Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1191

Joint MOTION in Limine (OMNIBUS) by Eolas Technologies Incorporated, The Regents of the University of California. (Attachments: # 1 Text of Proposed Order)(McKool, Mike)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
Eolas Technologies Incorporated,
Plaintiff,
vs.
Adobe Systems Inc., Amazon.com, Inc.,
Apple Inc., Argosy Publishing, Inc.,
Blockbuster Inc., CDW Corp.,
Citigroup Inc., eBay Inc., Frito-Lay, Inc.,
The Go Daddy Group, Inc., Google Inc.,
J.C. Penney Company, Inc., JPMorgan
Chase & Co., New Frontier Media, Inc.,
Office Depot, Inc., Perot Systems Corp.,
Playboy Enterprises International, Inc.,
Rent-A-Center, Inc., Staples, Inc., Sun
Microsystems Inc., Texas Instruments Inc.,
Yahoo! Inc., and YouTube, LLC
Defendants.

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§ Civil Action No. 6:09-CV-00446-LED
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JURY TRIAL
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PLAINTIFFS’ AND DEFENDANTS’ JOINT OMNIBUS MOTION IN LIMINE

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Plaintiffs The Regents of the University of California and Eolas Technologies
Incorporated (collectively “Plaintiffs”) and Defendants Adobe Systems Inc., Amazon.com, Inc.,
CDW Corp., Citigroup Inc., The Go Daddy Group, Inc., Google Inc., J.C. Penney Company,
Inc., Staples, Inc., Yahoo! Inc., and YouTube, LLC jointly file this Omnibus Motion in Limine to
which Plaintiffs and one or more Defendants agree and in support thereof would show as
follows:
I.

PRELIMINARY STATEMENT
Plaintiffs and Defendants1 move for an order in limine prior to voir dire examination of

the jury to exclude matters that are inadmissible or prejudicial in this case. If any of these
matters are injected into the trial of this case or any hearing through a party, attorney, or witness
(including a witness who may testify by deposition only), it will cause irreparable harm to the
parties’ cases, which no jury instruction could cure.

Additionally, sustaining the parties’

objections to questions, comments, or other offers of evidence as to such topics at trial would
serve only to reinforce the prejudicial impact of such matters on the jurors. For the same reason,
curative instructions are equally incapable of preventing the prejudicial impact. In an effort to
avoid prejudice and a mistrial, the parties urge these unopposed motion in limine topics.
II.

UNOPPOSED MOTION IN LIMINE TOPICS
In compliance with this Court’s September 15, 2011 Order (Doc. No. 979), counsel for

the parties met and conferred on January 4, 2011 and in subsequent correspondence in a good
faith attempt to resolve all limine issues before filing any motions in limine. Based on this
meeting and follow-up correspondence between the parties, Plaintiffs and one or more of the

1

In the instance where less than all of the Defendants agree to the motion in limine topic,
identification of the particular unopposed Defendants is made within the text of the motion in
limine topic.
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Defendants agree to the following motion in limine topics. Where certain Defendants required
differing language in order to agree to the motion in limine topic, multiple versions of the motion
in limine topic are set forth, as agreed to by the Defendants identified therein. The parties
anticipate filing a joint stipulation reflecting these agreements within a week.
A.

Motions in Limine Topics Proposed by Plaintiffs.
1.

Any argument, testimony, evidence, or reference to the effect that
Plaintiffs have licensed the “adult entertainment”, “pornography”, or
“adult entertainment industries” or that the licensed technology is
used to provide pornographic and other online adult videos and other
media.

Defendants J.C. Penney Company, Inc., Adobe Systems Inc., Staples, Inc., and Citigroup
Inc. agree that they should be precluded from presenting any argument, testimony, evidence, or
reference to the effect that Plaintiffs have licensed the “adult entertainment”, “pornography”, or
“adult entertainment industries” or that the licensed technology is used to provide pornographic
and other online adult videos and other media.
2.

Any argument, evidence, testimony, or reference to the retention
agreement between the parties and their counsel or any reference to
the nature of the agreement.

Defendants Yahoo! Inc., Amazon.com, Inc., and CDW Corp. agree that they and
Plaintiffs should be precluded from presenting against one another any argument, evidence,
testimony, or reference to the retention agreement between the parties and their counsel or any
reference to the nature of the agreement.
3.

