throbber
Case: 19-1918 Document: 123 Page: 1 Filed: 06/17/2020
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC,
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`PATREON, INC.,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`DICTIONARY.COM, LLC,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`
`

`

`Case: 19-1918 Document: 123 Page: 2 Filed: 06/17/2020
`
`2
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`INC.,
`Intervenors
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`VOX MEDIA, INC.,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`
`- - - - - -- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`VICE MEDIA, LLC,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`

`

`Case: 19-1918 Document: 123 Page: 3 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`3
`
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`OATH INC.,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`BUZZFEED, INC.,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`
`

`

`Case: 19-1918 Document: 123 Page: 4 Filed: 06/17/2020
`
`4
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`POPSUGAR, INC.,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`PERSONALWEB TECHNOLOGIES LLC,
`Plaintiff-Appellant
`
`LEVEL 3 COMMUNICATIONS, LLC,
`Plaintiff
`
`v.
`
`ZIFF DAVIS, LLC,
`Defendant-Appellee
`
`AMAZON.COM, INC., AMAZON WEB SERVICES,
`INC.,
`Intervenors
`______________________
`
`2019-1918
`______________________
`
`Appeal from the United States District Court for the
`Northern District of California in Nos. 5:18-cv-05599-BLF,
`5:18-cv-05606-BLF, 5:18-cv-05969-BLF, 5:18-cv-05970-
`BLF, 5:18-cv-06044-BLF, 5:18-cv-06046-BLF, 5:18-cv-
`
`

`

`Case: 19-1918 Document: 123 Page: 5 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`5
`
`5:18-md-02834-BLF,
`5:18-cv-07119-BLF,
`06612-BLF,
`United States District Judge Beth Labson Freeman.
`______________________
`
`Decided: June 17, 2020
`______________________
`
`MICHAEL AMORY SHERMAN, Stubbs Alderton &
`Markiles LLP, Sherman Oaks, CA, argued for plaintiff-ap-
`pellant. Also represented by VIVIANA H. BOERO HEDRICK,
`JEFFREY F. GERSH, WESLEY WARREN MONROE, STANLEY
`HUGH THOMPSON, JR.; SANDEEP SETH, SethLaw, Houston,
`TX.
`
` J. DAVID HADDEN, Fenwick & West, LLP, Mountain
`View, CA, argued for all defendants-appellees and for in-
`tervenors. Defendants-appellees Vox Media, Inc., Vice Me-
`dia, LLC, Oath Inc., BuzzFeed, Inc., Dictionary.com, LLC,
`Patreon, Inc., Ziff Davis, LLC, Popsugar Inc. and interve-
`nors Amazon.com, Inc., Amazon Web Services, Inc. also
`represented by SAINA S. SHAMILOV, RAVI RAGAVENDRA
`RANGANATH; TODD RICHARD GREGORIAN, San Francisco,
`CA. Defendant-appellee Vice Media, LLC also represented
`by BENJAMIN J. BYER, Davis Wright Tremaine LLP, Seat-
`tle, WA; KIMBERLY HERMAN, Sullivan & Worcester, Boston,
`MA; CHRISTOPHER T. MCWHINNEY, Washington, DC. In-
`tervenors Amazon.com, Inc., Amazon Web Services, Inc.
`also represented by JEFFREY H. DEAN, Amazon.com, Inc.,
`Seattle, WA.
` ______________________
`
`Before WALLACH, BRYSON, and TARANTO, Circuit Judges.
`BRYSON, Circuit Judge.
`Appellant PersonalWeb Technologies LLC filed a num-
`ber of lawsuits charging dozens of customers of Ama-
`zon.com, Inc., and Amazon Web Services, Inc., (collectively
`“Amazon”) with
`infringing several related patents.
`
`

