Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1392

REPLY to Response to Motion re 1367 MOTION for Judgment as a Matter of Law UNDER RULE 50(b) THAT THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT ARE NOT INVALID, OR IN THE ALTERNATIVE FOR A NEW TRIAL UNDER RULE 59 MOTION for Judgment as a Matter of Law UNDER RULE 50(b) THAT THE ASSERTED CLAIMS OF THE PATENTS-IN-SUIT ARE NOT INVALID, OR IN THE ALTERNATIVE FOR A NEW TRIAL UNDER RULE 59 filed by Eolas Technologies Incorporated, The Regents of the University of California. (Attachments: # 1 Exhibit 2)(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 RENEWED MOTION FOR
JUDGMENT AS A MATTER OF LAW UNDER RULE 50(b) THAT THE ASSERTED
CLAIMS OF THE PATENTS-IN-SUIT ARE NOT INVALID, OR IN THE
ALTERNATIVE FOR A NEW TRIAL UNDER RULE 59 (DKT. 1367)

TABLE OF CONTENTS
TABLE OF CONTENTS................................................................................................................. i
TABLE OF AUTHORITIES .......................................................................................................... ii
ARGUMENT IN REPLY ................................................................................................................2
I.

THE COURT SHOULD GRANT JMOL ON INVALIDITY.............................................2
A.

Every Ground for JMOL on Anticipation and Obviousness
Was Preserved..........................................................................................................2

B.

JMOL Should Be Granted as to Obviousness..........................................................2
1.
2.

There is insufficient evidence of obviousness based
on Mosaic.....................................................................................................4

3.

There is insufficient evidence of obviousness based
on MediaView..............................................................................................5

4.
C.

The objective evidence of nonobviousness requires
JMOL. ..........................................................................................................2

There is insufficient evidence of obviousness based
on Viola........................................................................................................7

JMOL Should Be Granted as to Anticipation. .........................................................8
1.
2.

II.

The single-reference issue requires JMOL. .................................................8
Elements are missing even from an “amalgam” of
Viola references. ..........................................................................................9

IN THE ALTERNATIVE, THE COURT SHOULD GRANT A
NEW TRIAL........................................................................................................................9

McKool 439779v6

i

TABLE OF AUTHORITIES
Page(s)
CASES
Agrizap, Inc. v. Woodstream Corp.,
520 F.3d 1337 (Fed. Cir. 2008)..................................................................................................3
Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
239 F.3d 1343 (Fed. Cir. 2001)..................................................................................................4
Ashland Oil v. Delta Resins & Refractories,
776 F.2d 281 (Fed. Cir. 1985)....................................................................................................3
The Barbed Wire Patent,
143 U.S. 275, 286-92 (1892) .....................................................................................................5
Blackboard, Inc. v. Desire2Learn, Inc.,
574 F.3d 1371 (Fed. Cir. 2009)..................................................................................................2
Dystar Textilfarben GmbH v. C.H. Patrick Co.,
464 F.3d 1356 (Fed. Cir. 2006)..................................................................................................3
Enzo Biochem, Inc. v. Calgene, Inc.,
188 F.3d 1362 (Fed. Cir. 1999)..................................................................................................4
Eolas Techs., Inc. v. Microsoft Corp.,
399 F.3d 1325 (Fed. Cir. 2005)..............................................................................................8, 9
Honeywell Int’l, Inc. v. Nikon Corp.,
672 F. Supp. 2d 638 (D. Del. 2009)...........................................................................................4
i4i Ltd. P’ship v. Microsoft Corp.,
670 F. Supp. 2d 568 (E.D. Tex. 2009).......................................................................................8
In re GPAC Inc.,
57 F.3d 1573 (Fed. Cir. 1995)....................................................................................................4
KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007)...................................................................................................................5
Motorola, Inc. v. Interdigital Tech. Corp.,
121 F.3d 1461 (Fed. Cir. 1997)..................................................................................................4
Muniauction, Inc. v. Thomson Corp.,
532 F.3d 1318 (Fed. Cir. 2008)..................................................................................................4

