Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1118

Opposed MOTION for Discovery Motion for Leave to Serve Discovery on Apple, Inc., Patrick Heynen and Los Alamos National Laboratory by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Citigroup Inc., Google Inc., J.C. Penney Corporation, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Text of Proposed Order, # 2 Exhibit 1 - Discovery Topics, # 3 Exhibit 2 - July 20 Email Exchange)(Doan, Jennifer)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
EOLAS TECHNOLOGIES, INC.
Plaintiff,
v.
ADOBE SYSTEMS, INC. ET AL.,
Defendants.

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CIVIL ACTION NO. 6:09-CV-446 (LED)

OPPOSED MOTION FOR LEAVE TO SERVE
DISCOVERY ON APPLE, INC., PATRICK HEYNEN, AND
LOS ALAMOS NATIONAL LABRATORY
Defendants Adobe Systems Incorporated, Amazon.com, Inc., CDW LLC,
Citigroup Inc., The Go Daddy Group, Inc., Google, Inc., J.C. Penney Corp., Inc., Yahoo!
Inc., and YouTube LLC respectfully move for leave to serve discovery on Apple, Inc.
(“Apple”), Apple employee Patrick Heynen1, and Los Alamos National Laboratory
(“LANL”) and would show the Court as follows:
Following the close of discovery, Defendants became aware of, or gained an
appreciation for, information that is believed to be in the possession of Apple, Inc. and/or
Los Alamos National Laboratory (“LANL”).

Defendants believed that Apple had

produced all relevant, responsive information pertaining to one of the prior art systems.
Defendants had a common interest agreement with Apple, had reciprocally shared

1

Defendants identify Mr. Heynen out of abundance of caution since they believe the
subpoena to Apple, based on the positions of Apple and Eolas as understood by
Defendants, should be sufficient to secure the information they are seeking.

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 1

information about the case, and identified Apple in their initial disclosures on their
various witness lists.

Moreover, Defendants recently learned that a current Apple

employee, Patrick Heynen, who was not known to Defendants before this time, has
specific, relevant, and responsive information pertaining to the distribution, use and
demonstration of one of their prior art references called MediaView from his personal
possession, but believed to be located in an office at Apple. Defendants requested this
information from Apple, but were rebuffed by both Apple and Eolas based on the
settlement agreement between Apple and Eolas, which prohibits Apple from assisting
Defendants in any way. Defendants asked Eolas if it would release Apple from this
provision—one that Defendants question both the validity and fairness of—but Eolas has
not responded. Defendants request leave to serve a subpoena on Apple to obtain this
information, as it appears based on the meet and confers between Defendants and Eolas
that both Apple and Eolas agree that Apple may provide information to Defendants in
response to a subpoena. Exhibit 1 contains the subpoena topics related to Apple that
Defendants seek leave to serve.
With regard to LANL, Defendants had timely noticed a deposition of the Regents
of the University of California (“Regents”) on LANL topics pertaining to the MediaView
prior art. At the time MediaView was developed, LANL was managed by the Regents,
and some of the MediaView materials have a Regents copyright mark. Without first
informing Defendants, Apple and Eolas informed the Regents on July 20 at 11:01 Pacific
time that Apple would not proceed with the noticed depositions of the Regents. See July
20, 2011 email exchange, a true and correct copy of which is attached as Exhibit 2. The
Regents notified Defendants of this development at 2:44 Pacific time. Id. Counsel for

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 2

Adobe (Linhong Zhang), who traveled to California for the depositions, promptly called
counsel for the Regents back to try and keep the depositions, or at least some of them, on
calendar, but the Regents objected that the subpoena would need to be re-served. Id.
Thus, the Regents position was that there was no properly noticed subpoena by
Defendants. Exhibit 1 contains the subpoena topics Defendants seek leave to serve on
LANL.
With the addition of Regents as a party, the depositions have been postponed due
to additional production by Regents that is rolling in nature and objections by Plaintiffs to
potentially subjecting the same witnesses to multiple depositions. Moreover, Defendants
recently obtained from LANL a video of the MediaView prior art,2 made during the time
the Regents managed LANL, and wish to authenticate this and the MediaView materials
from LANL directly given the delays that have been experienced obtaining discovery
information from the Regents, the nearly 20 year time span between when the video was
made and the likelihood, based on the Regents’ initial disclosures, that they will not
produce a witness who is able to authenticate the MediaView materials and their expert’s
recent position that they are of questionable provenance in his rebuttal report served on
November 15, 2011.

Eolas has indicated that it would not oppose discovery to

authenticate [LANL92] and [LANL93], but otherwise object to the scope of the subpoena
because they believe the Regents’ witnesses should be able to cover the remaining topics.
See Exhibit 1.
2

Defendants learned of the video on September 23, 2011 through a catalog released on
October 31, 2010 by the Department of Energy pursuant to a Freedom of Information Act
Request filed May 28, 2006. Upon learning of the catalog, which was republished online
some time after October 31, 2010 by a third party, Defendants immediately requested the
video from LANL and promptly produced what they received.

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 3

This motion is not made for delay, and should not impact any other deadline
applicable to this case. Accordingly, the Defendants respectfully move the Court for
leave to serve discovery on Apple, Inc., Patrick Heynen, and Los Alamos National
Laboratory. Copies of the subpoena topics are attached as Exhibit 1.

