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)

I19.

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

the talk that Pei Wei gave at Stanford University in September 1994.

120.

The plotting demo described in the talk at Stanford University in September 1994

is the same plotting derno described in the August 1994 Yiola paper. See supra

121.

I48.

Pei Wei had told Doyle on August 31,1994, see supra fl 51, and again on August

27, 1995, see suprq 176, thaf the plotting demo described in August 1994 Yiola paper was the

"very one" demonstrated'oto visitors from a certain computer manufacturer" by May 8, 1993.

122.

On information and belief 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
34

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).

123. Thus, during prosecution of the '906 patent, Doyle was repeatedly confronted
with evidence that the ViolaWWW browser was material prior art under 35 U.S.C. $ 102(b), yet
Doyle never disclosed the ViolaWW-W browser to the Patent Office during prosecution

of

application number 081324,443, which matured into the '906 patent.

124. On information and belief, the ViolaW"W"W browser, including

the August 1994

Viola paper, was disclosed to Krueger in August of 1998, after the Notice of Allowance for the
'906 patent issued but before the '906 patent issued, when he received a fax containing a number
of references regarding the ViolaWWW browser.

125. On information and belief, the fax sent to Krueger in August of 1998 was to allow
him to analyze whether the ViolaWWW browser, including the August 1994 Viola paper, should
be submitted to the Patent Office.

126.

On information and belief, Kruger was aware of Pei'Wei's May 1993

demonstration of the ViolaWWW browser to Sun Microsystems employees without a
confi dentiality agreements.

127.

On information and beliet Krueger considered Pei Wei's statements regarding the

}l4ay 1993 dernonstration of the ViolaWWW browser to Sun Microsystems employees when he
analyzed whether to disclose the ViolaWWW browser to the Patent Office.

128.

On information and belief Krueger had no reason to disbelieve Pei Wei's

statsments regarding the

May 1993 demonstration of the ViolaWWW browser to Sun

Microsystems employees.

35

129.

On information and belief, Krueger made the determination, prior to the issuance

of the '906 patent, to not disclose to the PTO the information he received regarding the

ViolaWWW browser.

D.

The ViolaW"W"W browser was material to the patentability of
the'906 patent

130. The ViolaV/WW

browser was material to the patentability of the claimed

inventions in the '906 patent.

131. There is a remarkable

similarity between the ViolaWWW browser and the

preferred embodiment of the '906 patent:

/,356

nÈlr rdem dVbWWW.oû.dù¡ rdd.tolt-srlto
b

StrÞ

ürd

ffificrbûr r9¡.tfr@s

Ifrlont-afirt!¡sl'l D¡ûtFogmüarùd*

lD

b

ûrb

oÈþ4 t rtb Fogrtæd

úd

¡lG

lüÊ

m

D€monltrolion: lnl€ræl¡vô

virw¡ialion ol

d

7-Hæk old 30

ênbr

This proircl will lerye lhe dwl purpore of......

Viola\üW"W

Fig. 9 of U.S. Patent No. 5,838,906

Both the ViolaWWW browser (on the left) and the preferred embodiment of the '906 patent (on
the right) enabled a user to interact with a 3-dimensional image embedded in the middle of a

webpage. In the ViolaWWW screenshot above, there are three slide controls to the right of the

36

embedded image that move up and down; these rotate the embedded image on the X,

Y, andZ

axes. Similarl¡ in the preferred embodiment of the '906 patent shown above, box 354 has three
slide controls to the right of the embedded image that rotate the image on the X, Y, and Z axes.
Thus, ViolaW-WW, like the '906 patent, teaches a browser capable of displaying embedded

interactive objects.

132.

The Manual of Patent Examining Procedure in force at the time the application

for the '906 patent was filed included the following statements:

Materiality is defined in 37 CFR 1.56(b) and discussed herein at
MPEP $ 2001.05. In addition to prior art such as patents and
publications, 37 CFR 1.56 includes, for example, information on
possíble príor publíc usøs, sales, offers to sell, derived knowledge,
príor ínventíon by another, inventorship conflicts, and the like,
[emphasis in bold added]

133.

The Manual of Patent Examining Procedure in force today contains similar

language:

Materiality is defined in 37 CFR 1.56(b) and discussed herein at MPEP $ 2001.05. In
addition to prior art such as patents and publications, 37 CFR 1.56 includes, for example,

information on >enablement,<possíble príor publíc

rrse,s, sales,

offers to sell, derived

knowledge, príor ínventíon by another, inventorship conflicts, and the like.,

)"Materiality is not limited to prior

art but embraces any information that a reasonable

examiner would be substantially likely to consider important in deciding whether to allow
an application to issue as a patent." Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer,

Inc.,326F.3d 1226,1234,66 USPQ2d 1481, 1486 (Fed. Cir. 2003) (emphasis in
original) (finding article which was not prior art to be material to enablement issue).<
[emphasis in bold added]

37

134.

