Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1343

TRIAL BRIEF DEFENDANTS' OPPOSITION TO PLAINTIFFS' MOTION FOR JUDGMENT AS A MATTER OF LAW by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Citigroup Inc., Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Reines, Edward) (Additional attachment(s) added on 2/10/2012: # 1 Text of Proposed Order) (gsg, ).

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
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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.; )
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’ OPPOSITION TO PLAINTIFFS’
MOTION FOR JUDGMENT AS A MATTER OF LAW

I.

INTRODUCTION
Defendants respectfully request that the Court deny Plaintiffs’ Motion for Judgment as a

Matter of Law, D.I. 1338. The evidence and testimony presented at trial is more than sufficient
for the jury to find for Defendants on their invalidity defenses. In response, plaintiffs’ motion
constitutes nothing more than rote restatements of law (including in at least one case an
erroneous restatement) followed by conclusory statements, without further explanation or even a
single citation to the record.

Instead, their motion simply lumps in all defenses in an

undifferentiated fashion that fails to provide Defendants with sufficient notice. 1

As noted

herein, there is ample evidence in the record supporting Defendants’ invalidity defenses.
Particularly where all evidence favoring Defendants must be given credence whereas all
evidence favoring Plaintiffs that the jury is not required to believe must be disregarded, the
record presented at trial not only meets but exceeds the threshold sufficient for a reasonable jury
to find the patents-in-suit invalid. For the reasons set forth herein, and for the reasons set forth
in open court in opposition to Plaintiffs’ oral motion for judgment as a matter of law on February
8, 2012, this motion should be denied.
II.

ARGUMENT
A.

Governing Standard
1.

Judgment As A Matter Of Law Requires Consideration Of All
Evidence In The Light Most Favorable To Defendants.

Federal Rule of Civil Procedure 50(a)(1) provides:
If a party has been fully heard on an issue during a jury trial and
the court finds that a reasonable jury would not have a legally
sufficient evidentiary basis to find for the party on that issue, the
1

Plaintiffs filed their written brief in the afternoon on February 8, 2012. Because closing
arguments are scheduled for this morning, February 9, 2012, Defendants have endeavored to
provide this opposition as quickly as possible to assist the Court. Accordingly, the citations
provided herein are exemplary in nature and this filing is not a waiver of any legal or factual
position.

1

court may: (A) resolve the issue against the party; and (B) grant a
motion for judgment as a matter of law against the party on a claim
or defense that, under the controlling law, can be maintained or
defeated only with a favorable finding on that issue.
Fed. R. Civ. P. 50(a). The standard for judgment as a matter of law is the same as that for
granting summary judgment, including the requirement that “the court must draw all reasonable
inferences in favor of the nonmoving party, and it may not make credibility determinations or
weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 149-50 (2000).
In other words, the court “should give credence to the evidence favoring the nonmovant” and
“must disregard all evidence favorable to the moving party that the jury is not required to
believe.” Id. at 151.
B.

There Is Extensive Evidence From Which A Reasonable Jury Could Find
The Patents Invalid As Anticipated by Viola.

Plaintiffs’ motion is merely over a page-long recitation of law with no attempt to apply
that law, followed by eight bullets conclusorily alleging that insufficient evidence has been
presented regarding certain claim limitations and, even less specifically, whole statutes, without
any further explanation. This fails to provide Defendants sufficient notice of the particular
evidentiary deficiency alleged by Plaintiffs that is the basis of Plaintiffs’ motion, and should for
that independent reason be denied.
1.

There Is Legally Sufficient, Clear and Convincing Evidence That
Viola Discloses Each of the Asserted Claims.

“A patent is invalid for anticipation if a single prior art reference discloses each and every
limitation of the claimed invention.” Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373,
1377 (Fed. Cir. 2003). The evidence presented at trial is more than sufficient for a reasonable
jury to conclude that Viola anticipates each limitation of the asserted claims. This includes the
testimony of Messrs. Tim Berners-Lee, David Raggett, Karl Jacob, and Scott Silvey, in addition

