Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 974

RESPONSE in Opposition re 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 INTERLO 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 INTERLO cutory Appeal filed by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Citigroup Inc., Frito-Lay, Inc., Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Affidavit, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Jones, Michael) (Additional attachment(s) added on 9/15/2011: # 5 Text of Proposed Order) (mjc, ).

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

DEFENDANTS’ OPPOSITION TO 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

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TABLE OF CONTENTS
Page
I.

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

II.

ARGUMENT .......................................................................................................................1
A.

EOLAS’ MOTION IGNORES THAT “MOTIONS TO RECONSIDER
SHOULD NOT BE USED TO RE-URGE MATTERS A PARTY HAS
ALREADY ADVANCED” .............................................................................................1

B.

EOLAS’ “STARE DECISIS” ARGUMENT IS MISPLACED,
PARTICULARLY GIVEN THE DIFFERENT DISPUTED ISSUES IN THE
MICROSOFT CASE, AND THE CHANGED INTRINSIC RECORD .....................................2
1.

2.
C.

“Stare Decisis” Is Inapposite Because This Case Involves
A Different Dispute About The Meaning Of “Executable
Application” .................................................................................................3
The Intrinsic Evidence Supports The Court’s Construction ........................9

EOLAS’ ATTACKS ON THE COURT’S CLAIM CONSTRUCTION ARE
MERITLESS..............................................................................................................10
1.
2.

The Court’s Construction Is Consistent With The Doctrine
of Claim Differentiation .............................................................................10

3.
D.

The Intrinsic Evidence Supports The Court’s Construction ......................10

The Court Correctly Interpreted The Dictionary Definition
Of “Executable Program” ..........................................................................11

AN INTERLOCUTORY APPEAL WOULD DISRUPT THE ORDERLY
CONCLUSION OF THIS LITIGATION AND EOLAS HAS NOT SATISFIED
THE STEEP STANDARD OF SECTION 1292(B) ..........................................................12
1.

2.

Eolas’ Argument That This Court’s Claim Construction
Order Violates Stare Decisis Is Meritless ..................................................14

3.
III.

Eolas Fails To Establish That Its Putative Challenge To An
Aspect of This Court’s “Executable Application”
Construction Involves A “Controlling” Issue Of Law ...............................13

An Interlocutory Appeal Would Not Advance The Ultimate
Termination Of The Litigation.................................................................155

CONCLUSION ..................................................................................................................15

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TABLE OF AUTHORITIES
Page(s)
CASES
Canon, Inc. v. GCC Intern. Ltd.,
263 Fed. Appx. 57 (Fed. Cir. 2008) .........................................................................................13
Elkay Mfg. Co. v. Ebco Mfg. Co.,
192 F.3d 973 (Fed. Cir. 1999)....................................................................................................9
Eolas Techs., Inc. v. Microsoft Corp.,
399 F.3d 1325 (Fed. Cir. 2005)........................................................................................ passim
Fernandez v. Bankers Nat’l Life Ins. Co.,
906 F.2d 559 (11th Cir. 1990) ...................................................................................................2
Flanagan v. United States,
465 U.S. 259 (1984) .................................................................................................................12
Intellicall, Inc. v. Phonometrics, Inc.,
952 F.2d 1382 (Fed. Cir. 1992)........................................................................................ passim
Kraft Foods, Inc. v. Int’l Trading Co.,
203 F.3d 1362 (Fed. Cir. 2000)................................................................................................11
Litepanels, LLC v. Gekko Technology, Ltd.,
No. 2:06-CV-167, 2006 U.S. Dist. LEXIS 84110 (E.D. Tex. Nov. 20, 2006)
(Davis, J.) ...................................................................................................................................1
Monroe v. Cessna Aircraft Co.,
No. 2:05-CV-250, 2006 WL 1305116 (E.D. Tex. May 9, 2006) (Davis, J.) .....................12, 15
O.I. Corp. v. Tekmar Co., Inc.,
115 F.3d 1576 (Fed. Cir. 1997)................................................................................................11
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc)..............................................................................2, 9
Phonometrics, Inc. v. Choice Hotels Int’l, Inc.,
21 Fed. Appx. 910 (Fed. Cir. 2001) ...........................................................................................7
Phonometrics, Inc. v. Economy Inns of Am.,
349 F.3d 1356 (Fed. Cir. 2003)..................................................................................................7
Phonometrics, Inc. v. N. Telecom, Inc.,
133 F.3d 1459 (Fed. Cir. 1998)........................................................................................ passim

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Table of Contents (continued)
Page
Phonometrics, Inc. v. Westin Hotel Co.,
319 F.3d 1328 (Fed. Cir. 2003)..............................................................................................6, 7
Phonometrics, Inc. v. Westin Hotel Co.,
350 F.3d 1242 (Fed. Cir. 2003)..................................................................................................7
Portney v. CIBA Vision Corp.,
401 Fed. Appx. 526 (Fed. Cir. 2010) .......................................................................................13
Quantum Corp. v. Tandon Corp.,
940 F.2d 642 (Fed.Cir.1991)....................................................................................................13
Raber v. Pittway Corp.,
Misc. No. 388, 1994 WL 18499 (Fed. Cir. Jan 13, 1994) .......................................................13
Shire LLC v. Sandoz, Inc.,
345 Fed. Appx. 535, 2009 WL 330235 (Fed. Cir. 2009).........................................................13
Springs Window Fashions L.P. v. Novo Industries, L.P.,
323 F.3d 989 (Fed. Cir. 2003)....................................................................................................9
State of La. v. Sprint Comm’ns Co.,
899 F. Supp. 282 (M.D. La. 1995) .............................................................................................1
U.S. Surgical Corp. v. Ethicon, Inc.,
103 F.3d 1554 (Fed. Cir. 1997)..................................................................................................8
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795 (Fed. Cir. 1999)....................................................................................................8
STATUTES
28 U.S.C. § 1292(b) .................................................................................................................12, 13

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I.

