Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1340

TRIAL BRIEF DEFENDANTS' OFFER OF PROOF #5 REGARDING PRIOR ART CODE AND DEMONSTRATIVE EXHIBITS by Adobe Systems Incorporated, Amazon.com Inc., Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Declaration of Andrew L. Perito In Support Of, # 2 Exhibit Exhibit A, # 3 Exhibit Exhibit B, # 4 Exhibit Exhibit C, # 5 Exhibit Exhibit D, # 6 Exhibit Exhibit E, # 7 Exhibit Exhibit F, # 8 Exhibit Exhibit G)(Doan, Jennifer)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

Eolas Technologies Incorporated and
The Regents Of The University Of California,

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

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

JURY TRIAL DEMANDED

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS
Defendants Adobe Systems, Inc., Amazon.com, Inc., Go Daddy Group, Inc., Google Inc.,
J.C. Penney Inc., Staples, Inc., Yahoo! Inc. and YouTube, LLC (“collectively Defendants”)
hereby provide this offer of proof to the Court of the prior art source code, and demonstrative
videos and images of that prior art code that Defendants did or would have introduced into
evidence during the Invalidity Trial, had they been permitted to do so by the Court. This prior
art evidence, including as shown by the demonstrative videos and images, supports Defendants’
invalidity defenses under 35 U.S.C. § 102(a), (b) and (g), and § 103, including providing
evidence of prior conception and reduction to practice by another of the claimed invention.

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 1

Certain prior art codebases were used to generate demonstrative exhibits that show how
the code functions, which Defendants sought to introduce but as to which the Court sustained
Plaintiffs’ objections. The following chart lists the demonstrative videos, attached as Exhibit A
to the Declaration of Andrew L. Perito in Support of Defendants’ Offer Of Proof #5 Regarding
Prior Art Code And Demonstrative Exhibits. For each video, the chart below identifies the Viola
browser,

interactive

Viola scripts,

and

Vplot

executable application

operating on

contemporaneous machines built with contemporaneous operating systems and other supporting
software that is illustrated in the demonstrative. The chart also cross-references to the exhibit or
exhibits that contain only the Viola prior art code used in those demonstrations, and/or the
complete codebases used to create those demonstrations and an indication as to whether the
Court admitted those codebases into evidence.
attached as Perito Decl. Ex. B.

The codebases that were not admitted are

These prior art codebases and videos are evidence and

demonstrative exhibits establishing conception and reduction to practice, and public use during
the May 7, 1993 demonstration to Sun engineers with respect to the plotting demonstration
illustrated in JDX-274 and VID00000014 from 1:20-2:41.
Demonstrative
Video Nos.

Code Package

Bates No.

Complete Video Code Exs.

(Viola Code–Only Exs.)
VID00000017

VID00000016

SunOS 4.1.3 cdrom,
X11R5 patch level 9
libXm, so.1.2, gcc2.2.2 (to compile
CERN httpd), CERN
httpd from '91, Viola
931016

PA-NAT00000113

SunOS 4.1.3 cdrom,
X11R5 patch level 9,
libXm.so.1.2, gcc2.2.2 (to compile

PA-NAT00000114

JDX-272
(ADMITTED)
(JDX-290)
(ADMITTED)

JDX-273
(JDX-290;
JDX-291)
(ADMITTED)

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 2

CERN httpd), CERN
httpd from '91, Viola
931016, Vplot 930507
VID00000013;
VID00000022

VID00000014

VID00000015

VID00000029

VID00000026;
VID00000027

VID000000121

1

SunOS 4.1.3 cdrom,
X11R5 patch level 9,
sgmls 930414, viola
930512, Vplot 930507
SunOS 4.1.3 cdrom,
X11R5 patch level 9,
sgmls 930414, Viola
930512, Vplot 930812

PA-NAT00000115

JDX-274
(ADMITTED)
(JDX-291;
JDX-292)
(ADMITTED)

PA-NAT00000116

JDX-275
(JDX-292;
JDX-293)
(ADMITTED)

SunOS 4.1.3 cdrom,
traceroute-1.0 (to
demo nfs), X11R5
patch level 9, sgmls
930414, Viola 930527,
Vplot 930507

PA-NAT00000117

JDX-276

SunOS 4.1.3 cdrom,
X11R5 patch level 9,
gcc-2.2.2 (to compile
CERN httpd), CERN
httpd from '91, viola
920730

PA-NAT00000118

JDX-277

SunOS 4.1.3 cdrom,
X11R5 patch level 9,
libXm.so.1.2, gcc2.2.2 (to compile
CERN httpd), CERN
httpd from '91, Viola
931016, Viola 930527,
Vplot 930507

PA-NAT00000120

JDX-279

SunOS 4.1.3 cdrom,
X11R5 patch level 9,
libXm.so.1.2, gcc2.2.2 (to compile
CERN httpd), CERN
httpd from '91, viola

PA-NAT00000116

(ADMITTED)

(JDX-291;
JDX-295)
(ADMITTED)

(ADMITTED)

(JDX-290; JDX-291; JDX295)
(ADMITTED)

JDX-278
(ADMITTED)

VID00000012 depicts codebases dated after October 17, 1994 to rebut any argument of
abandonment.

