DCT

5:18-cv-00767

Amazon.com Inc v. Personal Web Tech LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:18-cv-00767, N.D. Cal., 03/23/2018
  • Venue Allegations: Venue is alleged to be proper because the defendants are subject to personal jurisdiction in the district, having filed numerous patent infringement lawsuits against Amazon's customers there.
  • Core Dispute: Plaintiff Amazon seeks a declaratory judgment that its Simple Storage Service (S3) does not infringe five patents owned by Defendants and that Defendants' infringement claims are barred by the doctrines of claim preclusion and Kessler due to a prior lawsuit that was dismissed with prejudice.
  • Technical Context: The patents relate to methods for generating and using content-based unique identifiers (e.g., hash values) to manage, locate, and verify data items in distributed computer systems, a foundational technology for modern cloud storage services.
  • Key Procedural History: The complaint alleges that a 2011 lawsuit filed by Defendants against Amazon, which accused the same S3 technology of infringing a portfolio of related patents, was dismissed with prejudice in 2014. In January 2018, Defendants initiated a campaign of over fifty lawsuits against Amazon's customers, asserting infringement of many of the same patents and one continuation patent based on the customers' use of S3. The complaint notes that all asserted patents have now expired.

Case Timeline

Date Event
1995-04-11 Earliest Priority Date for all Patents-in-Suit
1999-11-02 U.S. Patent No. 5,978,791 Issues
2005-08-09 U.S. Patent No. 6,928,442 Issues
2006-03-11 Amazon Web Services Launches S3 Cloud Storage
2010-09-21 U.S. Patent No. 7,802,310 Issues
2011-05-17 U.S. Patent No. 7,945,544 Issues
2011-12-08 Prior Litigation Filed by PersonalWeb Against Amazon
2012-01-03 U.S. Patent No. 8,099,420 Issues
2014-06-09 Prior Litigation Against Amazon Dismissed With Prejudice
2018-01-08 Defendants File Lawsuits Against Amazon S3 Customers
2018-03-23 Complaint for Declaratory Judgment Filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Patent No. 5,978,791, "DATA PROCESSING SYSTEM USING SUBSTANTIALLY UNIQUE IDENTIFIERS TO IDENTIFY DATA ITEMS, WHEREBY IDENTICAL DATA ITEMS HAVE THE SAME IDENTIFIERS," issued November 2, 1999

  • The Invention Explained:

    • Problem Addressed: Prior art data processing systems typically identify data items (like files) by names that are relative to a specific context, such as a file path within a directory structure. This makes it difficult to verify that a data item is what its name claims it is, or to identify duplicate copies of the same data item that exist in different contexts (e.g., different folders or on different computers) (ʼ791 Patent, col. 1:11–2:16).
    • The Patented Solution: The invention creates a "substantially unique identifier" or "True Name" for a data item that depends only on the content of the data item itself, typically by using a message digest or hash function. This identifier is context-independent, ensuring that two identical data items will always have the same identifier, which allows for robust duplicate detection, data verification, and efficient caching across a distributed system (ʼ791 Patent, Abstract; col. 3:24–31).
    • Technical Importance: This method of content-addressable storage enables foundational features of modern distributed systems, including data deduplication to save storage space and efficient, transparent access to data regardless of its physical location (ʼ791 Patent, col. 3:41–4:22).

  • Key Claims at a Glance:

    • The complaint asserts non-infringement of at least claim 38 of the ʼ791 Patent (Compl. ¶53). Claim 38 is an independent method claim.
    • The essential elements of Claim 38 are:
      • (A) determining a substantially unique identifier for the data item, the identifier depending on and being determined using all of the data in the data item and only the data in the data item, whereby two identical data items in the system will have the same identifier;
      • (B) requesting the particular data item by sending the data identifier of the data item from the requester location to at least one location of a plurality of provider locations in the system.
    • The complaint notes that claims 38 and 42 are asserted against its customers (Compl. ¶28).

  • Patent Identification: U.S. Patent No. 6,928,442, "ENFORCEMENT AND POLICING OF LICENSED CONTENT USING CONTENT-BASED IDENTIFIERS," issued August 9, 2005

  • The Invention Explained:

    • Problem Addressed: The patent addresses the challenge of enforcing licensing terms and policing unauthorized use of digital content across a distributed network of computers where multiple copies of a file may exist (’442 Patent, col. 2:1–12).
    • The Patented Solution: The invention uses the same content-based naming system from the parent '791 patent to solve this problem. By generating a content-based identifier (a "name") for a licensed data file, a system can then search for that specific name across a plurality of computers to determine if authorized or unauthorized copies are present, enabling policing and enforcement actions (’442 Patent, Abstract).
    • Technical Importance: This approach provides a technical mechanism for digital rights management (DRM) and content tracking in networked environments, a significant area of development as digital content distribution became widespread (’442 Patent, col. 2:1–12).