2

to Mr. Pei Wei himself, all of whom confirmed that Viola discloses the claimed inventions
before September 7, 1993 (Plaintiffs’ unsubstantiated and uncorroborated alleged date of
conception) and certainly before October 16, 1993 (one year before the patent filing date). See,
e.g., Trial Tr. of Feb. 7 (AM) at 48-59 (Berners-Lee discussing Viola and the WWW Wizards
demonstration); Trial Tr. of Feb. 7 (AM) at 110:18-111:9, 116:10-117:4 (Raggett discussing
WWW Wizards); Trial Tr. of Feb. 7 (PM) at 7-15 (Silvey recalling May 7, 1993 demo of Viola
to Sun including Karl Jacobs); Trial Tr. of Feb. 7 (PM) at 15 (Silvey recalling May 7, 1993 demo
of Viola to Usenix); Trial Tr. of Feb. 7 (PM) at 17 (Silvey recalling July 1993 demo of Viola at
WWWW Conference); 71-76 (Wei describing publication of Viola source code by FTP); Trial
Tr. of Feb. 7 (PM) at 79, 85 (Wei recalling May 7, 1993 demo); Trial Tr. of Feb. 7 (PM) at 86
(Wei describing WWWW Conference demo); Trial Tr. of Feb. 7 (PM) at 174-178 (Jacob
recalling May 7, 1993 demo).
It includes the testimony of Defendants’ expert Dr. Phillips who described, on a
limitation-by-limitation basis, how Viola discloses the asserted claims. See, e.g., Trial Tr. of
Feb. 8 (AM) at 43-62 (Phillips).
It also includes the Viola code admitted into evidence, including that authenticated by
Mr. Silvey and Mr. Wei. See, e.g., JDX 258, 272, 274, 276, 290 (10/16/93 Viola code), 291
(vplot), 292 (05/12/93 Viola code), 293 (08/12/93 Vplot code), 295 (5/27/93 Viola code); Trial
Tr. of Feb. 7 (PM) at 27-31 (Silvey recalling collecting and authenticating Viola code). Such
Viola code is evidence from which they should be allowed to conclude, standing alone, that the
limitations have been met by each one or all of those codebases.
Other documentary evidence likewise corroborates that Viola disclosed the limitations of
the claims, including for example: emails between Mr. Wei and the named inventor of the

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patents Mr. Michael Doyle, see, e.g., JDX 58, 61, 234, and 235; emails between Mr. Wei and
others in the industry, including the father of the World Wide Web and inventor of HTML, Mr.
Tim Berners-Lee, see, e.g., JDX 10; and articles and other documentary evidence about Viola,
see, e.g., JDX 56, 57, 95, 30, 237, 258, 16.
Plaintiffs suggested at oral argument that judgment as a matter of law of no invalidity
based on Viola is appropriate merely because Dr. Phillips did not “show” excerpts from that
code. But there is no requirement that “code” be shown by an expert for his testimony to be
relevant and helpful for a jury to conclude that each and every one of the limitations is met by
the record evidence, and Plaintiffs have cited none. See Fed. R. Evid. 702. But in any event,
Dr. Phillips did expressly discuss relevant aspects of code, including “the <VOBJF> tag,” and
did show other excerpts from the code. See, e.g., Trial Tr. Feb. 8 (AM) at 47-49, 127 (Phillips
direct, redirect).
2.

§ 102(a): There Is Sufficient Evidence For A Reasonable Jury To Find
That Viola Was Publicly Known And Used By Mr. Wei, Mr. Silvey,
Mr. Jacob, And Others Before The Date Of Invention.

As an initial matter, the Federal Circuit has rejected precisely the argument that
Plaintiffs’ make here, finding that “Wei not only demonstrated [Viola code dated May 27, 1993]
to two Sun Microsystems engineers without a confidentiality agreement (on May 7, 1993), but
only twenty-four days later (on May 31, 1993) posted [Viola code dated May 27, 1993] on a
publicly-accessible Internet site and notified a Sun Microsystems engineer that DX37 was
available for downloading.” Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1333 (Fed.
Cir. 2005). Indeed, the Federal Circuit found it error by the district court in that case not to
consider the same dated Viola code that has been admitted into evidence in this case. See JDX
292 (May 12, 1993 Viola code); JDX 295 (May 27, 1993 Viola code). Eolas should be bound