The Federal Circuit has confirmed that the Viola\MWW browser was material to

the patentability of the claimed inventions in the '906 patent.

135. The Federal Circuit

held that a reasonable jury could find at least claims 1 and 6

of the '906 patent anticipated by the ViolaWW-W browser under 35 U.S.C. $ 102(a), (b), and/or

(g).

See 399

F.3d 1325,1329,133215 (Fed. Cir.2005).

136.

The Federal Circuit held that "'Wei's

ll',4.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 7325,1335 (Fed. Cir.2005).

137.

The Federal Circuit held that a reasonable jury could find at least claims

I

and 6

of the '906 patent obvious in light of the ViolaWWW browser. See 399 F.3d 1325,1335 (Fed.

Cir.2005).

138.

The Federal Circuit held that a district court could find that Doyle had committed

inequitable conduct by failing to disclose the ViolaWW-W browser to the Patent Office. See 399
F.3d 1325,1336 (Fed. Cir. 2005).

139.

On information and belief Krueger \ryas aware that the Federal Circuit confrmed

that the ViolaWW"W browser was material to the patentability of the claimed invention in the

'906 patent, but he still did not discuss the ViolaWWW browser further with Doyle.

140. On information

and belief, even after Krueger \ilas aware that the Federal Circuit

confirmed that the ViolaWWW browser was material to the patentability of the claimed
invention in the '906 patent he did not disclose any additional information to help the Patent

Office consider ViolaWWW browser.

l4l.

The Patent Office has also confirmed that the ViolaWW"W browser was material

to the patentability of the claimed inventions in the '906 patent.

38

142. On or about July 30, 2007, during

the 2005 reexamination of the '906 patent, the

Patent Office rejected all claims of the '906 patent as being anticipated by DX95, which includes
a copy of the text found in Pei Wei's August

143.

lgg{Yiolapaper,

see

supral48.

Pei Wei had told Doyle on August 31,1994, about the August 7994Yiolapaper,

see supra llT 44-48, and Doyle had downloaded and read that paper the same day, see

suprall

49, 55-57, yet Doyle never disclosed the Viola paper to the Patent Office dwing the original
examination of the '906 patent.

144.

The fact that Doyle may have conceived of the inventions claimed in the '906

patent before August 16, 1994, does not render the August 1994 Viola paper immaterial, because
the Viola paper describes features of the ViolaWWW browser that existed before the invention
date for the '906 patent and/ar over one year before the application for the '906 patent was filed.

I45.

For example, the plotting derno described in the August 1994Yiolapaper was

part of the ViolaW"WW browser software that was demonstrated to Sun Microsystems on May 7,
1993

-

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

T1[

51-54.

146.

None of the claimed inventions in the '906 patent was conceived before August

147.

Thus, the ViolaWW"W browser software that was described in the August 1994

1993.

Viola paper and demonstrated to Sun Microsystems on May 7,1993, also corroborates
anticipation of the claimed inventions in the '906 patent under 35 U.S.C. g 102(g).

148.

Neither reexamination of the '906 patent considered whether the claimed

inventions were anticipated by ooWei's lll4:ay 7,1993 demonstration to two Sun Microsystems
employees without confidentiality agreements" which the Federal Circuit has held was a "public
use under [35 U.S.C. $

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

39

I49.

In an ex parte reexamination, "[r]ejections will not be based on matters other than

patents or printed publications, such as public

use."

,See

Manual of Patent Examining Procedure

(MPEP) $ 22s8(r).

150.

On information and belief, Krueger knew that the Patent Office could not

consider public use art during an ex parte reexamination.

151. The Patent Office had the authority during the original

examination of the '906

patent to issue a rejection based on the 'þublic use" provision of 35 U.S.C. $ 102(b), but Doyle
and Krueger never disclosed to the Patent Office during that examination the evidence they had

in their possession that the ViolaWWW browser was in "public use" more than one year before
the application for the '906 patent was filed.

I52.

On information and belief, the Patent Office would not have allowed the claims

of

the '906 patent if Doyle or Krueger had not engaged in inequitable conduct and instead had

fulfilled their duty of candor and good faith in dealing with the Patent Office.

