Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1248

ANSWER to 1075 Amended Complaint, J.C. Penney Corporation, Inc.s Answer to Plaintiffs Third Amended Complaint, Affirmative Defenses and Counterclaims, COUNTERCLAIM against Eolas Technologies Incorporated by J.C. Penney Corporation, Inc..(Joe, Christopher)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

EOLAS TECHNOLOGIES INCORPORATED, §
§
Plaintiff,
§
§
v.
§
§
ADOBE SYSTEMS INCORPORATED, et al., §
§
Defendants.
§

Civil Cause No. 6:09-cv-00446-LED
Jury Trial Demanded

J.C. PENNEY CORPORATION, INC.’S ANSWER TO
PLAINTIFFS’ THIRD AMENDED COMPLAINT,
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Defendant J.C. Penney Corporation, Inc. (“JCP”) hereby submits its Third Amended
Answer to Eolas Technologies Incorporated (“Eolas”) and The Regents of the University of
California’s (the “University”) (collectively, “Plaintiffs”) Third Amended Complaint
(“Complaint,” Dkt. 891).
ANSWER
I.
1.

PARTIES

JCP lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 1 of the Complaint and therefore, denies them.
2.

JCP lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 2 of the Complaint and therefore, denies them.
3.

JCP is not required to answer to the allegations contained in Paragraph 3 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient

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knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 3 and, therefore, denies them.
4.

JCP is not required to answer to the allegations contained in Paragraph 4 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP 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.

JCP is not required to answer to the allegations contained in Paragraph 5 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP 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.

JCP is not required to answer to the allegations contained in Paragraph 6 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP 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.

JCP is not required to answer to the allegations contained in Paragraph 7 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 7 and, therefore, denies them.
8.

JCP is not required to answer to the allegations contained in Paragraph 8 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 8 and, therefore, denies them.

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9.

JCP is not required to answer to the allegations contained in Paragraph 9 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP 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.

JCP admits to the allegations contained in Paragraph 10 of the Complaint.

11.

JCP is not required to answer to the allegations contained in Paragraph 11 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 11 and, therefore, denies them.
12.

JCP is not required to answer to the allegations contained in Paragraph 12 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP 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.

JCP is not required to answer to the allegations contained in Paragraph 13 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 13 and, therefore, denies them.
II.
14.

JURISDICTION AND VENUE

JCP incorporates its responses contained in Paragraphs 1-13 as though fully set

forth here.
15.

JCP admits that the Complaint includes claims of patent infringement that arise

under the patent laws of the United States, 35 U.S.C. § 101 et seq. JCP admits that this Court
has subject matter jurisdiction over this action.

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16.

JCP admits that it is subject to this Court’s personal jurisdiction. Except as

expressly admitted herein, JCP lacks sufficient knowledge or information to form a belief as to
the truth of the allegations contained in Paragraph 16 and, therefore, denies them.
17.

JCP admits that venue is proper with respect to JCP.

Except as expressly

admitted herein, JCP lacks sufficient knowledge or information to form a belief as to the truth of
the allegations contained in Paragraph 17 and, therefore, denies them.
III.
18.

PATENT INFRINGEMENT

JCP incorporates its responses contained in Paragraph 1-17 as though fully set

forth here.
19.

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
29 of the Complaint. Except as stated herein, JCP lacks sufficient knowledge or information to
form a belief as to the truth of the allegations contained in Paragraph 19 and, therefore, denies
them.
20.

JCP lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 20 and, therefore, denies them.
21.

JCP is not required to answer to the allegations contained in Paragraph 21 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 21 and, therefore, denies them.
22.

JCP is not required to answer to the allegations contained in Paragraph 22 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient

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knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 22 and, therefore, denies them.
23.

JCP is not required to answer to the allegations contained in Paragraph 23 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 23 and, therefore, denies them.
24.

JCP is not required to answer to the allegations contained in Paragraph 24 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 24 and, therefore, denies them.
25.

JCP is not required to answer to the allegations contained in Paragraph 25 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 25 and, therefore, denies them.
26.

JCP is not required to answer to the allegations contained in Paragraph 26 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 26 and, therefore, denies them.
27.

JCP is not required to answer to the allegations contained in Paragraph 27 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 27 and, therefore, denies them.

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28.

