Amazon S3”). Ex. 2008. The court dismissed the case on 6/9/2014. Ex. 2009.
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`In January 2018, PersonalWeb sued a number of parties, based on their
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`usage of Amazon S3. For instance, PersonalWeb sued Venmo/PayPal, alleging
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`infringement of the ’310 Patent. PersonalWeb Technologies, LLC et al. v. Venmo,
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`Inc., 3:18-cv-177 (N.D. Cal.). Ex. 2010.
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`In February 2018, Amazon filed a declaratory judgment action against
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`PersonalWeb, seeking to preclude infringement actions against Amazon’s S3
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`customers. Amazon.com, Inc. et al. v. PersonalWeb Technologies, LLC et al., 5-18-
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`cv-00767 (N.D. Cal.). Ex. 2011. Amazon’s Complaint stated that it “is an action to
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`protect AWS customers” from “patent infringement based on their use of AWS’s
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`Simple Storage Service.” Id. Amazon argued that the res judicata and Kessler
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`doctrines barred PersonalWeb’s claims against Amazon’s customers. Id.
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`Subsequently, PersonalWeb sued the eight Petitioners, alleging infringement
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`based on their use of Amazon S3. Pet. at 2. Amazon is defending and indemnifying
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`the Petitioners in court. Ex. 2014 (Amazon summary judgment motion in 5:18-md-
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`02834) at 9 (Amazon stating that it “has expressly assumed the defense of the 60
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`customers who have sought Amazon’s aid, and has not turned away any customer
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`who has asked for it”); Ex. 2015 (Amazon interrogatory responses in 5:18-md-
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`02834)2 at 3-4 (admitting that “Amazon is indemnifying” Petitioners “PayPal, Inc.”
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`and “Dollar Shave Club, Inc.”); Ex. 2013 (stipulation in 5:18-md-02834, signed by
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`Amazon on behalf of customers in customer cases) at 2-6 (noting that cases against
`
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`2 This Exhibit was publically available via PACER. Thus, Amazon has waived any
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`confidentiality claim it might have over it.
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`Petitioners “Upwork Global, Inc.,” “Shopify, Inc. et al..,” “Strava, Inc.,” “Valassis
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`Communications, Inc.,” and “RetailMeNot” are covered by the stipulation).
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`Petitioners filed this Petition in May 2019. But, the original complaint
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`against Amazon was served years ago. This Petition is time-barred because
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`Amazon is in privity with Petitioners—as stated by the District Court. In re:
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`PersonalWeb Technologies, LLC et al. Patent Litigation, 5:18-md-02834-BLF,
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`Dkt. 394 (N.D. Cal. 3/13/2019) (Ex. 2012) (“Order”). This Petition also is time-
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`barred because, as shown below, Amazon is a currently unnamed real party in
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`interest (RPI) separately barred under § 315(b).
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`B. Amazon Is an RPI and Is in Privity with Its Customers—
`Including Petitioners
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`A petition is time-barred if “filed more than 1 year after the date on which
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`the petitioner, the real party in interest, or a privy of the petitioner is served with a
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`complaint alleging infringement.” 35 U.S.C. § 315(b). PersonalWeb served
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`complaints alleging infringement by Amazon in 2011. Because Amazon is an RPI,
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`and is in privity with Petitioners, institution should be denied.
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`The Petition does not list Amazon as an RPI. However, there is no
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`“presumption” that a petition names the correct RPIs. Worlds Inc. v. Bungie, Inc.,
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`903 F.3d 1237, 1243 (Fed. Cir. 2018). A petitioner’s initial identification of RPIs is
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`accepted only until it is disputed. Id. at 1243-44.
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`Ultimately, the petitioner bears the burden of proving that the petition
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`properly names all RPIs. Id. at 1247. The Board has held that Worlds’ “logic
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`requires placing the burden on IPR petitioners to demonstrate that its petitions are
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`not time-barred under § 315(b) based on a complaint served on a privy more than a
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`year before a petition is filed.” Ventex Co., Ltd. v. Columbia Sportswear North
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`America, Inc., IPR2017-00651 (Paper 148) at 4-5 (precedential).
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`“[T]he inclusion of the terms ‘real party in interest’ and ‘privy of the
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`petitioner’ in § 315(b) makes clear that Congress planned for the provision to apply
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`broadly—sweeping in not only what might be traditionally known as real parties in
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`interest, but privies as well.” Applications in Internet Time, LLC v. RPX Corp., 897
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`F.3d 1336, 1346 (Fed. Cir. 2018) (“AIT”). Thus, petitions are barred “where
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`proxies or privies would benefit from an instituted IPR, even where the petitioning
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`party might separately have its own interest in initiating an IPR.” Id. at 1347.
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`Because the RPI and privity inquiries are separate, they are addre