Any argument, evidence, testimony, or reference to either Plaintiff as
a “patent troll” or “patent pirate”.

All Defendants (Adobe Systems Inc., Staples, Inc., J.C. Penney Company, Inc., The Go
Daddy Group, Inc., Google Inc., YouTube LLC, Yahoo! Inc., Amazon.com, Inc., CDW Corp.,

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and Citigroup Inc.) agree that they should be precluded from presenting any argument, evidence,
testimony, or reference to either Plaintiff as a “patent troll” or “patent pirate”.
4.

Any argument, evidence, testimony, or reference to legal and expert
fees and expenses incurred by the parties in prosecuting and
defending this litigation and/or incurred in a typical patent litigation,
including but not limited to SI267566-578. This agreement will not in
any way restrict use at trial of Eolas’ business plans, including
argument, evidence, testimony, or reference to Eolas’ statements in
Business Plans to the effect of making the cost of a license less than the
cost of fighting an infringement suit.

Defendants Adobe Systems Inc., The Go Daddy Group, Inc., and Citigroup Inc. agree
that they and Plaintiffs should be precluded from presenting against one another any argument,
evidence, testimony, or reference to legal and expert fees and expenses incurred by the parties in
prosecuting and defending this litigation and/or incurred in a typical patent litigation, including
but not limited to SI267566-578. This agreement will not in any way restrict use at trial of Eolas’
business plans, including argument, evidence, testimony, or reference to Eolas’ statements in
Business Plans to the effect of making the cost of a license less than the cost of fighting an
infringement suit.
4v2.

Any argument, evidence, testimony, or reference to legal fees and
expenses (aside from expert fees) incurred by the parties in
prosecuting and defending this litigation and/or incurred in a typical
patent litigation, including but not limited to SI267566-578. This
agreement will not in any way restrict use at trial of Eolas’ business
plans, including argument, evidence, testimony, or reference to Eolas’
statements in Business Plans to the effect of making the cost of a
license less than the cost of fighting an infringement suit.

Defendants CDW Corp. and J.C. Penney Company, Inc. agree that they and Plaintiffs
should be precluded from presenting against one another any argument, evidence, testimony, or
reference to legal fees and expenses (aside from expert fees) incurred by the parties in
prosecuting and defending this litigation and/or incurred in a typical patent litigation, including
but not limited to SI267566-578. This agreement will not in any way restrict use at trial of Eolas’
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business plans, including argument, evidence, testimony, or reference to Eolas’ statements in
Business Plans to the effect of making the cost of a license less than the cost of fighting an
infringement suit.
5.

Any argument, evidence, testimony, or reference to (1) any jury study
or focus groups that have been conducted by either party or (2) the
use by either party of a shadow jury during trial.

All Defendants (Adobe Systems Inc., Amazon.com, Inc., CDW Corp., Citigroup Inc.,
The Go Daddy Group, Inc., Google Inc., J.C. Penney Company, Inc., Staples, Inc., Yahoo! Inc.,
and YouTube, LLC) and Plaintiffs agree that they should be precluded from presenting any
argument, evidence, testimony, or reference to (1) any jury study or focus groups that have been
conducted by either party or (2) the use by either party of a shadow jury during trial.
B.

Motions in Limine Topics Proposed by Defendants Yahoo! Inc. and
Amazon.com, Inc.
1.

Any evidence, testimony, or argument concerning company firings
and/or layoffs as a result of this litigation and/or damages awards.

Plaintiffs and Defendants Yahoo! Inc., Amazon.com, Inc., and CDW Corp. agree that
they should be precluded from presenting against one another any evidence, testimony, or
argument concerning company firings and/or layoffs as a result of this litigation and/or damages
awards.
2.

Any evidence, testimony, or argument of any kind mentioning religion
of any particular individuals, including making any general
references to religion or religious figures or symbols. The parties
agree that religion is not relevant to any issues in this case.

