Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 712

MOTION to Compel DISCOVERY FROM ADOBE SYSTEMS, INC. REGARDING INVESTMENT/LICENSING AGREEMENTS WITH INTELLECTUAL VENTURES' ENTITIES by Eolas Technologies Incorporated. (Attachments: # 1 Declaration of Rosemary Snider, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit J, # 12 Exhibit K, # 13 Exhibit L, # 14 Text of Proposed Order)(McKool, Mike)

EXHIBITL

Page 1 of8

Rosemary Snider
From:

Christopher J. Mierzejewski

Sent:

Friday, June 17,2011 4:17 PM

To:

Hermes, Rebecca R.

Cc:

Ropes Google Group; [e-mail]; [e-mail]; Eolas

Subject: RE: Eolas: IV and ifF discovery requests
Rebecca,
Thank you for the provided documents. The provided documents indicate that there should be additional

documents that we have not been able to find in your production.

-Acquisiton Notice(s) mentioned at RGGOOGLE0000383.

-Election(s) to Participate mentioned at RGGOOGLE0000428.

-Original Agreement and first three Amendments mentioned at RGGOOGLE0000349.

-Documents showing amount Google has paid in subscription fees, management fees, license fees, etc.

or any distributions.

Please advise.

Sincerely,

Christopher

From: Hermes, Rebecca R. [mailto:[e-mail]]
Wednesday, June 15, 2011 2:31 PM
To: Christopher J. Mierzejewski
Cc: Ropes Google Group; [e-mail]; [e-mail]; Eolas
Subject: RE: Eolas: IV and IIF discovery requests

Sent:

Christopher,
We produced documents on a CD sent to your attention at your Austin office. It arrived this morning
(signed for by itA. Munter" at 9:15 am). For your convenience, we will have paper copies of the
documents available to you tomorrow here at Ropes & Gray.
Best regards,
Becky

Rebecca R. Hermes
ROPES Itt GRAY LLP
T [phone] I M [phone] IF [phone]
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Rebecca. [e-mail]

www..ropesgray.com

Circular 230 Disclosure (R&G): To ensure compliance with Treasury Department regulations, we inform
you that any U.S. tax advice contained in this communication (including any attachments) was not
intended or written to be used, and cannot be used, for the purpose of avoiding U.S. tax-related penalties
or promoting, marketing or recommending to another party any tax-related matters addressed herein.
This message (including attachments) is privileged and confidential. If you are not the intended recipient,
please delete it without further distribution and reply to the sender that you have received the message in
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From: Christopher J. Mierzejewski [mailto:[e-mail]]

6/20/2011

Page 2 of8
Sent: Wednesday, June 15, 2011 12:15 PM
To: Hermes, Rebecca R.
Cc: Ropes Google Group; [e-mail]; Eolas
Subject: FW: Eolas: IV and IIF discovery requests
Rebecca,
My understanding from our conversation yesterday in your offices is that GooglelYouTube will be providing the requested
information related to IV and IIF.
Can you respond to this e-mail today, just to confirm that the information will be produced? We are arranging meet and
confers this week on the issue and would like written confirmation that GooglelYouTube have agreed to produce the
information so a meet and confer will not be needed.
Thank you,
Christopher

From: Josh Budwin

Sent: Tuesday, June 14,2011 3:12 PM
To: Josh Thane; Jennifer Doan
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G Group Google;
F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests
CounselWhen can we have our Rule 7 meet and confer on this issue? As shown by the thread below, we were trying to have this
meet and confer occur on or before Wednesday (tomorrow), but none of you has offered us dates/times for the meet and
confer.
Accordingly, should we not hear from each of you with respect to the meet and confer by COB today, we will file our
motion to compel this week, and attach this email chain to the certificate of conference. We will indicate your apparent
refusal to meet and confer in good faith, despite our multiple requests.
Thank you.

