Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1158

Opposed MOTION to Sever or for Separate Trial by Adobe Systems Incorporated. (Attachments: # 1 Text of Proposed Order)(Healey, David)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION

EOLAS TECHNOLOGIES, INC. AND THE
REGENTS OF THE UNIVERSITY OF
CALIFORNIA,
Plaintiffs,
v.

Civil Action No. 6:09-CV-446 LED
JURY TRIAL DEMANDED

ADOBE SYSTEMS INC., ET AL.,
Defendants.

ADOBE SYSTEMS INC.’S MOTION FOR SEPARATE TRIAL OR TO SEVER

TABLE OF CONTENTS

I. 

INTRODUCTION .................................................................................................1 

II. 

ARGUMENT .........................................................................................................3 
A. 

THE LAW PRECLUDES JOINING ADOBE FOR TRIAL
WITH UNRELATED DEFENDANTS .....................................................3 

B. 

ADOBE WILL SUFFER UNFAIR PREJUDICE IF IT IS
JOINED FOR TRIAL WITH SOME OR ALL OF THE
REMAINING DEFENDANTS .................................................................5 
1. 
2. 

Willfulness .....................................................................................8 

4. 

III. 

Damages .........................................................................................8 

3. 

C. 

Infringement ...................................................................................5 

Cooperation During Discovery ......................................................9 

NOTHING ABOUT THE FEDERAL CIRCUIT’S
MANDAMUS ORDER IN THIS CASE SUGGESTS THAT
THE COURT SHOULD NOT CONDUCT SEPARATE
TRIALS....................................................................................................10 

CONCLUSION ....................................................................................................13 

i

TABLE OF AUTHORITIES
CASES
Alaniz v. Zamora-Quezada,
591 F.3d 761 (5th Cir. 2009) ...................................................................................................13
Brunet v. United Gas Pipeline Co.,
15 F.3d 500 (5th Cir. 1994) .....................................................................................................12
Ganas LLC v. Scottrade et al.,
No. 10-CV-320 (E.D. Tex.) .....................................................................................................10
Ho Keung, TSE v. eBay, Inc.,
No. C 11-01812, 2011 U.S. Dist. LEXIS 59675 (N.D. Cal. June 2, 2011) ...............................3
Idzotjic v. Pa. R.R. Co.,
456 F.2d 1228 (3d Cir. 1972)...................................................................................................13
In re EMC, Misc. Dkt. 100,
filed ..........................................................................................................................................10
Interval Licensing LLC v. AOL, Inc.,
No. C10-1385, 2011 WL 1655713 (W.D. Wash. Apr. 29, 2011) ..............................................3
Kimmel v. Cavalry Portfolio Servs., LLC,
747 F. Supp. 2d 427 (E.D. Pa. 2010) .......................................................................................12
Multi-Tech Sys., Inc. v. Net2Phone, Inc.,
No. Civ. 00-346, 2000 WL 34494824 (D. Minn. June 26, 2000) ..............................................3
Oasis v. EMC et al.,
10-CV-435 (E.D. Tex.) ............................................................................................................10
Philips Elecs. N. Am. v. Contec Corp.,
220 F.R.D. 415 (D. Del. 2004) ..................................................................................................3
Shum v. Intel Corp.,
499 F.3d 1272 (Fed. Cir. 2007)................................................................................................13
Sorenson v. DMS Holdings, Inc.,
No. 08cv559, 2010 WL 4909615 (S.D. Cal. Nov. 24, 2010) ....................................................3
Therma-Pure, Inc. v. Temp-Air, Inc.,
No. 10-cv-4724, 2010 WL 5419090 (N.D. Ill. Dec. 22, 2010)..................................................4
United States v. Donsky,
825 F.2d 746 (3d Cir. 1987).....................................................................................................12
ii

