Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1044

SUR-REPLY to Reply to Response to Motion 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 Eolas Technologies Incorporated. (McKool, Mike)

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

Eolas Technologies Incorporated,
Plaintiff,
vs.
Adobe Systems Inc., Amazon.com, Inc.,
Apple Inc., Argosy Publishing, Inc.,
Blockbuster Inc., CDW Corp.,
Citigroup Inc., eBay Inc., Frito-Lay, Inc.,
The Go Daddy Group, Inc., Google Inc.,
J.C. Penney Company, Inc., JPMorgan
Chase & Co., New Frontier Media, Inc.,
Office Depot, Inc., Perot Systems Corp.,
Playboy Enterprises International, Inc.,
Rent-A-Center, Inc., Staples, Inc., Sun
Microsystems Inc., Texas Instruments Inc.,
Yahoo! Inc., and YouTube, LLC,
Defendants.

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JURY TRIAL
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PLAINTIFFS’ SUR-REPLY IN OPPOSITION TO
DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF INVALIDITY UNDER
SECTION 102(B) [DKT. NO. 869]

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TABLE OF AUTHORITIES
Page(s)
CASES
Vanmoor v. Wal-Mart,
201 F.3d 1363 (Fed. Cir. 2000)..................................................................................................2

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I.

Introduction
Defendants have failed to meet their burden to prove invalidity in light of the alleged

prior art version of Acrobat (“1993 Acrobat”). Defendants’ argument cannot overcome the
simple fact that the 1993 Acrobat was never accused of infringement in Plaintiffs’ infringement
contentions and that Defendants have failed to present any evidence that the 1993 Acrobat
anticipates any claim of the patents-in-suit. See Opposition (Dkt. 994, “Opp.”) at 2.
II.

Argument
Invalidity is a question of fact. See Opp. at 1. And, Defendants’ burden for establishing

invalidity—particularly in the context of a motion for summary judgment—is a heavy one. Id.
It is undisputed that the 1993 Acrobat was never an accused product. Opp. at 2, 4. It is
further undisputed that no version of Adobe Acrobat was ever accused of direct infringement.
Opp. at 1. Rather, the theory of Plaintiffs’ infringement contentions1 was that modern versions
of Adobe Acrobat could be used to create PDF documents which could then be embedded in a
web browser-controlled window. Opp. at 4-5. Thus, Plaintiffs alleged, Adobe was indirectly
liable for the sale or use of modern versions of Adobe Acrobat to create PDFs which could then
be embedded in a web browser-controlled window. Opp. at 4; see also Ex 1 to Mukherji Decl.
attached to Motion (Dkt. 869, “Mot.”) at 5-7. Plaintiffs’ contentions never asserted infringement
by Adobe Acrobat in the absence of a web browser.2
Yet, and unlike Plaintiffs’ infringement contentions, Defendants’ Motion and Reply
appear to present a theory of invalidity where no web browser is required. Mot. at 3, 4-6; Reply
1

The infringement contentions directed to Acrobat were withdrawn over a year ago. Opp. at 1.
In fact, in each and every instance, Plaintiffs’ infringement contentions show Adobe PDFs
within a web browser-controlled window. See, e.g., Ex. 1 to Mukherji Decl. attached to Mot. at
5-7. Rather than acknowledge this, Defendants crop portions of Plaintiffs’ infringement
contentions to hide the fact that every infringement example shows PDF documents within a web
browser-controlled window. Compare Mot. at 6 with Ex. 1 to Mukherji Decl. attached to Mot. at
52.
2

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(Dkt. 1018) at 2.

Because Defendants’ Motion advances a theory of invalidity that is

fundamentally different from the theory of infringement presented by Plaintiffs’ infringement
contentions (and is also based on a version of a product never accused of infringement)
Plaintiffs’ infringement contentions cannot support Defendants’ invalidity assertions.
Fundamentally, and in light of these differing theories, neither Defendants nor their
expert have provided a claim-by-claim analysis mapping the 1993 Acrobat to each limitation of
any claim of the patents-in-suit.3 In the absence of a web browser, the Defendants never explain
what meets the “executable application” limitation4, the “identifying text formats” limitation5, or
the “receiv[ing] . . . over said network from said server” limitation6. Not only do Defendants not
say what meets these (and other) claim elements—their declarant, Robert Wulff, testified that the
1993 Acrobat was incapable of meeting these claim limitations. Opp. at 3, 5.
Finally, it is also undisputed that there has been no application of the Court’s claim
construction to 1993 Acrobat. Defendants try to sidestep their responsibility by citing Vanmoor
v. Wal-Mart, 201 F.3d 1363 (Fed. Cir. 2000). However, the Vanmoor case is inapposite.7
III.

Conclusion
For the reasons set forth herein and in Plaintiffs’ Opposition, Defendants have not met

their burden of proof and their Motion should be denied.
3

Contrary to Defendants’ assertion the claim language is not “largely irrelevant” (Wolff Decl.
attached to Reply at ¶ 8)—it is the crux of any proper invalidity argument.
4
Under the theory of Plaintiffs’ infringement contentions, the web browser was the “hypermedia
browser” and Adobe’s Acrobat PDF plug-in was the “executable application.” See, e.g., Ex. 1
to Mukherji Decl. attached to Mot. at 10-13, 18, 26, 32.
5
Under the theory of Plaintiffs’ infringement contentions, the “text formats” were things like
HTML tags and JavaScript that were identified by the parser in the web browser. See, e.g., Ex. 1
to Mukherji Decl. attached to Mot. at 20-27.
6
Under the theory of Plaintiffs’ infringement contentions, the “hypermedia network
environment” was the internet, and the web browser “received” a web page containing an Adobe
PDF document from a web server. See, e.g., Ex. 1 to Mukherji Decl. attached to Mot. at 10-20.
7
In Vanmoor—unlike here—it was proven that “the accused [products] were identical to
[products] manufactured, sold, and used prior to the critical date.” Vanmoor, 201 F.3d at 1365.
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Dated: October 21, 2011.

MCKOOL SMITH, P.C.
/s/ Mike McKool
Mike McKool
Lead Attorney
Texas State Bar No. 13732100
[e-mail]
Douglas Cawley
Texas State Bar No. 04035500
[e-mail]
Holly Engelmann
Texas State Bar No. 24040865
[e-mail]
J.R. Johnson
Texas State Bar No. 24070000
[e-mail]
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Telecopier: [phone]
Kevin L. Burgess
Texas State Bar No. 24006927
[e-mail]
Josh W. Budwin
Texas State Bar No. 24050347
[e-mail]
Gretchen K. Curran
Texas State Bar No. 24055979
[e-mail]
Matthew B. Rappaport
Texas State Bar No. 24070472
[e-mail]
MCKOOL SMITH, P.C.
300 West Sixth Street, Suite 1700
Austin, Texas 78701
Telephone: [phone]
Telecopier: [phone]

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Robert M. Parker
Texas State Bar No. 15498000
[e-mail]
Robert Christopher Bunt
Texas Bar No. 00787165
[e-mail]
Andrew T. Gorham
Texas State Bar No. 24012715
[e-mail]
PARKER, BUNT & AINSWORTH, P.C.
100 E. Ferguson, Suite 1114
Tyler, Texas 75702
[phone]
[phone]- Facsimile
ATTORNEYS FOR PLAINTIFF
EOLAS TECHNOLOGIES INC.
AND THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA

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CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who
have consented to electronic service. Local Rule CV-5(a)(3)(A) on this October 21, 2011.

/s/ Matt Rappaport
Matt Rappaport

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