  • Key Claims at a Glance:

    • The complaint asserts non-infringement of at least claim 10 of the ʼ442 Patent (Compl. ¶61). Claim 10 is an independent method claim.
    • The essential elements of Claim 10 are:
      • obtaining a name for a data file, the name being based at least in part on a given function of the data, wherein the data used by the function comprises the contents of the particular file; and
      • determining, using at least the name, whether a copy of the data file is present on at least one of said computers.
    • The complaint notes that claims 10 and 11 are asserted against its customers (Compl. ¶28).

  • Multi-Patent Capsule: U.S. Patent No. 7,802,310

    • Patent Identification: U.S. Patent No. 7,802,310, "CONTROLLING ACCESS TO DATA IN A DATA PROCESSING SYSTEM," issued September 21, 2010.
    • Technology Synopsis: This patent describes a system for controlling access to data by using a content-dependent name. A request for a data item includes its content-dependent name, which is then compared to a plurality of values to determine if access is authorized or unauthorized (Compl. ¶69).
    • Asserted Claims: Claims 20, 69, and 71 (Compl. ¶28).
    • Accused Features: The system is accused of infringement through its S3 service, where ETags are alleged to be the "content-dependent name" used to authorize access (Compl. ¶70).

  • Multi-Patent Capsule: U.S. Patent No. 7,945,544

    • Patent Identification: U.S. Patent No. 7,945,544, "SIMILARITY-BASED ACCESS CONTROL OF DATA IN A DATA PROCESSING SYSTEM," issued May 17, 2011.
    • Technology Synopsis: The technology involves creating a unique identifier for an object by generating individual hashes for its constituent parts and then hashing those hashes together. This composite hash is then used as a search key to match against a digital key in a database to locate the object (Compl. ¶77).
    • Asserted Claims: Claims 46, 48, 59, 52, 55, and 56 (Compl. ¶28).
    • Accused Features: The S3 service is accused of infringement based on its alleged use of ETags in a manner that meets the claim limitations for matching a search key in a database (Compl. ¶78).

  • Multi-Patent Capsule: U.S. Patent No. 8,099,420

    • Patent Identification: U.S. Patent No. 8,099,420, "ACCESSING DATA IN A DATA PROCESSING SYSTEM," issued January 3, 2012.
    • Technology Synopsis: The patent describes a system for selectively permitting access to a data item. Access is resolved based on whether a content-dependent digital identifier for the data item corresponds to an entry in one or more databases of authorized identifiers (Compl. ¶85-86).
    • Asserted Claims: Claims 25-27, 29, 30, 32-36, and 166 (Compl. ¶28).
    • Accused Features: The S3 service is accused of infringement, with the complaint alleging that S3's ETags are used as the claimed "content-dependent digital identifiers" to retrieve data and evaluate access authorization (Compl. ¶86).

III. The Accused Instrumentality

  • Product Identification: The Amazon Simple Storage Service ("S3") (Compl. ¶13).
  • Functionality and Market Context:
    • S3 is a cloud-based web storage service that allows developers and businesses to store and retrieve data objects (Compl. ¶¶12-13). According to the complaint, when a user uploads a file to S3 as an object, the S3 system generates an "E-Tag" value associated with that object (Compl. ¶27). This E-Tag is alleged by Defendants to be the content-based identifier that infringes the patents-in-suit (Compl. ¶27). The complaint characterizes the infringement allegation as being based on customers' "contractual choice" to use the S3 system and upload files, which causes the S3 hardware and software to generate the accused E-Tag (Compl. ¶¶25-26).
    • The complaint alleges that S3 is a core part of AWS's widely used cloud computing services and that the sole connection between the dozens of sued customers is their use of S3 (Compl. ¶24).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

