Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1234

RESPONSE in Opposition re 1202 Opposed MOTION in Limine CORRECTED - to Exclude Plaintiffs' Suggestion, Argument or Evidence That CDW Could Completely Remove or Disable Accused Features at Minimal Cost filed 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 THE REGENTS OF THE UNIVERSITY OF CALIFORNIA AND EOLAS
TECHNOLOGIES INCORPORATED’S RESPONSE IN OPPOSITION TO
DEFENDANT CDW LLC’S MOTION IN LIMINE TO EXCLUDE PLAINTIFFS’
SUGGESTION, ARGUMENT OR EVIDENCE THAT CDW COULD COMPLETELY
REMOVE OR DISABLE ACCUSED FEATURES AT MINIMAL COST [DKT. NO. 1202]
Plaintiffs The Regents of the University of California and Eolas Technologies
Incorporated (collectively “Plaintiffs”) file this Response in Opposition to Defendant CDW
LLC’s Motion in Limine to Exclude Plaintiffs’ Suggestion, Argument or Evidence that CDW
Could Completely Remove or Disable Accused Features at Minimal Cost [Dkt. No. 1202] and in
support thereof would show as follows.
I.

ARGUMENT
On January 4, 2011, the parties conducted a meet and confer in an effort to resolve their

in limine issues prior to filing any motions. During that meet and confer, Plaintiffs indicated
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their agreement that they would not make “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”. Indeed,
Plaintiffs proposed their own motion in limine topic to preclude 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, to which five of the Defendants agreed—including CDW
LLC—in modified forms (see Dkt. No. 1191 at pp. 4-5). Accordingly, Plaintiffs agree that the
Plaintiffs’ expenditures in litigating this action and Defendants’ expenditures defending this case
are no reflection of the value of the accused features, given that a defendant’s decision to defend
the case may be based on factors unrelated to how the defendant values the invention and, thus,
such evidence is irrelevant. FED. R. EVID. 402. It is also unfairly prejudicial to both Plaintiffs
and Defendants.
The same cannot be said regarding any evidence regarding the cost or burden of
removing the accused features/functionality. Georgia-Pacific factor 11 is “the extent to which
the infringer has made use of the invention; and any evidence probative of the value of that use.”
See Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1211 (Fed. Cir. 2010) (citation
omitted).

A number of the Defendants corporate representatives have provided deposition

testimony

that

Defendants

receive

no

value

from

having

included

the

accused

features/functionality in their websites or products. Thus, evidence showing the low cost of
removing the accused features/functionality would be clearly relevant, as it is countervailing
evidence for such testimony (i.e., if the accused features/functionality provide no value and the
cost of removing the accused features/functionality is so low, wouldn’t the Defendants remove
such accused features/functionality?) and provides an indication of the value of the accused

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features/functionality. Defendants cannot argue that the features/functionality bring no value to
their accused websites/products, but at the same time, preclude Plaintiffs from presenting
evidence—in the form of the Defendants’ own documents and testimony—that removing the
accused features/functionality would be relatively inexpensive.
Aside from such evidence being clearly relevant to a damages analysis under the
Georgia-Pacific factors, the Federal Circuit’s holding in Broadcom Corp. v. Qualcomm, Inc.,
543 F.3d 683 (Fed. Cir. 2008) demonstrates that such evidence is also relevant to inducement
and should not be precluded. There, the court found that “Qualcomm does not dispute that it was
on notice of Broadcom’s patents and infringement contentions. And it concedes that it ‘worked
closely with its customers to develop and support the accused products, and that Qualcomm did
not make changes to those products or give its customers [instructions regarding how to avoid
infringement] after this lawsuit was filed.’” Id. at 700 (internal citation omitted) (emphasis
added). Based on such evidence, the Federal Circuit held that it would “not disturb the jury’s
inference that Qualcomm possessed the specific intent necessary to induce the infringement of
Broadcom’s patents.” Id. at 701. Granting Defendant CDW LLC’s Motion would result in the
exclusion of evidence that is relevant to the specific intent prong of inducement.
II.

CONCLUSION
Based on the foregoing, Plaintiffs respectfully request that the Court deny Defendant

CDW LLC’s Motion in Limine to Exclude Plaintiffs’ Suggestion, Argument or Evidence that
CDW Could Completely Remove or Disable Accused Features at Minimal Cost [Dkt. No. 1202].

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Dated: January 13, 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

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document, attachment, and exhibits were
filed electronically in compliance with Local Rule CV-5(a) and, thus, served on all counsel of
record on January 13, 2011.
/s/ Gretchen K. Curran
Gretchen K. Curran

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