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)

202.

DX34 contains the code for the plotting demo that Pei Wei demonstrated to Sun

Microsystems on

I|;4.ay

7, 1993, in Northern California.

203.

DX37 contains code for

204.

On May 31 , lgg3,Pei Wei posted DX37 on a publicly-accessible Internet site and

a

plotting demo similar to the plotting demo in DX34.

notified an engineer at Sun Microsystems that DX37 was available for downloading.

205.

Under 35 U.S,C. $ 102(b), DX37 was a "printed publication" over one year

before the application for the '906 patent was hled.

206.

Dr. Kelly testified that the piotting demo in DX34 and DX37 anticipates the

asserted claims of the '906 patent. Dr.

file,

and the

Kelly specifically identihed the VOBJF tag, the plot.v

vplot executable application for purposes of his anticipation analysis of DX37,

207.

The Federal Circuit has held that Dr. Kelly's testimony would allow a reasonable

jury to conclude thatDX3T anticipates at least claims

1 and 6

of the '906 patent. See 399 F.3d

1325,1335 (Fed, Cir. 2005).

208.

Neither Dr. Kelly nor the third party ever relied on anything other than the

plotting demo involving plot.v and vplot to prove anticipation by the ViolaWWW browser.

209.

For example, Dr. Kelly never discussed clock,v during the trial in July and August

210.

On information and beliel Doyle attended the trial involving the third party held

2003.

in July and August2003.

2I1r

On information and beliet by the end of the trial in August 2003, Doyle knew

about and understood the third party's contention that the plotting demo involving the

ViolaWV/W browser in DX37 anticipated the asserted claims of the '906 patent.

49

2I2.

On information and belief, by the end of the trial in August 2003, Doyle knew

about and understood Pei Wei's testimony that on May 3 7, 7993

application for the '906 patent was filed

-

-

over one yeff before the

he posted DX37 on a publicly-accessible Internet site

and notified an engineer at Sun Microsystems that DX37 was available for downloading.

G.

213.

During the 2003 reexamination of the '906 patent, Doyle and
Krueger concealed material information about the
Viola\ilWW plotting demo that Pei Wei and an expert had
repeatedly contended anticipated the 0906 patent

On or about October 30,2003,the Director of the Patent Office initiated a

reexamination of the '906 patent. The control number for this reexamination was 90/006,831.

214.

During the 2003 reexamination, Doyle and Krueger withheld information about

the ViolaW'WV/ browser with, on information and beliet the specific intent to deceive the Patent
Offrce.

215.

Doyle had afinancial interest in the patentability of the claimed inventions in the

'906 patent. See supra nn22-30.

216.

The ViolaWWW browser threatened the patentability of the claimed inventions in

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

217.

On information and belief, Doyle and Krueger were personally involved in the

2003 reexamination of the '906 patent.

21,8.

For example, on or about Apri127,2004, Doyle and Krueger participated in an

examiner interview in an effort to confirm the patentability of the claims of the '906 patent

application. Doyle gave the examiner

a

presentation supported by approximately 22 slides

prepared by Doyle and Krueger, none of which discussed DX37 or the Viola'WWW browser.

Neither Doyle nor Krueger mentioned the ViolaWWW browser during the interview.

50

219.

On or about }l4ay 6,2004, Doyle signed a declaration that was submitted to the

Patent Offrce in an effort to confirm the patentability of the claims of the '906 patent application.

This declaration made no mention of DX37 or the ViolaV/V/W browser.

220.

On or about August 18,2005, Doyle and Krueger participated in an examiner

interview in an effort to confirm the patentability of the claims of the '906 patent application,

Doyle gave the examiner
discussed DX37 or the

221.

a presentation supported

by approximately 36 slides, none of which

ViolaWWW browser.

During the 2003 reexamination, Doyle and Krueger submitted selected

information from the litigation with the third parfy concerning the validity of the '906 patent, but
he withheld information that would have identified for the examiner the key features of the prior

art ViolaV/WW browser and how they matched up to the asserted claims of the '906 patent.

This proved critical during the 2003 reexamination because when the examiner decided to look
at the source code for the

222.

ViolaV/WW browser, he missed the key points.

