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)

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: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
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: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]

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: [phone]
Facsimile: [phone]
Email: [e-mail]
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: [phone]
Facsimile: [phone]
Email: [e-mail]
ATTORNEYS FOR DEFENDANT
AMAZON.COM INC. AND
YAHOO! INC.

/s/ Thomas L. Duston (with permission)
Thomas L. Duston
[e-mail]
Anthony S. Gabrielson
[e-mail]
Scott A. Sanderson
[e-mail]
MARSHALL, GERSTEIN & BORUN LLP
6300 Willis Tower
233 South Wacker Drive
Chicago, IL 60606-6357
[phone]
Brian Craft
[e-mail]
Eric H. Findlay
[e-mail]
FINDLAY CRAFT, LLP
6760 Old Jacksonville Highway, Suite 101
Tyler, TX 75703
[phone]
ATTORNEYS FOR DEFENDANT
CDW LLC

DEFENDANTS’ MOTION TO LIMIT NUMBER OF ASSERTED CLAIMS – Page 6

/s/ Christopher M. Joe (with permission)
Christopher M. Joe
[e-mail]
Eric W. Buether
[e-mail]
Niky Bukovcan
[e-mail]
1700 Pacific, Suite 2390
Dallas, Texas 75201
Telephone: [phone]
Facsimile: [phone]
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
[e-mail]
[e-mail]
Mark G. Matuschak
Donald R. Steinberg
WILMER CUTLER PICKERING HALE
AND DORR LLP
60 State Street
Boston, MA 02109
617.526.5000
[e-mail]
[e-mail]
Kate Hutchins
WILMER CUTLER PICKERING HALE
AND DORR LLP
399 Park Avenue
New York, NY 10022
212.230.8800
[e-mail]

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
[e-mail]
ATTORNEYS FOR DEFENDANT
STAPLES, INC.

/s/ Neil J. McNabnay (with permission)
Thomas M. Melsheimer ([e-mail])
Texas Bar No. 13922550
Neil J. McNabnay ([e-mail])
Texas Bar No. 24002583
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, TX 75201
[phone] (Telephone)
[phone] (Facsimile)
Proshanto Mukherji
E-mail: [e-mail]
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: [phone]
Facsimile: [phone]
E-mail: [e-mail]
ATTORNEYS FOR DEFENDANT
CITIGROUP INC.
/s/ David J. Healey (with permission)
David J. Healey
E-mail: [e-mail]
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: [e-mail]
FISH & RICHARDSON P.C.
225 Franklin Street
Boston, MA 02110-2804
617-542-5070 (Telephone)
617-542-8906 (Facsimile)
Joseph P. Reid
E-mail: [e-mail]
Jason W. Wolff
E-mail: [e-mail]
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