Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1338

MOTION for Judgment as a Matter of Law ON DEFENDANTS' ASSERTIONS OF INVALIDITY 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 and THE REGENTS
§
OF THE UNIVERSITY OF CALIFORNIA §
§
Plaintiffs,
§
§
vs.
§
§
ADOBE SYSTEMS INC., AMAZON.COM §
INC., CDW CORPORATION, CITIGROUP §
INC., THE GO DADDY GROUP, INC.,
§
GOOGLE INC., J.C. PENNEY
§
CORPORATION, INC., STAPLES, INC.,
§
YAHOO! INC., and YOUTUBE, LLC.,
§
§
Defendants.
§

CASE NO. 6:09-CV-00446-LED

JURY TRIAL

PLAINTIFFS MOTION FOR JUDGMENT AS A MATTER OF LAW
ON DEFENDANTS’ ASSERTIONS OF INVALIDITY

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I. INTRODUCTION
Plaintiffs The Regents of the University of California and Eolas Technologies
Incorporated (“Plaintiffs”) hereby move for judgment as a matter of law under Federal Rules of
Civil Procedure 50 on each and every Defendant’s assertions of invalidity, as there is insufficient
evidence for a reasonable jury to find that any of the asserted claims of the ’906 patent and the
’985 patent are invalid.
LEGAL STANDARDS
A.

Standard for Judgment as a Matter of Law

The Court should grant a motion for judgment as a matter of law (“JMOL”) with regard
to a particular issue when “there is no legally sufficient evidentiary basis for a reasonable jury to
find for [the non-moving] party on that issue.” FED. R. CIV. P. 50(a); see Reeves v. Sanderson
Plumbing Prods., Inc., 530 U.S. 133, 149-50 (2000); Guile v. United States, 422 F.3d 221, 225
(5th Cir. 2005). The Court must review all of the evidence of record in deciding a motion for
JMOL, “must draw all reasonable inferences in favor of the non-moving party, and . . . not make
credibility determinations or weigh the evidence.” Reeves, 530 U.S. at 150; see also Johns
Hopkins Univ. v. Datascope Corp., 88 USPQ2d 1365, 1367 (Fed. Cir. 2008). In the Fifth
Circuit, entry of judgment as a matter of law under Rule 50(b) is appropriate if evidence
supporting the movant is “uncontradicted and unimpeached [or] if the facts and inferences point
so strongly and overwhelmingly in favor of one party that the Court believes that [a] reasonable
[jury] could not arrive at a contrary verdict.” Med. Care Am., Inc. v. Nat’l Union Fire Ins. Co.,
341 F.3d 415, 420 (5th Cir. 2003).

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II.

ARGUMENTS
A.

Defendants Provided No Legally Sufficient, Evidentiary Basis for a
Reasonable Jury to Find Claims 1 and 6 and Claims 1, 3, 10, 16, 18, 20, 22,
36, 38, 40, and 42 of the ’985 Patent Invalid.
1.

Lack of Requisite Corroboration to Invalidate the ’906 Patent and
’985 Patent

“[T]he presumption of validity, 35 U.S.C. § 282, requires those challenging validity to
introduce clear and convincing evidence on all issues relating to the status of the reference as
prior art.” Colucci v. Callaway Golf Co., 750 F. Supp. 2d 767, 773 (E.D. Tex. 2010) (citation
omitted). As the U.S. Supreme Court held in the seminal case of The Barbed Wire Patent, 143
U.S. 275, 284 (1892), “[w]itnesses whose memories are prodded by the eagerness of interested
parties to elicit testimony favorable to themselves are not usually to be depended upon for
accurate information.” Accordingly, a patent may not be invalidated solely on uncorroborated
testimony. See Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1366-70 (Fed. Cir. 1999)
(“The law has long looked with disfavor upon invalidating patents on the basis of mere
testimonial evidence absent other evidence that corroborates that testimony.”); Colucci v.
Callaway Golf Co., 750 F. Supp. 2d 767, 773 (E.D. Tex. 2010) (“Testimonial evidence of
invalidity must be corroborated, regardless of his or her level of interest.”).
Each and every Defendant failed to produce legally sufficient, clear and convincing
evidence to corroborate its witnesses’ testimony that any version of Viola was, prior to the
September 7, 1993 conception date, a public sale, printed publication, or otherwise qualifies as
prior art under 35 U.S.C. § 102(a); a public sale, printed publication, or otherwise qualifies as
prior art under 35 U.S.C. § 102(b); and/or that any version of Viola, Mediaview, Mosaic, and/or
the embed tag met each and every limitation of any of the asserted claims of the ’906 patent and
’985 patent, either alone or in combination with one another.

