Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1391

REPLY to Response to Motion re 1368 Opposed MOTION to Amend/Correct 1354 Judgment Pursuant to Rules 59(e) and 60(a) filed by Eolas Technologies Incorporated, The Regents of the University of California. (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’ REPLY IN SUPPORT OF THEIR OPPOSED MOTION TO
CORRECT JUDGMENT PURSUANT TO RULES 59(e) AND 60(a)

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Plaintiffs Eolas Technologies Incorporated (“Eolas”) and The Regents of the University
of California (“UC”) (collectively “Plaintiffs”) respectfully file this Reply in Support of Their
Motion to Correct Judgment Pursuant to Rules 59(e) and 60(a) [Dkt. No. 1368].
I.

ARGUMENT
Defendants contend that the Court’s order that “‘Plaintiffs take nothing’ from

Defendants” “resolved Plaintiffs’ infringement claims in favor of Defendants[.]” Resp. at 2. Yet,
neither the Court nor the jury heard any evidence or argument regarding infringement issues in
this case and, thus, reached no verdict or issued any order regarding Plaintiffs’ infringement
claims or Defendants’ counterclaims of noninfringement. Indeed, this Court expressly forbade
the parties from even “stat[ing] or imply[ing] that infringement has been conceded or that
infringement is yet to be determined by this or any other jury.” Dkt. No 1315. The jury’s
verdict, which Plaintiffs have challenged [Dkt. No. 1367] and upon which the Court’s final
judgment is based, was limited solely to the validity of the patents-in-suit.
Despite the foregoing, Defendants argue that Plaintiffs’ infringement claims should be
dismissed with prejudice, citing the Federal Circuit’s holding in Marrin v. Griffin. See Dkt. 1383
at 1. Defendants state simply that in Marrin, the district court had “granted summary judgment
that the patent-in-suit was invalid and, as a consequence, was not infringed” and that “‘[t]he
Federal Circuit affirmed, stating the rule that “[t]here can be no infringement of claims deemed
to be invalid.’” Id. at 1-2. What the Federal Circuit stated was merely a truism—there can be no
liability for the infringement of claims that are found invalid. Defendants ignore the fact that
validity and infringement are “separate and distinct issues.” See Pandrol USA, LP v. Airboss Ry.
Prods., 320 F.3d 1354, 1365 (Fed. Cir. 2003). Thus, while “‘an invalid claim cannot give rise to
liability for infringement, whether it is infringed is an entirely separate question capable of
determination without regard to its validity.’”
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Id. (quoting Medtronic, Inc. v. Cardiac

Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed. Cir. 1983)). See also Carman Indus., Inc. v. Wahl,
724 F.2d 932, 936 n.2, 220 USPQ 481, 484 n.5 (Fed. Cir. 1983) (“Although related, validity and
infringement are separate issues.”). The jury’s verdict regarding the invalidity of certain patent
claims, therefore, does not address the issue of whether Defendants’ accused products meet each
and every limitation of those patent claims—it just renders that issue moot.
Plaintiffs do not ask the Court to enter a corrected judgment holding Defendants liable for
infringement of claims deemed invalid by the jury. Instead, consistent with relevant, controlling
case law, Plaintiffs request the Court to enter a corrected judgment that dismisses Plaintiffs’
infringement claims based on Defendants’ invalidity affirmative defense and counterclaim—in
effect, holding those claims moot in light of the jury’s verdict. Such a judgment is verbatim of
what the Federal Circuit found appropriate in Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d
1349 (Fed. Cir. 2008), as discussed in Plaintiffs’ Motion at 1-2 and Exhibits 1 and 2 thereto.
There can be no doubt as to whether Plaintiffs’ proposed corrected final judgment is in
line with binding Federal Circuit case law. The Federal Circuit has repeatedly heard appeals of
litigants in which the district court had ruled on validity or unenforceability, but had declined to
rule on, or dismissed as moot, claims of infringement or noninfringement. See, e.g., MBO Labs.
Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1312 (Fed. Cir. 2010) (hearing appeal in which
the district court found the patent invalid, dismissed the motion for summary judgment of noninfringement as moot, and entered final judgment of invalidity); Revolution Eyewear, Inc. v.
Aspex Eyewear, Inc., 556 F.3d 1294, 1295 (Fed. Cir. 2009) (hearing appeal in which the district
court granted summary judgment of invalidity, dismissed as moot the other counterclaims for
non-infringement and unenforceability, and entered final judgment of invalidity); Halliburton
Energy Servs. v. M-I LLC, 514 F.3d 1244, 1248 (Fed. Cir. 2008) (hearing appeal in which the

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district court found all asserted claims invalid and that all other issues of infringement and
validity were moot); M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1344
(Fed. Cir. 2006) (hearing appeal in which the district court found the motion on infringement
moot, having found the patent unenforceable for inequitable conduct).
Finally, Defendants’ proposed Amended Final Judgment reveals the fallacy of their
arguments: While Defendants would have the Court dismiss “with prejudice” Plaintiffs’
infringement claims, they ask the Court to dismiss “as moot” their counterclaims—which
necessarily include their counterclaims of noninfringement. Dkt. No. 1383-1. Defendants’
disparate treatment of infringement and noninfringement claims is at odds with logic and the
Federal Circuit, given that claims of infringement and noninfringement are inextricably
intertwined. See, e.g., Polymer Indus. Prods. v. Bridgestone/Firestone, Inc., 347 F.3d 935, 938
(Fed. Cir. 2003) (holding “that a claim for a declaration of noninfringement makes a
counterclaim for patent infringement compulsory”).
II.

CONCLUSION
Based on the foregoing and the arguments set forth in Plaintiffs’ Motion, Plaintiffs

respectfully request that the Court correct its “final” judgment entered in this case, replacing it
with a judgment naming only Defendants Amazon.com Inc.; Google Inc.; J.C. Penney
Corporation, Inc.; Yahoo! Inc.; and YouTube, LLC and stating that Plaintiffs’ claims for
infringement and damages are dismissed based on Defendants’ invalidity affirmative defense and
counterclaim, and Defendants’ counterclaims other than for invalidity are hereby dismissed as
moot.

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Dated: April 9, 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. As such, counsel for Plaintiffs has served this Reply in electronic form
on all counsel who have consented to electronic service.
/s/ Gretchen K. Curran
Gretchen K. Curran

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