Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 965

MOTION for Reconsideration re 914 Memorandum & Opinion, EOLAS' MOTION TO RECONSIDER CONSTRUCTION OF "EXECUTABLE APPLICATION" IN MEMORANDUM OPINION AND ORDER (DKT. NO. 914) OR, IN THE ALTERNATIVE, TO CERTIFY THE QUESTION FOR INTERLOCUTORY APPEAL by Eolas Technologies Incorporated. (Attachments: # 1 Text of Proposed Order)(McKool, Mike)

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

Eolas Technologies Incorporated,
Plaintiff,
vs.
Adobe Systems Inc., Amazon.com, Inc.,
Apple Inc., Argosy Publishing, Inc.,
Blockbuster Inc., CDW Corp.,
Citigroup Inc., eBay Inc., Frito-Lay, Inc.,
The Go Daddy Group, Inc., Google Inc.,
J.C. Penney Company, Inc., JPMorgan
Chase & Co., New Frontier Media, Inc.,
Office Depot, Inc., Perot Systems Corp.,
Playboy Enterprises International, Inc.,
Rent-A-Center, Inc., Staples, Inc., Sun
Microsystems Inc., Texas Instruments Inc.,
Yahoo! Inc., and YouTube, LLC
Defendants.

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Civil Action No. 6:09-CV-00446-LED

JURY TRIAL

PLAINTIFF EOLAS’ MOTION TO RECONSIDER
CONSTRUCTION OF “EXECUTABLE APPLICATION” IN
MEMORANDUM OPINION AND ORDER (DKT. NO. 914) OR, IN THE
ALTERNATIVE, TO CERTIFY THE QUESTION FOR INTERLOCUTORY APPEAL

TABLE OF CONTENTS
I.

INTRODUCTION ...............................................................................................................1

II.

ARGUMENT.......................................................................................................................3
A.

The Court’s Construction of “Executable Application” Is in
Direct Conflict With the Federal Circuit’s Construction of
the Same Term. ........................................................................................................3

B.

Stare Decisis Compels The Court to Follow the Federal
Circuit’s Construction of “Executable Application.” ..............................................5

C.

The Court’s Construction of “Executable Application” Is
Otherwise in Error....................................................................................................8
1.

2.

III.

The ’906 patent claims make clear that “executable
application”
is
necessarily
broader
than
“controllable application”—a term that, the Court
notes, covers interpretable codes. ................................................................9

3.

D.

The Court’s “compiled program” and “native
machine code” limitations are neither drawn from
the specification nor the subject of any prosecutionhistory disclaimer.........................................................................................8

The dictionary definition cited by the Court
confirms that “executable application” covers
interpretable codes. ....................................................................................10

In the alternative, the Court Should Certify the Question of
Stare Decisis for Interlocutory Appeal Under 28 U.S.C. §
1292(b)...................................................................................................................11

CONCLUSION..................................................................................................................13