On or about December 30,2003, Doyle and Krueger submitted to the Patent

Office a CD containing two compressed zip hles, one for the "DX34" version of the ViolaWWW
source code dated

}ilay 12,1993, and the other for the "DX37" version of the ViolaWWW

source code dated May 27,1993.

223.

The compressed zíp file for DX34 that Doyle and Krueger submitted to the Patent

Office was named viola9305l2.tar.gz.zip. When unzipped, it contained 1,027 files in 35 folders
consisting of 8 total megabytes in size.

224.

The compressed zip file for DX37 that Doyle and Krueger submitted to the Patent

Office was named violaTOGO.tar.Z.zip. When unzipped, it contained 1,030 files in 34 folders
consisting of 7 .7 total megabytes in size.

51

225.

DX34 and DX37 contained source code for the ViolaWWW browser.

226.

Source code cannot be executed by a computer. Source code must be compiled

into binary code before it can be executed by

227.

a computer.

Without the compiled binary code, and without a suitable computer capable of

executing that binary code (such as a Sun SPARCstation from the early 1990s), the Patent Office
had no practical way to see the ViolaWWW browser in operation.

228.

Given the voluminous nature of the contents of DX34 andDX3T,and the

practical inability of the Patent Office to run the ViolaWW'W browser on a computer, it was
especially important for Doyle and Krueger to be candid with the Patent Office about the
contents of DX34 and DX37 so that the Patent Office could focus on the relevant files.

229.

On information and beliet Doyle and Krueger were not candid and instead

withheld material information that would have assisted the Patent Off,rce in understanding the
contents of DX34 and DX37.

230.

On information and belief, Doyle and Krueger did not disclose the full contents of

DX34 and DX37 in their entirety to the Patent Office during the first reexamination of the '906
patent.

231.

On information and belief, the full contents of DX34 and DX37 were not

submitted in their entirety until the Invention Disclosure Statement filed on November I,2006,

232.

For example, during the 2003 reexamination, neither Doyle nor Krueger disclosed

to the Patent Offrce the trial testimony of Pei'Wei, who testified about the plotting demo in

DX34 andDX37,

see supra

ffi

199-205, nor did either Doyle or Kreuger disclose the trial

testimony of Dr. Kelly, who testified that the plotting demo in DX34 and DX37 anticipated the
asserted claims of the '906 patent, see supra\T 198, 206,nor did either disclose that Dr.

52

Kelly

specifically identified the VOBJF tag, the plot.v file, and the vplot executable application for
purposes of his anticipation analysis, see supra 1[ I97.

233.

On March 2,2005

-

while the 2003 reexamination was still pending

-

the

Federal Circuit held that Dr. Kelly's testimony would allow a reasonable jury to conclude that

DX37 anticipates atleast claims

1 and 6

of the'906 patent. 399F.3d 1325,1335 (Fed. Cfu.

200s).

234.

Even after the Federal Circuit's decision, however, Doyle and Krueger still did

not disclose Dr. Kelly's testimony to the Patent Office during the 2003 reexamination, nor did
they disclose to the Patent Office that Dr. Kelly's anticipation analysis relied upon the VOBJF
tag,.the plot.v file, and the vplot executable application.
235

.

On or about September 27 ,2005, the examiner issued a statement for reasons

of

patentability in which the examiner confirmed the patentability of claims 1-10 of the '906
patent.

236.

The examiner's statement never discussed the plotting demo that Dr. Kelly had

testified anticipated the asserted claims of the '906 patent.

237. When the examiner considered DX37, the examiner did not know where to look
or what to look

for. There were too many files in DX37 for the examiner to read himself. Thus

the examiner was forced to resort to running text searches across all the files in DX37 in the hope

of stumbling across relevant information.

238.

The examiner used the "dtSearch" program to index and text search alIDX3T

files that contained textual content.,See http://www.dtsearch.com/.

239.

It is unclear what words the examiner searched for or how he came up with his

search terms.

53

240.

On information and belief, Doyle knew precisely what to look for, but he nevet

told the examiner. For example, if Doyle or Krueger had told the examiner to look for plot.v, the
examiner's text searches would have quickly found the plotting demo that Dr. Kelly had testified
anticipated the asserted claims of the '906 patent.

