Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1383

RESPONSE in Opposition re 1368 Opposed MOTION to Amend/Correct 1354 Judgment Defendants' Response to Plaintiffs' Motion to Correct Judgment Pursuant to Rules 59(e) and 60(a) filed by Amazon.com Inc., Google Inc., J.C. Penney Corporation, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Exhibit 1, # 2 Text of Proposed Order)(Reines, Edward)

UNITED STATES DISTRICT COURT
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’ RESPONSE TO PLAINTIFFS’ MOTION TO CORRECT
JUDGMENT PURSUANT TO RULES 59(e) AND 60(a)

INTRODUCTION
Defendants Amazon.com Inc., Google Inc., J.C. Penney Corporation, Inc., Yahoo! Inc.,
and YouTube, LLC (“Defendants”) agree that the Court should amend its February 13, 2012,
Judgment [Dkt. No. 1354] because it does not resolve all claims against all parties and thus is not
final.

Defendants further agree that an amended judgment should dispose of Defendants’

counterclaims (other than those alleging patent invalidity) as moot.
The parties disagree, however, about whether Plaintiffs’ infringement claims should be
expressly dismissed “with prejudice” (even as the parties appear to agree that Plaintiffs’ claims
are extinguished).

They should.

Patent invalidity is an affirmative defense to patent

infringement, and all of Plaintiffs’ asserted claims have been fully and finally adjudicated invalid
after a week-long jury trial.
ARGUMENT
I.

PLAINTIFFS’ INFRINGEMENT CLAIMS SHOULD BE DISMISSED “WITH
PREJUDICE”
A.

The Jury Verdict And Existing Judgment Resolve Plaintiffs’ Infringement
Claims In Favor of Defendants

On February 9, 2012, the jury found that Defendants proved by clear and convincing
evidence that all asserted claims of the ’906 and ’985 Patents are invalid. Jury Verdict [Dkt.
No. 1353]. The Court’s February 13, 2012 Judgment [Dkt. No. 1354] orders that these claims
of the patents-in-suit are invalid and further directs that “Plaintiffs take nothing.” Plaintiffs’
Motion disputes neither the scope of the jury’s verdict nor the terms of the Court’s judgment.
There should be no dispute that Plaintiffs’ infringement claims based on these patents are
extinguished. In Marrin v. Griffin, 599 F.3d 1290 (Fed. Cir. 2010), the district court granted
summary judgment that the patent-in-suit was invalid and, as a consequence, was not infringed.
599 F.3d at 1293.

The Federal Circuit affirmed, stating the rule that “[t]here can be no

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infringement of claims deemed to be invalid.” Id. at 1295; see also Sonoscan, Inc. v. Sonotek,
Inc., No. 90-00357-A, 1990 WL 359369, at *4 (E.D. Va. Aug. 30, 1990) (declaring the patent-insuit invalid after a bifurcated trial of defendant’s on-sale bar affirmative defense and dismissing
“with prejudice” plaintiff’s infringement claim because “[plaintiff] has no claim under an invalid
patent”), aff’d, Sonoscan, Inc. v. Sonotek, Inc., 936 F.2d 1261 (Fed. Cir. 1991). The same rule
applies here with equal force. The jury’s invalidity verdict disposes of Plaintiffs’ claims of
infringement as a matter of law.
B.

Express Dismissal “With Prejudice” Of Plaintiffs’ Infringement Claims
Avoids Any Ambiguity Regarding Disposition of Plaintiffs’ Infringement
Claims

The Court ordered that “Plaintiffs take nothing” from Defendants. That order resolved
Plaintiffs’ infringement claims in favor of Defendants and is a final decision on the merits of
those claims. Nevertheless, when Defendants raised the need for an amended final judgment to
dispose of their counterclaims other than for invalidity, Plaintiffs would not agree that the form
of the amended judgment should also include an express dismissal “with prejudice” of Plaintiffs’
infringement claims. Although Plaintiffs have not suggested in their motion or otherwise that
their infringement claims should be dismissed without prejudice, entry of an amended judgment
dismissing Plaintiffs’ claims “with prejudice” will make express that the jury’s verdict has
resolved Plaintiffs’ infringement claims and that the judgment bars subsequent relitigation of
those claims. See Astron Indust. Assocs. v. Chrysler Motors Corp., 405 F. 2d 958, 960 (5th Cir.
1968) (“It is clear that a stipulation of dismissal with prejudice, or, for that matter, a dismissal
with prejudice at any stage of a judicial proceeding, normally constitutes a final judgment on the
merits which bars a later suit on the same cause of action”).
In particular, an explicit dismissal with prejudice will make clear that Plaintiffs cannot
assert, in any future litigation involving Defendants’ accused products and technology, claims of
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the patents-in-suit that they did not ultimately assert in this case. Such “claim splitting” is
barred by res judicata, Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., No. 2011-1147, slip op.
at 10 (Fed. Cir. Mar. 14, 2012), and an express dismissal with prejudice will avoid any confusion
by successors-in-interest to the patents, other courts, or anyone else. Amending the judgment
would thus remove any ambiguity about the final disposition of Plaintiffs’ infringement claims
and clarify the preclusive effect of the judgment.
CONCLUSION
For the foregoing reasons, Defendants respectfully request that the Court enter the
Amended Final Judgment [Dkt. 1386-1] proposed by Plaintiffs with the modification (indicated
herein by italics) that “Plaintiffs’ claims for infringement and damages are dismissed with
prejudice based on Defendants’ invalidity affirmative defense and counterclaim.”
convenience, Defendants submit a proposed form of judgment as Attachment A.

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For

Dated: March 29, 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/ Douglas E. Lumish (with permission)
Douglas E. Lumish (Bar No. 183863)
[e-mail]
Jeffrey G. Homrig (Bar No. 215890)

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[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
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]
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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)
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.

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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). As such, this document was served on all counsel who
have consented to electronic services on this the 29th day of March 2012. Local Rule CV5(a)(3)(A).
/s/ Edward R. Reines
Edward R. Reines

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