WiAV Networks v. 3Com Corp.,
No. C 10-03448, 2010 WL 3895047 (N.D. Cal. Oct. 1, 2010) ......................................3, 4, 5, 6
OTHER AUTHORITIES
Fed. R. Civ. P. 20 ...........................................................................................................1, 10, 11, 12
Fed. R. Civ. P. 21 ......................................................................................................................1, 12
Fed. R. Civ. P. 42 .................................................................................................................1, 11, 12

iii

Adobe Systems Inc. (“Adobe”) moves for a separate trial, or alternatively, to sever the
claims against it in this case pursuant to Fed. R. Civ. P. 20, 21, and 42, the Fifth Amendment’s
due process clause, as well as this Court’s inherent power to manage its docket. Defendants
Yahoo! Inc. (D1133) and Amazon.com, Inc. (D1134) have also recently moved for separate
trials, and Plaintiff Eolas had filed oppositions (D1144; D1145) to those motions. In the interests
of efficiency, Adobe incorporates the broad factual and legal arguments from the Yahoo! and
Amazon motions, and will focus here on points specific to Adobe’s case. Again for the sake of
efficiency, Adobe will respond to some of the generalized arguments raised by Eolas in its
oppositions to the Yahoo! and Amazon motions, as Adobe expects Eolas to repeat these
arguments in response to Adobe’s motion.
I.

INTRODUCTION
Eolas has claims pending for trial against ten defendants involving two patents, the ‘906

and the ‘985. Defendants’ businesses – and their accused products and services – are not related.
Adobe provides software programming tools and services that enable customers to create digital
content, deploy it across media and devices, and then measure and optimize it based on user data.
No other defendant is in Adobe’s particular line of business. Defendant J.C. Penney is a wellknown department store. Defendant Amazon began as an on-line bookstore, and has expanded
to its current offering of a wide range of consumer products. Defendant Go Daddy sells website
support services, while YouTube hosts videos. One of the remaining defendants, Google, Inc.,
provides a web browser for users of computing devices to access webpages. Google also
provides web searching tools and services, on-line advertising, and numerous well-known web
pages such as Google Maps.
The only thing defendants have in common is that they operate websites as part of their
businesses. Eolas alleges that any website that provides “interactive media” to enhance user
1

experience while visiting a website infringes its patents. “Interactive media” is a broad generic
label that Eolas applies to numerous different technologies, configurations of commonly used
products, and/or custom solutions. From a technology and implementation standpoint, no two
defendants’ websites operate in precisely the same manner, which is of course one reason why
there is no common liability expert between them—each has implemented its websites in
different manners. As such, each accused website will have a different portion of its operation or
technology in dispute; each will have different proofs on liability and damages (including
apportionment of the value of the accused feature to the specific website at issue, as well as
widely divergent hypothetical negotiation dates).1
In its opposition to the Yahoo! and Amazon motions, Eolas does not identify a single
specific overlapping factual issue requiring a joint trial as to infringement, willfulness or
damages. Instead, Eolas focuses on the patent-specific validity and inequitable conduct issues.
Like any patent owner, Eolas would rather not defend the validity and enforceability of its patent
more than once. But that is exactly what the law requires. Each accused defendant is entitled to
challenge validity and enforceability, and that right cannot be used as a bootstrap to drag
unrelated defendants into a joint trial.
The case against Adobe is unique to Adobe. The Federal Rules of Civil Procedure and
due process2 require that Adobe be allowed to defend itself without the confusion and prejudice

1

2

In its opposition to Yahoo!’s severance motion, Eolas notes that defendants have filed certain
joint motions relating to summary judgment and Daubert issues. D1144 at pp. 12-13. But
defendants have also filed numerous individual motions raising issues unique to a given
defendant. See, e.g., D790; D860; D861; D868; D870; D901; D904; D905; D907; D930.
See, e.g., The complexity of patent cases has been a due process concern in studies and
scholarly comment. Kimberly A. Moore, Juries, Patent Cases, & a Lack of Transparency, 39
HOUS. L. REV. 779, 801 (2002) (examining the inadequacies of juries in patent cases);
Kimberley A. Moore, Judges, Juries, and Patent Cases—An Empirical Peek Inside the Black
Box, 99 MICH. L. REV. 365, 368 (2000) [hereinafter Moore, Black Box] (studying the
2

necessarily attendant from a trial joining five or ten unrelated defendants. To the extent that
Eolas is concerned about the timing of its claims against Adobe, Adobe is willing to be the first
defendant to go to trial against Eolas.
II.

ARGUMENT
A.

