Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1030

FRITO-LAY, INC.'S ANSWER to 891 Amended Complaint, (Third), COUNTERCLAIM against Eolas Technologies Incorporated by Frito-Lay, Inc..(Yee, Jeffrey)

IN TIIB IJNITED STATES DISTRICT COTJRT
FOR TIIE EASÏERN DISTRICT OF TEXAS

TYLER DIVISION
Eolas Technologks Incorponated,

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Plaintiff,

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Adobe Systems Inc., Amazon.com, Inc.
Apple Inc., Blockbuster Inc., CDW Cotp,
Citigroup Inc, eBay Inc., Frito-La¡ Inc"
The Go Daddy Gmupr Inc" Google Inc,
J.C. Penney Compan¡ Inc., JPMorgan
Chase & Co, New Frcntier Medþ Inc,
Office Depoq Inc., Penot Systems Cotp.,
Playboy Enterprises fntemational, Inc.,
Rent-A{enter, Inc., Staples, Inc., Sun
Microsystems Inc., Texas Instrumenûs
Inc" Yahoo! Inc.' and YouÏl¡be, LLC,

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s
$

Civil Action No. 6:(D-cv-00446-LED

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Defendants

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DEFENDAUT FRrTO-LAY, INC.'S AI\ISWER
TO PLAINTTtrT''S THIRD A]VIENDED COMPLAINT
Defendant Frito-Lay, Inc. ("Frito-Lay'') hereby submits its Answer to Eolas Technologies
Incorporated's f'Eolasn'

or'?laintiff) Third Amended

Complaint ("Complaint " Dkt. 891):

ANS}VER

I.

1.

Frito-Lay lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph

2.

PARTIES

I of the Complaint and therefore,

denies them.

Frito-Lay lacks suflicient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph

I of the Complaint an{ therefore,

denies them.

PAGE

I

3.

Frito-Lay is not required to answer to the allegations contained in Paragraph 3 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
suffrcient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 3 and, therefore, denies them.

4.

Frito-Lay is not required to answer to the allegations contained in Paragraph 4 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 4 and, therefore, denies them.

5.

Frito-Lay is not required to answer to the allegations contained in Paragraph 5 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 5 and, therefore, denies them.

6.

Frito-Lay is not required to answer to the allegations contained in Paragraph 6 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufÏicient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 6 and, therefore, denies them.

7.

Frito-Lay admits to the allegations contained in Paragraph 7 of the Complaint.

8.

Frito-Lay is not required to answer to the allegations contained in Paragraph

I

of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
suflicient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph

9.

I and, therefore,

denies them.

Frito-Lay is not required to answer to the allegations contained in Paragraph 9 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks

PAGE

2

sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 9 and, therefore, denies them.

10.

Frito-Lay is not required to answer to the allegations contained in Paragraph l0 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufïicient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph l0 and, therefore, denies them.

11.

Frito-Lay is not required to answer to the allegations contained in Paragraph 11 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufÏïcient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph l

l

12.

and, therefore, denies them.

Frito-Lay is not required to answer to the allegations contained in Paragraph 12 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 12 and, therefore, denies them.

13.

Frito-Lay is not required to answer to the allegations contained in Paragraph 13 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 13 and, therefore, denies them.

II.
14.

JURISDICTION AND VENUE

Frito-Lay incorporates its responses contained in Paragraphs l-13

as though

fully

set

forth trere.

15.

Frito-Lay admits that the Complaint includes claims of patent infringement that arise

tuder the patent laws of the Unit€d States, 35 U.S.C. $

l0l

et seq. Frito-Lay admie ttnt this Court has

subject matterjwisdiction over this action.

PAGE 3

16.

Frito-Lay admits that

it is subject to this Court's personal jurisdiction. Except as

expressly admitted herein, Frito-Lay lacks sufïicient knowledge or information to form a belief as to
the truth of the allegations contained in Paragraph 26 and,therefore, denies them.

17.

Frito-Lay admits that venue is proper with respect to Frito-Lay. Except

as expressly

admitted herein, Frito-Lay lacks sufficient knowledge or information to form a belief as to the truth

of the allegations contained in Paragraph 27 and,therefore, denies them.

III.
18.

PATENT INFRINGEMENT

Frito-Lay incorporates its responses contained in Paragraphs l-17 as though fully set

forth here.

19.

From the face of the United States Patents Nos. 5,838,906 ('the '906 Patent) and

7,599,985 ('the '985 Patent"), the title and date of issuance appears to be as alleged in Paragraph 30

of the Complaint. Except as stated herein, Frito-Lay lacks sufficient knowledge or information to form a
belief as to the üuth ofthe allegations contained in Paragraph 29 and, therefore, denies them.

20.

Frito-Lay lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 30 and, therefore, denies them.

21.

Frito-Lay is not required to answer to the allegations contained in Paragraph

2l of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufïïcient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph

2l and,therefore, denies them.

22.

Frito-Lay is not required to answer to the allegations contained in Paragraph 22 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 22 and,therefote, denies them.

PACE 4

23.

Frito-Lay is not required to answer to the allegations contained in Paragraph 23 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 23 and, therefore, denies them.

24.

Frito-Lay is not required to answer to the allegations contained in Paragraph 24 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 24 and,therefore, denies them.

25.

Frito-Lay denies the allegations contained in Paragraph 25, including but not limited to

the allegations that

it

has directly and/or indirectly infringed (by inducement and/or contributory

infringement), or is continuing to infringe, directly and/or indirectly, the '906 Patent and/or the '985
Patent.

26.

Frito-Lay is not required to answer to the allegations contained in Paragraph 26 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufÏicient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 26 and,therefore, denies them.

27.

Frito-Lay is not required to answer to the allegations contained in Paragraph 27 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
suflicient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph

2l

28.

and,therefore, denies them.

Frito-Lay is not required to answer to the allegations contained in Paragraph 28 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 28 and, therefore, denies them

PAGE 5

29.

Frito-Lay is not required to answer to the allegations contained in Paragraph 29 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
suffrcient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 29 and,therefore, denies them.

30.

Frito-Lay is not required to answer to the allegations contained in Paragraph 30 of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
suflicient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 30

31.

an{ therefore,

denies them.

Frito-Lay is not required to answer to the allegations contained in Paragraph

3l

of the

Complaint because the allegations are not directed to Frito-Lay. Moreover, Frito-Lay lacks
sufficient knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 31 and, therefore, denies them.

32.

Frito-Lay denies the allegations contained in Paragraph 32 of the Complaint to the

extent that the allegations are directed

to Frito-Lay.

Moreover, Frito-Lay lacks suflicient

knowledge or information to form a belief as to the tn¡th of the allegation contained in Paragraph 32
directed at Defendants other than Frito-Lay, and therefore, denies them.

33.

Frito-Lay denies the allegations contained in Paragraph 33 of the Complaint to the

extent that the allegations are directed

to Frito-Lay. Moreover, Frito-Lay lacks

sufÏicient

knowledge or information to form a belief as to the tn¡th of the allegation contained in Paragraph 33
directed at Defendants other than Frito-Lay, and therefore, denies them.

34.

Frito-Lay denies the allegations contained in Paragraph 34 of the Complaint to the

extent that the allegations are directed

to Frito-Lay. Moreover, Frito-Lay lacks sufficient

knowledge or information to form a belief as to the tn¡th of the allegation contained in Paragraph 34
directed at Defendants other than Frito-Lay, and therefore, denies them.

PAGE 6

35.

Frito-Lay denies the allegations contained in Paragraph 35 of the Complaint to the

extent that the allegations are directed

to Frito-Lay.

Moreover, Frito-Lay lacks suffrcient

knowledge or information to form a belief as to the truth of the allegation contained in Paragraph 35
directed at Defendants other than Frito-Lay, and therefore, denies them.

nå_PLArNrrrT.'s PRAYER FOR RELTEF

36.

Frito-Lay denies that Plaíntiff is entitled to any of its requests for relief against Frito-

Lay.

V.
37.

JURY DEMANI)

No response is required to Plaintifflsjury demand.

PAGE ?

DEIIENSES

38.

Frito-Lay's Defenses are set forth below. Frito-Lay undertakes the burden of proof

only as to those defenses as required by law regardless of how such defenses are denominated
herein. Frito-Lay reserves the right to amend its Answer to add additional Defenses.

FIRST DEFENSE

39.

Frito-Lay has not and does not directly or indirectly (by inducement, confübutory

infringement or otherwise) infringe any of the claims of the '906 Patent or the '985 Patent either literally
or under the Doctrine ofEquivalents.

SECOI\D DEFENSE

40.

The '906 Patent and the '985 Patent are invalid or void for failing to satisff the

conditions ofpatentability as set forttr in 35 U.S.C $$100, 101,102,103 and/or I12.

THIRD DEFENSE

41.

Plaintiff is estopped from construing any valid claim of the '906 Patent or the '985

Patent to be infringed literally or by the Doctrine

of Equivalents by any act of Frito-Lay due to the

disclosures of prior art or to the admissions or statements made to the U.S. Patent and Trademark

Office during prosecution of the patents in suit or because of the disclosure or language of the
specification or claims thereof,

FOT]RTII DEFENSE

42.

Plaintiff is not entitled to recover any damages to the extent that Plaintiff, or any

predecessors in interest to the '906 or the '985 Patent, or licensees thereot failed to properþ mark

any of their relevant products as required by 35 U.S.C. $287 or otherwise give proper notice that
Frito-Lay's actions actually infringed the '906 or the '985 Patent. Frito-Lay is not liable to Plaintifffor

the acts alleged to have been performed before Frito-Lay received notice that

it was allegedly

infringing the '906 and/or the '985 Patent.

PAGE

8

FIFTII DEIIENSE

43.

Frito-Lay incorporates its responses as set forth above as though fully set forth herein.

