Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1271

MOTION in Limine (SECOND OMNIBUS MOTION IN LIMINE SOLELY FOR THE VALIDITY TRIAL) 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 SECOND OMNIBUS
MOTION IN LIMINE SOLELY FOR THE VALIDITY TRIAL
Plaintiffs The Regents of the University of California (“University of California”) and
Eolas Technologies Incorporated (“Eolas”) (collectively “Plaintiffs”) file this Second Omnibus
Motion in Limine Solely for the Validity Trial and in support thereof would show as follows:
I.

PRELIMINARY STATEMENT
Plaintiffs move for an order in limine prior to voir dire examination of the jury for the

validity trial to exclude matters that are inadmissible or prejudicial in this case. If any of the
Defendants injects these matters into the validity trial of this case through a party, attorney, or
witness (including a witness who may testify by deposition only), it will cause irreparable harm
to Plaintiffs’ case, which no jury instruction could cure. Additionally, sustaining Plaintiffs’
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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, Plaintiffs urge this Second Omnibus Motion In Limine Solely for
Validity Trial.
Plaintiffs ask this Court to instruct the parties and their counsel, representatives, and all
witnesses tendered by the parties (whether live or by deposition) not to mention, refer to,
interrogate about, or attempt to convey to the jury of the validity trial in any manner, either
directly or indirectly, any of the matters set forth below without obtaining a favorable ruling
from this Court outside the presence and hearing of the prospective jurors or the jury ultimately
selected in this case.

Plaintiffs also ask this Court to instruct the parties to warn and caution

each witness to follow the same instructions.
1.

Any argument, evidence, testimony, or reference to Plaintiffs’ damages or
infringement claims.
The parties should be precluded from presenting argument, evidence, testimony, or

making reference to Plaintiffs’ damages or infringement claims. Because the first trial will
address only issues regarding validity, the damages Plaintiffs allege and seek and the
infringement claims they allege against any of the Defendants have no bearing on any of the
issues that will be presented to the jury in that trial. FED. R. EVID. 401-403.
Evidence is relevant if it is likely to make a material fact more or less likely. FED. R.
EVID. 401. No evidence pertaining to the damages to which Plaintiffs claim they are entitled for
Defendants’ alleged infringement makes a material fact regarding validity of the patents-at issue
more or less likely. See FED. R. EVID. 401. Likewise, no evidence pertaining to Plaintiffs’
infringement allegations against Defendants makes a material fact regarding validity of the
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patents-at-issue more or less likely. See id. Accordingly, any such evidence is not relevant and
should be excluded. See FED. R. EVID. 401-402. Moreover, even if Defendants can make some
strained argument of relevance regarding those issues, that relevance would be outweighed by
the unfair prejudice caused Plaintiff by the introduction of such evidence. See FED. R. EVID. 403.
Injecting into the validity trial evidence regarding the damages Plaintiffs’ claim and seek and the
infringement allegations they make against Defendants would serve only to confuse the issues
and mislead the jury, to the unfair prejudice of Plaintiffs. See id. No amount of instruction to
the jury could reverse the prejudicial impact of such argument or evidence by the Defendants,
which counsels in favor of excluding such argument, evidence, or testimony.
2.

Any argument, evidence, testimony, or reference to Eolas’ business success or
failure.
In the validity trial, to rebut Defendants’ arguments that the patents-in-suit are obvious

and, thus, invalid, Plaintiffs will present evidence relevant to the secondary considerations of
non-obviousness. One such secondary consideration is licenses to the patents-in-suit. See Star
Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1376 (Fed. Cir. 2011) (holding that “the
record contains many secondary considerations that support nonobviousness”, for example, “as
evidenced by Brown & Williamson’s licenses, which cost millions of dollars, Williams’
invention had achieved considerable market acceptance and commercial success”). Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983) (“Recognition and acceptance of
the patent by competitors who take licenses under it to avail themselves of the merits of the
invention is evidence of nonobviousness.”); Datatreasury Corp. v. Wells Fargo & Co., No. 2:06CV-72 DF, 2010 U.S. Dist. LEXIS 143587, at *9 (E.D. Tex. Sept. 27, 2010) (holding that
“[l]icensing, long-felt need, and copying are all secondary considerations probative of nonobviousness” and finding that “Plaintiff presented sufficient evidence at trial to support a ‘nexus’
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between Plaintiff’s licensing and the secondary consideration of licensing. In particular, Plaintiff
showed that its licenses covered the patents-in-suit.”).
And the fact that any of licenses Plaintiffs plan to discuss at trial arose out of litigation
does not make them unreliable indicators of non-obviousness just as the court approved in
Datapoint Corp. v. Picturetel Corp., No. 3:93-CV-2381-D, 1998 U.S. Dist. LEXIS 1145 (N.D.
Tex. Jan. 23, 1998)—“use license agreements to show commercial success and obviousness of a
patent.” Id. at *6. As the court held,
[t]he license agreement is relevant to the subject matter of the
pending action. The terms of the agreement relate at least to the
issues of patent validity and damages. Patentees like Datapoint
often use license agreements obtained in settlement of litigation
to show the commercial success and nonobviousness of a
patent.
Id. (emphasis added) (citing Am. Standard Inc. v. Pfizer Inc., 8 U.S.P.Q.2D (BNA) 2019, 202021 (S.D. Ind. 1988) (“Such agreements to license allegedly infringing products can be probative
evidence of these factors relevant to the validity of a patent.”)..
And while Plaintiffs’ licensing of the patents-in-suit and commercial success of products
that embody the patents must be considered in determining whether the patents-in-suit are
obvious (see Geo M. Martin Co. v. Alliance Mach. Sys. Int’l LLC, 618 F.3d 1294, 1304 (Fed.
Cir. 2010) (“Secondary considerations of non-obviousness must be considered when present.”)),
Plaintiffs expect that Defendants will argue that Eolas’ business struggles counters Plaintiffs’
evidence of non-obviousness.

Defendants have indicated as such.

But, Defendants are

confused—neither the business success nor failure of Eolas is a secondary consideration of
nonobviousness. Evidence of commercial success of products that embody the patents-at-issue,
thus, cannot be rebutted with irrelevant argument or evidence of Eolas’ business failure. It
should go without saying that courts examine secondary considerations of nonobviousness, not
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secondary considerations to establish the patents are obvious. See Eli Lilly & Co. v. Zenith
Goldline Pharms., Inc., 471 F.3d 1369, 1380 (Fed. Cir. 2006) (“Furthermore, Lilly overcame any
prima facie case of obviousness. Among other things, Lilly proved extensive secondary
considerations to rebut obviousness.”). Accordingly, because the success or failure of Eolas does
not make any issue of material fact regarding validity of the patents-at-issue more or less likely,
such irrelevant argument, evidence, or testimony should, therefore, be excluded. See FED. R.
EVID. 401-402.
II.

CONCLUSION
The topics made subject to this Motion are not relevant to any factual issue in the validity

trial of this case, and, were they to be placed before the jury, Plaintiffs would suffer undue
prejudice. For these reasons, and those mentioned above, Plaintiffs request that this Court order
that—solely for the validity trial—all parties, counsel, and witnesses (live and via deposition) 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 this Motion.

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Dated: January 22, 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 CONFERENCE
I hereby certify that the parties met and conferred regarding the relief requested in this
Second Omnibus Motion in Limine Solely for the Validity Trial on January 21, 2012.
Defendants are opposed to Plaintiffs’ motion in limine issues presented herein
/s/ Gretchen K. Curran
Gretchen K. Curran

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 22, 2011.
/s/ Gretchen K. Curran
Gretchen K. Curran

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