Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1021

REPLY to Response to Motion re 874 SEALED PATENT MOTION for Partial Summary Judgment of Non-Infringement Based on Divided Infringement filed by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Citigroup Inc., Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Jones, Michael)

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

EOLAS TECHNOLOGIES
INCORPORATED,
PLAINTIFF,
v.
ADOBE SYSTEMS INC., et al.,
DEFENDANTS.

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Civil Action No. 6:09-CV-446-LED

JURY TRIAL DEMANDED

DEFENDANTS’ REPLY TO PLAINTIFF EOLAS’ RESPONSE IN OPPOSITION
TO DEFENDANTS’ JOINT MOTION FOR PARTIAL SUMMARY JUDGMENT
OF NON-INFRINGEMENT BASED ON DIVIDED INFRINGEMENT

I.

INTRODUCTION
Each asserted method claim, whether characterized by Eolas as “server-side” or

“browser-side,” requires performance by more than one actor, and is not infringed by any
Defendant. Eolas’ only argument in opposition is a red herring – that each of the method claims
allegedly recites an “environment.” (See, e.g., D.I. 995 at 3). Eolas’ interpretation effectively
reads the recited steps out of the method claims, and is directly contrary to long-standing Federal
Circuit precedent requiring all steps of a method to be performed for there to be any
infringement. Eolas’ Reply amounts to a futile attempt to undermine the Defendants’ “premise,”
while failing to address divided infringement entirely. (D.I. 995 at 1, 9). There is, therefore, no
dispute that if this Court finds that an asserted method claim requires performance by multiple
entities, then summary judgment of non-infringement is appropriate.
II.

DISCUSSION
It is “axiomatic that a method claim is directly infringed only if each step of the claimed

method is performed.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir.
2008) (emphasis added); Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993). The socalled “browser-side” and “server-side” method claims all share a set of nearly identical active
steps that must each be performed for the claims to be infringed, as highlighted below:
So-called “browser-side” claim 1 of ‘985 Patent
1. A method for running an application program in a
distributed hypermedia network environment, wherein
the network environment comprises at least one client
workstation and one network server coupled to the
network environment, the method comprising:

receiving, at the client workstation from the network
server over the network environment, at least one file
containing information to enable a browser application to
display at least a portion of a distributed hypermedia
document within a browser-controlled window;
executing the browser application on the client

So-called “server-side” claim 20 of ‘985 Patent
20. A method of serving digital information in a
computer network environment having a network server
coupled the network environment, and where the network
environment is a distributed hypermedia environment, the
method comprising:
communicating via the network server with at least one
client workstation over said network in order to cause
said client workstation to:
receive, over said network environment from said
server, at least one file containing information to enable a
browser application to display at least a portion of a
distributed hypermedia document within a browsercontrolled window;
execute, at said client workstation, a browser

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So-called “browser-side” claim 1 of ‘985 Patent
workstation, with the browser application:
responding to text formats to initiate processing
specified by the text formats;
displaying at least a portion of the document within the
browser-controlled window;
identifying an embed text format which corresponds to
a first location in the document, where the embed text
format specifies the location of at least a portion of an
object external to the file, where the object has type
information associated with it;
utilizing the type information to identify and locate an
executable application external to the file;
and automatically invoking the executable application,
in response to the identifying of the embed text format, to
execute on the client workstation in order to display the
object and enable an end-user to directly interact with the
object while the object is being displayed within a
display area created at the first location within the portion
of the hypermedia document being displayed in the
browser-controlled window.

So-called “server-side” claim 20 of ‘985 Patent
application, with the browser application:
responding to text formats to initiate processing
specified by the text formats;
displaying, on said client workstation, at least a portion
of the document within the browser-controlled window;
identifying an embed text format which corresponds to
a first location in the document, where the embed text
format specifies the location of at least a portion of an
object external to the file, where the object has type
information associated with it;
utilizing the type information to identify and locate an
executable application external to the file;
and automatically invoking the executable application,
in response to the identifying of the embed text format, to
execute on the client workstation in order to display the
object and enable an end-user to directly interact with the
object while the object is being displayed within a display
area created at the first location within the portion of the
hypermedia document being displayed in the browsercontrolled window.

