Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1317

Emergency MOTION to Strike DEFENDANTS' LATE-PRODUCED DOCUMENTS, VIDEO DEMONSTRATIONS, SOURCE CODE AND PREVIOUSLY UNIDENTIFIED PRIOR ART by Eolas Technologies Incorporated, The Regents of the University of California. (Attachments: # 1 Appendix, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit 1, # 14 Exhibit 2, # 15 Exhibit 3, # 16 Exhibit 4, # 17 Exhibit 5, # 18 Exhibit 6, # 19 Exhibit 7, # 20 Exhibit 8, # 21 Exhibit 9, # 22 Text of Proposed Order)(McKool, Mike)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
Eolas Technologies Incorporated
and The Regents of the University of
California
Plaintiffs,
vs.
Adobe Systems Inc., Amazon.com, Inc.,
Apple Inc., CDW Corp., Citigroup Inc.,
The Go Daddy Group, Inc., Google Inc.,
J.C. Penney Company, Inc., Staples, Inc.,
Yahoo! Inc., and YouTube, LLC
Defendants.

§
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§
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§ Civil Action No. 6:09-CV-00446-LED
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§
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§ JURY TRIAL
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§

EMERGENCY MOTION TO STRIKE DEFENDANTS’
LATE-PRODUCED DOCUMENTS, VIDEO DEMONSTRATIONS,
SOURCE CODE AND PREVIOUSLY UNIDENTIFIED PRIOR ART

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TABLE OF CONTENTS
I.

BACKGROUND .................................................................................................................1
A.
B.

The Recent Productions Are Not Only Too Late—They
Are Massive .............................................................................................................2

C.

The Recent Productions Misrepresent The Alleged State Of
The Prior Art ............................................................................................................3

D.

The Recent Productions Include An Entirely New Prior Art
System......................................................................................................................4

E.

Defendants Have Failed To Identify The Custodians For
The New Productions...............................................................................................5

F.

Plaintiffs Have Not Yet Been Afforded A Chance To
Inspect The New Systems........................................................................................5

G.
II.

The Court-Ordered Schedule In This Case..............................................................1

The Newly Produced Information Is Not Duplicative.............................................6

ARGUMENT AND AUTHORITIES..................................................................................6
A.

Both the Local Patent Rules and the Federal Rules of Civil
Procedure Bar Defendants’ Last Minute Productions. ...........................................6
1.

Defendants’ last minute productions gravely
prejudice Plaintiffs.......................................................................................7

2.

New productions on the eve of trial, after a year of
delay, must be stricken.................................................................................8

3.

Defendants’ can offer absolutely no justification for
their delay. ...................................................................................................8

4.

Defendants’ late-produced asserted prior art
cannot be important. ....................................................................................9

B.

C.
III.

The Court Should Not Permit Any Expert (Or Fact
Witness) Testimony Related To Defendants’ Supplemental
Invalidity Contentions..............................................................................................9
Plaintiffs’ MIL 1 and 2 Bar Any Discussion of Defendants’
New Productions....................................................................................................10

CONCLUSION..................................................................................................................10
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TABLE OF AUTHORITIES
Page(s)
CASES
Cummins-Allison Corp. v. SBM Co., Ltd.,
No. 9:07-CV-196, 2009 U.S. Dist. LEXIS 22114 (E.D. Tex. Mar. 19, 2009) ..........................9
Finisar Corp. v. The DirectTV Group, Inc.,
424 F. Supp. 2d 896 (E.D. Tex. 2006) ......................................................................................7
LML Patent Corp. v. JPMorgan Chase & Co.,
No. 2:08-cv-448, 2011 U.S. Dist. LEXIS 128724 (E.D. Tex. Aug. 10, 2011) .........................8
Williams v. Gonzales,
No. 1:04-cv-342, 2005 U.S. Dist. LEXIS 38838 (E.D. Tex. Dec. 14, 2005) ............................9

STATUTES
35 U.S.C. § 282................................................................................................................................4

OTHER AUTHORITIES
Federal Rule of Civil Procedure 37(c) .........................................................................................6, 9