McKool 439779v6

ii

Newell Cos. v. Kenney Mfg. Co.,
864 F.2d 757 (Fed. Cir. 1988)....................................................................................................3
Rothman v. Target Corp.,
556 F.3d 1310 (Fed. Cir. 2009)..................................................................................................3
Schumer v. Lab. Computer Sys.,
308 F.3d 1304 (Fed. Cir. 2002)..................................................................................................4
Spreadsheet Automation Corp. v. Microsoft Corp.,
587 F. Supp. 2d 794 (E.D. Tex. 2007).......................................................................................4
W. Union Co. v. MoneyGram Payment Sys.,
626 F.3d 1361 (Fed. Cir. 2010)..................................................................................................2
WMS Gaming Inc. v. Int’l Game Tech.,
184 F.3d 1339 (Fed. Cir. 1999)..................................................................................................3

OTHER AUTHORITIES
FED. R. CIV. P. 50 .............................................................................................................................2

McKool 439779v6

iii

Rigorous evidence is required to invalidate a patent claim. Defendants’ JMOL response
confirms that they could not marshal such evidence—because the claims are not invalid—and
resorted time and again to misdirection in their efforts to hide their evidentiary failures.
Anticipation. Attempting to fill a hole in their expert’s Viola-related testimony,
Defendants argued at closing that a never-before-cited document satisfied the “type information”
element. They now suggest this was “proper” because it “identified [type information] for the
Doodle.v application example.” But this so-called “type information” is part of an INPUT tag,
DDEM3, and there is no testimony that all or part of any INPUT tag satisfies any claim
limitation. Phillips mentioned only the VOBJF tag, and in that context, the Court precluded him
from offering testimony about “type information” for Doodle.v. Dkt. 1384 at 29; Tr. 2/8AM
15:6-18:9. Defendants’ attempt to circumvent the Court’s holding on this point was improper.
But in any event, it did not save Defendants’ anticipation case. Phillips explicitly treated the
“entire collection” of various Viola references as a single piece of prior art—and then conceded
on cross that this was inappropriate. Tr. 2/8AM 38:6-20, 95:25-96:8. Defendants argue briefly
that the Eolas and i4i cases support such an “entire collection” approach to anticipation, but they
fundamentally mischaracterize the holdings in those cases. Dkt. 1384 at 16.
Obviousness. Implicitly acknowledging the failure to establish anticipation, Defendants
change direction in their response, and assert that the Viola arguments are now “[i]rrelevant”
because MediaView and Mosaic obviousness arguments are in fact “at the heart of [their]
invalidity case.” Dkt. 1384 at 1, 13. Defendants’ Mosaic argument, however, is supported by
three words of conclusory expert testimony: “I believe so.” Tr. 2/8AM 79:3. Even more
troubling, their MediaView argument is supported by a fabrication: Defendants repeatedly point

1
McKool 439779v6

to “MediaView source code” as providing the necessary substantial evidence of invalidity, but in
fact there is no such code in the record. Dkt. 1384 at 4-8; Tr. 2/8AM 64:21-22; JDX184.
These and the many other critical evidentiary deficiencies addressed below, and in
Plaintiffs’ opening brief, confirm that either JMOL or a new trial is necessary in this case.
ARGUMENT IN REPLY
I.

THE COURT SHOULD GRANT JMOL ON INVALIDITY.
A.

Every Ground for JMOL on Anticipation and Obviousness Was Preserved.

Defendants open their responsive brief with the near-frivolous argument that Plaintiffs’
motion “includes grounds not preserved under Rule 50(a).” Dkt. 1384 at 2. Prior to submission
of this case to the jury, Plaintiffs moved for JMOL on the grounds that legally insufficient
evidence supported a finding of either anticipation or obviousness on any basis, and with respect
to four prior art references in particular—individually or in any combination: Viola, MediaView,
Mosaic, and the embed tag (HMTL+). Tr. 2/8AM 140:8-155:11; Dkt. 1338 at 3-6. The law is
clear that even a “cursory motion” raising JMOL grounds of anticipation or obviousness with
respect to particular prior art references is sufficient to preserve all related anticipation or
obviousness arguments as to those references. W. Union Co. v. MoneyGram Payment Sys., 626
F.3d 1361, 1367-68 (Fed. Cir. 2010) (applying Fifth Circuit law); see also Blackboard, Inc. v.
Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) (same). Every JMOL ground asserted in
Plaintiffs’ Rule 50(b) motion, Dkt. 1367 at 1-4, was thus plainly preserved under Rule 50(a).
B.