`

`Case: 19-1918 Document: 123 Page: 6 Filed: 06/17/2020
`
`6
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`Amazon responded with a declaratory judgment action
`seeking an order declaring that PersonalWeb’s lawsuits
`against Amazon’s customers were barred as a result of a
`prior lawsuit brought by PersonalWeb against Amazon,
`which was dismissed with prejudice. In the eight cases
`that are now on appeal, the district court agreed with Am-
`azon that the consequence of the prior dismissal was to bar
`PersonalWeb’s infringement actions against Amazon’s cus-
`tomers. In re: PersonalWeb Techs., LLC, No. 5:18-md-
`02834-BLF, 2019 WL 1455332 (N.D. Cal. Apr. 2, 2019). We
`affirm.
`
`I
`A
`There are five patents at issue in this appeal: U.S. Pa-
`tent Nos. 5,978,791 (“the ’791 patent”), 6,928,442 (“the ’442
`patent”), 7,802,310 (“the ’310 patent”), 7,945,544 (“the ’544
`patent”), and 8,099,420 (“the ’420 patent”) (collectively,
`“the True Name patents”). All five patents share a largely
`common specification and claim priority to the same aban-
`doned patent application, which was filed on April 11,
`1995.
`According to the specification, there was a problem
`with the way prior art computer networks of the mid-1990s
`identified data in their systems. There was “no direct rela-
`tionship between the data names” and the contents of the
`data item. ’442 patent, col. 2, ll. 13–14. The same file name
`in two different folders could refer to different data items,
`or two different file names could refer to the same data
`item. Id. at col. 2, ll. 15–17. Consequently, computer net-
`works could become clogged with duplicate data, and the
`efficiency and integrity of data processing systems could be
`impaired. Id. at col. 2, line 30, through col. 3, line 43.
`The inventors of the patents in suit purported to solve
`this problem by devising what they referred to as “True
`Names” for data items. Id. at col. 6, ll. 7–11. The True
`
`

`

`Case: 19-1918 Document: 123 Page: 7 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`7
`
`Name system created a “substantially unique” identifier
`for each data item that depended only on the content of the
`data itself. Id.; see also id. at col. 3, ll. 30–33. The True
`Name system thus did not depend on other purportedly
`less reliable means of identifying data items, such as user-
`provided file names.
`The common specification of the patents in suit teaches
`that file names in the True Name system can be created
`using a “hash function.” Id. at col. 12, ll. 57–63. A hash
`function is a mathematical function that reduces a data
`block of arbitrary size and converts it into a relatively
`small, fixed-length sequence, “such that the True Name of
`the data block is virtually guaranteed to represent the data
`block B and only data block B.” Id.
`In the True Name system, a large file is first parti-
`tioned into smaller segments. The hash function is then
`applied to each segment. Id. at col. 14, ll. 16–35. The re-
`sulting values are strung together, and a hash function is
`applied to the entire string of values, to compute the True
`Name of the large file. Id.
`The specification summarizes a variety of applications
`for the True Name invention, including using True Names
`(1) to avoid storing multiple copies of a file, when those cop-
`ies have been assigned different names; (2) to avoid copying
`data from a remote location when a local copy is already
`available; and (3) to verify that data retrieved from a re-
`mote location is the data that was intended to be retrieved.
`Id. at col. 3, ll. 49–55; see also id. at col. 4, ll. 25–27.
`B
`In December 2011, PersonalWeb sued Amazon and one
`of Amazon’s customers, Dropbox, Inc., for patent infringe-
`ment in the United States District Court for the Eastern
`District of Texas. In the complaint, PersonalWeb alleged
`that “Amazon has infringed and continues to infringe [the
`True Name patents, among others] by its manufacture,
`
`

`

`Case: 19-1918 Document: 123 Page: 8 Filed: 06/17/2020
`
`8
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`use, sale, importation, and/or offer for sale of the following
`products and services within the PersonalWeb Patent
`Field: Amazon Simple Storage Service (S3)[.]”
`Amazon S3 provides web-based storage to certain cus-
`tomers, typically companies with websites. The customers
`can use S3 to store static content, such as images, for their
`websites. Information that is stored in the S3 system is
`stored in the form of “objects” that are organized into cus-
`tomer-created containers called “buckets.” Once an object
`is stored in S3, it can be made available over the entire In-
`ternet.
`To use an example featured in Amazon’s brief, if a com-
`pany creates a webpage containing a picture of a puppy,
`that picture can be stored in S3. When a user visits the
`company’s website, the user’s web browser is directed to
`download the puppy picture from S3 in order to display the
`website. The way the user’s web browser asks to download
`the puppy picture from S3 is through a Hyper Text Trans-
`fer Protocol (“HTTP”) “GET” request.1
`S3 automatically generates an “ETag” for every object
`stored in S3. ETags provide useful identifying information
`about an object. For most objects, S3 creates an ETag by
`running a particular hash function on the object’s content.
`If the object’s content changes, the ETag changes. S3 uses
`ETags in several of its operations where it is helpful to
`know that identifying information.
`For example, when the user downloads the puppy pic-
`ture described above from S3, the user’s computer might
`store that picture in the computer’s temporary memory or
`cache. If the user requests the same file again, S3 com-
`pares the ETag for the file stored in the user’s cache to the
`
`1 HTTP is a standard communication protocol that
`web browsers and web servers follow in order to communi-
`cate with each other on the Internet.
`
`