241. The examiner's

text searches did not lead him to the plotting demo, but instead

led him to a clock application that used the hle clock.v.

242.

The file clock.v is a script file that displays the image of a clock. The clock

application does not involve any separate executable application. It just involves a webpage and
the clock.v script file.

243.

The examiner reasoned that a script f,rle like clock.v does not satisfy the

"executable application" requirement of the claims of the '906 patent, and thus the examiner
concluded thatDX3T does not anticipate the asserted claims of the '906 patent.

244.

The ViolaV/WW source code teaches two ways of creating interactive webpages

using embedded applications. One way is by using a simple script file, such as clock.v. All that
is required is a webpage (such as violaApps.hmml) and the script file (such as clock.v). No

binary executable application is involved. The other way taught by the ViolaWWW source code
does use a binary executable application (such as vplot) in addition to a webpage and a file that

contains the object (such as plot.v). The examiner did not consider this second way during the
2003 reexamination; he only considered the first way, and thus erroneously confirmed the

patentability of the asserted claims of the '906 patent.

245.

The examiner's reasons for patentability included the following statements:

o'C-like" Viola scripts that must be
The Viola system uses
INTERPRETED by the browser and then TRANSLATED or
CONVERTED into binary native executable machine code that
can be understood by the CPU. Alternately, the Viola script is
54

precompiled into intermediate byte-code form and the byte-code rs
interpreted (i.e., translated) into binary native executable machine
code at runtime. This extra step of translation results in an
unavoidable performance penalty, as interpreted applications run
much slower than compiled native binary executable applications.

Accordingly, the "C-like" Viola scripts (or corresponding bytecode representations) are not "executable applications" . . . .

246.

The examiner's reasoning overlooked the fact that the plotting demo in DX37

does use a separate executable application: vplot.

247.

On information and belief, Doyle and Krueger knew that the plotting demo used a

separate executable application, but Doyle and Krueger did not bring this fact to the examiner's

attention and instead allowed the examiner to conhrm the patentability of the claims of the '906
patent on the basis of an incomplete understanding of DX37.

248,

On information and belief, Doyle and Krueger knew that the plotting demo used a

separate executable application for at least the following reasons:

o

The August 1994 Viola paper, which states "This next mini application frontends a graphing process (on the same machine as the viola process)" and

which shows the plot of

a fighter

jet in

a

window titled "XPlot." See suprafl\

48-49.

o

Pei Wei's message to Doyle on September 1, 1994, which included the

following statements: "[A]s 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 frontend app could pass an X window ID to the back-end, and the back-end draws

55

the graphics directly onto the window violaWWV/ has opened for

supra

o

\

it."

See

61.

The souroe code listed in the "Viola

stuff'file included the file

plotDemo.html, which states, "This is a demo of ViolaWWW embedding a

viola front-ending object that is programmed to start up and communicate
with

a

plot process. The front-end tells the plot program the window ID to

draw to, and gives it the camera coordinate changes." When the file

""

î:ïîï:_;;ï::;l;*'
o

p'1ot

or a'ghter jer in a window tit'1ed

Pei Wei's presentation at Stanford in September 1994, which included the

following statements: "The next example is a front-end application to

a

backend. And the back-end is what actually does the computation and the

drawing." Included with the presentation was a screenshot of the ViolaWWW
browser after parsing the file plotDemo.html. The screenshot shows the plot

of a fighter jet in a window titled "XPlot." The text in the webpage states,
This is a demo of Viola'WWW embedding a viola front-ending object that is
programmed to start up and communicate with a plot process. The front-end

tells the plot program the window ID to draw to, and gives it the camera
coordinate changes."

See

supral

I 1S.

o
o
249.

The trial testimony of Pei Wei. See supro T 199.
The expert opinion of Dr. Kelly. See supra

1[1J

197-198,206,

Doyle and Krueger's failure to tell the examiner about the vplot and plot.v files,

and failure to disclose documents from the litigation that identified how Dr.

