Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1159

MOTION to Limit the Number of Asserted Claims for Trial by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Citigroup Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc.. (Attachments: # 1 Text of Proposed Order)(Doan, Jennifer)

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS TYLER DIVISION EOLAS TECHNOLOGIES, INC. and THE REGENTS OF THE UNIVERSITY OF CALIFORNIA Plaintiffs, v. ADOBE SYSTEMS, INC. ET AL., Defendants. § § § § § § § § § § § CIVIL ACTION NO. 6:09-CV-446 (LED) DEFENDANTS’ MOTION TO LIMIT THE NUMBER OF ASSERTED CLAIMS FOR TRIAL With merely five weeks to trial, Plaintiffs Eolas Technologies, Inc. (“Eolas”) and the Regents of the University of California (collectively “Plaintiffs”) continue to assert more than 20 claims against 10 separate defendants. Despite requests by the defendants, a written order, and oral encouragement from this Court, Plaintiffs continue to stall in selecting a reasonable number of claims for trial. Patent infringement trials are not a “gotcha” game – and plaintiffs should not be allowed to make it so. Now is the time – when the parties are making critical decisions about pretrial disclosures as to exhibits, witnesses and deposition designations – to narrow the number of asserted claims to focus on trial preparation. For the reasons set forth below, Defendants respectfully request that the Court now limit the number of claims that Plaintiffs can assert at trial to three or fewer claims per patent in order to streamline this case for trial. I. Background When Eolas filed this case in October 2009, it asserted 61 claims from two patents against a vast array of diverse defendants. On December 21, 2010, this Court ordered the parties DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 1 to meet and confer to “narrow the number of disputed claims to a reasonable number.” Dkt. No. 536. Thereafter, Eolas only dropped 16 claims leaving 45 claims remaining in dispute. Due to the large number of claims still remaining, at the June 29, 2011 hearing, Defendants again requested this Court to require Eolas to narrow their claims to a reasonable number for trial, and this Court again encouraged them to narrow the case. Dkt. No. 762. Since that time, however, Plaintiffs have done little to “narrow” this case but, instead, have chosen the opposite course. Specifically, in September 2011, Eolas added the Regents of the University of California as a plaintiff in this case – leading to the production of more than 430,000+ files (which are still being produced, contrary to Eolas’ representation to this Court in September that they would be produced in short form) and at least five additional depositions (only one of which has occurred to date). Moreover, Plaintiffs requested this Court to reconsider its claim construction order to broaden the term “executable application” beyond the construction originally given by this Court and given by the Patent & Trademark Office in the patent file history. The result of which broadened the number of allegedly infringing products and web pages. Now, the parties have produced their expert reports, a number of supplemental reports and rebuttal reports. After all the dust has settled, Plaintiffs still assert some 22 claims from two patents against each of the 10 remaining defendants on a diverse array of products and technologies. Plaintiffs have had more than two years since the filing of this lawsuit to identify their strongest claims. Furthermore, Plaintiffs have now had over five months to evaluate Defendants’ invalidity expert reports and two months to evaluate Defendants’ non-infringement reports. Plaintiffs have no justification for their refusal to meaningfully reduce the number of claims they continue to assert. DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 2 II. Argument It is customary in complex patent cases involving a large number of claims to be tried and decided on a much smaller number of “representative claims.” See, e.g., Baxter Int'l, Inc. v. Cobe Labs., Inc., 88 F.3d 1054, 1056-57 (Fed. Cir. 1996) (plaintiff asserted twelve patent claims but a stipulation was reached to decide the infringement and validity on three claims). In presenting a patent case to the jury, counsel must address which claims of the asserted patent or patents are being allegedly infringed upon. Thus, the potential for jury confusion in a patent case increases exponentially with the number of claims asserted. Additionally, when the number of claims being asserted is so