McKool 396803v5

i

TABLE OF AUTHORITIES
Page(s)
CASES
Ahrenholz v. Board of Trustees of Univ. of Illinois,
219 F.3d 674 (7th Cir. 2000) ...................................................................................................11
Amgen, Inc. v. F. Hoffmann-LaRoche Ltd.,
494 F. Supp. 2d 54 (D. Mass. 2007) ..........................................................................................6
Brady Constr. Innovations, Inc. v. Perfect Wall, Inc.,
290 Fed. Appx. 358 (Fed. Cir. 2008) (unpublished)..................................................................8
Cybor Corp. v. Fas Techs.,
138 F.3d 1448 (Fed. Cir. 1998) (en banc) .........................................................................6, 7, 8
DuPree v. Kaye,
2008 U.S. Dist. LEXIS 7993 (N.D. Tex. Feb. 4, 2008)...........................................................12
Eolas Techs. Inc. v. Microsoft Corp.,
399 F.3d 1325 (Fed. Cir. 2005)........................................................................................ passim
Eolas Techs. Inc. v. Microsoft Corp.,
No. 99-CV-0626, 2000 U.S. Dist. LEXIS 18886 (N.D. Ill. Dec. 29, 2000)..................3, 4, 7, 9
Key Pharm. v. Hercon Labs. Corp.,
161 F.3d 709 (Fed. Cir. 1998)....................................................................................................6
Markman v. Westview Instr.,
517 U.S. 370 (1996)...............................................................................................................6, 8
McFarlin v. Conseco Servs., LLC,
381 F.3d 1251 (11th Cir. 2004) ...............................................................................................11
McNamara v. Bre-X Minerals Ltd.,
68 F. Supp. 2d 759-61 (E.D. Tex. 1999)....................................................................................3
Nat’l Org. of Veterans’ Advocates, Inc. v. Sec’y of Veterans Affairs,
260 F.3d 1365 (Fed. Cir. 2001)..................................................................................................5
Newell Cos. v. Kenney Mfg. Co.,
864 F.2d 757 (Fed. Cir. 1988)....................................................................................................5
Pass & Seymour, Inc. v. Hubbell Inc.,
No. 5:07-CV-945, 2011 U.S. Dist. LEXIS 1135 (N.D.N.Y Jan. 5, 2011).................................6

McKool 396803v5

ii

Phonometrics, Inc. v. Economy Inns of Am.,
349 F.3d 1356 (Fed. Cir. 2003)..............................................................................................5, 7
Phonometrics, Inc. v. Westin Hotel Co.,
350 F.3d 1242 (Fed. Cir. 2003)..............................................................................................5, 7
Rambus Inc. v. Hynix Semiconductor, Inc.,
569 F. Supp. 2d 946 (N.D. Cal. 2008) ...................................................................................6, 7
Shire LLC v. Sandoz, Inc.,
345 Fed. Appx. 535, 2009 U.S. App. LEXIS 3333 (Fed. Cir. 2009).......................................12
Software Rights Archive, LLC v. Google Inc.,
No. 2:07-CV-511, 2009 U.S. Dist. LEXIS 53356 (E.D. Tex. 2009) .................................11, 12
Zenith Radio Corp. v. United States,
783 F.2d 184 (Fed. Cir. 1986)....................................................................................................6

STATUTES
28 U.S.C. § 1292(b) .......................................................................................................2, 10, 11, 13
28 U.S.C. § 1292(c)(1)...................................................................................................................12

McKool 396803v5

iii

I.

INTRODUCTION
Plaintiff Eolas Technologies Inc. (“Eolas”) files this motion respectfully requesting that

