Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1018

RESPONSE in Support re 869 SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) SEALED MOTION Defendants' Motion for Summary Judgment of Invalidity Under Section 102(b) filed by Adobe Systems Incorporated. (Attachments: # 1 Decl of Jason Wolff, # 2 Exhibit B - Bina Depo Exh 04, # 3 Exhibit C - Bina Depo Exh 07, # 4 Exhibit D - Pars 586-593 Excerpts from Phillips Expert Report on Invalidity)(Wolff, Jason)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

EOLAS TECHNOLOGIES, INC. AND THE
REGENTS OF THE UNIVERSITY OF
CALIFORNIA,
Plaintiffs,
v.

Civil Action No. 6:09-CV-446 LED
JURY TRIAL DEMANDED

ADOBE SYSTEMS INC., ET AL.,
Defendants.

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY
JUDGMENT OF INVALIDITY UNDER SECTION 102(B)

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B)

Eolas admits it alleged that Adobe’s PDF authoring tools, including Acrobat, infringed
the patents-in-suit. Dkt. 994 at 2, ¶ 2-3.1 Eolas admits that Acrobat technology was on sale and
sold more than one year prior to October 7, 1993, the critical date for the patents-in-suit. Dkt.
994 at 2, ¶ 1. And Eolas does not dispute that interactive features alleged to infringe in so-called
“modern versions” of Acrobat include the same features and use that existed more than one year
before the critical date. Id. Accordingly, the patents-in-suit are invalid under the on-sale bar.
I.

ARGUMENT
Eolas argues that the Defendants did not prove invalidity by clear and convincing

evidence because they did not provide claim-by-claim analyses that show the 1993 version of
Acrobat contained each limitation of any claim of the patents-in-suit.2 As discussed in
Defendants’ opening brief, this case is not the typical case where the patentee placed some
device on sale prior to the critical date. Instead, this is a case in which the accused product was
offered for sale prior to the critical date of the patented invention. Eolas’s P. R. infringement
contentions satisfy Defendants’ burden here. See Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d
1363, 1366 (Fed. Cir. 2000) (“[T]hat burden was satisfied by [Patentee’s] allegation...”). There is
no limiting description of which versions of Acrobat are alleged to infringe. The coincidental
1

Cites are to the numbered paragraphs in Eolas’s “Response to Statement of Undisputed
Material Fact,” which Eolas lined up with the paragraph count in Adobe’s Statement of Facts.
Eolas only completely denies that its corporate representative and inventor testified that he
understood that Acrobat infringed the patent. For completeness, Adobe denies Eolas’s statement
of material facts, which are mostly irrelevant and addressed elsewhere. Adobe notes that Eolas’s
statement no. 3 is equivocal regarding whether a browser is required, or a content “may” ever be
displayed, though statement nos. 4-5 depend on a “web browser” displaying PDF content. This
intended use “environment” Eolas suggests (see Dkt. 995 footnotes 5 and 6) was already known
and inherently part of the Internet before October 1993. See, e.g., Wolff Decl., Exs. B and C.
2
Eolas contends that Defendants’ expert offered no opinion on invalidity in view of Acrobat.
Dkt. 994 at 3, ¶ 6. This is incorrect. Dr. Phillips opined that Eolas accused the prior art of
infringing and opined that the patents were also invalid as obvious in view of 1993 Acrobat and
the browser community’s desire and suggestions to combine it with a web browser. See Phillips
Report (Wolff Decl. Ex. D at ¶¶586–593) and Wolff Decl. Ex. E (www-talk messages from
¶¶590-591); see also Wolff Decl. Exs. B and C (Bina Exs. 4 and 7).
DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 1

reference to Acrobat 5 in Eolas’s charts is not any analysis by Eolas but random quotes from
Adobe’s documents. See, e.g., Dkt. 869-03 at 1 (“including but not limited to”) and 4 (“and any
other tools used to create pdf or similar content”). 3
Furthermore, that Eolas’s allegations against Acrobat standing alone were only for
indirect infringement does not alter the analysis, and Eolas cites no case making such a
distinction. Eolas alleged contributory infringement specifically, and thus Eolas cannot escape its
allegation that the PDF authoring tools lacked a substantial non-infringing use before the critical
date.4 Furthermore, Eolas does not dispute that the “default and expected use” of Adobe’s PDF
authoring tools has been to “‘create PDF or similar content’ that can then be viewed or read by
other computer users since 1992.” Dkt. 869 at 3 (Adobe fact); Dkt. 994 at 2, ¶ 3 (no denial by
Eolas). Thus the only element disputed by Eolas is whether PDF files could be embedded in a
“web browser.” It was already known and desirable to embed interactive PDF files in a browser,
which is just one technique for sharing files between computers. See Dkt. 869 at 6 (Figs. 1 and
2), and Wolff Decl. Exs. B, C, D, and E.
Lastly, Eolas is bound by its infringement allegations against Acrobat and cites no case to
support its position that a belated withdrawal of its authoring tool contentions changes the
analysis.5 Eolas did not formally withdraw its contentions; it left the issue open to maximize its
leverage against Adobe, later noticing depositions and still seeking a royalty on sales.
II.

CONCLUSION
Defendants submit that the patents-in-suit are invalid under 35 USC § 102(b).