THE LAW PRECLUDES JOINING ADOBE FOR TRIAL WITH
UNRELATED DEFENDANTS

“[T]here is a substantial risk of prejudice to [each defendant] were the jury to believe
that [it] is somehow linked to” other defendants who may not share all of its defenses to
infringement or damages. Philips Elecs. N. Am. v. Contec Corp., 220 F.R.D. 415, 418 (D. Del.
2004). Courts in nearly all other districts refuse to join unrelated defendants and products in a
single suit based only on a commonly asserted patent. See, e.g., Ho Keung, TSE v. eBay, Inc.,
No. C 11-01812, 2011 U.S. Dist. LEXIS 59675, at *6 (N.D. Cal. June 2, 2011) (citing Philips);
WiAV Networks v. 3Com Corp., No. C 10-03448, 2010 WL 3895047 at *2-4 (N.D. Cal. Oct. 1,
2010) (citing Philips); Sorenson v. DMS Holdings, Inc., No. 08cv559, 2010 WL 4909615, at *1
(S.D. Cal. Nov. 24, 2010) (citing Philips); see also, e.g., Interval Licensing LLC v. AOL, Inc.,
No. C10-1385, 2011 WL 1655713, at *1 (W.D. Wash. Apr. 29, 2011) (“It is difficult to find
joinder proper when the only shared facts alleged against multiple defendants is that each
infringed the same patent.”); Multi-Tech Sys., Inc. v. Net2Phone, Inc., No. Civ. 00-346, 2000 WL
34494824, at *7 (D. Minn. June 26, 2000) (finding joinder improper because “[t]he only
common thread running through the Complaint is Plaintiff's contention that each Defendant
infringed one or more of the four patents”); Therma-Pure, Inc. v. Temp-Air, Inc., No. 10-cv4724, 2010 WL 5419090, at *4 (N.D. Ill. Dec. 22, 2010) (“Courts in this district, however, have

patent-holder win rates in cases tried before judges and juries and finding that the data results
from her study suggest problems in the jury adjudication of patent suits).
3

consistently held that Rule 20(a)’s requirement for a common transaction or occurrence is not
satisfied where multiple defendants are merely alleged to have infringed the same patent or
trademark.”).3
At the time of trial, joinder, severance and separate trials must be evaluated in light of the
record as developed, the right of each defendant to defend itself, and very real due process
concerns that are inevitable when complex cases are presented to a lay jury. Where, as here, the
complexity of the technology and damages is challenging to sort through for even a one
defendant trial, this complexity is magnified in a joint trial of unrelated defendants, each of
which must defend different accused processes and products, and damages models. As the court
in WiAV Networks explained:
[P]roof of infringement would necessarily require proof of facts specific to each
individual defendant and to each accused product. The mere fact that twelve
defendants all manufacture, sell, or distribute their own laptop computers does
nothing to obviate the bone-crushing burden of individualized methods of proof
unique to each product. Again, there is no conspiracy claim. There is no claim
that any defendant induced another to infringe. Each defendant has simply been
thrown into a mass pit with others to suit plaintiff’s convenience.
In this connection, the accused defendants – who will surely have competing
interests and strategies – are also entitled to present individualized assaults on
questions of non-infringement, invalidity, and claim construction. Cf. Nasalok
Coating Corp. v. Nylok Corp., 522 F.3d 1320, 1326 (Fed.Cir.2008) ( “[W]e have
explicitly held that a determination of patent infringement in an infringement suit,
or even an explicit determination of patent validity, does not preclude the
assertion of an invalidity defense in a second action involving different
products.”)
WIAV Networks, LLC v. 3Com Corp., No. C 10-03448, 2010 WL 3895047 at *2 (N.D.
Cal. Oct. 1, 2010).

3

Joinder of defendants, processes and products based on claims of infringement of a common
patent, never permitted by the overwhelming majority of other districts, is now prohibited by
Section 299 of Title 35.
4

Just like WiAV Networks, Eolas’s claims against each of the defendants in this
case will necessarily involve detailed evidence regarding the unique combination of
technology (much of which is proprietary) incorporated into each accused product as well
as individualized damages analyses under prevailing Federal Circuit law. Each of the
defendants to this action will have its own interests in the outcome, and its own strategies
for protecting those interests.
B.

ADOBE WILL SUFFER UNFAIR PREJUDICE IF IT IS JOINED FOR
TRIAL WITH SOME OR ALL OF THE REMAINING DEFENDANTS

As to each of the three key trial issues – infringement, damages and willfulness – Adobe
can articulate specific ways in which its interests diverge from those of other defendants.
1.

