Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 286

NOTICE by The Go Daddy Group, Inc. of Subpoena Duces Tecum to the Patent Law Offices of Michael E. Woods (Bunch, James)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION EOLAS TECHNOLOGIES INCORPORATED, Plaintiff, Civil Action No. 6:09-CV-446 (LED) v. ADOBE SYSTEMS INC., et al., Defendants. GO DADDY'S NOTICE OF SUBPOENA DUCES TECUM J u r y Trial Demanded

PLEASE TAKE NOTICE, pursuant to Fed. R. Civ. P. 45(b)(1), that Defendant The Go Daddy Group, Inc. intends to serve the subpoena duces tecum attached hereto as Exhibit 1 upon The Patent Law Offices of Michael E. Woods ("Woods"). Woods is instructed to produce and permit inspection and copying of the Materials set forth in Exhibit 1 on June 4, 2010 at 9:00 A.M. PST at the offices of Fish & Richardson P.C., 500 Arguello Street, Suite 500, Redwood City, CA 94063 or at another location mutually agreeable to the parties.

Dated: May 17, 2010

Respectfully submitted,

By: /s/ Neil J. McNabnay Thomas M. Melsheimer [e-mail] Texas Bar No. 13922550 Neil J. McNabnay [e-mail] Texas Bar No. 24002583 Tim K. Brown [e-mail] Texas Bar No. 24043575 Chad B. Walker [e-mail] Texas Bar No. 24056484 FI SH & RICHARDSON P.C. 1717 Main Street, Suite 5000 Dallas, TX 75201 [phone] (Telephone) [phone] (Facsimile) Counsel for Defendant and Counterclaim Plaintiff THE GO DADDY GROUP, INC.

GO DADDY'S NOTICE OF SUBPOENA DUCES TECUM

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C E R T I F I C A T E OF SERVICE The undersigned hereby certifies that a true and correct copy of the above and foregoing document has been served on May 17, 2010 to Plaintiff's counsel of record who are deemed to have consented to electronic service via the Court's CM/ECF system per Local Rule CV-5(a)(3).

/s/ J. Rodrigo Fuentes J. Rodrigo Fuentes

GO DADDY'S NOTICE OF SUBPOENA DUCES TECUM

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EXHIBIT 1

06/01/2010 12: 0 P. . 06/04/2010 9:00 0A.M. MPST

SCHEDULE A
DEFINITIONS 1. "The `906 Patent" means United States Patent No. 5,838,906, entitled

"Distributed Hypermedia Method for Automatically Invoking External Application Providing Interaction and Display of Embedded Objects Within a Hypermedia Document." 2. "The `985 Patent" means United States Patent No. 7,599,985, entitled

"Distributed Hypermedia Method and System for Automatically Invoking External Application Providing Interaction and Display of Embedded Objects Within a Hypermedia Document." 3. "And" shall be treated as a synonym for "or" and vice versa. "Any" and "each"

shall be understood to include one another and "all" whenever necessary to expand the scope of the request. The words "all," "every," "any," and "each" shall include each other whenever possible to expand the scope of the request. 4. "Attorney" includes attorneys (both in-house and outside counsel), paralegals, and

their secretaries and other support staff whenever necessary to expand the scope of the request. 5. "Communication," "communicated," or "communications" means any contact or

act by which information or knowledge is transmitted or conveyed between two or more Persons and includes, without limitation: (1) written contact, whether by letter, memoranda, e-mail, telegram, telex, or other Document; (2) oral contact, whether by face-to-face meetings, telephone conversations or otherwise; and, (3) nonverbal acts intended to communicate or convey any meaning, understanding or other message. 6. "Document" and "Documents" are used herein in their broadest sense as set forth

in the Federal Rules of Civil Procedure. These words mean and include all written, printed, typed, recorded, or graphic matter of every kind and description, both originals and copies, and Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods 1

