Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1058

AMENDED ANSWER to PLAINTIFF'S THIRD AMENDED COMPLAINT, COUNTERCLAIM against Eolas Technologies Incorporated by Frito-Lay, Inc.. (Yee, Jeffrey)

IN THE UMTED STATES DISTRICT COURT
F'OR THE EASTERN DISTRICT OF TEXAS

TYLER DIVISION
Eolas Technologies Incorporated,

s
$
$

Plaintiff,

$

v.

s
s

Adobe Systems Inc., Amazon.comn Inc.
Apple Inc., Blockbusterlnc., CDW Cor?,
Citigroup Inc., eBay Inc., Frito-Lay, fnc.,
The Go Daddy Group,Inc., Google fnc.,
J.C. Penney Company, Inc., JPMorgan
Chase & Co.o New Frontier Media, Inc.,
Office Depot, Inc., Perot Systems Corp,
Playboy Enterprises Internationa[ fnc.,
Rent-A-Center, Inc., Staples, Inc., Sun
Microsystems Inc., Texas Instruments
Inc., Yahoo! Inc., and YouTube, LLC,

$

s
s
s
s

Civil Action No. 6:09-cv-00446-LED

$

s
$

s
$

s
$

Defendants

s
s

DEFENDANT FRrTO-LAY, INC.'S CORRECTED ANSWER
TO PLAINTIFF'S THIRD AMEIIDED COMPLAINT

Defendant Frito-Lay,

Inc. ("Frito-Lay") hereby submits its Answer to

Eolas

Technologies Incorporated's ("Eolas" or "Plaintiff') Third Amended Complaint ("Complaint,"

Dkr.89l):
ANSWER

I.

1.

PARTIES

Frito-Lay lacks suffìcient knowledge or information to form a belief as to the

truth of the allegations contained in Paragraph

I

of the Complaint and, therefore, denies them.

Page

I

2.

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

truth of the allegations contained in Paragraph

3.

1

of the Complaint and, therefore, denies them.

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 sufficient 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 sufficient 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

8

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 8 and, therefore, denies them.

Page2

9.

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 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

10

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 l0 and, therefore, denies them.
I

l.

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

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 1l and, therefore, denies them.

12.

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 l3

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 l3 and, therefore, denies them.

II.
14.
fully set forth

JURISDICTION AND VENUE

Frito-Lay incorporates its responses contained in Paragraphs l-13 as though
here.

Page 3

15.

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

arise under the patent laws of the United States, 35 U.S.C. $ 101 er seq. Frito-Lay admits that this

Court has subject matter jurisdiction over this action.

16.

Frito-Lay admits that it is subject to this Court's personal jurisdiction. 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 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 Paragraph2T and,therefore, denies them.

III.
18.
fully set forth

19.

PATENT INFRINGEMENT

Frito-Lay incorporates its responses contained in Paragraphs l-17 as though
here.

From the face of the United States Patent 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 sufTicient knowledge or

information to form a belief as to the truth of the 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.

2I.

Frito-Lay is not required to answer to the allegations contained in Paragraph2l

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

2l

and, therefore, denies them.

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22.

Frito-Lay is not required to answer to the allegations contained inParcgraph22

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 Paragraph22 and,therefore, denies them.

23.

Frito-Lay is not required to answer to the allegations contained inParagraph23

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 Paragraph23 and,therefore, denies them.

24.

Frito-Lay is not required to answer to the allegations contained in Paragraph24

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 Paragraph24 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 andlor the '985 patent.

26.

Frito-Lay is not required to answer to the allegations contained in Paragraph26

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 Paragraph26 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

Page 5

lacks sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph2T and, therefore, denies them.

28.

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

29.

Frito-Lay is not required to answer to the allegations contained in Paragraph29

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 Paragraph29 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 sufficient knowledge or information to form a belief as to the truth of the allegations
contained in Paragraph 30 and, therefore, denies them.

31.

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

31

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

32.

3l

and, therefore, denies them.

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 sufficient

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

Page 6

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 sufficient

knowledge or information to form a belief as to the truth 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 suffîcient

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

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 sufficient

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.

TV. PLAINTIFFNS PRAYER FOR RELIEF

36.

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

Frito-Lay.

V.
37.

JURY DEMAND

No response is required to Plaintiffs jury demand.

PageT

DEFENSES

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
denominated herein. Frito-Lay reserves the right

to amend its Answer to add

are

additional

Defenses.

FIRST DEFENSE

39.

Frito-Lay has not and does not directly

or indirectly (by

inducement,

contributory infringement, or otherwise) infringe any of the claims of the '906 patent or the '985
patent either literally or under the Doctrine of Equivalents.

SECOND DEFENSE

40.

The '906 patent and the '985 patent are invalid or void for failing to satisfu the

conditions of patentability as set forth in 35 U.S.C $g I 00,

l0l,

102, I 03 and/or I 12.

THIRD DEFENSE

4I.

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

'985 patent to be infringed literally or by the Dochine 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 dwing prosecution of the patents in suit or because of the disclosure or
language of the specification or claims thereof.

FOURTH DEIIENSE

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 thereof, failed to
properly 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

Page 8

not liable to Plaintiff for the acts alleged to have been performed before Frito-Lay received
notice that it was allegedly infringing the '906 and/or the '985 patent.

FIFTH DEIIENSE

43.

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

44.

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

herein.

contributory inûingement or inducement, Frito-Lay is not liable to Plaintiff for the acts alleged to

have been performed before Frito-Lay knew that

its actions would cause the

indirect

infringement.

SD(TH DEIMNSE

45.

Plaintiff

s 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 entity
having an express or implied license to the '906 and/or the '985 patent.

SEVENTH DEFENSE

46. On information

and beliet Plaintiffs 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.

EIGHTH DEFENSE

47.

Plaintiff is not entitled to any injunctive relief

as demanded because any

injury

to Plaintiff is neither immediate or irreparable, and Plaintiff has adequate remedies at law.

I\INTTI DEFENSE

48.

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

prosecution laches.

Page 9

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.

A. Overview

l. Dovle and Krueeer had a dutv of candor and sood faith in dealine with the
Patent Office

50.

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

U.S. PatentNos. 5,838,906 and 7,599,985.

51.

Charles E. Krueger ("Krueger") was the patent prosecutor for the patents-in-suit,

U.S. Patent Nos. 5,838,906 and7,599,985.

52.

