United States District Court, N.D. California, San Jose Division
IN RE PERSONALWEB TECHNOLOGIES, LLC, ET AL. PATENT LITIGATION
PERSONAL WEB TECHNOLOGIES, LLC, et al., Defendants. AMAZON.COM, INC., et al., Plaintiffs,
ORDER DENYING PERSONALWEB'S MOTION FOR ENTRY OF
JUDGMENT [RE: ECF 538, ECF 152]
LABSON FREEMAN, UNITED STATES DISTRICT JUDGE.
the Court is PersonalWeb Technologies, LLC's
(“PersonalWeb”) motion for final judgment of
non-infringement pursuant to Federal Rule of Civil Procedure
54(b). Mot., ECF 538. Defendants Amazon.com Inc. and Amazon
Web Services, Inc. (collectively, “Amazon”)
oppose the motion. Opp'n, ECF 547. In its reply brief,
PersonalWeb changes course and asserts that “Rule 54(b)
may not technically be the correct rule for this
motion” and now seeks to “dismiss this entire
action pursuant to Rule 41(a)(2).” Reply at 3-4, ECF
548. Having considered the parties' respective written
submissions, the Court finds the matter appropriate for
submission without oral argument. Civ. L.R. 7-11(b). The
Court therefore VACATES the hearing scheduled for January 23,
2020. For the reasons stated below, the Court DENIES
PersonalWeb's motion for entry of judgment.
facts of this multidistrict litigation (“MDL”)
are well known to the parties and the Court need not recite
them in detail here. See In re PersonalWeb Techs., LLC,
et al. Patent Litig., No. 18-MD-02834-BLF, 2019 WL
1455332, at *1-4 (N.D. Cal. Apr. 2, 2019). In brief, this
Court issued its Claim Construction Order on August 16, 2019.
ECF 485. Based on the Court's construction of the
disputed terms “unauthorized or unlicensed” and
“authorization” PersonalWeb conceded that it
cannot meet its burden of proving infringement. Mot. at 2.
PersonalWeb argues that entry of final judgment of
non-infringement in Amazon's favor “will allow the
parties to forego further litigation and conserve judicial
resources in this case while preserving PersonalWeb's
right to appeal the Court's Claim Construction
opposes for three reasons: (1) Amazon has raised additional
non-infringement arguments at summary judgment that are
independent from the claim construction issue, (2)
PersonalWeb's proposed judgment (non-infringement without
prejudice) as to U.S. Patent No. 5, 978, 791 (the
“'791 patent”) would give PersonalWeb the
opportunity to re-assert the patent, and (3) any appeal in
PersonalWeb Technologies, LLC et al v. Twitch
Interactive, Inc., No. 5:18-cv-05619-BLF (N.D. Cal.)
(the “Twitch Action”) will likely present
identical claim construction issues and overlapping
non-infringement arguments and therefore, motions for summary
judgment in both actions should be heard concurrently.
Opp'n at 3-4.
responds that the Court should enter a judgment “to
avoid having to work up the entirety of the summary judgment
motion based on issues that Amazon had never raised until
now-work that will be entirely wasted if Amazon prevails in
the appeal on claim construction[.]” Reply at 1, ECF
548. Additionally, PersonalWeb offers to modify its proposed
order and final judgment to include a declaratory judgment of
noninfringement regarding U.S. Patent No. 7, 945, 544 (the
“'544 patent”) and '791 patents.
Id. As for the Twitch Action, PersonalWeb
distinguishes the case that Amazon cites, but fails to
provide a counter argument other than “delaying entry
of judgment in this action is burdensome on the parties and
incongruous with protecting judicial economy.”
Id. at 3. Finally, PersonalWeb abandons Rule 54(b)
as the basis for its motion and asks this Court to dismiss
“this entire action pursuant to Rule 41(a)(2).”
Id. at 3-4.
the Court addresses PersonalWeb's Rule 41(a)(2)
argument-raised for the first time in its reply brief.
District courts need not consider arguments raised for the
first time in a reply brief. Zamani v. Carnes, 491
F.3d 990, 997 (9th Cir. 2007). It would be unfair to the
non-moving party to decide the motion on grounds not raised
in the moving papers. See Estate of Bojcic v. City of San
Jose, No. C05-3877 RS, 2007 WL 3232221, at *1 (N.D. Cal.
Oct. 31, 2007). Accordingly, the Court declines to consider
PersonalWeb's invitation to dismiss “this entire
action, ” which the Court presumes is meant to include
all cases consolidated in this MDL, under Rule
the substance of PersonalWeb's motion, the Court agrees
with Amazon. Amazon has raised additional non-infringement
arguments at summary judgment that are independent from the
claim construction issue PersonalWeb plans to appeal. At this
late stage in the litigation, the Court does not see a valid
reason to deprive Amazon of a ruling on its summary judgment
motion, which is filed and is scheduled to be heard in two
weeks. Amazon is correct in noting that the Federal Circuit
can affirm a judgment of non-infringement based on any ground
supported by the record, and without a decision from this
Court, Amazon will be foreclosed from raising its additional
arguments on appeal. See Opp'n at 3.
Court also finds Amazon's argument regarding the Twitch
Action persuasive. This MDL includes the Twitch Action, which
the Court has designated-as a representative for the numerous
customer cases-to proceed along with the Amazon matter. ECF
313. Decoupling these cases at this late stage will be
contrary to the efficiencies desired by the parties and the
Court throughout this MDL.
foregoing reasons, the Court DENIES PersonalWeb's motion
for entry of judgment of non-infringement.