Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1028

Staples, Inc.'s Third Amended Answer, Defenses and Counterclaims ANSWER to 891 Amended Complaint,, COUNTERCLAIM against All Plaintiffs by Staples, Inc.. (Attachments: # 1 Exhibit Third Amended Answer (pages 16-17), # 2 Exhibit Third Amended Answer (pages 18 - 27), # 3 Exhibit Third Amended Answer (pages 28 - 33), # 4 Exhibit Third Amended Answer (pages 34 - 48), # 5 Exhibit Third Amended Answer (pages 49 - 69))(Richardson, Michael)

Such new accessories can be as simple as little applets that
accompany documents, or conceivably as complicated as a news or
mail reader. An analogy is how Emacs's programming
environment allows that text editor to become much more than just
a text editor.

Not only can mini applications be embedded inside of documents,
they can even be plugged into the ViolaWWW's "toolbar".
The following picture shows a "bookmark tool" that acts as a mini
table of contents for the page. In this case, the bookmark is linked
to the document (by using the <LINK> tag of HTML 3.0), and the
bookmark will appear and disappear with the document.

18

Two Front-Ends
r¡VW, One has the native viola

There're currently two front
XLib front-end, and the

front-end. The GUls layouts for

One can imagine many plug-in accessories/applets/tools possible
with this facility. Like, a self guiding slideshow tool. Or,
document set specifìc navigational tools/icons that are not pasted
onto the page so that the navigational icons don't scroll away from
view. Etc.
49.

"Doyle downloaded and read the paper." 399 F.3d 1325, 1330 (Fed. Cir. 2005).

50.

On August 3I,1994, at approximately 9:06 p.m. Califomia time, Doyle

responded to Pei'Wei's statement at approximately 6:52 p.m. that
case of program objects embedded

"I don't think this is the first

in docs and transported over the WWW. ViolaWW-W has

had this capabilities for months and months

now." Doyle

responded by asking Pei Wei,

"How

many months and months? We demonstrated our technology in 7993."

51

.

On August 31, 1994, at approximately

1

I : 16 p.m. California time, Pei Wei

responded to the message that Doyle had sent at approximately 9:06

included the following statements

p.m. Pei Vy'ei's response

:

Definitely by May 8, 1993 we had demonstrated that plotting demo
(the very one shown in the viola paper) to visitors from a certain
computer manufacturer... This demo was memorable because
someone and I at ORA had lost sleep the night before the meeting,
in order to cook up that particular plotting demo :) We had to
show something cool.
That demo wasn't very hard to do because by that time the basic
capability was already in place for violaWWW to fetch viola

t9

objects over HTTP (or whatever) and plug them into documents.
Of course, our wire-frame plotting demo isn't anywhere as
comprehensive as yours. But, the point was that there was a way
to embed programmable & interactive objects into HTML
documents.

52.

When Pei V/ei referred to the "plotting demo (the very one shown in the viola

paper)," he was referring to the plot of the fighter jet shown above in the window titled "XPlot."
See

supral48.

53.

When Pei Wei referred to a demonstration "by May 8,1993" to "visitors from a

certain computer manufacturer," he was referring to a demonstration of the plotting demo to Karl
Jacob and James Kernpf from Sun Microsystems on May

7

, 7993. This demonstration took

place in Northern California. There was no limitation, restriction or obligation of secrecy on

Karl Jacob or James Kempf.

54.

The Federal Circuit has held that o'Wei's li{ay 7, 1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was

a

public use under [35 U.S.C.

102(b)1." 399 F.3d 1325,1335 (Fed. Cir. 2005).

55.

On August 3l , 1994, at approximately

1 1 : 13

p.m. California time, Doyle

responded again to the message that Pei Wei had sent at approximately 6:52 p.m.

56.

On information and beliet Doyle's response was sent after Doyle had read Pei

Wei's August 1994 Viola paper.

57.

Doyle's response included the following statements: o'Pei is mistaken on two

counts, as I describe below . . . . As Pei's paper on Viola states, that package did not support

what it calls 'embeddable program objects' until 1994. . . . Furthermore, Viola merely
implements an internal scripting language . . . ."

58.

On August 31,1994, at approximately 11:36 p.m. Califomia time, Doyle

responded to the message that Pei Wei had sent at approximately
20

11

:16

p.m. Doyle's

response

$

included the following statements: 'oOut of curiosity, did you publicly demonstrate this or
publish any results before 1994?"

59.

On September 1,1994, at approximately 12:08 a.m. California time, Pei Wei

responded to the message that Doyle had sent at approximately I 1 :13 p.m.

60.

Pei Wei's message at approximately 12:08 a.m. was also responsive to the

message that Doyle had sent at approximately 11:36 p.m.

61.

Pei Wei's message to Doyle at 12:08 a.m. included the following statements:

Well. Viola's model was *demonstrated* in 1993, *released*
freely in 1994.. . . And, as for the plotting demo, it actually is
really just a front-end that fires up a back-end plotting program
(and the point is that that back-end could very well be running on a
remote super computer instead of the localhost). For that demo,
there is a simple protocol such that the front-end app could pass an
X window ID to the back-end, and the back-end draws the graphics
directly onto the window violaWWW has opened for it.