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

a

duty of candor and good faith in dealing with the United States Patent and Trademark Office
("the Patent Office") during prosecution of the '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 of candor and good faith owed by Doyle and Krueger included a duty to

disclose to the Patent Office all information known to that individual to be material to
patentability as definedin3T C.F.R. $ 1.56.

2
55.

Dovle had a financial incentive to deceive the Patent Office

Doyle had a furancial incentive to deceive the Patent Ofïice dwing prosecution of

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

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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-inventors are entitled to receive a portion of any royalties

paid to The Regents of the University of California related to the '906 and/or '985 patents.

59.

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

60.

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

61.

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

62.

On or about August

Eolas.

2I, 1995, Eolas acquired rights to the patent application

that matured into the '906 patent.

63.

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

reexaminations of the '906 patent, and the prosecution of the'985 patent at the same time that he
had a financial interest in Eolas and a financial interest in any royalties on the '906 and/or'985
patents paid to The Regents of the University of California.
3. Dovle and Krueger breached his dutv of candor and good faith with an
intent to deceive the Patent Ofïice

64.

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

candor and good faith in dealing with the Patent Offrce. 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 withheld, with knowledge of the

falsþ of the

misrepresentations, and with the specific intent to deceive the Patent Office. The circumstances

Page I

I

of Doyle and Krueger's actions confirm an intent to deceive the Patent Office.
B. Dovle and Krueeer failed to disclose material information related to the ViolaWWW

browser

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 ViolaWV/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 Office.

66.

As explained in more detail below, the ViolaWWW browser was material to the

patentability of all the claims of the '906 patent because it disclosed limitations that the Patent

Office believed were missing in the prior art, including interactivity embedded wíthin the
webpage (as opposed to a separate window), automatic invocation of the interactivity (as
opposed to requiring a mouse click to enable the interactivrty), and use of a separate executable

application (as opposed to a script). Doyle and Krueger knew that the ViolaWWW browser
disclosed these limitations, yet they withheld this information from the Patent Office at the same

time that they argued to the Patent Office that these limitations were missing from the prior art.

l.

Dovle and Krueser knew about the ViolaWWW browser before the

application for his '906 patent was filed on October

17.

1994

67.

The application for the '906 patent was fîled on October 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
patentabilþ.

Page12

69.

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

in Northem California named Pei V/ei had developed a browser called "ViolaW-W-W" before the

critical date of October 17,1993.

70.

On May 20, 1994, David Raggett sent an e-mail to Doyle regarding object level

embedding in web browsers. In this email, Raggett advised Doyle that he "might 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.

Raggett fl¡rther advised Doyle that he could "find a pointer to Viola offthe CERN

W"WW project page."

72.

Later on the same day, i|vf;ay 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 patent, responded to a posting from Pei Wei on a publicly-accessible e-mail

distribution list. Pei Wei's post had included the following statements: "In order to do better
testings [sic] and support of ViolaWWW, I would like to solicit donations for guest accounts on
the major Unix platforrns. . . . So,

if your organization

has some CPU crunchies to spare, good

network connectivity, don't have a firewall, want to help viola development, etc, please drop me

a note. Based mostly on network connectivity,

I'll

select one (maybe two) offer(s) for each

different platform." David Martin's response to Pei Wei included the following statements:

willing to discuss providing accounts on SGI IRIX 5.x, Solaris 2.x, Alpha OSF/I.

"I

am

Please let me

know what you require in terms of disk space, compiler, utilities, etc..."

73.

Thus by

patent was frled

74.

-

}v4.ay

20, 1994

-

several months before the application for the '906

Doyle knew about Pei Wei's ViolaWWW browser.

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

Page 13

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

75.

Doyle learned even more about the ViolaWWW browser before the application

for the '906 patent was filed.

76.

On August 30, 1994, at approximately 1l:15 p.m. Califomia time, Doyle posted a

"Press Release" to the publicly-accessible VRML e-mail distribution list that included the

following statements:

at the U. of California have created software for
embedding interactive program objects within hypermedia
Researchers

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 World V/ide'Web on the Internet.

77.

On August 31, 1994, at approximately 6:52 p.m. Califomia time, Pei Wei posted a

response on the publicly-accessible

statements:

VRML e-mail distribution list that included the following

"I don't think this is the first case of program objects embedded in docs and

transported over the WWW. ViolaWWW has had this capabilities for months and months now."

78.

Pei Wei's response included a link to an FTP site where anyone "interested in

leaming more about how violaW'WW does this embedded objects thing can get a paper on it."

79.

The paper cited by Pei Wei was entitled

"A Brief Overview of the VIOLA

Engine, and its Applications."

80.

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

-

over two months

before the application for the '906 patent was fìled.

81.

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

Embedding mini applications

Page 14

Viola's language and toolkit allows ViolaWWW

to

render
documents with embedded viola objects. Although the viola language
is not part of the V/orld Wide 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 validity of the
entered data before even making a connection to the server.

or, 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 of the document.

ntinuous

pdating Fie

Activity monitor:
The above montor application maintains a continuous network connection to a
server to llsten to a data stream.

other possible 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 straight off by 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 facility in viola.

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Chess Board
This is a demo a viola "application' (úre chess board) being retrieved via HTTP,
lnstantlated, and plugged lnto üls HTML document

IVhat follows is a screendump

of a demo of an embedded viola
application that lets readers of this HTML page conrmr¡nicate by typing or
drawing. Like the chess board application above, this chat application can
stand-alone (and have nothing to do with the ïVorld Wide Web), or be
embedded into aHTML document.
By the way, to make this possible, a multi-threaded/persistent

seryer
was written to act as a message relay (and to handle HTTP as well).

Page 16

I,JHO

fiighty:This is rÍe, Bighty, broadcasting myselt, Do you ccpy?
Lefty: Yeah, I cop/,
Lefty: That's rrry boat up there.,,,

SAY This is me, Bighty, broaelcasting mysell Do you cotly?

This next mini application front-ends a graphing process (on the same
machine as the viola process). An important 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.

it another wãy, because of the scripting capability, the
ViolaWW'W 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.
Put

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 features are oc¿ìssionally [sic] used, or as new accessories/components
are added.

such new accessories can be as simple as little applets that accompany

PagelT

documents, or conceivably as complicated as a news or mail reader. An
analogy is how Emacs's programming environment allows that text
editor to become much more than just a text editor.

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

Page

l8

Two Front-Ends
There're currentþ two front
XLib front-end, and the other

has úre native viola
front-end. The GUls layouts fur

rtVW. One

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 don't scroll away from view. Etc.

82.

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

83.