Infringement

Eolas began this case by accusing Adobe’s software authoring tool products – including
Flash, Director, Acrobat and Photoshop authoring tools – of infringement. Eolas then realized
(1) that some of these products were prior art;4 and (2) that it could not credibly seek damages
from Adobe for selling these products and seek very large damages from downstream website
operators who use the products in one way or another as part of their overall website systems.
As a result, Eolas has dropped its claims for damages against Adobe based on sales or
distribution of Adobe products to other defendants (that is damages for inducement or
contributory infringement by other defendants). Instead, Eolas alleges that Adobe infringes by
offering websites such as Adobe.com and Photoshop.com that contain “interactive media.” All
of Eolas’s damages claims arise from Adobe’s operation of its own websites: None of Eolas’s
damages claims arise from Adobe’s sales or distribution of Adobe products to other defendants
or through other channels. In other words, while Eolas may have previously characterized

5

Adobe as a “technology provider” defendant, similar to Sun/Oracle, Apple and Google, Adobe is
now a “website defendant,” being sued by Eolas solely based on its operation of the Adobe
websites.5
In its opposition to the Yahoo! and Amazon motions, Eolas flip-flops back to the prior
world where it was accusing Adobe products of infringement. D1144 fn. 8. Eolas complains
that, if given their own trials, website defendants who incorporate Adobe products will point to
Adobe as an absent technology provider that should be blamed for any infringement resulting
from operation of their websites. Id. at pp. 9-10, 13-14.
Rather than support its opposition, Eolas’s argument demonstrates why Adobe must have
its own trial. It is a fact that some defendants intend to try and shift the blame for their accused
website activities to Adobe. At least two remaining defendant have made indemnification
claims, and others have argued in damage expert reports that at the hypothetical negotiation they
would have simply given the monies they paid to Adobe to Eolas instead. But because Eolas is
not accusing Adobe’s products of infringement, Adobe will not be able to defend those products
in front of the jury. Adobe also has no control over, and often no knowledge of, how other
defendants have used or implemented Adobe products on their websites. As a result, Adobe has
no ability to respond either to Eolas’s claims or to arguments by co-defendants that Adobe is the
real culprit. Adobe will be in the untenable position of being portrayed as an infringing
technology provider, but will only be able to defend the case as an accused website operator. In

4
5

Adobe has filed a motion for summary judgment (D869) based on Eolas’s now-abandoned
contention that Adobe’s prior-art Acrobat products infringed the patents-in-suit.
The same is largely true for Google. While Eolas still has claims against Google for
distribution of the “Chrome” browser, the vast majority of Eolas’s damages claims are based
on Google’s operation of its own websites. See D902-04; D903 Ex. L; D905-3 (excerpts
from Weinstein Google Report dated 7-29-2011).
6

a separate trial, Adobe defends its own technology that is used in the operation of its own
websites without interference from other defendants.
This prejudice is particularly severe with regard to Scene7, which is a hosted website
service business owned by Adobe. Scene7 technology allows a visitor to a website to see a 360
degree view of an item, such as a pair of shoes. It is only useful to a website visitor after he or
she locates an item and wants more information about the item. Scene7 is not used to search
websites or to “check out” or any number of other functions. Scene7 is never the only interactive
media on any website, and further, other technologies provide for similar functionality. See, e.g.,
D1157-02 at p. 199. Scene7 is a relatively small segment of Adobe’s overall business.
Importantly, Eolas is not asking for damages from Adobe based on Adobe’s provision of Scene7
services to other defendants. Although Adobe does not use Scene7 on its own websites, Scene7
is the centerpiece of Eolas’s case against some other defendants, who may predictably turn and
point the finger at Adobe as the supplier of Scene7. In a joint trial, Adobe may have no or
limited ability to defend any Scene7 claims, since no damages are sought from Adobe on this
basis, and since Adobe’s websites do not use Scene7. Adobe cannot be put in the same trial
where a jury is told by a supposed indemnitee that Adobe is responsible for the accused activities
taking place on its website. The unfair prejudice to Adobe in this scenario is palpable.6

6

Eolas acknowledges the potential for prejudice and tries to argue at page 12 of its Yahoo!
opposition that “none of the defendants are ‘peripheral’ to the allegations of infringement . . .
and all are accused of infringement based upon the distribution and use of their own
products.” (D1144 at p. 12) If Adobe is joined with other defendants though, it will be tried
in abstentia based on the use by those defendants of Adobe products or services. Other
website defendants that believe they are entitled to indemnity have economic incentives to
7

2.

