Vertical Computer Systems, Inc. v. Interwoven, Inc. et al

Filing 48

ANSWER to 1 Complaint, Affirmative Defenses, COUNTERCLAIM against Vertical Computer Systems Inc by Samsung Electronic America Inc, Samsung Electronics Co LTD. (Attachments: # 1 Exhibit A - Web Object Management Facility)(Findlay, Eric)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
VERTICAL COMPUTER SYSTEMS, INC.,
Plaintiff,
v.
INTERWOVEN, INC., LG ELECTRONICS
MOBILECOMM U.S.A., INC., LG
ELECTRONICS INC., SAMSUNG
ELECTRONICS CO., LTD., SAMSUNG
ELECTRONICS AMERICA, INC.,
Defendants.

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CIVIL ACTION NO. 2:10-CV-490 TJW

DEFENDANTS SAMSUNG ELECTRONICS CO. LTD, AND SAMSUNG
ELECTRONICS AMERICA, INC.’S
ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS

Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
(collectively “Samsung”) respond to the Complaint of Plaintiff Vertical Computer Systems, Inc.
(“Vertical”) as follows:
PARTIES
1.

Samsung lacks knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 1 of the Complaint, and therefore denies them.
2.

Paragraph 2 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 2 of the Complaint, and therefore denies
them.

3.

Paragraph 3 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 3 of the Complaint, and therefore denies
them.
4.

Paragraph 4 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 4 of the Complaint, and therefore denies
them.
5.

Samsung denies the allegations contained in Paragraph 5 of the

Complaint, except to admit that Samsung Electronics America, Inc. is a New York corporation
and has its principal place of business at 85 Challenger Road, Ridgefield Park, NJ 07660.
6.

Samsung admits the allegations contained in Paragraph 6 of the

Complaint.
JURISDICTION AND VENUE
7.

Samsung denies the allegations contained in Paragraph 7 of the

Complaint, except to admit that this action purports to state claims of patent infringement that
arise under the patent laws of the United States, 35 U.S.C. §§ 101 et seq.
8.

Paragraph 8 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 8 of the Complaint, and therefore denies
them.
9.

Paragraph 9 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief

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as to the truth of the allegations contained in Paragraph 9 of the Complaint, and therefore denies
them.
10.

Samsung denies the allegations of Paragraph 10, except to admit that

Vertical alleges that venue is proper in this court under 28 U.S.C. § 1391(b) and (c), and 28
U.S.C. § 1400(b).
PURPORTED PATENT INFRINGEMENT
11.

Samsung denies the allegations of Paragraph 11 of the Complaint, except

to admit that U.S. Patent No. 6,826,744 (“the ‘744 patent”) states on its face that it is entitled
“System and Method for Generating Web Sites in an Arbitrary Object Framework,” and that it
was issued on November 30, 2004.
12.

Samsung denies the allegations of Paragraph 12 of the Complaint, except

to admit that U.S. Patent No. 7,716,629 (“the ‘629 patent”) states on its face that it is entitled
“System and Method for Generating Web Sites in an Arbitrary Object Framework,” and that it
was issued on May 11, 2010.
13.

Samsung lacks knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 13 of the Complaint, and therefore denies
them.
14.

Paragraph 14 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 14 of the Complaint, and therefore denies
them.
15.

Samsung denies the allegations in Paragraph 15 of the Complaint.

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PURPORTED STATUTORY NOTICE
16.

Samsung lacks knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 16 of the Complaint, and therefore denies
them.
PURPORTED WILLFUL INFRINGEMENT
17.

Paragraph 17 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 17 of the Complaint, and therefore denies
them.
18.

Paragraph 18 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 18 of the Complaint, and therefore denies
them.
19.

Paragraph 19 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 19 of the Complaint, and therefore denies
them.
20.

Paragraph 20 does not require a response by Samsung. To the extent a

response is deemed required, Samsung lacks knowledge or information sufficient to form a belief
as to the truth of the allegations contained in Paragraph 20 of the Complaint, and therefore denies
them.