56

Kelly matched up

the plotting demo in DX37 with the claims of the '906 patent both alone and in combination

with Doyle

and Krueger's

prior failure to disclose the ViolaV/WW browser during the original

prosecution of the '906 patent, constituted a knowing and intentional violation of their duty of
candor and good faith in dealing with the Patent Office.

250.

On information and beliet the Patent Office would not have confirmed the

patentability of the claims of the '906 patent that were the subject of the 2003 reexamination

if

Doyle and Krueger had not engaged in inequitable conduct and instead had fulfilled their duty of
candor and good faith in dealing with the Patent Office.

H.
251.

Doyle and Krueger's inequitable conduct during the 2003
reexamination infected the 2005 reexamination

On or about December 22,2005, a third party filed a request to reexamine the

'906 patent.

252.

On or about February 9,2006, the Patent Office granted the request to reexamine

the '906 patent. The control number for this reexamination was 90/007,858.

253.

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

'906 patent. See suprafln22-30.

254.

The ViolaWWW browser threatened the patentability of the claimed inventions in

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

255.

On information and belief, Doyle and Krueger were personally involved in the

2005 reexamination of the '906 patent.

256.

For example, on or about September 6,2007, Doyle and Krueger participated in

an examiner interview in an effort to confirm the patentability of the claims of the '906 patent

application.

57

257.

On or about October 1,2007, Doyle submitted a declaration to the Patent Offrce

in an effort to establish an earlier date of invention for the claims of the '906 patent application.

258.

On or about }r4ay 9,2008, Doyle and Krueger pafücipated in another examiner

interview in an effort to confirm the patentability of the claims of the '906 patent application.

259.

On or about June 3, 2008, Doyle and Krueger participated in another examiner

interview in an effort to confirm the patentability of the claims of the '906 patent application.

260.

Doyle and Krueger's inequitable conduct during the 2003 reexamination infected

the 2005 reexamination.

261

Although Doyle and Krueger disclosed material information about the

Viola'WWW browser to the Patent Office during the 2005 reexamination, by that time it was too
late.

262.

For example, Doyle and Krueger disclosed the August lgg4Yiolapaper to the

Patent Office on or about August 21,2006.

263.

This was the first time Doyle and Krueger had disclosed the August 1994 Yiola

paper to the Patent Office.

264.

On information and belief, Doyle knew about the Viola paper no later than

August 31, 1994, see supra flf| 4449,56, but Doyle waited over 10 years
prosecutions of the '906 patent

265.

-

-

and two

to disclose that paper to the Patent Office.

On information and belief, Krueger knew about the August l994Yiola paper no

later than August of 1998, but waited 8 years

-

and two prosecutions of the '906 patent

disclose that paper to the Patent Office

58

- to

266.

Shortly after Doyle and Krueger disclosed the August 1994 Viola Paper to the

Patent Offrce during the 2005 reexamination, the Patent Office rejected all claims of the '906
patent.

267.

In particular, on or about July 30, 2007, 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 1994 Viola paper, see supra

268.

\

48.

The rejection based on the August 1994 Viola paper confirms that the

ViolaV/WW browser was material prior art.

269.

Doyle and Krueger did not respond to the merits of the rejection based on the

August |gg4Yiolapaper. Instead Doyle filed

a declaration asserting that his date

of invention

was before August 16,1994.

270.

In response to Doyle's declaration, the examiner withdrew the rejection based on

the August 1994 Viola paper.

27L

The 2005 examiner could have entered a new rejection based on DX37, which

was a printed publication before the alleged conception of the inventions claimed in the '906
patent, but the 2005 examiner did not independently examine DX37 because the 2003 examiner
had already concluded thatDX3T did not invalidate the asserted claims of the '906 pafent,

272.

The conclusions about DX37 reached in the 2003 reexamination were erroneous

due to Doyle and Krueger's inequitable conduct during that reexamination. See supra

nn229'

250.

273.

Thus, Doyle and Krueger's inequitable conduct during the 2003 reexamination

infected the 2005 reexamination.

ru.

Doyle submitted false statements about the secondary considerations
of non-obviousness
59

274.

During the original prosecution of the '906 pafent, Doyle submitted a declaration

to the Patent Office containing false and misleading statements in an effort to obtain allowance

of the claims.

