Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1411

RESPONSE in Opposition re 1410 SEALED PATENT MOTION TO DE-DESIGNATE THE SUPPLEMENTAL VALIDITY REPORT OF DEFENDANTS' VALIDITY EXPERT RICHARD PHILLIPS (Defendants' Response Seeking Enforcement of Protective Order and Opposing Plaintiffs' Motion to De-Designate Dr. Phillips' Supplemental Expert Report on Invalidity) filed by Amazon.com Inc., Google Inc., J.C. Penney Corporation, Inc., Yahoo! Inc., YouTube, LLC. (Doan, Jennifer) (Additional attachment(s) added on 6/13/2012: # 1 Text of Proposed Order) (gsg, ).

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 SEEKING ENFORCEMENT OF PROTECTIVE ORDER
AND OPPOSING PLAINTIFFS’ MOTION TO DE-DESIGNATE
DR. PHILLIPS’ SUPPLEMENTAL EXPERT REPORT ON INVALIDITY

I.

INTRODUCTION
Plaintiffs’ motion to de-designate Dr. Phillips’ Supplemental Expert Report (“Dr.

Phillips’ Report”) seeks to thwart this Court’s Protective Order by requesting that Dr. Phillips’
Report, a report never introduced into the public record, be made public through disclosure to the
United States Patent and Trademark Office (the “USPTO”) and used to target defendants in other
cases. Defendants are not required to make trial exhibits for future plaintiffs in future cases, and
any contrary rule would create a chilling effect on expert disclosure and discovery. For these
reasons, and for the reasons stated more fully below, Defendants seek enforcement of the Court’s
Protective Order and denial of Plaintiffs’ request.
II.

ARGUMENT
Defendants tried to resolve this issue without judicial intervention. Plaintiffs initially

asked for a copy of Dr. Phillips’ report to share with “[their] client as related to some pending
patent applications.” Dkt. No. 1410, Ex. B at 8 (J. Budwin email on May 9, 2012). On May 21,
2012, Plaintiffs asked for more. Plaintiffs now wanted to show the report to “[their] client and
Eolas’ patent prosecution counsel.” Dkt. No. 1410, Ex. B at 7 (J. Budwin email on May 21,
2012) (emphasis added). Although expressly prohibited under the Protective Order, Defendants
attempted to resolve the issue without Court intervention by supplying a redacted copy to be
shown to Plaintiffs’ client and patent counsel without waiving the report’s confidentiality or
protection under the Protective Order. Nonetheless, plaintiffs’ counsel retorted: “you cannot
place restrictions on who we share [Dr. Phillips’ Report] with.” Dkt. No. 1410, Ex. B at 2 (J.
Budwin email on June 5, 2012). Plaintiffs’ request circumvents or at least places a chilling effect
on the Court’s Protective Order.

DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 2

a. Plaintiffs’ Request Undermines This Court’s Protective Order
Now that a jury has invalidated the asserted claims of the Plaintiffs’ patents, Plaintiffs
seek a retrial of their patents’ validity in front of the USPTO. Rather than submit this Court’s
final judgment and the jury’s verdict on invalidity, Plaintiffs seek to submit Dr. Phillips’ Report
to the USPTO in an attempt to launder the issue of validity for future, related patents.1 This
Court’s Protective Order anticipates and expressly rejects Plaintiffs’ request to submit documents
containing Protected Materials to the USPTO. This Court’s Protective Order states in relevant
part:
Protected Material shall be used solely for this litigation and the
preparation and trial in this case, or any related appellate
proceeding, and not for any other purpose whatsoever, including
without limitation any other litigation, patent prosecution
(including reexamination) or acquisition, or any business or
competitive purpose or function.
Dkt. No. 423, § 6(a) (emphasis added); See also Dkt. No. 423, § 1(a) (“Protected Material
designated under the terms of this Order shall be used by a Receiving Party solely for this
litigation, and shall be used only for purposes of litigating this case, and shall not be used
directly or indirectly for any other purpose whatsoever.”). This limitation on Protected Material
is fundamental to facilitating “disclosure and discovery” the stated purpose of the Court’s order.
Dkt. No. 423, ¶ 4. Plaintiffs’ request to de-designate Dr. Phillips’ Report circumvents this
Court’s order that Plaintiffs may not disclose Protected Materials to the USPTO.
b. Plaintiffs’ Disclosure Would Chill Expert Disclosure and Discovery
The disclosure of expert opinions based on Protected Material will have a chilling effect
on discovery and expert disclosure in other cases. Under Federal Rule of Civil Procedure 26, a
1

