Amazon.com, Inc. v. Personal Web Technologies, LLC

Opinion

1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 SAN JOSE DIVISION 6 IN RE: PERSONALWEB 7 TECHNOLOGIES, LLC ET AL PATENT Case No. 18-md-02834-BLF 8 LITIGATION ORDER DECLINING TO CLARIFY OR 9 SUPPLEMENT CLAIM CONSTRUCTION ORDER 10 [RE: ECF 507] 11

12 AMAZON.COM, INC., et al., Case No. 18-cv-00767-BLF 13 Plaintiffs, [RE: ECF 137] 14 v. 15 PERSONAL WEB TECHNOLOGIES, 16 LLC, et al., 17 Defendants.

18 PERSONALWEB TECHNOLOGIES, LLC, Case No. 18-cv-05619-BLF 19 et al.,

20 Plaintiffs, [RE: ECF 48] 21 v.

22 TWITCH INTERACTIVE, INC., 23 Defendant.

24 On August 16, 2019, this Court issued its Claim Construction Order in this multidistrict 25 litigation (“MDL”), construing all ten disputed claims terms identified by the parties. Mere hours 26 later, the parties began a heated dispute about whether any of PersonalWeb Technologies, LLC’s 27 (“PersonalWeb”) infringement theories were valid in light of the Court’s constructions. As a result, 1 PersonalWeb filed the present Motion to Clarify or Supplement Claim Construction Order, seeking 2 clarification or supplementation of the Court’s construction of the term “unauthorized or 3 unlicensed.” See Motion, ECF 507. PersonalWeb asserts that it “needs clarification to determine 4 if the Court meant something different than ‘valid rights to content’ (i.e., a narrower/license 5 instrument-type of meaning).” Motion at 2. If so, PersonalWeb states that it will withdraw its 6 technical expert’s infringement report and dismiss the case, preserving its appellate rights. Id. 7 After the Motion was filed, the Court held a telephone conference and heard the parties’ 8 positions. ECF 514. Subsequently, Amazon filed an Opposition (Opp’n, ECF 521) and 9 PersonalWeb filed a Reply (Reply, ECF 527). Pursuant to Civil Local Rule 7-1(b), the Court finds 10 the instant motion suitable for decision without oral argument and hereby VACATES the hearing 11 set for December 12, 2019. For the reasons discussed below, the Court DENIES PersonalWeb’s 12 motion. 13 I. BACKGROUND 14 In this MDL, PersonalWeb alleges patent infringement by Amazon.com, Inc. and Amazon 15 Web Services, Inc., and separately by dozens of Amazon’s customers (collectively, “Amazon”), 16 related to the customers’ use of Amazon’s CloudFront and Simple Storage Service (“S3”) in 17 connection with downloading files from S3. Two of the cases comprising this MDL are proceeding 18 at this time: Amazon v. PersonalWeb (Case No. 5:18-cv-00767-BLF), in which PersonalWeb asserts 19 counterclaims of patent infringement, and PersonalWeb v. Twitch Interactive, Inc. (Case No. 5:18- 20 cv-05619-BLF), in which PersonalWeb asserts claims of patent infringement and which the Court 21 has designated as a representative customer case. In each of these two actions, PersonalWeb alleges 22 infringement of four patents: U.S. Patent Nos. 6,928,442 (“the ’442 patent”); 7,802,310 (“the ’310 23 patent”); 7,945,544 (“the ’544 patent”); and 8,099,420 (“the ’420 patent”). 24 PersonalWeb filed its opening claim construction brief on April 8, 2019. ECF 399. The 25 next day, the Court issued an order instructing the parties to limit the briefing to no more than ten 26 disputed terms, pursuant to Patent Local Rules for the Northern District of California. ECF 401, 27 See Patent L.R. 4-3(c). PersonalWeb filed an amended opening claim construction brief on April 1 12, 2019. 2 The term “licensed/unlicensed,” as found in claim 20 of the ’310 patent and claim 10 of the 3 ’442 patent, was included in PersonalWeb’s initial (and noncompliant) opening claim construction 4 brief (ECF 399) but was dropped in the amended brief (ECF 406). The parties’ respective proposals 5 are below: 6 PersonalWeb’s Proposal Amazon’s Proposal 7 “un-/licensed:” plain and ordinary meaning valid / invalid right to content

