Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1342

TRIAL BRIEF DEFENDANTS' OFFER OF PROOF REGARDING TIME LIMITATION FOR INVALIDITY TRIAL by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 DECLARATION OF JENNIFER HALTOM DOAN IN SUPPORT OF, # 2 DECLARATION OF ANDREW L. PERITO IN SUPPORT OF, # 3 Exhibit A, # 4 Exhibit B, # 5 Exhibit C, # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit F, # 9 Exhibit G, # 10 Exhibit H, # 11 Exhibit I, # 12 Exhibit J, # 13 Exhibit K, # 14 Exhibit L)(Doan, Jennifer)

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

EOLAS TECHNOLOGIES, INC.
Plaintiff,
v.

CV 6:09-cv-446 LED
JURY DEMANDED

ADOBE SYSTEMS INC., et al.
Defendants.

DEFENDANTS’ OFFER OF PROOF REGARDING
TIME LIMITATION FOR INVALIDITY TRIAL

As noted during oral argument on Plaintiffs’ Rule 50(a) motion for judgment as a matter
of law presented this morning, Defendants Adobe Systems, Inc., Amazon.com, Inc., CDW
Corporation, Go Daddy Group, Inc., Google Inc., J.C. Penney Inc., Staples, Inc., Yahoo! Inc. and
YouTube, LLC (collectively “Defendants”) respectfully submit this offer of proof as additional
support for their objection to the Court’s trial plan (Dkt. 1274) and the 7-hour limitation for the
presentation of evidence to support their clear and convincing evidence burden of proof on
invalidity of 13 asserted claims in two asserted patents. As stated in their objection, Defendants
respectfully object that the 7-hour time allotment is unfairly prejudicial and infringes due process
rights because it is insufficient time for Defendants to adequately present their cases, particularly
given the voluminous evidence, numerous witnesses, and complex factual and legal issues that
must be presented and resolved in this case. Indeed, even Plaintiffs—who do not bear the burden
of proof and have far fewer witnesses to present—have referenced the time constraints in this

trial (Exhibit A1 [2/7/12 Trial Tr. (AM)] at 62:13-16 (Mr. McKool advising witness “Professor,
we are under a little bit of a time pressure here. We have a limited time on each side. So I
appreciate your desire to be clear; but if you could just answer my question, I'd appreciate it.”);
Exhibit B [2/6/12 Trial Tr. (PM)] at 214:5-7 (“Well, my colleagues told me if I go longer than 15
minutes, they'll be very angry with me; so hopefully it will be short.”)). This is not to suggest
that Defendants do not appreciate the Court’s consideration of their arguments and increase of
their time from the original limit of 6 hours. However, Defendants respectfully submit this offer
of evidence and testimony they would have introduced into evidence during the Invalidity Trial
had they been allotted more time:
It would be a confused misuse of this document for Plaintiffs, or anyone else, to mistake
that this document is in any way an admission of insufficiency regarding any particular position
or Defendants’ position as a whole.

Rather, this submission memorializes, with specific

references, that the time limitation applied to Defendants in the context of this jury trial was
materially prejudicial.
1.

As a result of the time limitation, Defendants were forced to altogether drop

expert support for invalidity theories they would have otherwise presented in the context of the
Invalidity Trial and which at least some of the defendants believed deserved greater priority. For
example, as a result of the significant time constraints, Defendants were forced to omit their
expert testimony and explanation for the jury on their written description defenses as set forth in
inter alia Defendants’ Motion for Summary Judgment of Invalidity for Lack of Written
Description (Dkt. No. 877) and the expert report of Richard Phillips (Exhibit C [Phillips Supp.
Report] and Exhibit D [Phillips video demonstrations]), and the documents, testimony and
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All exhibits are to the Declaration of Andrew L. Perito in Support of Defendants’ Offer
Of Proof Regarding Time Limitation For Invalidity Trial filed concurrently herewith.
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evidence cited therein, and which resulted in the Court granting judgment as a matter of law
against Defendants on their written description defenses during the charge conference earlier this
evening. Defendants were also forced to drop a number of invalidity theories including inter alia
theories relating to the combination of Mosaic, HTML+ and the Janssen www-talk posting, the
combination of Mosaic, Hypercard and Director, and the Cohen reference, as set forth in the
expert report of Richard Phillips (Exhibit C [Phillips Supp. Report] and Exhibit D [Phillips video
demonstrations]) and the documents, testimony and evidence cited therein. Defendants were
also forced to submit their inequitable conduct theories without presenting additional testimony
and evidence relating to that issue for the Court’s consideration of this equitable defense,
including as set forth in inter alia Defendant Yahoo! Inc.’s Answer, Affirmative Defenses, And
Counterclaims To Plaintiffs’ Third Amended Patent Infringement Complaint (Dkt. No. 1025),
Defendant Amazon’s Answer, Affirmative Defenses, And Counterclaims To Plaintiffs’ Third
Amended Patent Infringement Complaint (Dkt. No. 1026), the expert report of Nicholas Godici
(Exhibit E [Godici Report]), Exhibit F [Godici Supp. Report]), and the expert report of Richard
Phillips (Exhibit C [Phillips Supp. Report] and Exhibit D [Phillips video demonstrations]) and
the documents, testimony and evidence cited therein.
2.

