Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1093

RESPONSE in Opposition re 1050 MOTION FOR LEAVE TO SUPPLEMENT THEIR P.R. 3-1 INFRINGEMENT CONTENTIONS WITH RESPECT TO FRITO-LAY, INC.'S HAPPINESS.LAYS.COM filed by Frito-Lay, Inc.. (Attachments: # 1 Declaration of J. Yee, # 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 Exhibit 12, # 14 Exhibit 13, # 15 Text of Proposed Order)(McSwane, Douglas)

EXHIBIT 13

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Case 2:04-cv-00297-LED Document 171 Filed 07/07/05 Page 1 of 5 PagelD #: 1433

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

MARSHAL DIVISION
ORION IP, LLC

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§

Plaintif

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§
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§

vs.

STAPLES, INC., ET AL.

Defendants

CASE NO. 2:04-CV-297

§

ORDER
For

the reasons set forth below, the Cour

Answers to Interrogatory Nos. 6 and 7 (Docket

DENIS Defendants' collective Motion to Compel
No. 133), GRATS Defendant Toyota

Motor Sales,

U.S.A., Inc. 's ("TMS" or "Toyota") Motion to Enforce Plaintiff Orion IP, LLC's ("Plaintiff' or
"Orion") Compliance with Patent

Rule 3-7 (Docket No. 144), and DENIS Plaintiffs' Cross Motion

to Compel Toyota's Compliance with Disclosure and Discovery Requiements (Docket No. 152).

Motion to Compel Answers to Interrof!atorv Nos. 6 and 7
Pusuant to Rule 37(a) of

the Cour

to compel Plaintiff

the

Federal Rules of

Civil Procedure, Defendants collectivelymove

to answer Interrogatory Nos. 6 and 7. These two interrogatories request

information concerning Plaintiffs validity contentions. However, these two interrogatories require
Plaintiff to individually analyze approximately fift pieces of prior ar and compile approximately

fift separte answers. While Defendants may seek, in separate interrogatories, specific responses
regarding specific pieces of prior ar, or may seek, in a single interrogatory, a general response

regardig all identified prior ar, Defendants may not seek, in a single interrogatory, specific
responses for every piece of prior ar. Such an interrogatory would burden the Plaintiff and

Case 2:04-cv-00297-LED Document 171 Filed 07/07/05 Page 2 of 5 PagelD #: 1434

dramatically expand the number of interrogatories.
Plaintiff

has already provided a general response to Defendants' invalidity contentions and

presumably will provide specific responses to Defendants' invalidity contentions in their expert
report. If ths general response is inadequate, the Cour expects Defendants to clarfy the

interrogatories at issue and for the paries to negotiate an acceptable response to the interrogatories,

in light of the above guidelines. The Cour therefore DENIS the Motion to Compel Answers to
Interrogatory

Nos. 6 and 7.

Motion to Enforce Compliance with Patent Rule 3-7
On Januar 28,2005, Plaitiff served its Prelimnar Infrngement Contentions ("PICs") on

Toyota, contendig that "(tJhe claimed methods are practiced in, for example, the Defendant's
varous web

sites (for example, ww.toyota-par.com, ww.tOyota.com, ww.scion.com) retail

kiosks and other systems that operate in the same or similar fashion." To support its contentions,

Plaintiff attched two series of computer screen-shots, mapping the accused infrgig "model

selectot' featues on ww.tOyota-pars.com and ww.tOyota.com. Plaintiff provided no other
examples of accused infgig instrentalities. However, on information and belief, Plaintiff
accused Toyota's "Dealer Daily" system of infrngement.