Plaintiffs and Yahoo! Inc., Amazon.com, Inc., CDW Corp., Google Inc., and YouTube,
LLC agree that they should be precluded from presenting against one another any evidence,
testimony, or argument of any kind mentioning religion of any particular individuals, including

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making any general references to religion or religious figures or symbols. Plaintiffs and Yahoo!
Inc. and Amazon.com, Inc. agree that religion is not relevant to any issues in this case.
3.

Any evidence, testimony, or argument of Plaintiffs referring,
mentioning, or otherwise offering evidence of any kind regarding
instances in which third parties have used or attempted to use
Defendants’ websites for any kind of unlawful or immoral purposes.

Plaintiffs agree that they should be precluded from presenting against any Defendants any
evidence, testimony, or argument referring, mentioning, or otherwise offering evidence of any
kind regarding instances in which third parties have used or attempted to use Defendants’
websites for any kind of unlawful or immoral purposes.
4.

Any evidence, testimony, or argument from any party referring to a
prior retention or relationship between any expert with counsel or any
party in this case.

Plaintiffs and Defendants Yahoo! Inc., Amazon.com, Inc., Adobe Systems Inc., Google,
Inc., CDW Corp., The Go Daddy Group, Inc., Staples, Inc., and YouTube, LLC agree that they
should be precluded from presenting against one another any evidence, testimony, or argument
from any party referring to a prior retention or relationship between any expert with counsel or
any party in this case.
5.

Preclude mention that Yahoo! or Amazon copied the patents-in-suit.

Plaintiffs agree that they should be precluded from presenting against any Defendants any
evidence, testimony, or argument that they copied the patents-in-suit.

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C.

Motions in Limine Topics Proposed by Defendants Adobe Systems Inc.,
Amazon.com, Inc., Citigroup Inc., The Go Daddy Group, Inc., Google Inc.,
J.C. Penney Company, Inc., Staples, Inc., Yahoo! Inc., and YouTube, LLC
1.

Any evidence, testimony, argument, or reference to discovery
disputes.

Plaintiffs and Defendants Adobe Systems Inc., Amazon.com, Inc., Citigroup Inc., The Go
Daddy Group, Inc., Google Inc., J.C. Penney Company, Inc., Staples, Inc., Yahoo! Inc., and
YouTube, LLC agree that they should be precluded from presenting against one another any
evidence, testimony, argument, or reference to discovery disputes.
2.

Any evidence, testimony, argument, or reference to the sufficiency of
a party’s production, investigation, and document collection efforts,
including the content of a party’s privilege log.

Plaintiffs and Defendants Adobe Systems Inc., Amazon.com, Inc., Citigroup Inc., The Go
Daddy Group, Inc., Google Inc., J.C. Penney Company, Inc., Staples, Inc., Yahoo! Inc., and
YouTube, LLC agree that they should be precluded from presenting against one another any
evidence, testimony, argument, or reference to the sufficiency of a party’s production,
investigation, and document collection efforts, including the content of a party’s privilege log.
D.

Motions in Limine Topics Proposed by Defendant CDW Corp. (and for 3.,
Staples, Inc.)
1.

Any evidence, testimony, argument, or reference to the cost of defense
or argument that the fact that this case is being defended is evidence
of the value of the accused features.

Plaintiffs and Defendant CDW Corp. agree that they should be precluded from presenting
against one another any evidence, testimony, argument, or reference to the cost of defense or
argument that the fact that this case is being defended is evidence of the value of the accused
features.

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2.

Any evidence that is only relevant to willfulness based on Plaintiffs’
representation that they will not pursue willfulness against Defendant
CDW Corp.

Plaintiffs agree that they should be precluded from presenting any evidence against
Defendant CDW Corp. that is only relevant to willfulness based on Plaintiffs’ representation that
it will not pursue willfulness against Defendant CDW Corp
3.

Any evidence that is only relevant to willfulness based on Plaintiffs’
representation that they will not pursue willfulness against Defendant
Staples, Inc.

Plaintiffs agree that they should be precluded from presenting any evidence against
Defendant Staples, Inc. that is only relevant to willfulness based on Plaintiffs’ representation that
it will not pursue willfulness against Defendant Staples, Inc.
E.

Motions in Limine Topics Proposed by All Defendants.
1.

Any evidence, testimony, argument, or reference to motions in limine
filed and the outcomes of such motions.