From: Josh Budwin

Sent: Monday, June 13, 2011 6:50 PM
To: Josh Thane; Jennifer Doan
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G Group Googlei
F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests
CounselPlease advise. We would /ike this meet and confer to occur no later than this Wednesday. Given that we've been asking
for this information for sometime now, any further delay in scheduling a Rule 7 meet and confer is not well received.
Thank you.

From: Josh Budwin

Sent: Sunday, June 12, 2011 12:06 PM
To: Josh Thane; Jennifer Doan
Amazon-Eolasi EBay-Eolasi [e-mail]1; [e-mail]; R&G Group Google;
F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests

Cc: Eolas; Yahoo-Eolasi

6/20/2011

Page 3 of8
AIIPlease provide us with dates for a Local Rule 7 meet and confer to occur no later than this Wednesday. We've been
seeking this discovery for some time now, and defendants' continued refusal to provide it prejudices Eolas' ability to
prepare its case.
Thank you.

From: Josh Budwin

Sent: Friday, June 10, 2011 5:42 PM
To: Josh Thane; Jennifer Doan

Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G Group Google;
F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sanal
Subject: RE: Eolas: IV and IIF discovery requests
Thank you for the call today. We understand the defendants refuse to produce the requested information because they co
contend it is not relevant. Accordingly, we request that each defendant or the defendants collectively provide us with a
date for a Rule 7 meet and confer between Monday and Wednesday next week.

Josh Thane <[e-mail]> wrote:

All:
Below is dial-in information for our 5:30pm CT calL
Telephone #[phone]
Passcode: 46918

From: Josh Budwin [mailto:[e-mail]]

Sent: Friday, June 10, 2011 2:12 PM
To: Josh Budwin; Josh Thane; Jennifer Doan

Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G Group Google;
F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sanal
Subject: RE: Eolas: IV and IIF discovery requests
Please provide the dial-in number.

From: Josh Budwin

Sent: Friday, June 10, 2011 8:41 AM
To: Josh Thane; Jennifer Doan

Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G Group Google;
F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sanal
Subject: RE: Eolas: IV and IIF discovery requests
Josh ­
We will speak with you then on an informal basis.

Please provide the dial in info.
Thanks.

6/20/2011

Page 4 of8
Josh Thane <[e-mail]> wrote:
All ofthe defendants involved in this issue are available for an informal meet and confer tomorrow at 5:30pm CT. We
will send around dial-in information prior to the call.
Josh

From: Josh Budwin [mailto:[e-mail]]

Sent: Thursday, June 09, 2011 10:31 AM
To: Jennifer Doan
Cc: Josh Thane; Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G
Group Google; F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests
Hi Jennifer ­
It is now Thursday, and we've been trying to coordinate this call all week, to occur this week. As you are aware, the
deadline for expert reports is rapidly approaching. Any further delays on producing this relevant information and/or in
scheduling a meet and confer so that we may compel it, may require an extension of Eolas' damages expert report
deadline. Accordingly, please provide a response today, and offer a Rule 7 meet and confer time to occur no later than
COB tomorrow (Friday)~
Thank you.

From: Josh Budwin

Sent: Wednesday, June 08, 2011 12:01 PM
To: 'Jennifer Doan'
Cc: Josh Thane; Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G
Group Google; F&R Group Adobe; [e-mail]; [e-mail]; Mehta, Sona/
Subject: RE: Eo/as: IV and IIF discovery requests
Jennifer ­
Please advise. We've been looking for this information for sometime now. We need to have the meet and confer this
week. We are generally available to meet and confer this week, so please suggest a date/time without further delay.
Thank you.

From: Jennifer Doan [mailto:[e-mail]]

Sent: Tuesday, June 07, 2011 5:04 PM
To: Josh Budwin
Cc: Josh Budwin; Josh Thane; Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; apple­
[e-mail]; R&G Group Google; F&R Group Adobe; [e-mail];
[e-mail]; Mehta, Sonal
Subject: Re: Eolas: IV and IIF discovery requests

Josh.
My apologies but I'm traveling today and have been tied up on another matter. Let me get with our co­
defendants and we'll get you a time to talk.
Jennifer
Sent from my iPhone

6/20/2011

Page 5 of8
On Jun 7, 2011, at 4:08 PM, "Josh Budwin" <[e-mail]> wrote:
Hi Josh ­
Please advise. This issue cannot drag our any longer.