3

Eolas’s infringement charts contradict its statement of fact no. 1.
See Dkts. 869-02 and 869-03, first sentence in the “Evidence” column on the first page.
5
Eolas cites Dkt. 375 at 3 for its assertion that it withdrew its authoring tool contentions, but
Eolas never followed through.
4

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 2

Dated: October 11, 2011

Respectfully submitted,
FISH & RICHARDSON P.C.

/s/ Jason W. Wolff
David J. Healey
1221 McKinney Street, Suite 2888
Houston, TX 77010
[phone]
Email: [e-mail]
Jason W. Wolff
12390 El Camino Real
San Diego, CA 92130
[phone]
Email: [e-mail]
Frank E. Scherkenbach
Proshanto Mukherji
One Marina Park Drive
Boston, MA 02110
[phone]
Email: [e-mail]
Email: [e-mail]
Attorneys for Defendant
ADOBE SYSTEMS INCORPORATED
/s/ Edward R. Reines(w/ permission)
Edward R. Reines
Jared Bobrow
Sonal N. Mehta
Aaron Y. Huang
Andrew L. Perito
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 3

Doug W. McClellan
[e-mail]
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Jennifer H. Doan
Texas Bar No. 08809050
Joshua R. Thane
Texas Bar No. 24060713
Haltom & Doan
Crown Executive Center, Suite 100
6500 Summerhill Road
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Otis Carroll (Bar No. 3895700)
Deborah Race (Bar No. 11648700)
IRELAND, CARROLL & KELLEY, P.C.
6101 South Broadway, Suite 500
Tyler, Texas 75703
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys For Defendants
AMAZON.COM, INC. and YAHOO! INC.
/s/ Thomas L. Duston (w/ permission)
Thomas L. Duston
Julianne Hartzell
Scott A. Sanderson
Anthony S. Gabrielson
Marshall Gerstein & Borun
233 S. Wacker Drive
6300 Willis Tower
Chicago, IL 60606
312.474.6300
[e-mail]
[e-mail]
[e-mail]
[e-mail]

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 4

Eric Hugh Findlay
Brian Craft
Findlay Craft
6760 Old Jacksonville Highway
Suite 101
Tyler, TX 75703
903.534.1100
[e-mail]
[e-mail]
Attorneys for Defendant
CDW LLC
/s/ Edwin R. DeYoung (w/ permission)
Edwin R. DeYoung
Roger Brian Cowie
Galyn Dwight Gafford
Michael Scott Fuller
Roy William Hardin
Jason E. Mueller
Locke Lord LLP
2200 Ross Ave.
Suite 2200
Dallas, TX 75201
[phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Eric L. Sophir
SNR Denton
1301 K Street, N.W.
Suite 600, East Tower
Washington, DC 20005-3364
[phone]
[e-mail]
Attorneys for Defendant
CITIGROUP INC.
/s/ Proshanto Mukherji (w/ permission)
Thomas M. Melsheimer
Neil J. McNabnay
Carl Bruce
Fish & Richardson
1717 Main Street
Suite 5000
Dallas, TX 75201
214.474.5070
[e-mail]
[e-mail]
DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 5

[e-mail]
Proshanto Mukherji
Fish & Richardson
One Marina Park Drive
Boston, MA 02110
617.542.5070
[e-mail]
Attorneys for Defendant
THE GO DADDY GROUP, INC.
/s/ Sasha G. Rao (w/ permission)
James R. Batchelder (pro hac vice)
[e-mail]
Sasha G. Rao (pro hac vice)
[e-mail]
Mark D. Rowland
[e-mail]
Brandon Stroy (pro hac vice)
[e-mail]
Rebecca R. Hermes (pro hac vice)
[e-mail]
Han Xu (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, California 94303-2284
Telephone: [phone]
Facsimile: [phone]
Michael E. Jones (Bar No. 10929400)
[e-mail]
Allen F. Gardner (Bar No. 24043679)
[e-mail]
POTTER MINTON
A Professional Corporation
110 N. College, Suite 500
Tyler, TX 75702
Telephone:
[phone]
Facsimile:
[phone]
ATTORNEYS FOR DEFENDANTS
GOOGLE INC. AND YOUTUBE LLC
/s/ Christopher M. Joe (w/ permission)
Christopher M. Joe
Brian Carpenter
Eric W. Buether
Buether Joe & Carpenter
1700 Pacific, Suite 2390
Dallas, TX 75201
214-466-1270
DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 6

[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
J.C. PENNEY CORPORATION, INC.
/s/ Michael Ernest Richardson (w/ permission)
Michael Ernest Richardson
Beck Redden & Secrest
1221 McKinney
Suite 4500
Houston, TX 77010
713.951.6284
[e-mail]
Kate Hutchins
Wilmer Cutler Pickering Hale and Dorr, LLP
399 Park Avenue
New York, NY 10022
212.230.8800
[e-mail]
Donald R. Steinberg
Mark Matuschak
Wilmer Cutler Pickering Hale and Dorr, LLP
60 State Street
Boston, MA 02109
617.526.5000
[e-mail]
[e-mail]
Daniel V. Williams
Jonathan Hardt
Wilmer Cutler Pickering Hale and Dorr, LLP
1875 Pennsylvania Avenue, N.W.
Washington, D.C. 20006
202.663.6012
[e-mail]
[e-mail]
Attorneys for Defendant
STAPLES, INC.

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B) – Page 7

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on October 11, 2011 to all counsel of record who are deemed to have
consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).

/s/Jason W. Wolff

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT OF INVALIDITY
UNDER SECTION 102(B)