JMOL Should Be Granted as to Obviousness.
1.

The objective evidence of nonobviousness requires JMOL.

In a departure from their Viola-focused closing argument at trial, Tr. 2/9 99:24-110:22,
Defendants now assert that the Viola arguments are “[i]rrelevant” because obviousness based on
MediaView and Mosaic is “at the heart of [their] invalidity case.” Dkt. 1384 at 1, 13. If that is

2
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true, then the objective evidence of nonobviousness takes on even greater significance. Plaintiffs’
opening brief demonstrated that: 1) the objective evidence of nonobviousness admitted at trial
was the most pertinent, probative, and unrebutted evidence available to the jury; and 2)
additional evidence presented by Plaintiffs was excluded from consideration, precluding any
permissible conclusion of obviousness as a matter of law. Dkt. 1367 at 17-18, 21-23.
In response, Defendants do not dispute that they failed to offer any rebuttal to the
extensive evidence of nonobviousness admitted at trial. Dkt. 1384 at 11-13. Nor do they dispute
that an obviousness determination is unsupportable—as a matter of law—when the fact-finder
has not considered all of the “objective evidence presented by the patentee.” WMS Gaming Inc.
v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).1 Instead they cite to cases suggesting
that nonobviousness evidence will not overcome “overwhelming” proof of obviousness. Agrizap,
Inc. v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008).2 These cases do not help
Defendants. As demonstrated below and in the opening brief, there is no “overwhelming” proof
of obviousness here. Dkt. 1367 at 18-21. And in any event, these cases confirm that even when
“a very strong prima facie case of obviousness” has been made, all of the nonobviousness
evidence still “must be considered” before an obviousness conclusion can be reached. Newell,
864 F.2d at 768. Because the jury was precluded from considering the objective license-related
evidence of nonobviousness presented by Plaintiffs, JMOL as to obviousness is required.3

1

See also Ashland Oil v. Delta Resins & Refractories, 776 F.2d 281, 306 (Fed. Cir. 1985) (“all relevant evidence
going to the issue of obviousness … must have been considered prior to reaching a conclusion on obviousness”);
Rothman v. Target Corp., 556 F.3d 1310, 1322 (Fed. Cir. 2009) (approving district court’s charge “that the jury
‘must consider’ objective indicia of nonobviousness, such as … licensing activity”); Dkt. 1367 at 17-18.
2

See also Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006) (“the evidence only
supports [an obviousness] conclusion”); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“a
very strong prima facie case of obviousness”); Dkt. 1384 at 11.

3

Defendants’ “nexus” argument misses on two levels. Dkt. 1384 at 12. First, it is incorrect—there is a clear nexus
between the licenses and the asserted claims because the licenses are only for the asserted patents. Dkt. 1367 at 23.
Second, it is irrelevant—Defendants’ own case law confirms that the “nexus” question simply goes to the weight

3
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2.

There is insufficient evidence of obviousness based on Mosaic.

Defendants’ assertion that “obviousness based on Mosaic with HTML+” was “at the
heart of [their] invalidity case,” Dkt. 1384 at 1, should tell the Court everything it needs to know
about the merits of that case. Phillips’ element-by-element testimony on this heart-of-the-case
issue is encapsulated in this exchange: “Q. And does the combination of Mosaic, plus HTML+
render all of the claims obvious …? A. I believe so.” Tr. 2/8AM 78:25-79:3 (emphasis added).
Defendants suggest that the Court can ignore the absence of relevant expert testimony because
one of Defendants’ fact witnesses talked generally about Mosaic, and another talked generally
about HTML+. Dkt. 1384 at 10-11. Defendants misapprehend the rigors of proving invalidity.
See Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997).
When “testifying on invalidity, an expert must compare the construed claims to the prior
art.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1325 (Fed. Cir. 2008) (internal quotes
omitted). This comparison must be done on a patent-by-patent, claim-by-claim, and element-byelement basis. See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1379 (Fed. Cir. 1999);
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001). Indeed, a
witness providing invalidity testimony must “explain in detail how each claim element is
disclosed in the prior art reference.” Schumer v. Lab. Computer Sys., 308 F.3d 1304, 1315-16
(Fed. Cir. 2002).4 Defendants are wrong to argue that expert testimony was not required to

