Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1050

MOTION FOR LEAVE TO SUPPLEMENT THEIR P.R. 3-1 INFRINGEMENT CONTENTIONS WITH RESPECT TO FRITO-LAY, INC.'S HAPPINESS.LAYS.COM by Eolas Technologies Incorporated. (Attachments: # 1 Declaration of Thomas Fasone III, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Text of Proposed Order)(McKool, Mike)

EXHIBIT 2

MCKOOL SMITH
A PROFESSIONAL CORPORATION • ATTORNEYS

Josh Budwin
Direct Dial: [phone]
[e-mail]

300 West 6th Street
Suite 1700
Austin, Texas 78701

Telephone: [phone]
Telecopier: [phone]

April 2, 2010

Jeffrey K. Joyner
Greenberg Taurig, LLP
2450 Colorado Avenue, Suite 400E
Santa Monica, CA 90404

Eolas Technologies Incorporated v. Adobe Systems, Inc., et. al; Civil Action
No. 6:09-CV-00446-LED; United District Court of Texas; Eastern District.
Request for Production Pursuant to Paragraph 11 of Discovery Order

RE:

Dear Mr. Joyner:
In order to assist Frito-Lay, Inc. in complying with its disclosure obligations under the
Court’s Discovery Order, Docket Control Order, and applicable Patent Rules, below are
categories of documents and information that Eolas expects to receive from Frito-Lay, Inc.. As
you know, formal document requests in patent cases in the Eastern District of Texas are
unnecessary; rather, pursuant to paragraph 11 of the Discovery Order, the parties are obligated,
without request, under FED R. CIV. P. 26 and Local Rule CV-26 to disclose to each other all
relevant documents. Below, we set forth what we consider to be relevant documents to this case.
The following list is not meant to be exhaustive of Frito-Lay, Inc.’s disclosure obligation;
regardless of this list, Frito-Lay, Inc. should include all documents and things in its initial
disclosures required by the Court’s Discovery Order, Docket Control Order and applicable
Patent Rules.
Within this letter “Accused Products” means, but is not limited to, the following:
The websites (including the servers hosting those websites) and functionality
identified in the charts titled “906 - Frito-Lay - Chart1” and “985 - Frito-Lay Chart1” attached to Eolas’ P.R. 3-2 submission. This includes, but is not limited
to the following:
x Frito-Lay.com

Within this letter “you” or “your” refers to Frito-Lay, Inc. and/or any current or former
employees thereof.
1.

All documents mentioning, concerning or referencing Eolas Technologies Incorporated
(“Eolas”), Michael Doyle, other employees of Eolas, U.S. Patent No. 5,838,906 (“the
’906 patent”); the patent application that matured into U.S. Patent No. 5,838,906; either

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of the reexaminations of U.S. Patent No. 5,838,906; U.S. Patent No. 7,599,985 (“the ’985
patent”); or the patent application that matured into U.S. Patent No. 7,599,985
(collectively hereinafter “the Eolas patents” or “Eolas’ patents”), including but not
limited to:
a. All minutes of any meeting of officers, executives, or Board Directors prepared or
maintained by you that concern or reference Eolas, Michael Doyle, other
employees of Eolas and/or Eolas’ patents;
b. All documents identifying, describing, concerning, or referencing Eolas as
competition and/or potential competition to you;
c. All documents identifying, describing, concerning, or referencing the date and/or
circumstances giving rise to your awareness of Eolas, Michael Doyle, other
employees of Eolas, and/or Eolas’ patents;
d. All documents identifying, describing, concerning, or referencing the date and/or
circumstances giving rise to your awareness of Eolas’ prior litigation with
Microsoft;
e. All documents identifying, describing, concerning, or referencing the date and/or
circumstances giving rise to your anticipation of litigation with Eolas and/or
litigation related to Eolas’ patents;
f. All documents identifying, describing, concerning, or referencing when, if ever,
you sought the advice of counsel after and as a result of learning of any of Eolas’
patents;
g. All documents identifying, describing, concerning, or referencing when, if ever,
you sought the advice of counsel after and as a result of learning of Eolas’ prior
litigation with Microsoft;
h. All documents and things identifying, describing, concerning, or referencing
demonstrations, displays, exhibitions, illustrations, presentations, and/or
showcases by Eolas, Michael Doyle or other employees of Eolas at conferences,
expos, tradeshows, or in other private and non-private settings;
i. All documents identifying, describing, concerning, or referencing discussions
regarding potential business arrangements (including but not limited to
partnerships, potential licensing agreements, and funding opportunities) between
you and/or any third parties and Eolas (or any employee of Eolas including
Michael Doyle);
j. All documents referencing the date, location and/or subject matter of any
meetings between you and Eolas (or any employee of Eolas including Michael
Doyle) or between you and a third party regarding Eolas (or any employee of
Eolas including Michael Doyle);

