Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1126

RESPONSE in Opposition re 1118 Opposed MOTION for Discovery Motion for Leave to Serve Discovery on Apple, Inc., Patrick Heynen and Los Alamos National Laboratory filed by Eolas Technologies Incorporated. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Text of Proposed Order)(McKool, Mike)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
Eolas Technologies Incorporated,
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Plaintiff,
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Civil Action No. 6:09-cv-446
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vs.
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Adobe Systems Inc., Amazon.com, Inc.,
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JURY TRIAL
Apple Inc., Blockbuster Inc., CDW Corp.,
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Citigroup Inc., eBay Inc., Frito-Lay, Inc.,
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The Go Daddy Group, Inc., Google Inc.,
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J.C. Penney Company, Inc., JPMorgan
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Chase & Co., New Frontier Media, Inc.,
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Office Depot, Inc., Perot Systems Corp.,
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Playboy Enterprises International, Inc.,
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Rent-A-Center, Inc., Staples, Inc., Sun
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Microsystems Inc., Texas Instruments
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Inc., Yahoo! Inc., and YouTube, LLC
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Defendants.
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PLAINTIFFS’ RESPONSE IN OPPOSITION TO DEFENDANTS’ MOTION FOR
LEAVE TO SERVE DISCOVERY ON APPLE WHICH DENIES PLAINTIFFS THE
RECIPROCAL RIGHT TO SERVE CERTAIN DISCOVERY ON APPLE [DKT. 1118]

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I.

INTRODUCTION
Plaintiffs Eolas and the Regents of the University of California (“Regents”) file this

response in partial opposition to Defendants’ motion for leave to serve discovery on Apple, Inc.,
Patrick Heynen, and Los Alamos National Laboratory (“Motion”). 1
On October 26, 2011, over two months after the close of discovery, Defendants served a
subpoena on Apple. When counsel for Plaintiffs learned of the service, they promptly asked
Defendants what their position was on the need for leave from the Court to serve their untimely
subpoena. Two weeks later, after counsel for Eolas had requested a response to their question no
fewer than five times, Defendants admitted that leave would be necessary. See November 23,
2011 email exchange, a true and correct copy of which is attached as Exhibit 1. Irrespective of
this admission, however, Defendants have never withdrawn the outstanding subpoena and only
informed Apple that it is unenforceable—after Plaintiffs’ insistence—on November 30, 2011, the
day they filed this motion. See November 30, 2011 email exchange, a true and correct copy of
which is attached as Exhibit 2.
Now, more than three months after the close of fact discovery, Defendants finally seek
the leave they need to serve that subpoena, as well as two additional subpoenas, involving
document productions, depositions, and formal inspections. Defendants fail to explain their
delay; and at this late date, after expert reports have been served and seventeen summary
judgment / Daubert motions have been fully briefed, allowing Defendants to inject entirely new

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As stated in Defendants’ Certificate of Conference, Plaintiffs do not oppose the Defendants’
request for an authentication deposition of LANL regarding production materials [LANL92] and
[LANL93]. See Defs.’ Motion at 11. The parties have 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.
Id. Plaintiffs oppose all other requested relief.

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facts into the case would be prejudicial. Nevertheless, Plaintiffs offered not to oppose
Defendants’ Motion if Defendants agreed to allow Plaintiffs to serve their own subpoena on
Apple. Defendants refused. The Court should deny Defendants’ Motion because they fail to
show good cause for deviating from the Court’s scheduling order. In the alternative, if
Defendants’ Motion is granted, then Plaintiffs should be given leave to serve its own discovery
on Apple.2
II.

