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)

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EXHIBIT 2 MCKOOL SMITH A PROFESSIONAL CORPORATION • ATTORNEYS Josh Budwin Direct Dial: (512) 692-8727 jbudwin@mckoolsmith.com 300 West 6th Street Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 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 Austin 58205v1 April 2, 2010 Page 2 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); Austin 58205v1 April 2, 2010 Page 3 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. Austin 58205v1 April 2, 2010 Page 4 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; Austin 58205v1 April 2, 2010 Page 5 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. Austin 58205v1 April 2, 2010 Page 6 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. Austin 58205v1 April 2, 2010 Page 7 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. Austin 58205v1 April 2, 2010 Page 8 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 Austin 58205v1 April 2, 2010 Page 9 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 Austin 58205v1 April 2, 2010 Page 10 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. Austin 58205v1 April 2, 2010 Page 11 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: Frito-JCP-RAC-Eolas@gtlaw.com Brian Carpenter (Brian.Carpenter@BJCIPLaw.com) Eric W. Buether (Eric.Buether@BJCIPLaw.com) Christopher M. Joe (Chris.Joe@BJCIPLaw.com) Austin 58205v1

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