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k. All communications or documents referencing or containing communications
exchanged between you and Eolas (or any employee of Eolas including Michael
Doyle);
l. All communications or documents referencing or containing communications
exchanged between you and a third party regarding Eolas (or any employee of
Eolas including Michael Doyle) and/or Eolas’ patents;
m. All documents and communications exchanged or created internally by you
referencing Eolas (or any employee of Eolas including Michael Doyle) and/or
Eolas’ patents or referencing meetings related to Eolas (or any employee of Eolas
including Michael Doyle) and/or Eolas’ patents; and
n. All documents exchanged between you and Eolas (or any employee of Eolas
including Michael Doyle) and all documents exchanged between you and a third
party regarding Eolas (or any employee of Eolas including Michael Doyle) and/or
Eolas’ patents.
2.

All documents mentioning, concerning or referencing the persons identified by you in
your Initial Disclosures (and any Amendments thereto).

3.

All documents mentioning, concerning or referencing the persons identified by Eolas in
its Initial Disclosures (and any Amendments thereto).

4.

Documents sufficient to identify where (geographically) the Accused Products were
and/or are developed, created, tested, maintained and /or sold.

5.

Documents sufficient to identify all persons involved in the development of Accused
Products.

6.

Documents sufficient to identify the person(s) most knowledgeable regarding the
conception, creation, development, and operation of each Accused Product, including
each version, model, or release.

7.

Documents sufficient to evidence the product names, the version, model and release
numbers, and other identifying information for each version, model, and release of each
Accused Product.

8.

Documents sufficient to evidence the range of dates during which you sold, offered,
licensed, or otherwise provided or made available each version, model, and release of
each Accused Product.

9.

All documents identifying, describing, concerning, or referencing functionality and
improvements embodied in each version, model, and release of the Accused Products.
This request includes, without limitation, all internal and external studies you are aware
of (whether commissioned by you or not) related to your customers’ desire for embedded
interactive content on web pages and/or displayed in a browser.

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10.

All documents identifying, describing, concerning, or referencing the pricing of each of
the Accused Products, including, without limitation, any document discussing pricing
premiums related to specifically identified features of the Accused Products.

11.

All documents identifying, describing, concerning, or referencing the costs of developing
and/or maintaining the Accused Products. This includes, without limitation, and in
particular, those aspects of the Accused Products which allow users to experience or
create embedded interactive content on a webpage and/or in a browser.

12.

All documents identifying, describing, concerning, or referencing the development,
revision history, refinement, evolution, testing, and internal use of each source code file
produced by you in this case (including but not limited to the geographic location (e.g.
city, state and country) of such development, revision, refinement, evolution, testing, and
internal use, the results, date and/or reason for each such revision, refinement, evolution,
test, and/or internal use of each such source code file).

13.

All documents constituting, identifying, describing, concerning, or referencing customer
complaints or concerns regarding the performance of your Accused Products and your
response to these complaints or concerns whether formal, informal, public, non-public, or
otherwise.

14.

All documents concerning or referencing U.S. Patent No. 5,838,906 (“the ’906 patent”);
the patent application that matured into U.S. Patent No. 5,838,906; the reexaminations of
U.S. Patent No. 5,838,906; any interference proceedings relating to the ’906 patent; U.S.
Patent No. 7,599,985 (“the ’985 patent”); or the patent application that matured into U.S.
Patent No. 7,599,985 (hereinafter “the Eolas patents” or “Eolas’ patents”). Such
documents shall include but are not limited to:
a. All documents describing, concerning, or referencing the validity, invalidity,
scope, liability for infringement by you, enforceability, non-enforceability, or
licensing (either implied or express) of Eolas’ patents and/or opinions thereof;
b. All documents identifying, describing, concerning, or referencing any document
that you believe anticipates, renders obvious, or otherwise invalidates Eolas’
patents;
c. All documents containing or referencing communications between you (including
your counsel) and any third-party regarding any potential prior art directed at
Eolas’ patents;
d. All documents constituting, identifying, describing, concerning, or referencing the
results of any prior art search directed at Eolas’ patents;
e. All documents identifying, describing, concerning, or referencing any
communications between you and any other party regarding Eolas’ patents or this
litigation;