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Eighteen months after the deadline for invalidity contentions, four months after the close
of fact discovery, two months after the deadline for filing amended invalidity contentions, wellafter the depositions of all relevant fact and expert witnesses and just days before the start of the
jury trial, Defendants are continuing to produce to Plaintiffs entirely new—and massive—
productions of alleged prior art, newly-created video demonstrations of that alleged prior art, and
source code related to that alleged prior art. In addition, these productions also include a brand
new and previously undisclosed prior art system. It appears that Defendants intend to rely on the
newly produced documents, video demonstrations, source code, and prior art in their invalidity
case even though none of these things were timely disclosed to Plaintiffs.
Defendants’ Expert Report on Invalidity does not address any of these newly produced
prior art documents, video demonstrations, source code, or previously unidentified prior art—nor
could it because the report was served before the production of these materials. And, given the
late production, Plaintiffs have not had the opportunity to depose any fact or expert witness
regarding the information contained in these belated productions. Additionally, and despite
multiple requests, Defendants have not yet made the demonstration systems available for
inspection by Plaintiffs at or before trial. These eve-of-trial productions should be stricken.
I. BACKGROUND
A. The Court-Ordered Schedule In This Case
The Court’s Docket Control Orders1 set the deadlines governing this case. In accordance
with these deadlines, Defendants served Plaintiffs with their Invalidity Contentions on July 12,
2010 and filed their Opening Expert Report on Invalidity on July 20, 2011. Defendants also
served a Supplemental Expert Report on Invalidity on October 27, 2011 (the date of the deadline
for amended invalidity contentions and expert reports). Plaintiffs proceeded with taking the
depositions of the persons related to the prior art identified in Defendants’ Invalidity Contentions

1

See Dkts. 249, 670, 979.
1

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and Expert Reports.2 Defendants then filed another Supplemental Expert Report on Invalidity on
January 4, 2012. Plaintiffs took the deposition of Dr. Phillips, Defendants’ invalidity expert, on
January 6 and 7, 2012.
B. The Recent Productions Are Not Only Too Late—They Are Massive
After all of the Court-ordered deadlines had passed—the deadlines for infringement
contentions, amended infringement contentions, fact discovery, expert reports, expert
depositions, dispositive motions, Daubert motions, and trial exhibits—Defendants began
producing additional prior art documents, video demonstrations, source code, and previously
unidentified prior art systems. Defendants presumably intend to present this newly produced
material at trial as asserted prior art (or demonstrations of the asserted prior art). Presumably,
Defendants intend to have either their previously-deposed validity expert or one of the
previously-deposed “fact” witnesses (e.g., Silvey, Wei, or Filo) present this new material.
The chart attached hereto as Appendix A illustrates the date of the each of the
productions that are the subject of this Motion, as well as the scale of each production. As set
forth therein, over the last four weeks, Defendants have made nineteen new document
productions, comprised of more than 50,000 new files of code, at least 20 new videos, and
assorted other documents interwoven within these massive productions. In total the size of these
nineteen new productions is a massive 15 gigabytes. The productions include an astonishing
volume of additional, previously unproduced alleged prior art documents, video demonstrations,
source code and previously unidentified prior art systems.

2

For example, Plaintiffs deposed Eric Bina on August 2, 2011, Scott Silvey on September 15,
2011, and Pei Wei on October 15, 2011, William Janssen on November 5, 2011, Tim BernersLee on November 21, 2011, David Filo on November 29, 2011, and Dale Dougherty on
December 16, 2011.
2

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C. The Recent Productions Misrepresent The Alleged State Of The Prior Art
As if the sheer volume were not enough, some of the items contained in these productions
include videos created as recently as this week showing code modified in the last few weeks.
And, these modifications are not minor or trivial—they are created with the express intention to
misrepresent the alleged state of the prior art to the jury at trial in this matter.
As a first example, some files included in Defendants’ recent productions are represented
to be videos of alleged prior art code dated “10/16/93”—yet, closer examination shows that some
of the files have creation and/or last modified dates of January 6, 2012 and January 15, 2012:

VID‐00000007

The foregoing example is perhaps most illustrative of the issues presented by Defendants’ recent
productions.3 It purports to show a “Yahoo” search page from “October 16, 1993”—however,
Yahoo did not even exist until 1994.4
The above-example is not an isolated incident of one recent modification or
misrepresentation.

These issues are endemic through the recent productions made by

Defendants. As a further example, the video below is alleged to be a representation of code

3

Ex. 1 (Screen Shots from Defendants’ Production of 1/24/12).