accorded to nonobviousness evidence; that evidence still must be considered before an obviousness conclusion can
be reached. See In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); Dkt. 1384 at 13. The two district court cases
cited by Defendants also do not help them. Dkt. 1384 at 12. Spreadsheet did not involve obviousness questions, and
in Honeywell the district court ultimately granted summary judgment on anticipation grounds—so the obviousness
question presented here was never presented there. See Spreadsheet Automation Corp. v. Microsoft Corp., 587 F.
Supp. 2d 794, 800 (E.D. Tex. 2007); Honeywell Int’l, Inc. v. Nikon Corp., 672 F. Supp. 2d 638, 647 (D. Del. 2009).
4

Defendants suggest that Phillips need not have “explained ‘how’ [the prior art] satisfies the … elements.” Dkt.
1384 at 5, 8-9. The case law makes clear, however, that Phillips was not only required to provide such “how”
explanations, but to provide them “in detail.” Schumer, 308 F.3d 1304, 1315-16; Dkt. 1367 at 5, 16-17.

4
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establish invalidity in this case.5 Dkt. 1367 at 5, 17. But even if they were right, it would make
no difference. A claim may not be invalidated in the absence of testimony providing an elementby-element comparison of the claims as construed to the prior art at issue. And there is no such
testimony anywhere in this trial record—from expert or fact witnesses—with respect to either
Mosaic or HTML+. Nothing in Defendants’ response suggests otherwise. Dkt. 1384 at 4-5.
3.

There is insufficient evidence of obviousness based on MediaView.

Defendants’ argument that there is substantial evidence of obviousness based on
MediaView, Dkt. 1384 at 4-10, suffers from at least three critical flaws: first, it rests on flat-out
fabrications of the record evidence; second, it depends on a shell-game analysis of two separate
modes of the reference’s operation; and third, it fails to show that any of the claim elements
highlighted in Plaintiffs’ opening brief are satisfied by the reference. Dkt. 1367 at 19-20.
First, Defendants’ MediaView argument rests on fabricated evidence. Defendants
repeatedly assert that the “source code for MediaView” supports the verdict, and argue that
Phillips “went through an element-by-element claim analysis at a source-code level.” Dkt. 1384
at 4-8 (citing “source code” seven times). This is false—there is no MediaView source code in
the record. Indeed, Phillips testified that there is “no source code for MediaView 2 left. I have no
idea what happened to it.” Tr. 2/8AM 64:21-22. Phillips further made clear that his analysis was
not at a source-code level. Tr. 2/8AM 65:1-9. Defendants’ repeated claim that the verdict is
supported by source-code evidence is thus a fabrication. But it gets worse. Defendants also
5

Defendants suggest that KSR stands for the proposition that obviousness in this case “may be proved through
common sense.” Dkt. 1384 at 10 n.5. They are wrong. KSR simply warned against the application of “[r]igid
preventative rules that deny factfinders recourse to common sense.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007). It did not come close to holding that—in the absence of relevant expert testimony—this “jury could
understand for itself using common sense” how the source code from two separate computer programs might have
been combined to satisfy every element of every claim asserted in this complex case. Dkt. 1384 at 11. Furthermore,
any oral testimony—whether from Defendants’ expert or their fact witnesses—is insufficient to invalidate the
asserted claims in the absence of corroboration. The Barbed Wire Patent, 143 U.S. 275, 286-92 (1892). This is true
for the testimony relating to Mosaic, MediaView, and Viola.

