`
`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.
`
`
`
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`
`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
`
`
`
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`
`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
`
`
`
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`
`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.
`
`
`
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`
`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”).
`
`
`
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`IN RE: PERSONALWEB TECHNOLOGIES LLC
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`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
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`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.
`
`
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`IN RE: PERSONALWEB TECHNOLOGIES LLC
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`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