4

by the decisions in that case to which it was a party. On that basis alone Plaintiffs’ motion with
respect to this issue should be denied.
In any event, there is substantial evidence that Viola was publicly known and used before
Plaintiffs’ alleged conception date of September 7, 1993. For example, Mr. Wei testified that he
demonstrated Viola multiple times, long before the priority date of the patents-in-suit. See, e.g.,
Trial Tr. of Feb. 7 (PM) at 71-76, 78:8-80:5, 85:19-87:2 (Wei). This includes the testimony of
Mr. Wei that he demonstrated Viola on May 7, 1993, to Sun and Usenix and on July 28-30, 1993
at the World Wide Web Wizards Conference, and that Viola was publicly distributed to Sun on
May 31, 1993 and by FTP on October 16, 1993. See, e.g., Trial Tr. of Feb. 7 (PM) at 69 (Wei
testifying that he and others had used Viola long before the priority date of the patents-in-suit);
Trial Tr. of Feb. 7 (PM) at 80:16-89:11; Trial Tr. of Feb. 7 (AM) at 15:22-16:15 (Jacob testifying
to seeing “interactive program object embedded in a Web page” in Viola demo). As further
amplified in the record, it is corroborated by the testimony of Prof. Berners-Lee, Mr. Bina, Mr.
Silvey and Mr. Jacob, as noted above. For example, Mr. Wei testified that he demonstrated
Viola to at least Mr. Jacob at Sun; Mr. Jacob confirmed this testimony. See, e.g., Trial Tr. of
Feb. 7 (PM) at 78:8-80:5 (Wei); Trial Tr. of Feb. 7 (PM) at 172:7-178:20 (Jacob).
It is also corroborated by the admitted physical and documentary evidence, including for
example the source code noted above, as well as contemporaneous email communications by and
between Mr. Wei and others in the public and with the named inventor of the patents-in-suit
Michael Doyle. See, e.g., JDX 29 (email from Dougherty to Wei), 30 (email from Dougherty
corroborating May 7, 1993 demos to Sun and Usenix), 32 (email from Wei to Kempf), 33 (email
from Dougherty to Wei), 35 (email from Dougherty to www-talk), 43 (email from Wei), 44
(email from Cahill to Wei), 61 (email from Wei to Doyle), 168 (email from Wei), 226 (email

5

from Dougherty to Berners-Lee), 227 (email from Dougherty to Wei and Silvey), 236 (email
from Wei to Kempf), 239 (emails between Kempf, Wei, and Dougherty); JDX 95; JDX 237
(document corroborating attendees of WWWW Conference); JDX 258 (Wei email of publicly
distribution); JDX 16 (Wei email to Andreessen); JDX 57 (Viola article).
Mr. Wei’s demonstrations were not limited by any nondisclosure agreements or the like.
See, e.g., Trial Tr. of Feb. 7 (PM) at 14:7-15:6 (Silvey). Although Mr. Wei continued to
develop and, thus, make changes to the Viola code after this demonstration, that does not negate
its status as a public use. See Eolas, 399 F.3d at 1334. Furthermore, Mr. Wei’s demonstrations
were not “experimental” because Mr. Wei was not attempting to see how Viola worked or have
someone test its features; rather, the purpose of, for example, the Sun demonstration was to try to
partner with Sun to distribute and promote Viola. See, e.g., Trial Tr. of Feb. 7 (PM) at 86
(Wei); Trial Tr. of Feb. 7 (PM) at 148 (Silvey). Mr. Wei did not actively conceal his invention;
on the contrary, he demonstrated it numerous times. See Trial Tr. of Feb. 7 (PM) at 86 et. seq.
Moreover, the evidence and testimony presented at trial establishes that no jury could
find that Plaintiffs’ alleged date of invention was September 7, 1993 — rather the only evidence
presented that discloses and shows conception of essential limitations in the patent, including for
example an “embed text format,” is the patent application itself, which was filed on October 17,
1994, and as noted below, the evidence establishes even that disclosure provided insufficient
written description of the claimed “embed text format,” among other limitations. See, e.g., PX
21 (notebook page relied upon for conception date); Trial Tr. of Feb. 6 (PM) at 161-162,
(Doyle admitting PX 21 missing “embed text format,” “browser,” “hypermedia documents,” user
interaction, embedded interactive objects, supercomputer, security, etc.); Trial Tr. of Feb. 8
(AM) at 40-42 (Phillips direct) (opining that notebook fails to evidence conception of at least

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“embed text format,” “browser,” “hypermedia documents,” “type information” and automatic
invocation).
3.

§ 102(b): There Is Sufficient Evidence For A Reasonable Jury To Find
That Viola Was In Public Use In This Country Before October 17,
1993.

As noted above, the Federal Circuit has already found that “Wei’s May 7, 1993
demonstration to two Sun Microsystems employees without confidentiality agreements was a
public use under section 102(b).” Eolas, 399 F.3d at 1334. And specifically that there is
sufficient evidence to support a finding that the May 12, 1993 code was publicly used at the May
7, 1993 demonstration. Id. at 1329. That is the same Viola code admitted in evidence in this
case as JDX 292 and supported by extensive evidence of record.
The record in this case also establishes that Viola was in public use in this country more
than one year before Plaintiffs’ October 17, 1994 filing date. This includes, for example, the
same testimony and evidence noted above for § 102(a). See, e.g., Trial Tr. of Feb 7 (PM) at
46:4-9 (Silvey testifying that members of the public had downloaded Viola from Mr. Wei’s FTP
site).
4.