Plaintiffs and all Defendants agree that they should be precluded from presenting any
evidence, testimony, argument, or reference to motions in limine filed and the outcomes of such
motions.
F.

Motions in Limine Topics Proposed by All Defendants and Modified
Thereafter.
1.

Any evidence, testimony, argument, or reference to summary
judgment motions, motions to strike, and motions to exclude filed and
the outcomes of such motions.

Plaintiffs and Adobe Systems Inc., Amazon.com, Inc., Citigroup Inc., The Go Daddy
Group, Inc., Google Inc., J.C. Penney Company, Inc., Staples, Inc., Yahoo! Inc., and YouTube,
LLC agree that they should be precluded from presenting any evidence, testimony, argument, or
reference to summary judgment motions, motions to strike, and motions to exclude filed and the
outcomes of such motions.
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III.

CONCLUSION
For the foregoing reasons, the parties request that this Court enter an order that those

parties identified in the corresponding motions, their counsel, and through counsel, any and all of
those parties’ witnesses (whether testifying live or by deposition only), be instructed to refrain
from any mention or interrogation, directly or indirectly, in any manner whatsoever, including
the offering of documentary evidence or through deposition, of any of the matters set forth in the
those motions.

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Dated: January 6, 2012.

MCKOOL SMITH, P.C.
/s/ Mike McKool
Mike McKool
Lead Attorney
Texas State Bar No. 13732100
[e-mail]
Douglas Cawley
Texas State Bar No. 04035500
[e-mail]
Holly Engelmann
Texas State Bar No. 24040865
[e-mail]
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Telecopier: [phone]
Kevin L. Burgess
Texas State Bar No. 24006927
[e-mail]
Josh W. Budwin
Texas State Bar No. 24050347
[e-mail]
Gretchen K. Curran
Texas State Bar No. 24055979
[e-mail]
Matthew B. Rappaport
Texas State Bar No. 24070472
[e-mail]
J.R. Johnson
Texas State Bar No. 24070000
[e-mail]
MCKOOL SMITH, P.C.
300 West Sixth Street, Suite 1700
Austin, Texas 78701
Telephone: [phone]
Telecopier: [phone]