  • 5,978,791 Infringement Allegations
Claim Element (from Independent Claim 38) Alleged Infringing Functionality Complaint Citation Patent Citation
(A) determining a substantially unique identifier for the data item, the identifier depending on and being determined using all of the data in the data item and only the data in the data item... The E-Tag value generated by the Amazon S3 system upon an object's upload, which is alleged to be determined by calculating a hash fingerprint of the file's contents. ¶27 col. 12:55-64
(B) requesting the particular data item by sending the data identifier of the data item from the requester location to at least one location of a plurality of provider locations in the system. The complaint alleges non-infringement on the basis that the E-Tags generated by S3 cannot be used to request an S3 object and are not used as identifiers for retrieval in the S3 system. ¶54 col. 6:4-10
  • 6,928,442 Infringement Allegations
Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
obtaining a name for a data file, the name being based at least in part on a given function of the data, wherein the data used by the function comprises the contents of the particular file... The E-Tag value generated by the Amazon S3 system upon an object's upload, which is alleged to be a name based on the file's content. ¶27 col. 2:1-5
determining, using at least the name, whether a copy of the data file is present on at least one of said computers. The complaint alleges non-infringement on the basis that the E-Tags generated by S3 are not used to locate or determine the presence of a data object within the S3 system. ¶62 col. 2:5-8
  • Identified Points of Contention:
    • Scope Questions: A primary point of contention appears to be whether the S3 "ETag" is functionally equivalent to the claimed "substantially unique identifier" or "name." The dispute may focus on whether an ETag is based only on the data content, as required by claim 38 of the ʼ791 Patent, or if it incorporates other metadata that would place it outside the claim's scope.
    • Technical Questions: A central technical question is whether the accused S3 system architecture actually uses an ETag to perform the functions required by the claims. The complaint raises the question of whether an ETag can be used to request a data item ('791 Patent) or to determine its presence on a computer ('442 Patent), alleging that S3 uses other mechanisms (like URLs) for these functions and that ETags are used for a different purpose, such as integrity checking after retrieval (Compl. ¶¶54, 62).

V. Key Claim Terms for Construction

  • The Term: "requesting the particular data item by sending the data identifier" (’791 Patent, Claim 38)

  • Context and Importance: This term is critical because Amazon's non-infringement defense hinges on the argument that S3's ETags are not used for this purpose (Compl. ¶54). Practitioners may focus on this term because its construction will determine whether the claim requires the identifier to be the primary means of retrieval, or if it can be satisfied by a system that uses the identifier for a secondary purpose, like a conditional GET request for caching.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language itself does not explicitly state that sending the identifier must be the sole or primary means of request. A party might argue that any request that includes or relies on the identifier meets the limitation.
    • Evidence for a Narrower Interpretation: The specification's description of the "Realize True File from Location" primitive suggests a process where the "True Name" (the identifier) is the key input used to initiate the retrieval process, which may support an interpretation that the identifier must be used as the primary addressing mechanism (ʼ791 Patent, col. 16:10–13).

  • The Term: "determining, using at least the name, whether a copy of the data file is present" (’442 Patent, Claim 10)

  • Context and Importance: Similar to the term from the '791 patent, the infringement analysis for the '442 patent will likely turn on the functional role of the ETag. Amazon alleges that ETags are not used to "locate a particular data object" in the S3 system (Compl. ¶62). The construction of "determining...whether a copy...is present" will be central to this dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language does not specify how the determination is made, only that it uses the "name." This could be argued to cover any system check, direct or indirect, that uses the content-based name to confirm a file's presence.
    • Evidence for a Narrower Interpretation: The patent's abstract and detailed description frame the invention in the context of "policing licensed content" by actively searching for copies (’442 Patent, Abstract; col. 2:1-12). This may support a narrower construction requiring an active search or query function based on the name, rather than a passive integrity check.

VI. Other Allegations

  • Indirect Infringement: The complaint is for declaratory judgment of non-infringement, but it acknowledges that Defendants' suits against Amazon's customers create "implied indirect infringement claims against Amazon" (Compl. ¶31). The factual basis for this implied claim is that AWS "designs and develops the accused S3 technology" that is provided to its customers (Compl. ¶31).
  • Willful Infringement: Willfulness is not directly alleged in this complaint. However, Amazon repeatedly alleges that the facts supporting its non-infringement position were "known to PersonalWeb based on its prior suit against Amazon asserting the ['791/'442] patent against the same technology" (Compl. ¶¶54, 62, 70, 78, 86). This allegation may be intended to preemptively counter any future willfulness claims by PersonalWeb or to build a case for attorney's fees under 35 U.S.C. § 285.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A primary issue will be one of claim preclusion: Are Defendants’ current infringement claims against Amazon's customers, which target the S3 service, barred by the 2014 dismissal with prejudice of their prior suit against Amazon, which involved the same S3 technology and patents from the same family? This question will require the court to analyze the identities of the parties (or their privies), the accused instrumentalities, and the asserted patent claims across both litigations.
  • A key evidentiary question will be one of functional implementation: If the claims are not precluded, does Amazon's S3 "ETag" perform the specific functions required by the asserted claims? The case may turn on evidence of whether an ETag is used to request and locate data objects, as the claims require, or whether its role is limited to post-retrieval integrity verification, which would suggest a fundamental mismatch in technical operation.