§ 102(g)(2): There Is Sufficient Evidence For A Reasonable Jury To
Find That Mr. Wei Was The First To Invent, Was First To Reduce To
Practice With Reasonable Diligence, And Did Not Abandon, Conceal,
or Suppress.

The evidence presented establishes that, before the claimed invention of the patents-insuit, Viola was made in this country by Mr. Wei; that he did not abandon, suppress, or conceal it;
and that he conceived and reduced to practice with reasonable diligence at least as of May 1993.
See Trial Tr. of Feb. 7 (PM) at 68-69, 76-89, 97 (Wei describing conception, continuous
diligence, and reduction to practice of Viola from 1991-93); JDX 29 (email from Dougherty to
Wei), 30 (email from Dougherty, 32 (email from Wei to Kempf), 33 (email from Dougherty to
Wei), 35 (email from Dougherty to www-talk), 43 (email from Wei), 44 (email from Cahill to
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Wei), 46 (email from Wei), 48 (email from Wei to Frankston), 56 (email from Wei), 57 A brief
Overview of the VIOLA Engine, and its Applications), 60 (email from Doyle), 61 (email from
Wei to Doyle), 168 (email from Wei), 223 (email from Perry), 226 (email from Dougherty to
Berners-Lee), 227 (email from Dougherty to Wei and Silvey), 236 (email from Wei to Kempf),
239 (emails between Kempf, Wei, and Dougherty), 240 (Stanford slides from Wei presentation),
253 (Viola Diligence and Reduction to Practice emails), 277 (Viola Code Package), 278 (Viola
Code Package), 290 (Viola 931016), 291 (Vplot 930507), 292 (Viola 930512), 293 (Vplot
930812), 295 (Viola 930527); 35 U.S.C. § 102(g).

As noted above, this was not an

experimental use. See Trial Tr. of Feb. 7 (PM) at 69 et. seq. (Wei). Furthermore, Mr. Wei’s
Viola codebase, email exchanges, and public distributions are all evidence of continued
diligence. For example, Mr. Wei published a paper about Viola prior to the filing of the patentsin-suit. See Trial Tr. of Feb. 7 (PM) at 69 et. seq. (Wei); JDX 56, 57.
Indeed, the Federal Circuit noted that “Eolas’ arguments that Wei’s changes to the
functionality and architecture of [May 12, 1993 Viola code] show abandonment are unpersuasive
because such changes merely reflect improvements in advancing versions of software code.”
Eolas, 399 F.3d at 1334. The Court thus found that there was no evidence that Viola was
abandoned, suppressed, or concealed, and thus satisfies that requirement under § 102(g). Id. at
1333.
5.

Plaintiffs’ Motion Misleads Regarding Corroboration: There Is No
Requirement That Corroboration Be Established By Exact-Dated
Code, And There Is Ample Corroboration By Admitted Code.

Plaintiffs’ contention that Defendants’ failed to produce evidence to “corroborate its
witnesses’ testimony” that Viola anticipated and/or rendered obvious the asserted claims, either
alone or in combination with other prior art, is demonstrably false. There is ample evidence that
Viola was publicly known, used, distributed, demonstrated, reduced to practice, and diligently

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pursued in the several Viola codebases that has been admitted into evidence — including the
codebases recovered and authenticated by Mr. Silvey, see, e.g., Trial Tr. of Feb. 7 (AM) at 132147 — and that there is Viola code that pre-dates Plaintiffs’ alleged date of conception and that
is dated more than one year before filing of the patents-in-suit. See, e.g., JDX 290 (93/10/16),
291 (Vplot 93/05/07), 292 (Viola 93/05/12), 293 (Vplot 93/08/12), and 295 (Viola 93/05/27).
Indeed, Plaintiffs do not appear to dispute that fact. And as noted above, Defendants’ expert
witness Dr. Phillips has offered testimony that the admitted code, standing alone, can meet each
and every limitation of the asserted claims. See, e.g., Trial Tr. of Feb. 8 (AM) at 29-30, 38-39,
43-62 (Phillips direct).

This code is admitted non-testimonial evidence that needs no

corroboration.
Moreover, Defendants have presented substantial testimony from non-interested third
party witnesses, including persons having ordinary skill in the art such as Prof. Tim Berners-Lee,
Mr. Eric Bina, Mr. Scott Silvey, and Mr. Karl Jacob, that further corroborate that Viola, as
embodied in that code, disclosed the claimed limitations and was known and publicly
demonstrated before September 7, 1993 and before October 17, 1993. Each has testified that he
recalled personally observing public demonstrations of Viola, and Mr. Silvey even confirmed
that the code was a fair and accurate depiction of what he recalled observing. See, e.g., Trial Tr.
of Feb. 7 (AM) at 148-150.
The testimony evidence presented by Defendants is more than sufficient. Such evidence
has at least a tendency to make the fact that the Viola reference having all of the claimed
elements that witnesses like Mr. Jacob, Prof. Berners-Lee, and Mr. Bina personally recalled
seeing publicly demonstrated and distributed more probable than it would be without the
evidence.

