Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1336

Proposed Jury Instructions by Amazon.com Inc., Google Inc., Yahoo! Inc., YouTube, LLC. (Reines, Edward)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
Eolas Technologies Incorporated and
The Regents Of The University Of California,

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Plaintiffs and Counterdefendants,
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vs.
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Adobe Systems Inc.; Amazon.com, Inc.; CDW Corp.; )
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Citigroup Inc.; The Go Daddy Group, Inc.; Google
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Inc.; J.C. Penney Corporation, Inc.; Staples, Inc.;
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Yahoo! Inc.; and YouTube, LLC,
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)
Defendants and Counterclaimants.
)
)
)
)
)
)

Civil Action No. 6:09-CV-446-LED

JURY TRIAL DEMANDED

DEFENDANTS’ OBJECTION TO PLAINTIFFS’ AMENDED JURY INSTRUCTION
AND PROPOSED AMENDMENT [DKT. 1335]

In view of Plaintiffs’ filing at 11 pm tonight with less than a half hour notice, Defendants
object to Plaintiffs’ proposed amendment at this hour and propose their own amendment.
Section 4.1
Plaintiffs’ proposed amendment in Section 4.1 is objectionable because it misstates the
law by stating that the Patent Office considers “the prior art” without distinguishing between
original examination proceedings and reexaminations.

This distinction is critical and plaintiffs'

arguments have created the risk for juror confusion and consequent unfair prejudice on this very
distinction. Sections 301 and 302 of the Patent Code, and 37 CFR 1.552, all provide that
reexamination is limited to patents and printed publications. It does not include other forms of
prior art such as prior invention under Section 102(g) and public use under Section 102(b).
This concern would be addressed with the following instruction that in any event
defendants believe is necessary to properly explain the law and the relevant legal rules to the jury
given the trial record:
“The rules for examination of a patent application before the issuance of a patent are
different from those that govern a patent reexamination.
the applicant is permitted to participate in the process.

During an original examination, only
In the reexamination, parties other than

the applicant can, and did initiate the proceeding, but were not permitted to participate beyond
that. In addition, while in the original patent examination the Patent Office can consider prior
art in general, in reexamination printed publications and patents can be considered, but public
uses and prior inventions cannot.”
Section 5.1
Plaintiffs’ proposed amendment to Section 5.1 is objectionable because instructing on the
Constitutional basis for patent law again is unnecessary and also because of the statement that

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you may not invalidate a patent “merely because you believe the invention should be dedicated
to the public.”

This proposed amendment is argumentative, inaccurate and confusing.

If a

juror believes the invention is invalid because it was dedicated to the public by third parties as
prior art, that would be a proper basis to invalidate the patent.

The proposed amendment’s

statement of the purpose of the patent system and how the system achieves that purpose is also
inaccurate, incomplete, and prejudicial.

Dated:

February 8, 2012

Respectfully submitted,
/s/ Edward R. Reines
Edward Reines (Bar No.135960)
[e-mail]
Jared Bobrow (Bar No. 133712)
[e-mail]
Sonal N. Mehta (Bar No. 222086)
[e-mail]
Andrew L. Perito (Bar No. 269995)
[e-mail]
Aaron Y. Huang (Bar No. 261903)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Doug W. McClellan (Bar No. 24027488)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Jennifer H. Doan (Bar No. 088090050)
[e-mail]
Josha R. Thane (Bar No. 24060713)
[e-mail]
HALTOM & DOAN
6500 Summerhill Road, Suite 100
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]

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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/ Douglas E. Lumish (with permission)
Douglas E. Lumish
[e-mail]
Jeffrey G. Homrig
[e-mail]
Jonathan K. Waldrop (pro hac vice)
[e-mail]
Joseph H. Lee (pro hac vice)
[e-mail]
Parker C. Ankrum (pro hac vice)
[e-mail]
KASOWITZ BENSON TORRES &
FRIEDMAN LLP
333 Twin Dophin Dr., Suite 200
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
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]
Lauren Robinson (pro hac vice)
[e-mail]
Rebecca R. Hermes (pro hac vice)
[e-mail]
Han Xu (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, California 94303-2284

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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

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CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented
to electronic service were served with a true and correct copy of the foregoing by certified mail,
return receipt requested, on this the 8th day of February, 2012.
/s/ Andrew L. Perito
Andrew L. Perito

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