To date, the public record available on the Patent Application Information Retrieval (PAIR)
system does not reflect that the University of California Regents or Eolas has submitted the
jury’s verdict or this Court’s judgment in this case to the USPTO for U.S. Patent No. 5,838,906,
U.S. Patent No. 7,599,985, or any of the other patents and applications in that patent family.
DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 3

testifying expert must provide a written report which includes:
i.
ii.
iii.

A complete statement of all opinions the witness will express
and the basis and reasons for them;
the facts or data considered by the witness in forming them;
any exhibits that will be used to summarize or support them . . . .

FED. R. CIV. P. 26(a)(2)(B). The purpose of exchanging expert reports is “to accelerate the
exchange of basic information about the case and to eliminate the paper work involved in
requesting such information” in an attempt to “sav[e] in time and expense”. FED. R. CIV. P. 26
advisory committee’s notes (1993 Amendment). Consistent with that reasoning, any expert
report based on or including Protected Material should be protected to the same extent as any
other document. This Court has already entered a Protective Order to the same effect. Dkt. No.
423, § 7(b) (making no distinction between forms of written discovery). Allowing the disclosure
of confidential expert reports discourages parties from disclosing critically important information
out of fear that it may be later disclosed to the public. As a result, the Court could expect an
increase in disputes over the contents in expert reports. The resulting disputes over expert
reports would cost the Court and the Parties time and money, undermining the very purpose of
the disclosure requirement. Therefore, Dr. Phillips’ Report should be protected by the Protective
Order.
c. Dr. Phillips Report is Properly Designated CONFIDENTIAL – ATTORNEYS’
EYES ONLY Under the Protective Order
Finally, Dr. Phillips’ Report is properly designated as CONFIDENTIAL –
ATTORNEYS’ EYES ONLY because it “contains and reflects” materials so designated
according to this Court’s Protective Order. Dkt. No. 423, § 9. During the course of this
litigation, Dr. Phillips reviewed and formed opinions based on material that was properly
designated as CONFIDENTIAL and CONFIDENTIAL – ATTORNEYS’ EYES ONLY. For

DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 4

example, Dr. Phillips’ Report discusses some of the details concerning the settlement between
Microsoft and Eolas in related litigation. See, e.g., Dkt. No. 1410, Ex. A at ¶ 893. Dr. Phillips’
Report contains other information the Plaintiffs designated confidential.2 See, e.g., Dkt No.
1410, Ex. A at ¶ 312 (D. Martin Transcript), ¶ 818-820 (emails Plaintiffs produced and
designated CONFIDENTIAL – ATTORNEYS’ EYES ONLY), ¶ 842 (M. Doyle Transcript).
Further, some Protected Material was designated CONFIDENTIAL – ATTORNEYS’ EYES
ONLY by parties who are no longer parties to the litigation. See Dkt. No. 1410, Ex. A at ¶ 901
(M. Sundermeyer Transcript). To complicate matters further, some Protected Material was so
designated CONFIDENTIAL – ATTORNEYS’ EYES ONLY by non-parties. See, e.g., Dkt. No.
1410, Ex. A at ¶ 147, 214, 221, 229, 249, 265 (C. McRae Transcript).
After going to great lengths to redact Dr. Phillips’ Report, Defendants found that neither
Defendants nor Plaintiffs could unilaterally de-designate Dr. Phillips’ Report since it “contains
and reflects” Protected Material as designated by Plaintiffs themselves, parties that are no longer
in the case, and third-parties over which the Defendants do not have control. Therefore, Dr.
Phillips’ Report is appropriately designated as CONFIDENTIAL – ATTORNEYS’ EYES
ONLY under the Protective Order and should not be publicly disclosed by Plaintiffs under this
Court’s Protective order.
III.