`

`Case: 19-1918 Document: 123 Page: 9 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`9
`
`file stored on S3. If the ETags are identical, S3 responds
`with a status code indicating that the user’s computer al-
`ready has a copy of the picture, so there is no need to down-
`load the picture again. If S3 does not contain a file with
`the same ETag, however, that indicates that the contents
`of the file have been changed. In that event, S3 will send
`the user’s web browser the file containing the updated ver-
`sion of the picture. The parties refer to the request for a
`file in that scenario as a “conditional get request” because
`the operation will be performed only if a certain condition
`is met. PersonalWeb also refers to such conditional get re-
`quests as “cache control.” Conditional get requests help
`avoid unnecessary downloads, thereby saving time and
`network bandwidth.
`S3 also uses ETags when customers, such as companies
`with websites, upload objects to S3. One method of upload-
`ing that S3 supports is what Amazon calls the Multipart
`Upload Application Program Interface. The multipart up-
`load function allows users to upload an object larger than
`five gigabytes as a series of parts. Once all the parts have
`been uploaded, S3 can assemble them into a single object
`for storage. S3 generates an ETag for each uploaded part
`as well as for the completed object. The ETags can be used
`to verify that none of the parts were corrupted during the
`upload.
`In its infringement contentions in the Texas case, Per-
`sonalWeb referenced S3’s use of both multipart upload and
`conditional get requests. The contentions are extensive,
`but they consist mainly of similar and sometimes identical
`material repeated numerous times. A commonly appearing
`feature in the infringement contentions is a reference to
`S3’s use of ETags to compare the identity of different ob-
`jects in order to determine whether or not to perform cer-
`tain operations. See, e.g., J.A. 1651 (“Amazon S3 causes
`the content-dependent name of the particular data item
`(the ‘ETag’) to be compared to a plurality of values (other
`‘ETags’). . . . When doing GET, HEAD, PUT/COPY
`
`

`

`Case: 19-1918 Document: 123 Page: 10 Filed: 06/17/2020
`
`10
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`operation with certain conditional parameters, the exist-
`ence of the particular item at a particular location is deter-
`mined with Etag.”); J.A. 1652 (“GetIfMatchEtags uses the
`received Etag attached by the user request and compares
`it with the digest contained in the node for that specific ob-
`ject to determine whether or not access to the object is al-
`lowed based upon the match or non-match of hashes.”); J.A.
`1653 (“Upon receiving the parts during multipart upload,
`the user’s list of etags is used to compare with the etags
`that are generated for the parts to check for the correct
`parts before combining the parts.”).
`Consistent with its infringement contentions in the
`Texas case, PersonalWeb represented in a discovery mo-
`tion in that case that S3’s use of ETags to perform condi-
`tional operations infringed the True Name patents:
`The accused products in this case are Amazon’s
`Simple Storage Service (“S3”) and Amazon Web
`Services, LLC’s Storage Gateway. S3 is a cloud
`storage service, and the accused functionalities of
`S3 include but are not limited to its “multipart up-
`load” feature and “conditional operations.” . . . In
`response to receiving each uploaded part of a file,
`S3 creates an ETag for the part uploaded, which is
`a MD5 hash of the contents of the part. Personal-
`Web maintains that S3’s use of these hash values
`infringes the patents-in-suit.
`A customer who stores files using S3 is able to
`send a variety of different requests to Amazon, e.g.,
`to get a file, to copy a file, or to put a file into stor-
`age. The customer can optionally require that the
`operation succeed or fail based on a comparison of
`a user-provided ETag against the ETag S3 has
`stored for the file in question, referred to as “condi-
`tional operations.” For example, in S3’s “condi-
`tional copy” feature, the two options are “If-Match”
`and “If-None-Match”—the
`former allowing a
`
`