all attachments and appendices, within your possession, custody or control. Without limiting the foregoing, the terms "Document" and "Documents" shall include all agreements, contracts, communications, correspondence, letters, opinion letters, telegrams, telexes, telefaxes, messages, memoranda, records, reports, books, summaries or other records of telephone conversations or interviews, summaries or other records of personal conversations or interviews, minutes, summaries, other records of meetings and conferences, statements obtained from witnesses, summaries or other records of negotiations, other summaries, diaries, diary entries, calendars, appointment books, time records, instructions, work assignments, forecasts, progress reports, statistical data, statistical statements, financial statements, work sheets, work papers, drafts, graphs, charts, tables, accounts, analytical records, consultants' and experts' reports, appraisals, bulletins, notes, notices, marginal notations, notebooks, telephone records, bills, statements, records of obligation and expenditure, invoices, lists, journals, printouts, compilations, tabulations, analyses, studies, surveys, expense reports, microfilm, microfiche, tape or disc recordings, sound recordings, video recordings, film, tape, photographs, programs, electronic mail ("e-mail") and data compilations from which information can be obtained (including matter used in data processing), and other printed, written, handwritten, typewritten, recorded, stenographic, computer-generated, computer-stored, or electronically stored matter, however and by whomever produced, prepared, reproduced, disseminated, or made. The words "Document" and "Documents" also include all copies of documents by whatever means made, except that where a document is produced, identical copies of it that do not contain any markings, additions, or deletions that are different from the original do not have to be separately produced. 7. "Electronically stored information" is defined broadly to give the full scope of

that term as contemplated by Rule 34 of the Federal Rules of Civil Procedure, and refers to all 2

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

computer or electronically stored or generated data and information, and shall include all attachments to and enclosures with any requested item, and all drafts thereof. Electronically stored information includes information stored in any format and on any storage media, including: hard disks; floppy disks; optical disks; flash memory devices; and magnetic tape, whether fixed, portable, or removable. Electronically stored information includes: wordprocessing documents; electronic spreadsheets; electronic presentation documents; e-mail messages; image files; sound files; and material or information stored in a database, or accessible from a database. Electronically stored information also includes all associated metadata that is maintained or saved, which includes: document title or name; file name; date and time of creation; date and time of last edit; identity of author; identity of owner; identities of editors; identities of recipients; changes; history of changes; e-mail header information; history of who viewed an e-mail and when; and e-mail routing information. Electronically stored information further includes: correspondence, telegrams, memoranda, communications, minutes or records of meetings and conferences, lists of persons attending meetings or conferences, summaries, records of conversations, drafts, notes, notebooks, logs, invention records and disclosures, translations, drawings, graphs, charts, photographs, sound recordings, images, data compilations, computer records or printouts, specifications, reports, opinions, summaries, agreements, forecasts, plan drawings, mask works, engineering drawings, expressions or statements of policy, consultations, brochures, pamphlets, advertisements, publications, circulars, trade letters, press releases, and drafts of any of the foregoing. Unless the parties agree otherwise, all electronically stored information shall be produced in the form in which it is kept in the usual course of business. If electronically stored information is produced in the form in which it is kept in the usual course of business but it is not reasonably useable in that form, then all software, 3

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

instructions, or tools necessary to make the information reasonably useable must also be provided or identified. To the extent that identical information is available as both a document and as electronically stored information or in multiple forms of electronically stored information, Woods need only produce the electronically stored information in one reasonably useable form. Go Daddy's counsel invites Woods' counsel to call to discuss compliance with the foregoing instructions concerning electronically stored information. 8. "Eolas" means Eolas Technologies Incorporated, and its past and present officers,

directors, affiliates, brokers, agents, representatives, employees, servants, and all persons acting directly or indirectly under its control, including any attorney. 9. "Go Daddy" means The Go Daddy Group, Inc., and its past and present officers,

directors, affiliates, brokers, agents, representatives, employees, servants, and all persons acting directly or indirectly under its control, including any attorney. 10. "Identify" when used in reference to: (a) a natural person, means: (1) the person's full name or title, last known

address, and telephone number; (2) the person's present employer(s) and place(s) of employment; and (3) the person's job title or position held; (b) a document, means: (1) its date, author, and addressee(s); (2) the type of

document (e.g., letter, memorandum, etc.); and (3) its present location and identity of its custodian; or (c) a statement, either written or spoken, means: (1) the substance of each

such statement; (2) the exact words used by each person participating in the statement; (3) to identify each person engaging in the statement; (4) the identity of each person present at the making or reception of such statement; (5) the time and place of the 4