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PURPORTED RELIEF
21.

Samsung denies the allegations of Paragraph 21 of the Complaint

concerning Samsung. Samsung lacks knowledge or information sufficient to form a belief as to
the truth of the remaining allegations contained in Paragraph 21 of the Complaint, and therefore
denies them.
22.

Samsung denies the allegations of Paragraph 22 of the Complaint

concerning Samsung. Samsung lacks knowledge or information sufficient to form a belief as to
the truth of the remaining allegations contained in Paragraph 22 of the Complaint, and therefore
denies them.
JURY DEMAND
23.

To the extent that a response is required, Samsung admits that Vertical’s

Complaint contains a request for a jury trial.
DENIAL OF VERTICAL’S PRAYER FOR RELIEF
24.

Samsung requests that the Court deny Vertical all relief requested by

Vertical in its Prayer for Relief.
AFFIRMATIVE DEFENSES
25.

Samsung asserts the defenses set out below, and expressly reserves the

right to amend their Answer with additional defenses.
FIRST AFFIRMATIVE DEFENSE
(Failure to State a Claim)
26.

Vertical’s Complaint fails to state a claim upon which relief can be

granted.

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SECOND AFFIRMATIVE DEFENSE
(Non-Infringement)
27.

Samsung does not infringe and has not infringed, either directly,

indirectly, contributorily, or by inducement, any claim of the ‘744 or ‘629 patents (collectively,
the “Asserted Patents”), either literally or under the doctrine of equivalents, willfully or
otherwise.
THIRD AFFIRMATIVE DEFENSE
(Invalidity)
28.

The claims of the Asserted Patents are invalid for failure to comply with

one or more requirements of the Patent Laws of the United States, 35 U.S.C. § 100 et seq.,
including without limitation §§ 102, 103 and 112.
FOURTH AFFIRMATIVE DEFENSE
(Claim Construction Estoppel)
29.

Vertical is estopped from construing the claims of the Asserted Patents to

cover any Samsung product because representations, omissions, and/or concessions made during
prosecution of the Asserted Patents, and/or related U.S. or foreign patents and patent
applications, limit the scope of the claims of the Asserted Patents.
FIFTH AFFIRMATIVE DEFENSE
(Prosecution History Estoppel)
30.

Prosecution history and/or estoppel bars Vertical from asserting

infringement of claims of the Asserted Patents under the Doctrine of Equivalents because of
statements and amendments made during prosecution of the Asserted Patents.

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SIXTH AFFIRMATIVE DEFENSE
(Governmental Uses)
31.

Vertical’s claims for relief and prayer for damages are limited by 28

U.S.C. § 1498(a).
SEVENTH AFFIRMATIVE DEFENSE
(Lack of Standing)
32.

On information and belief, Vertical lacks standing to bring this action.
EIGHTH AFFIRMATIVE DEFENSE
(Laches, Waiver, Acquiescence, Estoppel)

33.

Upon information and belief, laches, waiver, acquiescence, and/or

estoppel bar Vertical’s remedies under the Asserted Patents.
NINTH AFFIRMATIVE DEFENSE
(Notice)
34.

Upon information and belief, Vertical’s claims for relief and alleged

damages and limited by 35 U.S.C. § 287.
TENTH AFFIRMATIVE DEFENSE
(Inequitable Conduct)
35.

The Asserted Patents are unenforceable due to inequitable conduct as set

forth in Paragraphs 51-109 below, which are incorporated by reference as though fully set forth
herein.
SAMSUNG’S COUNTERCLAIMS
36.

Defendant/Counterclaim-Plaintiff Samsung brings the following

counterclaims against Plaintiff/Counterclaim-Defendant Vertical.

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PARTIES
37.