44.

To the extent that Plaintiff asserts that Frito-Lay indirectly infringes, either by

contributory infringement or inducement, Frito-Lay is not liable to Plaintifffor the acts alleged to have
been performed before

Frito-Lay knew that its actions would cause the indirect infringement.
SD(TH DEFENSE

45.

PlaintifPs claims against Frito-Lay are improper to the extent that any allegedly

infringing products are directly or indirectly provided to Frito-Lay or by Frito-Lay to an entþ having
an express or implied license to the '906 and/or the '985 Patent.

SEVENTH DEFENSE

46.

On information and belief, PlaintifPs patent rights with respect to any allegedly

infringing products are exhausted by virtue of an express or implied license to the '906 and/or the
'985 Patent to one or more third parties.

EIGHTII DETMNSE

47.

Plaintiff is not entitled to any injunctive relief as demanded because any injury to

Plaintiffis neither immediate or irreparable, and Plaintiffhas adequate remedies at law.
I\INÏTIDEFENTSE

48.

The '985 Patent is invalid and/or unenforceable under the doctrine of prosecution

laches.

TENTH DEFENSE

49.

On information and beliet and subject to further amendments as Frito-Lay obtains more

information during discovery, the '906 Patent and the '985 Patent are unenforceable as a result of
inequitable conduct before the United States Patent and Trademark Office.

À(}veryiew

PAGE

9

Ilovle and Kmeser had a dutv of candor and eood fâith in dealinq with the Patent
Office
1.

50.

Michael D. Doyle ('Doyle") is one of the named inventors of the patents-in-suit, U.S.

Patent Nos. 5,828,906 and 7,599,985.

51.

Charles E. Krueger ('oKrueger') was the patent prosecutor for the patents-in-suit, U.S.

Patent Nos. 5,828,906 and 7,599,985.

52.

Doyle, as a named inventor, and Krueger, as the patent prosecutor, each had a duty

candor and good faith in dealing with the United States Patent and Trademark Office

of

(the Patent

Office") during prosecution ofthe '906 and '985 patents.

53.

Doyle and Krueger's duty

of

candor and good faith also existed during the

reexaminations of the'906 patent.

54.

The duty ofcandor and good faith owed by Doyle and Knreger included a duty to disclose to

the Patent Office all information known to that individual to be material to patentability as defined
in 27 C.F.R $ 1.56.

2
55.

Dovle had a financial incentive to deceive the Patent Office

Doyle had a financial incentive to deceive the Patent Ofüce during prosecution ofthe '906

patent, during the reexaminations of the '906 patent, and during the prosecution of the '985 patent.

56.

Doyle worked at the University

of California,

San Francisco when he allegedly

conceived of the inventions claimed in the '906 and '985 patents.

57.

The '906 and'985 patents are owned by The Regents of the University of California.

58.

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

The Regents of the Universþ of Califomia related to the '906 and/or '985 patents.

59.

Doyle is a founder of Eolas Technologies Incorporated ("Eolas").

ó0.

Doyle quit his job to found Eolas, and personally invested time and money in Eolas.

61.

Doyle has had a financial interest in Eolas since at least August 21,1995.

PAGE

10

62.

On or about August 21, 1995, Eolas acquired rights to the patent application that

matured into the '906 patent.

63.
'Ð6 patent

Doyle was personally involved in the prosecution of the '906, the reexaminations of the

and the prosecution of the '985 patent at the same time that he had a financial interest in Eolas

and a funancial interest in any royalties on the '906 and/or '985 patents paid to The Regents of the
University of Califomia.

Krueser breached h¡s dutv-of candor and eood faith w¡th
deceive the Patent Office

3. Dovle and

64.

an intent to

As explained in more detail below, Doyle and Krueger breached the duty of candor

and good faith in dealing with the Patent Office. Doyle and Krueger failed to disclose material
information and made affirmative misrepresentations of material facts. Doyle and Krueger did so with
knowledge of the information withhel{ with knowledge of the falsity of the misrepresentations, and with

the specific intent to deceive the Patent Office. The circumstances of Doyle and Krueger's actions
confirm an intent to deceive the Patent Office.
B. Dovle and I(rueeer failed to disclose material infomation related to the

Violaww\il

bruwser

65.

As explained in more detail below, Doyle and Krueger breached the duty of candor

and good faith in dealing with the Patent Office by failing to disclose material information related

to the ViolaWW'W browser. Doyle and Krueger did so with knowledge of the information withheld
and with the specific intent to deceive the Patent Office. The circumstances of Doyle and Krueger's
actions confirm an intent to deceive the Patent Offrce.

66.

As explained in more detail below, the ViolaWWW

b,rowser was material

to

ttre

patentabilþ of all the claims of the '906 patent because it disclosed limiations that the Patent Office
believed were missing in the prior art, including interactivity embedded wíthín the webpage (as
opposed to a separate window), automatíc invocation of the interactivity (as opposed to requiring a

PAGE

11

mous¡e

click to enable the interactivrty), and use of a separate executable application (as opposed to a

script). Doyle and Krueger knew that the ViolaWrlVW browser disclosed ttrese limitations, yet they
withheld this information from the Patent Office at the same time that they argued to the Patent OfÏice
that these limitations were missing from the prior art.

l. Dovlegnd Krueeer knew about the ViolaWlv\il browser before the
annlication for his t906 natent was filed on Octobcr t7,f994

67.

The application for the '906 patent was filed on Octobet 17, 1994.

68.

Thus the critical date for purposes of 35 U.S.C. $ 102(b) was October 17, 1993. Any

printed publication describing the claimed invention, or any public use of the claimed invention in
the United States, before October 17, 1993, would be an absolute bar to patentability.

69.

Doyle knew before the application for the '906 patent was filed that an individual in

Norttrern Califomia named Pei Wei had developed a browser called "ViolaWWW'before the critical date

ofOctober 17,1993.

70.

On May 20,lgg4,David Raggett sent an e-mail to Doyle regarding object level embedding

in web browsers. In this email, Raggett advised Doyle that he'lnight want to look at Viola which [Raggett]
seem[s] to remember takes advantage of the tk tool kit to provide a certain level of embedding."

71.

Rageett furtlrer advised Doyle that he

could'înd

a pointer to Viola

offthe CERN WWW

project page."

72.

Later on the same day, l[lay 20,1994, David Martin, who was one of Doyle's colleagues

at the University of California in San Francisco and who was also named as an inventor on the '906
plat€nL responded to a posting from Pei Wei on a publicþ-accæssible e-mail

disnibution list. Pei Wei's post

had included the following staternents: "In order to do better testings [sic] and support of ViolaWWW,

I would like to solicit donations for guest accounts on the major Unix platforms. . . . So, if your
organization has some CPU cnurchies to spar€, good network connectivity, don't have a firewall, want

to help viola development, etc, please drop me a note. Based mostþ on network connectivþ, I'll
PAGE T2

select one (maybe two) offe(s) for each different platform." David Martin's r€sporrse to Pei Wei
included the following statements:

"I

am willing to discuss providing accounts on SGI IRIX 5.x, Solaris

2.x, Alpha OSF/I. Please let me know what you require in terms of disk space, compiler, utilities, etc..."

73.
filed-

Thus by IÙlay 20,1994

-

several months before the application for the '906 patent was

Doyle knew about Pei Wei's ViolaWWW browser.

74.

Doyle did not disclose this information to Knreger or Charles J. Kulas ('Kulas"), the

patent prosecutor that filed the '906 patent application, prior to the filing of the application that lead to

the'906 patent.

75.

Doyle learned even more about the ViolaWW"W browser before the application for the

'906 patent was filed.

76.
Release"

On August 20, 1994, at approximately

ll:15 p.m. Califomia time, Doyle

posted a "Press

to the publicly-accessible VRML e-mail distribution list that included the following

statements:

Researchers at the

U. of California have created software for embedding

interactive program objects within hypermedia documents. Previously, object
linking and embedding (OLE) has been employed on single machines or local
area networks using MS Windows -TM-. This UC software is the first instance
where program objects have been embedded in documents over an open and
distributed hypermedia environment such as the rrlVorld rWide Web on the lnternet.

77.

On Augrst 21,1994, at apprroximateþ 6:52 p.m. Califomia time, Pei Wei posted a response

on the publicly-accessible VRML e-mail distribution list that included the following statements:

"I don't

think this is the fïrst case of program objects embedded in docs and transported over the WWW.
ViolaWW'lV has had this capabilities for months and months now."

78.

oointerested
in leaming
Pei Wei's r€sponse included a link to an FTP site where anyone

mo¡e about how violaWW\M does this embedded objects thing can get a pap€r on it."

79.

The paper cited by Pei Wei was entitled

'â

Brief Overview of the VIOLA Engine,

and its Applications."

PAGE

13

80.

The paper cited by Pei Wei was dated August 16,1994

-

over two months before the

application for the '906 patent was filed.

81.

The paper cited by Pei Wei included the following statements and graphics:

Embedding mini applications
Viola's language and toolkit allows ViolarWWW to render documents with
embedded viola objects. Although the viola language is not part of the World
rWide Web standard (yet?), having this capability provides a powerful extension
mechanism to the basic HTML.
For example, if the HTML's input-forms do not do exactly what you want, you
have the option to build a mini customized input- form application. And it could
have special scripts to check for the validþ of the entered data before even making a
connection to the server.

if your document

needs to show data that is continuously updated, you
could build a small application such as this which display the CPU load of a
machine. Note that only the graph field is continuously updated, but not the rest
ofthe document.