the Court reconsider its construction of the term “executable application” in the Memorandum
Opinion and Order signed on August 22, 2011, Dkt. No. 914 (the “Order”), or, in the alternative,
to certify the question for interlocutory appeal.
The Federal Circuit construed this term to mean “any computer program code, that is
not the operating system or a utility, that is launched to enable an end user to directly interact
with data.” In its Order, this Court construes the same term to mean “a compiled program that
is in native machine code in a format that can be loaded into memory and run.” These two
constructions are in direct conflict: they are mutually exclusive and cannot both be right.
Consider interpretable codes as a highly relevant example. The Federal Circuit’s construction
plainly includes such codes; this Court’s construction plainly excludes them. And this conflict is
explicit. The earlier district court opinion—affirmed by the Federal Circuit—found that the file
history broadly defined “executable application” to include interpretable codes, and that this
broad definition confirmed Eolas’ reading of the term. This Court finds, in contrast, that the term
and its file history exclude interpretable codes. To remedy this direct conflict with controlling
authority, the Court should reconsider its construction of the term “executable application.”
Furthermore, principles of stare decisis—and the recognized need for national uniformity
and finality in matters of claim construction—require the straightforward adoption in this Court
of the construction already affirmed by the Federal Circuit. In its Order, the Court rejected the
application of stare decisis on the ground that Microsoft’s arguments in the prior case focused on
a proposed “standalone program” limitation, rather than a “compiled program” limitation. The
law is clear, however, that stare decisis does not attach to the arguments made in a prior case;
instead it attaches to the legal issue decided there. And the legal issue decided by the Federal
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Circuit was “the proper definition of the term [‘executable application’].” Furthermore,
Microsoft was not the only party offering arguments in the prior case. While Microsoft argued
that the term was limited to standalone program code, Eolas argued that the term was not at all
limited in this way—that it broadly covered any kind of program code (including interpretable
code). And of course Eolas’ argument ultimately carried the day. In short, the Federal Circuit did
not merely reject Microsoft’s position; it also explicitly affirmed, following the district court,
Eolas’ position that the term broadly covered “any computer program code” meeting the other
limitations. Stare decisis binds this Court to follow that controlling legal decision.
As further support for its motion to reconsider, Eolas briefly offers a few merits-based
points for the Court’s consideration: 1) the “compiled program” and “machine code” limitations
are neither drawn from the specification nor the subject of any disclaimer; 2) “executable
application” is necessarily broader than “controllable application”—a term that, the Court notes,
covers interpretable codes; and 3) the dictionary definition cited by the Court confirms that
“executable application” covers interpretable codes.
Alternatively, certification for interlocutory appeal is appropriate in this case, where the
Court’s claim construction Order involves a controlling question of law as to which there is
substantial ground for difference of opinion, and an immediate appeal from the Order may
materially advance the ultimate termination of the litigation. Here, whether this Court is bound
by stare decisis to apply the construction adopted by the Illinois district court and affirmed by
the Federal Circuit is such a controlling question of law that should be decided on interlocutory
appeal under 28 U.S.C. § 1292(b).
For all of these reasons, Eolas respectfully requests that the Court reconsider its
construction of “executable application,” and adopt the construction affirmed by the Federal

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Circuit as the proper definition of that term or, in the alternative, certify the Memorandum
Opinion and Order construing the claim terms for interlocutory appeal of the stare decisis issue.
II.

ARGUMENT
A.

The Court’s Construction of “Executable Application” Is in Direct Conflict
With the Federal Circuit’s Construction of the Same Term.

Although reconsideration is permitted only in “narrow situations,” this Court has
recognized that one such situation is “to correct manifest errors of law.” McNamara v. Bre-X
Minerals Ltd., 68 F. Supp. 2d 759-61 (E.D. Tex. 1999).