On August 31, 1994, at approximately 9:06 p.m. California time, Doyle

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

ool

don't think this is the first

case of program objects embedded in docs and transported over the W'W'W. ViolaWW'W has had

this capabilities for months and months now." Doyle responded by asking Pei V/ei, "How many
months and months? We demonstrated our technology in 1993."

84.

On August3l, 1994, at approximately 11:16 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 demonstrated thatplotting 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 programm able &
interactive objects into HTML documents.

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l9

85.

When Pei Wei referred to the "plotting demo (the very one shown in the viola

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

86.

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

certain computer manufacturer," he was refening to a demonsüation of the plotting demo to Ka¡l
Jacob and James Kempf from Sun Microsystems on May 7,1993. This demonstration took place

in Northern California. There was no limitation, restriction or obligation of secrecy on Karl
Jacob or James Kempf.

87.

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

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C. $
102(b)1." 399 F.3d 1325,1335 (Fed. Cir. 2005).

88.

On August 31, 1994, at approximately

ll: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

ViolaWW\M browser dated August 16,1994.

90.

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

I

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

counts, as

what

it calls

'embeddable program objects'

until 1994. . . . Furthermore, Viola merely

implements an internal scripting language . . . ."

91.

On August 31, 1994, at approximately 1l:36 p.m. California time, Doyle

responded to the message that Pei Wei had sent at approximately l1:16 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

Page20

responded to the message that Doyle had sent at approximately l1:13 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 l1:36 p.m.

94.

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

Well. Viola's model was *demonstratedx in 1993, *releasedx freely in
1994. . . . And, as for the plotting demo, it actually is really just a frontend 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 violaW"W'W has opened for it.

95.
September

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

l,

1994, and the copy

3l

and

of the Viola paper dated August 16, 1994, that he had

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

96.

Doyle was living in Northem Califomia on August 31, 1994, when he exchanged

messages with Pei lVei about the

97.

ViolaWWW browser.

Pei Wei was living in Northern California on August 31, 1994, when

he

exchanged messages with Doyle about the ViolaWW'W browser.

98.

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

Pei Wei's messages on August

99.

3l

and September

of

I,lgg4,about the ViolaWWW browser.

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

Wei's paper about the ViolaWWW browser dated August 16,1994.

100. On October

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

Martin were ¿unong those named as inventors.

l0l.

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

browser, but not the ViolaW'WW browser.

Page2l

102.

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

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

103.

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

included the following statements:

ool

believe I am . . . an original, first and joint inventor. . .

of

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

which

was filed on October 17,1994 as Application Serial No. 08/324,443..

acknowledge the duty

..I

to disclose information which is material to the examination of this

application in accordance with Title37, Code of Federal Regulations, Section 1.56."

104. No disclosure

about the ViolaWWW browser was ever provided to the Patent

Office during prosecution of application number 08/324,443, which matured into the '906 patent.

2. Dovle was reminded about the ViolaWWW browser in 1995 durine
prosecution of the t906 oatent

105. Doyle was reminded

about Pei V/ei and the ViolaWWW browser

in

1995, dwing

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

106.
o'Press

On August 21, 1995, at approximately I I;42 a.m. California time, Doyle posted a

Release" to the publicly-accessible WWW-talk e-mail distribution list. Doyle's post

included the following statements: o'Eolas Technologies Inc. announced today that

it

has

completed a licensing agreement with the University of California for the exclusive rights to a
pending patent covering the use of embedded program objects, or 'applets,' within World Wide
Web documents."

107. On August 21, 1995, at approximately

12.54 p.m. California time, Pei Wei

responded on the publicly-accessible WV/W-talk e-mail distribution list

to Doyle's

"Press

Page22

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'oinline"
program objects' was existing in ViolalVWW and was *released* to the public, and in full
sor¡rce code form, even back

in 1993... Actual conceptualization and existence occrrred before

093."

108. On August 21, 1995, at approximately

1:14 p.m. California time, Doyle

responded to the message Pei Wei had sent at approximately 12:54 p.m. Doyle's response

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

109. On August 21, 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 the following statements:

Please carefully re-read my letter to you... I said Viola was
demonstrated in smaller settings, but before your demo. The applets
stuff was demo'ed to whomever wanted to see it and had visited ow offrce
at O'Reilly & Associates (where I worked at the time).
This is what I wrote on the VRML list:
> Definitely by May 8,1993 we had demonstrated that plotting demo
> (the very one shown in the viola paper) to visitors from a certain
> computer manufacfurer... This demo was memorable because someone
and

I

> at ORA had lost sleep the night before the meeting, in order to cook up
> that particular plotting demo :) We had to show something cool.

That date (May 93), 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

Page23

applets in-lined into HTML documents etc., and with bidirectional
communications, then look at ViolaWWW as it existed aroundlate '92 early
'93.

ll0.

When Pei Wei referred to the "plotting demo (the very one shown in the viola

paper)," he was refening to the plot of the fighterjet shown above in the window titled "XPlot."
II

l.

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

the demonstration of the plotting demo to two Sun Microsystems employees that the Federal
Circuit has held o'was a public use under [35 U.S.C. $ 102(b)]." 399 F.3d 1325, 1335 (Fed. Cir.
200s).

ll2.

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

August 1993," he was referring to the "World-Vy'ide Web Wizards Workshop" held in
Cambridge, Massachusetts on July 28-30,1993.

I13. People attending the Wizards workshop

included Tim Berners-Lee, Marc

Andreessen, Eric Bina, Dale Dough"rty, Scott Silvey, and Pei Wei.

ll4.

Tim Berners-Lee and Dale Dougherfy were the organizers of the Wizards

workshop.

I15. Dale Dougherty worked at O'Reilly & Associates in Northern California.
116. ln
O'Reilly

&

1992, Dale Dougherty learned about Viola and recruited Pei Wei to join

Associates. Pei Wei's

job at O'Reilly & Associates was to continue developing the

ViolaWWW browser.

ll7.

Scott Silvey worked with Pei Wei at O'Reilly

& Associates in Northern

California.

118.

When Pei Wei wrote "This demo was memorable because someone and

I

at ORA

had lost sleep the night before the meeting, in order to cook up that particular plotting demo," the

Page24

other person he was referring to was Scott Silvey.

119.

Tim Bemers-Lee is the person generally attributed to be the inventor of the World

Wide Web.

120.

Marc Andreessen 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-Champaign.

121.

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

another popular browser for the World Wide Web.

122.