JCP denies the allegations contained in Paragraph 28, including but not limited to

the allegations that it has directly and/or indirectly infringed (by inducement and/or contributory
infringement), or is continuing to infringe, directly and/or indirectly, the ‘906 Patent and/or the
‘985 Patent.
29.

JCP is not required to answer to the allegations contained in Paragraph 29 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 29 and, therefore, denies them.
30.

JCP is not required to answer to the allegations contained in Paragraph 30 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP 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.

JCP is not required to answer to the allegations contained in Paragraph 31 of the

Complaint because the allegations are not directed to JCP. Moreover, JCP lacks sufficient
knowledge or information to form a belief as to the truth of the allegations contained in
Paragraph 31 and, therefore, denies them.
32.

JCP denies the allegations contained in Paragraph 32 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or
information to form a belief as to the truth of the allegations contained in Paragraph 32 directed
at Defendants other than JCP and, therefore, denies them.
33.

JCP denies the allegations contained in Paragraph 33 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or

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information to form a belief as to the truth of the allegations contained in Paragraph 33 directed
at Defendants other than JCP and, therefore, denies them.
34.

JCP denies the allegations contained in Paragraph 34 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or
information to form a belief as to the truth of the allegations contained in Paragraph 34 directed
at Defendants other than JCP and, therefore, denies them.
35.

JCP denies the allegations contained in Paragraph 35 of the Complaint to the

extent that the allegations are directed to JCP. Moreover, JCP lacks sufficient knowledge or
information to form a belief as to the truth of the allegations contained in Paragraph 35 directed
at Defendants other than JCP and, therefore, denies them.
PLAINTIFF’S PRAYER FOR RELIEF
36.

JCP denies that Plaintiff is entitled to any of its requests for relief against JCP.
DEMAND FOR JURY TRIAL

37.

JPC is not required to answer plaintiff’s request for a jury trial. JCP also demands

a jury trial pursuant to FED. R. CIV. P. 38.
DEFENSES
38.

JCP’s Defenses are set forth below. JCP undertakes the burden of proof only as

to those defenses as required by law regardless of how such defenses are denominated herein.
JCP reserved the right to amend its Answer and to add additional Defenses.
FIRST DEFENSE
39.

JCP 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.

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SECOND DEFENSE
40.

The ‘906 Patent and the ‘985 Patent are invalid or void for failing to satisfy the

conditions of patentability as set forth in 35 U.S.C. §§100, 101, 102, 103 and/or 112.
THIRD DEFENSE
41.

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

‘985 Patent to be infringed literally or by the Doctrine of Equivalents by any of JCP due to the
disclosures of prior art or to the admissions or statements made to the U.S. Patent and Trademark
Office during prosecution of the patents in suit or because of the disclosure or language of the
specification or claims thereof.
FOURTH DEFENSE
42.

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

predecessors in interest to the ‘906 Patent 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 JCP’s actions actually infringed the ‘906 Patent or the ‘985 Patent. JCP is not
liable to Plaintiff for the acts alleged to have been performed before JCP received notice that it
was allegedly infringing the ‘906 Patent and/or the ‘985 Patent.
FIFTH DEFENSE
43.

JCP incorporates its responses as set forth above as though fully set forth herein.

44.

To the extent that Plaintiff asserts that JCP indirectly infringes, either by

contributory infringement or inducement, JCP is not liable to Plaintiff for the acts alleged to have
been performed before JCP knew that its actions would cause the indirect infringement.

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SIXTH DEFENSE
45.

Plaintiff’s claims against JCP are improper to the extent that any allegedly

infringing products are directly or indirectly provided to JCP or by JCP to an entity having an
express or implied license to the ‘906 Patent and/or the ‘985 Patent.
SEVENTH DEFENSE
46.

On information and belief, Plaintiff’s patent rights with respect to any allegedly

infringing products are exhausted by virtue of an express or implied license to the ‘906 Patent
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.
NINTH DEFENSE
48.

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

laches.
TENTH DEFENSE
49.

On information and belief, and subject to further amendments as JCP obtains

more information during discovery, the ‘906 Patent and the ‘985 Patent are unenforceable as a
result of inequitable conduct.
50.

Although Eolas alleges in its Complaint that the ‘906 Patent was duly and legally

issued by the United States Patent and Trademark Office after full and fair examination, each and
every claim of the ‘906 Patent is unenforceable due to inequitable conduct before the United
States Patent and Trademark Office.
51.

