Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1182

Opposed MOTION for Leave to File Motion in Limine to Exclude Evidence of Efforts to Initiate a Re-Examination of the '906 Patent 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 INCORPORATED’S MOTION FOR LEAVE TO FILE A
MOTION IN LIMINE TO EXCLUDE EVIDENCE OF EFFORTS TO INITIATE A REEXAMINATION OF THE ’906 PATENT AND MOTION IN LIMINE
Adobe Systems Incorporated (“Adobe”), one of the Defendants, moves for leave to file
one Motion in Limine beyond the limit set by this Court. Adobe needs to file one individual
Motion in Limine on its own to exclude evidence relating to efforts to persuade the Director of
the United States Patent And Trademark Office (“USPTO”) to initiate a re-examination of the
’906 patent.
Adobe’s proposed motion is a discrete issue: It seeks to exclude efforts by Adobe (or its
predecessor) corporations (and necessarily others) to have the Director of the U.S. Patent &
Trademark Office initiate a re-examination of the ’906 patent. Notably, the Motion in Limine
does not seek to exclude the re-examination or the re-examination record itself. As shown in
Adobe’s Motion in Limine, this issue is irrelevant to any jury issue.

Adobe needs to be able to make this one separate Motion in Limine because this
evidence does not impact all of the remaining Defendants equally, many Defendants have not
prioritized this as a Motion in Limine, leaving Adobe to this motion for itself.
The specific facts and law are set forth in the Motion in Limine. Among the reasons this
motion is unique to Adobe, and leave should be permitted for it to be filed, are as follows:
Adobe’s products were involved in the trial of Eolas v. Microsoft. Adobe knew about the ’906
patent from that litigation, which pre-dates the re-exam. It also means that at the time certain
companies were working to have the PTO initiate a re-examination, Adobe had no reason to
think it infringed, since products by it and its predecessor companies had been featured in the
Eolas v. Microsoft trial and were never accused of infringement at that time (or afterward until
this suit was filed). If the lobbying effort is permitted to go to the jury, Adobe would have to
explain Adobe’s concern was the impact on web browsers, especially compatibility with
products for designing websites, its own websites, and its FLASH and authoring tool. Further,
Adobe and its predecessors pre-date Eolas, had relationships with the Regents of the University
of California (and do today), and licenses and agreements with the Regents.
Evidence about the past history of the Microsoft case is likely relevant to estoppel or
laches issues for Adobe, but these are equitable issues to be tried to the Court, and the evidence
is of no relevance in the jury trial. Since Adobe is uniquely situated in the volume of material
and past relationships, Adobe has a unique interest in excluding this evidence, and moves to file
its own Motion in Limine on the topic.
Adobe asks that the Court grant its motion for leave to file this Motion in Limine.

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Dated: January 6, 2012

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

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CERTIFICATE OF CONFERENCE
I certify that I met and conferred with counsel for Plaintiff on January 5, 2012, and that
the motion is opposed.
/s/David J. Healey
David J. Healey

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on January 6, 2012, on 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

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