Pei Wei and Scott Silvey demonstated the ViolaWW'W browser and its

abilþ

to

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

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

123.

-

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

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

Wizards workshop.

124.

Pei Wei's demonstration at the Wizards workshop of the ViolaWWW browser

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

"VOBJF" tag was a public

125.

use under 35 U.S.C.

$ 102(b).

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

the ViolaWW'W browser was material prior art under 35 U.S.C. $ 102(b), Doyle never disclosed

the ViolaV/WW browser to the Patent Office during prosecution of application number
08/324,443, which matured into the '906 patent.

126.

Instead, Doyle deleted from his computer his emails with Pei Wei on August 21,

1995. Doyle kept on his computer other emails from that timeframe, however.

Page25

3. In 1998. durine prosecution of the'906 patent, Dovle collected additional
information about the ViolaWWW browser

127. In

1998, during prosecution

of the '906 patent, Doyle collected additional

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

I28.

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

129.

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

stuff."

August 31, 1994, at approximately 6:52 p.m. California time, in which Pei Wei told Doyle,

"[

don't think this is the first case of program objects embedded in docs and transported over the
WWW. ViolaWWW 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 31,1994, at approximately l1:36 p.m. California time, in which Doyle asked Pei Wei,

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

l3l. The "Viola stuff" folder included a printout from the URL
<http://www.w3.org/Histo{v/199
. This webpage has a heading for the
"WWww'izardsWorkshop" "Cambridge, Mass, July 1993* and includes links to
"Announcement," "Agenda," and "Photos of attendees."

132. 'ow"W'WwizardsWorkshop"

refers to the World-Wide 'Web Wizards Workshop

held in Cambridge, Massachusetts on July 28-30,1993, that Pei Wei attended.

133. The "Announcemenf' link links to
<http ://www.w3.

a

webpage

at

or/Histoqy/ I 99

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

Page26

134. The "Agenda"

link links to
<http://wvrw.w3.ore/History

a

webpage

at

that

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

135.

The webpages for the Wizards workshop corroborate Pei lVei's statement to

Doyle on August 21,1995, that the plotting demo described in the Viola paper dated August

16,

1994, was "shown to a bunch of attendees at the fust Web Conference in Cambridge" "around

August 93"

-

136.

over one year before the application for the '906 patent was filed.
The "Viola stuff'folder included a printout of a webpage with a link to the source

code for viola-2.|.2, archived on September 2, 1993

-

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 viola-2.I.2.The

date at the top of the

"README" file is July 27,1992.The ..README'

file includes instructions for building the binary code for the "viola" program, and instructions
for running the ViolaWWW browser. The "README' file states at the bottom:
Comments and questions:

Please send

WWW specific bugs to

wwwwwwt¿[e-mail]. and anything to [e-mail].
Pei Y. Wei
[e-mail]

[e-mail]. general comments

138. The "Viola stuff'folder

to

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

the publicly-accessible W'WW-talk e-mail distibution 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

Page27

the publicly-accessible WV/W-talk e-mail distribution list on February 25,1994, that included
the following statements:
The new ViolaW'WW is now available for ftp'ing. It's beta and
feedback is very welcomed. The README file follows...

ViolaW'WW, Version 3.0 Beta

Feb 23 1994

ViolaWWW is an extensible World Wide Web hypermedia browser for
XWindows.
Notable features in the new ViolaWV/W

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

Availabilþ
Source and binary can be found in ftp://ora.com/pub/wwdviola. Sparc

i::*

is suPplied.

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

140. The "Viola stuff" folder included a printout from the URL

<http://xcf.berkeley.ed

. The

printout included the following statements:

ViolaWWW, Version 3.1 Bet¿

Mar23 1994

ViolaWW'W is an extensible \üorld Wide Web hypermedia browser for
XWindows.
Notable features in the new ViolaWWW

*'E-U"¿¿uble in-document and in-toolbar programmable 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

Page 28

Source and binary can be found in ftp://ora.com/pub/wwdviola. Sparc
is suPPlied.

Ï:*

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

Pei

l4l. The "Viola stuff" folder included a printout from the URL
<http://xcf.berkeley.eduAft
. One of the files listed in the printout is
named "plotDemo.hftnl".

142. The "Viola stuff" folder included a printout from the URL

<http://xcf.berkeley.edu

. One of the files listed in the printout is

named o'plot.v".

143. The following is a screenshot of the ViolaWWW

browser after parsing the file

plotDemo.html:

Page29

ronl-Ending
Thls ls a demo of ViolaWWW enbeddlng a vlola front-snding object that ls progrsmmed
to starl up and communicate v¡ith a plot process.

144.

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

in the Viola paper dated August 16,1994.

145.

The file plotDemo.html specifies the location of the file plot.v, which in turn

specifies the location of a separate executable application named vplot.

146.

Pei Wei had told Doyle on August 31,1994 how the plotting demo worked: oo¡Als

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-

Page 30

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 V/ei had told Doyle on August

31,1994, and again on August 21,1995 that

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

148.

ooto

visitors from a certain computer manufacfurer" by May 8, 1993,

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

the demonstration of the plotting demo to two Sun Microsystems employees that the Federal
Circuit has held "was a public use under [35 U.S.C. $ 102(b)]." 399 F.3d 1325, 1335 (Fed. Cir.
200s).

149. Thus, during

prosecution of the '906 patent, Doyle knew about Pei Wei's

demonstration of the plotting demo that the Federal Circuit has held was a "public use" 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.

During prosecution ofthe '906 patent, Doyle printed webpages containing information

about a talk that Pei Wei gave atStanford University in Northem Califomia in September 1994.

l5l.

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

W\ilW Browsers: Extensibility
Pei Wei, O'Reilly

Issues

& Associates

Stanford Computer Forum W\ilW Workshop - September 20-

?l:"'o
Extensibility in WWW Browsers
The WorldWide\ü/eb is apowerful medium which has many
applications beyond just publishing static documents. It is
certainly an interface to the space of "documents." But already,

Page

3l

with 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 traditionally called
"applications."

ln 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 a system known as ViolaWWW.

Possible Ways to Extend Browsers

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

Work at O'Reilly & Associates: VIOLA-WW\il

This is the Viola system 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 next example is a front-end application to a backend. And the
back-end is what actually does the computation and the drawing.

Page32

ront-

g Exïernar Frograms

Thls is a demo of VlolnWWW embeOding a vlola ftont-endhg obJect ürat ls programmed
to slarrup.aäd communlcsts wlth:a pþt ÉrocosE.