INTRODUCTION
This Court’s construction of “executable application” was based on full briefing and

argument, and is supported by detailed and thoughtful analysis. Eolas’ Motion To Reconsider
that Order should be denied for at least three independent grounds. First, Eolas’ Motion ignores
this Court’s ruling that “motions to reconsider should not be used to re-urge matters a party has
already advanced.” Eolas’ arguments were recycled from its previous arguments made in
briefing and at the Markman hearing. Second, Eolas misapplies stare decisis, as best illustrated
by the very cases upon which Eolas’ Motion most heavily relies. Eolas’ stare decisis argument
also overlooks that two reexaminations of the ‘906 patent post-dated the Microsoft claim
construction, precluding that ruling from freezing the meaning of the claims. Third, Eolas’
recycled “merits-based” arguments do not even address, let alone overcome, this Court’s
considered analysis of the evidence relevant to the meaning of “executable application.”
Eolas fares no better with its alternative argument that the Court’s construction of
“executable application” should be certified for interlocutory appeal. Such an appeal is
particularly ill-suited for a claim construction dispute, such as the one proposed by Eolas here,
relating only to some of Eolas’ infringement contentions. It is thus unsurprising that none of the
statutory requirements for interlocutory appeal certification is satisfied here.
For all of these reasons, Eolas’ Motion should be denied in its entirety.
II.

ARGUMENT
A.

EOLAS’ MOTION IGNORES THAT “MOTIONS TO RECONSIDER SHOULD NOT BE
USED TO RE-URGE MATTERS A PARTY HAS ALREADY ADVANCED”

This Court has held that “[m]otions to reconsider should not be used to re-urge matters a
party has already advanced.” 1 Yet Eolas’ Motion does just that. In its Motion, Eolas asserts that

1

Litepanels, LLC v. Gekko Technology, Ltd., No. 2:06-CV-167, 2006 U.S. Dist. LEXIS 84110, at *2 (E.D. Tex.
Nov. 20, 2006) (Davis, J.) (denying motion to reconsider); see also, e.g., State of La. v. Sprint Comm’ns Co., 899 F.

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(1) the construction of “executable application” as “a compiled program that is in native machine
code” is in conflict with the Federal Circuit’s decision in Eolas v. Microsoft, (2) this Court is
required to apply the construction affirmed in Microsoft, and (3) this Court’s construction of
“executable application” is not supported by intrinsic or extrinsic evidence. These arguments
have all been previously advanced by Eolas, during claim construction briefing 2 and oral
argument, 3 and all were rejected by this Court. Eolas’ re-urging of those arguments via
reconsideration is improper. Eolas’ Motion should be denied for that reason alone.
B.

EOLAS’ “STARE DECISIS” ARGUMENT IS MISPLACED, PARTICULARLY GIVEN
THE DIFFERENT DISPUTED ISSUES IN THE MICROSOFT CASE, AND THE
CHANGED INTRINSIC RECORD

Eolas’ Motion seeks to expand the doctrine of stare decisis beyond recognition. Stare
decisis is of course the simple concept that prior precedent should be respected. But rather than
treating the Microsoft decision as a prior precedent controlling as to the same issue and the same
Supp. 282, 284 (M.D. La. 1995) (“[L]itigants are expected to present their strongest case when the matter is first
considered. Fernandez v. Bankers Nat’l Life Ins. Co., 906 F.2d 559 (11th Cir. 1990). A motion to reconsider based
on recycled arguments only serves to waste the resources of the court.”) (denying two motions to reconsider).
2
See, e.g., 12/23/2010 Opening Claim Construction Brief of Plaintiff Eolas Techs., Inc. (D.N. 537) at 1 (“Of these
many terms, one has been construed in a previous litigation, and that construction was affirmed on appeal.
Defendants nevertheless propose a new and different construction for this term, importing limitations not present in
the construction affirmed by the Federal Circuit.”), 8 (“As noted above, the term ‘executable application’ was
construed in Eolas’ prior litigation with Microsoft 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.’ Eolas Techs., 399 F.3d at
1336. The Federal Circuit affirmed this construction on appeal, holding that ‘the district court correctly gleaned the
proper definition of the term from the intrinsic evidence including the patent claims and prosecution history.’ Id.
Eolas’ proposal tracks the construction affirmed by the Federal Circuit, and should be adopted for that reason. See
id. at 1336, 1338. Defendants’ proposal, on the other hand, improperly imports narrowing limitations constraining
the term to be, inter alia, ‘a compiled native binary program.’ This language is found nowhere in the patents’ claims
or specification.”); 2/18/2011 Reply Claim Construction Brief of Plaintiff Eolas Technologies, Inc. (D.N. 581) at 2
(“The Federal Circuit has confirmed that Eolas’ proposal for this term reflects its ‘proper definition.’ Eolas Techs.,
Inc. v. Microsoft Corp., 399 F.3d 1325, 1332, 1336 (Fed. Cir. 2005). This definition was gleaned through an
application of the intrinsic-evidence approach outlined in the Markman and Vitronics cases, that is, the very
approach ‘reaffirm[ed]’ in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).” (citations to
exhibits omitted).
3
See, e.g., 3/3/2011 Markman Hearing Tr. (D.N. 649) 7:20-25 (“[T]he Federal Circuit considered and issued an
opinion affirming the construction of the term ‘executable application,’ the one we propose here today.”), 11:11-17
(discussing Federal Circuit affirmance of Eolas’ proposed construction), 12:8-13:5 (discussing district court and
Federal Circuit reliance on intrinsic evidence), 15:19-25 (arguing that defendants’ proposal improperly adds a
“native binary program” limitation to the Federal Circuit’s construction), 18:11-16 (arguing that “binary” limitation
is not supported by the intrinsic evidence and that the construction affirmed by the Federal Circuit should be
entered), 26:1-27:18, 28:14-29:2 (arguing that stare decisis compels application of the construction affirmed by the
Federal Circuit), 30:12-31:8 (arguing that change during prosecution from “controllable application” to “executable
application” did not indicate limitation of “executable application”).