8 Alternative Construction: “un/licensed:” not 9 legally / legally permitted 10 ECF 399 at 2. Claim construction briefing was concluded on April 29, 2019. See ECF 406; 11 412; 420. The Court held a tutorial on May 2, 2019, followed by a Markman hearing on May 24, 12 2019, and issued its Claim Construction Order on August 16, 2019. Order, ECF 485. 13 The disputed term for which PersonalWeb seeks clarification, is “unauthorized or 14 unlicensed,” as found in claim 20 of the ’310 patent. The parties’ proposed constructions are listed 15 below: 16 PersonalWeb’s Proposal Amazon’s Proposal 17 Plain and ordinary meaning “not compliant with a valid license” 18 Alternatively: 19 “not permitted or not permitted under a license” 20 Order at 6. During the claim construction proceedings, PersonalWeb contended that in the 21 context of the ’310 patent, the plain and ordinary meaning of “authorization” equates to 22 “permission.” See Id. In contrast, in PersonalWeb’s view, “license” was something narrower—“a 23 specific kind of authorization.” Id. In other words, PersonalWeb’s position was that “unauthorized” 24 should be construed differently than “unlicensed” and therefore the term “unauthorized or 25 unlicensed,” if construed at all, should be construed in a way that was boarder than “unlicensed” 26 and consistent with the “permission” theory. See ECF 406 at 7 (“If Amazon’s proposed construction 27 is adopted, it should be clarified that ‘unauthorized’ is not limited to the legal and/or contractual 1 In distinguishing between “unauthorized” and “unlicensed,” PersonalWeb argued the 2 following: 3 A “license,” on the other hand, means something narrower. It is a specific kind of authorization. The specification discusses licenses in 4 the sense of having legal permission to have a copy of a file. For example, the specification states that a license table 136 maintains a 5 record of the True Names of “key files in the product (that is, files which are required in order to use the product, and which do not occur 6 in other products)[.] Typically, for a software product, this would include the main executable image and perhaps other major files such 7 as clip-art, scripts, or online help.” ’310 at 31:17-22. This demonstrates the specification contemplates having a license is 8 having legal permission to possess things like program executables and images such as clip-art, items that may be the subject, for 9 example, of a copyright license, or a license granted by an End User License Agreement (EULA). 10 Id. at 2-3. 11 The Court rejected PersonalWeb’s argument and noted that “while PersonalWeb’s argument 12 in favor of separate meanings has superficial appeal, the intrinsic record reveals that the patentee 13 used the words ‘authorized’ and ‘licensed’ interchangeably in the ’310 patent.” Id. at 8. The Court 14 adopted Amazon’s proposed construction and held that “unauthorized or unlicensed” means “not 15 compliant with a valid license.” Order at 6-12. 16 During the claim construction proceedings, both parties discussed two Markman orders from 17 the Eastern District of Texas involving some of the patents-in-suit in the instant action: (1) 18 PersonalWeb Techs., LLC v. Amazon.com Inc., No. 6:11-cv-658, Dkt. No. 140 (E.D. Tex. Aug. 5, 19 2013) (“Davis Order”) and (2) PersonalWeb Techs., LLC v. IBM Corp., No. 6:12-cv-661-JRG, Dkt. 20 No. 103 at 25, 28 (E.D. Tex. Mar. 11, 2016) (“Gilstrap Order”). Order at 11. PersonalWeb argued 21 and the Court agreed that neither the Davis Order nor the Gilstrap Order were binding in this matter. 22 Id. The Court noted that “[n]either order addressed the ‘unauthorized or unlicensed’ term found in 23 claim 20 of the ’310 patent” and therefore neither order was “directly on point with the instant 24 dispute.” Id. Nevertheless, the Court found the Gilstrap Order to be the closer of two, in which 25 Judge Gilstrap noted that “‘authorization’ merely refers to a valid license” – a finding that was “not 26 inconsistent with the Court’s ruling on the instant dispute.” Id. 27 1 counsel because Amazon believed that PersonalWeb had no viable patent infringement theories in 2 light of the Court’s constructions. Motion at 1. In response, PersonalWeb informed Amazon that 3 because Amazon had, earlier in the claim construction proceedings, advocated for the same 4 constructions as those in the Gilstrap Order, PersonalWeb intended to apply Judge Gilstrap’s 5 construction of “licensed/unlicensed” as “valid/invalid rights to content” to