Eolas Technologies Incorporated v. Adobe Systems Incorporated et al
RESPONSE in Opposition re 877 SEALED MOTION [DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY FOR LACK OF WRITTEN DESCRIPTION] SEALED MOTION [DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY FOR LACK OF WRITTEN DESCRIPTION] SEALED MOTION [DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY FOR LACK OF WRITTEN DESCRIPTION] filed by Eolas Technologies Incorporated. (Attachments: # 1 Declaration of Josh Budwin, # 2 Exhibit A1, # 3 Exhibit A2, # 4 Exhibit B, # 5 Exhibit C, # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit F, # 9 Exhibit G, # 10 Exhibit H, # 11 Exhibit I, # 12 Text of Proposed Order)(McKool, Mike)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
Eolas Technologies Incorporated,
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
Civil Action No. 6:09-CV-00446-LED
DECLARATION OF DAVID M. MARTIN JR. IN SUPPORT OF
EOLAS’ RESPONSE TO DEFENDANTS’ MOTION FOR SUMMARY
JUDGMENT OF INVALIDITY FOR LACK OF WRITTEN DESCRIPTION
I, David M. Martin Jr., do state and declare as follows:
1. I have been retained as a technical expert by Eolas Technologies, Inc. (“Eolas”) to address the
issues of validity and infringement of claims 1 and 6 of U.S. Patent No. 5,838,906 patent (herein the ’906
patent) and claims 1‐3, 8, 10‐11, 16‐18, 20‐22, and 36‐43 of U.S. Patent No. 7,599,985 (herein the ’985
patent) (collectively “patents‐in‐suit”). I earned a Ph.D. in 1999 from Boston University in Computer
Science. I earned a Bachelor of Science degree, with distinction, in 1993 from Iowa State University in
Computer Science and Mathematics. My Ph.D. research was in the area of Internet security and privacy.
Since obtaining my Ph.D., I have worked at University of Denver as an Assistant Professor, Boston
University as a Research Assistant Professor, and University of Massachusetts Lowell as an Assistant
Declaration of David M. Martin Jr.
Professor. In these positions, I performed research in the areas of computer security and privacy. I have
worked with the Internet and associated technologies since the late 80s. I first used the Mosaic browser
in 1993. I make this declaration in support of Eolas’ Response to Defendants’ Motion for Summary
Judgment of Invalidity for Lack of Written Description, filed herewith. Unless otherwise stated, the
matters contained in this declaration are of my own personal knowledge and, if called as a witness, I
could and would testify competently to the matters set forth herein.
2. I understand that the written description requirement is a question of fact. I further understand
that the requirement seeks to answer whether a person of ordinary skill at the time of the filing of the
patent application would have believed the inventor had possessed of the claimed subject matter. As
well, I understand the requirement varies depending on the context, nature and scope of the claims, and
on the complexity and predictability of the relevant technology. Furthermore, I understand that the
claims are not necessarily limited to the specific embodiments of the invention described in the
specification, particularly when the specification does not unambiguously limit the scope of the
3. I understand that the Court has construed “embed text format” to mean “coded information that
specifies to a browser application that an object is to be embedded in a displayed hypermedia
4. In my opinion, the specification provides an adequate written disclosure of the “embed text
format” as this term was construed by the Court. Specifically, the written disclosure confirms that as of
the October 17, 1994 filing of the patents‐in‐suit, the inventors of the patents‐in‐suit had possession of
the claimed embed text format.
5. The specification teaches that tags like EMBED can be used as the claimed embed text format.
U.S. Patent No. 5,838,906 col 14:32–33, col.12:54–13:18.
Declaration of David M. Martin Jr.
6. However, and as recognized by the Court in its claim construction order, the disclosed embed text
formats are not limited solely to the EMBED tag or tags in general. Memorandum Opinion and Order
(Docket 914) at 15 (“[The ‘embed text format’] term is supported in the specification by the disclosure of
the EMBED tag (‘906 patent, 14:32–33); however, the term is not limited to only a tag.”).
7. For example, the specification teaches the use of an IMAGE3D tag as an example of an embed text
format. The specification notes that appendices have been attached that provide “details of a specific
embodiment of the invention in conjunction with the discussion of the routines in this specification.”
U.S. Patent No. 5,838,906 col.8:5–15, col.13:44–50. In these appendices, the inventors used the name
MT_IMAGE3D and M_IMAGE3D to refer to the embed text format. See ‘906 Appendix A at 8
(M_IMAGE3D), 9 (MT_IMAGE3D), 174 (M_IMAGE3D), 302 (MT_IMAGE3D), 360 (MT_IMAGE3D and
M_IMAGE3D) , showing examples of the IMAGE3D embed text format. This is consistent with the
testimony of Cheong Ang, one of the inventors, who in his July 22, 2011 deposition testified that “prior
to using the tag e‐m‐b‐e‐d, IMAGE3D was used as another instance of an embed text format for HTML.”
Deposition of Cheong Ang on 7‐22‐11 at 625:12–626:15. The draft of “Integrated Control of Distributed
Volume Visualization Through the World‐Wide Web” included as Attachment A to inventor Michael
Doyle’s October 29, 1997 declaration in the ‘906 file history also shows the use of this prior embed text
format, spelling it “IMG3D.”
8. As a further example, the specification also teaches that applications written in interpreted
scripting languages, such as PostScript, may be used with the invention. Specifically, the specification of
the patents teaches that:
As shown in Table II, the EMBED tag includes TYPE, HREF, WIDTH and
HEIGHT elements. The TYPE element is a Multipurpose Internet Mail
Extensions (MIME) type. Examples of values for the TYPE element are
“application/x‐vis” or “video/mpeg”. The type “application /x‐vis”
indicates that an application named “x‐vis” is to be used to handle the
object at the URL specified by the HREF. Other types are possible such
as “application/x‐inventor”, “application/postscript” etc.
Declaration of David M. Martin Jr.
U.S. Pat No. 5,838,906 col.12:66–13:7 (emphasis mine). PostScript is an interpreted script language.
“PostScript Reference” at http://www.adobe.com/products/postscript/pdfs/PLRM.pdf at 24–25 (“The
PostScript interpreter executes the PostScript language according to the rules in this chapter.”).
9. In my opinion, while the specification describes the EMBED tag as one example embodiment of an
embed text format, it did not limit itself to just that embodiment. In fact, the specification specifically
notes that the EMBED tag embodiment is non‐limiting. The specification states that “[t]able II, below,
shows an example of an HTML tag format used by the present invention to embed a link.” U.S. Patent
No. 5,838,906 col.12:54–56 (emphasis mine). As well, inventors of the patents, Cheong Ang and Michael
Doyle in particular, both have noted in their depositions that the embodiment is non‐limiting.
Deposition of Cheong Ang on 7‐22‐11 at 581:5–7 (“So this description actually provides an example and
it describes an embodiment of the invention.”); Deposition of Michael Doyle on 6‐30‐11 at 483:25–484:3
(“This is one example of an embed text format. It could be implemented in any manner that is
consistent with the language in the claim, in any particular claim, in either of the patents.”).
10. Having reviewed the specification, in my opinion, the inventors of the patents‐in‐suit
demonstrated to those of ordinary skill in the art at the time of filing that they possessed what was
claimed, including an “embed text format” construed to mean “coded information that specifies to a
browser application that an object is to be embedded in a displayed hypermedia document.”
11. I declare under penalty of perjury that the foregoing is a true and correct representation of my
opinion and that this declaration was executed on September 28, 2011, in Des Plaines, Illinois.
David M. Martin, Jr. Ph.D.
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