Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 393

NOTICE by Google Inc., YouTube, LLC re 367 Opposed MOTION Adobe Systems Incorporated's Opposed Motion Requesting Case Management Conference To Address Plaintiff Eolas's Infringement Contentions Or, In The Alternative, To Strike Those Contentions and Motion For Expedited Consideratio and Identification of Related Issues to be Addressed (Attachments: # 1 Declaration of M. Francis, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20, # 22 Exhibit 21, # 23 Exhibit 22, # 24 Exhibit 23)(Jones, Michael)

Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Doc. 393 Att. 24

Exhibit 23

Dockets.Justia.com

MCKOOL SMITH
Josh W. Budwin Direct Dial: [phone] [e-mail]
A PROFESSIONAL CORPORATION · ATTORNEYS

300 West Sixth Street, Suite 1700 Austin, Texas 78701

Telephone: [phone] Telecopier: [phone]

June 14, 2010 VIA ELECTRONIC MAIL Mark H. Francis King & Spalding, LLP 1185 Avenue of the Americas New York, NY 10036-4003 [e-mail] Re: Dear Mark: This letter is responsive to your letter of May 25, 2010 (hereinafter "your letter"). Eolas objects to your letter to the extent that it seeks documents and things that are privileged, protected, or otherwise exempt from discovery, including, but not limited to, information or documents protected by applicable state and federal statutes, the Federal Rules of Civil Procedure, the Local Rules of the Court, the Local Patent Rules of the Court, the Federal Rules of Evidence, the attorney-client privilege, the work product doctrine, the consulting expert exemption, the protection afforded to settlement discussions, any agreement between the parties, any court order, or any other privilege or immunity, or any other applicable rule, decision, or law. Documents, inadvertently or otherwise, subject to any such privilege, protection or doctrine is not intended to constitute and should not constitute or be deemed to constitute a waiver of any privilege, protection, or other immunity. Eolas objects to your letter to the extent that it seeks documents and/or information that is not in its possession, custody, or control. Eolas objects to your letter as overly broad, vague, and unduly burdensome to the extent that it seeks the identification and/or location of "any" or "all" facts, circumstances, details, documents, communications, or persons. Subject to the foregoing objections, Eolas responds as follows: With respect to the File Histories requested in your letter, Eolas has already produced the following: Eolas Technologies Incorporated v. Adobe Systems, Inc., et al., Civil Action No. 6:09-CV-00446-LED (E.D. Tex.)

June 14, 2010 Page 2

Two copies of the file history for the '906 Patent; Two copies of the file history for the first re-examination of the '906 patent; One copy of the file history of the second re-examination of the '906 patent1; and One copy of the file history for the '985 patent2.

As you mention in your letter, these file histories were produced on March 5, 2010 at the bates range EOLASTX-0000000313-EOLASTX-0000009875. This production spans nearly 9,500 pages. Contrary to the assertion of your letter, Eolas has not "delayed" in producing the file histories. As part of Eolas' productions dated June 7, 2010 and June 14, 2010 Eolas has also produced the documents requested in Google's subpoena to Charles Krueger served on May 21, 2010 (the "Krueger subpoena"). The document custodian for these documents is identified as "Charles Krueger." As requested by the Krueger subpoena, Mr. Krueger's documents include copies of the file histories of the original prosecution of the '906 patent, the first re-examination of the '906 patent, the second re-examination of the '906 patent and the prosecution of the '985 patent as maintained by Mr. Krueger in the ordinary course of his business. These files also include documents related to the interference of the '906 patent as maintained by Mr. Krueger in the ordinary course of his business. Given these documents are being produced within weeks of the service of defendants' subpoena on Mr. Krueger, and, contrary to the assertion of your letter, Eolas has not "delayed" in producing these documents. Additional non-privileged documents related to the second re-examination of the '906 patent and the file history of the '985 patent were also produced as part of Eolas' production on June 14, 2010. These documents are included within the "Jones Day" custodian. Non-privileged documents, including a copy of the interference with respect to the '906 patent and a copy of the file history with respect to Application 09/442,070 (Koppolu et al) were also produced as part of Eolas' production on June 14, 2010. These documents are included within the "USPTO" custodian. Therefore, each of the Defendants, including you, have received multiple copies of the file histories, re-examinations, interferences and documents and things related file histories, reexaminations, interferences related to the asserted patents from numerous sources, as those sources kept these documents in the ordinary course of their business. In light of the above, your assertion that Eolas has "delayed" in producing the file histories and/or has failed to produce the file histories is misplaced.

Eolas requested an certified copy of the file history of the second re-examination of the '906 patent from the USPTO, however, the USPTO refused to provide it. 2 Eolas requested an certified copy of the file history of the '985 patent from the USPTO, however, the USPTO refused to provide it.

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June 14, 2010 Page 3 With respect to the "documents from the Microsoft litigation" requested in your letter, nonprivileged documents from the Microsoft litigation that were not marked "confidential" by Microsoft or other third-party in that litigation were part of Eolas' production dated June 7, 2010. The custodian for these documents is identified as "Robins Kaplan." Once you have reviewed this production, if you believe materials from the Microsoft litigation requested by your letter are still missing, we will happy to address your concerns at that time. Additional materials from the Microsoft litigation were also included in Eolas' June 7, 2010 and June 14, 2010 productions (see "Charles Krueger" and "Jones Day" custodians). Additionally, earlier this month, we contacted counsel for Microsoft to seek Microsoft's permission to produce any Microsoft "confidential" information that Eolas' former counsel at Robins Kaplan may have in its possession (if any). You (like counsel for all defendants) were cc'd on that correspondence. Please feel free to check with us from time to time regarding the status of this effort. Alternatively, you can check with your co-counsel at Sidley Austin who not only represents Apple in this case, but also represented Microsoft in the prior case. With respect to documents related to "licensing of any asserted patent," Eolas has already produced the following non-privileged documents: The license and settlement agreements with Microsoft (see my March 5 correspondence, Eolas' April 14, 2010 Initial Disclosures, and Eolas' May 28, 2010 production); The license agreement with Argosy (see Eolas' April 14, 2010 Initial Disclosures); and The agreements between Eolas and the University of California (see Eolas' May 28, 2010 production).

Moreover, as stated in Eolas' April 14, 2010 Initial Disclosures: Pursuant to Paragraph 1(F) of the Agreed Discovery Order, Eolas has produced the "License Agreement" between Eolas and Microsoft at EOLASTX0000009882-9889. Eolas is also producing, concurrently herewith, the "Confidential Settlement Agreement" between Eolas and Microsoft at EOLASTX-0000009890-9899, the "Settlement Agreement" between the University of California and Microsoft at EOLASTX-0000009900-9907, and the "License Agreement" between Eolas and Argosy Publishing, Inc at EOLASTX0000009908-9919. With respect to documents related to "standing to sue" and "ownership of any asserted patent" --while its not clear what you mean by some of these terms--the production Eolas provided on May 28, 2010 included non-privileged documents which may relate to these topics. These documents were included within the "James Stetson" custodian. Additional non-privileged documents related to these topics may also be found in the aforementioned documents related to the file histories of the asserted patents.

June 14, 2010 Page 4 I trust that this letter addresses the concerns expressed in your letter. As always, should you still have questions, comments, or concerns, please do not hesitate to contact me.

Sincerely,

Josh W. Budwin

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