In addition, Defendants were required to significantly curtail their presentation of

evidence and testimony on invalidity defenses under 35 U.S.C. § 102(a), (b) and (g), and § 103
on multiple references including Viola, MediaView, Mosaic and HTML+. For example, as
criticized by Plaintiffs in their motion for judgment as a matter of law, Defendants were unable
to have their expert witness Dr. Richard Phillips offer term-by-term testimony and citation to
source code and documents for each of the 13 asserted claims for each of the three core prior art
references/combinations and the relevant versions thereof. Defendants were also forced to cut a

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number of witnesses from their trial presentation, including the following witnesses relating to
invalidity who were properly identified in Defendants’ witness lists submitted with the Pretrial
Order (Dkt. Nos. 1244-3, 1244-9) and trial exhibits that would have been introduced through
those witnesses (Dkt Nos. 1244-21, 1244-27):
a.

Testimony of Nicholas Godici regarding Patent Office procedure and the complex
prosecution history of the asserted patents, including multiple reexamination
proceedings (Exhibit E [Godici Report]), Exhibit F [Godici Supp. Report]). Mr.
Godici was present at the trial and sworn in as a witness, but was not called due to
time constraints (Exhibit B [2/6/12 Trial Tr. (PM)] at 84:1-22 (swearing in
witnesses); Declaration of Jennifer Doan at ¶ 3).

b.

Testimony of Dale Dougherty regarding state of the art, secondary considerations
and facts relating to invalidity under 35 U.S.C. § 102(a), (b) and (g) and § 103
based on the Viola prior art, including, for example, corroboration of conception,
reduction to practice, diligence and public use of Viola as Mr. Wei’s supervisor at
O’Reilly & Associates (Exhibit G [Dougherty Depo. Tr.]). Mr. Dougherty was
present at the trial and sworn in as a witness, but was not called due to time
constraints (Exhibit B [2/6/12 Trial Tr. (PM)] at 84:1-22 (swearing in witnesses);
Declaration of Jennifer Doan at ¶ 3).

c.

Testimony of David Filo regarding his early work on the World Wide Web as coFounder of Yahoo!, including for example testimony regarding the state of the art,
secondary considerations and facts relating to the Viola prior art and Mosaic prior
art (Exhibit H [Filo Depo. Tr.]). Mr. Filo was present at the trial and sworn in as

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a witness, but was not called due to time constraints (Exhibit B [2/6/12 Trial Tr.
(PM)] 84:1-22 (swearing in witnesses); Declaration of Jennifer Doan at ¶ 3).
d.

Testimony of Christopher McRae regarding state of the art, secondary
considerations, inequitable conduct and facts relating to the Viola and Mosaic
prior art, including for example corroboration of conception, reduction to practice,
diligence and public use of Viola as an attendee of the World Wide Web Wizards
Workshop (Exhibit I [McRae Depo. Tr.]; Exhibit J [McRae Depo. Designations]).
Defendants identified deposition excerpts to be introduced into evidence, but did
not offer Mr. McRae’s testimony due to time constraints (Exhibit B [2/6/12 Trial
Tr. (PM)] at 84:1-22 (swearing in witnesses); Declaration of Jennifer Doan at ¶
3).

e.

Testimony of Sunita Rajdev regarding involvement of Plaintiff Regents of the
University of California in the litigation to rebut Plaintiffs’ presentation (Exhibit
K

[Rajdev Depo. Tr.]; Exhibit L [Rajdev Depo. Designations]). Defendants

identified deposition excerpts to be introduced into evidence, but did not offer Ms.
Rajdev’s testimony due to time constraints (Exhibit B [2/6/12 Trial Tr. (PM)] at
84:1-22 (swearing in witnesses); Declaration of Jennifer Doan at ¶ 3).
Defendants also were unable to introduce deposition testimony of other unavailable witnesses
whose testimony was designated and had to significantly curtail counterdesignations to
Plaintiffs’ designated testimony due to time constraints (Dkt. Nos. 1244-10, 1244-12;
Declaration of Jennifer Doan at ¶ 4).
3.

In addition, Defendants were required to significantly curtail direct and cross-

examination of witnesses that did testify at trial including Michael Doyle, Eric Bina, Tim

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Berners-Lee, David Raggett, Scott Silvey, Pei Wei, Dr. Richard Phillips, Dr. David M. Martin,
William Tucker, David C. Martin and Cheong Ang. Declaration of Jennifer Doan at ¶ 5. This
required that Defendants not elicit certain testimony from these individuals further supporting
Defendants’ invalidity and related defenses, unduly prejudicing Defendants’ ability to fully
present their case. Declaration of Jennifer Doan at ¶ 5.
4.