Samsung Electronics Co., Ltd. is a corporation organized under the laws

of the Republic of Korea and has its principal place of business at 1320-10, Seocho 2-dong,
Seocho-gu, Seoul 137-857, Republic of Korea.
38.

Samsung Electronics America, Inc. is a New York corporation and has its

principal place of business at 85 Challenger Road, Ridgefield Park, NJ 07660.
39.

Upon information and belief, Vertical is a Delaware corporation with a

principal place of business in Richardson, Texas.
JURISDICTION AND VENUE
40.

This Court has subject-matter jurisdiction over Samsung’s patent

counterclaims, which arise under the patent laws of the United States pursuant to 28 U.S.C. §§
1331, 1338, 2201, and 2202.
41.

This Court has personal jurisdiction over Vertical, at least because

Vertical purportedly has its primary place of business in this district, and filed its claims for
patent infringement in this Court, in response to which these counterclaims are filed.
42.

Venue lies in this judicial district pursuant to 28 U.S.C. §§ 1391 and 1400.

Venue also lies in this district because Vertical has consented to the propriety of venue in this
district by filing its claims for patent infringement in this district, in response to which these
counterclaims are filed.
COUNT I (DECLARATORY JUDGMENT OF NON-INFRINGEMENT)
43.

Samsung realleges and incorporates by reference Paragraphs 36-42 above

as though fully set forth herein.

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44.

An actual and justiciable controversy exists between Samsung and

Vertical with respect to the Asserted Patents because Vertical has brought this action against
Samsung alleging that Samsung infringes the Asserted Patents, which Samsung denies. Absent
a declaration of non-infringement, Vertical will continue to wrongfully assert the Asserted
Patents against Samsung, and thereby cause Samsung irreparable injury and damage.
45.

Samsung has not infringed, and does not infringe, the Asserted Patents,

either directly or indirectly, literally or under the doctrine of equivalents, willfully, or otherwise,
and Samsung is entitled to a declaration to that effect.
COUNT II (DECLARATORY JUDGMENT OF INVALIDITY)
46.

Samsung realleges and incorporates by reference Paragraphs 36-45 above

as though fully set forth herein.
47.

An actual and justiciable controversy exists between Samsung and

Vertical with respect to the Asserted Patents because Vertical has brought this action against
Samsung alleging that the Asserted Patents are valid, which Samsung denies. Absent a
declaration of invalidity, Vertical will continue to wrongfully assert the Asserted Patents against
Samsung, and thereby cause Samsung irreparable injury and damage.
48.

The Asserted Patents are invalid for failure to comply with the

requirements of 35 U.S.C. § 100 et seq., including but not limited to, §§ 102, 103, and 112, and
Samsung is entitled to a declaration to that effect.
COUNT III (DECLARATORY JUDGMENT OF UNENFORCEABILITY)
49.

Samsung realleges and incorporates by reference Paragraphs 36-48 above

as though fully set forth herein.

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50.

An actual and justiciable controversy exists between Samsung and

Vertical with respect to the enforceability of the Asserted Patents because Vertical has brought
this action against Samsung alleging that the Asserted Patents are enforceable, which allegation
Samsung denies. Absent a declaration of unenforceability, Vertical will continue to wrongfully
assert the Asserted Patents against Samsung, and thereby cause Samsung irreparable injury and
damage.
The ‘744 Patent
51.

The claims of the ‘744 patent are unenforceable as a result of inequitable

conduct before the United States Patent and Trademark Office (“PTO”). One or more of the
people substantively involved in the prosecution of the application leading to the ‘744 patent,
including inventor Aubrey McAuley, were aware of information material to the patentability of
the ‘744 patent, but withheld that information from the PTO with the intent to deceive, and made
false and misleading statements to the PTO during the prosecution of the ‘744 patent, as set forth
herein.
52.

Aubrey McAuley, the named inventor of the ‘744 patent, was a founder

and president of Adhesive Media, Inc. (“Adhesive”).
53.