THE DEFENDANTS’ MOTION SHOULD BE DENIED BECAUSE THEY HAVE
NOT SHOWN GOOD CAUSE FOR MODIFYING THE SCHEDULING ORDER
The discovery deadline in this case was August 12, 2011 [Dkt. No. 670]. Defendants’

motion for leave to conduct additional fact discovery was filed on November 30, 2011, more
than 100 days later. Rule 16(b)(4) provides that “[a] schedule may be modified only for good
cause and with the judge’s consent.” Defendants’ Motion should be denied because it fails to
demonstrate good cause for amending the Court’s scheduling order.
In the Fifth Circuit, trial courts consider four factors when determining whether good
cause exists to allow a deviation from the scheduling order: “(1) the explanation for the failure to
[complete the discovery within the deadline]; (2) the importance of the [modification of the
deadline]; (3) potential prejudice in allowing the [modification]; and (4) the availability of a
continuance to cure such prejudice.” Reliance Ins. Co. v. The Louisiana Land & Exploration Co.,
110 F.3d 253, 257 (5th Cir. 1997); Geiserman v. MacDonald, 893 F.2d 787, 791 (5th Cir. 1990);
see also Sky Techs LLC v. SAP AG, 2008 U.S. Dist. LEXIS 121488 at *8 (E.D. Tex. June 18,

2

Recognizing that leave is required, Plaintiffs have not served their discovery request on Apple,
but have provided Defendants a copy of the proposed discovery request in an attempt to resolve
this matter without Court intervention.

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2008). Here, Defendants do not even address those factors. Those factors counsel against
allowing a deviation.
First, the reasons offered by Defendants for their failure to pursue this discovery before
the deadline are weak, at best. With regard to the discovery sought from Apple and Patrick
Heynen, Defendants state only that they have recently become aware of its existence. Motion at
2. Unlike the defendant in Hall v. Pop Restaurants, LLC, Defendants are unable to point to
recent discovery, such as deposition testimony, that would explain why they could not have
uncovered this information during the discovery period. See 2006 U.S. Dist. LEXIS 8143, at *3*4 (N.D. Tex. March 2, 2006) (“Certainly, defendant has demonstrated ‘good cause’ for not
issuing the subpoenas until after Fields was deposed.”). Even after becoming aware of the
information’s existence, however, Defendants sat on an untimely subpoena for over a month
before requesting leave from the Court to serve it. See Exhibit 1.
With regard to LANL, their Motion is the first time Defendants have made any attempt to
seek this discovery. No third-party subpoena has ever been served on LANL in this case,
whether by Apple or any other Defendant. Before its addition as a party, Defendants did serve
multiple subpoenas on Regents that related to LANL and MediaView, and they will have an
opportunity to pursue those requests through upcoming party depositions of Regents. However,
the Defendants made a choice not to seek discovery directly from LANL during the discovery
period, and the scheduling order should not be amended because they now regret that choice. See
Reliance Ins., 110 F.3d at 258 (“District judges have the power to control their dockets by
refusing to give ineffective litigants a second chance to develop their case.”). If, as the
Defendants suggest, the requested discovery is in the possession of the Regents, then the

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Defendants should be able to obtain that information through the ongoing discovery from the
Regents.
On the other hand, the potential prejudice to Plaintiffs in granting Defendants Motion is
significant. As the Court is aware, expert reports and rebuttal reports have already been served,
summary judgment and Daubert motions have been fully briefed and are ripe for consideration
by the Court, and trial is set to begin two months from Tuesday, December 6. [Dkt No. 979]. In
just over two weeks, on December 21, the parties are to submit deposition designations,
exchange exhibit lists, and identify any issues to be tried to the bench. Id. In short, the parties
should be using this time to prepare for trial, not to collect additional fact discovery or formulate
new theories. Plaintiffs’ trial strategy was affected by the choices Defendants made during the
discovery process in this case, and allowing them to change course at this date would introduce
substantial inconvenience and expense. Courts have generally refused to allow late discovery in
similar situations. See Reliance Ins., 110 F.3d at 257-258 (denying motion for leave to
supplement expert report when it would have required the other party to have an expert to
address last minute conclusions and threatened to disrupt the trial date); Geiserman, 893 F.2d at
791 (striking a late expert witness designation when it would have disrupted the other party’s
trial strategy and resulted in additional expense); Visto Corp. v. Microsoft Corp., 2007 U.S. Dist
LEXIS 68226, at *10-*11 (denying motion to compel discovery after expert reports had been
served and motions for summary judgment had been fully briefed).
The remaining two Geiserman factors also counsel against a deviation from the
scheduling order. While the Defendants are silent with regard to the relative importance of the
discovery, it allegedly involves “specific, relevant, and responsive information pertaining to the
distribution, use and demonstration of one of [the Defendants’] prior art references.” Defs.’