Or,

ting Field
Activity monitor:
The above monlor applicalion mair¡tains a continuous network connection to a
seruer to llsten lo a data sffeam,

Otherpossible applications include front-ends to the stock market quotes, new wire
updates, tele-video style service, etc.
Here's another example of a mini interactive application that is embedded into a
HTML document. It's a chess board in which the chess pieces are actually active
and movable. And, illegal moves can be checked and denied sûaight offby the
intelligence of the scripts in the application. Given more work, this chess board
application can front-end a chess server, connected to it using the socket facilþ in
viola.

PAGE

14

Board
This ls a demo a viola "applicadon'(üe chess board) belng retrleved via HTTP,
lnstaffiared, and plugged hb üls HTML documern

,îEflH. m n
'EitlE Euigr¡
,Ir?EmI

'IIII
.'TIII

'I E:grlffiil
'E'EglIBEgiE
,H @ffi,MEqilffi
abcdet'gh

What follows is a screendump of a demo of an embedded viola application that
lets readers of this HTML page coûrmunicate by typing or drawing. Like the
chess board application above, this chat application can stand-alone (and have
nothing to do with the World Wide Web), or be embedded into a HTML document.

By the way, to make this possible, a multi-threaded/persistent server was
written to act as a message relay (and to handle HTTP as well).

PAGE 15

,¡¡,1:l

.. ,i:,ii,

li

I

:,,:t

t,1

r:li,,l,l
:rlr

lr,l

ri¡ll

l

This next mini application front-ends a graphing process (on the same machine
as the viola process). An irnportant thing to note is that, like all the other
document-embeddable mini applications shown, no special modification to the
viola engine is required for ViolaWWW to support them. All the bindings are
done via the viola language, provided that the necessary primitives are available in
the interpreter [sic], of course.
Put it another way, because of the scripting capability, the ViolaWWW
browser has become very flexible, and can take on many new features
dynamically. C-code patches and recompilation of the browser can frequently be
avoided.

This attribute can be very important for several reasons. It keeps the size of the
core software small, yet can grow dynamically as less frequently used featues are
ocassionally [sic] used, or as new accessories/components are added.

mail reader.
environment allows that text

accompany documents, or conceivably as complicated as a news or

An analogy is how Emacs's programming
editor to become much more than just a text editor.

PAGE

16

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 trsing the
<LINK> tag of HTML 3.0), and the bookmark will appear and disappear with the
document.

Two Front-Ends
Thare re currcndytwo

. Onc ha¡ üe naflve viola
front-cnd, Thc GUls layouts for

One can imagine many plug-in accessories/applets/tools possible with this facility.

Like, a self guiding slide show tool. Or, document set specific navigational
tools/icons that are not pasted onto the page so that the navigational icons dont

PAGE 17

scroll away from view. Etc.

82.

ooDoyle

83.

On August 21, 1994, at approximately 9:06 p.m. California time, Doyle responded

downloaded and read the paper." 299 F.3d 1225,1230 (Fed. Cir. 2005).

to Pei Wei's statement at approximately 6:52 p.m. that

"I don't think this is the first case of program

objects embedded in docs and transported over the IùVWW. ViolaWWW has had this capabilities for
ooHow
many months and months? We
months and months now." Doyle responded by asking Pei Wei,

demonstated our technolory in 1993."

84.

On August2l,1994, at approximately 1l:16 p.m. California time, Pei Wei responded

to the message that Doyle had sent at approximately 9:06 p.m. Pei Wei's

response included the

following statements:
Definitely by May 8, 1993 we had demonstated 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 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.

85.

When Pei Wei referred to the'þlotting demo (the very one shown in the viola paper),"

was referring to the plot of the

86.

he

fighterjet shown above in the window titled "XPlot."

When Pei Wei refered to a demonstation'þ May 8, 1993" to'Aisitors from a certain

computer manufactu€,r," he was referring to a demorutation ofthe plotting demo to Karl Jacob and James

Kempf from Sun Microsystems on May 7,1993. This demonsüation took place in Northern California.
There was no limitation, restriction or obligation of secrecy on Karl Jacob orJames Kemp.

87.

The Federal Circuit tras held that "Wei's May

7, lÐ3

demonshation

to two

Sun

Microsystems ønployees withot¡t corifidentiality ag¡eements wa¡¡ a public use u¡rder [35 U.S.C. $ 102(bI."

PAGE

18

l

299 F.3d 1225, 1235 (Fed. Cir. 2005).

88.

On August 21, 1994, at approximately I l: 13 p.m. California time, Doyle responded

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

89.

Doyle's response was sent after Doyle had read Pei Wei's paper about the

ViolaWWW browser dated August 16,1994.

90.
describe

Doyle's response included the following statements: "Pei is mistaken on two counts, as I

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 . . . ."

91.

On August2l,1994, at approximately

ll:26

to the message that Pei Wei had sent at approximately

p.m. California time, Doyle responded

ll:16

p.m. Doyle's response included the

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

92.

On September

l,

1994, at approximately 12:08 a.m. California time, Pei Wei responded

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

93.

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

that Doyle had sent at approximately I

94.

l:26 p.m.

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

Well. Viola's model was *demonstrated* in 1993, *releasedt 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
nuuring on a remote sup€r 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 backqrd, and the back-end d¡aws the graphics directly onto the window
violaW\VW has opened for it.

95.

Doyle deleted from his computer his emails with Pei Wei on August

2l and September

l,1994, and the copy of the Viola paper dated August 16,1994, that he had downloaded and read.

PAGE 19

Doyle kept on his computer other emails from that timeframe, however.

96.

Doyle was living in Nortlrem Califomia on Augrst 21, 1994, when he exchanged messages

with Pei Wei about the ViolaWWW browser.

97.

Pei Wei was living in Northern California on August 21,1994, when he exchanged

messages with Doyle aboutthe ViolaWW'rü browser.

98.

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

Wei's messages on August

99.

2l

and September 1,1994, about the

ViolaW'WW browser.

There wasl no limitation, restriction or obligæion of secrecy on the readers of Pei Wei's

paper about the ViolaWW'W browser dated August 16, 1994.

100.

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

were among those named as inventors.

l0l.

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

but not the ViolaWWlW browser.

102. The application for the '906 patent

included an information disclosure statement that

identified several pieces of prior art, but not the ViolaWW\M browser.

103.

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

the following statements: o'I believe

I

am . . . an original, first and joint inventor. . . of the subject

mafferwhichisclaimedandforwhichapatentissought...thespecificationofwhich...wasfiled
on October 17, 1994 as Application Serial No. 08/224,443.. . . I acknowledge the duty to disclose
information which is material to the examination of this application in accordance with Title2l, Code
of Federal Regulations, Section 1.56."

104. No disclosure

about the ViolaW\V\V browser was ever provided to the Patent Ofüce

n906
paûent.
during prosecution of application number 08/224,43, which matured into tlrc

2

Dovlc rv¡s lürhdcd about tüe V¡ohWWlV brcwscr in 1993 durhs nrogccut¡m
the'9[16 ootont

PAGE 20

of

105. Doyle was reminded about Pei Wei

and the ViolaWWW browser

in 195,

dwing

prosecution of the '906 patent, but still no disclosure about the ViolaWWW browser was provided
to the Patent OfÏice.

106.
Release"

On August 21,1995, at approximately

ll:42 am. California time, Doyle

posted a'oPress

to the publicly-accessible WW\V-talk e-mail distribution list. Doyle's post included the

following statements: "Eolas Technologies Inc. announced today that it has completed a licensing
agreement with the
use

Universþ of California for the exclusive rights to a pending patent covering the

of embedded program objects, or 'applets,' within World Wide Web documents."

107.

On August2l,1995, at approximately 12:54 p.m. California time, Pei Wei responded

on the publicly-accessible WWrrlV-talk e-mail distribution list to Doyle's'oPress Release." Pei Wei's
response included the following statements:

"[F]or the record, I just want to point out that the 'technolory

which enabled Web documents to contain fully-interactive "inlind'program objects' was existing in

ViolaWWW and was treleased* to the public, ffid in full source code form, even back in

1993...

Actual conceptualization and existence occurred before 093."

108.
to the

On August2l,1995, at approximately l:14 p.m. California time, Doyle responded

message Pei Wei had sent

at approximately 12:54 p.m. Doyle's response included the

following statements: "We've had this discussion before (last September, remembefl). You
admitted tlren that you did NOT release or publish anything like this before the Eolas demonstrations."

109.

On August2l,1995, at approximately 4:09 p.m. California time, Pei Wei responded

to the message that Doyle had sent at approximately l:14 p.m. Pei Wei's response included
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 ofüce at O'Reilly & Associates
(where I worked at tlre time).

PAGE

2T

the

This is what I wrote on the VRML list:

t örnnircfy by May 8, 1993 we had demonstated that plotting demo
>
>
>
>

(the very one shown in the viola paper) to visiton from a certain
computermanufacturer... This demo was memorable because someone andl
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), at least, predates your demo if I'm not mistaken. Then
around August 93, it was shown to a bunch of attendees at the first Web
Conference in Cambridge. . .

.

If you're talking about interactive apps *specifically* on the web, ie applets inlined into HTML documents etc., and with bidirectional communications, ttrcn
look at ViolaWWW as it existed aroundlate'92 errrly'93.

110.

When Pei Wei referred to the'þlotting demo (the very one shown in the viola paper)," he

o'XPlot."
was referring to the plot of the fighterjet shown above in the window titled

111.

When Pei Wei referred to a demonsûation

'þ

May 8, 1993," he was refening to the

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

held'lvas

a

public use under [35 U.S.C. $ 102(b)1." 299F3d 1225,1235 @ed. Cir. 2005).

lI2.

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

1993," he was referring to the "World-'Wide Web Wizards Workshop" held

in

Cambridge,

Massachusetts on July 28-20,1993.

113.

People attending the Wizards workshop included Tim Berners-Lee, Marc Andreesen,

Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei.

ll4.

Tim Berners-Lee and Dale Dougherty were the organizers of the \üizards workshop.

115.