`

`Case: 19-1918 Document: 123 Page: 11 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`11
`
`successful copy operation only if the ETags match,
`and the latter only if the ETags do not match. If
`the match succeeds, then the copy operation is al-
`lowed to be performed; otherwise, S3 returns an er-
`ror. PersonalWeb maintains that S3’s conditional
`operations infringe the patents-in-suit.
`J.A. 2045–46 (emphasis added).
`After the district court issued its claim construction or-
`der in the Texas case, PersonalWeb stipulated to the dis-
`missal of all its claims against Amazon with prejudice.2
`Pursuant to that stipulation, the district court in June
`2014 issued an order dismissing all claims against Amazon
`with prejudice; the court subsequently entered final judg-
`ment against PersonalWeb.
`
`C
`Beginning in January 2018, PersonalWeb filed dozens
`of new lawsuits in various districts against website opera-
`tors, many of which were Amazon’s customers. Personal-
`Web alleged that by using S3, Amazon’s customers had
`infringed the True Name patents.
`Amazon intervened in the actions against its custom-
`ers and undertook the defense of the customer-defendants
`in all the cases now before this court. In addition, Amazon
`filed a declaratory judgment complaint against Personal-
`Web, seeking an order barring PersonalWeb’s infringement
`actions against Amazon and its customers based on the
`prior action against Amazon in the Eastern District of
`Texas. The Judicial Panel on Multidistrict Litigation con-
`solidated the customer cases and the Amazon declaratory
`judgment action in a multi-district litigation proceeding,
`
`
`2 PersonalWeb had previously dismissed its claims
`against Dropbox, Inc., without prejudice. Dropbox is not a
`party to any of the cases before this court.
`
`

`

`Case: 19-1918 Document: 123 Page: 12 Filed: 06/17/2020
`
`12
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`and assigned the consolidated cases to the United States
`District Court for the Northern District of California for
`pretrial proceedings. That court decided to proceed with
`the Amazon declaratory judgment action first. Based on
`input from the parties, the court selected one representa-
`tive customer case (the case against Twitch Interactive,
`Inc.) to proceed along with the Amazon declaratory judg-
`ment action. The court stayed all the other customer cases.
`Because PersonalWeb represented that it would not be able
`to proceed in the other customer cases if it lost its case
`against Twitch, the district court relied on PersonalWeb’s
`pleadings against Twitch as being representative of Per-
`sonalWeb’s pleadings in the other customer cases.
`In its counterclaim against Amazon in the declaratory
`judgment action, PersonalWeb alleged that S3 infringed
`the True Name patents when S3 used ETags to perform
`conditional operations. In particular, PersonalWeb ac-
`cused S3’s use of ETags to determine whether a customer’s
`web browser should reuse its cached data or download a
`new, updated version of the data. According to Personal-
`Web, “Amazon thereby reduced the bandwidth and compu-
`tation required by its S3 web host servers (acting as origin
`servers for its web server customers) and any intermediate
`cache servers . . . .” J.A. 2929. PersonalWeb made similar
`allegations in its complaints against Amazon’s customers.
`PersonalWeb’s infringement contentions tracked the
`complaints against Amazon’s customers. For example,
`PersonalWeb alleged that “[t]he distribution of hosted
`webpage file content (content) to other computers such as
`outside intermediate cache servers and computers running
`web browsers . . . is controlled from an S3 website file host
`server (a first computer). This is done in response to a con-
`ditional HTTP GET request (a request) obtained by an S3
`website file host server (a first device in the system) from
`another computer (a second device in the system) . . . .”
`J.A. 381. The conditional HTTP GET requests included
`
`