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

U.S. Patent Nos. 5,838,906 and 7,599,985.

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52.

The University is the owner and named assignee of the patents-in-suit, U.S. Patent

Nos. 5,838,906 and 7,599,985.
53.

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

U.S. Patent Nos. 5,838,906 and 7,599,985.
54.

Doyle, as the named inventor, the University, as the owner, 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.
55.

Krueger’s, the University’s, and Doyle’s duty of candor and good faith also

existed during the reexaminations of the ‘906 patent.
56.

The duty of candor and good faith owed by Krueger, the University, and Doyle

included a duty to disclose to the Patent Office all information known to that individual to be
material to patentability as defined in 37 C.F.R. § 1.56.
57.

On information and belief, Doyle and the University had a financial incentive to

deceive the Patent Office.
58.

On information and belief, Doyle had a financial incentive to deceive the Patent

Office during prosecution of the ‘906 patent, during the reexaminations of the ‘906 patent, and
during the prosecution of the ‘985 patent.
59.

On information and belief, Doyle worked at the University of California, San

Francisco when he allegedly conceived of the inventions claimed in the ‘906 and ‘985 patents.
60.

On information and belief, the ‘906 and ‘985 patents are owned by the University.

61.

On information and belief, the University has the right to receive from Eolas a

share of any royalties related to the ‘906 and/or ‘985 patents as a result of licensing or
enforcement efforts.
62.

On information and belief, Doyle and his co-inventors are entitled to receive a

portion of any royalties paid to the University related to the ‘906 and/or ‘985 patents.
63.

On information and belief, Doyle is a founder of the plaintiff in this action, Eolas.

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64.

On information and belief, Doyle quit his job to found Eolas, and personally

invested time and money in Eolas.
65.

On information and belief, Doyle has had a financial interest in Eolas since at

least August 21, 1995.
66.

On information and belief, on or about August 21, 1995, Eolas acquired rights to

the patent application that matured into the ‘906 patent.
67.

On information and belief, 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 University.
68.

As explained in more detail below, on information and belief, Krueger, the

University, and Doyle breached the duty of candor and good faith in dealing with the Patent
Office. On information and belief, Krueger, the University, and Doyle failed to disclose material
information and made affirmative misrepresentations of material facts. On information and
belief, Krueger, the University, and Doyle did so with knowledge of the information withheld,
with knowledge of the falsity of the misrepresentations, and with the specific intent to deceive
the Patent Office.

The circumstances of Krueger’s, the University’s, and Doyle’s actions

confirm an intent to deceive the Patent Office.
69.

As explained in more detail below, on information and belief, Krueger, the

University, and Doyle breached the duty of candor and good faith in dealing with the Patent
Office by failing to disclose material information related to the ViolaWWW browser. On
information and belief, Krueger, the University, and Doyle did so with knowledge of the
information they withheld and with the specific intent to deceive the Patent Office.

The

circumstances of Krueger’s, the University’s, and Doyle’s actions confirm intent to deceive the
Patent Office.
70.

As explained in more detail below, on information and belief, the ViolaWWW

browser was material to the patentability of all the claims of the ‘906 patent because it disclosed
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limitations that the Patent Office believed were missing in the prior art, including interactivity
embedded within the webpage (as opposed to a separate window), automatic invocation of the
interactivity (as opposed to requiring a mouse click to enable the interactivity), and use of a
separate executable application (as opposed to a script). On information and belief, Krueger, the
University, and Doyle 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.
71.

The application for the ‘906 patent was filed on October 17, 1994.

72.

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

Any printed publication describing the claimed invention, or any public use of the claimed
invention in the United States, before October 17, 1993, would be an absolute bar to
patentability.
73.

On information and belief, Doyle and the University knew before the application

for the ‘906 patent was filed that an individual in Northern California named Pei Wei had
developed a browser called “ViolaWWW” before the critical date of October 17, 1993.
74.

On information and belief, 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.”
75.

On information and belief, Raggett further advised Doyle that he could “find a

pointer to Viola off the CERN WWW project page.”
76.