Dale Dougherty worked at O'Reilly & Associates in Northern California.

116. ln 1992, Dale Dougherty learned about Viola and recruited Pei Wei to join O'Reilþ &
Associates. Pei Wei's job at O'Reilly

&

Associates was to continue developing

ttp ViolaWril\M browser.

ll7.

Scott Silvey worked with Pei Wei at O'Reilly & Associates in Northern Califomia.

118.

When Pei Wei wn¡te "This demo was memorable becar¡se someone and I at ORA had lost

PAGE 22

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.

119. Tim Bemers-Lee

is the person gene,rally attibuted to be the inventor of the World Wide

Web.

120.

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 (NCSA) at the
University of Illinois at Urbana-Champaþ.

l2l.

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

popularbrowser forthe rWorld Wide Web.

122. Pei Wei and Scott Silvey demonsüated the ViolaWWW

bnowser and

its abilþ to

*VOBJF" tag to at least
automatically invoke interactive objects embedded within a webpage using the

Marc Andreesen and Tim Berners-Lee at the Wizards workshop in Cambridge, Massachusetts in
July 1993

-

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

123.

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

workshop.

124.

Pei W'ei's demonstration at the Wizards workshop of the ViolaWWW browser and its

abilþ to automatically invoke interactive objects embedded within
a

a webpage using

the'VOBJF" tag was

public use under 35 U.S.C. $ 102(b).

125.

Despite Pei Wei's communications to Doyle repeatedly providing evidence that the

ViolaWWW browser was material prior art under 35 U.S.C. $ 102(b), Doyle never disclosed the
ViolaWWW browser to the Patent OfÏice during prosecution of application number 081224A43,
which matt¡red into the '906

126. Instea{

patent.

i

Doyle deteted from his computer his emails with Pei Wei on Augrrst 21, lgg5.

Doyle kept on his computer other emails from that timeframe, however.

PAGE 23

3. In 1998. durine orosccution ofthe t906 oatent llovle cullected additional
information about the Viola\il\il\il browser

127, In 1998, during prosecution

of the '906 patent, Doyle collected additional information

about the ViolarWW''W browser, but he still did not disclose any information about the ViolaWWW

browserto the Patent Office,

as

explained in more detail below.

128.

During prosecution ofthe '906 patent, Doyle maintained a folder called'Viola stuff."

129.

The "Viola stuff' folder included a printout of Pei Wei's message to Doyle on August 21,

1994, at approximately 6:52 p.m. California time, in which Pei Wei told Doyle, 'T don't think this is the

first case of program objects embedded in docs and nansported over the WrürrlV. ViolaW"W\ù/ has had
this capabilities for months and months now."

130. The'Viola stuff'folder

included a printout of Doyle's message to Pei Wei on August 21,

1994, at approximately I l:26 p.m. California time, in which Doyle asked Pei Wei, "Out of curiosity,

did you publicly demonstrate this or publish any results before 1994?"

13l. The o'Viola stuff" folder included a printout from the URL
<http://www.w3.org/History/199
. This webpage has a heading for the
*rWWrWWizardsWorkshop" ooCambridge, Mass,
o'Announcement,"

132.

July 1993" and includes links

to

"Agenda"" and'?hotos of attendees."

"'\il"W'W'WizardsWorkshoy''refers to the World-Wide trlVeb Wizards Workshop held in

Cambridge, Massachusetts on July 2Ç20,1993, that Pei Wei attended.

The "Annot¡rrcernenf' link links to
<http:/Âwvw.w3.org/Flistory/l99
133.

states

a

webpage

at

that

that'Interactive objects" would be discussed at the Wizards workshop.

link links to
<http://www.w3.orglHistory
134. The 'âgenda"

a

webpage

at

that

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

PAGE 24

states

135.

The webpages for the Wizards workshop corroborate Pei Wei's statement to Doyle on

August 21,1995, that the plotting demo described in the Viola paper dated August 16,1994, was 'osho\iln

to a bunch of attendees at the first Web Conference in Cambridge"

ooaround

August 93"

-

over one

year before the application for the '906 patent was filed.

136. The'Viola

shrff'folder included

viola-2.1.2, archived on September 2,1993

-

a

printout of a webpage with a link to the source code for

over one year before the application for the '906 patent

was filed.

137.

The

'Viola stuff' folder included

a printout

of a webpage with the '.README ' file for

ooREADMEo'file is July 27,1992. The *README' file includes
viola-2.1.2. The date at the top of the

instructions for building the binary code for the

'Iiola"

program, and instructions for running the

ViolaW"WW browser. The *README'file states at the bottom:
Comments and questions:

138.

Please send WWW specific bugs to www-buÊ[e-mail].
general comments to [e-mail]. and anyttring to
[e-mail]. EDU.
Pei Y. Wei
[e-mail]
The 'Viola stuff' folder included a printout of a message ttnt Pei Wei had sent to the

publicþ-accessible WWW-talk e-mail disüibution list on January 28, 1994, that included the following
statements: "Right now, the

ViolaWWW that is under development can embed viola objects/applications

inside of HTML documents."

139. The 'Viola stuff'

folder included a printout of a message that Pei Wei had sent to the

publicly-accessible WrWW-talk e-mail distribution

list on February 25, 1994, that included

following statements:

fq ftp'ing. It's beta and feedback is
vety welcomed. The README file follows...
The new ViolaWWW is now available

ViolaW\ilW, Version

3.0 Beta

Feb231994

PAGE 25

the

ViolaWWW
XWindows.

is an extensible

World Wide Web hypermediabrowser for

Notable features in the new ViolaWWW

* Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini viola applications (ie: a
chess board), or can car¡se mini apps to be placed in the toolbar.
Availability
Sot¡rce and binary can be found in ftp://ora.com/pub/www/viola. Sparc binary

is supplied.

Pei Y. Wei ([e-mail])
O'Reilly & Associates, Inc.

140. The ooViola

stuffl' folder included a printout from the

<http://xcf.berkeley.edt/h4qe
ViolaWWW Version
ViolaW\VW
XWindows.

. The printout included the

3.1 Beta

is anextensible

URL

following statements:

lvlat231994

World Wide Web h1'permediabrowser for

Notable features in the new ViolaWW'W

* Embeddable in-document and in-toolbar prograrnmable viola
objects. A document can embed mini viola applications (ie: a
chess board), or can cause mini apps to be placed in the toolbar.

Availability
Source and bhary can be found in ftp://ora.com/pub/www/viola. Sparc binary

::::*'"n
Pei Y. Wei ([e-mail])
O'Reilly & Associates, Inc.

l4l. The "Viola stuff"' folder included a printout from the URL
<http://xcf.berkeley.edú4rcje
. One of the files listed in the printout is named
PAGE 26

'þlotDemo.hûnf '.

I42. The 'oViola stuff" folder included a printout from the URL
<http://xcf.berkeley.ed
. One of the files listed in the printout is named
'þlot.v".

I43.

The following is a screenshot ofthe ViolaWWW browser after parsing the file plotDemo.htnl:

HHHH

HFq

Thls lsa demo of VlolaWWW embeddhg a vlola front-endlng obJect that ls programmed
to start up and oomrnr¡nlcate wllh a plot process.

i:rr'e:t,

144.

i

t

The files plotDemo.hnnl and plot.v include code for the plotting demo described in the

Viola paper dated August 16,1994.

145.

The file plotDemo.htnl specifies the location of the file plot.v, which in tum specifies the

location of a separate executable application named vplot.

PAGE27

146. Pei Wei had told Doyle on August

21,1994 how the plotting demo worked: "[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 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."

147.

Pei Wei had told Doyle on August 21, 1994, and again on August 21, 1995 that the

plotting demo described in the Viola paper dated August 16,1994, was the "very one" demonstrated

'to visitors from a certain

148.

computer manufacturet''by May 8, 1993.

When Pei Wei referred to a demonstation'þ May 8, 1993," he was refening to the

demonstration of the plotting demo to two Sun Microsystems employees that the Federal Circuit has
held'luvas a public use under [35 U.S.C. $ 102(b)].' 299F.3d 1225, 1235 (Fed. Cir. 2005).

149. Thus, during prosecution of the '906 patent, Doyle knew about Pei

Wei's

demonshation ofthe plotting demo that tlre Federal Circuit has held was a'þublic usd'under 35 U.S.C. $

102(b); Doyle knew how the plotting demo worked; and Doyle had access to the code for that plotting
demo.

150. fhring prosecution
a

of the '906 patent Doyle printed webpages containing information abot¡t

talk that Pei Wei gave at Stanford Universþ in Northem Califomia in September 1994.

l5l.

The webpages that Doyle printed included the following statements and graphic:

WIYW Browsers¡ Extensibil¡ty Issucs
Pel lYei,

O'Reilþ & Associates

Sbnford ComputerFonrm W\ilW TYorlshop - Scptcmber2G.2l,

:::
Extcnslblffty ¡n W\il]V Browsorg
The WorldWideWeb is a powerful medium which

has many

PAGE 28

applications beyondjust publishing static documents. It is cærtainly an
interface to the space of"documents." But already, wffi established
features such as input-forms and server-side scripting we see that the
web is also increasingly becoming an
interface to the space of what is naditionally called "applications."

In this talk I'll describe a few possible approaches for a browser to gain
more flexibility, and to briefly describe one particular approach as
implemented by asystem known as ViolaWWW.

Possible lVays to Extend Browsers

We already do "extend" browsers with things like "extemal viewers."
But there's not a very good integration with the b¡owser. Ideally those
external viewers should be rendering in- place inside the document, and
be working together with the browser, be tightly integrated with the
browser and other parts...

\ilork

*,

at O'Reilþ

t, the Viola

& Associates: VIOLA-\ilIVW

sysûem that is being developed at

O'Reilly and Associates.