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f. All documents furnished or shown to any fact witness contacted, interviewed, or
consulted by you or your agents or attorneys in connection with Eolas’ patents or
this litigation;
g. All documents constituting, identifying, describing, concerning, or referencing
any document that you believe is relevant to the construction or interpretation of
any claim in Eolas’ patents;
h. All documents used or otherwise relied upon, in whole or in part, by in-house or
outside counsel in forming opinions concerning Eolas’ patents;
i. All documents identifying, describing, concerning, or referencing any analysis or
efforts by you to design products, including, without limitation the Accused
Products, around Eolas’ patents;
j. All documents identifying, describing, concerning, or referencing persons who
have knowledge of your analysis or efforts to design products, including without
limitation the Accused Products, around Eolas’ patents;
k. All documents identifying, describing, concerning, or referencing any potentially
non-infringing alternatives to Eolas’ patents;
l. All communications, opinions, letters, or other documents prepared by you or on
your behalf, for submission to the United States Patent and Trademark Office, an
auditor, a governmental agency (including the Security and Exchange
Commission), or any third party relating to Eolas’ patents or any potential liability
for infringement related thereto;
m. All documents identifying, describing, concerning, or referencing your decision to
request (or decision not to request) a reexamination of any of Eolas’ patents.
n. All documents identifying, describing, concerning, or referencing materials
considered and/or used in the request of reexamination of any of Eolas’ patents.
o. All documents identifying, describing, concerning or referencing efforts made to
find prior art associated with the reexamination of the ’906 patent.
p. All documents that discuss, refer to, or evidence the impact Eolas’ patents could
have on you, including, without limitation, damages, liability, injunctive relief, or
required product changes; and
q. All documents that discuss, refer to, or evidence the quality, value, usability,
performance, demand, or benefits of the inventions contained within Eolas’
patents.
15.

All documents that support or relate to any of your defenses (whether affirmative,
equitable, or otherwise) or your contentions and counterclaims in your Answer.

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16.

All documents constituting, identifying, describing, concerning, or referencing any
insurance policies relating to this lawsuit (including but not limited to all insurance or
indemnity agreements under which some person or entity may be liable to reimburse you,
in whole or in part, for a judgment, fees, or expenses in this matter).

17.

All documents constituting, identifying, describing, concerning, or referencing your
corporate licensing policies.

18.

All documents identifying, describing, concerning, or referencing your document
retention policies.

19.

All documents identifying, describing, concerning, or referencing your corporate policies
and actual practices regarding patent searches, product clearances, right to use opinions,
or other mechanisms, if any, to obtain licenses prior to general commercial availability of
products and/or websites so as to avoid its infringement of patents, such as Eolas’ patents.

20.

All documents identifying, describing, concerning, or referencing which Accused
Products embody or relate to any patents or patent applications which you own, have an
ownership interest in, or are subject to a license agreement involving you.

21.

All information regarding license agreements, royalty agreements, technology transfers,
covenants not to sue or authorization-to-use agreements (whether or not a formal
agreement was reached in each of these cases), entered into by you concerning patents or
patent applications that relate in any way to the Accused Products or embedded
interactive content on web pages and/or in browsers, including but not limited to the
number and nationality of such patent(s), the entity who owns each such patent(s), the
amount paid by you or to you in each such license, the date each such license was
entered, the date the license took effect, the date or events upon which the license
terminates, and the exclusive or non-exclusive nature of the license.

22.

Documents sufficient to show the quantity sold, gross revenue, net revenue, cost of goods
sold, or any other financial benefit realized by you including profits for sales of and from,
the Accused Products, broken down on an Accused Product by Accused Product basis,
point of sale (e.g., in-store sales, online sales, etc.), and according to each country where
the sale took place, on a quarter-to-quarter basis for each quarter sales of and/or from the
Accused Products occurred from the present time to five years prior to the filing of this
lawsuit.

23.

All documents identifying, describing, concerning, or referencing the total amount and
applicable royalty rate paid by you to any third parties in connection with each of the
Accused Products.

24.

All of your annual and quarterly reports (or equivalents) from the present time to five
years prior to the filing of this lawsuit.

25.

All documents identifying, describing, concerning, or referencing the revenues (both
gross and net), profitability, income, or other benefits realized by you from all versions of
each of the Accused Products.

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26.

Documents sufficient to demonstrate the accounting practices used by you to account for
sales, profit margin, cost, income for and/or from, or other financial benefit realized by
you, related to the Accused Products.

27.

All documents identifying, describing, concerning, or referencing the follow-on sales for
other products (e.g., accessories, software, hardware, maintenance, extended warranties,
etc.) based on the sales, launch and/or use of the Accused Products or otherwise
attributable to the Accused Products.