Eolas alleges that the “browser-side” claims, such as claim 1, are directly infringed by an
end-user; i.e. all of the steps are performed solely by an end-user. (D.I. 995 at 1). Although all
of the steps in the body of claim 1 also appear in the body of claim 20, a “server-side” claim,
Eolas somehow contends that claim 20 is directly infringed by a Defendant; i.e. all of the steps
are performed solely by a Defendant. This contradictory position cannot be reconciled unless
both claims, which share the same set of steps, require action by both a Defendant and an enduser.1 Contrary to Eolas’ assertion, the claims have not been “drafted purposefully to ‘capture
infringement by a single party.’” (D.I. 995 at 3). Instead, the claims have been drafted such that
nearly identical steps appear in both “browser-side” and “server-side” claims – all of which steps
must be performed by the same party.2

1

This is further supported by the plain language of the claims. For example, the step “communicating . . . with” in
claim 20 requires that both the “network server” and the “client workstation” participate in the communication.
2
For example, if the step of “executing the browser application on the client workstation” in claim 1 is accused of
being performed by an end-user, then the same step of “execute, at said client workstation, a browser application” in
claim 20 must also be performed by an end-user.

2

The sole argument advanced by Eolas in its Reply is a mischaracterization that the claims
merely recite an “environment” with “aspects potentially controlled by different entities.” (D.I.
995 at 5). Uniloc is inapposite for this proposition because it held that an apparatus/system
claim could be infringed by an entity that “makes or uses” a “remote registration station” that
was capable of functioning as “part of a registration system” where “other parties are necessary
to complete the environment [i.e. registration system] in which the claimed element functions.”
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1309 (Fed. Cir. 2011). Indeed, the Federal
Circuit specifically noted that the system claim at issue in Uniloc could not support any method
steps. Id. (“Accepting Microsoft's argument that the local side of Claim 19 requires an end-user's
participation . . . would be akin to importing a method step into this software system—something
the language of Claim 19 does not support.”).
Unlike in Uniloc, the Eolas claims at issue here are method claims that recite method
steps. The issue is not whether other parties are necessary to “complete” the “environment” in
which an apparatus or component can function in, but whether more than one entity performs the
steps of an asserted method. Eolas’ conditional infringement theory cannot circumvent longstanding requirement that the steps recited in the body of each of the claims need to be
performed for the claim to be infringed. For example, Eolas alleges that for the “server-side”
claims, “an infringing server need only format communications in such a way that if received by
the client, the client will perform the actions set forth in the claims.” (D.I. 995 at 8) (emphasis
added).

But a method claim is infringed only where the client actually receives the

communication and performs those steps. See, e.g., Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321,
1329 (Fed. Cir. 2010) (“[I]t is not enough to simply show that a product is capable of
infringement; the patent owner must show evidence of specific instances of direct