4

See http://docs.yahoo.com/info/misc/history.html
3

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(including “vplot”) dated “5/12/93 and 5/7/93”—yet, closer inspection shows that the vplot code
was modified on January 29, 2012:5
VID‐00000018

As the two examples show, these videos were created in the last few days and the code
modified in the last few weeks. Thus, this information was not, and could not have been,
produced to the Plaintiffs during the discovery period.
D. The Recent Productions Include An Entirely New Prior Art System
In addition to the new production of source code and videos, Defendants have also
produced a new prior art system. In their production of January 24, 2012, Defendants
produced—for the first time—a video showing a never-before-analyzed prior art system called
tkWWW.6 In Defendants invalidity contentions, there is no analysis or mapping of the tkWWW
system on any claim of the patents-in-suit as required by the Patent Rules. Moreover, the
tkWWW system is not included in Defendants’ identification of prior art pursuant to 35 U.S.C. §
282, nor is it discussed (or even mentioned) in any of Dr. Phillips’ three expert reports.7 This

5

Ex. 2 (Screen Shots from Defendants’ Production of 1/31/12).

6

The only reference in Defendants’ Invalidity Contentions to this system is a one-line reference
to an announcement of the tkWWW release 4.0, in the section listing 173 “Other References.”
See Ex.3 (Excerpts from Defendants’ Invalidity Contentions).
7

See Ex. 4 (35 U.S.C. § 282 Disclosures).
4

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alleged prior art has never before been asserted by the Defendants in this case. Yet, Defendants
have included videos and code related to it in their recent productions.
E. Defendants Have Failed To Identify The Custodians For The New Productions
Not only have Defendants been making massive productions of new code, new videos,
and new prior art systems on an ongoing basis for the past month, they have failed to name
custodians for their productions for nearly a month as required by the parties’ production
agreement in this case.8 Given that most of this newly produced information appears to have
been manufactured in the last few weeks, this lack of custodian information is not surprising.
When Defendants did finally attempt to provide custodian information for a few of the recent
productions (it still has not been provided for all of them), they collectively named five
previously-deposed witnesses—and failed to designate what files came from each individual.9
F. Plaintiffs Have Not Yet Been Afforded A Chance To Inspect The New Systems
Worse yet, as of the time of filing this motion, Defendants also have failed to make the
computer systems that run this newly modified code and that created the newly shot videos
available for inspection by Plaintiffs.10 And, given the sheer scale of these productions—and
Plaintiffs’ need to prepare for trial that starts in a few days—Plaintiffs are simply unable to
review all of the newly produced material in the detail required to determine what specific
alterations are present and/or how the new systems are configured. Finally, Defendants have

8

See Ex. 5 (Letter of 5/21/2010) (If reasonably available, and regardless of the form of
production, the parties agree to provide at least the following metadata fields: . . . Custodian”).
9

See Ex. 6 (Email of 1/22/12). (“to extent that the custodial information for those files is
required, it would be Dick Phillips, Perry Wei, Scott Silvey, Dale Dougherty, and/or David
Filo”).
10

On the meet and confer before filing this motion—which occurred at 4:30pm on Thursday,
February 2, Jennifer Doan, counsel for Yahoo indicated for the first time that new systems
“may” be available for inspection by Plaintiffs, but she was unable to confirm. At 5:18pm, Ms.
Doan sent a follow up email indicating that some of the systems may be available for
inspection—but did not provide detail as to which specific systems were available and whether
these systems matched all of the newly produced videos.
5
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persistently ignored Plaintiffs’ repeated requests to have live versions of the systems available
for cross-examining Defendants’ witnesses at trial.11
G. The Newly Produced Information Is Not Duplicative
Defendants contend that their recent productions are either duplicative of code previously
produced. To the extent that Defendants produced any of the recently-produced code or videos
during the discovery period (and assuming that such information is not otherwise objectionable),
Defendants may of course seek to introduce that code at trial. Plaintiffs reasonably request,
however, that Defendants use the files labeled according to the Bates numbering under which the
files were originally produced.
For a considerable number of the recently produced files, however, the code shows recent
creation or modification dates; Defendants cannot possibly assert that these files were previously
produced—it is impossible to produce files before they dates that they were created or modified.
II. ARGUMENT AND AUTHORITIES
A. Both the Local Patent Rules and the Federal Rules of Civil Procedure Bar
Defendants’ Last Minute Productions.
In harmony with the Patent Rules, Federal Rule of Civil Procedure 37(c) permits the
exclusion of evidence that is not properly or timely disclosed. See Fed. R. Civ. P. 37(c). Factors
relevant to a determination of whether evidence should be excluded pursuant to the Patent Rules
and Rule 37(c) include: (1) the danger of unfair prejudice; (2) the length of delay and its
potential impact on judicial proceedings; (3) the reason for the delay; (4) the importance of the
particular evidence; and (5) whether the offending party was diligent in its supplementation.
Finisar Corp. v. The DirectTV Group, Inc., 424 F. Supp. 2d 896, 900 (E.D. Tex. 2006). Each
factor weighs in favor of exclusion.