Respectfully, the Court’s claim

construction Order contains such a legal error. The Court should reconsider its construction of
the term “executable application” because its holding that the term is limited to “a compiled
program that is in native machine code” directly conflicts as a matter of law with the Federal
Circuit’s earlier holding that the term broadly covers “any computer program code” otherwise
meeting the claimed limitations.
The meaning of the term “executable application” was hotly contested in the earlier
litigation with Microsoft. Microsoft argued that the term excluded certain kinds of program code,
while Eolas argued that the term included any kind of code that enabled interactive processing.
Eolas Techs. Inc. v. Microsoft Corp., No. 99-CV-0626, 2000 U.S. Dist. LEXIS 18886, at *14
(N.D. Ill. Dec. 29, 2000). The district court found that, “[e]arly in the [file] history, the
executable application is thus defined as any executable, interpretable or launchable program
instructions or codes.” Id. at *29 (emphasis added). This “broad definition,” the court concluded,
“confirms Eolas’s view of the executable application.” Id. After scouring the record for any
potential disavowal of this broad definition, the court held that the term “executable application”
meant “any computer program code, that is not the operating system or a utility, that is
launched to enable an end-user to directly interact with data.” Id. at *41 (emphasis added).
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Microsoft appealed this holding to the Federal Circuit, which set for itself the task of
construing “executable application.” Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1336
(Fed. Cir. 2005). After carefully reviewing the specification, the file history, and the district
court’s opinion, the Federal Circuit held that “the district court correctly gleaned the proper
definition of the term from the intrinsic evidence including the patent claims and the prosecution
history.” Id. at 1338. Now to be sure, much of the Federal Circuit’s discussion was directed to
refuting Microsoft’s particular argument regarding “standalone programs.” Id. at 1336-37. But in
the end the Federal Circuit did not merely reject Microsoft’s argument; it also explicitly affirmed
Eolas’ argument that the term “executable application” broadly covered “any computer
program code” meeting the other limitations. Id. at 1336 (emphasis added); see also Eolas,
2000 U.S. Dist. LEXIS 18886, at *14, 29, 41. This was, in fact, the Federal Circuit’s principal
holding on the issue. Eolas, 399 F.3d at 1336, 1338.
But now this Court has held otherwise. According to the Court’s construction of the same
term found in the same claims, an “executable application” cannot consist of “any computer
program code,” but instead must be limited to “a compiled program that is in native machine
code.” Order at 11 (emphasis added). The Court’s construction is thus in direct conflict with the
Federal Circuit’s construction of this term: the two are mutually exclusive and cannot both be
right. Notably, this conflict explicitly extends to the status of interpretable codes. The district
court in Illinois found that the file history broadly defined “executable application” to include
“interpretable . . . codes,” and the Federal Circuit affirmed that court’s handling of “the intrinsic
evidence including the patent claims and prosecution history.” See Eolas, 2000 U.S. Dist. LEXIS
18886, at *29; Eolas, 399 F.3d at 1338. This Court, in contrast, has concluded that the claim
term, along with its file history, excludes interpretable codes. Order at 7, 11.

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This direct conflict raises a pressing question: what will happen when this case is on
appeal, and the Federal Circuit is asked to construe the term “executable application” as used in
the ’906 patent? The panel will be faced with two principal alternatives: approve the construction
of this Court, pursuant to which an “executable application” is limited to “a compiled program
that is in native machine code,” or approve the construction of the earlier Federal Circuit panel,
pursuant to which an “executable application” can be “any computer program code.” The
choice should be clear, as “under principles of stare decisis,” future Federal Circuit panels “will
follow the claim construction set forth by” an earlier panel. Phonometrics, Inc. v. Westin Hotel
Co., 350 F.3d 1242, 1244 (Fed. Cir. 2003). The Federal Circuit has in fact “adopted the rule that
prior decisions of a panel of the court are binding precedent on subsequent panels unless and
until overturned in banc.” Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988).
And that rule applies to the construction of claim terms. See Phonometrics, Inc. v. Economy Inns
of Am., 349 F.3d 1356, 1363-64 (Fed. Cir. 2003). In short, the panel asked to construe
“executable application” in this case will be bound—under principles of stare decisis—to
“follow the claim construction set forth by” the earlier panel. See Westin Hotel, 350 F.3d at 1244.
Eolas thus respectfully asks the Court to reconsider its conflicting conclusion that an
“executable application” is limited to “a compiled program that is in native machine code,” and
adopt instead the holding of the earlier Federal Circuit panel, pursuant to which an “executable
application” can be “any computer program code” meeting the other limitations. See Order at 11;
Eolas, 399 F.3d at 1336; Westin Hotel, 350 F.3d at 1244.
B.

Stare Decisis Compels The Court to Follow the Federal Circuit’s
Construction of “Executable Application.”