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infringement.”). Similarly, the performance of the step “providing at least one client workstation
and one network server” in claim 1 of the ‘906 patent cannot be avoided merely by disregarding
it, as Eolas has done, as reciting an “environment.” (D.I. 995 at 6-7)
Eolas’ reliance on Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368 (Fed.
Cir. 2011) is misplaced. The claim at issue in Advanced concerned a “process for validating
checks” that have already been “encrypted” and “printed.”3 Accordingly, the Federal Circuit
found that steps recited in the preamble (i.e. encrypting and printing) that occurred prior to
validation defined the environment that the validation process operates in. Id. Here, the steps
define the claimed process. For example, the steps recited in claim 20 defines a particular
“method of serving digital information” that comprises “communicating” over a network “in
order to cause” specific steps to occur on the client workstation. The steps requiring action by
the client do not occur a priori, and therefore do not define an environment that the “method of
serving digital information” operates in. Moreover, the steps are recited in the body of the
claims, indicating a definition of the claimed process, as opposed to providing merely
superfluous descriptions of an “environment.” Indeed, these exact limitations have been relied
upon repeatedly by Eolas to secure the patent claims. Eolas’ interpretation would eviscerate any
allegedly novel and patentable features from the invention.
Eolas’ allegation that method claims sharing the same sets of steps are entirely infringed
either by end-users (“browser-side”) or by Defendants (“server-side”) defies logic. Performance
of all of the steps in each method claim requires action by both end-users and Defendants. And,
because neither an end-user nor a Defendant exercises direction or control over the other—a fact
Eolas does not dispute—none of the method claims can be directly infringed by either.
3

Conspicuously absent from Eolas’ Reply is the Federal Circuit’s holding in Advanced: “[Fiserv] would infringe the
method of claim 1, however, only by validating checks that have been encrypted and printed in accordance with
steps described in the preamble.” Id. at 1374 (emphasis added).

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Dated: October 11, 2011

Respectfully submitted,
By: /s/ Sasha G. Rao, with permission by
Michael E. Jones
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]
Lauren N Robinson (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/ David J. Healey, with permission by
Michael E. Jones
David J. Healey
[e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
5

Telephone: [phone]
Facsimile: [phone]
OF COUNSEL:
Frank E. Scherkenbach
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
Jason W. Wolff
[e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
ADOBE SYSTEMS INCORPORATED
/s/ Edward R. Reines, with permission by
Michael E. Jones
Edward R. Reines
[e-mail]
Jared Bobrow
[e-mail]
Sonal N. Mehta
[e-mail]
Aaron Y. Huang
[e-mail]
Andrew L. Perito
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone:
[phone]
Facsimile:
[phone]
Doug W. McClellan
[e-mail]
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
6

Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Jennifer H. Doan
[e-mail]
Joshua R. Thane
[e-mail]
HALTOM & DOAN
6500 Summerhill Road, Suite 100
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Otis W. Carroll, Jr. (Bar No. 03895700)
[e-mail]
Deborah J. Race (Bar No. 16448700)
[e-mail]
IRELAND CARROLL & KELLEY
6101 S. Broadway, Suite 500
Tyler, TX 75703
Telephone:
[phone]
Facsimile:
[phone]
Attorneys for Defendants
AMAZON.COM and YAHOO! INC. 
/s/ Thomas L. Duston, with permission by
Michael E. Jones
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]
Eric Hugh Findlay
Brian Craft
Findlay Craft
6760 Old Jacksonville Highway
Suite 101
7

Tyler, TX 75703
903.534.1100
[e-mail]
[e-mail]
Attorneys for Defendant
CDW LLC
/s/ Edwin R. DeYoung, with permission by
Michael E. Jones
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
214.740.8500
[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
202.408.6470
[e-mail]
Attorneys for Defendant
CITIGROUP INC.
/s/ Proshanto Mukherji, with permission
by Michael E. Jones
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]
[e-mail]
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Proshanto Mukherji
Fish & Richardson
One Marina Park Drive
Boston, MA 02210
617.542.5070
[e-mail]
Attorneys for Defendant
THE GO DADDY GROUP, INC.
/s/ Christopher M. Joe, with permission by
Michael E. Jones
Christopher M. Joe
Brian Carpenter
Eric W. Buether
Buether Joe & Carpenter
1700 Pacific, Suite 2390
Dallas, TX 75201
214-466-1270
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
J.C. PENNEY CORPORATION, INC.
/s/ Michael Ernest Richardson, with
permission by Michael E. Jones
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
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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.

CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a)(3) on this 11th day of October, 2011. All other counsel
of record will be served via facsimile or first class mail.

/s/ Michael E. Jones

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