11

See Ex. 7 (Letter of 1/23/12); Ex. 8 (Email of 1/27/12).
6

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1. Defendants’ last minute productions gravely prejudice Plaintiffs.
First, allowing Defendants’ eve-of-trial productions would severely prejudice Plaintiffs—
Plaintiffs do not have sufficient time to study the new source code and videos in the final days
before trial. Over the course of this case Plaintiffs’ experts and technical advisors collectively
spent hundreds of hours to dissect the code and videos that Defendants had properly produced
during the discovery period. Even assuming that Plaintiffs could somehow digest and review the
more than 50,000 new files of code and at least 20 new videos comprising more than 15
gigabytes in a matter of days, Plaintiffs have already completed the depositions of the relevant
third-party prior art witnesses and deposed Defendants’ validity expert.
To illustrate the specific impact of Defendants’ untimely production as well as their
calculated nature: at the January 17, 2012 deposition of Plaintiffs’ expert David Martin, Jennifer
Doan, counsel for Yahoo! repeatedly asked Plaintiffs’ expert Dr. Martin whether he had
examined the asserted prior art dating back prior to May 1993 (the earliest code base indentified
in Defendants’ validity expert report).12 In reliance on the code set forth in Defendants’
Invalidity Expert Report (and produced by Defendants in the discovery period), Dr. Martin
answered affirmatively. Now, however, Yahoo! has produced source code for some asserted
prior art going back to 1992.
LML Patent Corp. v. JPMorgan Chase & Co. is instructive. There, the court observed
that “requiring Plaintiff to respond to the twenty-eight new combinations—served after the close
of discovery and less than four months before the trial setting—is a significant, unexpected
burden, particularly given that the schedule for motions to strike expert testimony has now begun
and the trial setting is less than two months away . . . this factor weighs in favor of striking the
new combinations.” LML Patent Corp. v. JPMorgan Chase & Co., No. 2:08-cv-448, 2011 U.S.

12

Ex. 9 (Martin Dep., Jan. 17, 2012) at 901:3-5; 918:12-14, 24-25; 919:1-3, 12-16; 920:1-4, 1720; 921:5-15; 923:24-924:2.
7
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Dist. LEXIS 128724, at *15 (E.D. Tex. Aug. 10, 2011). Here the situation is even more grave as
the volume of the belated production is much larger and the trial setting much closer.
2. New productions on the eve of trial, after a year of delay, must be stricken.
Second, it is challenging to imagine circumstances in which the length of the delay and
potential impact of the delay could be more egregious than here. July 12, 2010 was the deadline
for disclosing the materials that Defendants have produced to Plaintiffs over the last month. With
respect to the potential impact of the delay, it comes after the deadline for motions to strike
expert testimony, see id., and just three days before the trial on validity is scheduled to begin.
Delaying the start of trial in order to ameliorate the effect of the last-minute productions is not an
acceptable option in litigation such as this, with four weeks blocked off by the Court and ten
litigants poised for trial. See id. (“Delay in motion practice . . . would potentially disrupt trial
preparations by the parties and the Court. This factor weighs in favor of striking the new
combinations.”).
3. Defendants’ can offer absolutely no justification for their delay.
Third, Defendants’ delay in producing the asserted prior art is inexcusable. Without a
doubt, Defendants could have asserted their new prior art combinations earlier in compliance
with their disclosure obligations. Defendants’ recent productions are composed of files alleged to
be from or representative of code from the early to mid-1990s or files created/modified by
Defendants’ experts. None of the individual references comprising the brand-new prior art
combinations are newly discovered. Nor is the entirely brand-new prior art system something
that could not have been uncovered years ago. This area of technology history has been
thoroughly explored in this litigation, the Microsoft litigation, and the two reexamination
proceedings.13 Defendants could have disclosed each of their asserted prior art items within the
fact discovery period and have no credible basis for failing to do so.
13

While Defendants may argue that their new combinations were suggested by their July 12,
2010 invalidity contentions and/or October 27, 2011 amended invalidity contentions, “mere
8