Damages

Adobe’s defense to Eolas’s damages claims is unique, and in some respects at odds with
the interests of other defendants. Adobe is the only remaining defendant that uses web server
equipment supplied by Sun/Oracle.7 As a result, Adobe has a license defense arising from the
settlement and license agreement between Eolas and Sun/Oracle. Other defendants do not share
this defense, and deem it in their interest to try and exclude the license from evidence. A similar
scenario exists with regard to the Eolas license agreements with Microsoft and Apple. Eolas
does not ask for damages based on visits to Adobe’s website using Microsoft’s Internet Explorer
browser or Apple’s Safari browser, because those browsers are licensed. See Weinstein Adobe
Report (D903 Ex. B) at ¶¶ 110-111. Adobe and other similarly-situated website defendants will
therefore point to these licenses to reduce Eolas’s damages claims. Google, on the other hand, is
the sole remaining defendant that distributes a browser. Google predictably and understandably
does not believe the jury should learn that two other prominent browser distributors – Microsoft
and Apple – took licenses from Eolas, and paid large sums of money to do so.
3.

Willfulness8

Adobe will be at a disadvantage in terms of presenting a willfulness defense if joined
with other defendants, due to its prior awareness of Eolas’s ‘906 patent, and the fact that it was
forced to engage with Microsoft while Microsoft attempted to design around the ‘906 patent.
Following the adverse jury verdict in Illinois, Microsoft considered re-designing its browser to
avoid the ‘906 patent. Because some of Adobe’s products functioned with Microsoft’s browser,

7

push their liability or damages on to the Adobe products or services where they believe
indemnity might apply.
Adobe has filed a motion for summary judgment based on its unique Sun/Oracle license
defense. See, D870.
8

Adobe actively followed Microsoft’s plans to determine the impact on Adobe’s own products.
Adobe had no notice from Eolas that it would sue Adobe, nor did Eolas indicate in any way that
it believed any Adobe product, service or website infringed the ‘906 patent.9 However, Eolas
now seeks to portray Adobe’s communications with Microsoft arising from Microsoft’s designaround activities as some sort of “guilty knowledge” by Adobe.10 Adobe will need to spend trial
time to rebut these false claims. Other defendants who had no prior involvement with Microsoft
will understandably not want to spend precious trial time on this issue. This conflict is very real
and portends prejudice to Adobe.
4.

Cooperation During Discovery

Additionally, Eolas asserts in its Yahoo!/Amazon oppositions that because defendants
diligently endeavored to cooperate during discovery, they should be able to conduct a multidefendant jury trial without problem or prejudice. It is true that throughout the pretrial
proceedings, defendants have attempted to minimize the burden on the Court by filing joint
motions where possible, agreeing to shared page limitations in briefing, and in some cases
retaining the same expert witnesses for invalidity issues. All Defendants were forced, over their
objections, to engage in pretrial proceedings with unrelated co-defendants whose cases had
nothing to do with their own. All defendants did so with professionalism and with the maximum
regard for judicial economy.
8

9

10

Adobe has joined other defendants in moving for summary judgment of no willfulness. By
making arguments here, Adobe is in no way suggesting that willfulness should be presented
to the jury. It should not.
Adobe products were prominent in the trial between Eolas and Microsoft as part of Eolas’s
proofs that Microsoft was infirnging, yet Eolas never accused Adobe of infringement. There
was no reason for Adobe to believe that the Microsoft trial or verdict showed Eolas
considered Adobe an infringer.
These pre-suit activities relating to Microsoft’s concerns about the ‘906 patent should be
excluded from evidence in any event, as they are not relevant to any claim against any party
to this case.
9

But a jury trial is different. To vigorously defend their respective clients, counsel for
each defendant needs to present that client’s specific case. There is no “group” defense here –
each defendant has its own story to tell. No amount of cooperation can eliminate the prejudice
that flows from being forced to address the jury as merely one of five or ten accused infringers.
It is wrong for Eolas to argue otherwise.
C.