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2.

Anticipation of the ’906 Patent and ’985 Patent

To establish anticipation under 35 U.S.C. § 102(a), a defendant must establish by legally
sufficient, clear and convincing evidence that “the invention was known or used by others in this
country, or patented or described in a printed publication in this or a foreign country, before the
invention thereof by the applicant for patent.” Anticipation under section 102(a) requires the
presence of each and every limitation of the claimed invention in the prior art reference. Amgen
Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009). The requirement that
the invention was “known or used by others in this country” “means knowledge or use which is
accessible to the public.” Carella v. Starlight Archery, 804 F.2d 135, 139 (Fed. Cir. 1986) “A
given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc.
v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1394-95 (Fed. Cir. 2008) (quoting Bruckelmyer v.
Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).
To invalidate a patent under section 102(b), a defendant must establish by legally
sufficient, clear and convincing evidence that the invention was “patented or described in a
printed publication in this or a foreign country or in public use or on sale in this country, more
than one year prior to the date of the application for patent in the United States.” 35 U.S.C.
§ 102(b). To be anticipatory, a reference must describe, either expressly or inherently, each and
every claim limitation and enable one of skill in the art to practice an embodiment of the claimed
invention without undue experimentation. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Anticipation under section 102(g)(2) requires the defendant to establish by legally
sufficient, clear and convincing evidence that “before such persons invention thereof, the
invention was made in this country by another inventor who had not abandoned, suppressed, or
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concealed it. In determining priority of invention under this subsection, there shall be considered
not only the respective dates of conception and reduction to practice of the invention, but also the
reasonable diligence of one who was first to conceive and last to reduce to practice, from a time
prior to conception by the other.” 35 U.S.C. § 102(g)(2).
Each and every Defendant failed to meet its burden to produce legally sufficient, clear
and convincing evidence that any of the asserted claims of the ’906 patent and the ’985 patent
are anticipated by any version of Viola. Specifically, each and every Defendant failed to prove
that the following claim elements are met by any version of Viola by legally sufficient, clear and
convincing evidence:
1)

that any version of Viola satisfies the “wherein said first distributed hypermedia

document includes an embed text format” limitation, as construed by the Court and as required
by every asserted claim of the ’906 patent and the ’985 patent;
2)

that any version of Viola satisfies the “wherein said object has type information

… to identify and locate an executable application external to the first distributed hypermedia
document” limitation, as construed by the Court and as required by asserted claims 1 and 6 of the
’906 patent and asserted claims 1, 3, 10,16, 18, 20, and 22 of the ’985 patent;
3)

that any version of Viola satisfies the “wherein the executable application is part

of a distributed application” limitation, as construed by the Court and as required by asserted
claims 36, 38, 40, and 42 of the ’985 patent;
4)

that any version of Viola satisfies the “receiving … a portion of a distributed

hypermedia document within a browser-controlled window” limitation, as construed by the
Court and as required by every asserted claim of the ’906 patent and the ’985 patent;

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5)

that any version of Viola satisfies the “where the text formats are HTML tags”

limitation, as construed by the Court and as required by claims 3, 18, and 22 of the ’985 patent.
In addition to the claim elements and failures of proof set forth above, each and every
Defendant also failed to prove that:
1)

any version of Viola was, prior to the September 7, 1993 conception date, a public

sale, printed publication, or otherwise qualifies as prior art under 35 U.S.C. § 102(a);
2)

any version of Viola was, more than one year prior to the November 17, 1994

filing date, a public sale, printed publication, or otherwise qualifies as prior art under 35 U.S.C.
§ 102(b); and
3)

any person conceived of the claimed invention prior to the September 7, 1993

conception date, exercised reasonable diligence from their conception through actual reduction to
practice, and actually reduced to practice their invention on or before the November 17, 1994
filing date under 35 U.S.C. § 102(g)(2).
3.