275.

Specifically, on or about June2,1997,Doyle submitted to the Patent Office a

sworn declaration executed on or about May 27,1997, for the purpose of overcoming the
examiner's rejection on March 26,1997.

276.

On page 12 of the declaration, Doyle asserted that his claimed invention would

not have been obvious over the cited prior art in view of "secondary considerations, including, in
part, commercial success of products incorporating features of the claimed invention and
industry recognition of the innovative nature of these products."

277.

In support of his assertion, Doyle declared to the Patent Offrce that Sun

Microsystems and Netscape had incorporated his invention into their Java software and
Navigator Web browser, respectively. He stated: "Approximately 12 to 18 months after the
applicants initially demonstrated the first Web plug-in and applet technology to the founders of
Netscape and engineers employed by Sun Microsystems in November and December of 1993, as
described in referenc e #4 from Appendix A (Dr. Dobb's Journal, 2196), both Netscape and Sun
released software products that incorporated features of the claimed invention . . . ."

278,

On information and belief, this statement was false. Neither Doyle nor any of the

other named inventors of the '906 patent demonstrated V/eb plug-in technology to any of the
founders of Netscape in November or December of 1993.

279.

On information and belief, when Doyle made these statements under oath, he also

did not know whether any engineer employed by Sun Microsystems ever saw any of his
demonstrations in November or December of 1993.

60

280.

Doyle made these same false assertions in slides that he prepared and presented to

the examiner in a personal interview on or about February 24,1997. On a slide entitled

"Relevant History of DHOE" (Doyle's name for his invention), Doyle included as a bullet point:
*7993 Demos to Sun & Netscape's Founders."

28I.

Doyle's false statements in his declaration were material to the patentability of the

pending claims, These statements purported to provide evidence of copying by others and thus

objective evidence of nonobviousness, a factor to be considered in determining whether an
alleged invention is patentable over the prior art. Without these false assertions, Doyle had no
support for his argument that Netscape and Sun copied his alleged invention or that his

technology was responsible for their commercial success.

282.

By making these false statements under oath to the Patent Office, on information

and belief, Doyle intended to mislead the Patent Office to believe that responsible persons at
Netscape and Sun saw his alleged invention, appreciated its supposed merits, and therefore

incorporated it into the Navigator browser and Java. Moreover, by making these false
statements, Doyle, on information and belief, was trying to convince the Patent Office that the
Netscape and Sun products succeeded because they incorporated his alleged invention.

283.

Doyle's submission of false statements under oath in his declaration to the Patent

Office constituted

a

knowing and intentional violation of his duty of candor and good faith in

dealing with the Patent Office.

IV.
284.

Conclusion

A judicial determination of the respective rights of the parties with respect to the

unenforceability of the claims of the '906 Patent is now necessary and appropriate under 28

u.s.c. ç220r.

61

COUNT

285.

IY

Staples incorporates by reference the allegations contained in Paragraphs 1 to 5

of

its Counterclaims.

286.

An actual controversy exists between the parties with respect to the alleged

infringement' 985 Patent.
281

.

Although Eolas alleges in its Complaint that Staples has directly andlor indirectly

infringed the claims of the '985 Patent, Staples has not directly andlor indirectly infringed, and
does not directly andlor indirectly infringe, any claim of

288.

the'985 Patent.

A judicial determination of the respective rights of the parties with respect to the

infringement of the claims of the '985 Patent is now necessary and appropriate under 28 U.S,C.
ç 2201.

COUNT V

289.

Staples incorporates by reference the allegations contained in Paragraphs

I to 5 of

its Counterclaims.

290.

An actual controversy exists between the parties with respect to the invalidity of

the'985 Patent.

29I.

Although Eolas alleges in its Complaint that the '985 Patent was duly and legally

issued by the United States Patent and Trademark Office after

full

and fair examination, each and

every claim of the '985 Patent is invalid for failure to comply with the patent laws, including, but
not limited to, 35

292.

u.s,c, $$ 101, 102,103,112,

and 113.

A judicial determination of the respective rights of the parties with respect to the

infringement of the claims of the '985 Patent is now necessary and appropriate under 28 U.S.C.
ç2201.