On information and belief, later on the same day, May 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 publiclyaccessible e-mail distribution list. On information and belief, Pei Wei’s post had included the
following statements: “In order to do better testings and support of ViolaWWW, I would like to
solicit donations for guest accounts on the major Unix platforms. . . . So, if your organization has
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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.”

On information and belief, David

Martin’s response to Pei Wei included the following statements: “I am willing to discuss
providing accounts on SGI IRIX 5.x, Solaris 2.x, Alpha OSF/1. Please let me know what you
require in terms of disk space, compiler, utilities, etc...”
77.

On information and belief, by May 20, 1994 — several months before the

application for the ‘906 patent was filed — Doyle and the University knew about Pei Wei’s
ViolaWWW browser.
78.

On information and belief, Doyle and/or the University did not disclose this

information to Krueger or Charles J. Kulas (“Kulas”), the patent prosecutor that filed the ‘906
patent application, prior to the filing of the application that lead to the ‘906 patent.
79.

On information and belief, Doyle and the University, as Doyle’s employer,

learned even more about the ViolaWWW browser before the application for the ‘906 patent was
filed.
80.

On information and belief, on August 30, 1994, at approximately 11:15 p.m.

California time, Doyle posted a “Press Release” to the publicly-accessible VRML e-mail
distribution list that included the following statements:
Researchers at the U. of California have created software for
embedding interactive program objects within hypermedia
documents. Previously, object linking and embedding (OLE) has
been employed on single machines or local area networks using
MS Windows -TM-. This UC software is the first instance where
program objects have been embedded in documents over an open
and distributed hypermedia environment such as the World Wide
Web on the Internet.
81.

On information and belief, on August 31, 1994, at approximately 6:52 p.m.

California time, Pei Wei posted a response on the publicly-accessible VRML e-mail distribution

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list that included the following statements: “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.”
82.

On information and belief, Pei Wei’s response included a link to an FTP site

where anyone “interested in learning more about how violaWWW does this embedded objects
thing can get a paper on it.”
83.

On information and belief, the paper cited by Pei Wei was entitled “A Brief

Overview of the VIOLA Engine, and its Applications” (“August 1994 Viola Paper”).
84.

On information and belief, the paper cited by Pei Wei was dated August 16, 1994

— over two months before the application for the ‘906 patent was filed.
85.

On information and belief, the paper cited by Pei Wei included the following

statements and graphics:
Embedding mini applications
Viola's language and toolkit allows ViolaWWW to render
documents with embedded viola objects. Although the viola
language is not part of the World 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 inputform 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.

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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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What follows is a screendump of a demo of an embedded viola
application that lets readers of this HTML page communicate by
typing or drawing. Like the chess board application above, this
chat application can stand-alone (and have nothing to do with the
World Wide Web), or be embedded into a HTML document.
By the way, to make this possible, a multi-threaded/persistent
server was written to act as a message relay (and to handle HTTP
as well).

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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, of course.
Put it another way, because of the scripting capability, the
ViolaWWW browser has become very flexible, and can take on
many new features dynamically. C-code patches and recompilation of the browser can frequently be avoided.
This attribute can be very important for several reasons. It keeps
the size of the core software small, yet can grow dynamically as
less frequently used features are occasionally used, or as new
accessories/components are added.

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

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

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One can imagine many plug-in accessories/applets/tools possible
with this facility. Like, a self guiding slideshow 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.
86.

On information and belief, “Doyle downloaded and read the paper.” 399 F.3d

1325, 1330 (Fed. Cir. 2005).
87.

On information and belief, 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 “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.” Doyle responded by asking
Pei Wei, “How many months and months? We demonstrated our technology in 1993.”
88.

On information and belief, on August 31, 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 that plotting demo
(the very one shown in the viola paper) to visitors from a certain
computer manufacturer… This demo was memorable because
someone and I at ORA had lost sleep the night before the meeting,
in order to cook up that particular plotting demo :) We had to
show something cool.
That demo wasn't very hard to do because by that time the basic
capability was already in place for violaWWW to fetch viola
objects over HTTP (or whatever) and plug them into documents.
Of course, our wire-frame plotting demo isn't anywhere as
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comprehensive as yours. But, the point was that there was a way
to embed programmable & interactive objects into HTML
documents.
89.

On information and belief, when Pei Wei referred to the “plotting demo (the very

one shown in the viola paper),” he was referring to the plot of the fighter jet shown above in the
window titled “XPlot.”
90.