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 4

Respectfully Submitted,
/s/ Jennifer H. Doan
Jennifer H. Doan
Texas Bar No. 08809050
Joshua R. Thane
Texas Bar No. 24060713
Haltom & Doan
Crown Executive Center, Suite 100
6500 Summerhill Road
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Jared Bobrow
Edward R. Reines
Sonal N. Mehta
Aaron Y. Huang
Andrew L. Perito
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
ATTORNEYS FOR DEFENDANTS
AMAZON.COM INC. and YAHOO!
INC.

/s/ David J. Healey (w/ permission)
David J. Healey
[e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
Telephone: [phone]
Facsimile: [phone]

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 5

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]
Joseph P. Reid (pro hac vice)
[e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
ADOBE SYSTEMS INC.
/s/ Thomas L. Duston (w/ permission)
Thomas L. Duston
[e-mail]
Anthony S. Gabrielson
[e-mail]
Scott A. Sanderson (pro hac vice)
[e-mail]
MARSHALL, GERSTEIN &
BORUN LLP
6300 Willis Tower
233 South Wacker Drive
Chicago, IL 60606-6357
Telephone: [phone]
Facsimile: [phone]
Eric H. Findlay (Bar No. 00789886)
[e-mail]
Brian Craft (Bar No. 04972020)
[e-mail]
FINDLAY CRAFT, LLP
6760 Old Jacksonville Highway
Suite 101
Tyler, TX 75703
Telephone: [phone]
Facsimile: [phone]
OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 6

ATTORNEYS FOR DEFENDANT
CDW LLC
/s/ Galyn Gafford (w/ permission)
Edwin R. DeYoung (Bar No. 05673000)
[e-mail]
Roy W. Hardin (Bar No. 08968300)
[e-mail]
Roger Brian Cowie (Bar No. 00783886)
[e-mail]
M. Scott Fuller (Bar No. 24036607)
[e-mail]
Galyn Gafford (Bar No. 24040938)
[e-mail]
LOCKE LORD BISSELL &
LIDDELL LLP
2200 Ross Avenue, Suite 2200
Dallas, TX 75201-6776
Telephone: [phone]
Facsimile: [phone]
Alexas D. Skucas (pro hac vice)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
Eric L. Sophir (pro hac vice)
[e-mail]
KING & SPALDING LLP
1700 Pennsylvania Ave. NW, Suite 200
Washington, D.C. 20006-4707
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
CITIGROUP INC.

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 7

/s/ Proshanto Mukherji (w/ permission)
Thomas M. Melsheimer (Bar No. 13922550)
[e-mail]
Neil J. McNabnay (Bar No. 24002583)
[e-mail]
Carl E. Bruce (Bar No. 24036278)
[e-mail]
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
Proshanto Mukherji (pro hac vice)
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park DriveBoston, MA 021101878
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
THE GO DADDY GROUP, INC.
/s/ James R. Batchelder (w/ permission)
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]

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 8

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 DEFENDANT
GOOGLE INC.
/s/ Christopher M. Joe (w/ permission)
Jeffrey K. Joyner (pro hac vice)
[e-mail]
Jeffrey F. Yee (pro hac vice)
[e-mail]
GREENBERG TRAURIG LLP
2450 Colorado Avenue, Suite 400E
Santa Monica, CA 90404
Telephone: [phone]
Facsimile: [phone]
Christopher M. Joe (Bar No. 00787770)
[e-mail]
Brian Carpenter (Bar No. 03840600)
[e-mail]
Eric W. Buether (Bar No. 03316880)
[e-mail]
BUETHER JOE & CARPENTER, LLC
1700 Pacific, Suite 2390
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
J.C. PENNEY CORPORATION

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 9

/s/ James R. Batchelder (w/ permission)
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 DEFENDANT
YOUTUBE, LLC

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 10

CERTIFICATE OF CONFERENCE
The undersigned certifies that the parties have conferred by telephone at least
twice on this matter, the most recent conference on November 28. Plaintiffs do not
oppose portions of the relief requested, namely an authentication deposition of LANL
regarding production materials [LANL92] and [LANL93] (see Exhibit 1), and the parties
agreed that an attempt would be made to obtain authentication of these materials through
a deposition on written questions or another mutually agreeable method that does not
require the expense and logistics of a formal deposition. Defendants agree that it may be
possible to postpone discovery on the LANL-Regents relationship (Exhibit 1, LANL
Topic 3) if the Regents witness was sufficiently prepared to address topics beyond simply
licensing, but Defendants prefer to have the follow-up discovery lined up now.
Plaintiffs oppose Defendants seeking leave to take the Media-View related
discovery upon Apple, but offered to not oppose the motion for leave if Defendants
agreed to allow Plaintiffs to take discovery from Apple related to Defendants' knowledge
of the patents-in-suit and attempted design around efforts. Defendants do not object to
Plaintiffs taking MediaView-related discovery upon Apple related to any information
Apple provides responsive to Defendants’ subpoena, but believe the discovery should not
be broader. The parties could not come to an agreement and reached an impasse.
/s/ Joshua R. Thane__
Joshua R. Thane

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). All other counsel of record not deemed to have
consented to electronic service were served with a true and correct copy of the foregoing
by certified mail, return receipt requested, on this the 29th day of November, 2011.

/s/ Joshua R. Thane
Joshua R. Thane

OPPOSED MOTION FOR LEAVE TO SERVE DISCOVERY – Page 11