Due to time constraints, Defendants were only able to present their rebuttal case

for 9 minutes, unfairly prejudicing Defendants’ ability to fully rebut Plaintiffs’ presentation of its
case. Declaration of Jennifer Doan at ¶ 6. Had Defendants had more time they would have
offered additional testimony and evidence, including of the individuals identified in Paragraphs
3(a)-2(e) above. Declaration of Jennifer Doan at ¶ 3, 6.
Dated: February 8, 2012

Respectfully submitted,
/s/ Jennifer Haltom Doan
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]
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HALTOM & DOAN
6500 Summerhill Road, Suite 100
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
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.

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/s/ Douglas E. Lumish (with permission)
Douglas E. Lumish
Jeffrey G. Homrig
Joseph H. Lee
Parker C. Ankrum
KASOWITZ, BENSON, TORRES &
FRIEDMAN, LLP
333 Twin Dolphin Drive, Suite 200
Redwood Shores, CA 94065
Tel: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Jonathan K. Waldrop
KASOWITZ, BENSON, TORRES &
FRIEDMAN, LLP
1360 Peachtree St., N.E.
Suite 1150
Atlanta, GA 30309
Tel: [phone]
Email: [e-mail]
James R. Batchelder
Sasha G. Rao
Brandon H. Stroy
Rebecca R. Hermes
Lauren N. Robinson
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
Tel: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Han Xu
ROPES & GRAY LLP
Prudential Tower, 800 Boylston St.
Boston, MA 02199-3600
Tel: [phone]
Email: [e-mail]

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Daryl Joseffer
Adam Conrad
KING & SPALDING
1700 Pennsylvania Avenue, NW
Suite 200
Washington, DC 2006-4707
Tel: [phone]
Email: [e-mail]
Email: [e-mail]
Michael E. Jones
Allen F. Gardner
POTTER MINTON
110 N. College, Suite 500
Tyler, TX 75702
Tel: [phone]
Email: [e-mail]
Email: [e-mail]
ATTORNEYS FOR DEFENDANTS
GOOGLE INC. AND YOUTUBE LLC

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/s/ Jason W. Wolff (with permission)
Frank E. Scherkenbach
E-mail: [e-mail]
Proshanto Mukherji
Email: [e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
[phone] (Telephone)
[phone] (Facsimile)
David J. Healey
E-mail: [e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
[phone] (Telephone)
[phone] (Facsimile)
Jason W. Wolff
E-mail: [e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
[phone] (Telephone)
[phone] (Facsimile)
Michael E. Florey
Email: [e-mail]
FISH & RICHARDSON P.C.
3200 RBC Plaza
60 South Sixth Street
Minneapolis, MN 55402
[phone] (Telephone)
[phone] (Facsimile)
Counsel for Defendant
ADOBE SYSTEMS INCORPORATED
/s/ Proshanto Mukherji (with permission)
Thomas M. Melsheimer
Email: [e-mail]
Neil J. McNabnay
Email: [e-mail]
Carl E. Bruce

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Email: [e-mail]
FISH & RICHARDSON
1717 Main Street, Suite 5000
Dallas, TX 75201
Tel: [phone]
Proshanto Mukherji
Email: [e-mail]
FISH & RICHARDSON
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Attorneys for Defendant
THE GO DADDY GROUP, INC.
/s/ Christopher M. Joe (with
permission)
Christopher M. Joe
Brian Carpenter
Eric W. Buether
BUETHER JOE & CARPENTER
1700 Pacific, Suite 2390
Dallas, TX 75201
Tel: [phone]
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
J.C. PENNEY CORPORATION, INC.
/s/ Michael E. Richardson (with permission)
Michael E. Richardson (Bar No. 24002838)
[e-mail]
BECK REDDEN & SECREST L.L.P.
1221 McKinney, Suite 4500
Houston, TX 77010
Telephone: [phone]
Facsimile: [phone]
Joe W. Redden, Jr. (Bar No. 16660600)
[e-mail]
BECK REDDEN & SECREST LLP
One Houston Center
1221 McKinney St, Suite 4500
Houston, TX 77010-2020
Telephone: [phone]
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Facsimile: [phone]
Alexandra C. Boudreau (pro hac vice)
[e-mail]
Richard Ewenstein (pro hac vice)
[e-mail]
Mark G. Matuschak (pro hac vice)
[e-mail]
Silena Paik (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING HALE &
DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsmilie [phone]
Donald R. Steinberg (pro hac vice)
[e-mail]
Daniel V. Williams (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING HALE &
DORR LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Kate Hutchins (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING HALE &
DORR LLP
399 Park Avenue
New York, NY 10022
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
STAPLES, INC.
/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 Sears Tower
233 South Wacker Drive
Chicago, IL 60606-6357
Telephone: [phone]
Facsimile: [phone]

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Brian Craft
[e-mail]
Eric H. Findlay
[e-mail]
FINDLAY CRAFT, LLP
6760 Old Jacksonville Highway, Suite 101
Tyler, TX 75703
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendants
CDW 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/ Jennifer Haltom Doan
Jennifer Haltom Doan

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