On information and belief, when Pei Wei referred to a demonstration “by May 8,

1993” to “visitors from a certain computer manufacturer,” he was referring to a demonstration of
the plotting demo to Karl Jacob and James 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.
91.

The Federal Circuit has held that “Wei’s May 7, 1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C.
§ 102(b)].” 399 F.3d 1325, 1335 (Fed. Cir. 2005).
92.

On information and belief, on August 31, 1994, at approximately 11:13 p.m.

California time, Doyle responded again to the message that Pei Wei had sent at approximately
6:52 p.m.
93.

On information and belief, Doyle’s response was sent after Doyle had read Pei

Wei’s August 1994 Viola paper.
94.

On information and belief, Doyle’s response included the following statements:

“Pei is mistaken on two counts, as I describe below . . . . As Pei’s paper on Viola states, that
package did not support what it calls ‘embeddable program objects’ until 1994. . . . Furthermore,
Viola merely implements an internal scripting language . . . .”
95.

On information and belief, on August 31, 1994, at approximately 11:36 p.m.

California time, Doyle responded to the message that Pei Wei had sent at approximately 11:16
p.m. Doyle’s response included the following statements: “Out of curiosity, did you publicly
demonstrate this or publish any results before 1994?”

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96.

On information and belief, on September 1, 1994, at approximately 12:08 a.m.

California time, Pei Wei responded to the message that Doyle had sent at approximately 11:13
p.m.
97.

On information and belief, Pei Wei’s message at approximately 12:08 a.m. was

also responsive to the message that Doyle had sent at approximately 11:36 p.m.
98.

On information and belief, Pei Wei’s message to Doyle at 12:08 a.m. included the

following statements:
Well. Viola’s model was *demonstrated* in 1993, *released*
freely in 1994. . . . And, as for the plotting demo, it actually is
really just a front-end that fires up a back-end plotting program
(and the point is that that back-end could very well be running on a
remote super computer instead of the localhost). For that demo,
there is a simple protocol such that the front-end app could pass an
X window ID to the back-end, and the back-end draws the graphics
directly onto the window violaWWW has opened for it.
99.

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

Wei on August 31 and September 1, 1994, and the copy of the August 1994 Viola paper that he
had downloaded and read. Doyle kept on his computer other emails from that timeframe,
however.
100.

On information and belief, Doyle, as Director of the University’s Center for

Knowledge Management, was living in Northern California on August 31, 1994, when he
exchanged messages with Pei Wei about the ViolaWWW browser.
101.

On information and belief, Pei Wei was living in Northern California on

August 31, 1994, when he exchanged messages with Doyle about the ViolaWWW browser.
102.

On information and belief, there was no limitation, restriction or obligation of

secrecy on the recipients of Pei Wei’s messages on August 31 and September 1, 1994, about the
ViolaWWW browser.

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103.

On information and belief, there was no limitation, restriction or obligation of

secrecy on the readers of Pei Wei’s August 1994 Viola paper.
104.

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

Martin were among those named as inventors.
105.

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

browser, but not the ViolaWWW browser.
106.

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

that identified several pieces of prior art, but not the ViolaWWW browser. Indeed, although
known by the University and Doyle, the information disclosure statement wholly failed to
mention any work of Pei Wei, the Viola WWW browser, the prior publication demonstrations of
the ViolaWWW browser, or Doyle’s knowledge that Pei Wei was the prior inventor of the
invention claimed by the application for the ‘906 patent. Again, rather than candidly providing
full disclosure, the University and Doyle failed to disclose the work of the University’s own
student in order to advance their own financial interests in attempting to obtain a patent.
107.

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

included the following statements: “I 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. . . . I
acknowledge the duty to disclose information which is material to the examination of this
application in accordance with Title 37, Code of Federal Regulations, Section 1.56.”
108.

On information and belief, 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.
109.

On information and belief, Doyle was reminded about Pei Wei and the

ViolaWWW browser in 1995, during prosecution of the ‘906 patent, but still no disclosure about
the ViolaWWW browser was provided to the Patent Office.

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110.

On information and belief, on August 21, 1995, at approximately 11:42 a.m.

California time, Doyle posted a “Press Release” to the publicly-accessible WWW-talk e-mail
distribution list. Doyle’s post included the following statements: “Eolas Technologies Inc.
announced today that it has completed a licensing agreement with the 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.”
111.