Stare decisis looms large here. This simple but powerful doctrine “binds courts to follow
their own earlier decisions or the decisions of a superior tribunal.” Nat’l Org. of Veterans’

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Advocates, Inc. v. Sec’y of Veterans Affairs, 260 F.3d 1365, 1373 (Fed. Cir. 2001). In its seminal
Markman decision, the Supreme Court held that claim construction should be subject to the
doctrine—indeed, the Court cited the uniformity and finality promised by stare decisis as a
compelling reason to treat claim construction as a legal question. Markman v. Westview Instr.,
517 U.S. 370, 390-91 (1996). Following Markman, the Federal Circuit “recognize[s] the national
stare decisis effect that [its] decisions on claim construction have.” Key Pharm. v. Hercon Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998); see also Cybor Corp. v. Fas Techs., 138 F.3d 1448,
1455 (Fed. Cir. 1998) (en banc) (“the Supreme Court endorsed this court’s role in providing
national uniformity to the construction of a patent claim”). The district courts also recognize the
role of stare decisis in this context, confirming that “[w]here the Federal Circuit has already
construed the claims [in dispute], then that higher Court’s construction is binding, and [the
district courts] cannot modify its holding.” Amgen, Inc. v. F. Hoffmann-LaRoche Ltd., 494 F.
Supp. 2d 54, 60-61 (D. Mass. 2007); see also Pass & Seymour, Inc. v. Hubbell Inc., No. 5:07CV-945, 2011 U.S. Dist. LEXIS 1135, at *4 (N.D.N.Y Jan. 5, 2011) (“[D]istrict courts are bound
to apply the Federal Circuit’s claim constructions, even as against non-parties to the initial
litigation.”); Rambus Inc. v. Hynix Semiconductor, Inc., 569 F. Supp. 2d 946, 963-64 (N.D. Cal.
2008) (“A district court must apply the Federal Circuit’s claim construction even where a nonparty to the initial litigation would like to present new arguments.”).
As this extensive authority demonstrates, the doctrine of stare decisis does not depend on
the particular arguments offered by the parties; instead it flows from the legal nature of the issue
decided. 1 See Rambus, 569 F. Supp. 2d at 963-64; see also, e.g., Zenith Radio Corp. v. United

1

Consider, for example, the interpretation of a statute. If an initial panel held that a particular
statutory provision covered “any computer program code,” then stare decisis would preclude any
subsequent holding—absent a ruling en banc—that this provision covered something other than
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States, 783 F.2d 184, 187 & n.4 (Fed. Cir. 1986) (noting that the legal issues decided “are not
necessarily limited to those briefed by the parties”). In the context of claim construction, the
legal issue decided—the issue on which Markman requires national uniformity and finality—is
“the construction of a patent claim.” Cybor, 138 F.3d at 1455. The panel in Eolas decided that
“the proper definition of the term [‘executable application’]” was “any computer program code,
that is not the operating system or a utility, that is launched to enable an end user to directly
interact with data.” Eolas, 399 F.3d at 1336, 1338. Once that legal issue was decided, stare
decisis took effect, and it now compels this Court—like any “future panels” of the Federal
Circuit—to “follow the claim construction set forth.” Westin Hotel, 350 F.3d at 1244. Even a
sincere “belief that the construction of the limitation . . . is incorrect” provides no basis to
relitigate the issue. Economy Inns, 349 F.3d at 1363-64.
In short, as demonstrated above, the Court should reconsider its construction of
“executable application” because it directly conflicts with prior legal determinations that the term
includes “interpretable . . . codes” and broadly covers “any computer program code.” See Eolas,
2000 U.S. Dist. LEXIS 18886, at *29; Eolas, 399 F.3d at 1338. But the Court should also
reconsider its construction for the simple reason that the Federal Circuit has already construed
the term “executable application,” and under principles of stare decisis and the Supreme Court’s
guidance in Markman, this Court’s duty—no less than that of the panel ultimately reviewing this
issue on appeal—is to follow the construction that the Federal Circuit has determined to be “the
proper definition of the term.” See Eolas, 399 F.3d at 1338; Westin Hotel, 350 F.3d at 1244. Any

“any computer program code.” And this would be true even if a subsequent court believed that
the initial panel would have reached a different conclusion had it been presented with a different
argument. The analysis is no different with respect to claim construction. See Cybor, 138 F.3d at
1455; Economy Inns, 349 F.3d at 1363-64; Rambus, 569 F. Supp. 2d at 963-64.
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other result robs the Federal Circuit’s construction of the finality and uniformity that the
Supreme Court intended it to have under Markman, 517 U.S. at 390-91. 2
C.