152.

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

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

153. The plotting demo described in the talk at Stanford

University in September 1994

is the same plotting demo described in the viola paper dated August 16, rgg4.

154.

Pei Wei had told Doyle on August 31, 1994, and again on Augusr 21, lgg1,

that the plotting demo described in the Viola paper dated August 16,lgg4, was the oovery one"
demonstrated

ooto

visitors from a certain computer manufacfurer" by May 8, 1993.

Page 33

155. lWhen Pei Wei referred

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

the demonstration of the plotting demo to two Sun Microsystems employees that the Federal
Circuit has held "was a public use under [35 U.S.C. $ 102(b)]." 399 F.3d 1325,1335 (Fed. Cir.
200s).

156. Thus, during

prosecution of the '906 patent, Doyle was repeatedly confronted

with evidence that the ViolaWWW browser was material prior art under 35 U.S.C. $ 102(b), yet

Doyle never disclosed the ViolaWWW browser to the Patent Office during prosecution of
application number 08/324,443, 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 fax containing a number of references regarding the

ViolaWWW browser.

158. The fax sent to Krueger in August of 1998 was to allow him to analyze whether
the ViolaWWW browser, including the August 1994 Viola paper, should be submitted to the
Patent Office.

159.

Kruger was aware of Pei Wei's May 1993 demonstration of the ViolaWWW

browser to Sun Microsystems employees without a confidentiality agreements.

160. Krueger

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 ViolaW'W'W browser to the Patent Office.

16l.

Krueger had no reason to disbelieve Pei Wei's statements regarding the May 1993

demonstration of the ViolaW"W"W browser to Sun Microsystems employees.

162. Krueger

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

Page 34

disclose to the PTO the information he received regarding the ViolaWWW browser.

4. The

Viola\il\il\il

browser was material to the patentability of the '906

Patent

163. The VioIaIVIVW

browser was material to the patentability of the claimed

inventions in the '906 patent.

164.

There is a remarkable similarity between the ViolaWW'W browser and the

preferred embodiment of the '906 patent:

/.366

tdt :!. dffi Cv¡ltwìYw $búdn¡ r údôqril.crìd.ìg llls
þ f4!4.Àd ffirftr*¡cr¡á ¡p¡r prgort.

ü.4

Ð

p6lMñad

hftoclivc ,¡$rol¿¡6lio¡ ol

ViolalV\llV

o 7.

¡ck

old 3D

Fig. 9 of II.S. P¡¡tent No. 5,838,906

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

a

webpage. In the ViolaWWV/ 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, and Z

axes. Similarly, in the preferred embodiment of the '906 patent shown above, box 354 has three

slide controls to the right of the embedded image that rotate the image on the X, Y, and

Z axes.

Page 35

Thus, ViolaWV/W, 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

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

Materiality is defined in 37 CFR 1.56(b) and discussed herein at MPEP $
2001.05. In addition to prior art such as patents and publications,3T
CFR 1.56 includes, for example, information on possible prìor public uses,
sales, offers to sell, derived knowledge, príor ínventíon by ønother,
inventorship conflicts, and the like. [emphasis in bold added]

166.

The Manual of Patent Examining Procedure in force today contains similar

language:

Materiality is defined in 37 CFR 1.56(b) and discussed herein at MPEP $
2001.05. In addition to prior art such as patents and publications,3T CFR
1.56 includes, for example, information on >enablement,( possìble príor
public øses, sales, offers to sell, derived knowledge, príor invention by
another, inventorship conflicts, and the like. f'Materiality is not limited to
prior art but embraces any information that a reasonable examiner would be
substantially likely to consider important in deciding whether to allow an
application to issue as a patent." Bristol-Myers Squibb Co. v. RhonePoulenc Rorer, Inc.,326F.3d 1226,1234,66 USPQ2d 1481, 1486 @ed. 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 ViolaWrüW browser was material to

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

168. The Federal Circuit

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

of the '906 patent anticipated by the ViolaWWW browser under 35 U.S.C. $ 102(a), (b), and/or
(g). See 399 F.3d 1325, 1329, 1332-35 (Fed. Cir. 2005).

169. The Federal

Circuit held that "Wei's

lll4Lay

7,1993 demonstration to two

Sun

Microsystems employees without confidentialþ agreements was a public use under [35 U.S.C. $
102(b)J." 399 F.3d 1325,1335 (Fed. Cir. 2005).

Page 36

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 399 F.3d 1325, 1335 (Fed.
Cir.2005).

171. The Federal Circuit held that a district court could find that Doyle had committed
inequitable conduct by failing to disclose the ViolaWWW browser to the Patent Office. See 399
F.3d 1325,1336 (Fed. Cir. 2005).

172. Thus, Krueger was aware that the Federal Circuit confirmed that the ViolaWWW
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
ViolaWW'W browser was material to the patentability of the claimed invention in the '906 patent
he did not disclose any additional information to help the Patent Office consider ViolaW"W"W
browser.

174. The Patent Ofñce has also confirmed

that the ViolaWWV/ browser was material

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

175.

On or about July 30, 2007, during the 2005 reexamination of the '906 patent, the

Patent Office rejected all claims of the '906 patent as being anticipated by DX95, which includes
a copy

of the text found in Pei Wei's Viola paper dated August 16,1994.

176.

Pei Wei had told Doyle on August 31,1994, 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 OfÏice during the original examination of the '906 patent.

177.

Even

if 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 ViolaWWW browser that existed before the invention date for the'906

Page37

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 ViolaW\il-W browser software that was demonstrated to Sun Microsystems

on May 7, 1993

-

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

179.

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

180.

Thus, the ViolaWWW browser software that was described in the Viola paper

t993.

dated August 16, 1994, and demonstrated

to Sun Microsystems on

lllday

7,1993,

also

corroborates anticipation of the claimed inventions in the '906 patent under 35 U.S.C. $ 102(g).

l8l.

Neither reexamination of the '906 patent considered whether the claimed

inventions were anticipated by "Wei's }l4;ay 7,1993 demonstration to two Sun Microsystems
employees without confidentiality agreements" which the Federal Circuit has held was a "public
use under [35 U.S.C. $ 102(b)]." 399 F.3d 1325,1335 (Fed. Cir. 2005).

182. ln an ex parte reexamination,

"[r]ejections will not be based on matters other than

patents or printed publications, such as public use." ,See Manual of Patent Examining Procedure

(MPEP) $ 22s8(r).

183.

Krueger knew that the Patent Office could not consider public use art during aî ex

parte reexamination.