On information and belief, on August 21, 1995, at approximately 12:54 p.m.

California time, Pei Wei responded on the publicly-accessible WWW-talk e-mail distribution list
to Doyle’s “Press Release.” Pei Wei’s response included the following statements: “[F]or the
record, I just want to point out that the ‘technology which enabled Web documents to contain
fully-interactive “inline” program objects’ was existing in ViolaWWW and was *released* to the
public, and in full source code form, even back in 1993... Actual conceptualization and existence
occurred before ‘93.”
112.

On information and belief, 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.”
113.

On information and belief, on August 21, 1995, at approximately 4:09 p.m.

California time, Pei Wei responded to the message that Doyle had sent at approximately
1:14 p.m. Pei Wei’s 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 our office at O’Reilly & Associates (where I worked at the
time).
This is what I wrote on the VRML list:

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....
> Definitely by May 8, 1993 we had demonstrated that plotting
demo
> (the very one shown in the viola paper) to visitors from a certain
> computer manufacturer… This demo was memorable because
someone and I
> at ORA had lost sleep the night before the meeting, in order to
cook up
> that particular plotting demo :) We had to show something cool.
That date (May 93), at least, predates your demo if I’m not
mistaken. Then around August 93, it was shown to a bunch of
attendees at the first Web Conference in Cambridge. . . .
....
If you’re talking about interactive apps *specifically* on the web,
ie applets in-lined into HTML documents etc., and with bidirectional communications, then look at ViolaWWW as it existed
around late ’92 early ’93.
114.

On information and belief, when Pei Wei referred to the “plotting demo (the very

one shown in the viola paper),” he was referring to the plot of the fighter jet shown above in the
window titled “XPlot.”
115.

On information and belief, when Pei Wei referred to a demonstration “by May 8,

1993,” he was referring to the demonstration of the plotting demo to two Sun Microsystems
employees that the Federal Circuit has held “was a public use under [35 U.S.C. § 102(b)].” 399
F.3d 1325, 1335 (Fed. Cir. 2005).
116.

On information and belief, when Pei Wei referred to the “first Web Conference in

Cambridge” “around August 1993,” he was referring to the “World-Wide Web Wizards
Workshop” held in Cambridge, Massachusetts on July 28–30, 1993.
117.

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

Berners-Lee, Marc Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei.
118.

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

organizers of the Wizards workshop.

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119.

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

Northern California.
120.

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

recruited Pei Wei to join O’Reilly & Associates. Pei Wei’s job at O’Reilly & Associates was to
continue developing the ViolaWWW browser.
121.

On information and belief, Scott Silvey worked with Pei Wei at O’Reilly &

Associates in Northern California.
122.

On information and belief, 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 other person he was referring to was Scott Silvey.
123.

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

be the inventor of the World Wide Web.
124.

On information and belief, Marc Andreesen and Eric Bina were the authors of

Mosaic, a popular browser for the World Wide Web created at the National Center for
Supercomputing Applications (NCSA) at the University of Illinois at Urbana-Champaign.
125.

On information and belief, Marc Andreesen and Eric Bina went on to found

Netscape, the manufacturer of another popular browser for the World Wide Web.
126.

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

ViolaWWW browser and its ability to automatically invoke interactive objects embedded within
a webpage using the “VOBJF” tag to at least Marc Andreesen and Tim Berners-Lee at the
Wizards workshop in Cambridge, Massachusetts in July 1993 — over one year before the
application for the ‘906 patent was filed.
127.

On information and belief, there was no limitation, restriction or obligation of

secrecy on anyone at the Wizards workshop.
128.

On information and belief, 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 use under 35 U.S.C. § 102(b).
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129.

On information and belief, despite Pei Wei’s communications to Doyle repeatedly

providing evidence that the ViolaWWW browser was material prior art under 35 U.S.C.
§ 102(b), Doyle never disclosed the ViolaWWW browser to the Patent Office during prosecution
of application number 08/324,443, which matured into the ‘906 patent.
130.