On information and belief, Adhesive offered for sale and sold software

products and/or services based on its “WebOS” technology more than one year before October 1,
1999, the filing date of the application leading to the ‘744 patent. Those software products
and/or services included Adhesive’s “NewsFlash” product, as well as a number of websites that
Adhesive designed for particular customers, purportedly using Adhesive’s WebOS technology.
54.

On information and belief, Adhesive also published information relating to

its software products and/or services based on its WebOS technology more than one year before

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October 1, 1999. For example, more than one year before October 1, 1999, Adhesive posted on
the Internet a diagram of the Web Object Management Facility of its WebOS technology, which
is attached hereto as Exhibit A.
55.

Exhibit A is nearly identical to Figure 5 of the ‘744 patent.

56.

The specification of the ‘744 patent describes Figure 5 as an alleged

embodiment of “the present invention.” See ‘744 patent at 5:3-17.
57.

Therefore, Adhesive’s commercial offer for sale and sale of products and

services based on its WebOS technology, and Adhesive’s publication of information relating to
its WebOS technology, all of which occurred more than one year before October 1, 1999,
constitute material prior art.
58.

Upon information and belief, prior to issuance of the ‘744 patent, Mr.

McAuley had knowledge of Adhesive’s offer for sale and sale of its WebOS technology and
Adhesive’s publication of information relating to its WebOS technology.
59.

None of the persons involved in the prosecution of the ‘744 patent,

including but not limited to Mr. McAuley, disclosed to the PTO Adhesive’s offer for sale or sale
of its WebOS technology or the publication of information relating to its WebOS technology.
60.

Information regarding Adhesive’s offer for sale and sale of WebOS

technology, and publications relating thereto, was withheld from the PTO with intent to deceive.
61.

This withholding of information material to patentability with intent to

deceive the PTO constitutes inequitable conduct, which renders the ‘744 patent unenforceable.
The ‘629 Patent
62.

The claims of the ‘629 patent are unenforceable as a result of inequitable

conduct before the PTO. On information and belief, one or more of the people substantively

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involved in the prosecution of the application leading to the ‘629 patent, including inventor
Aubrey McAuley and patent agent Jack D. Stone Jr., were aware of information material to the
patentability of the ‘629 patent, but withheld that information from the PTO with the intent to
deceive, and made false and misleading statements to the PTO during the prosecution of the ‘629
patent, as set forth herein.
63.

During the prosecution of the ‘629 patent, Vertical initiated a patent

infringement suit against Microsoft Corporation in the Eastern District of Texas, Civil Action
No. 2:07-CV-144 (“the Microsoft litigation”), alleging infringement of the ‘744 patent.
64.

During the course of the Microsoft litigation, material information

regarding the patentability of the ‘744 patent was disclosed by Microsoft to Vertical and
Vertical’s attorneys. For example, Microsoft raised inequitable conduct allegations regarding
the ‘744 patent in its Answer to Vertical’s complaint, Microsoft served invalidity contentions
explaining how numerous prior art references anticipated and/or rendered obvious the claims of
the ‘744 patent, Microsoft produced copies of the underlying prior art references, and Microsoft
filed a claim construction brief arguing that numerous claims of the ‘744 patent were invalid
under 35 U.S.C. § 112. However, this material information was not properly disclosed to the
PTO during the prosecution of the ‘629 patent.
65.

Because the application leading to the ‘629 patent is a continuation of the

‘744 patent, and because the claims and specifications of the ‘629 and ‘744 patents are
substantially similar, Microsoft’s inequitable conduct allegations, invalidity contentions and
arguments, and the invalidating prior art references it produced in the Microsoft litigation are
also material to the patentability of the ‘629 patent.

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Microsoft’s Inequitable Conduct Allegations
66.