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record, Eolas attempts to use that decision as a blunt instrument without any meaningful
consideration of the differences between the issues and the record presented in Microsoft versus
this case. This Court has already explained the differences between the issues presented here
and in the Microsoft case. As shown below, this Court had it right and need not reverse itself.
Eolas appears to take the extreme position that once a claim construction dispute between
two parties is resolved, there can be no other claim construction disputes by anyone else about
that same claim language. This makes no sense. It would require that courts, already required to
construe only those claim terms actually in dispute and only to the extent necessary to resolve
that dispute, do so knowing they would be precluding any future consideration of different legal
questions regarding that claim language. 4 Eolas’ misapplication of stare decisis also would
preclude a court from considering new intrinsic evidence, such as reexamination file histories
that arose after a prior construction of a single aspect of a claim term. That conflicts with
established precedent. For these separate and independent reasons, Eolas’ stare decisis argument
must fail.
1.

“Stare Decisis” Is Inapposite Because This Case Involves A Different
Dispute About The Meaning Of “Executable Application”

As this Court recognized in its claim construction order, “[t]he dispute regarding
‘executable application’ in Microsoft centered around whether the application was limited to
‘standalone programs.’” 5 Accordingly, both the district court and the Federal Circuit analyzed
the term “executable application” in that context. 6 This Court correctly decided that “Plaintiff’s
stare decisis argument is misplaced,” given the different disputed issues in this case.
Eolas contends that stare decisis requires that this Court adopt a previously-affirmed

4

Alternatively, this would require courts to pronounce advisory claim construction opinions about all aspects of a
claim term, including those not yet in dispute and so not properly before that court.
5
8/22/2011 Memorandum Opinion and Order (“Markman Order”) (D.N. 914) at 6.
6
Markman Order at 6-7.

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construction of one aspect of “executable application” as the final word on every aspect of that
term. But the prior construction answered a very different legal question (is “executable
application” limited to standalone programs?) than that presented here (is “executable
application” limited to native binary?). As the Court explained, the issue there was “whether
[‘executable application’] included components that were not standalone,” for example, a spell
check component of a word processing program. 7 The issue before this Court is “whether the
program is limited to native binary—a compiled program that is in machine code—as opposed to
an interpretable program that is in, for example, bytecode (e.g. scripts).” 8 Applying only the
language of the prior construction would expand stare decisis past its legal and logical limits.
Although Eolas’ Motion relies heavily on the Phonometrics cases, those cases vindicate
this Court’s Markman ruling, and undercut Eolas’ overbroad stare decisis argument. For
example, Eolas repeatedly quotes the Phonometrics v. Westin case as supporting the point that a
single Federal Circuit panel affirmation forecloses future claim construction:
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. 9
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. 10
Yet Eolas fails to mention the key point that, prior to this decision, two separate Federal Circuit
panels considering appeals from two separate prior Phonometrics litigations involving different
defendants, had already construed different aspects of the claimed “call cost register means” at
issue there. As here, different disputes about different aspects of claim language required
different constructions.

7

Markman Order at 7.
Markman Order at 7.
9
9/6/2011 Plaintiff Eolas’ Motion To Reconsider (D.N. 965) (hereinafter “Eolas Motion”) at 5 (emphasis added).
10
Eolas Motion at 5 (emphasis added).
8

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The first of the Phonometrics panels considered the 1992 case of Intellicall, Inc. v.
Phonometrics, Inc. (hereinafter Phonometrics I), a declaratory judgment action against patentee
Phonometrics. The patent involved “an apparatus for automatically computing and recording the
cost of a long-distance telephone call.” 11 The Phonometrics I Court explained that the disputed
issue was the requirements for the claimed “call cost register means, including a digital display
for providing a substantially instantaneous display of cumulative call cost in dollars and cents.” 12
The accused products did not provide a visual display of call costs, but instead either provided no
visual display at all, or visually displayed only time, not cost. The question was whether
providing machine-readable information about a call’s cost, following termination of the call,
satisfied the “display” and “instantaneous display” requirements of the “call cost register
means.” The Federal Circuit affirmed the district court’s claim construction, holding that
[t]he district court properly focused on the evidence of what the words, as used in the
context of the patent, would mean to one of skill in the art and found no support for a
construction of “digital display” which would encompass either machine readable or
human readable devices, nor for a construction that an “instantaneous [digital] display”
includes information given to a computer for later access. We agree. 13
The Court concluded, “The district court correctly interpreted the scope of the ‘463 claims.” 14
Based on Eolas’ arguments, the Phonometrics I decision would preclude subsequent
Markman proceedings to construe the claims of the ‘463 patent. At a minimum, Phonometrics I
would preclude any further construction of the “call cost register means,” including “display”
and “instantaneous display,” even in the face of new, different disputes about those terms. Yet
Phonometrics I had no such effect. Indeed, six years later, on appeal in a subsequent litigation
about the same claim limitation, the Federal Circuit affirmed a district court’s new, different
11

See Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1382, 1385 (Fed. Cir. 1992).
See Intellicall (Phonometrics I), 952 F.2d at 1386-87 (“The present appeal centers around the functions required
for the ‘call cost register means’ of the claim. The district court held that this means must provide an instantaneous
visual display of cumulative call cost in dollars and cents . . . .”).
13
See Intellicall (Phonometrics I), 952 F.2d at 1388.
14
See Intellicall (Phonometrics I), 952 F.2d at 1388. The Court then affirmed the district court’s holding of no
infringement. See id. at 1388-89.
12