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Motion at 2. As the Fifth Circuit made clear in Geiserman, courts should be less willing to grant
leave to introduce particularly significant discovery after the deadline. Geiserman, 893 F.2d at
791 (“We shall assume arguendo that expert testimony was significant to Geiserman’s case -- so
much the more reason to be sure its introduction was properly grounded.”). And while Plaintiffs
could conduct new discovery, redepose witnesses, and potentially supplement expert reports
under a continuance in response to untimely document productions and depositions, this factor
does not weigh in favor of granting leave if it would result in additional delay, increased
expense, and would not deter future dilatory behavior or serve to enforce court-imposed
scheduling orders. See Geiserman, 893 F.2d at 792.
III.

IF THE COURT GRANTS DEFENDANTS’ MOTION, PLAINTIFFS SHOULD
BE GRANTED LEAVE TO SERVE CERTAIN ADDITIONAL DISCOVERY ON
APPLE
Alternatively, if the Court determines to grant Defendants’ Motion, the Court should

condition such grant on Plaintiffs receiving a reciprocal right to serve certain discovery on
Apple. Pursuant to paragraph 21(b) of the Protective Order in this case, Eolas was required to
destroy or return any of Apple’s protected material within 60 days of Apple’s dismissal [Dkt.
No. 423]. Accordingly, Eolas no longer has possession of the documents Apple produced in this
litigation. If Defendants’ Motion is granted, then Eolas also seeks leave to serve a subpoena on
Apple requesting a subset of those previously-produced documents related to Defendants’
knowledge of the patents-in-suit and attempted design-around efforts. As stated in Defendants’
Certificate of Conference, Plaintiffs prepared—but did not serve because service would have
been in violation of the Court’s scheduling order—their own subpoena on Apple, and offered not
to oppose Defendants’ Motion if Defendants agreed to allow Plaintiffs to take this discovery. See
Defs.’ Motion at 11. Defendants refused to agree. Id.

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Contrary to the discovery sought by the Defendants, the reintroduction of these
documents would not prejudice any of the parties. No depositions would need to be scheduled or
prepared for; and because these documents have previously been produced in this case, there is
no risk of unfair surprise. Indeed, as of November 23, 2011, the Defendants believed that Eolas
still had possession of the documents, so the Defendants’ trial strategy should be unaffected by
their reintroduction. See Exhibit 1. Exhibit 3 contains the subpoena topics related to Apple that
Plaintiffs seek leave to serve.
IV.

CONCLUSION
For the foregoing reasons, Eolas respectfully requests that the Court deny Defendants’

motion for leave to serve discovery on Apple, Inc., Patrick Heynen, and Los Alamos National
Laboratory in its entirety, with the exception of the authentication of [LANL92] and [LANL93]
Defendants seek from LANL. In the event the Court determines to grant Defendants’ Motion, the
Court should condition such grant on Plaintiffs receiving the reciprocal right to serve certain
discovery on Apple as set forth in Exhibit 3.

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Dated: December 5, 2011.

Respectfully submitted,
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]
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]
John B. Campbell
Texas State Bar No. 24036314
[e-mail]
Josh W. Budwin
Texas State Bar No. 24050347
[e-mail]
J.R. Johnson
Texas State Bar No. 24070000
[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]
Robert M. Parker
Texas State Bar No. 15498000
Robert Christopher Bunt
Texas Bar No. 00787165
Andrew T. Gorham
Texas State Bar No. 24012715

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PARKER, BUNT & AINSWORTH, P.C.
100 E. Ferguson, Suite 1114
Tyler, Texas 75702
[phone]
[phone]- Facsimile
[e-mail]
[e-mail]
[e-mail]
ATTORNEYS FOR PLAINTIFF
EOLAS TECHNOLOGIES, INC.

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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 December 5, 2011.

/s/ John B. Campbell
John B. Campbell

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