Indeed, Chris McRae, a University employee for the Center for Knowledge

Management at the San Francisco campus attended the Wizards workshop in July 1993. After
the workshop, McRae returned to the University and told the University’s Assistant Director,
David Martin, about the ViolaWWW browser and its capabilities. Although the University’s
management knew of the ViolaWWW browser, still it failed to advise the PTO of the
ViolaWWW browser, the public demonstrations, or the prior Pei Wei inventorship of the
invention claimed by the application for the ‘906 patent.
131.

On information and belief, Doyle instead deleted from his computer his emails

with Pei Wei on August 21, 1995. Doyle kept on his computer other emails from that timeframe,
however.
132.

On information and belief, 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.
133.

On information and belief, during prosecution of the ‘906 patent, Doyle

maintained a folder called “Viola stuff.”
134.

On information and belief, the “Viola stuff” folder included a printout of Pei

Wei’s message to Doyle on August 31, 1994, at approximately 6:52 p.m. California time, in
which Pei Wei told Doyle, “I don’t think this is the first case of program objects embedded in
docs and transported over the WWW. ViolaWWW has had this capabilities for months and
months now.”
135.

On information and belief, the “Viola stuff” folder included a printout of Doyle’s

message to Pei Wei on August 31, 1994, at approximately 11:36 p.m. California time, in which
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Doyle asked Pei Wei, “Out of curiosity, did you publicly demonstrate this or publish any results
before 1994?”
136.

On information and belief, the “Viola stuff” folder included a printout from the

URL <http://www.w3.org/History/1994/WWW/WorkingNotes/>. This webpage has a heading
for the “WWWWizardsWorkshop” “Cambridge, Mass, July 1993” and includes links to
“Announcement,” “Agenda,” and “Photos of attendees.”
137.

On information and belief, “WWWWizardsWorkshop” refers to the World-Wide

Web Wizards Workshop held in Cambridge, Massachusetts on July 28–30, 1993, that Pei Wei
attended.
138.

On information and belief, the “Announcement” link links to a webpage at

<http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Announcement.html>
that states that “Interactive objects” would be discussed at the Wizards workshop.
139.

On information and belief, the “Agenda” link links to a webpage at

<http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Agenda.html>

that

states that “Interactive objects” was on the agenda for discussion at the Wizards workshop.
140.

On information and belief, the webpages for the Wizards workshop corroborate

Pei Wei’s statement to Doyle on August 21, 1995, that the plotting demo described in the August
1994 Viola paper was “shown to a bunch of attendees at the first Web Conference in Cambridge”
“around August 93” — over one year before the application for the ‘906 patent was filed.
141.

On information and belief, the “Viola stuff” folder included a printout of a

webpage with a link to the source code for viola-2.1.2, archived on September 2, 1993 — over
one year before the application for the ‘906 patent was filed.
142.

On information and belief, the “Viola stuff” folder included a printout of a

webpage with the “README” file for viola-2.1.2. 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:
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Comments and questions:
Please send WWW specific bugs to [e-mail],
general comments to [e-mail], and anything to
[e-mail].
Pei Y. Wei
[e-mail]
143.

On information and belief, the “Viola stuff” folder included a printout of a

message that Pei Wei had sent to the publicly-accessible WWW-talk e-mail distribution 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.”
144.

On information and belief, the “Viola stuff” folder included a printout of a

message that Pei Wei had sent to the publicly-accessible WWW-talk e-mail distribution list on
February 25, 1994, that included the following statements:
The new ViolaWWW is now available for ftp’ing. It’s beta and
feedback is very welcomed. The README file follows…
==============================================
ViolaWWW, Version 3.0 Beta
Feb 23 1994
======================
ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.
....
Notable features in the new ViolaWWW
------------------------------------------------....
* Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini viola applications (ie: a
chess board), or can cause mini apps to be placed in the toolbar.
....

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Availability
--------------Source and binary can be found in ftp://ora.com/pub/www/viola.
Sparc binary is supplied.
....
Pei Y. Wei ([e-mail])
O’Reilly & Associates, Inc.
145.

The

“Viola

stuff”

folder

<http://xcf.berkeley.edu/ht/projects/viola/>.

included

a

printout

from

the

URL

The printout included the following statements:

ViolaWWW, Version 3.1 Beta
======================

Mar 23 1994

ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.
....
Notable features in the new ViolaWWW
------------------------------------------------....
* Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini viola applications (ie: a
chess board), or can cause mini apps to be placed in the toolbar.
....
Availability
--------------Source and binary can be found in ftp://ora.com/pub/www/viola.
Sparc binary is supplied.
....
Pei Y. Wei ([e-mail])
O’Reilly & Associates, Inc.