62.
'W'ei

On information and belief Doyle deleted from his computer his emails with Pei

on August 31 and September 1,1994, and the copy of the August 1994 Viola paper that he

had downloaded and read. Doyle kept on his computer other emails from that timeframe,
however.

63.

On information and belief, Doyle was living in Northern California on August 31,

1994, when he exchanged messages with Pei Wei about the ViolaWWW browser.

64.

Pei Wei was

living in Northern California on August 31,1994, whsn he

exchanged messages with Doyle about the ViolaWWW browser.

65.

There was no limitation, restriction or obligation of secrecy on the recipients

Pei Wei's messages on August

3l

and September

21

I,1994, about the ViolaWWW browser.

of

66.

There was no limitation, restriction or obligation of secrecy on the readers of Pei

Wei's August 1994 Yiola paper.
67

.

On October 17, 1994, the application for the '906 patent was filed. Doyle and

Martin were among those named as inventors.

68.

The application for the '906 patent discloses the Mosaic browser and the Cello

browser, but not the ViolaWWW browser.

69.

The application for the '906 patent included an information disclosure statement

that identified several pieces of prior art, but not the ViolaWWW browser.

70.

On November 22, 1994, Doyle signed a declaration under penalty of perjury that

includedthefollowingstatements: "Ibelievel

am... anoriginal, firstand jointinventor... of

the subject matter which is claimed and for which a patent is sought . . . the specification

which . . . was filed on October 17,1994

as

of

Application Serial No. 08i324,443. . . .l

acknowledge the duty to disclose information which is material to the examination of this

application in accordance with Title

71.

37 ,

Code of Federal Regulations, Section | .56."

No disclosure about the ViolaWWW browser was ever provided to the Patent

Office during prosecution of application number 081324,443, which matured into the '906 patent.

B.
72.

Doyle was reminded about the ViolaW-WW browser in 1995
during prosecution of the '906 patent

Doyle was reminded about Pei \Mei and the ViolaW.WW browser inl995, during

prosecution of the '906 patent, but still no disclosure about the ViolaWWW browser was

provided to the Patent Office.

73.

On August 21, Iggs,at approximately I l:42 a.m. California time, Doyle posted a

"Press Release" to the publicly-accessible WWW-talk e-mail distribution

22

list. Doyle's post

included the following statements: "Eolas Technologies Inc. announced today that it has
completed a licensing agreement with the University of California for the exclusive rights to a
pending patent covering the use of embedded program objects, or 'applets,' within V/orld Wide

Web documents."

74.

On August 21, 1995, at approximately 12:54 p.m. California time, Pei Wei

responded on the publicly-accessible WWW-talk e-mail distribution list to Doyle's "Press

Release." Pei Wei's response included the following statements: "[F]or the record, I just want
to point out that the 'technology which enabled Web documents to contain fully-interactive

"inline" program objects' was existing in ViolaWWW and was *released* to the public, and in

full

source code form, even back

in 1993... Actual conceptualization

and existence occurred

before'93."

75.

On August 21,1995, at approximately 1:14 p.m. California time, Doyle

responded to the message Pei Wei had sent at approximately 12:54

p.m. Doyle's response

included the following statemørts: "'We've had this discussion before (last September,

remsmber?). You admitted then that you did NOT release or publish anything like this before
the Eolas demonstrations."

76.

On August 21, 1995, at approximately 4:09 p.m. California time, Pei Wei

responded to the message that Doyle had sent at approximately 1:14

p.m.

Pei

'Wei's

included the following statements:
Please carefully re-read my letter to you... I said Viola was
demonstrated in smaller settings, but before your demo. The
applets stuff was derno'ed to whomever wanted to see it and had
visited our ofñce at O'Reilly & Associates (where I worked at the

time).
This is what I wrote on the VRML list:

23

response

> Definitely by May 8, 1993 we had demonstrated that plotting demo
> (the very one shown in the viola paper) to visitors from a certain
> computer manufacturer... This demo was memorable because someone
and

I

> at ORA had lost sleep the night before the meeting, in order to cook up
> that particular plotting demo :) We had to show something cool.
That date (May 93), atleast, predates your demo if I'm not
mistaken. Then around August 93, it was shown to a bunch
attendees at the first Web Conference in Cambridge. . . .

of

If you're talking about interactive apps *specifically* on the web,
ie applets in-lined into HTML documents etc., and with bidirectional communications, then look at ViolaWWW as it existed
around late' 92 early' 93.

77.

When Pei Wei referred to the 'þlotting demo (the very one shown in the viola

paper)," he was referring to the plot of the fighter jet shown above in the window titled "XPlot."
See

supral48.

78.

'When

Pei Wei referred to a demonstration "by May 8,1993," he was referring to

the demonstration of the plotting demo to two Sun Microsystems employees that the Federal

Circuit has held "was

a

public use under [35 U.S.C. $ 102(b)]." 399 F.3d 1325,1335 (Fed. Cir.

2005).

79.

