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)

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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. § § § Civil Action No. 6:09-CV-00446-LED § § § § JURY TRIAL § § § § § § § § § § § § § 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’ 1 McKool 407684v3 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 2 McKool 407684v3 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’ 3 McKool 407684v3 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 4 McKool 407684v3 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. 5 McKool 407684v3 Dated: January 22, 2012. MCKOOL SMITH, P.C. /s/ Mike McKool Mike McKool Lead Attorney Texas State Bar No. 13732100 mmckool@mckoolsmith.com Douglas Cawley Texas State Bar No. 04035500 dcawley@mckoolsmith.com Holly Engelmann Texas State Bar No. 24040865 hengelmann@mckoolsmith.com MCKOOL SMITH, P.C. 300 Crescent Court, Suite 1500 Dallas, Texas 75201 Telephone: (214) 978-4000 Telecopier: (214) 978-4044 Kevin L. Burgess Texas State Bar No. 24006927 kburgess@mckoolsmith.com Josh W. Budwin Texas State Bar No. 24050347 jbudwin@mckoolsmith.com Gretchen K. Curran Texas State Bar No. 24055979 gcurran@mckoolsmith.com Matthew B. Rappaport Texas State Bar No. 24070472 mrappaport@mckoolsmith.com J.R. Johnson Texas State Bar No. 24070000 jjohnson@mckoolsmith.com MCKOOL SMITH, P.C. 300 West Sixth Street, Suite 1700 Austin, Texas 78701 Telephone: (512) 692-8700 Telecopier: (512) 692-8744 6 McKool 407684v3 Robert M. Parker Texas State Bar No. 15498000 rmparker@pbatyler.com Robert Christopher Bunt Texas Bar No. 00787165 rcbunt@pbatyler.com Andrew T. Gorham Texas State Bar No. 24012715 tgorham@pbatyler.com PARKER, BUNT & AINSWORTH, P.C. 100 E. Ferguson, Suite 1114 Tyler, Texas 75702 Telephone: (903) 531-3535 Telecopier: (903) 533-9687 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 7 McKool 407684v3

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