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Robert M. Parker
Texas State Bar No. 15498000
[e-mail]
Robert Christopher Bunt
Texas Bar No. 00787165
[e-mail]
Andrew T. Gorham
Texas State Bar No. 24012715
[e-mail]
PARKER, BUNT & AINSWORTH, P.C.
100 E. Ferguson, Suite 1114
Tyler, Texas 75702
Telephone: [phone]
Telecopier: [phone]
ATTORNEYS FOR PLAINTIFFS
THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA AND EOLAS
TECHNOLOGIES INCORPORATED
By: /s/ James R. Batchelder (with
permission)
James R. Batchelder (pro hac vice)
[e-mail]
Sasha G. Rao (pro hac vice)
[e-mail]
Mark D. Rowland
[e-mail]
Brandon Stroy (pro hac vice)
[e-mail]
Rebecca R. Hermes (pro hac vice)
[e-mail]
Han Xu (pro hac vice)
[e-mail]
Douglas E. Lumish, CA State Bar No.
183863
Jeffrey G. Homrig, CA State Bar No.
215890
Joseph H. Lee, CA State Bar No. 248046
Parker C. Ankrum, CA State Bar No.
261608
KASOWITZ, BENSON, TORRES &
FRIEDMAN, LLP
333 Twin Dolphin Drive, Suite 200
Redwood Shores, CA 94065
Tel: [phone]; Fax: [phone]
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Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, California 94303-2284
Telephone: [phone]
Facsimile: [phone]
Michael E. Jones (Bar No. 10929400)
[e-mail]
Allen F. Gardner (Bar No. 24043679)
[e-mail]
POTTER MINTON
A Professional Corporation
110 N. College, Suite 500
Tyler, TX 75702
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANTS
GOOGLE, INC. AND YOUTUBE, LLC
By: /s/ Edward R. Reines (with permission)
Edward R. Reines
Jared 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]
Doug W. McClellan
[e-mail]
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Jennifer H. Doan
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Texas Bar No. 08809050
Joshua R. Thane
Texas Bar No. 24060713
Haltom & Doan
Crown Executive Center, Suite 100
6500 Summerhill Road
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Otis Carroll (Bar No. 3895700)
Deborah Race (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 DEFENDANTS
AMAZON.COM, INC. and YAHOO!
INC.
By: /s/ David J. Healey (with permission)
David J. Healey
[e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
Telephone: [phone]
Facsimile: [phone]
OF COUNSEL:
Frank E. Scherkenbach
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
Jason W. Wolff
[e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
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Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
ADOBE SYSTEMS INC.
By: /s/ Thomas L. Duston (with permission)
Thomas L. Duston
[e-mail]
Anthony S. Gabrielson
[e-mail]
Scott A. Sanderson (pro hac vice)
[e-mail]
MARSHALL, GERSTEIN &
BORUN LLP
6300 Willis Tower
233 South Wacker Drive
Chicago, IL 60606-6357
Telephone: [phone]
Facsimile: [phone]
Eric H. Findlay (Bar No. 00789886)
efindlay@findlaycraft. corn
Brian Craft (Bar No. 04972020)
[e-mail]
FINDLAY CRAFT, LLP
6760 Old Jacksonville Highway
Suite 101
Tyler, TX 75703
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
CDW LLC
By: /s/M. Scott Fuller (with permission)
Edwin R. DeYoung (Bar No. 05673000)
[e-mail]
Roy W. Hardin (Bar No. 08968300)
[e-mail]
Roger Brian Cowie (Bar No. 00783886)
[e-mail]
M. Scott Fuller (Bar No. 24036607)
[e-mail]
Galyn Gafford (Bar No. 24040938)
[e-mail]
LOCKE LORD BISSELL &
LIDDELL LLP
2200 Ross Avenue, Suite 2200
Dallas, TX 75201-6776
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Telephone: [phone]
Facsimile: [phone]
Alexas D. Skucas (pro hac vice)
[e-mail]
KING & SPALDING LLP
1185 Avenue of the Americas
New York, NY 10036-4003
Telephone: [phone]
Facsimile: [phone]
Eric L. Sophir (pro hac vice)
[e-mail]
KING & SPALDING LLP
1700 Pennsylvania Ave. NW, Suite 200
Washington, D.C. 20006-4707
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
CITIGROUP INC.
By: /s/ Proshanto Mukherji (with
permission)
Thomas M. Melsheimer (Bar No. 13922550)
[e-mail]
Neil J. McNabnay (Bar No. 24002583)
[e-mail]
Carl E. Bruce (Bar No. 24036278)
[e-mail]
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
Proshanto Mukherji (pro hac vice)
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
THE GO DADDY GROUP, INC.
By: /s/ Christopher M. Joe (with
permission)
Christopher M. Joe (Bar No. 00787770)
[e-mail]
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Brian Carpenter (Bar No. 03840600)
[e-mail]
Eric W. Buether (Bar No. 03316880)
[e-mail]
BUETHER JOE & CARPENTER, LLC
1700 Pacific, Suite 2390
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
J.C. PENNEY CORPORATION
By: /s/ Donald R. Steinberg (with
permission)
Mark G. Matuschak (pro hac vice)
[e-mail]
Donald R. Steinberg (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING HALE
AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
Kate Hutchins (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING HALE
AND DORR LLP
399 Park Avenue
New York, NY 10011
Telephone: [phone]
Facsimile: [phone]
Daniel V. Williams, (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING HALE
AND DORR LLP
1875 Pennsylvania Avenue NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Michael E. Richardson (Bar No. 24002838)
mrichardson@brs firm. com
BECK REDDEN & SECREST
1221 McKinney, Suite 4500
Houston, TX 77010
Telephone: [phone]
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Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
STAPLES, INC.

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CERTIFICATE OF CONFERENCE
I hereby certify that the parties met and conferred regarding the relief requested in this
Motion on January 4, 2011 and in correspondence thereafter. Plaintiffs and one or more of the
Defendants were able to reach resolution as to the motions in limine topics set forth herein.
/s/ Gretchen K. Curran
Gretchen K. Curran

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a) and therefore served on all counsel of record on January 6,
2011.
/s/ Gretchen K. Curran
Gretchen K. Curran

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