When Pei Wei referred to the "first Web Conference in Cambridge" "around

August 1993," he was referring to the "World-Wide V/eb Wizards'Workshop" held in
Cambridge, Massachusetts on July 28-30,1993.

80.

On information and belief, people attending the Wizards workshop included Tim

Berners-Lee, Marc Andreesen, Eric Bina, Dale Doughert¡ Scott Silvey, and Pei V/ei.

81.

On information and belief, Tim Berners-Lee and Dale Dougherty were the

organizers of the Wizards workshop.
24

82.

On information and belief, Dale Dougherty worked at O'Reilly & Associates in

Northern California.

83.

On information and belief, in 1992, Dale Dougherty learned about Viola and

recruited Pei Wei to join O'Reilly & Associates. Pei Wei's job at O'Reilly & Associates was to
continue developing the ViolaWWW browser.

84.

On information and beliet Scott Silvey worked with Pei V/ei at O'Reilly

&

Associates in Northern California.

85.

On information an belief, when Pei V/ei wrote "This demo was memorable

because someone and

I at ORA had lost sleep the night before the meeting, in order to cook up

that particular plotting demo," the other person he was referring to was Scott Silvey.

86.

On information and beliet Tim Berners-Lee is the person generally attributed to

be the inventor of the World Wide V/eb.

87.

Marc Andreesen and Eric Bina were the authors of Mosaic, a popular browser for

the World Wide Web created at the National Center for Supercomputing Applications INCSA) at
the University of Illinois at Urbana-Champaign.

88.

Marc Andreesen and Eric Bina went on to found Netscape, the manufacturer of

another popular browser for the World Wide Web.

89.

On information and belief, Pei Wei and Scott Silvey demonstrated the

ViolaWW-W browser and its ability to automatically invoke interactive objects embedded within
a webpage using the

"VOBJF" tag to at least Marc Andreesen and Tim Berners-Lee at the

V/izards workshop in Cambridge, Massachusetts in July 1993
application for the '906 patent was filed.

25

-

over one year before the

90.

There was no limitation, restriction or obligation of secrecy on anyone at the

Wizards workshop.

91.

Pei Wei's demonstration at the Wizards workshop of the ViolaWW.W browser

and its ability to automatically invoke interactive objects embedded within a webpage using the

..VOBJF" tag was a public
use under 35 U.S.C. $ 102(b).

92.

Despite Pei Wei's communications to Doyle repeatedlyproviding evidence that

the ViolaWW-W browser was material prior art under 35 U.S.C. $ 102(b), Doyle never disclosed
the ViolalVWW browser to the Patent Office during prosecution of application number
081324,443, which matured into the '906 patent.

93.

Instead, on information and belief, Doyle deleted from his computer his emails

with Pei Wei on August 21,1995. Doyle kept on his computer other emails from that timeframe,
however.

C.

In 1998, during prosecution of the '906 patent, Doyle collected
additional information about the ViolaW'WW browser

94.

In 1998, during prosecution of the '906 patent, Doyle obtained additional

information about the ViolaW-WW browser, but he still did not disclose any information about
the ViolaWWW browser to the Patent Office, as explained in more detail below.

95.

Dtring prosecution of the '906 patent, Doyle maintained a folder called "Viola

96.

The "Viola stuff'folder included a printout of Pei Wei's message to Doyle on

stuff."

August 37,1994, at approximately 6:52 p.m. California time, in which Pei Wei told Doyle,

"I

don't think this is the first case of program objects errbedded in docs and transported over the

WWV/. ViolaWWW

has had this capabilities for months and months

48.
26

now."

See

supranÍ[44-

97.

The "Viola stuff' folder included a printout of Doyle's message to Pei Wei on

August 31,1994, at approximately I 1:36 p.m. California time, in which Doyle asked Pei 'Wei,

"Out of curiosity, did you publicly demonstrate this or publish any results before 1994?"

See

supral58.

98. The "Viola stuff'folder included a printout from the URL
<http:/Âwvw.w3.ordHistory/1
>. This weþage has a heading for the
".WV-W'W'izards'Workshop" "Cambridge, Mass, July 1993" and includes links to

"AnnounceÍtent," "Agenda," aÍtd "Photos of attendees."

99.

"'W-W'W'WizardsWorkshop" refers to the \Morld-Wide Web Wizards Workshop

held in Cambridge, Massachusetts on July 28-30,1993, that Pei V/ei attended. See supra TT 79-

9r.

100. The o'Announcement"

link links to a webpage at

<http://www.w3.orey'History/l994/V[WWÏVorkingNotes/1993_V/orkshopiAnnouncement.html>
that states that "Interactive objects" would be discussed at the Wizards workshop.

101.
<http:/

The "Agenda" link links to a webpage at

vrvw.w3.ore/History/l

that

states that "Interactive objects" was on the agenda for discussion at the Wizards workshop.

lA2.

The webpages for the Wizards workshop corroborate Pei Wei's staternent to

Doyle on August 21,1995, that the plotting demo described in the August lgg4Yiolapaper was
"shown to a bunch of attendees at the first Web Conference in Cambridge" "around August 93"

-

over one year before the application for the '906 patent was filed. See

27

supral76.