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construction of the “call cost register means.” 15 In Phonometrics v. N. Telecom (hereinafter
Phonometrics II), the dispute centered on whether “substantially instantaneous” display required
display of call cost during calls. 16 This dispute involved a different aspect of the previouslyconstrued “call cost register means” than was disputed in Phonometrics I. 17 Neither the district
court nor the Federal Circuit refused to consider the meaning of “call cost register means” in
light of this new, different dispute. Indeed, in Phonometrics II, the Federal Circuit affirmed the
district court’s construction that the “call cost register means” must display cost during calls. 18
If the law were as Eolas posits, this result could not have occurred, and the panel in
Phonometrics II would have been bound, due to stare decisis, to blindly adopt the construction
of “call cost register means,” affirmed in Phonometrics I, which did not include this limitation. 19
Yet this did not occur, nor should it have, given that the two cases involved very different
disputes about what the claimed “call cost register means” required. Thus, the Federal Circuit in
Phonometrics II rejected an argument by patentee, who contended, just as Eolas contends here,
that the Phonometrics II panel was “bound” by the Phonometrics I construction. 20
Indeed, even after that argument was rejected in Phonometrics II, patentee argued in later
cases, just as Eolas argues here, that the construction affirmed in Phonometrics II was “in
conflict” with the Federal Circuit’s earlier affirmation of the construction in Phonometrics I. 21

15

See Phonometrics, Inc. v. N. Telecom, Inc. (Phonometrics II), 133 F.3d 1459, 1464 (Fed. Cir. 1998) (“Because we
can dispose of this appeal by construing only the ‘call cost register means,’ we need not and do not construe other,
unrelated clauses . . . .”).
16
See N. Telecom (Phonometrics II), 133 F.3d at 1464-65.
17
There, the dispute centered on the visual nature of “display” and “instantaneous display” and whether those
requirements could be satisfied by instantaneously providing information to machine memory, rather than providing
a visual display. See Intellicall (Phonometrics I), 952 F.2d at 1387 (rejecting patentee’s argument that
“‘instantaneous display’ requires only that a ‘digital display’ be instantaneously provided to the memory of a
machine.”); 1388 (affirming district court’s construction).
18
See N. Telecom (Phonometrics II), 133 F.3d at 1464-65, 1467 (“We hold that claim 1 of the ‘463 patent requires a
call cost register means which functions both to provide accurate cost information while the call progresses as well
as total cost information once the call has ended.”).
19
See Eolas Motion at 5.
20
See N. Telecom (Phonometrics II), 133 F.3d at 1464.
21
See, e.g., Phonometrics, Inc. v. Westin Hotel Co. (Phonometrics IV), 319 F.3d 1328, 1331 (Fed. Cir. 2003).

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For example, in a post-Phonometrics II case, patentee argued that Phonometrics II had
improperly limited the claim to require display “to the caller” despite what it contended was
contrary language in Phonometrics I. 22 The Federal Circuit disagreed: “even if the
[Phonometrics I] panel had believed that the claim did not include a ‘to the caller’ limitation, any
expression of that belief was, as the [Phonometrics II] opinion states, dictum, as it was not
essential to the holding in that case.” 23 It was in post- Phonometrics II cases—involving
subsequent litigations with identical disputes as in Phonometrics II —where the Federal Circuit
refused to revisit the prior construction on stare decisis grounds. 24 In contrast, as the Federal
Circuit recognized, the Phonometrics II construction, as it dealt with a different dispute about a
different aspect of the claim language, was not legally in conflict with Phonometrics I.
The Phonometrics cases support this Court’s construction and highlight Eolas’
misapplication of stare decisis. As this Court recognized, at issue in Microsoft was whether
“executable application” was limited to standalone programs, not whether “executable
application” was limited to native binary. Eolas’ argument that the prior construction decided,

22

See, e.g., Westin I (Phonometrics IV), 319 F.3d at 1331 (“[F]ootnote 1 of Intellicall [Phonometrics I] correctly
held that the phrase ‘to the caller’ cannot be part of the construction of the relevant claim limitation, whereas
Northern Telecom [Phonometrics II] impermissibly imported that limitation into the claim.”).
23
See Westin I (Phonometrics IV), 319 F.3d at 1332 (emphasis, naming added); see also Phonometrics, Inc. v.
Economy Inns of Am. (Phonometrics V), 349 F.3d 1356, 1364 n.4 (Fed. Cir. 2003); Phonometrics, Inc. v. Westin
Hotel Co. (Phonometrics VI), 350 F.3d 1242, 1247 n.4 (Fed. Cir. 2003).
24
Post-Phonometrics II, the patentee continued to argue that its “cost call register means” could read on devices that
did not display cost during calls, in direct contravention of the construction affirmed in Phonometrics II. See, e.g.,
Phonometrics, Inc. v. Choice Hotels Int’l, Inc. (Phonometrics III), 21 Fed. Appx. 910, 911 (Fed. Cir. 2001)
(“Because we have already held that claim 1 of the ‘463 patent does indeed claim a device that gives callers cost
information both during and after a long-distance call has ended, see Phonometrics, Inc. v. Northern Telecom Inc.
[Phonometrics II], 133 F.3d 1459, 1465 (Fed. Cir.1998), and because Phonometrics has not even attempted to show
that the features of the accused device meet this limitation, we affirm the trial court’s ruling.” (emphasis, naming
added)); Westin I (Phonometrics IV), 319 F.3d at 1330 (“Also wholly lacking in merit is Phonometrics’ suggestion
that the claim phrase ‘substantially instantaneous’ does not mean ‘during the call.’ We clearly held that the phrase
is to be construed as referring to the time during the call and at the termination of the call. We held so expressly
not just once, N. Telecom [Phonometrics II], 133 F.3d at 1467, 45 USPQ2d at 1428, but twice, Choice Hotels
[Phonometrics III], 21 Fed. Appx. at 911.” (emphasis, naming added)); Economy Inns (Phonometrics V), 349 F.3d
1356, 1365 (Fed. Cir. 2003) (“[e]ach such decision conveyed the same message”)); Westin II (Phonometrics VI),
350 F.3d 1242, 1246 (Fed. Cir. 2003) (“our decision in Northern Telecom [Phonometrics II] established, as a matter
of law, that ‘infringement of the ‘463 patent could only be possible if [Westin’s] hotels provided real-time visual
displays showing the costs of the call to the caller during the call’” (emphasis, naming added)).