COUNT VI
62

293.

Staples incorporates by reference the allegations contained in Paragraphs 1 to 5

of

its Counterclaims.

294.

An actual controversy exists between the parties with respect to the

unenforceability of the '985 Patent.

295.

Although Eolas alleges in its Complaint that the '985 Patent was duly and legally

issued by the United States Patent and Trademark Office after

full and fair examination, each and

every claim of the '985 Patent is unenforceable due to inequitable conduct before the United
States Patent and Trademark Office.

296.

Staples incorporates by reference the allegations contained in Paragraphs 17 to

268 of its Counterclaims.
297

.

The actions of Doyle and Krueger demonstrate a broad pattern of inequitable

conduct that infected the prosecution of the '906 patent, the reexaminations of the '906 patent,
and the prosecution of the '985 patent.

298,

The application that matured into the '985 patent was filed on August 9,2002.

299.

The application number for the '985 patent was 101217,955. This application was

a continuation of a continuation of the application that had matured into

the'906 patent.

300.

Eolas had and still has rights to the patent application that matured into the '985

301.

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

patent.

the '985 patent at the same time that he had a financial interest in Eolas.

302.

On information and belief, Doyle knew that Eolas could assert the '985 patent in

litigation to seek substantial settlements andlor damage awards, and thus the prosecution of the
'985 patent was relevant to Doyle's financial interest in Eolas.

63

303.

Doyle and his co-inventors are entitled to receive a portion of any royalties paid to

The Regents of the University of California related to the '985 patent, and for this reason as well
the prosecution of the '985 patent was relevant to Doyle's financial interests.

304.

The claims at issue during proseeution of the '985 patent were similar to the

claims at issue during the reexaminations of the '906 patent.

305.

Accordingly, the information that Doyle and Krueger withheld during prosecution

of the '906 patentwas material to the patentability of the claims at issue during prosecution of
the '985 patent for the same reasons previously stated.

306.

As a result of the similarity between the claims at issue during prosecution of the

'985 patent, and the claims of the '906 patent, the Patent Office issued a "double patenting"
rejection during prosecution of the '985 patent. The rejection was issued on or about July 20,
2004.

307.

To overcome the "double patenting" rejection during prosecution of the '985

patent, a terminal disclaimer was filed on or about March 7,2005. As a result of the terminal

disclaimer, the '985 patent may be in force up until November 17,2015, the date on which the

'906 patent will expire.

308.

For at least this reason, Doyle and Krueger's inequitable conduct during the

prosecution of the '906 patent infected the prosecution of the '985 patent.

309.

On or about May 5, 2005,the Patent Office suspended prosecution of the '985

patent in light of the 2003 reexamination of the '906 patent. The Patent Offlrce determined that
the outcome of the 2003 reexamination had amaterial bearing on the patentability of the claims
at issue during prosecution of the '985 patent.

64

310.

For at least this teason, Doyle and Krueger's inequitable conduct during the 2003

reexamination of the '906 patent infected the prosecution of the '985 patent.
31

L

On or about January 18, 2006, the Patent Office suspended prosecution of the

'985 patent in light of the 2005 reexamination of the '906 patent. The Patent Ofhce determined
that the outcome of the 2005 reexamination had a material bearing on the patentability of the

claims at issue during prosecution of the '985 patent.

3I2.

For at least this reason, Doyle and Krueger's inequitable conduct during the 2005

reexamination of the '906 patent infected the prosecution of the '985 patent.

313.

On or about April 11, 2008, the claims at issue during prosecution of the '985

patent were amended to claim substantially the same subject matter claimed in the '906 patent.

314.

Accordingly, the Patent Office did not undertake a separate substantive

examination of the patentability of the claims in the '985 patent. Instead, the Patent Office
simply applied the results of the prosecution of the '906 patent (including the results of the two
reexaminations of the '906 patent) to the '985 patent.

315.

For at least this reason, Doyle and Krueger's inequitable conduct during the

prosecution and reexaminations of the '906 patent infected the prosecution of the '985 patent.

316.

On or about November 13, 2008, a request was filed to lift the stay on the

prosecution of the '985 patent in light of the completion of the 2005 reexamination of the '906
patent.