voluminous, litigation becomes extremely burdensome on both the parties and the Court. Ronald A. Katz Tech. Licensing, L.P. v. Citibank, No. 5:05-cv-142-DF (E.D. Tex. January 27, 2006) (Dkt. No. 73, Order From Scheduling Conference And Docket Control Order) (This Court finding it within its discretion to limit the number of claims to help effectuate case management); see In Re Katz, 639 F.3d 1303 (2011) (Federal Circuit affirmed various district courts’ procedures for limiting claims to a manageable number). Indeed, Federal Rules of Civil Procedure 1 and 16 necessitate a “just, speedy, and inexpensive determination of every action” that is formulated and simplified through the guidance of the Court. Likewise, the Court has the authority to require Plaintiffs to limit the number of asserted claims for trial to a reasonable and manageable number. In fact, some courts, including courts in this district, have required plaintiffs to streamline the case to as few as three claims per patent. See, e.g., Hearing Components, Inc. v. Shure, Inc., No. 9:07-CV-104-RC, 2008 WL 2485426, at *1 (E.D. Tex. June 13, 2008) (ordering the plaintiff to select no more than 3 representative claims from each patent for claim construction and trial when 3 patents were asserted); Verizon Cal. Inc. v. Ronald A. Katz Tech. Licensing, L.P., 326 F. Supp. 2d 1060, 1066 (C.D. Cal. 2003) (ordering plaintiff to select no more than three representative claims per patent DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 3 for its infringement case). Moreover, a number of other courts have ordered the plaintiff to proceed to trial with even greater limitations on the number of asserted claims. See, e.g., Online News Link LLC v. Apple, Inc., No. 2:09-CV-312-DF (E.D. Tex. Mar. 12, 2010) (docket control order) (limiting plaintiff to 10 claims for claim construction); Cummins-Allison Corp. v. SBM Co., Ltd., 669 F. Supp. 2d 774, 780 (E.D. Tex. 2009) (eight representative claims for trial when four patents were asserted). Likewise, the Federal Circuit has affirmed the practice of limiting a plaintiff’s claims to a manageable number of representative claims. See ReRoof Amer., Inc. v. United Structures of Amer., Inc., 215 F.3d 1351 (Fed. Cir. Aug. 30, 1999) (Federal Circuit affirmed district court’s decision to limit plaintiff to five representative claims for trial despite plaintiff’s claim of prejudice); Kearns v. General Motors Corp., No. 95-1535, 1994 U.S. App. LEXIS 19568 (Fed. Cir. July 26, 1994) (Federal Circuit affirmed district court’s decision to dismiss plaintiff’s case after plaintiff failed to comply with court order to limit case to one representative claim per patent). Here, as is common practice throughout patent cases, Plaintiffs should be required to limit the number of claims for trial. Defendants’ request is not overly burdensome. Indeed, as the cases above demonstrate, Defendants’ request is far less restrictive than the limits imposed by numerous other courts. Now, before pretrial disclosures, is the time to streamline this case for trial, and reducing the case to three or fewer asserted claims per patent would significantly aid this cause. Plaintiffs should not be allowed to hold their cards until the eleventh hour and then on the eve of trial drop several claims as a trial strategy designed only to obfuscate the true issues for trial. Plaintiffs either have a viable infringement case or they do not – their continued attempts to hide the ball are telling. Plaintiffs should not be allowed to waste this Court’s or the DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 4 defendants’ time and efforts in last minute trial preparation with these continued tactics. III. Conclusion As Plaintiffs are certainly aware, the parties will be given limited time at trial to present their evidence. Likewise, Defendants will only have a limited amount of time to defend against Plaintiffs’ infringement theories and present their invalidity case. It is without question that neither side will have sufficient time to present evidence regarding 22 asserted claims. In order to conserve the Court’s and the parties’ resources, Defendants respectfully request that the Court now limit the number of representative claims for Plaintiffs to three or fewer claims per patent for trial. Respectfully submitted, /s/ Jennifer H. Doan Jennifer H. Doan (TX Bar No. 08809050) Joshua R. Thane (TX Bar No. 24060713) HALTOM & DOAN 6500 Summerhill Road, Suite 100 Texarkana, TX 75503 Telephone: (903) 255-1000 Facsimile: (903) 255-0800 Email: jdoan@haltomdoan.com Email: jthane@haltomdoan.com Edward R. Reines Jared B. Bobrow Sonal N. Mehta Aaron Y. Huang Andrew L. Perito WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100 Email: edward.reines@weil.com Email: jared.bobrow@weil.com Email: sonal.mehta@weil.com Email: aaron.huang@weil.com Email: andrew.perito@weil.com DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 5 Doug W. McClellan WEIL, GOTSHAL & MANGES LLP 700 Louisiana, Suite 1600 Houston, TX 77002 Telephone: (713) 546-5000 Facsimile: (713) 224-9511 Email: doug.mcclellan@weil.com Otis Carroll (TX Bar No. 3895700) Deborah Race (TX Bar No. 11648700) IRELAND, CARROLL & KELLEY, P.C. 6101 South Broadway, Suite 500 Tyler, Texas 75703 Telephone: (903) 561-1600 Facsimile: (903) 581-1071 Email: fedserv@icklaw.com ATTORNEYS FOR DEFENDANT AMAZON.COM INC. AND YAHOO! INC. /s/ Thomas L. Duston (with permission) Thomas L. Duston tduston@marshallip.com Anthony S. Gabrielson agabrielson@marshallip.com Scott A. Sanderson ssanderson@marshallip.com MARSHALL, GERSTEIN & BORUN LLP 6300 Willis Tower 233 South Wacker Drive Chicago, IL 60606-6357 (312) 474-6300 Brian Craft bcraft@findlaycraft.com Eric H. Findlay efindlay@findlaycraft.com FINDLAY CRAFT, LLP 6760 Old Jacksonville Highway, Suite 101 Tyler, TX 75703 (903) 534-1100 ATTORNEYS FOR DEFENDANT CDW LLC DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 6 /s/ Christopher M. Joe (with permission) Christopher M. Joe chris.joe@bjciplaw.com Eric W. Buether eric.buether@bjciplaw.com Niky Bukovcan niky.bukovcan@bjciplaw.com 1700 Pacific, Suite 2390 Dallas, Texas 75201 Telephone: (214) 466-1272 Facsimile: (214) 635-1828 ATTORNEYS FOR DEFENDANT J.C. PENNEY CORPORATION, INC. /s/ Mark Matuschak (with permission) Joe W. Redden, Jr. Michael Ernest Richardson BECK REDDEN & SECREST 1221 McKinney Suite 4500 Houston, TX 77010 713.951.6284 jredden@brsfirm.com mrichardson@brsfirm.com Mark G. Matuschak Donald R. Steinberg WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 617.526.5000 mark.matuschak@wilmerhale.com don.steinberg@wilmerhale.com Kate Hutchins WILMER CUTLER PICKERING HALE AND DORR LLP 399 Park Avenue New York, NY 10022 212.230.8800 kate.hutchins@wilmerhale.com DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 7 Daniel V. Williams WILMER CUTLER PICKERING HALE AND DORR LLP 1875 Pennsylvania Avenue, N.W. Washington, D.C. 20006 202.663.6012 daniel.williams@wilmerhale.com ATTORNEYS FOR DEFENDANT STAPLES, INC. /s/ Neil J. McNabnay (with permission) Thomas M. Melsheimer (txm@fr.com) Texas Bar No. 13922550 Neil J. McNabnay (njm@fr.com) Texas Bar No. 24002583 FISH & RICHARDSON P.C. 1717 Main Street, Suite 5000 Dallas, TX 75201 (214) 747-5070 (Telephone) (214) 747-2091 (Facsimile) Proshanto Mukherji E-mail: pvm@fr.com FISH & RICHARDSON P.C. One Marina Park Drive Boston, MA 02110-1878 617-542-5070 (Telephone) 617-542-8906 (Facsimile) ATTORNEYS FOR DEFENDANT THE GO DADDY GROUP, INC. /s/ M. Scott Fuller (with permission) Edwin R. DeYoung Texas Bar No. 05673000 Roy W. Hardin Texas Bar No. 08968300 Roger Brian Cowie Texas Bar No. 00783886 M. Scott Fuller Texas Bar No. 24036607 Galyn Gafford Texas Bar No. 24040938 DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 8 LOCKE LORD LLP 2200 Ross Avenue, Suite 2200 Dallas, Texas 75201-6776 Telephone: (214) 740-8000 Facsimile: (214) 740-8800 E-mail: edeyoung@lockelord.com ATTORNEYS FOR DEFENDANT CITIGROUP INC. /s/ David J. Healey (with permission) David J. Healey E-mail: Healey@fr.com FISH & RICHARDSON P.C. 1 Houston Center 1221 McKinney Street, Suite 2800 Houston, TX 77010 713-654-5300 (Telephone) 713-652-0109 (Facsimile) OF COUNSEL: Frank E. Scherkenbach E-mail: Scherkenbach@fr.com FISH & RICHARDSON P.C. 225 Franklin Street Boston, MA 02110-2804 617-542-5070 (Telephone) 617-542-8906 (Facsimile) Joseph P. Reid E-mail: Reid@fr.com Jason W. Wolff E-mail: Wolff@fr.com FISH & RICHARDSON P.C. 12390 El Camino Real San Diego, CA 92130 858-678-5070 (Telephone) 858-678-5099 (Facsimile) ATTORNEYS FOR DEFENDANT ADOBE SYSTEMS INCORPORATED DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 9 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 30th day of December, 2011. /s/ Jennifer H. Doan Jennifer H. Doan CERTIFICATE OF CONFERENCE Counsel for Amazon and Yahoo! had a meet and confer with Plaintiffs counsel on December 8, and follow-up emails on December 19 and December 30, 2011, to which no response has been received regarding this motion. /s/ Jennifer H. Doan Jennifer H. Doan DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 10

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