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

statement; (6) the means of such statement (e.g., written, telephone, face-to-face, etc.). In addition to the foregoing, "Identify" should also be understood to include the following when used in reference to: (d) an organization or entity: state the organization or entity's full name and

present or last known address, and to fully describe the business or activity in which the organization or entity is engaged; (e) a thing: state the product number, model number, serial number, type

number, or other designation customarily used by Woods or others in the trade to designate such thing and to distinguish it from others made by the same or a different producer; or (f) a patent or patent application: state the country where it was filed or

granted, the patent or application serial number, the filing date, the dates of publication and grant, the identity of all inventors, the title, the identity of all related patent applications, and the identity of any assignee. 11. 12. "Including" and "such as" means including but not limited to. "Infringe," "infringement," and "infringer" refer to direct infringement,

contributory infringement, or active inducement of infringement, any of which can be either literal or under the doctrine of equivalents. 13. "Litigation between Eolas and Microsoft" refers to the matter captioned as Eolas

Tech., Inc. v. Microsoft Corp., Civ. No. 99-CV-0626 (N.D. Ill.), and any appeals therefrom. 14. "Materials" means any document, electronically stored information, or thing as

those terms are defined herein. 15. "Patents-in-Suit" means any patent at issue in the above-captioned case, 5

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

including, but not limited to, U.S. Patent No. 5,838,906; the patent application that matured into U.S. Patent No. 5,838,906; any reexaminations of U.S. Patent No. 5,838,906; any patent or patent application claiming priority to U.S. Patent No. 5,838,906; U.S. Patent No. 7,599,985; the patent application that matured into U.S. Patent No. 7,599,985; any reexaminations of U.S. Patent No. 7,599,985; and any patent or patent application claiming priority to U.S. Patent No. 7,599,985. 16. "Patent application" shall mean any provisional, original, reissue, divisional,

inventor certificate, utility model, continuation or continuation-in-part application for patent, domestic and foreign, whether pending or issued, as well as any abandoned or suspended application and any reexamination request. 17. "Person" or "persons" refers to all natural persons, male or female, and all types

and kinds of business or other entities, including, but not limited to, corporations, partnerships, joint ventures, associations and sole proprietorships and any reference to an individual person, either singularly or as part of a defined group, includes that person's employees, agents, legal representatives, non-legal representatives, personal representatives, attorneys, heirs, successors, and assigns, and includes any other person or entity acting on or for the behalf of such individual person. 18. "Prior Art" means all documents, activities, and products that constitute, describe,

suggest, disclose, anticipate, render obvious, refer to, or relate to the subject matter described or claimed in the Patents-in-Suit before the filing date(s) thereof, and includes those categories of information set forth in 35 U.S.C. §§ 102 and 103. 19. "Relate," "relating," "refer," "referring," "concerning," and "concern" means, in

addition to its customary and usual meaning, discussing, referring to, pertaining to or concerning. 6

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

20.

"Thing" shall have the broadest meaning prescribed in Rule 34 of the Federal

Rules of Civil Procedure, and refers to any tangible object, other than documents or electronically stored information, and includes physical objects of every kind and manner including: prototypes, models, and specimens. 21. "Third party" shall mean any natural person, corporation, partnership, association,

joint venture, government body, or other legal entity other than Woods and Go Daddy. 22. "Woods" or "you" means Michael E. Woods and The Patent Law Offices of

Michael E. Woods, and their affiliates, brokers, agents, representatives, employees, and all persons acting directly or indirectly under its control, including any attorney.