5
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repeatedly point to a demonstrative, DDEM162, that they say shows “‘ViewCell’ and ‘TIFF
button’ code” allegedly “excerpt[ed]” from JDX184. Dkt. 1384 at 5, 6, 7. This misleads on
multiple levels. First, it is not source code—it is a snippet of formatting information such as used
in MediaView documents. Tr. 2/8AM 69:16-21; JDX 5 at 26. Second, it is not excerpted from
JDX184—as far as Plaintiffs can tell, it is excerpted from a MediaView 3 document that was
created in 2011 and never admitted at trial.6 The demonstrative snippet upon which Defendants
rely to show the existence of an externally-linking “TIFF button” is thus nowhere in evidence.
Second, Defendants’ MediaView argument is a shell game. As Defendants concede,
Phillips testified that MediaView could be used in two separate modes: an internal-component
mode in which a “custom” 3D dataset could be “insert[ed] in a document” and then “rotate[d] …
within the window,” and an external-component mode in which “an external program … called
Mathematica” could be opened in a new window by “click[ing]” on a link. Tr. 2/8AM 72:473:21; JDX5. The first internal-component mode involves no executable application or object
external to the file. The second external-component mode involves something external to the file,
but that mode practices the prior art—upon clicking a link, the program is opened and accessed
in a new window. Ex. 2; JDX121. Simply adding HTML tags to either mode of operation plainly
does not get Defendants to the invention at issue. Defendants’ shell game consists of pointing to
the first mode as evidence that MediaView satisfies, e.g., the “automatically invoke” element,
and pointing to the second mode as evidence that it satisfies, e.g., the “external to the file”
elements. Dkt. 1384 at 7-8. But of course the claims require that these elements work together: a
browser must automatically invoke an executable application that is external to the file (and in
response to an embed text format). PX2. MediaView does not work that way. Dkt. 1367 at 20.
6

Phillips’ obviousness opinion was based on MediaView 2, Tr. 2/8AM 64:7-11, and MediaView 2 will not even
open the MediaView 3 document from which Defendants’ snippet was excerpted.

6
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Third, Defendants’ MediaView argument fails to fill any of the four holes identified in
Plaintiffs’ opening brief, Dkt. 137 at 19-20: 1) Defendants cite three “ViewCell” references in
the record, but none state that “ViewCell” specifies the location of at least a portion of an
object;7 2) Defendants cite one “TIFF button” reference in the record, but it does not state that
“TIFF button” is used to identify and locate executable applications;8 3) Defendants again cite
the one “TIFF button” reference in the record, but it does not state that “TIFF button” is
associated with objects;9 4) Defendants cite one final “ViewCell” reference in the record, but it
does not state that an executable application is invoked in response to identifying the
“ViewCell.”10 In short, Defendants have identified no evidence, much less clear and convincing
evidence, that MediaView satisfies every element but “the HTML issue.” Dkt. 1367 at 19.
4.

There is insufficient evidence of obviousness based on Viola.

Plaintiffs’ opening brief demonstrated that there is insufficient evidence of obviousness
based on Viola, and Defendants offer only conclusory assertions in response. Dkt. 1367 at 18-19;
Dkt. 1384 at 25-26. Critically, Phillips never provided an element-by-element analysis with
7

Dkt. 1384 at 6; Tr. 2/8AM 70:4-11 (Phillips referencing an image not in evidence—“what we’re seeing here is the
word view cell”); Tr. 2/8AM 70:12-25 (Phillips discussing whether ViewCell corresponds to a location in the
document—a different claim limitation); JDX 7 (article noting that the MediaView Cell class “implements the
methods needed for cutting, copying, pasting….”). None of these references even specifies what the object is, let
alone identifies its location. Defendants also cite JDX5 and Tr. 2/8AM 71:1-14, but those references do not mention
“ViewCell,” and so cannot possibly show that ViewCell meets this limitation.