Thanks.

From: Josh Budwin

Sent: Monday, June 06, 2011 4:57 PM
To: 'Josh Thane'
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests
Thank you. As soon as you have alternate times for the meet and confer, please let me know.

From: Josh Thane [mailto:[e-mail]]

Sent: Monday, June 06, 2011 4:56 PM
To: Josh Budwin
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests

Josh,
Thanks for your email. We are trying to coordinate with Apple/Google/Adobe prior to responding
so that we can hopefully provide you one response for all defendants as opposed to just
AmazonleBay/YahooL Given the number of defendants this relates to it may take a little while to
provide a coordinated response, but we will respond as soon as we can.
Thanks,
Josh
From: Josh Budwin [mailto:[e-mail]]

Sent: Monday, June 06, 2011 4:42 PM
To: Josh Thane
cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and !IF discovery requests
Hi JoshPlease respond to items (1 )-(3) below today. so that we may schedule the call for tomorrow. Without
responses we cannot schedule the call which we would like to do without further delay.
Thank you.

From: Josh Budwin
Sent: Monday, June 06,2011 2:32 PM
To: 'Josh Thane'
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and !IF discovery requests
Hi Josh­
(1) Are you coordinating for all defendants including Apple/Google/Adobe or just the Weil defendants
(eBay /YahoolAmazon)?

6/2012011

Page 6 of8
(2) Are you planning on a Rule 7 leadllocal meet and confer or something informal? If a Rule 7 meet and

confer, I will check with our lead counsel.

(3) As requested twice now, please provide a written response explaining your refusal to provide the

requested information, in advance of the meet and confer.

Thanks.

From: Josh Thane [mailto:[e-mail]]

Sent: Monday, June 06,2011 2:22 PM

To: Josh

Budwin
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; Mehta, Sonal
Subject: RE: Eolas: IV and IIF discovery requests

Josh,
Sonal asked us to coordinate this issue. We are available for a meet and confer tomorrow morning
at lOam CST to discuss this matter with you. Dial-in information is listed below.
Telephone: #[phone]
Passcode: 30705
Regards,
Josh
Josh Thane, J.D.
HALTOM & DOAN
Crown Executive Center, Suite 100
6500 Summerhill Road
Texarkana, Texas 75503
[phone] Direct
[phone] Office
[phone] Facsimile

ithan~,@haltomgoillJ:cpm . _~~~~_~._~,~...",_ _..,__ ,~"". _"_'_'~'. __ ".__'_~_"'_''''~_'_''_~~'_''_''~''~_''_' __ ''~_ .."

From: Josh Budwin [mailto:[e-mail]]

Sent: Monday, June 06, 2011 8:51 AM

To: Josh Budwin; Mehta, Sonal

Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G

Group Google; F&R Group Adobe; Jennifer Doan; Josh Thane; [e-mail];

[e-mail]

Subject: RE: Eolas: IV and IIF discovery requests

Hi Sonal (and counsel for other defendants)­
Please let us know whether each of you will produce the requested Intellectual Ventures documents. If not,

as requested please state your basis for refusing the production in writing. As these documents relate to the

upcoming expert report deadline, any further delay is unacceptable.

Thank you.