`

`Case: 19-1918 Document: 123 Page: 13 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`13
`
`ETags that, according to PersonalWeb, corresponded to the
`claimed “content-dependent name.”
`D
`Amazon moved for summary judgment in its declara-
`tory judgment action and partial summary judgment in
`PersonalWeb’s infringement action against Twitch. Ama-
`zon argued that, in light of the with-prejudice dismissal of
`PersonalWeb’s action against Amazon in the Texas case,
`PersonalWeb was barred from suing Amazon or its custom-
`ers for infringement based on Amazon’s S3 system.
`The district court granted the motion in part. It held
`that claim preclusion barred PersonalWeb’s claims regard-
`ing acts of infringement occurring prior to the final judg-
`ment in the Texas action, and that the Kessler doctrine,
`first adopted by the Supreme Court in Kessler v. Eldred,
`206 U.S. 285 (1907), barred PersonalWeb’s claims of in-
`fringement relating to S3 after the final judgment in the
`Texas action.
`With respect to claim preclusion, the district court held
`that all the requirements of that doctrine were met. First,
`the court determined that the with-prejudice dismissal in
`the Texas action was a final judgment on the merits, and
`that PersonalWeb did not reserve any rights in the stipu-
`lated dismissal in that case. In re PersonalWeb, 2019 WL
`1455332, at *6–7.
`Second, the court concluded that Amazon’s customers
`were in privity with Amazon. As the court explained, Am-
`azon and its customers share the same interest in the un-
`fettered use of Amazon’s web services; Amazon adequately
`represented that interest in the Texas action; and Amazon
`agreed to indemnify its customers and assumed the de-
`fense of its customers against PersonalWeb’s infringement
`charges. Id. at *7–9.
`Third, the court ruled that the causes of action asserted
`in the Texas case and in the customer cases were the same.
`
`

`

`Case: 19-1918 Document: 123 Page: 14 Filed: 06/17/2020
`
`14
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`The court rejected PersonalWeb’s contention that the
`claims against Amazon in the Texas case were limited to
`the multipart upload features of S3, and did not extend to
`S3 generally. Id. at *10–13. The court concluded that “both
`the complaint and the infringement contentions in the
`Texas Action indisputably support the Court’s conclusion
`that the Texas Action asserted infringement against all of
`S3 and was not limited only to [the multipart upload fea-
`ture].” Id. at *12. Different features of the same product,
`the court ruled, do not give rise to separate causes of action.
`Id. at *13.
`Finally, the court rejected Amazon’s argument that
`claim preclusion applies through the expiration of the pa-
`tents, and instead concluded that claim preclusion applies
`only up to the date of the final judgment in the Texas ac-
`tion. Id. at *13–14.
`With respect to the Kessler doctrine, the district court
`held that the judgment in the Texas case gave rise to a lim-
`ited trade right to continue producing, using, and selling
`the product at issue in that case “even when the acts of in-
`fringement occurred post-final judgment and even when it
`was third parties who allegedly engaged in those acts of
`infringement.” Id. at *15 (internal quotation marks and
`citation omitted). The court rejected PersonalWeb’s argu-
`ment that the Kessler doctrine is “rooted in . . . issue pre-
`clusion” and does not apply because the judgment in the
`Texas case did not specifically adjudicate the issue of non-
`infringement. Id. at *14–16.
`The district court then determined that its summary
`judgment ruling had the effect of disposing of the eight cus-
`tomer cases in which PersonalWeb alleged infringement
`based solely on the customer’s use of Amazon’s S3 system.
`Accordingly, the court dismissed those eight cases. Person-
`alWeb appeals from the judgment in those cases.
`
`

`

`Case: 19-1918 Document: 123 Page: 15 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`15
`
`II
`PersonalWeb raises two primary challenges to the dis-
`trict court’s decision. First, PersonalWeb contends that
`claim preclusion is inapplicable to the actions against Am-
`azon’s customers because the Texas case involved a differ-
`ent feature of Amazon’s S3 system, and therefore a
`different cause of action, than the feature that is at issue
`in the customer cases. Second, PersonalWeb contends that
`the with-prejudice dismissal of the action against Amazon
`in the Texas case did not constitute an adjudication of non-
`infringement and is therefore insufficient to trigger the
`Kessler doctrine.3 We reject both challenges.
`A
`Under the doctrine of claim preclusion, ‘‘a judgment on
`the merits in a prior suit bars a second suit involving the
`same parties or their privies based on the same cause of
`action.” Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326
`n.5 (1979). Claim preclusion bars both those claims that
`were brought as well as those that could have been brought
`in the earlier lawsuit. Lucky Brand Dungarees, Inc. v.
`Marcel Fashions Grp., Inc., 140 S. Ct. 1589, 1594–95
`(2020); Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1053
`(Fed. Cir. 2014); Owens v. Kaiser Found. Health Plan, Inc.,
`244 F.3d 708, 713 (9th Cir. 2001).
`
`
`In the trial court, PersonalWeb also contended that
`3
`claim preclusion applies only up to the date of the operative
`complaint in the prior action. PersonalWeb has not chal-
`lenged the trial court’s ruling that “claim preclusion bars
`PersonalWeb’s claims through the date of the final judg-
`ment in the Texas Action.” In re PersonalWeb, 2019 WL
`1455332, at *13. Because PersonalWeb has not appealed
`that aspect of the trial court’s decision, we do not address
`it.
`
`