E.
153.

Doyle and Krueger intended to deceive the Patent Office
during prosecution of the '906 patent

During prosecution of application number 08/324,443, which matured into the

'906 patent, Doyle and Krueger withheld extensive evidence about the ViolaWWW browser.

154.

For example, Doyle failed to disclose the following material information: the

message from Raggett about the ViolaWWW browser and embedded objects, see supra llfl 37-

40; the communications with Pei Wei in 1994 about the ViolaW"WW browser and the embedded
interactive plotting derno that was in public use in lN{ay 1993, see supra I1T43-61; the August
1994 Viola paper describing the ViolaWWW browser and the embedded interactive plotting
demo that was in public use in }l4ay 1993, see supra

in 1995 about the ViolaWWW browser

ffi aa-a8; the communications with Pei Wei

and the embedded interactive plotting demo that was in

40

public use in May 1993 and again at the Wizards conference in July 1993, see supra tlfl 73-91;
the contents of the'oViola stuff'folder that Doyle maintained, which included information about
the V/izards conference in July 1993 and links to the ViolaWWW browser software, including
source code for the smbedded interactive plotting demo that was in public use in l:[lf.ay 1993, see
supra

'1TT

95-116; and Pei Wei's talk at Stanford in September 1994 about the ernbedded

interactive plotting demo that was in public use in May 1993, see supralnnT-123.

155.

On infonnation and

belief Krueger failed to disclose a number of material

references regarding the ViolaWWW browser including at least the August l994Yiolapaper,

Doyle's communications with Pei Wei ín 1994 about the ViolaWWW browser and the
embedded interactive plotting demo that was in public use in May 1993; the Viola paper

describing the ViolaWWW browser and the embedded interactive plotting demo that was in

public use in }l4ay 1993; and the contents of the "Viola stuff' folder that Doyle maintained and
was faxed to Krueger in August of 1998, which included information about the Wizards
conference in July 1993 ard links to the ViolaWWW browser software, including source code

for the embedded interactive plotting demo that was in public use in May 1993.

156.

Doyle and Krueger withheld information about the ViolaWWW browser with the

specific intent to deceive the Patent Office.

I57.

Doyle had a financial interest in the patentability of the claimed inventions in the

'906 patent. See suprann22-30.

158.

The ViolaWWW browser threatened the patentability of the claimed inventions in

the '906 patent, and thus threatened Doyle's financial interests.

159.

On information and belief, Doyle was personally involved in the prosecution

application number 08/324,443, which matured into the '906 patent.

4l

of

160. For example, Doyle signed a declaration

on or about November 22,1994, stating

that he was an inventor and acknowledging his duty of candor and good faith in dealing with the
Patent

Office.

161.

See

supra\70.

On or about January 2,1997, Doyle signed a declaration that was submitted to the

Patent Office in an effort to establish an earlier date of invention for the claims of the '906 patent

application.

162. On or about February

24,1997, Doyle and Krueger participated in an examiner

interview in an effort to secure allowance of the claims of the '906 patent application.

163. On or about llf.ay 27, 1997 , Doyle signed a29-page declaration

(including an

appendix) that was submitted to the Patent Office in an effort to establish himself as an'oexpert"

in the subject matter of the claimed invention and to overcome various obviousness rejections to
the claims of the '906 patent application.

164.

On or about October 29, 1997, Doyle signed another declaration that was

submitted to the Patent Office in an effort to establish an earlier date of invention for the claims

of the'906 patent application.

165.

On or about November 6, 7997, Doyle and Krueger participated in another

examiner interview in an effort to secure allowance of the claims of the '906 patent application.

166. Krueger

lacked a technical degree in computer science or electrical engineering,

and thus he relied on Doyle to understand and describe the subject matter of the claimed

invention and the prior art.

167.

Doyle personally reviewed and approved papers submitted to the Patent Office

during prosecution of the '906 patent.

42

168. Despite Doyle and Krueger's extensive personal involvement in the prosecution
of application number 08/324,443, which matured into the '906 patent, Doyle and Krueger never
disclosed the ViolaWWW browser to the Patent Office during that prosecution.

169.

On information and belieÊ the circumstances of Doyle and Krueger's actions

demonstrate an intent to deceive the Patent Office.

170.

For example, during prosecution of the '906 patent, Doyle and Krueger made

arguments for patentability that could not have been made if he had disclosed the ViolaWWW
browser to the Patent Office.

I7l.

On or about May 6, 1996, the Patent Office rejected several claims as being

anticipated by the University of Southern California's "Mercury Project."