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for all time and for all circumstances, a dispute that was not before the district court or Federal
Circuit, is the same type of argument advanced and rejected in the Phonometrics cases. Further,
such a read cuts against the Federal Circuit’s own guidance that “only those terms need be
construed that are in controversy, and only to the extent necessary to resolve the controversy.” 25
Eolas’ contention that this Court’s construction conflicts with the Microsoft construction
is similarly misplaced. The Microsoft construction cannot control as to an aspect of claim
language that was not in dispute or before the district court or Federal Circuit. Eolas’ contends
today that it presented broad arguments not limited to the dispute regarding standalone program
code. 26 Yet broad, generic arguments could not have injected into Microsoft the native binary
issue disputed here but not there. This Court’s construction thus cannot be in conflict with the
Microsoft construction—the two constructions address different dimensions of the claim
language, and the native binary issue could not have been resolved in Microsoft.
Unlike the post-Phonometrics II litigations relied upon by Eolas, this case does not
present an identical dispute to Microsoft. Instead, just like Phonometrics II as to Phonometrics I,
this case presents a different dispute than that covered by the previously-affirmed Microsoft
claim construction, as this Court recognized in its Order. 27 Affirmance of the district court’s
decision in Microsoft does not and should not preclude consideration of the separate legal
question of whether “executable application” is limited to native binary, as this Court held. The
first affirmed construction does not decide, for all time and all circumstances, the legal bounds of

25

See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (emphasis added) (“It is
routine case management to require litigants to identify the aspects of their case that are material to the dispute.
In the case at bar the parties and the court knew with reasonable certainty which claim terms were at issue with
respect to infringement; discovery was not needed for this purpose.” (emphasis added) (citation omitted)); see also,
e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of
resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee
covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in
redundancy.” (emphasis added)).
26
See, e.g., Eolas Motion at 2.
27
Markman Order at 6.

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claim language aspects not then in dispute and so not properly considered. For this independent
reason, Eolas’ misguided stare decisis argument should be rejected.
2.

The Intrinsic Evidence Supports The Court’s Construction

Similarly, the changed intrinsic record highlights Eolas’ misapplication of stare decisis.
The cases cited by Eolas do not involve siuations where, as here, a reexamination occurred after
the prior claim construction decision, thereby expanding the set of intrinsic evidence relevant to
the meaning of the claims. As the Federal Circuit recognized in Phillips, the intrinsic evidence is
both the most reliable and the most important evidence for claim construction. 28 A patent’s
prosecution history, of which reexamination is a part, “provides evidence of how the PTO and
the inventor understood the patent.” 29 As Eolas recognized in its Motion, in Microsoft “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.’” 30 Yet the
intrinsic evidence has since expanded via two reexaminations of the ‘906 patent. As one
example, during the first reexamination, the Examiner stated that
[t]o be “executable” the contents of the memory location pointed to by the program
counter must contain an instruction in binary form that is a member of the native
instruction set of the microprocessor (i.e., a binary machine language instruction). 31
Applicant never responded or disagreed with that statement, a fact that the Federal Circuit has
held relevant to claim construction. 32 That and other relevant evidence was not part of the
intrinsic record and could not have been considered during the prior determination, making stare

28

See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1315-19 (Fed. Cir. 2005) (en banc).
See Phillips, 415 F.3d at 1317.
30
Eolas Motion at 4 (quoting Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1338 (Fed. Cir. 2005)) (emphasis
added).
31
See 9/13/2011 Declaration of Lauren N. Robinson In Support Of Defendants’ Opposition To Plaintiff Eolas’
Motion To Reconsider (“Robinson Decl.”), Ex. A (9/27/2005 Notice of Intent to Issue a Reexamination Certificate)
at 55 [PH_001_0000785963] (emphasis added).
32
See, e.g., Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999) (considering Examiner’s Reasons
for Allowance and applicant’s lack of response); see also, e.g., Springs Window Fashions L.P. v. Novo Industries,
L.P., 323 F.3d 989, 995 (Fed. Cir. 2003) (if statements were mistaken “then the applicant should have amended the
file to reflect the error, as the applicant is the party in the best position to do so”).
29

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decisis inappropriate and inapplicable for this additional, independent reason.
C.

EOLAS’ ATTACKS ON THE COURT’S CLAIM CONSTRUCTION ARE MERITLESS

As a fallback to its stare decisis argument, Eolas’ Motion re-urges three of its previously
asserted “merits-based” arguments. None has merit.
1.

The Intrinsic Evidence Supports The Court’s Construction

First, Eolas re-hashes its old argument that the intrinsic evidence does not justify the
limitation that an “executable application” be “a compiled program that is in native code.” 33
Eolas’ argument is conclusory. It fails to address, let alone refute, the Court’s detailed analysis
of both prosecution history and specification passages that do, indeed, justify that limitation. 34
2.

The Court’s Construction Is Consistent With The Doctrine Of Claim
Differentiation

Eolas next criticizes the Court for attributing meaning to applicant’s decision, during
prosecution, to replace the claim term “controllable application” with the different term
“executable application.” As the Court correctly explains, after the prosecution history revealed
the originally-claimed term “controllable application” was construed by the Examiner to
encompass both “executable” code and “interpretable” code, applicant redirected the claims to
cover an “executable application,” rather than an interpretable script. 35
In attacking the Court’s analysis, Eolas again resorts to a false premise—that all
examples of a term recited in a dependent claim must be subsets of a broader term in the
corresponding independent claim. Specifically, Eolas posits that, because the term “controllable
application” is recited in dependent Claim 2, and independent Claim 1 contains the term
“executable application,” all “controllable applications” must be “executable applications.” 36
Eolas’ argument ignores that a dependent claim can be narrower in scope than its
33

See Eolas Motion at 8-9.
See Markman Order at 6-11.
35
See Markman Order at 8-10.
36
See Eolas Motion at 9-10.
34