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Furthermore, Plaintiffs’ counsel appeared to suggest at oral argument that third-party
witnesses’ testimony required corroboration by an exact-dated source code distribution. In all
events, as noted above, their testimony was corroborated by the code. The linkage between
code and testimony regarding the numerous public demonstrations and distributions of Viola is
further established by, for example, Mr. Silvey’s testimony that the May 12, 1993 code was an
accurate representation of what he recalled demonstrating to Sun engineers on May 7,
1993. See, e.g., Trial Tr. of Feb. 7 (AM) at 160 (Silvey stating that May 12 code is "a clear and
accurate representation of what we presented" at the May 7, 1993 demo).

Similarly, Mr. Wei

testified that the October 16, 1993 code and May 27, 1993 code were publicly distributed by
email dated within a day of those codebases. See, e.g., Trial Tr. of Feb. 7 (PM) at 71-76 (Wei
describing publication of Viola source code by FTP); 79, 85 (Wei recalling May 7, 1993
demo). Both of those codebases have been admitted into evidence, JDX 290 (10/16/93 Viola
code); JDX 295 (5/27/93 Viola code), and additional documentary evidence admitted in this case
provides further linkage between the witnesses’ testimony and the admitted code and public uses
of that code. See, e.g., JDX 30 (May 8, 1993 email to Dougherty corroborating May 7, 1993
demos to Sun and Usenix); JDX 237 (document corroborating attendees of WWWW
Conference); JDX 258 (Wei email of publicly distribution); JDX 16 (Wei email to Andreessen);
JDX 57 (Viola article).
The Federal Circuit has already rebuffed Plaintiffs’ implication in this case that each
Viola “codebase” must be linked in piecemeal fashion as though it were a separate invention:
“In this case, [Viola code dated May 27, 1993], which includes the same contested feature as
[Viola code dated May 7, 1993], represents an improved version of Wei’s invention, not an
entirely new invention, as the district court suggests. Because creating an improved version of

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an invention does not in any sense abandon the original invention, the district court erroneously
excluded [Viola code dated May 7, 1993] as prior art.” Eolas, 399 F.3d at 1333.
The Viola source code, Dr. Phillips’s expert witness testimony, Mr. Wei’s testimony, Mr.
Silvey’s testimony and the testimony of other non-interested parties is more than sufficient to
support a finding that Viola had been publicly known, used, demonstrated, and distributed.
C.

There Is More Than Sufficient Evidence For A Reasonable Jury To Find The
Patents Obvious.

Like Plaintiffs’ anticipation argument, Plaintiffs’ obviousness argument again lumps
together Defendants’ obviousness arguments into four bullets, and fails to provide any notice to
Defendants.
The jury has heard extensive unrebutted evidence regarding the background knowledge
of a person of ordinary skill in the art. That evidence included the testimony of multiple
witnesses, all of whom testified that embedded interactive objects were either known at the time
of the invention or would have been obvious to persons of skill in the art. See, e.g., Trial Tr. of
Feb. 7 (AM) at 48-59 (Berners-Lee discussing Viola and the WWW Wizards demonstration);
Trial Tr. of Feb. 7 (AM) at 110:18-111:9, 116:10-117:4 (Raggett discussing WWW Wizards);
Trial Tr. of Feb. 6 (PM) at 184-196 (Bina discussing code revision, functionality of Mosaic, and
www-talk posts).
1.

Plaintiffs Rely On Overruled Law And Inappropriately Seeks
Judgment On “Motivation To Combine.”

As an initial matter, Plaintiffs’ motion misstates the law of obviousness: the Supreme
Court has expressly overturned and rejected the requirement of a demonstration of teachings,
suggestions, or motivations to combine, the so-called “TSM test.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 414-16 (2007); see e.g., id. at 421 (“The same constricted analysis led the Court of
Appeals to conclude, in error, that a patent claim cannot be proved obvious merely by showing

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that the combination of elements was ‘obvious to try.’”).