172. On or about August 6,1996, a response to this rejection was submitted to the
Patent Office.

I73.

Doyle personally reviewed and approved the response submitted to the Patent

Office on or about August 6,1996.

ll4.

The response submitted on or about August 6,1996, included the following

statements:

The claimed combination is fundamentally different from the
Mercury Project. In the claimed combination, the external object
and executable object are embedded by reference in the HTML
document and the object is displayed and processed within the
same window where a portion of the original document is
displayed. In the Mercury Project information is passed back to
the server and a new document is generated and displayed. There
is no display and processing the external object within the window
in which a portion of the original document is displayed.

175. If Doyle or Krueger had disclosed the ViolaWWW

prior art to the Patent Office,

on information and beliet it would not have been possible to distinguish the claims of the '906
patent over the prior art on the basis that the prior art failed to disclose "display[ing] and
43

processing the external object within the window in which a portion of the original document is

displayed."

176.

On or about March 26,1997, the Patent Office rejected several claims as being

obvious in light of "Khoyi et al. US Patent 5,206,951" in combination with other prior art.

I77.

On or about June 2, 1997, aresponse to this rejection was submitted to the Patent

Office.

178. Doyle and Krueger

personally reviewed and approved the response submitted to

the Patent Office on or about June2,1997.

I79.

The response submitted on or about June 2, 1997, included the following

statements:

fT]here is no suggestion in Khoyi of modiffing Mosaic so that an
external application . . . is invoked to display and interactively
process the object within the document window while the
document is displayed by Mosaic in the same window.

180. If Doyle or Krueger had disclosed the ViolaWWW

prior art to the Patent Office,

on information and belief, it would not have been possible to distinguish the claims of the'906
patent over the prior art on the basis that the prior art failed to disclose

ooan

extemal application

[that] is invoked to display and interactively process the object within the document window

while the document is displayed by fthe browser] in the same window."

181.

On or about August 25, 1997 , the Patent Office rejected several claims as being

obvious in light of "Koppolu et al. US Patent 5,581,686" in combination with other prior art.

182.

On or about December 23, 1997, a response to this rejection was submitted to the

Patent Office.

183.

On information and beliet Doyle and Kruegerpersonally reviewed and approved

the response submitted to the Patent Office on or about December 23,1997.

44

184.

The response submitted on or about December 23,1997, included the following

staternents:

fT]here is no disclosure or suggestion in Mosaic or Koppolu of
automatically invoking an external application when an embed text
format is parsed. Each of those references require user input,
specifically clicking with a mouse pointer, to activate external
applications to allow display and interaction with an external
object.

185. If Doyle or Krueger

had disclosed the ViolaWWW prior art to the Patent Office,

on information and belief it would not have been possible to distinguish the claims of the '906
patent on the basis that the prior art failed to disclose "automatically invoking an external

application when an embed text format is parsed."

186.

On information and belief, Doyle and Krueger's repeated use of arguments that

could not have been made if Doyle or Krueger had disclosed the ViolaWWW prior art
demonstrates an intent to deceive the Patent Office.

187.

Doyle's intent to deceive the Patent Office is also demonstrated by comparing

what he told an audience of web developers on or about March 27, 1995, to what he told the
Patent Office on or about }l4ay 27, 1997

188.

.

On or about March 27,1995, Doyle responded to a post on the publicly-accessible

WW-W-talk e-mail distribution list in which another authorhad written, under the heading
"HotJava is here! And it *rocks*," "It's the most exciting thing to happen to the'Web since
viola.o' Doyle's response included the following statønents:

If you take a close look at Java, you'll

realize that it bears a close
similarity to Viola, since the ooapplets" must be coded from a
predefined language, downloaded and locally interpreted.

189.
Patent

On or about May 27,1997, Doyle signed a declaration that was submitted to the

Office. Doyle's declaration included the following
45

statements:

The three exemplary products which incorporate the
features of the claimed invention include Netscape Navigator 2.0
(or newer versions), Java, from Sun Microsystems, and ActiveX,
from Microsoft. . . . [T]he success of these products is directly
attributable to the claimed features of the invention.

A good indicator that Sun Microsystems felt that enabling
interactivity in Web pages was the key feature of Java is given in
the first chapter of "Hooked on Java," which was written by
members of the original Java development team. They say, "With
applets written in the Java programming language, Web users can
design Web pages that include animation, graphics, games, and
other special effects Most important, Java applets can make
Web pages highly interactive."