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independent claim by reciting subject matter that intersects with that of the independent claim
partially, but is not a complete subset. An example may be useful. Consider a patent in which
Claim 1 covers “a transportation apparatus with a motor and wheels,” and dependent Claim 2
covers “the apparatus of claim 1 in which the apparatus is an aircraft.” Under the purported logic
of Eolas’s argument, the term “aircraft” would need to be construed as an apparatus having both
a motor and wheels. But that would be incorrect both factually and legally. Some aircraft (like
glider planes) lack motors; and other aircraft (like some sea planes) lack wheels. Yet these
example claims makes sense, and are consistent with the doctrine of claim differentiation,
because Claim 2 claims the intersection consisting of aircraft that have both a motor and wheels,
and that intersection is narrower than the scope of Claim 1.
The same is true here. Although some “controllable applications”—like scripts—are not
“executable applications,” other “controllable applications”—like the spreadsheet and word
processor programs referenced by the Court—are “executable applications.” Claim 2 of the ‘906
patent therefore appropriately claims the intersection of “executable applications” and
“controllable applications.” Because it claims only that intersection, Claim 2’s scope is narrower
than Claim 1’s, consistent with the doctrine of claim differentiation. 37
3.

The Court Correctly Interpreted The Dictionary Definition Of
“Executable Program”

The Court also correctly interpreted the dictionary definition of “executable program.”
As the Court correctly noted, that definition reveals that the term “executable program” (1) is
primarily used to designate a compiled program in machine code that can be loaded into memory
37

In any event, the doctrine of claims differentiation creates a mere rebuttable presumption, which is overcome
when the specification or prosecution history clarifies the meaning of the claim term at issue. See, e.g., Kraft Foods,
Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000) (The doctrine of claim differentiation “only creates a
presumption that each claim in a patent has a different scope; it is ‘not a hard and fast rule of construction.’”
(quoting Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998))); O.I. Corp. v. Tekmar
Co., Inc., 115 F.3d 1576, 1582 (Fed. Cir. 1997) (“Although the doctrine of claim differentiation may at times be
controlling, construction of claims is not based solely upon the language of other claims; the doctrine cannot alter a
definition that is otherwise clear from the claim language, description, and prosecution history.”).

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and run, but (2) “can” also reference source code when used in the context of interpretable
programs. 38 As noted above, Eolas’ Motion does not even address, and certainly does not refute,
the Court’s detailed analysis of both prosecution history and specification passages clarifying
that, in the patents-in-suit, the term “executable application” was accorded that term’s primary
meaning: a compiled program in machine code that can be loaded into memory and run. 39
For these reasons, Eolas’ re-urged “merits” arguments should be rejected.
D.

AN INTERLOCUTORY APPEAL WOULD DISRUPT THE ORDERLY CONCLUSION OF
THIS LITIGATION AND EOLAS HAS NOT SATISFIED THE STEEP STANDARD OF
SECTION 1292(b)

The final judgment rule is “an historic characteristic of federal appellate procedure.” 40 It
requires that “a party must ordinarily raise all claims of error in a single appeal following final
judgment on the merits.” 41 Because interlocutory appeals can be disruptive, Section 1292(b) is a
limited exception to the final judgment rule. Indeed, it is limited such that both the district court
and appeal court must agree that an interlocutory appeal is warranted in their unreviewable
discretion. An interlocutory appeal under Section 1292(b) is only permissible where (1) the
“order involves a controlling issue of law”; (2) “as to which there is a substantial ground for
difference of opinion”; and (3) where an “immediate appeal from the order may materially
advance the ultimate termination of the litigation.” 42 Each of these requirements must be met for
certification to be appropriate. 43 As the Federal Circuit has repeatedly explained, the “court does
not encourage interlocutory appeals from claim construction decisions.” 44 Particularly ill-suited
38

See Markman Order at 9-11.
See Markman Order at 6-11.
40
Flanagan v. United States, 465 U.S. 259, 263 (1984).
41
Id. (internal citation omitted).
42
28 U.S.C. § 1292(b).
43
Monroe v. Cessna Aircraft Co., No. 2:05-CV-250, 2006 WL 1305116, at *1 (E.D. Tex. May 9, 2006) (Davis, J.).
44
Canon, Inc. v. GCC Intern. Ltd., 263 Fed. Appx. 57, 61 (Fed. Cir. 2008); see also, e.g., Portney v. CIBA Vision
Corp., 401 Fed. Appx. 526, 529 (Fed. Cir. 2010) (“This court has generally refrained from granting § 1292(b)
petitions to resolve claim construction disputes, instead, leaving such matters to be determined after entry of final
judgment.”). Eolas’s reliance on Shire LLC v. Sandoz, Inc., 345 Fed. Appx. 535, 2009 WL 330235 (Fed. Cir. 2009)
is unavailing. This case does not present the certified question that confronted the Federal Circuit in Shire, where a
39

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for interlocutory appeal is a claim construction dispute, such as the one proposed by Eolas here,
that admittedly relates only to some of the infringement contentions in the case. A piecemeal
interlocutory appeal has no promise of resolving the case generally and thus would augur mass
delay in an inevitable trial on the theories which are unaffected by the supposed error in this
Court’s construction. It is thus unsurprising that none of the statutory requirements is satisfied.
1.