NOTHING ABOUT THE FEDERAL CIRCUIT’S MANDAMUS ORDER
IN THIS CASE SUGGESTS THAT THE COURT SHOULD NOT
CONDUCT SEPARATE TRIALS

In its Yahoo!/Amazon oppositions, Eolas argues that the Federal Circuit’s mandamus
decision in this case establishes that joinder is proper, and counsels against separate trials. This
is wrong. This Court denied a motion to transfer or in the alternative to sever and transfer at an
early stage of this case. The severance request in the original motion was to facilitate transfer if
the presence of the Texas-based defendants was an impediment to transfer. The Federal Circuit
denied a writ of mandamus on March 4, 2011 in In re Google, Misc. No. 968.11 The focus of the

11

The propriety of the Federal Circuit’s prior non-precedential ruling in In re Google, as well
as the Court’s prior order in this case, are currently among the issues now pending before the
Federal Circuit in a fully briefed mandamus petition in In re EMC, Misc. Dkt. 100 (Fed. Cir.,
filed Sept. 7, 2011), from an order denying severance in Oasis v. EMC et al., 10-CV-435
(E.D. Tex.)(Sherman) See Petition for Writ of Mandamus, In re EMC, Misc. Dkt. 100, filed
Sept. 7, 2011, at pp. 5, 15, 23-24. A brief filed by several Amicus Curiae in support of the
petition in In re EMC specifically raises the impact of the House Committee’s Report on the
America Invents Act’s joinder provision, now Section 299 of Title 35. Brief of Amicus
Curiae in Support of Petition for Writ of Mandamus, Misc. Dkt. 100, filed Sept. 22, 2011, at
pp. 2-3, 5-6.
Separately, the Federal Circuit has recently consolidated two other petitions for writs of
mandamus that address the issue of severance under Fed. R. Civ. P. 20 prior to the effective
date of Section 299, in In re TD Ameritrade and In re Scottrade, Fed. Cir. Misc. Dkt. 107 and
109, petitions from Ganas LLC v. Scottrade et al., No. 10-CV-320 (E.D. Tex.)(Marshall).
The Federal Circuit’s Orders requiring responses to the Petitions by EMC (in September
2011), Scottrade and TD Ameritrade (consolidated opposition due January 9, 2012), show an
interest in the joinder and severance issue as it applies in cases prior to the effective date of
Section 299, and this Court’s prior decision and the Federal Circuit’s own denial of writ of
mandamus are issues in those cases. Likewise, the view of the House expressed in the
10

prior motion and the non-precedential Federal Circuit order denying mandamus was on the
transfer issue: In fact, the Federal Circuit addressed only one paragraph to severance and did not
address any of the Federal Rules of Civil Procedure in that paragraph. The prior motion and
order of this Court, as well as of the Federal Circuit, were done in the context of the lawsuit at an
early stage, focused on transfer, with severance being an alternative presented to facilitate
transfer.
Now, following extensive merits discovery, claim construction, reconsideration of claim
construction, motions for summary judgment, expert reports, and several settlements, the parties
have changed and the record has sharpened to show what issues will go to trial. In particular,
Eolas seeks no damages from Adobe for inducement of other defendants to infringe, contributory
infringement of other defendants or joint infringement with other defendants. Instead, the claim
against Adobe is only for indirect or direct infringement by Adobe’s own websites in connection
with visits by Adobe’s own end user customers.
The scope of the prior motion and order, and the significance of these changes, show the
prior order is not applicable at this stage of the litigation to a request for separate trial under Fed.
R. Civ. P. 42(b) or the due process problems of trial of the case as currently configured.12 Adobe
is not moving to transfer, but only for severance or separate trial. As the Court has recognized in

Committee Report for the reason to enact Section 299 is at issue as expressed in footnote 61
to the Report, citing the Court’s prior decision here as an incorrect application of the rules in
view of the House Committee. It is very possible, if not likely, that an opinion of the Federal
Circuit addressing its prior denial of writ in this lawsuit, as well as the proper application of
Rule 20 and the impact of the House Committee Report on Section 299, will be forthcoming
in the next few weeks.
12

The possibility of a ruling from the Federal Circuit in one of the pending mandamus cases
discussed in footnote 11, that addresses its prior denial of writ in this case, as well as the
House Committee’s Report, also counsel toward reconsideration of joinder under Fed. R.
Civ. P. 20.
11