28.

All documents identifying, describing, concerning, referencing, or reflecting your gross
revenue, net revenue, cost of goods and services sold, profit and/or any other financial
metric related to advertisements within or placed on the Accused Products.

29.

All documents identifying, describing, concerning, or referencing the sale of other
products or services by you that result from the use of the Accused Products by your
customers or other users. This includes, but is not limited to, documents related to the
quantity sold, gross revenue, net revenue, cost of goods sold, profit, and/or any other
financial metrics related to the sale of other products or services that result from the use
of the Accused Products by your customers or other users.

30.

All documents identifying, describing, concerning, or referencing direct and/or indirect
financial benefits that accrue to you through the use of the Accused Products by your
customers or other users.

31.

All documents identifying, describing, concerning, or referencing the role and/or benefit
of embedded interactive content on the Accused Products, including reports, discussions,
surveys and findings (whether conducted by you or otherwise) related to the use of
embedded interactive content in your market, including such use by your competitors.

32.

All documents identifying, describing, concerning, or referencing the use and/or creation
of embedded interactive content in association with the Accused Products by your
customers or other users (including but not limited to any relevant customer-use studies,
surveys, tracking data, or estimates).

33.

All documents identifying, describing, concerning, or referencing the costs and/or
benefits associated with the implementation of embedded interactive content within the
Accused Product.

34.

All documents relating to your strategies, plans, desires, and needs with regard to
embedded interactive content on web pages and/or displayed within browsers, including,
but not limited to development, configuration, and pricing of the Accused Products.

35.

Complete case files of non-privileged documents from any other intellectual property
litigation involving you in the area of embedded interactive content on web pages and/or
within browsers.

36.

Documents sufficient to show where (geographically) servers which host, provide access
to, make available or which have hosted, provided access to, or made available, each
Accused Product are located.

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37.

All documents (including issued patents, file histories, etc.) relating to any patents
assigned to or owned by you that involve embedded interactive content on web pages or
within browsers or that reference Eolas’ patents or reference a patent in which Michael
Doyle is a named inventor.

38.

The source code, executable software, and all documentation for the Accused Products
and/or included with Accused Products (including but not limited to user’s manuals,
EULA, support documentation, etc) for each version, model, and release of each Accused
Products.

39.

Documents sufficient to show your policies with regard to maintaining the confidentiality
of the source code, if such a claim is made.

40.

Running instances of the Accused Products, which may include production of passwords
and login information to gain access to Accused Products that require such information.

41.

All documents describing, concerning, or referencing how to access embedded interactive
content on a web page and/or within a browser related to the Accused Products.

42.

All documents identifying, describing, concerning, or referencing how to create, deliver,
or otherwise provide embedded interactive content on a web page and/or in a browser
related to the Accused Products.

43.

All documents identifying, describing, concerning, or referencing the use or operation of
any of the Accused Products (including, but not limited to, documents providing training,
education, instruction, or information on the operation of the Accused Products).

44.

All documents identifying, describing, concerning, or referencing deliberation in the
development of any of the Accused Products, starting with the initial idea thereof.

45.

Documents referring to the nature and extent of the manufacture, creation, development,
testing and/or use of each Accused Product in the United States by you, your distributors,
your contractors, your agents or other entities acting on your behalf (including but not
limited to documents referring to the creation, development, testing, marketing, customer
support, customer training, or sales of each Accused Product, or in connection with
installation, configuration, training, or testing of each Accused Product at customer sites).

46.

Documents referring to the nature and extent of the storing or duplicating of the Accused
Products in the United States by you, your distributors, your contractors, your agents or
other entities acting on your behalf (including but not limited to explanations of such
storing or duplicating on or onto software management servers (for source code,
executable code, and/or object code), on or onto master discs, on or onto distribution
media (e.g., CD-ROMs, DVDs, disk drives, and/or computers) for sale or distribution to
customers or other users, and on or onto servers or web caches for facilitating electronic
downloads and/or access to the Accused Products by customers or other users).

47.

All documents showing how and to what extent you or your customers or others utilize or
make use of the Accused Products (including specifically the accused features thereof as

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set forth in Eolas’ infringement contentions) in the United States (including but not
limited to any relevant customer-use studies, surveys, tracking data, or estimates).
48.

All documents, for each Accused Product, identifying the web server technology (e.g.
Apache, etc.) which presently underlies or powers all servers which host, provide access
to, or make available for download each Accused Product.

49.