Eolas Fails To Establish That Its Putative Challenge To An Aspect of
This Court’s “Executable Application” Construction Involves A
“Controlling” Issue Of Law

Eolas argues that its proposed appellate challenge to this Court’s “executable application”
construction is a “controlling issue of law.” 45 Proving that the disputed order is “controlling” is
a key requirement. 46 The gist of Eolas’ proposed interlocutory appeal is that this Court failed to
adhere to precedent in construing “executable application,” supposedly in conflict with Eolas
Technologies Inc. v. Microsoft Corp.47 The Federal Circuit has made clear that fact-specific
rulings are not well-suited to a Section 1292(b) certification. 48 Eolas thus ignores the addition of
two reexaminations to the intrinsic evidence, requiring appellate review of a complex new record

district court expressly declined to give issue preclusive effect to a prior district court’s claim construction that it
acknowledged could be dispositive as to infringement of one of the patents-in-suit. See id. In Shire, the Federal
Circuit accepted the petition simply to determine whether “a patentee who settles an earlier infringement case after a
Markman ruling has issued is precluded under the doctrine of collateral estoppel from relitigating claimconstruction issues determined in the prior case.” Id. at *1 (emphasis added). By contrast, the construction of
“executable application” from the prior Microsoft litigation simply did not address the issues raised by the parties’
claim construction dispute in this action regarding that term and Eolas does not contend it would finally resolve the
case.
45
Eolas Motion at 11.
46
Quantum Corp. v. Tandon Corp., 940 F.2d 642 (Fed. Cir.1991) (failure to prove that the disputed order is
controlling warrants denial of a 1292(b) application).
47
399 F.3d 1325, 1338-41 (Fed.Cir. 2005).
48
See Raber v. Pittway Corp., Misc. No. 388, 1994 WL 18499, at *2 (Fed. Cir. Jan 13, 1994) (“The certified order
here concerns the law as applied to the specific facts of this case. There is no new question of law that would be of
general interest or that would be applicable to a wide range of cases. Given the limited applicability of the question
and its connection with the facts of this case, we do not consider this order appropriate for immediate review[.]”);
Portney, 401 Fed. Appx. at 529 (noting that the Federal Circuit has only once accepted certification of a claim
construction issue, in the unique circumstance where the Federal Circuit already had pending before it a prior appeal
in the same case requiring review of claim construction issues in the context of denial of a motion for preliminary
injunction, where acceptance of the later-certified question enabled the court to consider the district court’s claim
construction on a more complete record) (citing Regents of Univ., Cal. v. Dako North America, 477 F.3d 1335 (Fed.
Cir. 2007)).

13
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relevant to claim construction. To side-step its fact-specific challenge, Eolas tries to cast its
attack as a pure stare decisis question. Indeed, Eolas suggests that an interlocutory appeal could
be conducted “without making an intensive inquiry into the record.” 49 This contention ignores
the different disputes, technology, and record between this case and Microsoft.
Moreover, Eolas never argues that its proposed interlocutory appeal is controlling of this
case. Eolas does not argue that the putative interlocutory appeal will affect its infringement
assertions for all accused features. Instead, Eolas maintains that it has valid infringement claims
worthy of a trial under this Court’s claim construction order and in fact sought the resetting of
the trial in this case for February. 50 Eolas has steadfastly refused to acknowledge that this
Court’s construction of “executable application” eliminates any of its infringement claims. 51
Thus, Eolas is seeking an interlocutory appeal without even contending that such an
appeal might control the disposition of the case generally. 52 A fractional complaint about this
Court’s ruling is clearly unworthy of a 1292(b) certification for an interlocutory appeal. Eolas’
studied failure in its motion to address, or even mention, how much effect this Court’s
“executable application” construction would have on its many different infringement allegations
demonstrates that this is not the extraordinary case where an interlocutory appeal is warranted.
2.

Eolas’ Argument That This Court’s Claim Construction Order
Violates Stare Decisis Is Meritless

Eolas’ application for a 1292(b) certification is premised on the assumption that this
Court’s claim construction order violates stare decisis. As explained in II.B above, Eolas’
misapplies the doctrine of stare decisis. Such an argument is not worthy of 1292(b) certification.

49

Eolas Motion at 11.
8/31/2001 Joint Motion to Vacate the Schedule (D.N. 957) at 2-3.
51
Robinson Decl., Ex B (email chain between E. Reines and J. Budwin).
52
Defendants disagree and believe this Court’s construction at least eliminates Eolas’ infringement allegations
against the script features.
50

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3.

An Interlocutory Appeal Would Not Advance The Ultimate
Termination Of The Litigation

Necessary to any 1292(b) certification is convincing proof that an interlocutory appeal
would advance the ultimate termination of the litigation. Eolas proposes that the trial the Court
recently set for February 2012 be put on hold so that it can pursue an appeal that will most likely
be resolved sometime in 2013, placing trial of this action in 2014, if not 2015. 53 As this Court
explained in denying 1292(b) certification in Monroe v. Cessna Aircraft Co., because trial was
seven months away, an interlocutory appeal would not advance resolution, and the “case might
not get to trial for up two years or longer.” 54 Further, once “the case was finally tried, appealable
issues might still exist, which could lead to another appeal and remand.” 55
Here, interlocutory appeal makes even less sense, especially given that Eolas does not
even argue that this claim construction dispute is dispositive, as explained above. Eolas’
infringement allegations must ultimately be adjudicated. Further, the February trial could
resolve this matter via other avenues, including, for example, a judgment of invalidity. Eolas’
attempt to expedite its challenge to this Court’s “executable application” construction is a recipe
for needless and meritless delay of the resolution of all the claims in this case.
III.

CONCLUSION
For the foregoing reasons, this Court should deny Eolas’ Motion in its entirety.

53

Robinson Decl., Ex. B, U.S. Court of Appeals for the Federal Circuit, Median Time to Disposition in Cases
Terminated After Hearing or Submission, http://www.cafc.uscourts.gov/images/stories/the-court/statistics/
Median_Dispositon_Time_for_Cases_Terminated_after_Hearing_or_Submission_Detailed_Table_of_Data_
2001-2010.pdf (11.0 months as the median time from docketing to disposition for district court cases in 2010, the
latest year reported).
54
Monroe v. Cessna Aircraft Co., No. 2:05-CV-250, 2006 WL 1305116 at *2-3 (E.D. Tex. May 9, 2006).
55
Id.