From: Josh Budwin

Sent: Thursday, June 021 2011 12:43 PM

To:

Mehta l Sonal
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]1; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; [e-mail]
Subject: RE: Eolas: IV and IIF discovery requests
Hi Sonal (and counsel for other defendants) ­

As you are no doubt awarel Eolas is seeking damages from your clients as a result of their infringement of
Eolas' patents. The law provides that Eolas may recover "no less than a reasonable royalty" for such
infringement. As you are further awarel the damages framework for a reasonable royalty analysis includes
the Georgia Pacificfactors. Comparable licenses are highly relevant under the Georgia Pacificfactors. Our
understanding from the public documentation cited in my letter is that your clients' investment in
Intellectual Ventures includes a license or covenant not to sue with respect to the Intellectual Ventures
portfolio of patents. AccordinglYI information related to which patents Intelletcual Ventures owns/controls

6/20/2011

Page 70f8
and the amonunt of money your clients paid to obtain a license/convenant not to sue with respect to those
patents is relevant to the Georgia Pacific analysis. Moreover, Rule 26 and the local rules for the EDTX have
a broad view of relevance. The information Eolas seeks with respect to your clients investments falls within
the scope of relevant information because it informs the Georgia Pacific analysis. If you disagree, and
assert that such information cannot be relevant, please explain your basis in writing.
With respect to your request for a meet and confer with lead and local, please suggest at least two dates
and times either tomorrow (Friday) or Monday. I will see if those times work from our end. That said,
before the meet and confer, please provide your written response as to why you contend such information
is not discoverable.
Thanks.

From: Mehta, Sonal [[e-mail]]

Sent: Wednesday, June 01, 2011 9:22 PM
To: Josh Budwin
Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; [e-mail]
Subject: RE: Eolas: IV and IIF discovery requests

Hi Josh,
Thanks for your email. Is there anything more specific Eolas is willing to say to allow us to
consider your requests? Based on what you folks have said so far, we do not see how the
discovery could be relevant to any issue in the case. But if you have a theory of relevance beyond
the fact that it is "relevant to damages" in your view and somehow relates to several of the Georgia
Pacific factors, which you have not identified, we are of course open to considering it. If not, we
will understand that is all that Eolas can or will articulate and request a LR 7 meet and confer
conference so that we can raise this issue with Judge Davis. Please let us know when counsel for
Eolas is available.
Best,
<imageOO 1.jpg>
Sonal N. Mehta
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

From: Josh Budwin [mailto:[e-mail]]

Sent: Wednesday, May 25, 2011 3:10 PM
To: Mehta, Sonal
Cc: Eolas; Yahoo-Eo las; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; [e-mail];
[e-mail]; [e-mail]
Subject: RE: Eolas: IV and IIF discovery requests
Typo corrected below.

From: Josh Budwin

Sent: Wednesday, May 25, 2011 4:54 PM

To: 'Mehta, Sonal'

Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G

Group Google; F&R Group Adobe; Jennifer Doan; Joshua Thane; [e-mail];

[e-mail]

Subject: RE: Eolas: IV and IIF discovery requests

Hi 80nal­
In addition to the statement you quote below, the requested discovery is relevant to damages issues,

including, but not limited to several of the Georgia Pacific factors.

6/20/2011

Page 8 of8
Please let us know if you will provide the requested discovery, and, if not, on what basis.
Thank you.

From: Mehta, Sonal [mailto:[e-mail]]

Sent: Tuesday, May 241 2011 2:27 PM
To: Josh Budwin

Cc: Eolas; Yahoo-Eolas; Amazon-Eolas; EBay-Eolas; [e-mail]; [e-mail]; R&G
Group Google; F&R Group Adobe; Jennifer Doan; Joshua Thane; [e-mail];
[e-mail]
Subject: Eolas: IV and IIF discovery requests

Josh,
We are in receipt of Eolas's requests last Friday for documents and Rule 30(b)(6) deposition
testimony relating to Intellectual Ventures and Invention Investment Fund. Your letter notes that
the "the information is relevant to how our clients value patents and patent litigations, which may
relate to the claims or defenses made by the parties in this action." We would appreciate it if you
could let us know Eolas's position on whether there is anything more particular you can say about
your theory of relevance to this discovery beyond that general statement so we can consider your
position in responding to your Intellectual Ventures and Invention Investment Fund discovery
requests.
Best,
<imageOO 1.jpg>
Sonal N. Mehta
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

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6/20/2011