Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1183

Opposed MOTION in Limine to Exclude Evidence of Efforts to Initiate a Re-Examination of the '906 Patent by Adobe Systems Incorporated. (Attachments: # 1 Exhibit A - Weinstein Core Report, # 2 Exhibit B - Expert Rpt of Weinstein re Adobe, # 3 Exhibit C - Expert Rpt of Martin, # 4 Exhibit D - Sadowski Depo Excerpts, # 5 Text of Proposed Order)(Healey, David) (Entered: 01/06/2012)

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 IN LIMINE TO EXCLUDE
EVIDENCE OF EFFORTS TO INITIATE A RE-EXAMINATION OF THE ’906
PATENT

Subject to its Motion for Leave to file a separate Motion in Limine, filed on this same
date, Adobe Systems Incorporated (“Adobe”) submits this Motion and Memorandum of Law in
to exclude evidence relating to efforts by any party or third party to persuade the Director of the
United States Patent And Trademark Office (“USPTO”) to initiate a re-examination of U.S.
Patent No. 5,838,906 (the ’906 patent).
I.

INTRODUCTION
Plaintiffs accuse Adobe of infringing the ’906 patent based on Adobe’s operation of

various websites, such as Adobe.com and Photoshop.com. Plaintiffs assert that this infringement
began in 2006, and their damages expert Weinstein places the hypothetical negotiation date at
that time. Plaintiffs have also stipulated that they are not entitled to collect damages for any
alleged infringement prior to the date the suit was filed, namely October 6, 2009.
Despite the fact that they claim no damages for any conduct by Adobe before October
2009, Plaintiffs seek to introduce evidence that Adobe and a company it acquired in 2006
(Macromedia) acted in 2003 to persuade the USPTO to re-examine the ’906 patent. Adobe does
not seek to exclude evidence of the re-examination itself. However, the fact that Adobe desired
in 2003 that the ’906 patent be re-examined is not relevant to any issue in this case. Moreover,
Plaintiffs apparently seek to introduce this evidence to create the false impression that Adobe
was concerned in 2003 that its websites infringed the ’906 patent. The record is clear, though,
that Adobe, Macromedia, and the various non-parties that made up the W3C1 were only
concerned about the impact that the ’906 patent might have on Microsoft’s Internet Explorer web
browser. If Eolas is allowed to make an issue of the fact that Adobe and others wanted the ’906
1

The W3C is the World Wide Web Consortium, which is a non-profit organization started by
Tim Berners-Lee, who invented the WWW. It has a diverse membership that includes
parties and non-parties to the suit who are interested in promulgating standards for the
WWW. See, e.g., http://www.w3c.org/Consortium.
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patent re-examined in 2003, then Adobe will need to respond by laying out the entire history of
Plaintiffs’ prior lawsuit with Microsoft, the particular infringement allegations there against
Internet Explorer and the Microsoft Windows operating system, including the fact that Eolas
included Macromedia and Adobe technology in its trial against Microsoft but never accused
either of infringement, and the vastly different scope of infringement allegations in the present
case vis-à-vis the Microsoft litigation. This irrelevant side-show would waste valuable trial time
of the Court and jury, the parties, and will lead to substantial confusion over the real casedispositive issues. Moreover, it would cause conflicts with other Defendants who oppose the
admission of evidence of the Microsoft trial.
II.

ARGUMENT
A.

Adobe’s And The W3C’s Communications That Preceded the Director
Ordered Re-Examination Of The ’906 Patent Are Not Relevant To Damages
Or Liability

Plaintiffs’ damages expert Weinstein includes in his expert report a discussion of
efforts in 2003 by Adobe, Macromedia, and the Patent Advisory Group of the W3C to
convince the Director of the USPTO to re-examine the ’906 patent. See Exh. A attached
hereto at ¶¶ 70-73. Weinstein does not opine that these facts would have any impact on
the hypothetical negotiation or damages in this case. Nor could he: by his own analysis,
the hypothetical negotiation between Adobe and Eolas would have taken place in August
of 2006, over three years after the Director-initiated reexamination was ordered and
shortly after the re-examination concluded. See Exh. B attached hereto at ¶¶ 21, 54. The
damages period admittedly does not start to run until October of 2009, when Eolas filed
suit. Efforts years earlier to institute a re-examination have no relevance to the issue of a
reasonable royalty in 2006, and Weinstein provides none.