This system has the following interesting
characteristics:

Three, program objects can be embedded into documents and the toolbar. .

.

The noct example is a front-end application to a backend" And the back-end
is what actually does the computation and the drawing.

PAGE 29

nHnH

HF.Ð
ng

Thls ls a demo ol VlolaWWW embeddlng a vlola font-endlng obJBct üat ls programmed
b stort up and communlcãte $ilth a plot procsss.
The trcnt-end tells the plot program the u¡lndol lD to draur

i::rd:r:,i

I52.

._

b,

and glvæ lt

ür

camera

_

I

There was no limitatio¡u restriction or obligation of secrecy on anyone attending the talk

that Pei Wei gave at Stanford University in September 1994.

153. The plotting demo described in the talk at Sanford University in September

1994 is the

same plotting demo described in the Viola paper dated August 16, 1994.

154. Pei Wei had told Doyle on August 21, 1994, and again on August 21,1995,

that the

plotting demo described in the Viola paper dated August 16,1994, was the "very one" demonstrated

"to visitors from

155.

a certain computer manufacturert'by May 8, 1993.

When Pei Wei rcferred to a demonstation "by lvfay 8, 1993," he was refening to the

demonstration of the plotting demo to two Sun Microsystems employees that ttre Federal Circuit has
PAGE 30

held'îas a public use under [35 U.S.C. $ 102(b)]." 299F.3d1225,1235

156.

Thus, during prosecution

(Fed. Cir. 2005).

of the '906 patent, Doyle was repeatedly confronted with

evidence that the ViolaW\lV'W browser was material prior art under 35 U.S.C. $ 102(b), yet Doyle never

disclosed the ViolatrlVWW browser to the Patent Office during prosecution

of application number

08/224,43, which matured into the '906 patent.

157.

The ViolaWWW 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 fæ< containing a number of references regarding the ViolaW\ilW
browser.

158.

The fax sent to Krueger in August

of

1998 was to allow him

to

analyze whether the

ViolaW.WW browser, including the August 1994 Viola pape& should be submitted to the Patent Office.

159. Kruger \ilasi aware of Pei Wei's May 1993 demonstration of the ViolaWrJVrÙV
Sun Microsystems employees without a

160. Krueger

browser to

confidentialþ agreements.

considered Pei Wei's statements regarding the May 1993 demonstration of the

ViolaWWW browser to Sun Microsystems employees when he analyzed whether to disclose the
ViolaWWW browserto the Patent Ofüce.

161. Knreger

had no reason

to

disbelieve Pei Wei's statements regarding the

May lW3

demonstation ofthe ViolaWWrW browser to Sun Microsystems employees.

162.

Krueger made the determination, prior to the issuance of the '906 patent to not disclose to

the PTO the information he received regardingthe ViolaWWW browser.
4. The

163.

Viol¡lVlVlV browserwas material to tho natentabilitv of the'906 oatent

The ViolaWWW browser was material to the patentability of the claimed inventions

in the '906 patent.

164.

There is a remarkable

similarþ

between the ViolaWWW browser and the preferred

PAGE 31

embodiment of the'906 patent:

¡u. lFittrtúi t!ñ EM

nnan

Urt

F¡m

tìlr raËm dvlarw\liù6Þ5rì ruc¡ftrlt-aiûrglliq }4

o tglrt a d ffi rnl¡or¡ñ a9¡d rnñt.
Ìh. âol-and ùrt ta ¡¡ol ¡6!müt *rdo,

cdùôffi

D

l!

cû!û

4FogE û16

od eþé t ha

ffi

D.mßlrolbo: hüællva rirstðlioñ ol

ftlr

\¡iolaìVIVW

groltcl v¡i ¡rßa lha

dr¡01

o 7.

wi.l

old

pur9ox

Fig.9 of Ll.S. P:rtent No.5,838,906

Both the ViolarWrWW browser (on the left) and the preferred embodiment of the '906 patent (on the
righÐ 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 embedded image that

move up and down; these rotate the embedded image on the X, Y, andZ axes. Similarly, in the preferred
embodiment

of the '906 patent shown above, box 254 has three slide controls to the right of

the

embedded image that rotate the image on the X, Y, andZ æ<es. Thus, ViolaW'WW, like the '906 patent,
teaches a browser capable of displaying embedded interactive objects.

165. The Manual of Patent Examining Procedure in force at the time the application
'906 patent was filed included the following statements:

n 27 CFR 1.56(b) and discussed herein at MPEP $
2001.05. In addition to prior art such as patents and publications,2T CFR 1.56
includes, for example, information on possÍNe prbr publíc ¿ses, sales, offers to
sell, &rived knowledge, príor ínventlon by onolhcr, inventorship conflicts, and
the like. [emphasis in bold added]
Materialþ is defined

PAGE 32

for the

166.

The Manual of Patent Examining Procedure in force today contains similar language:

Materialþ is defined in 27 CFR 1.56(b) and discussed herein at MPEP $ 2001.05.
In addition to prior art such as patents and publications,2T CFR 1.56 includes, for
example, information on >enablement,< possible príor publíc zses, sales, offers to
sell, derived knowledgg prior ínventíon by another, inventorship conflicts, and
tlre like. J'Materiality is not limited to prior art but embraces any tnformation that a
reasonable examinerwould be substantially likely to consider important in deciding
whether to allow an application to issue as a patent." Brßtol-Myers Squibb Co. v.
Rhone-Poulenc Rorer, 1nc.,226F.3d1226,1224,66 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].

167.

The Federal Circuit has confirmed that the ViolaWWJV browser was material to the

patentabilþ of the claimed inventions in the '906 patent.

168.

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

I and 6 of the

'906 patent anticipated by the ViolaWWW browser under 23 U.S.C. $ 102(a), (b), and/or (g). See 299
F.3d 1225, 1229, 1232-25 (Fed. Cir. 2005).

169. The Federal Circuit held that

"'Weios IÙlay

7,

to two Sun

1993 demonstration

Microsystems employees without confidentiality agfeements was a public use under [35 U.S.C. $ 102(bI."
299 F.3d 1225, 1235 (Fed. Cir. 2005).

170.

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 299F.3d 1225,1235 (Fed. Cir. 2005).

17l.

The Federal Circuit held ttrat a

distict cor¡rt could find that Doyle had committed inequiable

conduct by failing to disclose the ViolaWWW browser to the Patent Offïce. See 299

F3d 1225, 1236

(Fed. Cir.2005).

172.

Thrs, Krueger war¡ awar€ that the Fed€ral Cir€uit confirmed that the ViolaWlüril browser

was material to the patentability of the claimed invention in the'906 patent.

173. Even after Krueger was aware that the Federal Circuit confirmed that the
ViolaWWW browser was material to the patentabilþ of the claimed invention in the'906 patent he did
not disslose any additional information to help the Patent Ofüce consider ViolaWWW browser.

PAGE 33

I74.

The Patent Ofüce has also confirmed that the ViolaWWW browser was material to the

patentabilþ ofthe claimed inventions in the '906 patent.

175.

On or about July 20, 2007, during the 2005 reexamination of the '906 patent the Patent

Ofïìce rejected all claims of the '906 patent as being anticipated by DX95, which includes a copy of the
text found in Pei Wei's Viola paper dated August 16, 1994.

176.

Pei Wei had told Doyle on August 21,1994, about the Viola paper dated August 16,1994,

and Doyle had downloaded and read that paper the same day, yet Doyle never disclosed the Viola paper to
the Patent Office during the original examination of the '906 patent.

177. The fact that Doyle may have conceived of the inventions claimed in the '906 patent
before August 16,1994, does not render the Viola paper immaterial, because the Viola paper describes
features of the ViolaWW'\V browser that existed before the invention date for the '906 patent and/or over
one year before the application for the '906 patent was filed.

178.

For example, the plotting demo described in the Viola paper dated August 16, 1994, was

part of the ViolaWWW browser software that was demonsüated to Sur Microsystems on May 7,1993

-

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

179.

None ofthe claimed inventions in the '906 patent was conceived before August 1993.

180. Thus, the ViolaW'W'\V

browser software that was described in the Viola paper dated

August 16, 1994, and demonstrated to Sun Microsystems on M;ay 7, 1993, also corroborates
anticipation ofthe claimed inventions in the '906 patent under 35 U.S.C. $ 102(g).

181.

Neither reexamination of the '906 patent considered whether the claimed inventions

were anticipated by "Wei's lvlay 7,1993 demonstation to two Sr¡n Microsystems empþees without

confidentiality agreements" which the Federal Circuit has held was a'þublic use under [35 U.S.C.

$

102(bI." 299 F.3d 1225, 1235 (Fed. Cir. 2005).

182.

In an øc pøte reexaminatio& "[r]ejections will not be bosed on matters ottrcr than patents or

PAGE 34

printed publications, such as public use.'o,See Manual of Patent Examining Procedure (MPEP) $ 225 8(I).

183.

Knreger knew ttnt tlre Patent Office could not consider public use art

ùring aî

ex

parte

reexamination.

184. The Patent Office had the authority during the original examination
issue a rejection based on the o'public use" provision

of the '906 patent to

of 35 U.S.C. $ 102(b), but Doyle and Krueger

never disclosed to the Patent Office during that examination the evidence he had in their possession that
the ViolarW'\VW browser was

in'þublic

use" more than one year before the application for the '906 patent

was filed.

185.
patent

On information and belie{, the Patent Office would not have allowed the claims of the '906

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 Ofüce.

