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,

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

v.
ADOBE SYSTEMS INC., ET AL.,
Defendants.

DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER
SECTION 102(B)
I, Jason W. Wolff, declare and state as follows:
1.

I am a principal at Fish & Richardson P.C., counsel of record in this action for

Defendant Adobe Systems Incorporated (“Adobe”). I am a member of the Bar of the State of
California and of this Court. I have personal knowledge of the matters stated in this declaration
and would testify truthfully to them if called upon to do so.
2.

Eolas proposes 6 statements of undisputed fact in its opposition to Defendants’

Motion for Summary Judgment of Invalidity Under Section 102(b). These “facts” are largely
irrelevant make-work and generally disputed.
3.

Eolas statement no. 1 reads:

“Eolas’ infringement contentions never mention, cite or otherwise refer to any
version of Adobe Acrobat released prior to version 5 (which was released in 2001). See
Ex. A at 85 (Acrobat version 5); Ex. B at 142 (same); Ex. C (Acrobat 5.0 released April
2001). Eolas’ contentions do not provide a claim-by-claim and element-by-element
mapping of the 1993 Acrobat to the claims of the patents-in-suit.”
DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 1

4.

Eolas statement no. 1 is denied. Mukerji Exhibits 2 and 3 (Dkts. 869-02 and 869-

03) to Adobe’s opening motion provides Eolas’s infringement contentions. The excerpts cited
by Eolas do not concern all asserted claims, nor do they reflect language by Eolas limiting the
accused versions in anyway. In fact, Eolas’s contentions were expansive and even noted that
they were “not limited by the browser in use,” see, e.g., Dkt. Nos. 869-03 at 1 and 4 and 869-02
at 1 (respectively below):

…

…

5.

Eolas statement no. 2 reads:

“Eolas’ patents-in-suit are entitled to a priority date of October 1993—based upon
their October 1994 filing. Ex. D (U.S. Patent No. 5,838,906 (filed Oct. 17, 1994)); Ex. E
(U.S. Patent No. 7,599,985 (filed Aug. 9, 2003) (continuation of App. No. 09/075,359,
which is a continuation of App. No. 08/324,443, filed on Oct. 17, 1994, now U.S. Patent
No. 5,838,906)).”
DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 2

6.

The priority date is irrelevant since the motion is under 102(b) and it is undisputed

the Acrobat technology was offered for sale in June 1993, more than a year before the October
17, 1994 filing date. Defendants deny statement no. 2, particularly that the priority of the
patents-in-suit is “October 1993.” The patents claim priority to filings on October 17, 1994 and
Eolas offers no evidence that an earlier date is appropriate or even an argument that it is relevant.
7.

Eolas statement no. 3 reads:

“Each claim in both of the patents-in-suit relates to embedding content in a
browser controlled window and/or formatting a communication so that a browser may
display such embedded content in a browser controlled window if it is received by the
browser. For example, claim 1 of the ’906 patent includes the limitation: ‘display said
object and enable interactive processing of said object within a display area created at
said first location . . . in said first browser-controlled window.’ Ex. D at col.17 ll.22–27.”
8.

The claim language is largely irrelevant because Defendants’ motion is based on

Eolas’s infringement allegations. Defendants agree that claim 1 of the ‘906 patent includes the
quoted limitation, but dispute that the claim language can be summarized in the equivocal
fashion of Eolas statement no. 3, which is a purely legal issue concerning claim construction. It
is noted that in Dkt. 995 at 2-3, Eolas argues that the claim limitations are merely “environment”
limitations and not required at all. See, e.g., Dkt. 995 at footnotes 5 and 6:

DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 3

9.

Eolas statement no. 4 reads:

“Defendants’ Motion relies on the declaration of Robert Wulff. Motion at 2. As
Mr. Wulff testified in his deposition, the 1993 Acrobat could not display a PDF within a
browser controlled window—instead it used the prior art technique of a “helper
application” to display PDF documents in a window external to, and not controlled by,
the browser. Ex F at 20:18–21:1; id. at 21:25–22:16; Ex. G (referring to Eolas’
technology tutorial which was submitted to the Court and discusses “helper
applications”).”
10.

Mr. Wulff’s testimony cited by Eolas is irrelevant. Defendants dispute the

summary of the testimony in Eolas statement no. 4 and that it properly uses the claim language
as construed by the Court and as understood by a person of ordinary skill in the art, particularly
the use of the claim term “browser” as opposed to a “web browser,” the latter being the subject
of the testimony.
11.

Eolas statement no. 5 reads:

“As Mr. Wulff further testified, Acrobat 3—released in November 1996 (nearly
two years after the October 1994 filing date of the patents-in-suit and three years after
their priority date)—was the first version of Acrobat with the capability of embedding
PDF content within a browser controlled window. Ex. F at 24:22–25:5; see also id. at
23:7–23 (Adobe did not even have the idea to embed PDF content within a browser
controlled window until after the filing date of the patents-in-suit). Mr. Wulff also
testified that he has never seen anyone use the 1993 Acrobat to display a PDF embedded
in a browser controlled window. Id. at 20:18–21:1.”
12.

Mr. Wulff’s testimony cited by Eolas is irrelevant. Defendants dispute the

summary of the testimony in Eolas statement no. 5 and that it properly uses the claim language
as construed by the Court and as understood by a person of ordinary skill in the art, particularly
the use of the claim term “browser” as opposed to a “web browser,” the latter being the subject
of the testimony.
13.

Eolas statement no. 6 reads:

“Defendants’ validity expert, Dr. Phillips, did not offer any opinions as to any
alleged invalidity of the patents-in-suit based on the 1993 Acrobat. Ex. H at 1–12.”

DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 4

14.

Whether Dr. Phillips offered “any” opinion regarding 1993 Acrobat is irrelevant.

Furthermore, Eolas statement no. 6 is denied. Attached as Exhibit D is an excerpt from Dr.
Phillips’ report addressing invalidity of the patents-in-suit in view of the 1993 Acrobat
technology. Also attached Exhibit E as are true and correct copies of excerpts from the materials
cited in these paragraphs of Dr. Phillips’s report (Exhibit E includes Martin Exhibit 29 and
McRae Exhibit 13), and Exhibits B and C, which are true and correct copies of deposition
exhibits from the deposition of Eric Bina, which show that the “environment” claim construction
issue raised by Eolas was known and inherently part of the state of the prior art more than a year
before the patent was filed and discussed as part of the default and expected use of the Acrobat
and other software.
15.

Eolas statement no. 7 reads:

“Defendants have no evidence applying the claims of the patents-in-suit as
construed by the Court to the 1993 Acrobat.”
16.

Eolas statement no. 7 is denied. See Dkts. 896-02 and 896-03, filed with

Defendants’ opening brief, which are Eolas’s infringement contentions against Adobe’s PDF
authoring tools and Dkt. 869 at 6 showing the undisputed identity of the alleged infringing
functionality as between Acrobat in 1993 and Acrobat presently (reproduced below).

DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 5

Executed this 11th day of October 2011, at San Diego, California.
/s/ Jason W. Wolff
Jason W. Wolff

DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 6

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

DECLARATION OF JASON W. WOLFF IN SUPPORT OF REPLY IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER SECTION 102(B) - Page 7