8

Dkt. 1384 at 6; Tr. 2/8AM 71:15-25 (Phillips referencing an image not in evidence—“TIFF button is in this case
the type information that MediaView uses”). This reference says nothing about whether or how TIFF button is used
to identify and locate anything. Defendants also cite JDX5, JDX184, but neither of these exhibits use or mention
“TIFF button” in connection with Mathematica—the only executable application identified by Phillips.
9

Dkt. 1384 at 7; Tr. 2/8AM 71:15-25 (Phillips referencing an image not in evidence—“TIFF button is in this case
the type information that MediaView uses”). This reference says nothing about whether or how TIFF button is
associated with objects. Defendants also cite JDX5, JDX7, and JDX121, but while one exhibit mentions buttons,
JDX7 at 7, and another TIFF files, JDX5 at 5, none of these exhibits mentions or discusses “TIFF button.”
10

Dkt. 1384 at 7; JDX7 at 3-4 (article noting that the “MediaViewCell class … implements the methods needed for
cutting, copying, pasting and writing/reading multimedia components to and from files”). This reference says
nothing about whether or how MediaView invokes an executable application in response to identifying the
ViewCell. Defendants also cite JDX5 and Tr. 2/8AM 72:1-15, but neither of those references mentions or discusses
“ViewCell,” and so cannot show that an executable application is invoked in response to identifying the ViewCell.

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respect to any particular version of Viola—he treated all the versions as one reference. There is
thus no clear evidence supporting the conclusion that any particular version could be combined
with any other particular version to render any particular claim obvious. Dkt. 1367 at 18; Tr.
2/8AM 38:6-20, 78:4-11. And nowhere did Phillips testify that any particular Viola reference
could be combined with some other piece of prior art for obviousness purposes.
C.

JMOL Should Be Granted as to Anticipation.
1.

The single-reference issue requires JMOL.

The anticipation question should be an easy one for the Court, which is doubtless why
Defendants now assert that the Viola-related arguments are “Irrelevant.” Dkt. 1384 at 13. The
law requires that “for a claim to be anticipated, every limitation must be found in a single prior
art reference.” i4i Ltd. P’ship v. Microsoft Corp., 670 F. Supp. 2d 568, 586-87 (E.D. Tex. 2009).
There is no testimony in the record that any single Viola reference contains every limitation of
any asserted claim. It is simply not there. Dkt. 1367 at 5-8; Dkt. 1384 at 13-17. Phillips explicitly
treated the “entire collection” of Viola references “as a single piece of prior art”—and then
conceded on cross that this approach was “not proper.” Tr. 2/8AM 38:6-20, 95:25-96:8
(emphasis added). Defendants argue that the Federal Circuit approved such an approach in
Eolas, Dkt. 1384 at 15, but they are wrong. The court addressed two Viola code bases in that
appeal—“DX34” (from May 12, 1993) and “DX37” (from May 27, 1993)—and explicitly
treated them as separate references for invalidity purposes, ultimately remanding “for
proceedings to consider whether DX34 is prior art and, if so, whether it invalidates the ’906
patent.” Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1333-35 (Fed. Cir. 2005).11 Thus,

11

Defendants also misleadingly suggest that this Court approved an “amalgam” approach to anticipation in i4i. Dkt.
1384 at 16. They are wrong. The Court based its relevant holding in i4i on the conclusion that different versions of a
“Rita” program were separate references, and then simply noted that its holding would not change even counterfactually “assuming the amalgam of Rita references” could be considered one reference. 670 F. Supp. 2d at 586-87.

8
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as Phillips conceded, the Viola code bases must “be considered one at a time on their own
merit.” Tr. 2/8AM 95:25-96:8. Defendants cannot point to any such testimony in the record.
2.

Elements are missing even from an “amalgam” of Viola references.

Nothing in Defendants’ response serves to fill the four Viola-related holes identified in
Plaintiffs’ opening brief. Dkt. 1367 at 8-14. With respect to “embed text format specifies the
location of at least a portion of an object,” Defendants suggest that Silvey “explained how
Viola” satisfied this limitation. Dkt. 1384 at 17. But as shown above, the law requires testimony
comparing this claim element as construed to the particular reference at issue. Silvey was not
qualified to provide, and did not attempt to provide, such testimony. Tr. 2/7PM 9:1-17; 10:1711:7. With respect to “type information to identify and locate,” Defendants do not dispute that
the only “type information” identified by Phillips—“Plot.V … after the VOBJF”—appears
nowhere in the Alpha reference that they assert reflects Viola’s final reduction to practice.12 Dkt.
1384 at 17-20. With respect to “distributed application,” Defendants do not dispute that
Phillips provided only an obviousness opinion. And with respect to “HTML tags,” Defendants
do not even attempt to argue that “P tag” could satisfy the claim language. Dkt. 1384 at 21.13
II.