Bedrock and other cases, it is not fair, efficient or practical to have a single trial on unrelated
allegations against several unrelated defendants. Even the most diligent and well-prepared juror
cannot absorb the volume of detailed information about infringement and damages in a trial with
multiple unrelated defendants. Forcing several defendants with disparate products and business
models into one trial is manifestly unfair, improper under the Rules, and a denial of due process.
The House of Representatives Report on what is now Section 299 of Title 35, relating to joinder,
shows that Congress does not believe the rulings on joinder formerly applied in this case were
correct when made under Rule 20. While Section 299 itself is not retroactive, the law on Rule
20 recited in the House Committee Report illustrates Congress did not consider Section 299 a
change to Rule 20, but only a way to ensure its uniform application in all districts.
Even assuming joinder is proper under Rule 20, “the court may at any time . . . add or
drop a party. . . . [or] sever any claim against a party” under Rule 21. Fed. R. Civ. P. 21; see
also, e.g., Brunet v. United Gas Pipeline Co., 15 F.3d 500, 505 (5th Cir. 1994) (“The trial court
has broad discretion to sever issues to be tried before it.”); United States v. Donsky, 825 F.2d
746, 754 (3d Cir. 1987) (“Our standard of review a district court’s severance decision is whether
the district court abused its discretion by its ruling”); Kimmel v. Cavalry Portfolio Servs., LLC,
747 F. Supp. 2d 427, 434 (E.D. Pa. 2010) (“District courts are given broad discretion when
deciding whether to sever a case pursuant to Rule 21”).
Rule 42(b) provides a further basis for separate trials where, “[f]or convenience, to avoid
prejudice, or to expedite and economize, the court may order a separate trial of one or more
separate issues[ or] claims.” Fed. R. Civ. P. 42(b). The power to order separate trials under Rule
42 is left to the district court, as part of its wide discretion in trial management. See, e.g., Alaniz

12

v. Zamora-Quezada, 591 F.3d 761, 773-74, (5th Cir. 2009); Shum v. Intel Corp., 499 F.3d 1272,
1282 (Fed. Cir. 2007); Idzotjic v. Pa. R.R. Co., 456 F.2d 1228, 1230 (3d Cir. 1972).
Due process requires that each defendant be given a fair opportunity to develop its case
and to present it at trial. See footnote 2. This is impossible when the constraints of a single
lawsuit or trial require that defenses to liability and damages be blended or diluted so they can be
adopted by all of the defendants in trial to avoid juror confusion and to meet time limitations on
the trial. Where complex patents, complex products, and damages based on apportionment
(among other things), are in issue, due process concerns are very real given the finite amount of
discovery that can be done in one case, and the finite amount of information any judge or juror
can absorb in a single trial. This is not to say some coordination is impossible, but pretrial
coordination is different from joinder of all parties and products in a single trial that crowds out
room for many of the details of a defendant’s position.
III.

CONCLUSION
For the foregoing reasons, Adobe moves the Court to sever it from the case to pursue the

remainder of the case through trial to conclusion, pursuant to Rules 20, 21, and the Court’s
inherent powers. Alternatively, Adobe asks that it have a separate trial under Rule 42, and the
Court’s inherent powers to preserve its right to a fair opportunity to present its case both fully
and efficiently to the jury. Due process requires Adobe have its day in court to present its
defenses in a way that a reasonable juror can understand them, as opposed to being forced to
compete for time, attention, and tax the limits of any juror in a joint trial.

13

Dated: December 29, 2011

Respectfully submitted,
FISH & RICHARDSON P.C.

By: /s/ David J. Healey
David J. Healey
E-mail: [e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
[phone] (Telephone)
[phone] (Facsimile)
OF COUNSEL:
Frank E. Scherkenbach
E-mail: [e-mail]
Proshanto Mukherji
Email: [e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
[phone] (Telephone)
[phone] (Facsimile)
Jason W. Wolff
E-mail: [e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
[phone] (Telephone)
[phone] (Facsimile)
Counsel for Defendant
ADOBE SYSTEMS INCORPORATED

14

CERTIFICATE OF CONFERENCE
I certify that I spoke with attorney John Campbell for Plaintiff on December 30, 2011 by
phone and that the motion is opposed.

/s/David J. Healey
David J. Healey

15

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on December 29, 2011 to all counsel of record who are deemed to
have consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).

/s/ David J. Healey__________________
David J. Healey

16