All documents (including but not limited to survey results, marketing research, white
papers, and case studies) of which you are aware (whether you commissioned such report
or otherwise) relating to the number and percentage of users of each Accused Product
who utilize specific browser technologies, including any forecasts of future use,
(including but not limited to Microsoft Internet Explorer (including mobile versions),
Apple Safari for Windows, Apple Safari for Apple operating systems, the Apple iPhone
or iPod, Google Chrome for Windows, Google Chrome for Apple operating systems,
Google Android, Google Chrome for Linux, Firefox for Windows, Firefox for Apple
operating systems, Firefox for Linux, Opera for Windows, Opera for Apple operating
systems, Opera for Linux, and/or any other web browser of which you are aware).

50.

All documents and other materials and things created, provided, maintained, edited,
hosted or owned by you relating to the use of the Accused Products (including but not
limited to user’s manuals, instructions, developer’s guides, tutorials, discussion boards,
web pages, on-line videos, on-line instructions, FAQ’s, developers conferences, user
conferences, videos, etc.).

51.

All documents that discuss, refer to, or evidence any advertising, marketing, or sales
materials related to any of the Accused Products, including, without limitation, television,
video, internet, and radio advertisements related to the Accused Products, consumer
surveys and market analyses.

52.

All documents constituting, identifying, describing, concerning, or referencing the
promotion, branding, marketing or advertising, by or for you, of each of the Accused
Products.

53.

All documents and other things related to your plans to adopt HTML5 and/or support
HTML5 on your Accused Products.

54.

All documents and other things related to the Adobe “product updates” discussed in the
article available at: http://www.adobe.com/devnet/activecontent/ (including, but not
limited to the “manual solution” discussed in the article available at:
http://www.adobe.com/devnet/activecontent/articles/devletter.html). This request
includes, but is not limited to your use or contemplated use of any of the “product
updates” (including the “manual solution”) discussed therein, and all persons involved
therewith.

55.

All documents and other things related to the Apple “Instructions for Updating Websites
to Include QuickTime Content” discussed in the article available at:
http://developer.apple.com/internet/ieembedprep.html. This request includes, but is not

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limited to your use or contemplated use of any of the instructions discussed therein, and
all persons involved therewith.
56.

All documents identifying, describing, concerning, or referencing Pei-Yuan Wei.

57.

All documents identifying, describing, concerning, or referencing Viola (including ViolaWWW).

58.

All documents identifying, describing, concerning, or referencing dates when various
versions/builds of Viola (including Viola-WWW) were created and/or released, along
with the functionality that each version/build provided (including any improvements from
previous versions/builds thereof).

59.

Any running instances of Viola (including Viola-WWW) in your possession, along with
the version/build number and any other information indicating the date on which this
instance was first created and/or released.

60.

All documents identifying, describing, concerning or referencing the MayField Fund,
including Eolas’ attempts to raise capital through the MayField Fund (including planned
meetings and attempts to set meetings).

61.

All documents identifying, describing, concerning or referencing Eolas’ attempts to enter
into discussions with Marimba regarding a business arrangement between the two
companies (including planned meetings and attempts to set meetings).

62.

All documents identifying, describing, concerning or referencing Eolas’ attempts to enter
into discussions with Sun regarding a business arrangement between the two companies
(including planned meetings and attempts to set meetings).

63.

All documents identifying, describing, concerning or referencing Eolas’ attempts to enter
into discussions with you regarding a business arrangement between the two companies
(including planned meetings and attempts to set meetings).

64.

All documents identifying, describing, concerning or referencing Eolas’ attempts to enter
into discussions with other companies regarding a business arrangement between the two
companies (including planned meetings and attempts to set meetings).

65.

All documents identifying, describing, concerning or referencing Eolas’ attempts to enter
into discussions with potential investors (including planned meetings or attempts to set
meetings).

66.

All documents constituting, identifying, describing, concerning or referencing Eolas’
business plan.

67.

All documents evidencing, identifying, describing, concerning or referencing your
possession or access to patent applications submitted by Eolas to the USPTO that were, at
the time of your possession or access, confidential.

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68.

All documents and things exchanged between you and any other defendant in this matter
that refers to Eolas, Michael Doyle, any of the patents-in-suit and/or this litigation. This
request excludes any documents and things exchanged between your outside litigation
counsel and/or your in-house counsel and the outside litigation counsel and/or the inhouse counsel of any other defendant in this matter.

If you have any questions regarding this letter, please contact me.
Sincerely,

Josh Budwin
cc:
[e-mail]
Brian Carpenter ([e-mail])
Eric W. Buether ([e-mail])
Christopher M. Joe ([e-mail])

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