IN THE ALTERNATIVE, THE COURT SHOULD GRANT A NEW TRIAL.
Defendants provide no substantive response to two of the three grounds offered by

Plaintiffs in support of a new trial: the verdict is against the great weight of the evidence; and
12

Defendants argue that the Federal Circuit in Eolas “rejected” the proposition that the Alpha code abandoned the
only “type information” identified by Phillips. Dkt. 1384 at 24. They are wrong. In discussing the differences
between DX34 and DX37, the Federal Circuit reasoned that “DX37, which includes the same contested feature as
DX34, represents an improved version of Wei’s invention.” Eolas, 399 F.3d at 1333 (emphasis added). The point
here, of course, is that the Alpha code does not include the same contested feature as the earlier code bases.
Furthermore, nothing in Defendants’ response suggests that the name of a file can be “type information.”

13

Defendants’ effort to resuscitate their “public knowledge or use” position is somewhat surprising, given their
concession to the Court that this is “a 102(g), 103 case … [w]e’ve never had a 102(b) case.” Tr. 2/7PM 145:11-15;
Dkt. 1367 at 15. But in any event, Defendants have no answer to a fundamental and intractable problem with their
position: Phillips only opined that the “entire collection” of Viola code bases was anticipatory, and there is no
evidence that this “entire collection” was ever publicly known or used as such. Dkt. 1367 at 15; Dkt. 1384 at 22.

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relevant nonobviousness evidence was excluded. Dkt. 1367 at 28-30. Defendants’ new emphasis
on the MediaView and Mosaic obviousness arguments “at the heart of [their] case,” Dkt. 1384
at 1, only highlights the lack of clear and convincing evidence supporting the verdict—Phillips’
MediaView 2 opinion centered on an excerpt from a MediaView 3 document that is not in the
record, and his Mosaic-combined-with-HTML+ opinion centered on the three words “I believe
so.” Tr. 2/8AM 78:25-79:3; DDEM162. Weighed against the detailed testimony of Plaintiffs’
expert, along with the extensive and unrebutted objective evidence of nonobviousness submitted
to the jury, Dkt. 1367 at 28-29, Defendants’ evidence is plainly insufficient to establish
invalidity. The fact that the jury was precluded from considering additional probative evidence of
nonobviousness further confirms that either JMOL or a new trial is necessary in this case.
With respect to the third ground for a new trial—jury confusion—Defendants attempt to
put a brave face on their decision to spend most of their trial time offering witnesses who could
not help the jury with its fundamental task of comparing the construed claim elements to the
prior art at issue. Dkt. 1384 at 27-29; Dkt 1367 at 25-28. But the jury was plainly confused: it
could not reasonably have based its verdict on the three words “I believe so,” nor on the
externally-linking “‘TIFF button’ … code” that is not in evidence, nor on the Viola source code
that it was unable to access. Defendants played a game of smoke and mirrors with the evidence,14
and the jury lost its way. If the Court denies JMOL, it should grant a new trial.

14

Surprisingly, Defendants suggest that their seriously misleading “type information” argument at closing was
“proper” because it “identified [type information] for the Doodle.v application example”—which the Court had
precluded their expert from identifying at trial. Dkt. 1384 at 29; Tr. 2/8AM 15:6-18:9. Apparently Defendants
believe that, when an expert has been precluded from offering certain testimony to the jury at trial, it is proper for
counsel to offer that testimony to the jury at closing. In any event, the “TYPE=Doodle” language counsel pointed to
at closing came after an “INPUT” tag, not a “VOBJF” tag, DDEM3—and the INPUT tag relates to an internal
operation. “TYPE=Doodle” never identifies an executable application external to a browser, which is why no
witness, expert or otherwise, ever pointed to the “INPUT” tag—or anything coming after it—as satisfying any
element of any asserted claim. Dkt. 1367 at 27.

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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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McKool 439779v6

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 on April 9, 2012. As such, counsel for Plaintiffs has served this Motion
in electronic form on all counsel who have consented to electronic service.
/s/ Josh Budwin
Josh Budwin

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