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4. Defendants’ late-produced asserted prior art cannot be important.
Fourth, Defendants’ new invalidity theories are not vital to their defense. Defendants
have always been on notice of this Court’s Local Patent Rules, Docket Control Order, and the
Federal Rules of Civil Procedure. If the new prior art combinations were crucial to Defendants’
defense against Plaintiffs’ claims, Defendants would have asserted them earlier rather than later.
In any event Defendants have served at least three validity reports from their expert Dr.
Phillips. And, Plaintiffs are not moving to preclude any of the evidence cited by Dr. Phillips in
his reports as being late produced. Defendants will still be able to present a prior art defense—
they just must do so using the theories and admissible evidence contained in Dr. Phillips’ expert
reports.
Accordingly, all of the relevant factors weigh heavily in favor of excluding Defendants’
supplemental invalidity contentions under Rule 37(c)(1). See, e.g., Williams v. Gonzales, No.
1:04-cv-342, 2005 U.S. Dist. LEXIS 38838, at *17 (E.D. Tex. Dec. 14, 2005) (noting that even
“[d]isruption of the court’s discovery schedule and the opponent’s preparation constitutes
sufficient prejudice to militate in favor of the exclusion of testimony”).
B. The Court Should Not Permit Any Expert (Or Fact Witness) Testimony
Related To Defendants’ Supplemental Invalidity Contentions.
For the reasons set forth above, any expert or fact witness testimony that Defendants
contemplate offering that mentions or relies upon Defendants’ belated productions should also be
precluded pursuant to Rule 37(c)(1). Any other result would permit an end-run around this
Court’s Local Patent Rules and the Federal Rules of Civil Procedure.

‘suggestion’ does not suffice.” Cummins-Allison Corp. v. SBM Co., Ltd., No. 9:07-CV-196, 2009
U.S. Dist. LEXIS 22114, at *10 (E.D. Tex. Mar. 19, 2009) (refusing to allow defendants to add a
new combination of prior art, despite the fact that two of the three pieces of prior art in the
combination were already alleged against other asserted claims).
9
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C. Plaintiffs’ MIL 1 and 2 Bar Any Discussion of Defendants’ New Productions
On January 25, 2012, the Court granted Plaintiffs’ first Motion in Limine (“MIL”). See
Dkts. 1298, 1186. MIL 1 precludes Defendants from raising before the jury any demonstrations
of and/or references to software as “prior art” that was created or modified after the October
1994 filing of the patents-in-suit. Dkt. 1186. As illustrated above, most of the newly produced
and alleged prior art has modification dates well-after October 1994 (in some cases as recently as
this week). In the face the Court granting the MIL, however, Defendants have persisted in
rolling out newly modified code, new videos showing that modified code and new things alleged
to be prior art that have modification dates as recently as this week.
Likewise, the Court has granted Plaintiffs’ second Motion in Limine, which prevents
Defendants from offering at trial “any argument, evidence, testimony, or reference to an accused
product being based on technology that did not exist at the time of the invention or that any of
the Defendants did or did not copy the patented invention.” See Dkts. 1298, 1186. Again, even
in the face of the Court granting that MIL, it appears that Defendants may intend to use fact
witnesses to introduce this type of “modified” technology included in Defendants’ recently
produced files.
III. CONCLUSION
The Local Patent Rules, this Court’s Docket Control and Discovery Orders and Federal
Rules apply to the Defendants. Because the Defendants have willfully and wantonly violated all
three, Plaintiffs request that the Court strike the Defendants’ untimely productions and preclude
Defendants’ witnesses from discussing the contents of those productions at trial.

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DATED: February 2, 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]
J.R. Johnson
Texas State Bar No. 24070000
[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]
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
[phone]
[phone]- Facsimile
ATTORNEYS FOR PLAINTIFFS
EOLAS TECHNOLOGIES
INCORPORATED AND THE REGENTS
OF THE UNIVERSITY OF CALIFORNIA

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CERTIFICATE OF CONFERENCE
I hereby certify that Counsel for Plaintiffs, Josh Budwin, conferred with Jennifer Doan
counsel for Defendant Yahoo as well as Chris Joe counsel for JC Penney and Brian Craft counsel
for CDW on February 2, 2012 regarding the foregoing Motion to Strike. Defendants indicated
that they are opposed.
/s/ Josh Budwin

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). This document was served on all counsel by email on
February 2, 2012.
/s/ Josh Budwin

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