Krueeer ¡ntended to dece¡ve the Patent Office durine nrosecution of the
patent
'9()6

5. Dovle and

186. During

prosecution of application number 08/224,M3, which matured into the '906

patent, Doyle withheld extensive evidence about the ViolaWWW browser.For example, Doyle failed to
disclose the following material information: the message from Raggett aboutthe ViolaW'WW browser and

embedded objects; the communications with Pei Wei

embedded interactive plotting demo that was

in 1994 about the ViolaWWW browser and the

in public use in May

19931,

the Viola paper

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

use

in May 1993- the communications with Pei rtVei in 1995 about the ViolaWWW browser and the
embedded interactive plotting demo that was in public use in May
conference in July 1993; the contents of

lÐ3

and again at the Wizards

the'Viola stuff' folder that Doyle maintained, which i¡rcluded

information about the Wizards conference in July 1993 and links to the ViolaWWW browser software,

including source code for the embedded interactive plotting demo that was in public use in May 1993;
and Pei

Wei' s talk at Stanford in September

lÐ4

about the embedded interactive plotting demo that was

PAGE 35

in public use in May 1993.

187.

On information and belief, Krueger failed to disclose a number of material references

regarding the ViolaWWW browser including
commurications with Pei Wei

at least the August

n 1994 about the ViolaWWW

1994 Viola paper, Doyle's

browser and the enrbedded 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 May 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 and linls to the ViolaWWW browser software,
including source code for the embedded interactive plotting demo that was in public use in May 1993.

188.

Doyle and Knreger witt¡treld information about the ViolaWWW browser with the specific

intent to deceive the Patent OfÏice.

189.

Doyle had a furancial interest in the patentabilþ of the claimed inventions in the'906

190.

The ViolaWWW browser threatened the patentability of the claimed inventions in the '906

patent.

patent, and thus threatened Doyle's financial interests.

191.

Doyle was personally involved in the prosecution of application number 08/224,443,

which matured into the '906 patent.

192.

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 Ofüce.

193.

On or about January 2,lWT, Doyle signed a decla¡ation that was submitted to the Patent

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

194.

On or about February 24,1997, Doyle and Krueger participated in an sraminer interview

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

195.

On or about lvlay 27,1997, Doyle signed a2&-page declaration (including an appendix)

PAGE 36

that was submitted to the Patent Ofüce in an effort to establish himself

as¡

an ooexpert" in the subject

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

196.

On or about October 29, L997, Doyle signed another declaration that was submitted

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

197.

On or about November 6, 1997, Doyle and Krueger participated in another examiner

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

198.

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.

199.

Doyle personally reviewed and approved papers submitted to the Patent Ofüce during

prosecution of the '906 patent.

200.

Despite Doyle and Krueger's extensive personal involvement in the prosecution of

application number 0A214,441 which matured into tlre '906 patent Doyle never disclosed the ViolaWWW
browser to the Patent OfÏice during that prosecution.

20I.

The circumstances of Doyle and Krueger's actions demonsfiate an intent to deceive the

Patent OfÏice.

202. For

example, during prosecution

of the '906 patent Doyle made arguments

for

patentabilþ that could not have been made if he had disclosed the ViolaWWW browser to the Patent
Ofüce.

203.

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

by the Universþ of Southern California's "Mercury Project."

204.

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

PAGE 37

Office.

205.

Doyle personally reviewed and approved the response submitted to the Patent Offrce on

or about August 6,1996.

206.

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

The claimed combination is
Mercury Project.

In

fundamentally different from the
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.

207. If Doyle or Krueger had disclosed the ViolaWWW prior art to the Patent Ofüce, 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 processing the external object within the window in

which a portion ofthe original document is displayed."

208.

On or about March 26,1997, the Patent Ofüce rejected several claims as being obvious in

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

209.

On or about June 2n 1997 , ar€sponse to this rejection was submitted to the Patent Office.

210.

Doyle and Krueger personally reviewed and approved the response submitted to the

Patent OfÏice on or about June

2ll.

2, 1997.

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

lT]here is no suggestion in Khoyi of modifring 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.

212. If Doyle or Knreger had disclosed the ViolaWWW prior art to the Patent OfÏice, it would
not have been possible to distinguish the claims of the '906 patent over the prior art on the basis that
the prior an failed to disclose "an external application [that] is invoked to display and interactively

PAGE 38

process the object within the document window while the document is displayed by [the browser] in
the same window."

213.

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.

214.

On or about December 23,1997, a respor¡se to this rejection was submitted to the Patent

215.

Doyle and Krueger personally reviewed and approved the response submitted to the

Office.

Patent Office on or about December 23 1997.

216.

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

[T]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.

217. If Doyle or Krueger had disclosed the ViolarüWW

prior art to the Patent OfIice, 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."

218.

Doyle and Krueger's repeated use of arguments that could not have been made if Doyle or

Krueger had disclosed the ViolaWW'W prior art demonstrates an intent to deceive the Patent OfÏice.

219.

Doyle's intent to deceive the Patent OfÏice is also demonsfiated by comparing what he

told an audience of web developers on or about March 27,1995, to what he told the Patent Ofüce on or
about May 27,1997.

220.

On or abort lvlarch 27,1995, Doyle responded to a post on ttre fublicly-ac,cessible WIV\M-

talk e-mail distribution list in which another author had written, under the heading "HotJava is here!

And it trocks*n" "Itns the most exciting thing to happen to the Web since viola." Doyle's

respons¡e

included the following statements:

PAGE 39

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.

221.

On or about May 27, 1997, Doyle signed a decla¡ation that was submitted to the Patent

Offïce. Doyle's declaration included the following 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 atÍibutable 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, ooWith 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 lVeb pages h¡ghly
interactive."
This statement shows that the developers of Java felt that the most
important feature of the Java technology was the abilþ 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 xecutable 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
brcwser-contolled window. The book's authors further emphasize the novelty
and nonobviousness of this technology when they say, "Quite simply, Javapowered pages are Web pages that have Java applets embedded in them.

They are also the Web pages with the coolest special effects around
Remember, you need a Java-compatible lVeb bnowser such as
Hotlava to vicw and hear thesc pages and to interact with them; othenuise,
all you'll access is static \ileb pagcs minus the special effects."

The above citations, as well as the additional details given inAppendix A,
provide ample evidence of the commercial success of products incorporating
features of the claimed invention, as well as evidence of the widespread acclaím
that these products have garnered for the technical innovations which the features
of the claimed invention allowed them to provide. They furtlrcr show that the
sr¡cce$er¡ of these products \ ¡as¡ a direct result of the features of the claimed
invention, which they incorporated through ímplementatíon of an embed text
þrmat tlnt ís parsed by a lleb browser to automatícally ínvoke an externol

PAGE 40

executable applicatíon to execate on the clientworlætation in order to displry an
external object and enable interactive processing of that object within a display
window created at the embed text format's location within the lrypermedía
document beíng dísplqyed ín the browser-controlled window.

222.
the

The declaration Doyle signed on or about lÙ.[ay 27,1997, made no mention of Viola or

ViolaWWW browser.

223.

Doyle and Kruegeros disclosure of Java for purposes of commercial success, but not the

ViolaWWW browser which Doyle knew was prior art that existed over one year before the application
for the '906 patent was file{ demonsüates an intent to deceive the Patent Office, especially given Doyle's

belief that Viola was similar to Java and that Java embodied the claimed invention.
6. Between 1999 and 2003. Dovle learned about addiúional Viola nrior art.
and leamed that an expert in the field believed that the plottine demo for the
ViolalV\illV browser anticinated the asserted claims of the'906 natent

224.

Between 1999 and 2003, a third parly disputed the

225.

Doyle personally guided Eolas through the litigation concerning the validity of the'906

226.

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

validþ of the '906 patent.

patent.

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

227.

The plotting demo relied on by the third pafy to prove anticipation of the ass€rted claims

of

the '906 patent was the same plotting demo that Pei Wei had repeatedly described to Doyle, and which
the Federal Circuit has held was a'þublic usd'on Mray 7,1993,299F.3d 1225,1235 (Fed. Cir. 2005),
and which Doyle himself came across from his own research into Viola.

228.

In its contentions that the plotting demo involving the ViolaWWW browser anticipated

the asserted claims of the '906 patenq the third party specifically identified the VOBJF tag, the plot.v

file, and the vplot executable application.

229.

For example, on or about December 14,2001, the third parly served an expert report by

Dr. John P.J. Kelly, that included the following statements:

PAGE 4I

Wh€n

ViolaWtWW encountered the

tag

<VOBJF>/usr/work/viola/appsþlot.vlVOBJÞ, a¡r embed text format
speciffing the location of an object, it looked in the specifìed path for at least
part of the object, parsd the path, and automatically loaded the object into the
program. The file (plot.v) also contained type information associated with the
object, such as the name and location of an extemal executable application, vPlot,
that also was automatically invoked to enable dispþ of and user interaction with
the object at a location within a dispþ area within the document being displayed
in the browser-conûolled window corresponding to the location of the embed
text format in the document. Subsequentþ when the user interacted with the
object, ViolaWWW sent messages to vplot based on the user input and received
ouþut from vplot, thw updating the display ofthe object.

230.

Similarly, at a ûial in 2003 concerning 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, ffid he specifically identified the VOBJF tag, the plot.v file, and the vplot executable
application for purposes of his anticipation analysis.

231. Pei Wei also testified at the üial in 2003 about the ViolaWlùVW

browser and the plotting

demo.

232. At the trial, exhibitDKz4 included

source code for the ViolaWWW browser dated May

12, t993.

233. At the trial, exhibitDK2T

included sor¡rce code for the ViolaWWW browser dated May

21,1993.

234. DX24 contains the code for the plotting demo tt¡at Pei Wei demonsüated to Sun
Microsystems on May 7,1993, in Northern California.

235.

DXi27 contains code for a plotting demo similar to the plotting demo inDX24.

236.

On IWry 2l,l993,Pei Wei posted DX27 on a pnrblicþ-accessible IriteÍiet siæ and notified an

engineer at Sr¡n Microsystems that DX27 was available for downloadíng.

237. Under 35 U.S.C. $ 102(b), D){27 was a 'þinted

publication" over one year before the

application forthe '906 patent was filed.