On July 13, 2007, Microsoft filed its Answer, Affirmative Defenses, and

Counterclaims (“Microsoft’s Answer”) in the Microsoft litigation. Microsoft alleged that the
‘744 patent was unenforceable due to the inequitable conduct of Mr. McAuley in failing to
disclose material information to the PTO. In particular, Microsoft alleged that Mr. McAuley,
with intent to deceive, failed to disclose Adhesive’s offer for sale and sale of products and
services based on Adhesive’s WebOS technology, and publications relating thereto, more than
one year prior to October 1, 1999.
67.

Microsoft’s inequitable conduct allegations disclose critical information

expressly challenging the validity and enforceability of the related ‘744 patent.
68.

None of the persons involved in the prosecution of the ‘629 patent,

including Mr. McAuley and Mr. Stone, disclosed to the PTO either Microsoft’s Answer or the
existence or substance of Microsoft’s inequitable conduct allegations.
69.

Further, during prosecution of the ‘629 patent, the applicants disclosed

certain prior art documents relating to Adhesive’s prior art WebOS technology relied on by
Microsoft during the Microsoft litigation, but failed to disclose the critical facts that Mr.
McAuley was the founder and president of Adhesive and other information indicating that the
WebOS technology qualified as prior art under 35 U.S.C. § 102(b).
70.

The knowledge that Mr. McAuley is both a named inventor of the ‘629

patent and the founder and president of Adhesive, as well as the date of the WebOS materials, is
essential for the PTO to fully understand the relevance and applicability of Adhesive’s prior art
WebOS technology.
71.

During prosecution of the ‘629 patent, the applicants selectively disclosed

to the PTO only certain information and prior art materials from the Microsoft litigation.
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72.

The selective disclosure to the PTO of information arising out of the

Microsoft litigation demonstrates that Mr. McAuley and Mr. Stone were aware of the Microsoft
litigation and the existence of material regarding the patentability of the ‘629 patent information
arising out of that litigation.
73.

This selective disclosure to the PTO also demonstrates that Mr. McAuley

and Mr. Stone made a deliberate decision to withhold material information from the PTO, and
thus demonstrates an intent to deceive.
74.

The withholding of information material to patentability with intent to

deceive constitutes inequitable conduct, which renders the ‘629 patent unenforceable.
Microsoft’s Invalidity Contentions and Claim Construction Brief
75.

On January 18, 2008, Microsoft served its Invalidity Contentions in the

Microsoft litigation.
76.

Microsoft’s Invalidity Contentions identified 58 prior art references that

anticipated and/or rendered obvious claims 1-5, 9, 11, 17-19, 21, 23, 25-29, 33, 39-41, 43, 45,
and 47-48 of the ‘744 patent and provided over 50 pages of narrative analysis of how the
identified prior art anticipated and/or rendered obvious the asserted claims. The Invalidity
Contentions also included over 250 pages of claim charts mapping the prior art references to
each limitation of the asserted claims. Further, the Invalidity Contentions include an analysis of
the ‘744 patent’s invalidity based on lack of enablement, lack of written description, and
indefiniteness.
77.

On July 18, 2008, Microsoft served its First Amended Invalidity

Contentions in the Microsoft litigation.

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78.

Microsoft’s First Amended Invalidity Contentions added three prior art

references to Microsoft’s prior Invalidity Contentions, identifying a total of 61 prior art
references that anticipated and/or rendered obvious claims 1-5, 9, 11, 17-19, 21, 23, 25-29, 33,
39-41, 43, 45, 47-48, and 53 of the ‘744 patent. As with the initial Invalidity Contentions,
Microsoft First Amended Invalidity Contentions provided over 50 pages of narrative analysis of
how the identified prior art anticipated and/or rendered obvious the asserted claims and included
over 250 pages of claim charts mapping the prior art references to each limitations of the asserted
claims. Further, the First Amended Invalidity Contentions include an analysis of the ‘744
patent’s invalidity based on lack of enablement, lack of written description, and indefiniteness.
79.

On June 6, 2008, Microsoft filed its Claim Construction Brief in the

Microsoft litigation.
80.