`

`Case: 19-1918 Document: 123 Page: 16 Filed: 06/17/2020
`
`16
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`To the extent that a case turns on general principles of
`claim preclusion, as opposed to a rule of law having special
`application to patent cases, this court applies the law of the
`regional circuit in which the district court sits—here the
`Ninth Circuit. Acumed LLC v. Stryker Corp., 525 F.3d
`1319, 1323 (Fed. Cir. 2008). However, the question
`whether two causes of action for patent infringement are
`the same is an issue peculiar to patent law, and we there-
`fore analyze that issue under Federal Circuit law. Id.
`For purposes of claim preclusion, PersonalWeb does
`not dispute the district court’s ruling that the with-preju-
`dice judgment in the Texas case is a final judgment on the
`merits. PersonalWeb also does not challenge the district
`court’s determination that Amazon and its customers are
`in privity, and thus are regarded as the same parties for
`claim preclusion purposes. The sole basis for Personal-
`Web’s challenge to the district court’s finding on claim pre-
`clusion is its contention that the Texas action and the
`customer suits involved different causes of action.
`In determining whether causes of action for patent in-
`fringement are the same, we are guided by the Restate-
`ment (Second) of Judgments (1982). See SimpleAir, Inc. v.
`Google LLC, 884 F.3d 1160, 1165 (Fed. Cir. 2018); Acumed,
`525 F.3d at 1323–24. Following the approach taken in the
`Restatement, we define a cause of action by the transac-
`tional facts from which it arises, and we consider the extent
`of the factual overlap between the two alleged claims at is-
`sue. See Gillig v. Nike, Inc., 602 F.3d 1354, 1363 (Fed. Cir.
`2010) (“Claims arising from the same nucleus of operative
`facts are barred by res judicata.”); Senju Pharm. Co. v. Apo-
`tex Inc., 746 F.3d 1344, 1349 (Fed. Cir. 2014); Acumed, 525
`F.3d at 1323–24 (citing Restatement § 24); Foster v. Hallco
`Mfg. Co., 947 F.2d 469, 478 (Fed. Cir. 1991) (noting that a
`“claim,” i.e., a cause of action, “is used in the sense of the
`facts giving rise to the suit”).
`
`

`

`Case: 19-1918 Document: 123 Page: 17 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`17
`
`In patent cases, one of the areas of factual overlap we
`consider “is the overlap of the product or process accused in
`the instant action with the product or process accused in
`the prior action.” Senju, 746 F.3d at 1349. Claim preclu-
`sion does not apply unless the products or processes are es-
`sentially the same. Id. (citing Acumed, 525 F.3d at 1324);
`SimpleAir, 884 F.3d at 1167. “Accused devices are ‘essen-
`tially the same’ where the differences between them are
`merely ‘colorable’ or ‘unrelated to the limitations in the
`claim of the patent.”’ Acumed, 525 F.3d at 1324 (quoting
`Foster, 947 F.2d at 480). We also consider whether the
`same patents are involved in both suits. Senju, 746 F.3d
`at 1349.
`Importantly, under well-settled principles of claim pre-
`clusion, different arguments or assertions in support of li-
`ability do not all constitute separate claims. See Foster,
`947 F.2d at 478. Regardless of the number of substantive
`theories available to a party and regardless of the differ-
`ences in the evidence needed to support each of those theo-
`ries, a party may not split a single claim into separate
`grounds of recovery and raise those separate grounds in
`successive lawsuits. See Mars Inc. v. Nippon Conlux Ka-
`bushiki-Kaisha, 58 F.3d 616, 619 (Fed. Cir. 1995); Restate-
`ment § 24 cmt. a. Rather, the party must raise in a single
`lawsuit all the grounds of recovery arising from a particu-
`lar transaction that it wishes to pursue. Mars, 58 F.3d at
`619.
`PersonalWeb asserts that in the Texas case it accused
`only the multipart upload functionality of Amazon’s S3 sys-
`tem. In the customer cases before the California court, Per-
`sonalWeb contends it has accused the “cache control”
`functionality, an entirely different feature of Amazon’s S3
`system. According to PersonalWeb, these different fea-
`tures constitute different products or processes for
`
`