Obviousness of the ’906 Patent and the ’985 Patent

To invalidate a patent under section 103 of the Patent Statute, a defendant must establish
by legally sufficient, clear and convincing evidence that “the differences between the subject
matter sought to be patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains.” 35 U.S.C. § 103(a). To avoid hindsight analysis regarding
combinations of prior art, courts require the presentation of “evidence from before the time of the
invention in the form of some teaching, suggestion, or even mere motivation (conceivably found
within the knowledge of an ordinarily skilled artisan) to make the variation or combination.”
Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010). And while
obviousness is a question of law based on underlying findings of fact, “the question of
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motivation to combine may nonetheless be addressed on summary judgment or JMOL in
appropriate circumstances.” Wyers v. Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010)
Each and every Defendant failed to meet its burden to produce legally sufficient, clear
and convincing evidence that any claims of the ’906 patent and the ’985 patent are obvious under
any combination of the following prior art references under 35 U.S.C. § 103: any version of
Viola, Mediaview, Mosaic, and/or the embed tag.
Each and every Defendant specifically failed to prove the following facts by legally
sufficient, clear and convincing evidence:
1)

that it would have been obvious to one of ordinary skill in the art to combine any

version of Viola, Mediaview, Mosaic, and/or the embed tag to create the claimed inventions of
the ’906 patent;
2)

that it would have been obvious to one of ordinary skill in the art to combine any

version of Viola, Mediaview, Mosaic, and/or the embed tag to create the claimed inventions of
the ’985 patent;
3)

that one of ordinary skill in the art would have been motivated to combine any

version of Viola, Mediaview, Mosaic, and/or the embed tag to create the claimed inventions of
the ’906 patent; and
4)

that one of ordinary skill in the art would have been motivated to combine any

version of Viola, Mediaview, Mosaic, and/or the embed tag to create the claimed inventions of
the ’985 patent.
4.

Written Description of the ’906 Patent and the ’985 Patent

The Federal Circuit recently found that “the test for sufficiency [of the written
description] is whether the disclosure of the application relied upon reasonably conveys to those
skilled in the art that the inventor had possession of the claimed subject matter as of the filing
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date.” Ariad Pharmaceuticals, Inc. v. Eli Lily & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
“[T]he test requires an objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Defendants bore the burden of proving by clear and convincing
evidence that the claims of the patents-in-suit are invalid for a lack of written description. Id. at
1354.
Each and every Defendant failed to meet its burden to produce legally sufficient, clear
and convincing evidence that the ’906 patent and the ’985 patent do not meet the written
description requirement of 35 U.S.C. Section 112 because no Defendant offered any evidence
that shows that the inventors failed to describe the claimed invention in sufficient detail that one
skilled in the art can reasonably conclude that the inventor had possession of the claimed
invention. Each and every Defendant also failed to meet its burden to prove invalidity under any
subsection of 35 U.S.C. § 112.
5.

Patent-Eligible Subject Matter of the ’906 Patent

Patentability of an invention “is governed by Section 101 of the Patent Act, which
establishes categories of patentable subject matter: . . . any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof[.]” 35
U.S.C. § 101. Each and every Defendant failed to meet its burden to produce legally sufficient,
clear and convincing evidence that the ’906 patent and the ’985 patent do not claim patenteligible subject matter under 35 U.S.C. Section 101 because each and every Defendant failed to
offer any evidence that shows that the ’906 patent and the ’985 patent were not directed to
statutory subject matter.

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III.

CONCLUSION
For the foregoing reasons, Plaintiffs respectfully request that the Court grant their Motion

for Judgment as a Matter of Law on Defendants’ Assertions of Invalidity.
Dated: February 8, 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
Pursuant to Local Rule CV-5(a)(7), the undersigned certifies that the foregoing document
was filed electronically on February 8, 2012. As such, counsel for Plaintiffs has served this
Motion in electronic form on all counsel who have consented to electronic service.
/s/ Gretchen Curran
Gretchen Curran

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