184.

The Patent Office had the authority during the original examination of the '906

patent to issue a rejection based on the "public use" provision 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 ViolaWWW browser was in'þublic use" more than one year before the
application for the '906 patent was filed.

Page 38

185. On information
the '906 patent

and beliet the Patent Ofüce would not have allowed the claims

if Doyle or Krueger had not engaged in inequitable

of

conduct and instead had

fulfilled their duty of candor and good faith in dealing with the Patent Office.
Krueger intended to deceive the Patent Office durine prosecution
of the'906 patent

5. Dovle and

186.

During prosecution of application number 081324,443, 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 about the
ViolaWWW browser and embedded objects; the communications with Pei Wei in 1994 about
the ViolaWWV/ browser and the embedded interactive plotting demo that was in public use

in May

1993; the Viola paper describing the ViolaWW'W browser and the

embedded

interactive plotting demo that was in public use in i|ullay I993;the communications with Pei Wei in
1995 about the ViolaWWV/ browser and the embedded interactive plotting demo that was in

public use in May 1993 and again at the Wizards conference in July 1993; the contents of the

"Viola stuff' folder that Doyle maintained, which included 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 }l4iay 1993; and Pei

Wei'

s

talk at Stanford in September 1994 about the embedded interactive plotting demo that was

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 at least the August 1994 Viola paper,

Doyle's communications with Pei Wei

n 1994 about the ViolaW'W'W browser and the embedded

interactive plotting demo that was in public use in May 1993; the Viola paper describing the

Page 39

ViolaWWV/ 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 links to the ViolaW'WW browser software, including source code for the embedded
interactive plotting demo that was in public use in May 1993.

188.

Doyle and Krueger withheld information about the ViolaWWW browser with the

specific intent to deceive the Patent Office.

189.

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

'906 patent.

190.

The Viola\iVWW browser threatened the patentability of the claimed inventions in

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

l9l.

Doyle was personally involved in the prosecution of application number

081324,443, 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 Office.

193.
Patent Ofüce

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

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

application.

194.

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

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

195. On or about May 27, 1997, Doyle signed a 2$-page declaration

(including an

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

Page 40

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, 1997,Doyle signed another

declaration that was

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

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 Office

during prosecution of the '906 patent.

200.

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

of application number

081324,443, which matured into the '906 patent, Doyle never disclosed the

ViolaWWW browser to the Patent Office during that prosecution.

201.

The circumstances of Doyle and Krueger's actions demonstrate an intent to

deceive the Patent Office.

202.

For example, during prosecution of the '906 patent, Doyle made arguments for

patentability that could not have been made if he had disclosed the ViolaWW"W browser to the
Patent Office.

203.

On or about lllf:ay 6, 1996, the Patent Office rejected several claims as being

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

204.

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

Page

4l

Patent Office.

205.

Doyle personally reviewed and approved the response submitted to the Patent

Office on or about August 6,1996.

206.

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

statements:

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

207.

If Doyle or Krueger had disclosed

the

ViolaWWW prior art to the Patent Office, 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

208.

a

portion of the original document is displayed."

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

obvious in light of "Khoyi et al. US Patent 5,206,95I" in combination with other prior art.

209.

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

210.

Doyle and Krueger personally reviewed and approved the response submitted to

Office.

the Patent Office on or about June 2,1997.

2ll.

The response submitted on or about June

2,

1997, included the following

statements:

[T]here is no suggestion in Khoyi of modifying Mosaic so that an external

Page42

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 Krueger had disclosed

the

ViolaWWW prior art to the Patent Office, 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 "an external application [that] is invoked to display

and interactively 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 response to this rejection was submitted to the

Patent Office.

215.

Doyle and Krueger personally reviewed and approved the response submitted to

the 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 extemal 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 ViolaWWW prior art to the Patent Office, 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."

Page 43

218.

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

if

Doyle or Krueger had disclosed the ViolaW\ilW prior art demonstrates an intent to deceive the
Patent Office.

219.

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

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

220.

.

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

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

it *rocks*," "It's

the most exciting thing to happen to the 'Web since

viola." Doyle's response included the following statements:

If you take a close look at Java, you'll realize that it bears a close similarity
to Viola, since the "applets" must be coded from a predefined language,
downloaded and locally interpreted.

221.

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

Patent Office. 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 attributable to the claimed
features of the invention.

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

Page 44

allow an embed text format (the applet tag) within a Web document to
be parsed by a V/eb browser to automatically invoke an external executable
application to execute on the client workstation in order to display an

external object and enable interactive processing of that object within a
display window created at the applet tag's location within the hypermedia
document being displayed in the browser-connolled window. The book's
authors further emphasize the novelty and nonobviousness of this
technology when they say, "Quite simply, Java-powered 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 Web browser
such as Hotlava to view and hear these pages and to interact with
them; otherwise, all you'll access is static Web pages minus the special
effects."

The above citations, as well as the additional details given in
Appendix A, provide ample evidence of the commercial success of
products incorporating features of the claimed invention, as well as
evidence of the widespread acclaim that these products have gamered for
the technical innovations which the features of the claimed invention
allowed them to provide. They futher show that the successes of these
products was a direct result of the features of the claimed invention, which
they incorporated through implementatíon of an embed textþrmat that is
parsed by a l\leb browser to automatically invoke an external
executable application to execute on the client workstation in order to
dßplay an external object and enable interactive processing of that object
within a display window created at the embed text format's location
withín the hypermedia document being dßplayed in the browser-connolled
window.

222.

The declaration Doyle signed on or about

,Ìi4ay

27, 1997, made no mention of

Viola or the ViolaWW'W browser.

223.

Doyle and Krueger's 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 filed, demonstrates an intent to deceive the Patent Ofüce,

especially given Doyle's belief that Viola was similar to Java and that Java embodied the

Page 45

claimed invention.
6. Between 1999 and 2003. Dovle learned about additional Viola prior art"
and learned that an expert in the field believed that the plottine demo for
the ViolaWWW browser anticipated the asserted claims of the '906

Patent

224.

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

225.

Doyle personally guided Eolas through the litigation concerning the validity of

the '906 patent.

226.

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

the ViolaV/WW browser anticipated the asserted claims of the '906 patent.

227.