238. Dr. Kelly testified that the plotting

demo

n

D)f^24 and DX27 anticipates the asserted

PAGE 42

claims of the '906 patent. Dr. Kelly specifically identified the VOBJF tag, the plot.v file, and the vplot
executable application for purposes of his anticipation analysis of DX27.

239.

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

conclude thatDX2T anticipates at least claims

I

and 6 of the '906 patent. See 299 F.3d 1225,1235 (Fed.

Cir.2005).

240. 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 ViolaWW'W browser.

241. For example,

Dr. Kelly never disctssed clock.v duringthe

tial inJuly andAugust 2003.

242.

Doyle attended the trial involving the third party held in July and August 2003.

243.

By the end of the üial in August 2003, Doyle knew about and understood the third pafy's

contention that the plotting demo involving the ViolaWW'W browser rrnD){27 anticipated the asserted
claims of the'906 patent.

244. By the end of the trial in August 2003, Doyle knew about and understood Pei Wei's
testimony that on May 21, 1993

-

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

-

he posted DX27 on a publicly-accessible Internet site and notified an engineer at Sun Microsystems
that DX27 was available for downloading.

7.

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

245. On or about October 20, 2003, the Director of the Patent Ofñce initiated

a

reexamination ofthe '906 patent. The control number for this reexamination was 90/006,821.

246. During the 2003 reexamination, Doyle withheld information about

the

ViolaWWrJr/ browser with the specific intent to deceive the Patent Ofüce.

247.

Doyle had a financial interest in th€ patentability of the claimed inventions in the '906

PAGE 43

patent.

248.

The ViolaWWW browser threatened the patentabilþ of the claimed inventions in the '906

patent, and thus threatened Doyle's financial interests.

249.

Doyle and Krueger were personally involved in the 2003 reexamination of the '906

250.

For example, on or about April27,20M, Doyle and Krueger participated in an examiner

patent.

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

gave the examiner a presentation supported by approximately 22 slides prepared by Doyle and
Krtreger, none of which discussed DX27 or the ViolaW'W\V browser. Neither Doyle nor Krueger
mentioned the ViolaWWW browser during the interview.

251.

On or about May 6, 2004, Doyle signed a declaration that was submitted to the Patent

Office in an effort to confirm the patentabilþ ofthe claims ofthe '906 patent application. This declaration
made no mention ofDX27 or the ViolaWWW browser.

252.

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 a presentation supported by approximately 26 slides, none of which discussed

DXzl or the

ViolaWWW browser.

253.

During the 2003 reexamination, Doyle and Krueger submitted selected information

from the litigation with the third parly 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 ViolaWWW
browser and how they matched up to the ass€rted claims of the '906 patørt. This proved critical dwing the

2003 reexamination becar¡se when the examiner decided to look at the source code for the ViolaWWW
browser, he missed ttp key points.

254.

On or about December 20,2003, Doyle and Krueger submitted to the Patent Office a

PAGE 44

CD containing two compressed zip fileq one for the 'oDX2f'version ofthe ViolaWWW source code dated
l|v/ray

12,1993, and the other for the "DX27" version of the ViolaWWW source code dated

IÙday

27,

t993.

255.

The compressed zip file forDX24 that Doyle and Kruger submitted to the Patent Ofüce was

named viola9205l2.tar.gz.zip. When tu¡zippe{ it contained 1,027 files in 25 folders consisting of

I

total

megab¡es in size.

256.

The compressed zip

file forDX2T that lloyle

and Krueger submitted to the Patent Ofüce was

named violaTOGO.tar.Z.ap. When unzipped, it contained 1,020 files in 24 folden consisting of 7.7 total

megab¡es in size.

257.

DX24 andDX2T contained source code for the ViolaWWW browser.

258.

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

binary code before it can be executed by a computer.

259.

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

that binary code (such as a Sun SPARCstation from the early

I

990s), the Patent Offrce had no practical

way to see the ViolaWWW browser in operation.

260.

Given the voluminous nature of the contents of DX24 andDX27, and the practical

inabilþ of the Patent Ofïice to run the ViolaWWW browser on a computer, it was especially important
for Doyle and Krueger to be candid with the Patent Office about the contents ofDX24 and DX27 so
that the Patent Ofüce could focus on the relevant files.

261. Doyle and Krueger \ilere not candid and instead withheld

material information that

would have assisted the Patent Office in undentanding the contents ofDX24 andDX27.

262.

Iloyle and Krueger did not disclose the full contents ofDX24 andDX2T in their entirety to

the Patent Ofïice during the fnst reexamination ofthe '906 patent.

263.

Tlrc

ftll

contents

ofDX24

añDxzl

wer€ not submitted in their ertirøy mtil the Invention

PAGE 45

Disclosure Statement filed on November

264.

l, 2006.

For example, during the 2003 reexamination, Doyle and Krueger did not disclose to the

Patent OfÏice the trial testimony of Pei Wei, who testified about the plotting demo in DX24 and
DX27; Doyle and Kruger did not disclose the üial testimony of Dr. Kelly, who testified that the plotting
demo in DX24 andDX2T anticipated the asserted claims of the '906 patent; and Doyle and Krueger did
not disclose that Dr. Kelly specifically identified the VOBJF tag the plot.v file, and the vplot executable

application for purposes of his anticipation analysis,

265.

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 thatDX2T anticipates
at least claims

266.

I

and 6 of the '906 patent .299 F.3d 1225, 1235 (Fed. Cir. 2005).

Even after the Fede,ral Circuit's decision, however, Doyle still did not disclose Dr. Kelly's

testimony to the Patent Ofüce during the 2003 reexamination, nor did he 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.

267. On or about September 21, 2005,

the examiner issued a statement for reasons of

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

268.

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

anticipated the asserted claims of the '906 patent.

285.

When the examiner considered DX27, the examiner did not know where to look

or what to look for. There were too many files in DX27 for the examiner to read himself. Thus

PAGE 46

269.

the examiner was forced to resort to running text searches across all the files in DX27

n

the hope of stumbling across relevant information.

270.

The examiner used the "dtSearch" program to index and text search allDX2T files that

contained textual content.,See http://wrvw.dtsearch.com¿

271. It is unclear what words

the examiner searched for or how he came up with his search

terms.

272.

Doyle knew precisely what to look for, but he never 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 for¡nd the plotting demo that Ih. Kelly had testified anticipated the asserted claims of the '906
patent.

273.

The examiner's text searches did not lead him to the plotting demo, but instead led him

to a clock application that used the file clock.v.

274.

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.

275.

The examiner reasoned that a script file like clock.v does not satis$ the o'executable

application" requirement of the claims of the '906 patent, and tht¡s the examiner concluded thatDX2T
does not anticipate the asserted claims of the '906 patent.

291.

The ViolaWWW source code teaches two ways of creating interactive webpages

using embedded applications. One way is by using a simple script file, such as clockv.

All ttnt

is

required is a webpage (such as violaApps.hûnl) and the script file (such as clock.v). No binary
executable application is involved. The other way taught by the ViolarWWW sor¡rce code does
use a binary executable application (such as vplot) in addition to a webpage and a file that

PAGE 47

276.

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 patentabilþ of the asserted claims ofthe '906 patent.

277.

The examiner's reasons for patentabilþ included the following statements:
The Viola system uses "C-like" Viola scripts that must be
INTERPRETED by the browser and then TRANSLATED or
COI.IVERTED into binary native executable machine code that can be
understood by the CPU. Altemately, the Viola script is
precompiled into inærmediate b5rte-code form and the þtecode is interpreted
(i.e., tanslated) into binary native executable machine code at runtime. This
extra step oftranslation results in an unavoidable performance penaþ, as
interpreted applications run much slower than compiled native binary
executable applications.
Accordingl¡ the *C-likd'Viola scripts (or conesponding b¡ecode
representations) are not "executable applications" . . . .

278.

The examiner's reasoning overlooked the fact that the plotting demo inDX27

does use a separate executable application: vplot.

279. Doyle and Krueger knew that the plotting demo used a separate

executable

application, but Doyle did not bring this fact to the examiner's attention and instead allowed the

examiner to confirm the patentability of the claims of the '906 patent on the basis of an
incomplete understanding of DX27.

280. Doyle and Krueger knew that the plotting

demo used a separate executable

application for at least the following rea{¡ons:

The Viola paper dated August 16, 1994, which states "This next mini
application front-ends 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."
Pei Wei's message to Doyle on September l, 1994, which ittcluded 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

Page 48

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 backend, and the back-end draws the graphics directly onto the window
violaWWW has opened for it."

The source code listed in the "Viola stuff' file included the file
plotDemo.htnl, 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 ftont-end tells the plot program the
window ID to draw tq and gives it the camera coordinate changes." When
the file plotDemo.hnnl is parsed, it shows the plot of a fighter jet in a
window titled o'XPlot."
Pei Wei's presentation at Stanford in September 1994, which included
the following statements:'oThe next example is a front-end applicationto a
backend. And the back-end is what actually does the computation and
the drawing." Included with the presentation was a screenshot of the
ViolaWrW\M browser after parsing the file plotDemo.hnnl. The screenshot
shows the plot of a fighterjet in a window titled'oXPlot." The text in the
webpage states, 'oThis is a demo of ViolaW\MW 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."
The trial testimony of Pei Wei.
The expert opinion of Dr. Kelly.

281.

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

and failure to disclose documents from the litigation that identified how Dr. Kelly matched up
the plotting demo lrl.D){.27 wittr the claims of the'906 patent, both alone and in combination

with Doyle and Krueger's prior failure to disclose the ViolaW'WtùV 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 Ofüce.

282. On information

and belief, the Patent OfÏice would not have confirmed the

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

Page49

if

Doyle and Krueger did not engaged in inequiøble conduct and instead had frrlfilled their duty

of

candor and good faith in dealing with the Patent Office.