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 3

950414 3.3, vplot
930507, 960920 plot.v

During the direct examination of Mr. Scott Silvey, Defendants also sought to introduce
several screen captures that were made from contemporaneous machines, in the same
configuration, and loaded with the same code as used in Defendants’ demonstrative videos listed
in the table above. The Court sustained Plaintiffs’ objections to these materials, which are
attached as Perito Decl. Ex. C.
In addition to the demonstrative videos listed above that were created for purposes of this
case, Defendants also provide an offer of proof as to the October 4, 2001 videotaped deposition
testimony of Karl Jacob, which depicts the sworn testimony of a Sun engineer who witnessed the
May 7, 1993 public demonstration of the prior art Viola system. See [Trial Tr. 2/7/12 Morning,
14:16-16:15].

The Court sustained objections to Defendants’ designations of Mr. Jacob’s

testimony at 17:20-24, 18:3-09, 18:16-17; 18:22-25; 19:6-9; 19:11-16, 19:18-20:6. A complete
transcript of Defendants’ proposed designations and associated video for Mr. Jacob are attached
as Perito Decl. Ex. D and Ex. E, respectively.
Finally, Defendants offer as proof printouts of sections of prior art Viola source code
(with associated demonstrative images illustrating how that code would have appeared when run
on contemporaneous machines built with contemporaneous operating systems and other
supporting software) from JDX-272 and JDX-274. These are attached as Perito Decl. Exs. F and
G, respectively, and would have been introduced through the testimony of Mr. Scott Silvey as
evidence and demonstrative exhibits establishing conception and reduction to practice, and
public use during the May 7, 1993 demonstration to Sun engineers with respect to the plotting
demonstration illustrated in JDX-274.

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 4

Respectfully submitted,
Dated: February 8, 2012

By: /s/ Jennifer H. Doan
Jennifer H. Doan (TX Bar No. 08809050)
Joshua R. Thane (TX Bar No. 24060713)
HALTOM & DOAN
6500 Summerhill Road, Suite 100
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Edward R. Reines
Jared B. Bobrow
Sonal N. Mehta
Aaron Y. Huang
Andrew L. Perito
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Doug W. McClellan
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Otis Carroll (TX Bar No. 3895700)
Deborah Race (TX Bar No. 11648700)
IRELAND, CARROLL & KELLEY, P.C.
6101 South Broadway, Suite 500
Tyler, Texas 75703
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 5

ATTORNEYS FOR DEFENDANT
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
Telephone: [phone]
Facsimile: [phone]

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 6

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
By: /s/ Proshanto Mukherji (with permission)
Thomas M. Melsheimer ([e-mail])
Texas Bar No. 13922550
Neil J. McNabnay ([e-mail])
Texas Bar No. 24002583
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, TX 75201
[phone] (Telephone)
[phone] (Facsimile)
Proshanto Mukherji
E-mail: [e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
617-542-5070 (Telephone)
617-542-8906 (Facsimile)
ATTORNEYS FOR DEFENDANT
THE GO DADDY GROUP, INC.

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 7

By: /s/ Mark G. Matuschak (with permission)
Joe W. Redden, Jr.
Michael Ernest Richardson
BECK REDDEN & SECREST
1221 McKinney
Suite 4500
Houston, TX 77010
713.951.6284
[e-mail]
[e-mail]
Mark G. Matuschak
Donald R. Steinberg
WILMER CUTLER PICKERING HALE
AND DORR LLP
60 State Street
Boston, MA 02109
617.526.5000
[e-mail]
[e-mail]
Kate Hutchins
WILMER CUTLER PICKERING HALE
AND DORR LLP
399 Park Avenue
New York, NY 10022
212.230.8800
[e-mail]
Daniel V. Williams
WILMER CUTLER PICKERING HALE
AND DORR LLP
1875 Pennsylvania Avenue, N.W.
Washington, D.C. 20006
202.663.6012
[e-mail]
ATTORNEYS FOR DEFENDANT
STAPLES, INC.

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 8

By: /s/ Thomas L. Duston (with permission)
Thomas L. Duston
[e-mail]
Anthony S. Gabrielson
[e-mail]
Scott A. Sanderson
[e-mail]
MARSHALL, GERSTEIN & BORUN LLP
6300 Willis Tower
233 South Wacker Drive
Chicago, IL 60606-6357
[phone]
Brian Craft
[e-mail]
Eric H. Findlay
[e-mail]
FINDLAY CRAFT, LLP
6760 Old Jacksonville Highway, Suite 101
Tyler, TX 75703
[phone]
ATTORNEYS FOR DEFENDANT
CDW LLC
By: /s/ Christopher M. Joe (with permission)
Christopher M. Joe
[e-mail]
Eric W. Buether
[e-mail]
Niky Bukovcan
[e-mail]
1700 Pacific, Suite 2390
Dallas, Texas 75201
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
J.C. PENNEY CORPORATION, INC.

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 9

By: /s/ David J. Healey (with permission)
David J. Healey
E-mail: [e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
713-654-5300 (Telephone)
713-652-0109 (Facsimile)
OF COUNSEL:
Frank E. Scherkenbach
E-mail: [e-mail]
FISH & RICHARDSON P.C.
225 Franklin Street
Boston, MA 02110-2804
617-542-5070 (Telephone)
617-542-8906 (Facsimile)
ATTORNEYS FOR DEFENDANT
ADOBE SYSTEMS INCORPORATED

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 10

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on February 8, 2012 to all counsel of record who are deemed to have
consented to electronic service via the Court's CM/ECF system per Local Rule CV-5(a)(3), or by
hand service. Any other counsel of record will be served by email and/or fax.

/s/ Andrew L. Perito

DEFENDANTS’ OFFER OF PROOF #5 REGARDING PRIOR ART CODE
AND DEMONSTRATIVE EXHIBITS - Page 11