Microsoft argued in its Claim Construction Brief that the term “arbitrary

object framework” is fatally indefinite.
81.

The term “arbitrary object framework” is found in all independent claims

of both the ‘744 and ‘629 patents, making Microsoft’s indefiniteness argument material to the
patentability of the ‘629 patent.
82.

Microsoft’s Invalidity Contentions, First Amended Invalidity Contentions,

and Claim Construction Brief disclose critical information expressly challenging the validity of
the related ‘744 patent, and thus constitute material prior art.
83.

None of the persons involved in the prosecution of the ‘629 patent,

including Mr. McAuley and Mr. Stone, disclosed to the PTO Microsoft’s Invalidity Contentions,
First Amended Invalidity Contentions, or Claim Construction Brief. Further, none of the
persons involved in the prosecution of the ‘629 patent, including Mr. McAuley and Mr. Stone,

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disclosed to the PTO the existence of Microsoft’s Invalidity Contentions, First Amended
Invalidity Contentions, or Claim Construction Brief or the substance of the invalidity arguments
set forth therein.
84.

Only some prior art references relied on during the Microsoft litigation

were selectively disclosed to the PTO during prosecution of the ‘629 patent.
85.

The selective disclosure to the PTO of information arising out of the

Microsoft litigation demonstrates that Mr. McAuley and Mr. Stone were aware of the Microsoft
litigation and the existence of material information regarding the patentability of the ‘629 patent
arising out of that litigation.
86.

This selective disclosure to the PTO also demonstrates that Mr. McAuley

and Mr. Stone made a deliberate decision to withhold material information from the PTO, and
thus demonstrates an intent to deceive.
87.

The withholding of information material to patentability with intent to

deceive constitutes inequitable conduct, which renders the ‘629 patent unenforceable.
Prior Art References Produced by Microsoft
88.

In an Information Disclosure Statement, the ‘629 patent applicants

disclosed to the PTO 24 of the 61 prior art references (or excerpts thereof) that were identified by
Microsoft in its Invalidity Contentions and First Amended Invalidity Contentions as anticipating
and/or rendering obvious certain claims of the ‘744 patent.
89.

On information and belief, none of the persons involved in the prosecution

of the ‘629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Borland Delphi technology. Specifically, none of the persons involved in

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the prosecution of the ‘629 patent disclosed to the PTO: (i) Borland Delphi 3 for Windows 95 &
Windows NT, User’s Guide, Borland International, Inc. (1997); (ii) Borland’s Official NoNonsense Guide to Delphi 2, Sams Publishing (1996); (iii) Osier et al., Teach Yourself Delphi 3
in 14 Days, Sams Publishing (1997); (iv) Reisdorph, Sams Teach Yourself Borland Delphi 4 in
21 Days, Sams Publishing (1998); (v) Swan, Delphi 4 Bible, IDG Books Worldwide, Inc., Tom
Swan (1998); (vi) Teixeira et al., Borland Delphi 4 Developer’s Guide, Sams Publishing (1998).
90.

On information and belief, none of the persons involved in the prosecution

of the ‘629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Microsoft Visual J++ technology. Specifically, none of the persons
involved in the prosecution of the ‘629 patent disclosed to the PTO: (i) Doss, DCOM Networking
with Visual J++ 6.0, Wordware Publishing, Inc. (1999); (ii) Morgan et. al, Visual J++
Unleashed, Sams.net Publishing (1997); (iii) Mulloy, Using Visual J++ 6, Que Corporation
(1998); (iv) Wood, Visual J++ 6 Secrets, IDG Books Worldwide, Inc. (1998).
91.

On information and belief, none of the persons involved in the prosecution

of the ‘629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art ASP technology. Specifically, none of the persons involved in the
prosecution of the ‘629 patent disclosed to the PTO: (i) Fedorchek et. al, ASP: Active Server
Pages, IDG Books Worldwide, Inc. (1997); (ii) Fedorov et. al, ASP 2.0 Programmer’s
Reference, Wrox Press (1998).
92.