8.
283.

Dovle and Knreeer's ¡nequitable conduc{ durins the 2(X)3 rcexamination
infected the 2005 reexamination

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

'906 patent.

284.

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

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

285. Doyle had a financial interest in the patentability

of the claimed inventions in the

'906 patent.

286. The ViolaWWrW

browser threatened the patentabilþ of the claimed inventions in

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

287. Doyle and Krueger \ilere personally involved in the 2005 reexamination of the
'906 patent.

288.

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

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

289.

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

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

290.

On or about May 9, 2008, Doyle and Krueger participated in another examiner

inte,lview in an effort to confirm the patentability of the claims ofthe '906 patent application.

291.

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

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

Page 50

292.

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

the 2005 reexamination.

293. Although Doyle and Krueger disclosed material information about

the

ViolaWW\V browser to the Patent Office during the 2005 reexamination, by that time it was too
late.

294.

For example, Doyle and Knreger disclosed the Viola paper dated August 16,

1994, to the Patent Ofüce on or about August 21,200,6.

295.

This was the first time Doyle or Krueger had disclosed the Viola paper dated

August 16,1994 to the Patent Ofüce.

296.

Doyle knew about the Viola paper no later than August 21, 1994, but Doyle

waited over l0 years

-

and two prosecutions of the '906 patent

-

to disclose that paper to the

Patent Ofïice.

297.

Krueger knew about the Viola paper no later than August of 1998, but Knreger

waited 8 years

-

and two prosecutions of the '906 patent

-

to disclose that paper to the Patent

Office.

298.

Shortly after Doyle and Kmeger disclosed the Viola paper dated August 16,1994,

to the Patent Ofüce during the 2005 reexamination, the Patent Ofïice rejected all claims of the
'906 patent.

299.

The rejection based on the Viola paper dated August 16, 1994, confirms ttrat ttre

ViolaWWW browser was material prior art.

300.

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

Viola paper dated August 16,1994, however. Instead Doyle filed a declaration asserting that his
date of invention was before August 16,1994.

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301.

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

the Viola paper dated August 16,1994.

302.

The 2005 examiner could have entered a new rejection based onDX27, which

rilas a printed publication before the alleged conception of the inventions claimed in the '906

paten! but the 2005 examiner did not independently examine D)K27 because the 2003 examiner
had already concluded thatDX2T did not invalidate the asserted claims

303.

ofthe '906 patent.

The conclusions about DX27 reached in the 2003 reexamination \üere erroneous

due to Doyle's inequitable conduct during that reexamination.

304.

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

infected the 2005 reexamination.

C.

305.

Dovle submitted false statements about the secondarr considerations of
non- obvbusness

During the original prosecution of the '906 patent, Doyle submiued a declaration

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

ofthe claims.

306.

Specifically, on or about June 2, 1997, Doyle submiued to the Patent Offrce a

s\ilorn declaration executed on or about l}lay 27, 1997, for the purpose of overcoming the
examiner's rejection on March 26,1997.

307.

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

not have been obvior¡s over the cited prior art in view of "secondary considerations, including in

part, commercial success of products incorporating features of the claimed invention and
indusry recognition ofthe innovative nature ofthese products."

Page 52

308. In support of his assertion, Doyle declared to the Patent Office that Sun
Microsystems and Netscape had incorporated his invention into their Java software and
Navigator Web browser, respectively. He stated: "Approximately 12 to

l8 months after the

applicants initially demonsfiated the first Web plug-in and applet technolory to the founders

of

by Sun Microsystems in November and Dece¡nber of lÐ3,

as

Netsc4pe and enginee,rs employed

described in reference #4 from Appendix

A (Dr. Dobb's Joumal, 2/96), both Netscape and Sun

released software products that incorporated features of the claimed invention . . .

309.

."

This statement was false. Neither Doyle nor any of the other named inventors

of

the '906 patent demonsfiated Web plug-in technolory to any of the founders of Netscape in
November orDecember of 1993.

310.

When Doyle made these statements under oatlu he also did not know whetlrer any

engineer employed by Sun Microsystems ever saw any of his demonstrations in November or
December of 1993.

3l

l.

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
o'Relevant

History of DHOE' @oyle's name for his invention), Doyle included as a bullet point:

"1993 Demos to Sun & Netscape's Founders."

312.

Doyle's false statements in his declaration were material to ttre patentabilþ 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
technolory was responsible for their commercial success.

Page 53

313.

By making these false statements under oath to the Patent Office, 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 was ûying to

convince the Patent Office that the Netscape and Sun products succeeded because they
incorporated his alleged invention.

314.

Doyle's submission of false stiatements 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 Ofüce.

315. A judicial determination of the respective rights of the parties with respect

to the

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

u.s.c. s220t.
ELEVENTH DEFENSE

316.

To the extent that Plaintiffs claims are based on acts performed by the Microsoft

Explorer browser or a user's use thereot there can be no direct, and, therefore, no indirect
infringement due to Microsoft's purported license to the'906 Patent and/or the'985 Patent.

T\ilELFTH DEFENSE

317.

Plaintiff s claims are barred by the equitable doctrines of laches, waiver, and/or

unclean hands.

THIRTEENTH DEFENSE

318.

To the extent Plaintiff seeks damages for alleged infringement more than six years

prior to filing of this action, the relief sought by Eolas is barred by 35 U.S.C. $$ 286, 287, and
288. In particular, Plaintiff has stipulated that it will not seek pre-suit damages in this action.

Page 54

FOURTEENTH DEFENSE

319.

Plaintiff s claims against Frito-Lay are barred by the doctrine of patent exhaustion

to the extent Plaintiff has already exhausted its rights to the'906 and/or the'985 Patent.

FIF'TEENTH DEFENSE

320. Plaintiffs claims against Frito-Lay are barred to the extent that Frito-Lay is a
third-party beneficiary to an express or implied license granting rights to the '906 and/or '985
Patent, including without limitation licenses to Microsoft, Oracle, and Apple.

SIXTEENTH DEFENSE

321. Plaintiffs claims

against Frito-Lay are barred

by the doctrine of

equitable

estoppels.

SEVENTEENTH DEFENSE

322. Plaintiffs claims are improper to the extent that Plaintiff

seeks asserted

infringement of claims that are subject to Frito-Lay's intervening rights.

COI'NÏERCLAIIìIS

323.

Frito-Lay incorporates its responses as set forth above as though fully set forth

324.

Frito-Lay has not directly or indirectly infringed, contributed to or induced

herein.

infringement of any valid or enforceable claim of the '906 Patent or the '985 Patent and has not
otherwise committed any acts in violation of 35 U.S.C. $271.

325.

The '906 Patent and the '985 Patent, and every claim thereot are invalid for

failing to meet the conditions for patentability as set forth in 35 U.S.C. $$100, l0l, 102, 103
and I12.

Page 55

326. The '906 Patent and the '985 Patent, and every claim thereof,
unenforceable due

are

to inequitable conduct before the United States Patent and Trademark

Office.

327. An actual controversy
alleged infringement and

exists between Frito-Lay and Plaintiff concerning the

validþ of the '906 Patent and the '985 Patent by virtue of PlaintifPs

Complaint herein.

328.

Frito-Lay is entitled to judgment from this Court that no claim of either the

'906 Patent or the '985 Patent has been infringed by Frito-Lay, and that all claims are invalid.

329.

This is an exceptional case entitling Frito-Lay to an award of its attorney's fees

inctnred in connection with this action pursuant to 35 U.S.C. $285.

330.

Frito-Lay continues to investigate this matter and reserves the right to amend its

Answer and/or Counterclaims to assert any additional defenses or counterclaims that come to
light upon further investigation and discovery.

PRAYER FOR RELIEF
WHEREFORE Frito-Lay prays that:

331.

the Court dismiss the Complaint against Frito-Lay with prejudice;

332.

the Court declare that Frito-Lay has not and does not infringe the '906 Patent or

the'985 Patent;

333.

the Court declare that the '906 Patent and the '985 Patent are invalid;

334.

the Court declare that the '906 Patent and the '985 Patent are unenforceable;

335.

the Court declare that Eolas is not entitled to any remedy or relief whatsoever

against Frito-Lay;

Page 56

336.

the Court award Frito-Lay its costs, together with reasonable attorneys fees and

all of its expenses for this suit because this is an exceptional

337.

case under 35 U.S.C. $285; and

the Court award Frito-Lay such other relief as this Court may deem just and

proper at law or in equity.

Dated: October

14,2011.

Respectfully submitted,
/s/ Jefrqv F. Yee

GREENBERG TRAURIG LLP
Jeffrey K. Joyner (admittedpro hac více)
[e-mail]
Jeffrey F. Yee (admittedpro hac více)
[e-mail]
2450 Colorado Avenue, Suite 400E
Santa Monica, California 90404
Telephone: (3 l0) 586-7700
Facsimile: [phone]
Drvayne L. Mason
Te><as Staæ Bar # 007 87 977
[e-mail]
1000 Louisiana Stneet, Suite 1700
Hor¡storu Texas 77002
TeL [phone]
Fax [phone]

POTTER MINTON P.C.
Douglas R. McSwane, Jr.
dougmcswane@potterminton. com
I l0 N. College Street, Suite 500
Tyler, Texas 75702
Tel: [phone]t1
Fax: [phone]

ATTORNEYS FOR DEFEI\IDAIIIT
FRrT(>r"AYrINC.

Page57

CERTMTCAÏE OFSERVICE
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 CI\4/ECF
system per Local Rule CV-5(aX3) this l4th day of October

will be served by facsimile

20ll. Any

other counsel of record

transmission and/or electronic mail pursuant to Local Rule CV-

s(d).
/s/ Jeffrev F- Yee
Jeffrey F. Yee

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