The Court’s Construction of “Executable Application” Is Otherwise in
Error.

Eolas offers stare decisis and a direct conflict with the Federal Circuit’s holding as the
principal reasons to reconsider the construction of “executable application.” But given the fact
that much of the Court’s discussion relating to this term was not drawn from the parties’
arguments, Eolas also briefly offers a few merits-based points for the Court’s consideration.
1.

The Court’s “compiled program” and “native machine code”
limitations are neither drawn from the specification nor the subject of
any prosecution-history disclaimer.

As an initial matter, it is worth noting that the “compiled program” and “native machine
code” limitations have no connection to either the claims or the specification. The Court’s Order
cites the ’906 patent specification at columns 8:66-9:7 and 13:11-15 in relation to its discussion
of a “CPU [that] fetches a machine code instruction . . . [that] must be in a binary form,” but a
review of those portions of the specification reveal no references to machine codes or binary
forms. Column 8:66-9:7 discusses “a preferred embodiment”—but nowhere mentions any
“machine code instruction . . . in a binary form.” Even if it did, however, such a reference would
be subject to the Federal Circuit’s holding that, “absent a clear disclaimer . . . , the embodiments
in the specification do not limit broader claim language.” Eolas, 399 F.3d at 1336. And of
course, as both this Court and the Federal Circuit agree, there was no disclaimer of any claim

2

Cf. Brady Constr. Innovations, Inc. v. Perfect Wall, Inc., 290 Fed. Appx. 358, 363 (Fed. Cir.
2008) (unpublished) (“Under the principles of stare decisis and the Supreme Court’s guidance in
Markman, this court follows the claim construction of prior panels absent exceptional
circumstances.”); Cybor, 138 F.3d at 1479 (Newman, J. and Mayer, C.J., providing additional
views) (“The promise of uniformity and finality, flowing from decisions of national effect, is a
failed promise if we are not bound by stare decisis in our own claim interpretation.”).
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scope with respect to the ’906 patent. See id. at 1336-38; Order at 10. Column 13:11-15 in fact
teaches away from the Court’s construction, explaining that the invention covers “any manner
of application program.” In short, the “compiled program” and “native machine code”
limitations appear nowhere in the claims or specification—and established principles of claim
construction hold that it is error to import such extraneous limitations into the claims.
2.

The ’906 patent claims make clear that “executable application” is
necessarily broader than “controllable application”—a term that, the
Court notes, covers interpretable codes.

The Court’s Order notes that, during prosecution of the ’906 patent, the examiner
understood the term “controllable application” to cover interpretable codes. Order at 8. The
Court then suggests, however, that the patentee’s “redirect[ed] focus” from the term
“controllable application” to the term “executable application” permits the inference that
“executable application” does not cover interpretable codes. Id. at 8-9. But that cannot be right.
Independent claim 1 of the ’906 patent recites an “executable application,” and dependent claim
2 describes “[t]he method of claim 1, wherein said executable application is a controllable
application.” As a matter of legal and logical necessity, therefore, a “controllable application” is
a kind of “executable application.” That is, “executable application” is necessarily broader
than “controllable application”—and because “controllable application” covers interpretable
codes, so too must “executable application.” And any other conclusion, as noted above, runs into
direct conflict with the Illinois district court’s holding on this point. 3 See Eolas, 2000 U.S. Dist.

3

The Court’s discussion of references to “executable scripts” in the file history further confirms
that both the examiner and the patentee understood “scripts”—that is, interpretable codes—as
being “executable.” Order at 9. Moreover, the patentee’s response to the Mercury/Hansen art
characterizes the scripts at issue as “executing code embedded in the document.” Dkt. No. 570 at
87-93 (File history, paper 5, p. 17).
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LEXIS 18886, at *29-30 (rejecting Microsoft’s argument that “executable application” was
narrower than “controllable application”).
3.