INSTRUCTIONS 1. If Woods claims that a Request for Production is over-broad, please respond to

that portion of the Request for Production to which Woods does not object and specifically state why Woods claims the Request for Production is over-broad. 2. If Woods claims that responding to a Request for Production is unduly

burdensome, please respond to that portion of the Request for Production to which Woods does not object and specifically state why Woods claims the Request for Production is unduly burdensome. 3. If any Document referred to in Woods' responses to this subpoena was, but is no

longer, in Woods' possession, custody, or control, state what disposition was made of it and when. If any Document referred to in response to this subpoena has been lost or destroyed, describe in detail the circumstances of such loss or destruction and identify each lost or destroyed Document and all Materials that contained such Document. Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods 7

4.

If any information is withheld on the basis of a claim of privilege or work

product, then the answer shall generally identify the information withheld by subject matter, author, addressees, and carbon copy recipient(s); state the basis for withholding the information; and identify the person(s) knowledgeable about the subject matter of the withheld information. This instruction should be understood to encompass the following. If you identify a document that you claim to be privileged or work product, then please further identify that document by: (a) the type of document (letter, memorandum, report, miscellaneous note,

pamphlet, etc.); (b) (c) (d) the general subject matter to which the document relates; the date the document was prepared, reproduced, or transcribed; the names, business addresses, and titles or job descriptions of the original

author(s) and any person(s) who edited, corrected, revised, or amended the document; (e) the names, business addresses, and titles or job descriptions of each person

shown on the document or persons otherwise known to you as being an intended or actual recipient of the document or a copy of the document; (f) all indicia that would serve to distinctly identify the document from others

of a similar class or group; and (g) 5. any and all disclosures of the document to third parties.

The past tense of a verb used herein includes the present tense and the present

tense includes the past tense. 6. The plural of any word used herein includes the singular and the singular includes

the plural. The masculine gender of any word used herein includes the feminine and the neuter. 8

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

7.

For purposes of this subpoena, terms not specifically defined shall be given their

ordinary meaning as Woods understands them to be used in the trade and in each such case Woods shall state its definition of such term. 8. If Woods objects to any portion of a Request for Production, please respond to

any portion of the Request for Production to which Woods does not object. 9. If Woods objects to or disagrees with any of the definitions set forth in this

subpoena, or if Woods does not understand any term used in this subpoena, please explain in detail the nature of Woods' disagreement with the definition, or lack of understanding of the term, provide an alternative definition of the term, and respond in accordance with that alternative definition. 10. Pursuant to Fed. R. Civ. P. 45(d)(1)(B), Woods shall produce electronically stored

information natively in a Concordance database which includes the data, the extracted text, and a live link to the native files. 11. This subpoena is continuing in nature. Woods must correct or supplement its

responses if it learns that any response was incomplete or incorrect when made or, although complete and correct when made, is no longer complete and correct.

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

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REQUESTS FOR PRODUCTION REQUEST FOR PRODUCTION 1: All Materials evidencing, constituting, or concerning Woods' policy or procedure (in effect any time between the date immediately prior to the earliest date of conception of any subject matter of any claim of the Patents-in-Suit and the present) for retaining or destroying any Materials. REQUEST FOR PRODUCTION 2: All Materials that constitute, describe, suggest, disclose, refer or relate to the reexamination of the Patents-in-Suit. REQUEST FOR PRODUCTION 3: All Materials that constitute, describe, suggest, disclose, refer or relate to the Litigation between Eolas and Microsoft. REQUEST FOR PRODUCTION 4: All Materials identifying or otherwise referring or relating to the research, engineering, development, assembly, testing, manufacturing, marketing, distribution, sale, or licensing of the Patents-in-Suit. REQUEST FOR PRODUCTION 5: All Materials evidencing, constituting, or concerning the Patents-in-Suit, including any patent applications prepared by Woods. REQUEST FOR PRODUCTION 6: All Materials evidencing, constituting, or concerning any communications, written or oral, between Woods and any other party referring or relating to the Patents-in-Suit.