`

`Case: 19-1918 Document: 123 Page: 18 Filed: 06/17/2020
`
`18
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`purposes of claim preclusion analysis.4 PersonalWeb thus
`contends that the accused activity in the customer cases is
`not essentially the same as the activity that was accused in
`the Texas case, and that claim preclusion is therefore inap-
`plicable in the customer cases.
`Although PersonalWeb contends that the accused fea-
`ture in the customer cases is different from the accused fea-
`ture in the Texas case, PersonalWeb concedes that “the
`conditional GET commands” that are at issue in the cus-
`tomer cases were identified in the infringement conten-
`tions in the Texas case. Appellant’s Br. at 37. Nonetheless,
`PersonalWeb contends that there were only a “handful” of
`references to those conditional operations in the Texas in-
`fringement contentions, not enough to constitute a sub-
`stantial factual overlap. Moreover, PersonalWeb contends
`that it referred to that infringement theory in the Texas
`case only by way of “analogy.”
`Contrary to PersonalWeb’s assertions, PersonalWeb
`did not limit its infringement contentions in the Texas case
`to S3’s multipart upload functionality. As PersonalWeb
`told the trial court in the Texas case, “the accused function-
`alities of S3 include but are not limited to its ‘multipart up-
`load’ feature and ‘conditional operations.’” PersonalWeb’s
`assertion that it included conditional get requests in the
`Texas infringement contentions as analogies, not accusa-
`tions, is thus at odds with the representations Personal-
`Web made in the Texas case. Because PersonalWeb
`accused the use of “conditional operations” in the Texas
`case, PersonalWeb’s arguments regarding the purported
`
`
`4 PersonalWeb also contends that the customer cases
`are different because they include a new product, Amazon
`CloudFront. None of the customer cases before this court,
`however, involve accusations against CloudFront, so that
`argument is irrelevant to the resolution of this appeal.
`
`

`

`Case: 19-1918 Document: 123 Page: 19 Filed: 06/17/2020
`
`IN RE: PERSONALWEB TECHNOLOGIES LLC
`
`19
`
`differences between the multipart upload and the “cache
`control” functionalities of S3 are irrelevant.
`In any event, regardless of the breadth of the specific
`infringement theories PersonalWeb pursued in the Texas
`case, it is clear that the complaints in the customer cases
`and the complaint in the Texas case relate to the same set
`of transactions. In the Texas case, PersonalWeb alleged
`that it had been injured by acts of infringement consisting
`of the manufacture, use, sale, importation, and/or offer for
`sale of the Amazon S3 product. Every alleged act of in-
`fringement in the eight customer cases before us is likewise
`based on the use of the same Amazon S3 product.
`At most, PersonalWeb has shown that it emphasized
`different facts in support of a different theory of infringe-
`ment in the prior case. But that is not enough to avoid
`claim preclusion. See Restatement § 24 cmt. c (“That a
`number of different legal theories casting liability on an ac-
`tor may apply to a given episode does not create multiple
`transactions and hence multiple claims. This remains true
`although the several legal theories depend on different
`shadings of the facts, or would emphasize different ele-
`ments of the facts . . . .”). We therefore uphold the district
`court’s ruling that claim preclusion principles bar Person-
`alWeb from pursuing infringement claims in the eight cus-
`tomer cases for actions predating the judgment in the
`Texas case.
`
`B
`In addition to the two t

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket