Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 647

RESPONSE in Opposition re 634 MOTION FOR LEAVE TO SUPPLEMENT INFRINGEMENT CONTENTIONS FOR ANDROID 3.0 filed by Google Inc.. (Attachments: # 1 Exhibit 1 - Google on Android YouTube Blog, # 2 Exhibit 2 - Email from Eolas re contentions, # 3 Exhibit 3 - Alt v. Medtronic, # 4 Exhibit 4 - Sybase v. Vertica, # 5 Text of Proposed Order)(Jones, Michael)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

EOLAS TECHNOLOGIES
INCORPORATED,
PLAINTIFF,
v.
ADOBE SYSTEMS INC., et al.,
DEFENDANTS.

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Civil Action No. 6:09-CV-446-LED

JURY TRIAL DEMANDED

GOOGLE’S OPPOSITION TO EOLAS’ MOTION FOR LEAVE TO
SUPPLEMENT ITS INFRINGEMENT CONTENTIONS FOR ANDROID 3.0

TABLE OF CONTENTS
I. 

Introduction ..........................................................................................................................1 

II. 

FACTS .................................................................................................................................2 

III. 

DISCUSSION ......................................................................................................................6 
A. 

The Explanation for the Failure to Meet the Deadline ..................................................6 

B. 

The Importance Of The Thing That Would Be Excluded .............................................7 

C. 

The Potential Prejudice In Allowing The Thing That Would be Excluded ...................8 

D. 

The Availability Of A Continuance To Cure Such Prejudice........................................9 

IV. 

CONCLUSION ..................................................................................................................10 

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TABLE OF AUTHORITIES
Page(s)
CASES
Alt v. Medtronic, Inc.,
No. 2:04-cv-370, at p. 4 (E.D. Tex. Oct. 28, 2005) (Ex. 3) ...............................................7, 8, 9
Davis-Lynch, Inc. v. Weatherford Int’l, Inc.,
No. 6:07-cv-559, 2009 U.S. Dist. LEXIS 130654 (E.D. Tex. April 24, 2009) .....................6, 9
Realtime Data, LLC v. Packeteer, Inc.,
No. 6:08-cv-144, 2009 U.S. Dist. LEXIS 73217 (E.D. Tex. Aug. 18, 2009) ............................7
S & W Enters., L.L.C. v. Southtrust Bank of Ala., NA,
315 F.3d 533 (5th Cir. 2003) .....................................................................................................6
STMicroelectronics, Inc. v. Motorola, Inc.,
307 F. Supp. 2d 845 (E.D. Tex. 2004) .......................................................................................6
Sybase, Inc. v. Vertica Systems, Inc.,
No. 6:08-cv-24 .....................................................................................................................8, 10
OTHER AUTHORITIES
Local Rule CV-7(h) .......................................................................................................................12
Local Patent Rule Rule 3-7 ..............................................................................................................6
F.R.C.P. Rule 11 ..............................................................................................................................3

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I.

INTRODUCTION
The Android browser and YouTube application were publicly available at

the time that Eolas filed its initial “Android” infringement contentions over a year ago.
Google asked Eolas to amend its contentions regarding Android because these
contentions did not properly put Google on notice of Eolas’ infringement theories, failing
to describe how the Android “browser” allegedly infringed Eolas’ asserted claims. Eolas
refused to do so. Now, after the completion of claim construction and as the close of
discovery approaches, Eolas seeks to assert new infringement theories, including a theory
against the previously unaccused YouTube application, all under the guise that amended
contentions are justified by a “new version” of Android – Android 3.0.
First, Eolas has failed to meet its burden of demonstrating that the accused
functionality has changed in some relevant way. Eolas has not identified how any of the
features introduced in version 3.0 of Android, such as resizing of windows for larger
table devices, are pertinent to the accused functionality such that the supplementation is
warranted.

The accused functionality, the Android “browser”, existed in versions of

Android available at the time Eolas submitted its original infringement contentions.
Second, Eolas’ original contentions for Android referenced only a
“browser.” To the extent that those contentions stated cognizable infringement theories,
there is no dispute that the same theory applies to all subsequent versions of Android.
Yet Eolas is now attempting to add new infringement theories concerning Android by
attempting to encompass, for the first time, the YouTube application for Android as the
accused “browser”, even though the YouTube application is a standalone application that
is not accessed through a browser. Indeed, the YouTube application was included in
versions of Android released before Eolas filed its original infringement contentions. But

Eolas’ attempt to support a new infringement theory concerning Android by simply
pointing to the fact that Android 3.0 is a new version is improper, especially because the
YouTube standalone application is not a new feature added to Android 3.0, but has been
long available on Android.
Third, Google and YouTube (collectively “Google”) will be unduly
prejudiced by if Eolas is permitted to pursue new infringement theories concerning
Android at this late stage.

In particular, Google has prepared its noninfringement

defenses on Android, including claim construction positions, based on Eolas’ original
infringement theories that referenced only a “browser.”

Accusing standalone

applications for the first time, such as the YouTube application, presents a significant
shift in Eolas’ infringement theory because all of the patent claims require a browser and
the YouTube app is not a browser.
Fourth, a continuance will exacerbate the prejudice to Google.

As

evidenced by this latest motion, Eolas views each new software version as an opportunity
to modify its moving-target infringement theories.

This approach hinders Google’s

ability to prepare for its defense and costs a great deal in attorney fees and other costs.
For all of these reasons, Eolas’ motion should be denied.
II.

FACTS
Android is a mobile operating system (“OS”) that includes, inter alia, the

Android browser. The Android OS supports applications or “apps”—i.e., stand-alone
software programs that operate on a mobile device. Many apps allow users to access
online content without the use of a generalized browser program. An example is the
YouTube app for directly accessing YouTube videos from a mobile device. A YouTube
app has existed since the launch of the first Android-powered phone in 2008. See Ex. 1

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(“On September 23, T-Mobile announced the world's first Android-powered phone, the
G1. The phone comes preloaded with Search, Maps, Gmail with Contacts, Calendar,
Google Talk, and YouTube.”).
At the time Eolas served its initial infringement contentions relating to
Android on March 5, 2010, the current version of Android was Android 2.0/2.1. Those
contentions mentioned a “browser,” but as Google explained in a motion to the Court in
August 2010, “Eolas does not appear to have any Rule 11 basis for certain allegations,
such as with respect to Google’s Android operating system.” Dkt. 393, p.8. Specifically,
although the original contentions referenced a “browser,” they did not provide sufficient
detail to understand how the “browser” might infringe the patent claims. The initial
contentions did not even attempt to accuse the YouTube app of infringement.1
Eolas did not modify its contentions after Android 2.2 released in May
2010 or Android 2.3 released in December 2010. Both Android 2.2 and Android 2.3
were used for handheld mobile phones such as the Droid line of devices made and sold
by Motorola, Samsumg and HTC, the same devices referenced in Eolas’ original
contentions. In the meantime, larger tablet devices started to arrive on the market. In
February 2011, Google released Android 3.0, which among other things provided for
better utilization of the larger tablet screen.
Eolas’

newly

proposed

contentions

significantly

modify

Eolas’

infringement theories with respect to Android and accuse the YouTube app of
infringement for the first time. Compare Dkt. 634, Ex. 9, with Dkt. 634, Ex. 10.2 For

1

Using a word search, the word YouTube does not show up in the 422 pages of Android contentions.

2

Eolas only attached the contentions related to the ‘906 patent to its motion to amend. It did not attach
either set of contentions for the ‘985 patent.

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example, whereas the original contentions merely mention the browser, Eolas’ new
theories describe the browser as performing claim steps. The only previous mention of
YouTube by Eolas was as a website that is visited through a browser, not as a stand-alone
application that does not need a browser to operate.
Eolas’ motion fails to specifically identify any accused functionality of
Android 3.0 that did not exist in Android 2.0, Android 2.1, Android 2.2, or Android 2.3.3
Specifically, Eolas fails to articulate any reasons why the changes to the browser or
YouTube app are relevant to the accused functionality such that supplementation is
necessary. With respect to the Google browser, Eolas simply announces that there is
“new functionality” without any pertinent explanation.

See, e.g., Dkt. 634, p. 3

(“Android 3.0 offered new embedded browser functionality and a ‘[n]ew UI designed
from the ground up for tablets.’”); p. 5 (“Android 3.0 updated this previously-accused
functionality, necessitating Eolas’ supplemental contentions.”).
With respect to the YouTube app, Eolas focuses almost exclusively on the
fact that the Android browser and YouTube app have been re-sized to fit on a tablet
screen. Eolas argues that “This additional screen real estate is important because it
allows the YouTube player on tablet devices to play embedded interactive YouTube
movies.”

Dkt. 634, p.6.

But even the original 2008 version of the YouTube app

displayed multiple YouTube movies, as seen below in a comparison of the 2008
YouTube app with the screen shot of the Android 3.0 YouTube app from Eolas’ brief:

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The only evidence cited by Eolas relating to the accused functionality is to piece together a vague
statement relating to “’updates [to the] set of standard apps’ such as the ‘browser’” From Google press
releases. Dkt. 634, p.2.

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Eolas Screen Shot, Dkt. 634, p. 6.

Ex. 1 (2008 YouTube app).
In response to a request from Eolas’ counsel request to amend its
contentions, Google’s counsel explained that “Android 3.0 is simply a new version of a
pre-existing product that has already been accused of infringement by Eolas.” See Dkt.
634-6. On April 5, 2011, counsel for Eolas e-mailed counsel for Google seeking “a brief
call on Friday morning . . . to make sure that we are not talking past each other.” Ex. 2

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(e-mail from J. Budwin). During that call Google requested a formal meet and confer to
address the issues raised by Eolas’ request. Eolas refused and instead filed this motion.
III.

DISCUSSION
“The purpose of Local Patent Rules is to ‘further the goal of full, timely

discovery and provide all parties with adequate notice and information with which to
litigate their cases, not to create supposed loopholes through which parties may practice
litigation by ambush.’” Davis-Lynch, Inc. v. Weatherford Int’l, Inc., No. 6:07-cv-559,
2009 U.S. Dist. LEXIS 130654, *3-4 (E.D. Tex. April 24, 2009) (quoting IXYS Corp. v.
Advanced Power Tech., Inc., 2004 U.S. Dist. LEXIS 10934, 2004 WL 1368860, *3 (N.D.
Cal. June 16, 2004)).
“Patent Rule 3-7 incorporates Rule 16(b)’s good cause standard by stating
‘amendment or modification of the Preliminary or Final Infringement Contentions . . .
may be made only by order of the Court, which shall be entered only upon a showing of
good cause.’” STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845, 849 (E.D.
Tex. 2004) (quoting P.R. 3-7). The Court considers the following factors to determine
whether the moving party has demonstrated good cause: (1) the explanation for the
failure to meet the deadline; (2) the importance of the thing that would be excluded; (3)
the potential prejudice in allowing the thing that would be excluded; and (4) the
availability of a continuance to cure such prejudice. S & W Enters., L.L.C. v. Southtrust
Bank of Ala., NA, 315 F.3d 533, 535-36 (5th Cir. 2003).
A.

The Explanation for the Failure to Meet the Deadline
Eolas’ argument that its supplementation is timely misses the mark. Eolas

had over a year to supplement its contentions regarding Android, but refused to do so
despite being notified by Google that its initial contentions failed to put Google on notice

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of its infringement theories. Eolas is now attempting to assert new infringement theories,
including a theory against the previously unaccused YouTube application, all under the
guise that amended contentions are justified by a “new version” of Android.

Eolas

argues at length that “Eolas’ initial infringement contentions do identify the browser
functionality of the Android platform.” Dkt. 634, p. 4. Yet Eolas fails to articulate why
any of the new features in Android 3.0 necessitates its new infringement theories.
Thus, there is no dispute that the infringement theories articulated in
Eolas’ initial infringement contentions continue to apply to new versions of accused
software. The only dispute is whether Eolas can create new infringement theories at this
stage of the case.4 As Google explained above, Eolas has failed to point to any aspect of
the Google browser that has changed in a manner that is relevant to the accused
functionality. See, e.g., Alt v. Medtronic, Inc., No. 2:04-cv-370, at p. 4 (E.D. Tex. Oct.
28, 2005) (Ex. 3) (denying motion for leave where plaintiff “has not provided any reason
for his delay in asserting [a new infringement theory] against already-accused products in
the case”); see also Realtime Data, LLC v. Packeteer, Inc., No. 6:08-cv-144, 2009 U.S.
Dist. LEXIS 73217, *26 (E.D. Tex. Aug. 18, 2009) (denying motion for leave to amend
where the plaintiff failed to explain how any late information was “pertinent to the
amendments”).
B.

The Importance Of The Thing That Would Be Excluded
Eolas argues that “If Eolas were denied leave to supplement, Eolas would

be unable to accuse this significant new version of one of the main accused products as
4

For reasons that Google has stated for nearly a year, those initial infringement contentions fail to support
any proper infringement theory against the Android browser, although they do mention the Android
browser. Providing new infringement theories at this stage of the case is clearly improper. Realtime Data,
LLC v. Packeteer, Inc., No. 6:08-cv-144, 2009 U.S. Dist. LEXIS 73217, *30-31 (E.D. Tex. Aug. 18, 2009)
(“With a lawsuit of great complexity, it is all the more imperative to avoid springing new claims on
Defendants at a late stage.”).

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well as an entire line of devices—tablets that run Android 3.0.” Dkt. 634, p. 7. This
simply is not true. To the extent that Eolas’ initial contentions properly accused Android,
Android is already part of the case and Eolas has not demonstrated that supplementation
is warranted. See Dkt. 634, Ex. 6 (“Android 3.0 is simply a new version of a pre-existing
product that has already been accused of infringement by Eolas.”); Ex. 1 (“Android as a
product is already at issue in this case”); see also Alt, Ex. 3 at pp. 4-5 (finding that
plaintiff “can assert his infringement issues related to the EnTrust product line against
claim 1, which is already in the case and has been briefed and argued by the parties”).
Eolas’ mention of tablets is another red herring; the previous versions of Android also ran
on tablets.
C.

The Potential Prejudice In Allowing The Thing That Would be Excluded
Eolas states that Google will not be prejudiced because Android is already

at issue in the case and “it was Google’s own choice to develop and release Android 3.0
when it did.” Dkt. 634, p. 7. However, it is not the inclusion of Android 3.0 in the case
that prejudices Google, but rather Eolas’ attempt to create new infringement theories for
Android after claim construction and the inclusion of an entirely new type of product, the
YouTube app, at this late stage of the case. See Sybase, Inc. v. Vertica Systems, Inc., No.
6:08-cv-24, Ex. 4, p. 4 (finding that “at this late stage of the case would cause a great
deal of prejudice to [the parties] and the Court [because] [t]he parties have concluded
their claim construction briefing on the ’229 Patent and the Markman hearing was held
on November 5, 2009.”); see also RealTime, U.S. Dist. LEXIS 73217, *37 (“The
Defendants have justifiably relied on Plaintiff's Original Infringement Contentions as a
framework for proceeding through discovery and preparing to file dispositive motions
and for trial”).

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Eolas also argues that its new infringement theories “could [not] possibly
implicate claim construction issues, particularly in light of the rule that ‘claims may not
be construed with reference to the accused device.’”

Dkt. 634, pp. 7-8 (quoting

NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002). To
the contrary, “courts in this district recognize that ‘it is likely that . . . amended
[infringement contentions] will impact [a defendant's] claim construction positions and
invalidity contentions.’” See Davis-Lynch, 2009 U.S. Dist. LEXIS 130654, *4 (quoting
MacLean-Fogg Co. v. Eaton Corp., No. 2:07-CV-472, 2008 U.S. Dist. LEXIS 78301,
2008 WL 4601476, *2 (E.D. Tex. Oct. 6, 2008)). For example, if Google were aware
that Eolas would now accuse an app such as YouTube of infringement, it would have
considered additional arguments relating to the “browser” limitation. See Alt, Ex. 3 at pp.
5 (explaining that “the Court is persuaded by Medtronic’s argument that it’s Markman
briefing and arguments would have focused more on the functionality language that
appears in both claims 1 and 16 if the same terms in claim 16 were being construed as
well”). Thus, Google will be severely prejudiced if Eolas is allowed to amend its
infringement contentions at this stage of litigation, after claim construction has completed
and close of discovery approaches.
D.

The Availability Of A Continuance To Cure Such Prejudice
Eolas’ argues that the Court need not consider this factor because Google

will not be prejudiced. To the contrary, Google will be severely prejudiced if Eolas is
allowed to change its infringement theories on Android and insert a new line of products,
the YouTube app, into the lawsuit after claim construction and near the close of
discovery. This is particularly true since these products were released well before Eolas’

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served its initial contentions, and Google has prepared its case for the last year based on
those initial contentions.
Indeed, Eolas’ latest tactics also demonstrate why a continuance cannot
cure any prejudice to Google. Google is constantly working to improve and update its
software. It is apparent that Eolas will use any update as an attempt to “litigate by
ambush” and change its infringement contentions. A continuance will only result in
additional prejudice to Google, both in its ability to defend this case and the costs of
defense. See Sybase, Ex. 4, p. 4 (“Considering that the claim construction briefing and
the Markman hearing have already concluded, a continuance is not likely to remedy any
potential prejudice that Vertica might suffer if infringement contentions concerning the
’228 Patent were added to the case.”); see also RealTime, U.S. Dist. LEXIS 73217, *41
(explaining that “the requested changes are significant enough that the parties would
essentially have to continue litigating this case, while beginning discovery anew on the
new . . . accused products”).
IV.

CONCLUSION
For the foregoing reasons, Google respectfully requests that the Court

deny Eolas’ motion to supplement its infringement contentions.

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Dated: May 5, 2011

Respectfully submitted,
By: /s/ Robert J. Goldman, with permission
by Michael E. Jones
Robert J. Goldman (pro hac vice)
[e-mail]
Sasha G. Rao (pro hac vice)
[e-mail]
Mark D. Rowland
[e-mail]
Joshua Van Hoven (pro hac vice)
[e-mail]
Brandon Stroy (pro hac vice)
[e-mail]
Rebecca R. Wight (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 Defendant
GOOGLE INC.

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CERTIFICATE OF CONFERENCE
The undersigned certifies that the parties have complied with Local Rule CV7(h)’s meet and confer requirement. On April 8, 2011, Mark Francis and Joshua Van
Hoven, counsel for Google, conducted a personal conference by telephone with Josh
Budwin and Matt Rappaport, counsel for Eolas. The parties did not reach an agreement
regarding the issue addressed herein, leaving the issue open for the Court to resolve.
/s/ Sasha G. Rao, with permission by
Michael E. Jones
CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to
have consented to electronic service are being served with a copy of this document via
the Court’s CM/ECF system per Local Rule CV-5(a)(3) on May 5, 2011. Any other
counsel of record will be served by First Class U.S. mail on this same date.

/s/ Michael E. Jones

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