its infringement 6 analysis. Id. at 1-2. Over Amazon’s strong objection and threats of sanctions, PersonalWeb’s expert 7 did, in fact, apply Judge Gilstrap’s construction to his infringement analysis. Id. at 2. In addition, 8 PersonalWeb filed the present motion because it believes it needs “clarification to determine if the 9 Court meant something different than ‘valid rights to content’ (i.e., a narrower/license instrument- 10 type of meaning).” Id. If so, PersonalWeb states that it will withdraw the report of the technical 11 expert and dismiss, in order to preserve appellate rights. Id. 12 In PersonalWeb’s view, this Court’s Order “does not appear fully dispositive on what it 13 means for something to be ‘licensed’ versus ‘unlicensed.’” Motion at 2. Therefore, PersonalWeb 14 asks this Court to “expressly adopt Judge Gilstrap’s March 11, 2016 order, construing ‘licensed’ 15 and ‘unlicensed.’” Id. at 4. To support this position, PersonalWeb points to several instances in 16 which Amazon advocated for Judge Gilstrap’s constructions during the claim construction 17 proceedings. Reply at 2-4 (citing Amazon’s Patent L.R. 4-2 Disclosures; the parties’ Joint Claim 18 Construction and Prehearing Statement (ECF 380); Amazon’s Responsive Claim Construction Brief 19 (ECF 412); May 24, 2019 claim construction hearing). 20 Amazon responds that PersonalWeb’s Motion “requests that the Court ‘supplement’ the 21 claim construction order by plugging into the Court’s construction of the term ‘unauthorized or 22 unlicensed’ a construction by a different court of a different claim term not at issue here.” Opp’n at 23 1. Amazon argues that “PersonalWeb had every opportunity to seek construction of different terms, 24 or to seek different constructions of ‘unauthorized’ or ‘unlicensed,’ or to oppose Amazon’s proposed 25 construction that the Court adopted because it was ‘unclear’ – PersonalWeb did none of those 26 things.” Id. at 2. Next, Amazon points out several instances in which PersonalWeb had argued 27 against Judge Gilstrap’s constructions because PersonalWeb believed that “‘license’ had a clear 1 meaning that was different from ‘authorization.’” See id. at 3-5. Amazon further argues that 2 PersonalWeb’s “requested change to the Court’s claim construction also misapplies Judge Gilstrap’s 3 order” because “Judge Gilstrap construed the claim terms ‘unauthorized’ and ‘unlicensed’ in the 4 same way as this Court did” and “referred to ‘rights to content’ to resolve an entirely different 5 dispute relating to patent claims not asserted in this case.” Id. at 9. 6 II. PERSONALWEB’S MOTION TO CLARIFY OR SUPPLEMENT IS PROCEDURALLY PROPER 7 Amazon insists that PersonalWeb’s Motion is one for reconsideration because it has 8 “repackage[d] the same dispute that the Court already resolved against PersonalWeb on a complete 9 record.” Opp’n at 1. Thus, Amazon invites the Court to “summarily deny the motion” because 10 PersonalWeb failed to follow the local rules applicable to motions for reconsideration. Opp’n at 2; 11 7-8; see also Civil Local Rule 7-9(b). 12 PersonalWeb responds that its motion is not for reconsideration and acknowledges that “a 13 motion for reconsideration requires a change in law or fact or a ‘manifest failure’ to consider 14 material facts or dispositive law,” none of which are present here. Reply at 4. 15 16 The Court disagrees with Amazon. There is nothing inherently improper in requesting 17 clarification of a court’s claim construction. See EON Corp IP Holdings LLC v. Cisco Sys. Inc, 18 2014 WL 793323, at *3-4 (N.D. Cal. Feb. 25, 2014); Wi-Lan USA, Inc. v. Apple Inc., 2014 WL 19 12789112, at *1 (S.D. Cal. Apr. 11, 2014). “[D]istrict courts may engage in rolling claim 20 construction, in which the court revisits and alters its interpretation of the claim terms as its 21 understanding of the technology evolves.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 22 1349, 1359 (Fed. Cir. 2006) (citing Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 23 (Fed. Cir. 2002)). Thus, the Court finds that PersonalWeb’s Motion was properly submitted and 24 considers the arguments below. 25 III. THE WORD “LICENSE” IN THE COURT’S CONSTRUCTION DOES NOT REQUIRE CLARIFICATION OR SUPPLEMENTATION 26 In its Motion, PersonalWeb argues that this Court’s Claim Construction Order “does not 27 appear fully dispositive on what it means for something to be ‘licensed’ versus ‘unlicensed,’” an 1 issue that it believes is likely case dispositive. Motion at 2. PersonalWeb frames the parties’ dispute 2 as follows: PersonalWeb believes that “‘license’ only requires ‘valid rights to content’ as per Judge 3 Gilstrap’s order,’” while Amazon is of the opinion that “a ‘license’ requires some sort of a written 4 instrument or oral agreement.” Id. To resolve this dispute, PersonalWeb invites the Court to 5 expressly adopt and insert Judge Gilstrap’s construction for the term “licensed/unlicensed” into this 6 Court’s construction for the term “unauthorized or unlicensed,” effectively changing the Court’s 7 construction from “not compliant with a valid license” to “not compliant with a valid right to 8 content.” See generally Motion; Reply. For the reasons stated below, the Court declines to do so. 9 First, PersonalWeb’s unambiguous and consistent position before this Court and throughout 10 the claim construction proceedings has been that it understood what the term “licensed/unlicensed” 11 means in the context of the claims at issue. PersonalWeb consistently advocated that the terms 12 “unauthorized” and “unlicensed” (1) should be given their plain and ordinary meaning and (2) do 13 not mean the same thing. See ECF 406 at 1-5. PersonalWeb’s position has been that the plain and 14 ordinary meaning of “authorization” equates to “permission,” whereas “[a] ‘license,’ on the other 15 hand, means something narrower. It is a specific kind of authorization.” ECF 406 at 2 (emphasis 16 added); see also id. at 3 (“This demonstrates the specification contemplates having a license is 17 having legal permission to possess things like program executables and images such as clip-art, 18 items that may be the subject, for example, of a copyright license, or a license granted by an End 19 User License Agreement (EULA).”) (emphasis added). 20 PersonalWeb’s alternative construction for “unauthorized or unlicensed” further indicates 21 that PersonalWeb has never been confused about what the term “license” means. As an alternative 22 construction, PersonalWeb proposed that “unauthorized or unlicensed” should be construed as “not 23 permitted or not permitted under a license.” Order at 6 (emphasis added). If PersonalWeb believed 24 that the term “license” needed clarification, it could have, and should have, proposed a different 25 (and presumably clearer) construction. 26 PersonalWeb’s position was clear: it was asking the Court to construe “authorization” to 27 1 construction is adopted, it should be clarified that ‘unauthorized’ is not limited to the legal and/or 2 contractual sense of the of term ‘unlicensed.’”) (emphasis added). PersonalWeb lost this argument 3 when the Court found that “the intrinsic record reveals that the patentee used the words ‘authorized’ 4 and ‘licensed’ interchangeably.” Order at 8. In other words, in the battle between the broader 5 meaning of “unauthorized” and the narrower meaning of “unlicensed,” the Court chose the narrower 6 concept: regulating access to licensed content. Order at 10 (“[T]he specification explicitly and 7 interchangeably uses the words ‘authorized’ and ‘licensed’ to describe the same concept— 8 regulating access to licensed content.”). PersonalWeb’s proposed “clarification” appears to be 9 nothing more than an attempt to regain the broader meaning it sought (and did not get) for the well- 10 understood term “license” – which the Court, once again, rejects. 11 Second, PersonalWeb was on notice, for months, of Amazon’s proposed construction, which 12 the Court eventually adopted. PersonalWeb has had ample opportunity to inform the Court that it 13 believed Amazon’s proposed construction was unclear and ask for a different construction. Instead, 14 PersonalWeb consistently advocated for the plain and ordinary meaning of the terms “unauthorized” 15 and “unlicensed.” A request for clarification may be appropriate where a court puts forward its own 16 construction, which the parties may find unclear. But in this case, the Court adopted a construction 17 that was proposed by a party, Amazon. PersonalWeb was on notice that the Court may adopt 18 Amazon’s construction but chose to continue to advocate for plain and ordinary meaning and not to 19 discuss any potential ambiguity or lack of clarity regarding the use of the word “license” in 20 Amazon’s proposed construction. 21 Similarly, PersonalWeb was on notice that in the Court’s view, the term 22 “licensed/unlicensed,” standing alone, does not require construction. The Court noted at the claim 23 construction hearing: 24