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

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REQUEST FOR PRODUCTION 7: All Materials evidencing, constituting, or concerning any communications written or oral, between Woods and any other party relating to the invalidity or unenforceability of the Patentsin-Suit. REQUEST FOR PRODUCTION 8: All Materials supporting, contradicting, evidencing, or concerning any claim that Woods committed inequitable conduct before the USPTO. REQUEST FOR PRODUCTION 9: All Materials supporting, contradicting, evidencing, or concerning any claim that Woods violated the duty of candor provided under 37 CFR 1.56. REQUEST FOR PRODUCTION 10: All Materials evidencing, constituting, or concerning the decision to file, preparation of, filing, or prosecution of any application for the Patents-in-Suit or any other patent application in which Eolas has an equitable right or ownership interest that name Michael Doyle, David Martin, and/or Cheong Ang as an inventor. REQUEST FOR PRODUCTION 11: All Materials that constitute, describe, evidence, report or otherwise refer or relate to any communication, written or oral, between Michael Doyle, David Martin, Cheong Ang, and/or any Eolas employee or agent, on the one hand, and Charles E. Krueger and/or Townsend and Townsend and Crew LLP's employees or agents on the other hand. REQUEST FOR PRODUCTION 12: All Materials that constitute, describe, evidence, report or otherwise refer or relate to any communication, written or oral, between Michael Doyle, David Martin, Cheong Ang, and/or any 11

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

Eolas employee or agent, on the one hand, and Charles E. Krueger and/or The Law Office of Charles E. Krueger, and its employees or agents on the other hand. REQUEST FOR PRODUCTION 13: All Materials that constitute, describe, evidence, report or otherwise refer or relate to any communication, written or oral, between Michael Doyle, David Martin, Cheong Ang, and/or any Eolas employee or agent, on the one hand, and Woods, and its employees or agents, on the other hand, including communications pertaining to the filing, prosecution and enforcement of the Patents-in-Suit. REQUEST FOR PRODUCTION 14: All Materials evidencing, constituting, or concerning any drawing, diagram, chart, sketch, blueprint, source code, object code, computer application, or any drafts of any of the above, regardless of when created, of any subject matter disclosed or claimed in any application for the Patents-in-Suit. REQUEST FOR PRODUCTION 15: All Materials which constitute, embody, describe, disclose or otherwise refer or relate to any draft of the patent application or specification for the Patents-in-Suit or any application through which the any of Patents-in-Suit claims the benefit of an earlier filing date. REQUEST FOR PRODUCTION 16: All Materials evidencing, constituting, or concerning any draft, regardless of when created, of any claim of any application for the Patents-in-Suit or any application through which the Patents-in-Suit claims the benefit of an earlier filing date. REQUEST FOR PRODUCTION 17: Separately for each application for the Patents-in-Suit, all Materials evidencing, 12

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

constituting, or concerning the best mode (as that term is used in 35 U.S.C. § 112) known to the named inventors of the Patents-in-Suit for practicing any subject matter disclosed or claimed in the Patents-in-Suit at the time each such application for the Patents-in-Suit was filed. REQUEST FOR PRODUCTION 18: Separately for each application for the Patents-in-Suit, all Materials evidencing, constituting, or concerning all modes known to the named inventors of the Patents-in-Suit for practicing the subject matter disclosed or claimed in the Patents-in-Suit at the time each such application for the Patents-in-Suit was filed. REQUEST FOR PRODUCTION 19: All Materials evidencing, constituting, or concerning any publication authored, reviewed, contributed to or edited by the named inventors of the Patents-in-Suit relating in whole or in part to embedded program objects. REQUEST FOR PRODUCTION 20: All Materials that constitute, evidence, describe, disclose or otherwise refer or relate to any patent, printed publication, public use or sale in this country, knowledge, use, and/or making in this country of any embedded program object product, method, system, or technology or any feature thereof prior to October 17, 1994. REQUEST FOR PRODUCTION 21: For each claim in the Patents-in-Suit, all Materials relating to embedded program objects in the possession of any of the named inventors of the Patents-in-Suit prior to the earliest conception date of each such claim. REQUEST FOR PRODUCTION 22: All Materials evidencing, constituting, or concerning any reference identified during any 13