The plotting demo relied on by the third pa4y to prove anticipation of the asserted

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 "public use" on May 7, 1993,399 F.3d 1325,
1335 (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 patent, the third parly 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 paffy served an expert

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

When
ViolaïVWW
encountered
the
tag
<VOBJF>/usr/work/viola/apps/plot.v<A/OBJF), âtr embed text format
specifying the location of an object, it looked in the specified path for
at least part of the object, parsed 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
display of and user interaction with the object at a location within a display
area within the document being displayed in the browser-controlled
window corresponding to the location of the embed text format in the
Page 46

document. Subsequently, when the user interacted with the object,
ViolaV/W"W sent messages to vplot based on the user input and received
ouþut from vplot, thus updating the display of the object.

230.

Similarly, at a trial in 2003 concerning the

validþ of the '906 patent, Dr. Kelly

testifìed that the plotting demo involving the ViolaV/V/V/ browser anticipated the asserted
claims of the '906 patent, and he specifically identified the VOBJF tag, the plot.v file, and the
vplot executable application for purposes of his anticipation analysis.

231.

Pei Wei also testified at the trial in 2003 about the ViolaWWW browser and the

plotting demo.

232. At the trial, exhibit DX34 included source code for the ViolaWWW browser
dated ill4;ay 12,1993.

233. At the trial, exhibit DX37
dated

lùv4ay

included source code for the ViolaWWW browser

27,1993.

234.

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

Microsystems on I|v4.ay'7,1993, in Northem California.

235.

DX37 contains code for

236.

On May 31, 1993, Pei Wei posted DX37 on a publicly-accessible lntemet site and

a

plotting demo similar to the plotting demo in DX34.

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

237.

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

before the application for the '906 patent was filed.

238. Dr. Kelly testified

that the plotting demo in DX34 and DX37 anticipates the

asserted 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 DX37.

239.

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

Page 41

jury to conclude that DX37 anticipates at least claims I and 6 of the '906 patent. See 399 F.3d
1325,1335 (Fed. Cir. 2005).

240.

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

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

241.

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

242.

Doyle attended the trial involving the third party held in July and August2003.

243.

By the end of the trial in August 2003, Doyle knew about and understood the third

2003.

parly's contention that the plotting demo involving the ViolaWW'W browser in DX37 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 31, 1993
was filed

-

-

over one year before the application for the '906 patent

he posted DX37 on a publicly-accessible Internet site and notified an engineer at

Sun Microsystems that DX37 was available for downloading.

7.

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

245.

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

a

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

246. During the 2003 reexamination, Doyle withheld information about the
ViolaWWW browser with the specific intent to deceive the Patent Office.

247.

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

'906 patent.

Page 48

248.

The ViolaWWW browser threatened the patentability 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 patent.

250.

For example, on or about April27,2004, Doyle and Krueger participated in an

examiner interview in an effort to confirm the patentability of the claims of the '906 patent
application. Doyle gave the examiner a presentation supported by approximately 22 slides
prepared by Doyle and Krueger, none of which discussed DX37 or the ViolaWWW browser.
Neither Doyle nor Krueger mentioned the ViolaW'WW browser dwing the interview.

251.

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

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

This declaration made no mention of DX37 or the ViolaWW'W browser.

252.

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

interview in an effort to confrrm 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 DX37 or the

ViolaWWW browser.

253. During the 2003 reexamination, Doyle and Krueger submitted selected
information from the litigation with the third parfy concerning the validity of the '906 patent, but
he withheld information that would have identified for the examiner the key features of the prior
art ViolaW'WW browser and how they matched up to the asserted claims of the '906 patent. This

proved critical during the 2003 reexamination because when the examiner decided to look at the
source code for the ViolaW-WW browser, he missed the key points.

254.

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

Page49

Office a CD containing two compressed zip files, one for the "DX34" version of the ViolaW'WW
source code dated May 12, 1993, and the other for the "DX37" version of the ViolaWWW
source code dated

255.

lùuf.ay

27,1993.

The compressed zip file for DX34 that Doyle and Kruger submiued to the Patent

Ofïìce was named viola9305l2.tar.gz.zip. When urzipped, it conøined 1,027 files in 35 folders
consisting of

I

256.

total megabytes in size.
The compressed zip file for DX37 that Doyle and Krueger submitted to the Patent

Ofïice was named violaTOGO.tar.Z.zip. 'When unzipped, it contained 1,030 files in 34 folders
consisting of 7.7 total megabytes in size.

257.

DX34 and DX37 contained source code for the ViolaW'WW 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 ViolaWrù/W browser in operation.

260.

Given the voluminous nature of the contents of DX34 and DX37, and the

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

261.

Doyle and Krueger were not candid and instead withheld material information

that would have assisted the Patent Office in understanding the contents of DX34 and DX37.

262.

Doyle and Krueger did not disclose the full contents of DX34 and DX37 in their

entirety to the Patent Office dwing the first reexamination of the '906 patent.

Page 50

263.

The full contents of DX34 and DX37 were not submitted in their entirety until the

Invention Disclosure Statement filed onNovember I,2006.

264.

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

to the Patent Office the trial testimony of Pei V/ei, who testified about the plotting demo in
DX34 and DX37; Doyle and Kruger did not disclose the trial testimony of Dr. Kelly, who
testified that the plotting demo in DX34 and DX37 anticipated the asserted claims of the'906
patent; 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 that

DX37 anticipates at least claims

I

and 6 of the'906 patent.399 F.3d 1325, 1335 (Fed. Cir.

200s).

266.

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

Kelly's testimony to the Patent Office 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 27,2005, the examiner issued a statement for reasons of

patentability in which the examiner confirmed the patentability of claims

l-10 of the'906

patent.

268.

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

testified anticipated the asserted claims of the '906 patent.

269.

V/hen the examiner considered DX37, the examiner did not know where to look

or what to look for. There were too many files in DX37 for the examiner to read himself.

Page

5l

Thus, the examiner was forced to resort to running text searches across all the files in DX37 in the
hope of stumbling across relevant information.

270.

The examiner used the "dtSearch" program to index and text search all DX37

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

if Doyle or Krueger

what to look for, but he never told the examiner. For

had told the examiner to look for plot.v, the examiner's text

searches would have quickly found the plotting demo that

Dr. Kelly had testified anticipated the

asserted claims of the '906 patent.

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 satisfu the

"executable application" requirement of the claims of the '906 patent, and thus the examiner
concluded that DX37 does not anticipate the asserted claims of the '906 patent.

276.

The ViolaW'W"W source code teaches two ways of creating interactive webpages

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

All

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

Page 52

that contains the object (such as plot.v). The examiner did not consider this second way during
the 2003 reexamination; he only considered the first way, and thus erroneously confirmed the
patentability of the asserted claims of the '906 patent.

