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)

Exhibit D

Expert Report on Invalidity
ADOBE et al v. EOLAS
Richard L. Phillips
July 20, 2011

Table of contents
Table of contents ............................................................................................................... 1
Appendices ........................................................................................................................ 7
I.

Appendix A: CV ................................................................................................. 7

II.

Appendix B: Claim chart exhibits ................................................................ 7

III.

Appendix C: Video Exhibits ....................................................................... 11

IV.

Appendix D: Declaration of Dan Sadowski ............................................. 11

Expert report by Richard L. Phillips on Invalidity .................................................... 12
I.

Introduction ...................................................................................................... 12
1.

EXPERT QUALIFICATIONS .................................................................. 12

2.

GENERAL TECHNICAL EXPERIENCE............................................... 12

3.

SOFTWARE DEVELOPMENT EXPERIENCE ..................................... 14

II.

Information Considered In Forming My Opinions................................. 16
1.

PATENTS IN SUIT AND DECLARATIONS ........................................ 16

2.

USPTO PROSECUTION HISTORIES .................................................... 16

3.

PUBLICATIONS AND OTHER REFERENCES ................................... 17

4.

SOFTWARE ............................................................................................... 21

5.

COMPUTERS ............................................................................................ 23

6.

WWW-TALK PUBLICATIONS AND OTHER EMAILS .................... 25

7.

VIDEOS ...................................................................................................... 29

8.

LITIGATION MATERIALS ..................................................................... 29

9.

OTHER ....................................................................................................... 29

III.

Tools Available To A Person of Ordinary Skill By October'93 .............. 30

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proper recipients and (after applying permission checks) forwards the message to
them. The ToolTalk service enables independent applications to communicate with
each other without having direct knowledge of each other. Applications create and
send ToolTalk messages to communicate with each other. The ToolTalk service
receives these messages, determines the recipients, and then delivers the messages to
the appropriate applications.
584.

Also as I described above, it was well known that HDF formatted data

in a distributed processing environment could be provided by Collage, as described
in [Collage92]. Among Collage's many features is the ability to establish
communication with remote processes, e.g. a simulation running on a
supercomputer. These remote processes can be controlled remotely, and images and
data can be transported to and from the remote process. Moreover, one can perform
most of these operations not only on one machine, but on any machine that is
participating in a collaborative session with NCSA Collage. Consequently,
collaborators using Mosaic clients and involved in a Collage session can, for example,
open and view an HDF (Hierarchical Data Format) file that was produced by a
supercomputer computation.
585.

In Claim Chart Exhibit 10, I explain on an element-by-element basis

why Mosaic and Chris McRae's posting renders obvious all asserted claims of the
patents in suit.

6. Mosaic in combination with Adobe PDF related postings to wwwtalk.
a. Adobe PDF is prior art

586.

As I noted above with particular www-talk postings by McRae, I

understand that McRae produced several emails published by others to the wwwtalk mailing list more than a year before the patents were filed. Accordingly, these
messages (and the subject matter they disclosed) was known or used by others in this
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country before the invention by the applicants of the patents-in-suit, was published
before the invention by the applicants of the patents-in-suit, was in public use in this
country more than one year prior to the date of application of the patents-in-suit, and
was a printed publication more than one year prior to the date of application of the
patents-in-suit.
587.

Eolas’s preliminary infringement contentions accuse Adobe Acrobat of

infringement. (See, e.g., 906 – Adobe –PDF – Authoring Tools and Players (Final).pdf
at 1 and 105; 985 – Adobe – PDF – Authoring Tools and Players (Final).pdf at 1 and
183.) The functionality alleged to infringe is virtually every feature of Adobe’s
Acrobat Reader. (See, e.g., 906 – Adobe – PDF – Authoring Tools and Players
(Final).pdf at 51 and 61 (61 shown below).)

588.

These same features were available in Adobe’s Acrobat software more

than a year before the patents were filed. As such, if it infringes now, as Eolas alleges,
it infringed prior to October 17, 1993 and it is 102(b) prior art. Below is a screen
capture from Adobe’s Acrobat Reader user manual from prior to October 17, 1993.

589.