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

search or study of domestic or foreign patents, literature or other published materials, including without limitation any search or study or to determine the validity, scope or enforceability of the subject matter of any claim of the Patents-in-Suit or of any patent or patent application in which Eolas has an equitable or ownership interest that names Michael Doyle, David Martin, and/or Cheong Ang as an inventor. REQUEST FOR PRODUCTION 23: All Materials evidencing, constituting or concerning any opinion as to the validity, scope or enforceability of the subject matter of any claim of any patent or patent application in which Woods has an equitable or ownership interest that names Michael Doyle, David Martin, and/or Cheong Ang as an inventor, including the Patents-in-Suit. REQUEST FOR PRODUCTION 24: All Materials evidencing, constituting, or concerning any secondary considerations or other objective indicia of non-obviousness of the subject matter of any claim of the Patents-inSuit. REQUEST FOR PRODUCTION 25: All Materials that establish the level of ordinary skill in the art of the subject matter of any claim of the Patents-in-Suit. REQUEST FOR PRODUCTION 26: All Materials evidencing, constituting, or concerning the ownership of the Patents-inSuit, including without limitation any assignment or transfer of ownership of, or any legal or equitable or right in the Patents-in-Suit either in whole or in part, and further including any transfer of any legal or equitable right in the Patents-in-Suit, directly or indirectly, between Michael Doyle, David Martin, Cheong Ang, The Regents of the University of California, and/or 14

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

Eolas. REQUEST FOR PRODUCTION 27: All Materials evidencing, constituting or concerning any transfer of any legal or equitable right in any patent, patent application or other intellectual property between Michael Doyle, David Martin, Cheong Ang, The Regents of the University of California, and/or Eolas. REQUEST FOR PRODUCTION 28: All Materials evidencing, constituting, or concerning any agreement, license, or covenant not to sue regarding the Patents-in-Suit. REQUEST FOR PRODUCTION 29: All Materials evidencing, constituting, or concerning any contract, settlement, or other agreement or any discussion, proposal, negotiation, or acceptance of any agreement relating to the Patents-in-Suit. REQUEST FOR PRODUCTION 30: All Materials evidencing, constituting, or concerning any valuation of the Patents-in-Suit, including all Materials relating to the determination of a royalty rate for purposes of licensing or tax accounting. REQUEST FOR PRODUCTION 31: Each invention assignment agreement submitted by or on behalf of the named inventors of the Patents-in-Suit from immediately prior to the earliest date of conception of any subject matter claimed in the Patents-in-Suit to the present. REQUEST FOR PRODUCTION 32: All Materials referring or related to any recession of any assignment of one or more of the Patents-in-Suit. 15

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

REQUEST FOR PRODUCTION 33: All Materials that establish, describe, support, evidence, tend to corroborate, or otherwise refer or relate to the conception of any subject matter of any claim of the Patents-in-Suit. REQUEST FOR PRODUCTION 34: All Materials that establish, describe, support, evidence, tend to corroborate, or otherwise refer or relate to the reduction to practice (both actual and constructive) of any subject matter of any claim of the Patents-in-Suit. REQUEST FOR PRODUCTION 35: All Materials evidencing, constituting, or concerning any paper or article (published or unpublished) authored in whole or in part by Michael Doyle, David Martin, and/or Cheong Ang, including those papers, articles or assignments written in satisfaction of any academic or certification requirement (e.g., while Michael Doyle, David Martin, and/or Cheong Ang were in undergraduate or graduate school). REQUEST FOR PRODUCTION 36: All declarations or affidavits signed by Michael Doyle, David Martin, and/or Cheong Ang, including any drafts thereof. REQUEST FOR PRODUCTION 37: All Materials that describe or otherwise refer or relate to any embedded program object system, method, products, or services, used or sold, experimentally or commercially by Eolas and/or the named inventors of the Patents-in-Suit. REQUEST FOR PRODUCTION 38: The prosecution history of each pending or abandoned patent application, United States or foreign, including but not limited to continuation, continuation-in-part, divisional, reissue, or 16