This statement shows that the developers of Java felt that
the most important feature of the Java technology was the ability
of Java to allow an embed text format (the applet tag) within a
Web document to be parsed by a Web browser to automatically
invoke an external executable application to execute on the client
workstation in order to display an external object and enable
interactive processing of that object within a display window
created at the applet tag's location within the hypermedia
document being displayed in the browser-controlled window. The
book's authors further emphasize the novelty and nonobviousness
of this technology when they sa¡ "Quite simply, Java-powered
pages are Web pages that have Java applets ernbedded in them.
They are also the Web pages with the coolest special effects
around .... Remernber, you need a Java-compatible Web
browser such as llotJava to view and hear these pages and to
interact with them; otherwise, all you'll access is static Web
pages minus the special effects."

The above citations, as well as the additional details given
in Appendix A, provide ample evidence of the commercial success
of products incorporating features of the claimed invention, as well
as evidence of the widespread acclaim that these products have
garnered for the technical innovations which the features of the
claimed invention allowed them to provide. They further show
that the successes of these products was a direct result of the
features of the claimed invention, which they incorporated through
implementation of an embed textþrmat that is parsed by a Web
browser to autotnatically ínvoke an external executable
46

applicatíon to execute on the client worl<station in order to dísplay
an external object and enable interqctive processing of that object
within a dßplay window created at the embed textþrmat's
location within the hypermedia document being displayed in the
brows er-c ontro ll ed window.

190.

The declaration Doyle signed on or about

N.,4ay

27,1997,made no mention of

Viola or the ViolaWWW browser.

191.

Doyle and Krueger's disclosure of Java for purposes of commercial success, but

not the ViolaWWW browser which Doyle knew was prior artthat existed over one year before
the application for the '906 patent was filed, demonstrates, on information and belief, an intent to
deceive the Patent Ofñce, especially given Doyle's belief that Viola was similar to Java and that
Java embodied the claimed invention.

F.

Between 1999 and 2003, Doyle learned about addition¡l Viola
prior arto and learned that an expert in the field believed that
the plotting demo for the Viola\ilW'W browser anticipated the
asserted claims of the 0906 patent

192.

Between 1999 and 2003, a third party disputed the validity of the '906 patent.

193.

On information and beliet Doyle personally guided Eolas through the litigation

conceming the validity of the '906 patent.

194. Throughout

the litigation, the third party asserted that the plotting demo involving

the ViolaWWW browser anticipated the asserted claims of the'906 patent.

195.

The plotting demo relied on by the third party to prove anticipation of the asserted

claims of the '906 patent was the same plotting demo that Pei V/ei had repeatedly described to
Doyle, see supraffi44-54,74-78, and which the Federal Circuit has held was a'þublic use" on
ll/.ay 7, 1993,399 F.3d 1325,1335 (Fed. Cir. 2005), and which Doyle himself came across from
his own research into Viola, see supra 1fii 108-123.

47

196.

In its contentions that the plotting demo involving the ViolaWWW browser

anticipated the asserted claims of the '906 patent, the third party specifically identified the

VOBJF tag, the plot.v hle, and the vplot executable application.

197.

For example, on or about December 14,2001, the third party served an expert

report by Dr. John P.J. Kelly, that included the following statements:
When ViolaW'WW encountered the tag
<VOBJF>/usr/work/viola/ appsl pl.ot.v</VOBJF), an embed text
format specifying the location of an object, it looked in the
specified path for at least part ofthe object, parsed the path, and
automatically loaded the object into the program. The file þlot.v)
also contained type information associated with the object, such as
the name and location of an external executable application, vplot,
that also was automatically invoked to enable display of and user
interaction with the object at a location within a display area within
the document being displayed in the browser-controlled window
comesponding to the location of the embed text format in the
document. Subsequently, when the user interacted with the object,
ViolaW'W'W sent messages to vplot based on the user input and
received output from vplot, thus updating the display of the object,

198.

Similarly, at atria| in 2003 conceming the validity of the '906 patent, Dr. Kelly

testified that the plotting demo involving the ViolaWWW browser anticipated the asserted
claims of the '906 patent, and he specifically identified the VOBJF tag, the plot.v file, and the

vplot executable application for purposes of his anticipation analysis.

ßg.

Pei Wei also testified at the trial in 2003 about the ViolaWV/'W browser and the

plotting demo.

200.

At the trial, exhibit DX34 included source code for the ViolaWWW browser

dated May 72,1993.

201

At the trial, exhibit DX37 included source code for the ViolaWWW browser

dated May 27, 1993.

48