The zoom and page navigation controls were present in 1993, as were

the thumbnails and other navigation and data manipulation options. (ADBE0196072113; see also [Adobe93].)
590.

In fact, over the course of discovery, I understand that that it was found

that the inventors themselves signed a non-disclosure agreement with Adobe in
August of 1993, suggesting that in fact Acrobat could in fact be 102(f) prior art,
meaning the inventors derived their invention from Adobe and the www-talk group.
(See ADBE0195776-777.) In fact, the inventors and individuals who worked with
them at UCSF remarked on the Adobe Acrobat and PDF software to the www-talk
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group. (See 1993-06-21 0920 email from McRae; 1993-07-20 1314 email from Martin).
Compare, for example, [Adobe93] at 79 to the EMBED tag disclosed in the patents:
they are remarkably similar.
b. Obviousness based on Mosaic with Acrobat and PDF www-talk postings

591.

Beyond the inventors’ knowledge of Adobe’s Acrobat and PDF

standards, upon Adobe’s announcement of the alleged infringing technology, the
www-talk group was abuzz with discussions of incorporating the functionality into
web browsers, such as Mosaic, prior to October 17, 1993. (See 1993-06-21 0920 email
from McRae; 1993-07-16 0950 email Cailliau; 1993-07-16 1812 email from Kehoe; 199307-19 1309 email from Kehoe; 1993-07-19 1107 email from Altis; 1993-07-19 1552 email
from Janssen; 1993-07-19 1355 email from Altis; 1993-07-19 1614 email from Kehoe;
1993-07-20 1848 email from Heaney.) Even the inventors noted the strong interest in
the technology. (See 1993-07-19 0855 email from Martin.)
592.

As is noted elsewhere in my report too, the Adobe book referenced for

example in Dr. Martin’s July 19, 1993 email copying co-inventors Doyle and Ang,
[Adobe93], the ability to add a special tag to a document with text formats was
known. [Adobe93] at 79. It was also known that it was also known that the special
tag could refer to another data object, such as an image, sound, or a movie.
[Adobe93] at 78-79.
593.

It would have been obvious in its own right to include a special tag like

that disclosed in [Adobe93] in the Mosaic browser, given the interest in the
community of making such mixed-media compound documents, as well it would
have been obvious to a person of ordinary skill in the art at the time of the invention
to modify the Mosaic browser as discussed in the www-talk publications to include
the Adobe Acrobat functionality into the browser using a helper, DLL or other
external executable application, as is discussed in the www-talk mailings. From a
reading of the postings, it is clear there were two choices for implementing this idea:
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(1) incorporating the processing of the PDF file directly into the browser, or (2) using
a separate executable application to process the PDF file. As the postings suggest, it
was not as advantageous to do (1) because the web browser would have to be
modified every time a new file type was added to the web, and the application for
handling the processing already existed. Reusing the existing application was a
natural design choice for a person of ordinary skill in the art, and techniques for
making APIs and drivers for interprocess (and intra process) communications were
already known, as is detailed elsewhere in my report. (See, e.g., discussion of
MediaView.) The issue distills down to whether the PDF file (for example) will be
displayed in the browser window or in a separate browser window, which is hardly
the type technological advancement beyond the level of ordinary skill in the art at
the time, particularly in view of operation of the prior art browser, OLE technology,
and the HyperCard technology described in my report. (See also, e.g., 6/15/11
Raggett Depo. at 21:18-29:24 (rough) Exs. 4-8.) In my opinion, this also renders the
independent claims obvious and my analysis of the dependent claims would be the
same as it is for my charts concerning Mosaic.

7. HyperCard (including Director and Quicktime) and Viola
a. HyperCard as prior art

594.

HyperCard software version 2.0 was released by 1990, version 2.1 was

released by 1991, and version 2.2 was distributed by December 1993. Corroboration
of this can be found, by way of example, in contemporaneous trade publications such
as InfoWorld, such as those found in the bates range PA-00321271 through PA00321298, or by inspection of dates listed in the software.
595.

Accordingly, all these versions (and any earlier versions) were known

or used by others in this country before the invention by the applicants of the
patents-in-suit.

EXPERT REPORT

RLP