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

reexamination application(s), in which Eolas now has or formerly possessed a legal or equitable interest, which discloses, claims, or otherwise refers or relates in whole or in part to embedded program objects. REQUEST FOR PRODUCTION 39: The prosecution history for the Patents-in-Suit, including the prosecution history for the reexamination of the Patents-in-Suit. REQUEST FOR PRODUCTION 40: All Materials which constitute, describe, report, evidence or otherwise refer or relate to a communication between Woods and another person or organization with respect to a United States or foreign patent which discloses, claims or otherwise refers or relates, in whole or in part, to embedded program objects, including the Patents-in-Suit. REQUEST FOR PRODUCTION 41: Each invention disclosure, record of invention or the like, including drafts thereof, in which Eolas now has or formerly possessed a legal or equitable interest, which discloses or otherwise refers or relates in whole or in part to embedded program objects, including the Patents-in-Suit. REQUEST FOR PRODUCTION 42: All Materials that constitute, evidence, describe, report or otherwise refer to the first disclosure by Michael Doyle, David Martin, and/or Cheong Ang to another of any subject matter disclosed or claimed in the Patents-in-Suit. REQUEST FOR PRODUCTION 43: All Materials that constitute, embody, describe, disclose or otherwise refer or relate to a draft of a response or amendment submitted to the USPTO in connection with the prosecution of 17

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

the application for the Patents-in-Suit or an application through which the Patents-in-Suit claims the benefit of an earlier filing date. REQUEST FOR PRODUCTION 44: All Materials that constitute, embody, describe, disclose or otherwise refer or relate to information and/or data that was included or considered for inclusion in the disclosure of the application for the Patents-in-Suit, an application through which the Patents-in-Suit claims the benefit of an earlier filing date or in a response or amendment submitted or considered for submission to the USPTO in connection with the prosecution of such application. REQUEST FOR PRODUCTION 45: All Materials that constitute, describe, evidence, report or otherwise refer or relate to any differences between the subject matter disclosed in the Patents-in-Suit and the subject matter disclosed in any patent application that the Patents-in-Suit claims the benefit of an earlier filing date. REQUEST FOR PRODUCTION 46: All Materials that constitute, describe, evidence, report or otherwise refer or relate to any comparison (including, but not limited to, those done by Woods) comparing and/or contrasting the Patents-in-Suit with pre-existing embedded program object products, technology, methods, or systems. REQUEST FOR PRODUCTION 47: All Materials that constitute, embody, describe, disclose or otherwise refer or relate to any experiments, investigations, tests, analyses, studies, and/or procedures described or referenced in the Patents-in-Suit that were conducted on or prior to October 17, 1994. REQUEST FOR PRODUCTION 48:

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

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All Materials that constitute, embody, describe, disclose or otherwise refer or relate to any Prior Art found in any files referring or relating to the Patents-in-Suit. REQUEST FOR PRODUCTION 49: All Materials that refer or relate to any analysis performed by Woods to determine whether any third party is infringing one or more claims of any of the Patents-In-Suit. REQUEST FOR PRODUCTION 50: All billing records referring or relating to any work Woods did by or on behalf of one or more of Michael Doyle, David Martin, Cheong Ang, The Regents of the University of California, and/or Eolas relating to the Patents-in-Suit between October 1993 and October 2009. REQUEST FOR PRODUCTION 51: All Materials relating or referring to any agreements for legal services with one or more of Michael Doyle, David Martin, Cheong Ang, The Regents of the University of California, and/or Eolas relating to the Patents-in-Suit.

Schedule A to the Subpoena to The Patent Law Offices of Michael E. Woods

19