Plaintiffs’ motion thus

mischaracterizes the governing law in arguing that “courts require the presentation of ‘evidence
from before the time of the invention in the form of some teaching, suggestion, or even mere
motivation.’” Pl.’s Mot. at 6 (emphasis added). Obviousness is a flexible inquiry. The Court
“must ask whether the improvement is more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417. “[A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” Id. at 420. Plaintiffs’ motion thus
seeks judgment on an issue which is no longer a requirement for the obviousness inquiry.2 .
2.

There Is Sufficient Evidence for a Reasonable Jury to Conclude that
the Patents are Obvious in View of Viola, Including Alone Or In
Combination With Other Executable Applications Including Vplot.

As noted above, Viola satisfied each and every limitation of the asserted claims. Even if
a reasonable jury were to find that Viola did not meet a particular limitation, there is more than
sufficient evidence in the record for a reasonable jury to find by clear and convincing evidence
that that claimed invention would have been obvious in view of Viola. To the extent there are
any differences between Viola and the claimed invention, those involve nothing more than the
“predictable use of known elements,” as supported by record including for example the
testimony of Dr. Phillips. See, e.g., Tr. of Feb. 8 (AM) at 38-40, 51, 59 (Phillips).
Indeed, denial of JMOL on obviousness is warranted by the Federal Circuit’s holding in
Eolas’s prior litigation, where it reversed the Northern District of Illinois’s grant of JMOL

2

Nonetheless, the trial record is loaded with evidence that persons skilled would have been
motivated to (and did) combine the building block technologies of the claims-in-suit within the
skill of those of ordinary skill in the art to arrive at the claimed inventions. This includes the
testimony of the third party witnesses, including Bina, Raggett, Tim Berners-Lee and others
about the skill level in the field as well as the expert testimony in this case. Those working in the
field were all working on making the nascent worldwide web more interactive.

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because Microsoft’s expert had discussed: “(1) the scope of [May 12, 1993 Viola code] and
[May 27, 1993 Viola code]; (2) the potential differences between [May 12, 1993 Viola code] and
[May 27, 1993 Viola code] and the claimed invention; and (3) the state of the art and the level of
skill in the art in 1993.” Eolas, 399 F.3d 1335. As described and cited above, Dr. Phillips’s
testimony in this case has provided at least that much, and therefore “provided sufficient
evidence to survive JMOL.” Id. Indeed, Dr. Phillips has provided testimony in this case that
far exceeds the threshold requirement to survive JMOL, as he expressly provided testimony that
Viola also supports a finding of obviousness, whereas the Federal Circuit denied JMOL on
obviousness even though Microsoft’s expert provided only direct testimony regarding
anticipation—such anticipation-focused information nevertheless “might also support an
argument of obviousness in the alternative.” Id.
For example, Plaintiffs allege that Viola does not disclose HTML because VOBJF is not
an HTML tag. To the extent that VOBJF is not an HTML tag, the evidence shows it would be
have been trivially obvious to combine the teaching of VOBJF with the use of HTML, already a
part of Viola. See, e.g., Trial Tr. of Feb. 8 (PM) at 55-57 (Phillips). Plaintiffs allege that Viola
does not constitute a distributed application because in certain examples, Viola and for example
vplot run on the same computer. To the extent that Viola does not constitute a distributed
application, it would have been trivially obvious to combine, for example, vplot with the
hypermedia network. See, e.g., Trial Tr. of Feb. 8 (PM) at 58-59 (Phillips).
Plaintiffs allege that Viola does not disclose a “hypermedia network” because certain
versions of Viola have non-standards-compliant HTTP code. To the extent that Viola does not
disclose a “hypermedia network,” the evidence shows that it would have been trivially obvious

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to combine Viola with the use of, for example, NFS, which all versions of Viola could
successfully use. See, e.g., Trial Tr. of Feb. 8 (PM) at 44-45 (Phillips).
The testimony of other witnesses in this case also provides ample evidence that the
patents are obvious in light of Viola. See, e.g., Trial Tr. of Feb. 7 (PM) at 17, 33-35 (Silvey
recalling demo of Viola with vplot, testifying that it would be obvious to combine the two); JDX
56 (depiction of plot.v in Viola).
3.

There Is Sufficient Evidence for a Reasonable Jury to Conclude that
the Patents are Obvious in View of MediaView, Including Alone Or In
Combination With Web Browsers And Distributed Applications
Including Mathematica.