On information and belief, none of the persons involved in the prosecution

of the ‘629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references

17

identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Lotus Notes and Domino 4.5 technology. Specifically, none of the
persons involved in the prosecution of the ‘629 patent disclosed to the PTO: (i) Forlini et. al,
Lotus Notes and Domino 4.5 Professional Reference, New Riders Publishing (1997); (ii) Krantz,
Building Intranets with Lotus Notes & Domino, Maximum Press (1997).
93.

On information and belief, none of the persons involved in the prosecution

of the ‘629 patent, including Mr. McAuley and Mr. Stone, disclosed to the PTO any references
identified in Microsoft’s Invalidity Contentions or First Amended Invalidity Contentions that
pertain to the prior art Paradox 7 technology. Specifically, none of the persons involved in the
prosecution of the ‘629 patent disclosed to the PTO: (i) Karim et. al, Paradox 7 Projects for
Windows 95, The Benjamin/Cummings Publishing Company, Inc. (1997); (ii) Weingarten et. al,
Paradox 7 for Windows 95 Illustrated Brief Edition, CTI (1997).
94.

Just as was the case with the 24 prior art references from the Microsoft

litigation that the applicants did disclose to the PTO, the narrative and claim charts submitted
with Microsoft’s Invalidity Contentions and First Amended Invalidity contentions demonstrate
how the undisclosed Borland Delphi, Microsoft Visual J++, ASP, Lotus Notes and Domino 4.5,
and Paradox 7 prior art references listed in Paragraphs 89-93 above anticipate and/or render
obvious the asserted claims in the Microsoft litigation. Therefore, the undisclosed Borland
Delphi, Microsoft Visual J++, ASP, Lotus Notes and Domino 4.5, and Paradox 7 prior art
references listed in Paragraphs 89-93 above constitute material prior art.
95.

The selective disclosure to the PTO of prior art references identified by

Microsoft during the Microsoft litigation demonstrates that Mr. McAuley and Mr. Stone were

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aware of the Microsoft litigation and the existence of material information regarding the
patentability of the ‘629 patent arising out of that litigation.
96.

This selective disclosure to the PTO also demonstrates that Mr. McAuley

and Mr. Stone made a deliberate decision to withhold material information from the PTO, and
thus demonstrates an intent to deceive.
97.

The withholding of information material to patentability with intent to

deceive constitutes inequitable conduct, which renders the ‘629 patent unenforceable.
Prior Art References Disclosed by Interwoven
98.

On or about January 12, 2009, Vertical contacted Interwoven, taking the

position that the ‘744 patent contains claims that it believes cover Interwoven’s TeamSite Team
XM2, TeamSite Server and TeamSite Live Lite Content Publishing Server products (hereinafter
“TeamSite prior art”).
99.

On or about March 5, 2009, Vertical’s agent and attorney, Vasilios Dossas

and its Chief Technology Officer, Luiz Claudio Valdetaro met with representatives from
Interwoven at Interwoven’s headquarters in San Jose, California.
100.

During this meeting Interwoven presented Mr. Dossas and Mr. Valdetaro

with information including claim charts, clearly indicating that the alleged infringing TeamSite
prior art has been in use and was on sale prior to October 1, 1998. As such, TeamSite
constitutes material prior art under at least 35 U.S.C. § 102(b).
101.

On information and belief, Vertical is a company that had approximately

29 employees at the time of its meeting with Interwoven, and Mr. Valdetaro is the highest
ranking management-level employee at Vertical primarily responsible for technology, including

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the development and monetization of Vertical’s intellectual property and represented Vertical in
this capacity at the meeting with Interwoven.
102.