277.

The examiner's reasons for patentability included the following statements:
The Viola system uses "C-like" Viola scripts that must be
INTERPRETED by the browser and then TRANSLATED or
CONVERTED into binary native executable machine code that can be
understood by the CPU. Altemately, the Viola script is
precompiled into intermediate byte-code form and the byte-code is interpreted
(i.e., translated) into binary native executable machine code at runtime. This
extra step of translation results in an unavoidable performance penalty, as
interpreted applications run much slower than compiled native binary
executable applications.
Accordingly, the o'C-like" Viola scripts (or corresponding bytecode
representations) are not "executable applications" . . . .

278.

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

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 DX37.

280. Doyle and Krueger knew that the plotting demo used a separate executable
application for at least the following reasons:

(l)

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."

(2)

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

following statements: "[A]s for the plotting demo,

it actually is really just a

Page 53

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 sirnple protocol such that the frontend 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."

(3)

The source code listed in the "Viola stuff' file included the file

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

front-ending object that is programmed to start up and communicate with a plot
process. The front-end tells the plot progftrm the window ID to draw to, and gives it
the camera coordinate changes." When the

file plotDemo.html is parsed, it shows

the plot of a fighter jet in a window titled "XPlot."

(4) Pei Wei's

presentation at Stanford in September 1994, which included

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

a

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

drawing." lncluded with the presentation was a screenshot of the ViolaWWW
browser after parsing the file plotDemo.hünl. The screenshot shows the plot of a
fighter jet in a window titled "XPlot." The text in the webpage states, "This is
a demo

of ViolaWWW embedding

a

viola front-ending object that is programmed

to start up and communicate with a plot process. The front-end tells the plot
program the window ID to draw to, and gives it the camera coordinate changes."

(5) The trial testimony of Pei Wei.
(6) The expert opinion of Dr. Kelly.

Page 54

281.

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

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

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

with Doyle and Krueger's prior failure to disclose the ViolaWWW browser during the original
prosecution of the '906 patent, constituted a knowing and intentional violation of their duty of
candor and good faith in dealing with the Patent Office.

282.

On information and belief, the Patent Office would not have confirmed the

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

if

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

8.

283.

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

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

'906 patent.

284.

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

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

285.

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

'906 patent.

286.

The ViolaWW.W browser threatened the patentabilþ of the claimed inventions in

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

287.

Doyle and Krueger were personally involved in the 2005 reexamination of the

'906 patent.

Page 55

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 Office

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

290.

On or about

Ilu4ay

9,2008, Doyle and Krueger participated in another examiner

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

291.

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

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

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

294.

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

l994,to the Patent Office on or about August 21,2006.

295.

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

August 16,1994 to the Patent Office.

296.

Doyle knew about the Viola paper no later than August 31, 1994, but Doyle

waited over 10 years

-

and two prosecutions of the '906 patent

-

to disclose that paper to the

Patent Office.

Page 56

297.

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

waited 8 years

-

and fwo prosecutions of the '906 patent

-

to disclose that paper to the Patent

Office.

298.

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

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

299.

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

ViolaV/W\il browser was material prior

300.

art.

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.

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 on DX37, which

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

303.

The conclusions aboutDx3T reached in the 2003 reexamination were enoneous

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.

Dovle submitted false statements about the secondarv considerations of
non- obviousness

Page 57

305.

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

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

306.

Specifically, oil or about June 2, 1997, Doyle submitted to the Patent Office a

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

307.

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

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

part, commercial success of products incorporating features of the claimed invention and
industry recognition of the innovative nature of these products."

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 demonstrated the first Web plug-in and applet technolory to the founders
Netscape and engineers employed by Sun Microsystems in November and December
described in reference #4 from Appendix

A (Dr. Dobb's

1993, as

Journal, 2/96), both Netscape and Sun

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

309.

of

of

."

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

the '906 patent demonstrated Web plug-in technology to any of the founders of Netscape in
November or December of 1993.

310.

When Doyle made these statements under oath, he also did not know whettrer any

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

Page 58

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
"Relevant History of DHOE' (Doyle'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 the 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
technology was responsible for their commercial success.

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 trying to

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

314.

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

Office constituted a knowing and intentional violation of his dufy of candor and good faith in
dealing with the Patent Office.

315. A judicial determination of the respective rights of the parties with respect to the
unenforceability of the claims of the '906 patent is now necessary and appropriate under 28

u.s.c.

$ 2201.

ELEVENTH DEFENSE

Page 59

316.

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

Explorer browser or a user's use thereof, 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\ryELFTH DEFENSE

317.

Plaintiff s claims are baned 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.
FOURTEENTH DEF'ENSE

319.

Plaintiffls 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.

FIFTEENTH DEFENSE

320.

Plaintiffls 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. Plaintifls claims against Frito-Lay are baned 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.

Page 60

COI]NTERCLAIMS

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. ç27I.

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,
and

l0l,

102, 103

ll2.
326. The '906 patent and the '985 patent, and every claim thereof; are

unenforceable due

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 Plaintifls

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

incurred 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.

Page

6l

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;

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 26,2011.

Respectfully submitted,
/s/ Je.ffre:t F, Yee

GREENBERG TRAURIG LLP
Jeffrey K. Joyner (admittedpro hac vice)
[e-mail]
Jeffrey F. Yee (admittedpro hac vice)
[e-mail]
2450 Colorado Avenue, Suite 400E
Santa Monica, California 90404
Telephone: [phone]
Facsimile: (3 1 0) 586-7800
Dwayne L. Mason
Texas State Bar #00787977
[e-mail]
1000 Louisiana Street, Suite 1700
Houston, Texas 77002

Page62

Tel: [phone]
Fæc (713) 37445As

POTTDR MINTON P.C.
Douglas R. McSwane, Jr.
dougmcswane@potterminton. com
I t0 N. College Sfteet, Suite 500
Tyler, Texas 75702
Tel: [phone] I
Fær: [phone]

ATTOR¡IEYS F1OR DEFEI\ÏDAT{T
FRTTo,LAY,INC.

Page 63

cERTrFrCArn OFSERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have consented

to electronic service are being served with a eopy of this document via the Court's CIUIECF
system per Local Rule CV-5(aX3) this 26th day of October 2011. Any other counsel of record

will be served by facsimile transmission and/or electronie mail

pursuant to Local Rule CV-

s(d).
/s/ Jqfrey F. Yee
Jeffrey F. Yee

Page 64