25 The Court: but since [Judge Gilstrap] wasn’t asked to deal with the term “unauthorized or unlicensed,” construing the term “unlicensed” 26 is -- I mean, any of us can do that.

27 That actually doesn’t need construction when it stands alone. 1 ECF 446 (Transcript of claim construction hearing) at 19:9-13. 2 3 Third, PersonalWeb does not ask this Court to construe the stand-alone term 4 “licensed/unlicensed,” as it is used in an asserted claim. Instead, by way of “clarification,” 5 PersonalWeb is inviting this Court to adopt another court’s construction addressing different claims 6 not at issue in this case and resolving a different dispute not present here. PersonalWeb does not 7 explain why Judge Gilstrap’s construction for “licensed/unlicensed” is correct for this case—yet it 8 asks the Court to adopt that construction merely because Amazon had advocated for it at the earlier 9 stages of the claim construction proceedings. And again, focusing on the motion at hand, 10 PersonalWeb is seeking clarification of a claim construction, not a claim term in an asserted claim. 11 Moreover, PersonalWeb’s reliance on this Court’s characterization of the Gilstrap Order is 12 misplaced. This Court found the Gilstrap Order “persuasive and not inconsistent with the Court’s 13 ruling on the instant dispute,” but only to the extent that Judge Gilstrap, like this Court, equated 14 “authorization” with a “valid license.” See Order at 11. 15 IV. THE PARTIES’ INFRINGEMENT/NON-INFRINGEMENT ANALYSIS 16 In one sentence in its Reply brief, PersonalWeb states that it “seeks clarification of the effect 17 of the Court’s existing ruling on its infringement arguments.” Reply at 5. However, the Motion 18 does not make any arguments to that effect. In its Motion, PersonalWeb seems to be addressing, 19 “[a]s a corollary to the issue of construction,” whether PersonalWeb’s infringement theories in its 20 expert report are new and whether PersonalWeb should be foreclosed from asserting them. See 21 Motion 4-6. Nowhere in the Motion, has PersonalWeb invited the Court to clarify how the current 22 claim construction ruling impacts its infringement analysis. Moreover, it is not appropriate for the 23 sponsoring party to seek judicial approval of its expert reports; rather, it is up to an objecting party 24 to move to strike inadmissible evidence. In sum, The Court finds that this issue is not properly 25 before the Court. 26 V. CONCLUSION 27 For the foregoing reasons, the Court declines to clarify or supplement its Claim Construction 1 Supplement Claim Construction Order is DENIED. IT IS SO ORDERED. 3 4 ll Dated: October 1, 2019 kom hh human 5 6 BETH LABSON FREEMAN United States District Judge 7 8 9 10 11 12

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