The evidence and testimony presented also shows that MediaView is a browser
application that the Patent Office never once considered in connection with any prosecution or
reexamination of the patents-in-suit. See, e.g., Trial Tr. of Feb. 8 (AM) at 67, 122-23 (Phillips).
The evidence and testimony presented at trial is sufficient for a jury to conclude that the
patents-in-suit are obvious, including in combination with Viola, Mosaic, and other well-known
web browsers at the time, based on at least the admitted evidence and testimony from Dr.
Richard Phillips, the inventor of MediaView, the testimony of Mr. Daniel Sadowski, several
articles published by and about Dr. Phillips in 1990-1993, a video demonstration of MediaView
created in 1993, and other demonstrations given at SIGGRAPH Conferences. See, e.g., Trial Tr.
of Feb. 8 (AM) at 68-77 (Phillips describing claim-by-claim analysis for MediaView); Trial Tr.
of Feb. 7 (PM) at 183-84 (Sadowski recalling MediaView demo); JDX 5, 6, 7, 121, 184, 269,
210, and 145.
For example, one of Dr. Phillips’s 1991 articles discloses that it would be “obvious” to
implement “hyperlinking” in MediaView. See, e.g., Trial Tr. of Feb. 8 (AM) at 74-75 (Phillips);
JDX 5, 6, 7.

The evidence also establishes that it would have been obvious to combine

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MediaView with web browsers such as Mosaic and Viola. See, e.g., Trial Tr. of Feb. 8 (AM) at
37, 74-75 (Phillips). Likewise, the evidence shows that MediaView would render obvious all of
the asserted claims, either alone or in combination with distributed applications like
Mathematica. See, e.g., Trial Tr. of Feb. 8 (PM) at 76 (Phillips).
4.

There Is Sufficient Evidence for a Reasonable Jury to Conclude that
the Patents are Obvious in View of the EMBED Tag, Including Alone,
And/Or In Combination With Mosaic and Other Prior Art.

Eric Bina testified that he developed the Mosaic web browser, and that it supported inline
images in HTML documents at least by March 1993. See, e.g., Trial Tr. of Feb. 6 (PM) at
177:14-16, 186:21-187:4 (Bina).
Mr. Raggett testified that the www-talk community, many of whom used Mosaic, was
having discussion about embedding arbitrary things in web pages as early as March or April
1993. See, e.g., Trial Tr. of Feb. 7 (AM) at 97:13-15 (Raggett). In fact, Mr. Raggett proposed
an embed tag in HTML.

See, e.g., id. at 100:16-21 (Raggett).

The evidence shows that

HTML+ described the EMBED tag and taught that it could be used to embed arbitrary things in a
web page. See, e.g., Trial Tr. of Feb. 7 (AM) at 97:13-15. Mr. Raggett specifically testified
that he had in mind to use MIME content type to embed interactive objects. See, e.g., id. at
103:23-104:1 (Raggett). For example, Mr. Raggett was hoping that his work would “become a
standard that people could use to embed documents or do other things with the markup
language.” Id. at 105:7-10 (Raggett). Mr. Raggett’s testimony concerning the EMBED tag is
further supported by the documentary evidence. See, e.g., JDX 119, 42, 35, 152; PX 3; compare
to PX 1 (patent).
The evidence is sufficient for a reasonable jury to find the claimed inventions are obvious
in light of the EMBED tag, either alone or in combination with Mosaic or other prior art. See,
e.g., Trial Tr. of Feb. 8 (AM) at 35-36 (Phillips).

15

D.

Patentable Subject Matter.3

Whether a patent claim is directed to statutory subject matter is a question of law. E.g.,
Prometheus Labs. v. Mayo Collaborative Svcs., 628 F.3d 1347, 1353 (2010); see 35 U.S.C. §
101. Under recent Federal Circuit authority, and as construed and applied by Eolas, the patentsin-suit are invalid for lack of patent-eligible subject matter because they are “directed to an
abstract idea preemptive of a fundamental concept or idea that would foreclose innovation in this
area.” Dealertrack, Inc. v. Huber, No. 2009-1566, -1588, slip op. at 35 (Fed. Cir. Jan. 20,
2012). “Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept,
without more, is insufficient to render the claim patent eligible.” Id. at 36.
Just like in Dealertrack, “[t]he claims here do not require a specific application, nor are
they tied to a particular machine.” Id. at 36. Indeed, Plaintiffs sought and received a
construction of terms such as “client and “server” that was not limited to any particular machine
and “executable application” that do not require a specific application. See D.I. 914 (Claim
Construction Order). As construed, described, and applied by Eolas, the general purpose
computer claimed by Eolas does no more than the computers in Dealertrack and Gottschalk v.
Benson, 409 U.S. 63 (1972) to limit the scope of the claims and would thus cover a method for
viewing content using any existing or future-devised machinery without requiring any particular
any particular algorithm. See Dealtrack ("The claims here do not require a specific application,
nor are they tied to a particular machine."). Indeed, Plaintiffs’ actions confirm this, as they have
alleged infringement against a broad swath of unrelated defendants in diverse industries, and
have accused vastly different products of infringing the same claims—to the extent of alleging
that their claims cover the whole “interactive web.” Nor do these claims, as construed and
3

This section relates only to Amazon, CDW and Yahoo!, who maintained a defense under
Section 101, as set forth in the Pretrial Order.