On information and belief, persons involved in the prosecution of the ‘629

patent, including Mr. Valdetaro, Mr. McAuley and Mr. Stone, were aware of the existence of
material information regarding the patentability of the ‘629 patent arising out of its discussions
with Interwoven, including at least the prior art disclosed by Interwoven at the March 5, 2009
meeting at Interwoven’s headquarters.
103.

On information and belief, in his position as Chief Technology Officer,

Mr. Valdetaro would have known, or should have known, about pending patent applications,
especially the ‘629 application which was a continuation of the ‘744 patent that he and Mr.
Dossas were attempting to license to Interwoven during the March 5, 2009 meeting.
104.

On information and belief, by virtue of his position as Vertical’s Chief

Technology Officer and knowledge of the Interwoven TeamSite prior art, Mr. Valdetaro had a
duty to disclose this material prior art to the PTO during the prosecution of the ‘629 patent.
105.

On information and belief, by virtue of his position as Vertical’s Chief

Technology Officer, if he himself was not the person who should have disclosed the Interwoven
TeamSite prior art to the PTO, Mr. Valdetaro would have known the appropriate person at
Vertical to whom this information should be disclosed, and had a duty to disclose this relevant
information to that person.
106.

On information and belief, none of the persons involved in the prosecution

of the ‘629 patent, including Mr. Valdetaro, Mr. McAuley and Mr. Stone, disclosed to the PTO
any references identified by Interwoven related to its TeamSite prior art.

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107.

The TeamSite prior art is material and would have been relevant to the

patentability of at least the ‘629 patent.
108.

On information and belief, the TeamSite prior art was withheld from the

PTO with the intent to deceive.
109.

The withholding of information material to patentability with intent to

deceive constitutes inequitable conduct, which renders the ‘629 patent unenforceable.
PRAYER FOR RELIEF
WHEREFORE, Samsung prays for the following relief:
A.

that the Court dismiss Vertical’s Complaint with prejudice;

B.

that the Court adjudicate that Samsung is not infringing, contributing to, or

inducing infringement of, and have not infringed, contributed to, or induced infringement of any
of the claims of the Asserted Patents, willingly or otherwise;
C.

that the Court adjudicate that the claims of the Asserted Patents are invalid

and unenforceable;
D.

that the Court deny Vertical any and all relief it has requested in its

E.

that the Court deny any preliminary or permanent injunctive relief in favor

Complaint;

of Vertical and against Samsung;
F.

that Vertical shall take nothing by way of its Complaint;

G.

that the Court find that this case is an exceptional case under 35 U.S.C. §

285, and require Vertical to pay costs of suit that Samsung has incurred, including attorneys’ fees
and costs, pursuant to 35 U.S.C. § 285 and all other applicable statutes, rules, and common law;
and

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H.

that the Court grant Samsung costs and such other and further relief to

which Samsung is entitled and which the Court deems just and reasonable.

Dated:

May 27, 2011

Respectfully submitted,

By: /s/ Eric H. Findlay
Eric H. Findlay
State Bar No. 00789886
[e-mail]
Brian Craft
State Bar No. 049702020
[e-mail]
FINDLAY CRAFT LLP
6760 Old Jacksonville Hwy Suite 101
Tyler, TX 75703
Telephone: [phone]
Fax: [phone]
Matthew D. Powers
[e-mail]
Steven Cherensky
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Fax: [phone]
Timothy DeMasi
[e-mail]
Julian Moore
[e-mail]
WEIL, GOTSHAL & MANGES LLP
767 5th Avenue
New York, NY 10153
Telephone: [phone]
Fax: [phone]
ATTORNEYS FOR DEFENDANTS
SAMSUNG ELECTRONICS CO., LTD.
SAMSUNG ELECTRONICS AMERICA, INC.

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CERTIFICATE OF SERVICE
I hereby certify that all counsel of record, who are deemed to have consented to
electronic service are being served this 27th day of May 2011, with a copy of this document via
the Court’s CM/ECF system per Local Rule CV-5(a)(3).

/s/ Eric H. Findlay
Eric H. Findlay

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