CONCLUSION
This Court’s Protective Order justly prevents disclosure of Dr. Phillips’ Report. Dr.

Phillips based his opinions on Protected Material and discussed some of that Protected Material
in his report. Since his report “contains and reflects” material which is CONFIDENTIAL and
CONFIDENTIAL – ATTORNEYS’ EYES ONLY under the Court’s Protective Order, it is
2

The materials designated confidential under the Protective Order in Eolas Tech Inc, et al. v.
Microsoft Corp, 1:99-cv-00626 (N.D. Ill.) were not disclosed to the USPTO. For example, the
settlement between Microsoft and Eolas was not published to the USPTO.
DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 5

appropriately designated as CONFIDENTIAL – ATTORNEYS’ EYES ONLY and should not be
disclosed under the Protective Order. Moreover, de-designating Dr. Phillips’ Report would
discourage liberal discovery and disclosures. Accordingly, Defendants seek enforcement of the
Protective Order and denial of Plaintiffs’ motion.

Respectfully submitted,
/s/ Jennifer H. Doan
Jennifer H. Doan (TX Bar No. 08809050)
Joshua R. Thane (TX Bar No. 24060713)
Shawn A. Latchford
(TXBar No. 24066603)
HALTOM & DOAN
6500 Summerhill Road, Suite 100
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Edward R. Reines
Jared B. Bobrow
Sonal N. Mehta
Aaron Y. Huang
Andrew L. Perito
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Doug W. McClellan
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002

DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 6

Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Otis Carroll (TX Bar No. 3895700)
Deborah Race (TX 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 DEFENDANT
AMAZON.COM INC. AND
YAHOO! INC.
/s/ Christopher M. Joe (with permission)
Christopher M. Joe
[e-mail]
Eric W. Buether
[e-mail]
Niky Bukovcan
[e-mail]
1700 Pacific, Suite 2390
Dallas, Texas 75201
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANT
J.C. PENNEY CORPORATION, INC.
/s/ Doug E. Lumish (with permission)
Douglas E. Lumish (pro hac vice)
[e-mail]
Jeffrey G. Homrig (pro hac vice)
[e-mail]
Jonathan K. Waldrop (pro hac vice)
[e-mail]
Joseph H. Lee (pro hac vice)
[e-mail]
Parker C. Ankrum (pro hac vice)
[e-mail]
KASOWITZ, BENSON, TORRES &
FRIEDMAN, LLP
1360 Peachtree St., N.E., Suite 1150

DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 7

Atlanta, GA 30309
Tel: [phone]
Fax: [phone]
James R. Batchelder (pro hac vice)
[e-mail]
Sasha G. Rao (pro hac vice)
[e-mail]
Mark D. Rowland
[e-mail]
Brandon Stroy (pro hac vice)
[e-mail]
Lauren Robinson (pro hac vice)
[e-mail]
Rebecca R. Hermes (pro hac vice)
[e-mail]
Han Xu (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, California 94303-2284
Telephone: [phone]
Facsimile: [phone]
Michael E. Jones (Bar No. 10929400)
[e-mail]
Allen F. Gardner (Bar No. 24043679)
[e-mail]
POTTER MINTON
A Professional Corporation
110 N. College, Suite 500
Tyler, TX 75702
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR DEFENDANTS
GOOGLE, INC. AND YOUTUBE, LLC

DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 8

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented
to electronic service were served with a true and correct copy of the foregoing by certified mail,
return receipt requested, on this the 10th day of June, 2012.
/s/ Jennifer H. Doan
Jennifer H. Doan

DEFENDANTS’ RESPONSE SEEKING ENFORCEMENT OF PROTECTIVE ORDER - Page 9