In reliance on Plaintiffs PICs, Toyota provided on March 14 its Preliminar Invalidity
contentions, exchanged on March 29 its list of claim terms to be constred, exchanged on April 2 i

its proposed constrction of claim terms with extrsic evidence in support thereof, and contrbuted

to and fied on May 20 the Joint Clai Constrction Statement. On May 27, one week after the
paries filed their Joint Claim Constrction Statement, Plaintiff amended its PICs; charing alleged
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Case 2:04-cv-00297-LED Document 171 Filed 07/07/05 Page 3 of 5 PagelD #: 1435

infrging pathways on Scion kiosks and Lexus's website. These amended PICs were served without

seekig leave of

the Cour. Toyota asserts that because they relied on Plaintiffs original PICs in

preparing for the Markman hearg, scheduled for Augut, and in plang for tral, scheduled for
April, they wil be prejudiced if Plaintiff is allowed to now amend its PICs to add new theories of
infrgement. Plaitiff asserts that they amended their PICs to resolve a discovery dispute with

Toyota. According to Plaintiff, Toyota refused to disclose documents relating to the Scion and

Lexus websites since Plaintiff failed to specifically accuse any methods on those websites of
infrgement. To remedy ths dispute, Plaintiff amended their infrngement contentions to now

include the Scion and Lexus websites.

Patent Rule 3-7 states that "(aJmendment or modification of the Preliminar or Final
Infrngement Contentions. . . may be made only by order of the Court, which shall be entered only
upon a showing of good cause. "I Plaitiff

has not shown good cause for amending its PICs. When

to set forth specific theories of

information is publicly available, the Patent Rules require a plaintiff

infrngement at the outset of

the case. See American Video Graphics, L.P. v. Electronic Arts, Inc.,

359 F. Supp. 2d 558, 560 (E.D. Tex. 2005)(Davis, J.). The amended PICs in the present case are
based on information publicly available on the Lexus and Scion websites and kiosks that Plaintiff

failed to tae advantage of when makg its intial disclosures. Despite makg broad infrngement
accusations against Toyota's entie family of

web

sites, Plaintiff

provided specific accusations of

infrgement for only the model selector featues on ww.toyota.com and ww.toyota-par.com.
Toyota was left to guess what Plaitiff was targetig on the Scion and Lexus websites and

understandably balked when Plaintiff sought discovery relating to those websites. Although the
IThe Patent Rules can be found on the Eastern District's website at www.txed.uscourts.gOV.

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Case 2:04-cv-00297-LED Document 171 Filed 07/07/05 Page 4 of 5 PagelD #: 1436

Cour adheres to a policy of broad discovery, the scope of discovery is defined by the intial
disclosures made in a plaintiffs PICs. STMicroelectronics, Inc. v. Motorola, Inc., 308 F. Supp. 2d
754, 755-56 (E.D. Tex. 2004)(Davis, J.). That scope canot be widened during the course of

discovery by amending PICs to include theories that should have disclosed intially. Allowig such

an amendment would be contrar to the purose of the Patent Rules and prejudicial to defendats,
who must rely on the specific positions arculated in PICs to build their case. Because Plaintiffhas

added theories that should have been disclosed initially, and because Toyota would be prejudiced
by allowig Plaintiff

to add new theories at such an advanced stage in the case, the Cour GRATS

the motion and stres Plaintiffs amended PICs with prejudice.

Cross Motion to Compel Tovota's Compliance with Disclosure and Discoverv Requirements
In light of

the Cour strg

Plaintiff

s amended PICs and in light the paries' representations

to the Cour, the Cour DENIS ths cross motion as moot. Plaitiffs amended PICs relatig to the

Scion kiosks and website and to the Lexus website have been strck by the Cour. Toyota has
offered to provide broad discovery relatig to ww.toyota.com and has declared that it is not
affliated with WW.toyota-pars.com. Toyota

has

provided

Plaintiffwith the opportty to inspect

the Dealer Daily system. The Cour therefore concludes that any discovery disputes relating to these

topics can be resolved by the paries and are therefore moot. With regards to Plaintiffs request for
computer code, Plaintiff previously represented to the Court that computer code is not relevant to
this case. Thus, sweeping code requests are

unecessary. However, if

the paries now discover that

some specific code is relevant, the Cour expects that specific code to be produced.

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Case 2:04-cv-004WOlIDumlirSIVNI1ltd1l1\ai#J JBlWetIÐf 5 PagelD #: 1437

LEONAR DAVIS
UNITED STATES DISTRICT JUGE

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