The dictionary definition cited by the Court confirms that “executable
application” covers interpretable codes.

As the Court acknowledges, the dictionary definition cited in its Order contemplates that
the term “executable program” covers interpretable codes. Order at 9-10. The Court suggests,
however, that the reference to interpretable codes is a “secondary” meaning that should be
discounted in favor of the “primary” meaning relating to compiled programs in machine codes.
Id. at 10. The definition cited, however, does not suggest that the term sometimes includes
interpretable codes, and sometimes does not. To the contrary, it simply states that, “for
interpreted languages,” the term “can simply refer to source code in the proper format.” Id. at 9.
And for languages that are not interpreted—a more common scenario, hence, “usually”—the
term “refers to a compiled program that has been translated into machine code.” Id. In other
words, the definition simply makes clear that, with respect to traditional program languages, the
term “executable program” refers to a compiled program, but with respect to “interpreted
languages,” the term refers to “source code in the proper format.” Id.
In any event, even if the definition’s coverage of interpretable codes reflected only a
“secondary” meaning, id. at 10, that should have been sufficient to preclude any construction
contradicting that meaning. As Federal Circuit explained in the previous case, “because the term
‘executable application’ does not have a customary meaning in the computer science field,” the
Illinois district court appropriately declined to use dictionary definitions “to impose a sharp
limitation on its scope.” Eolas, 399 F.3d at 1336-37.

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D.

In the alternative, the Court Should Certify the Question of Stare Decisis for
Interlocutory Appeal Under 28 U.S.C. § 1292(b).

The Court’s claim construction order presents a controlling question of law warranting
immediate appeal: whether the Court is bound by stare decisis to apply the Federal Circuit’s
adoption in Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1336 (Fed. Cir. 2005), of the
construction of “executable application” to mean “any computer program code, that is not the
operating system or a utility, that is launched to enable an end user to directly interact with data.”
Certification for interlocutory appeal is appropriate when an “order involves a controlling
question of law as to which there is substantial ground for difference of opinion and [] an
immediate appeal from the order may materially advance the ultimate determination of the
litigation.” 28 U.S.C. § 1292(b). Certification is proper in circumstances involving a pure issue
of law, i.e., a question the appellate court can efficiently rule on without making an intensive
inquiry into the record. See Software Rights Archive, LLC v. Google Inc., No. 2:07-CV-511,
2009 U.S. Dist. LEXIS 53356, at *6 (E.D. Tex. 2009) (citing 9 JAMES W. MOORE

ET AL.,

MOORE’S FEDERAL PRACTICE 110.22[2] (2d ed. 1993)); Ahrenholz v. Board of Trustees of Univ.
of Illinois, 219 F.3d 674, 676-77 (7th Cir. 2000) (“because it was an abstract issue of law, it was
suitable for determination by an appellate court without a trial record”); McFarlin v. Conseco
Servs., LLC, 381 F.3d 1251, 1259 (11th Cir. 2004) (“To summarize, § 1292(b) appeals were
intended, and should be reserved, for situations in which the court of appeals can rule on a pure,
controlling question of law without having to delve beyond the surface of the record in order to
determine the facts.”). This is such a case. The Federal Circuit can decide the issue “quickly and
clearly without having to study the record.” Ahrenholz, 219 F.3d at 677. The Federal Circuit
need not even consider the facts and analysis leading to the differing claim constructions. The