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Dated: September 13, 2011

By: /s/ James R. Batchelder
with permission by Michael E. Jones
James R. Batchelder (pro hac vice)
[e-mail]
Sasha G. Rao (pro hac vice)
[e-mail]
Mark D. Rowland
[e-mail]
Brandon Stroy (pro hac vice)
[e-mail]
Rebecca R. Hermes (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 DEFENDANTS
GOOGLE, INC. AND YOUTUBE, LLC
/s/ David J. Healey
with permission by Michael E Jones
David J. Healey
Fish & Richardson P.C.
1221 McKinney Street, Suite 2888
Houston, TX 77010
713.652.0115
[e-mail]
Jason W. Wolff
Fish & Richardson P.C.
12390 El Camino Real
San Diego, CA 92130
858.678.4705
[e-mail]

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Frank E. Scherkenbach
Proshanto Mukherji
Fish & Richardson P.C.
One Marina Park Drive
Boston, MA 02210
617.542.5070
[e-mail]
[e-mail]
Attorneys for Defendant
ADOBE SYSTEMS INCORPORATED
/s/ Edward R. Reines
with permission by Michael E. Jones
Edward R. Reines
Jared Bobrow
Sonal N. Mehta
Aaron Y. Huang
Andrew L. Perito
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Doug W. McClellan
[e-mail]
WEIL, GOTSHAL & MANGES LLP
700 Louisiana, Suite 1600
Houston, TX 77002
Telephone: [phone]
Facsimile: [phone]
Jennifer H. Doan
Texas Bar No. 08809050
Joshua R. Thane
Texas Bar No. 24060713
Haltom & Doan
Crown Executive Center, Suite 100
6500 Summerhill Road
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
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Email: [e-mail]
Email: [e-mail]
Otis Carroll (Bar No. 3895700)
Deborah Race (Bar No. 11648700)
IRELAND, CARROLL & KELLEY, P.C.
6101 South Broadway, Suite 500
Tyler, Texas 75703
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
ATTORNEYS FOR DEFENDANTS
AMAZON.COM, INC. and YAHOO!
INC.

/s/ Thomas L. Duston
with permission by Michael E. Jones
Thomas L. Duston
Julianne Hartzell
Scott A. Sanderson
Anthony S. Gabrielson
Marshall Gerstein & Borun
233 S. Wacker Drive
6300 Willis Tower
Chicago, IL 60606
312.474.6300
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Eric Hugh Findlay
Brian Craft
Findlay Craft
6760 Old Jacksonville Highway
Suite 101
Tyler, TX 75703
903.534.1100
[e-mail]
[e-mail]
Attorneys for Defendant
CDW LLC
/s/ Edwin R. DeYoung
with permission by Michael E. Jones
Edwin R. DeYoung
Roger Brian Cowie
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Galyn Dwight Gafford
Michael Scott Fuller
Roy William Hardin
Jason E. Mueller
Locke Lord Bissell & Liddell LLP
2200 Ross Ave.
Suite 2200
Dallas, TX 75201
214.740.8500
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Eric L. Sophir
SNR Denton
1301 K Street, N.W.
Suite 600, East Tower
Washington, DC 20005-3364
202.408.6470
[e-mail]
Attorneys for Defendant
CITIGROUP INC.
/s/ Jeffrey F. Yee
with permission by Michael E. Jones
GREENBERG TRAURIG LLP
Jeffrey K. Joyner (admitted pro hac vice)
[e-mail]
Jeffrey F. Yee (admitted pro hac vice)
[e-mail]
2450 Colorado Avenue, Suite 400E
Santa Monica, California 90404
Telephone: [phone]
Facsimile: [phone]
Dwayne L. Mason (Texas State Bar
#00787977)
[e-mail]
1000 Louisiana Street, Suite 1700
Houston, Texas 77002
Tel: [phone]
Fax: [phone]

POTTER MINTON P.C.
Douglas R. McSwane, Jr.
[e-mail]
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110 N. College Street, Suite 500
Tyler, Texas 75702
Tel: [phone]
Fax: [phone]
ATTORNEYS FOR DEFENDANT
FRITO-LAY, INC.
/s/ Proshanto Mukherji
with permission by Michael E. Jones
Thomas M. Melsheimer
Neil J. McNabnay
Carl Bruce
Fish & Richardson P.C.
1717 Main Street
Suite 5000
Dallas, TX 75201
214.474.5070
[e-mail]
[e-mail]
[e-mail]
Proshanto Mukherji
Fish & Richardson P.C.
One Marina Park Drive
Boston, MA 02210
617.542.5070
[e-mail]
Attorneys for Defendant
THE GO DADDY GROUP, INC.
/s/ Christopher M. Joe
with permission by Michael E. Jones
Christopher M. Joe
Brian Carpenter
Eric W. Buether
Buether Joe & Carpenter
1700 Pacific, Suite 2390
Dallas, TX 75201
214-466-1270
[e-mail]
[e-mail]
[e-mail]
Attorneys for Defendant
J.C. PENNEY CORPORATION, INC.
/s/ Kate Hutchins
with permission by Michael E. Jones
20
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Joe W. Redden, Jr.
Michael Ernest Richardson
Beck Redden & Secrest
1221 McKinney
Suite 4500
Houston, TX 77010
713.951.6284
[e-mail]
[e-mail]
Mark G. Matuschak
Donald R. Steinberg
Wilmer Cutler Pickering Hale and Dorr
LLP
60 State Street
Boston, MA 02109
617.526.5000
[e-mail]
[e-mail]
Kate Hutchins
Wilmer Cutler Pickering Hale and Dorr,
LLP
399 Park Avenue
New York, NY 10022
212.230.8800
[e-mail]
Daniel V. Williams
Wilmer Cutler Pickering Hale and Dorr,
LLP
1875 Pennsylvania Avenue, N.W.
Washington, D.C. 20006
202.663.6012
[e-mail]
Attorneys for Defendant
STAPLES, INC.

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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 this 13th day of September 13, 2011. All other
counsel of record will be served via facsimile or first class mail.

/s/ Michael E. Jones

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