16

applied, limit themselves to concrete steps requiring a specially programmed computer interface.
“[T]he claims here recite only that the method is ‘computer aided’ without specifying any level
of involvement or detail.” Id. at 36. Limiting such claims to one particular application, like the
World Wide Web, as Plaintiffs have previously argued (but that this Court has rejected), is
insufficient to confer patent eligibility. See Bilski v. Kappos, 130 S. Ct. 3218 (2010).
Accordingly, the patents are invalid under 35 U.S.C. § 101.
III.

CONCLUSION
For the foregoing reasons, Defendants’ respectfully requests the Court deny Plaintiffs’

Motion for Judgment as a Matter of Law.

17

Dated: February 9, 2012

/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]
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.
/s/ Jason Wolff (with permission)
David J. Healey
[e-mail]

18

FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
Telephone: [phone]
Facsimile: [phone]
Frank E. Scherkenbach
[e-mail]
Proshanto Mukherji
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
Jason W. Wolff
[e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
Telephone: [phone]
Facsimile:[phone]
Attorneys for Defendant
ADOBE SYSTEMS INCORPORATED
/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]
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
19

CDW LLC
/s/ Neil J. McNabnay (with permission)
Neil J. McNabnay (Bar No. 24002583)
[e-mail]
Carl E. Bruce (Bar No. 24036278)
[e-mail]
FISH & RICHARDSON P.C.
1717 Main Street., Suite 5000
Dallas, TX 75201
Telephone: [phone]
Facsimile: [phone]
John R. Lane (Bar No. 24057958)
[e-mail]
FISH & RICHARDSON P.C.
1221 McKinney Street, Suite 2800
Houston, TX 77010
Telephone: [phone]
Facsimile: [phone]
Proshanto Mukherji (pro hac vice)
[e-mail]
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02110-1878
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant
THE GO DADDY GROUP, INC.
/s/ Douglas E. Lumish (with permission)
Douglas E. Lumish (Bar No. 183863)
[e-mail]
Jeffrey G. Homrig (Bar No. 215890)
[e-mail]
Joseph H. Lee (Bar No. 248046)
[e-mail]
Parker C. Ankrum (Bar No. 261608)
[e-mail]
KASOWITZ, BENSON, TORRES &
FRIEDMAN LLP
333 Twin Dolphin Drive
Suite 200
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-453-5171
Jonathan Keith Waldrop
[e-mail]
KASOWITZ BENSON TORRES &
FRIEDMAN LLP
20

1360 Peachtree Street NE, Suite 1150
Atlanta, GA 30309
Telephone: [phone]
Facsimile: [phone]
Michael E. Jones (Bar No. 10929400)
[e-mail]
Allen F.Gardner (Bar No. 24043679)
[e-mail]
POTTER MINTON P.C.
110 N College , Suite 500
PO Box 359
Tyler, TX 75710-0359
Telephone: [phone]
Facsimile: [phone]
Brandon Stroy (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
James R Batchelder (pro hac vice)
[e-mail]
Han Xu (pro hac vice)
[e-mail]
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199
Telephone: [phone]
Facsimile: [phone]
Mark D. Rowland (Bar No. 157862)
[e-mail]
Rebecca R. Hermes (Bar No. 252837)
[e-mail]
Sasha Rao (Bar No. 244303)
[e-mail]
Lauren N. Robinson (Bar No. 255028)
[e-mail]
ROPES & GRAY LLP
1900 University Ave., 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendants
GOOGLE INC. and YouTube LLC
/s/ Christopher M. Joe (with permission)
21

Christopher M. Joe (Bar No. 00787770)
[e-mail]
Eric W. Buether (Bar No. 03316880)
[e-mail]
Brian A. Carpenter (Bar No. 03840600)
[e-mail]
Mark D. Perantie (Bar No. 24053647)
[e-mail]
Niknaz F. Bukovcan
[e-mail]
BUETHER JOE & CARPENTER, LLC
1700 Pacific Avenue, Suite 2390
Dallas, TX 75201
Telephone: [phone]
Facsimile [phone]
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]
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)
22

[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.

23

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). As such, this document was served on all counsel who
have consented to electronic services on this the 9th day of February 2012. Local Rule CV5(a)(3)(A).
/s/ Edward R. Reines
Edward R. Reines

24