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only issue is whether stare decisis requires the application of the claim construction of the
Federal Circuit in Eolas v. Microsoft.
There is also a substantial ground for difference of opinion here. Courts have found
substantial ground for difference of opinion where a trial court rules in a manner which appears
contrary to the rulings of all courts of appeal which have reached the issue. DuPree v. Kaye,
2008 U.S. Dist. LEXIS 7993, at *7 (N.D. Tex. Feb. 4, 2008) (citing 24 Am. Jur. 2d Appellate
Review § 123 (2007)); see also Software Rights, 2009 U.S. Dist. LEXIS 53356, at *11-12 (citing
DuPree, 2008 U.S. Dist. LEXIS 7993). The Court’s claim construction of “executable
application” conflicts directly with the construction of the term by the Federal Circuit in Eolas v.
Microsoft. Since the Federal Circuit is the only court of appeals that could consider the issue of
patent claim construction, the Court’s order here meets the “substantial ground for difference of
opinion” criteria. Under similar circumstances, where a district court refused to give preclusive
effect to a first district court’s prior claim construction, the Federal Circuit granted a petition for
permission to appeal under 28 U.S.C. § 1292(c)(1) (which gives the Federal Circuit exclusive
jurisdiction of an appeal of a matter involving a patent). See Shire LLC v. Sandoz, Inc., 345 Fed.
Appx. 535, 2009 U.S. App. LEXIS 3333 at *1-2 (Fed. Cir. 2009) (case was settled after grant of
the petition but before a ruling issued on appeal).
If this Court is bound by stare decisis to apply the meaning affirmed by the Federal
Circuit, reversal of any final judgment in this case seems assured. As described in Section A
above, the panel asked to review this Court’s construction of “executable application” will be
bound under principles of stare decisis to follow the claim construction of the Eolas v. Microsoft
appeal. Thus, the present litigation will be materially advanced by an immediate appeal to
address this controlling question of law. If the Federal Circuit disagrees with this Court’s Order,

12
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this Court’s limited judicial resources will not be wasted on a trial (or possibly on multiple
separate trials of the remaining defendants) based on an incorrect claim construction.
III.

CONCLUSION
For all of these reasons, Eolas respectfully requests that the Court reconsider its

construction of “executable application,” and adopt the construction affirmed by the Federal
Circuit as the proper definition of that term. In the alternative, Eolas respectfully requests that the
Court enter an order certifying its Memorandum Opinion and Order on claim construction for
interlocutory appeal under 28 U.S.C. § 1292(b).

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McKool 396803v5

Dated: September 6, 2011.

McKool 396803v5

MCKOOL SMITH, P.C.
/s/ Mike McKool
Mike McKool
Lead Attorney
Texas State Bar No. 13732100
[e-mail]
Douglas Cawley
Texas State Bar No. 04035500
[e-mail]
Holly Engelmann
Texas State Bar No. 24040865
[e-mail]
J.R. Johnson
Texas State Bar No. 24070000
[e-mail]
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Telecopier: [phone]
Kevin L. Burgess
Texas State Bar No. 24006927
[e-mail]
Josh W. Budwin
Texas State Bar No. 24050347
[e-mail]
Gretchen K. Curran
Texas State Bar No. 24055979
[e-mail]
Matthew B. Rappaport
Texas State Bar No. 24070472
[e-mail]
MCKOOL SMITH, P.C.
300 West Sixth Street, Suite 1700
Austin, Texas 78701
Telephone: [phone]
Telecopier: [phone]
ATTORNEYS FOR PLAINTIFF
EOLAS TECHNOLOGIES INC.

CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the above and foregoing document has
been served on all counsel of record via the Court’s ECF system on September 6, 2011. Per the
Court’s request, a true and correct copy of the above and foregoing document has also been
delivered to Mr. Michael T. McLemore, the Technical Advisor in this case, via Federal Express.
/s/ Josh Budwin
Josh Budwin

CERTIFICATE OF CONFERENCE
On August 29, 2011, counsel for Eolas conferred with counsel for Defendants by
telephone concerning the filing of the foregoing Motion. Further discussion between the Parties
occurred via email. Defendants oppose the relief sought in the Motion.
/s/ John B. Campbell
John B. Campbell

McKool 396803v5