317.

On or about March 20,2009, the Patent Offrce allowed the claims in the '985

patent for the same reasons set forth by the Patent Off,rce during the reexaminations of the '906
patent.

65

318.

The examiner's reasons for allowance patent included the following statement:

"[T]he claims fof the '985 patent] are allowable

as the claims contain the subject matter deemed

allowable in both Re exam 90/006,831 [the 2003 reexamination of the '906 pafent] and Re exam
90/007,838 fthe 2005 reexamination of the '906 patent] for the same reasons as set forth in the

NIRC of the two Re exams."

319.

The examiner's reasons for allowance of the '985 patent confirm that Doyle and

Krueger's inequitable conduct during the prosecution and reexaminations of the '906 patent
infected the prosecution of the '985 patent.

320.

Eolas filed the complaint in this action on October 6,2009, the same day that the

'985 patent issued.

321.

As a result of Doyle and Krueger's pattern of inequitable conduct, Eolas came to

this Court with unclean hands.

322.

As a result of Doyle and Krueger's inequitable conduct, and the unclean hands of

Eolas, the '906 and '985 patents are unenforceable.

323. A judicial determination

of the respective rights of the parties with respect to the

unenforceability of the claims of the '985 Patent is now necessary and appropriate under 28

u.s.c. ç220r.
REQUESTS FOR RELIEF
Staples respectfully requests that this Court grant the following relief:

A.

Dismissal of the Second Amended Complaint for Patent Infringement against
Staples with prejudice;

B. A declaration

that Plaintiff recovers nothing from Staples;

C. An order enjoining Plaintifi, its owners, agents, employees,

attorneys, and
representatives, and any successors or assigns thereot from charging or
asserting infringement of any claim of the '906 Patent and the '985 Patent
against Staples or anyone in privity with Staples;
66

D. An award to Staples of its reasonable attorneys' fees and costs;

E. A declaration

that Staples has not infringed any claim of the '906 Patent,
either directly or indirectly;

F.

A declaration that each and every claim of the '906 Patent is invalid;

G. A declaration that each and every claim of the '906 Patent is unenforceable;

H. A declaration that Staples has not infringed

any claim of '985 Patent, either

directly or indirectly;

L

A declaration that each and every claim of the '985 Patent is invalid;

J.

A declarationthat each and every claim ofthe'985 Patent is unenforceable;
and

K.

Such other and further relief as the Court deems just and proper.

JURY DEMAND
Under Federal Rule of Civil Procedure 38(b), Staples respectfully requests atrial by jury

on all matters raised in its Answer, and Defenses, or in the Amended Complaint for Patent
Infringement.

Respectfully submitted,

Date: October 14,2017

/s/ Michael E. Richardson
Michael E. Richardson, TX Bar No. 24002838
BECK REDDEN & SECREST
I22l McKinney, Suite 4500
Houston, TX770l0
Telephone: [phone]
Facsimile: (7 13) 9 5l -3720
mri chard s o n@brs firm. co m

Mark G, Matuschak, admittedpro hac vice
Donald R. Steinberg, admitted pro hac vice
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
67

Facsimile: [phone]
mark. matuschak@wiimerhale. com
donald. steinberg@wilmerhale. cor,n
Kate Hutchins, admitte d pro'hac vice
WILMER CUTLER PICKERING
HALE AND DORR LLP
399 Park Avenue
New York, NY 10011
Telephone: (2 I 2) 230-8800
Facsimile: [phone]
kate, hutchins@wilmerhale. com
DaniEl V. Williams, admitted pro hac viee
WILMER CUTLER PICKERING
HAIE AND DORR LtP
1875 Pennsylvania Avenue NW
V/ashington, DC 20006
Telephone : QA\ 663-6000
Facsimile: Q02) 663 -6363
daniel.williams@wi1merha1e. com

ATTORNEYS FOR DEFENDANT
STAPLES,INC.

68

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 Rute CV-5(aX3). Any other counsel of record will be served by
facsimile transmission and/or flrrst class mail this 74tn day of October ,20II.

/s/ Michael E. Richardson
Michael E. Richardson

69