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In the same vein, Plaintiffs’ technical expert Martin includes a “timeline” in his
report that includes the following entries:
“October 14, 2003 Letter from AOL, Macromedia and Microsoft urging reexamination of the ’906 patent is submitted to the PTO”
“October 15, 2003 Letter from Adobe urging director-ordered reexamination of the
’906 patent is submitted to the PTO”
See Exh. C attached hereto at p. 19. But Martin offers no opinion that these events from 2003
have anything to do with his infringement analysis. Nor could he since his infringement analysis
relates entirely to actions by Adobe after August of 2006.
Finally, Plaintiffs may suggest that the prior art identified in the letters to the Director of
the USPTO did not include certain prior art which Defendants might rely on at trial, such as
MediaView and Director, and may argue that the reason for the omission is that Adobe
concluded the omitted prior art was no good. See, e.g., Exh. D attached hereto at 48:9-50:10
(examining a former Adobe employee on why Apple or others did not include certain prior art in
the letters to the USPTO regarding reexamination and why Apple was dismissed from the case;
to minimize burden on the court this testimony is not submitted but can be if the characterization
of it is in question). The argument is a non-sequitur, would be based wholly on speculation, and
plainly would prejudice Defendants.
Thus, Adobe’s (or anyone else’s) communications about re-examination of the ’906
patent have no relevance to the damages or liability issues for trial in this case. Plaintiffs have
placed them into their expert reports as a back-door means of getting the evidence before the
jury, even though it does not relate to the experts’ opinions.

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B.

Communications Concerning Re-Examination Of The ’906 Patent Are Not
Relevant To Willfulness

Plaintiffs likely will also argue that Adobe’s 2003 re-examination communications are
relevant to willfulness.2 Plaintiffs may argue that the evidence is necessary to establish that
Adobe knew about the ’906 patent in 2003. This is not in dispute; Adobe has admitted that it
was aware of the ’906 patent in 2003. What Plaintiffs really seek is an inference that, because
Adobe desired that the ’906 patent undergo re-examination, Adobe believed its websites
infringed the patent. But the very documents that Plaintiffs’ cite demonstrate that this is not true:
Additionally, Adobe asserted that significant concerns have been expressed within the
broader community of owners and users of websites on the internet regarding changes
that would have to be implemented in web browsers to avoid infringing the [’906]
patent.
See Exh. A at ¶ 71, (quoting letter from Adobe’s Meme Jacobs Rasmussen to USPTO Director
Steven Kunin) (emphasis added); see also pp. 41-44.
As the letter plainly states, Adobe was concerned that the ’906 patent might force
browser companies like Microsoft to make changes to their web browsers. Because those
browsers interacted with Adobe products, Adobe was concerned that such changes would be
disruptive to its products and its customers. But these communications do not support an
inference that Adobe was concerned that its websites—the accused instrumentality in this case
—infringed the ’906 patent. To the contrary, Plaintiffs’ were well aware of Adobe’s and
Macromedia’s products, since Eolas used them as evidence against Microsoft in the 2003 trial.
Plaintiffs never suggested that any Adobe or Macromedia product or website infringed the ’906
patent prior to commencing this action in October of 2009. It surely raised no such claim in

2

Adobe has filed a summary judgment motion as to Plaintiffs’ willfulness claim, based on
Plaintiffs’ stipulation that it has no claim for pre-suit damages, and the fact that it did not
seek a preliminary injunction after filing suit.
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2003, or at any time before filing suit six years later. The infringement verdict against Microsoft
caused only business concerns for Adobe—not legal concerns as Plaintiffs would imply.
If Plaintiffs are allowed to try and obtain the false inference they seek with this evidence,
Adobe will be forced to explain that Microsoft had suffered an adverse jury verdict, and that
Microsoft was concerned about an injunction. Besides forcing Adobe to waste precious trial
time debunking the false inference and recounting the complex history of the Microsoft litigation
and appeal, there exists a very real possibility that the jury will tar Adobe with Microsoft’s brush.
The jury might wrongly believe that because Microsoft was an adjudicated infringer of the ’906
patent, and because Adobe’s products functioned with Microsoft’s web browser, Adobe also
infringed the ’906 patent. This is presumably just what Plaintiffs want the jury to take away
from the re-examination communications by Adobe, the W3C and others.
Adobe’s actions in 2003 in lobbying the PTO simply are not relevant to infringement
claims that begin—at the earliest—in August of 2006. Evidence about actions of the W3C—a
group whose members (besides Adobe) are not even parties to this case—in 2003 is even further
afield. To the extent that the evidence has any probative value, it is substantially outweighed by
the unfair prejudice that comes with it. The Court should exclude the evidence pursuant to Fed.
R. Evid. 402 and 403.

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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 spoke with attorneys for Plaintiff on January 5, 2012 and that the motion is
opposed.
/s/David J. Healey
David J. Healey

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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 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

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