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146.

On information and belief, the “Viola stuff” folder included a printout from the

URL <http://xcf.berkeley.edu/ht/projects/viola/docs/viola/>.

One of the files listed in the

printout is named “plotDemo.html”.
147.

On information and belief, the “Viola stuff” folder included a printout from the

URL <http://xcf.berkeley.edu/ht/projects/viola/docs/objs/>. One of the files listed in the printout
is named “plot.v”.
148.

On information and belief, the following is a screenshot of the ViolaWWW

browser after parsing the file plotDemo.html:

149.

On information and belief, the files plotDemo.html and plot.v include code for the

plotting demo described in the August 1994 Viola paper.

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150.

On information and belief, 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.
151.

On information and belief, Pei Wei had told Doyle on August 31, 1994 how the

plotting demo worked: “[A]s for the plotting demo, it actually is really just a front-end that fires
up a back-end plotting program (and the point is that that back-end could very well be running
on a remote super computer instead of the localhost). For that demo, there is a simple protocol
such that the front-end app could pass an X window ID to the back-end, and the back-end draws
the graphics directly onto the window violaWWW has opened for it.”
152.

On information and belief, Pei Wei had told Doyle on August 31, 1994, and again

on August 21, 1995 that the plotting demo described in the August 1994 Viola paper was the
“very one” demonstrated “to visitors from a certain computer manufacturer” by May 8, 1993.
153.

On information and belief, when Pei Wei referred to a demonstration “by May 8,

1993,” he was referring to the demonstration of the plotting demo to two Sun Microsystems
employees that the Federal Circuit has held “was a public use under [35 U.S.C. § 102(b)].” 399
F.3d 1325, 1335 (Fed. Cir. 2005).
154.

On information and belief, 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.
155.

On information and belief, during prosecution of the ‘906 patent, Doyle printed

webpages containing information about a talk that Pei Wei gave at Stanford University in
Northern California in September 1994.
156.

On information and belief, the webpages that Doyle printed included the

following statements and graphic:
WWW Browsers: Extensibility Issues
Pei Wei, O’Reilly & Associates

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Stanford Computer Forum WWW Workshop - September 20-21,
1994
....
Extensibility in WWW Browsers
The WorldWideWeb is a powerful medium which has many
applications beyond just publishing static documents. It is
certainly an interface to the space of “documents.” But already,
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.”
....
In this talk I’ll describe a few possible approaches for a browser to
gain more flexibility, and to briefly describe one particular
approach as implemented by a system known as ViolaWWW.
....
Possible Ways to Extend Browsers
We already do “extend” browsers with things like “external
viewers.” But there’s not a very good integration with the
browser. Ideally those external 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-WWW
....
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.
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....

157.

On information and belief, there was no limitation, restriction or obligation of

secrecy on anyone attending the talk that Pei Wei gave at Stanford University in September
1994.
158.

On information and belief, the plotting demo described in the talk at Stanford

University in September 1994 is the same plotting demo described in the August 1994 Viola
paper.
159.

On information and belief, Pei Wei had told Doyle on August 31, 1994, and again

on August 21, 1995 that the plotting demo described in the August 1994 Viola paper was the
“very one” demonstrated “to visitors from a certain computer manufacturer” by May 8, 1993.

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160.

On information and belief, when Pei Wei referred to a demonstration “by May 8,

1993,” he was referring to the demonstration of the plotting demo to two Sun Microsystems
employees that the Federal Circuit has held “was a public use under [35 U.S.C. § 102(b)].” 399
F.3d 1325, 1335 (Fed. Cir. 2005).
161.

On information and belief, 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.
162.

On information and belief, 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.
163.

On information and belief, the fax sent to Krueger in August of 1998 was to allow

him to analyze whether the ViolaWWW browser, including the August 1994 Viola paper, should
be submitted to the Patent Office.
164.

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

demonstration of the ViolaWWW browser to Sun Microsystems employees without a
confidentiality agreement.
165.

On information and belief, 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 ViolaWWW browser to the Patent Office.
166.

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

statements regarding the May 1993 demonstration of the ViolaWWW browser to Sun
Microsystems employees.
167.

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

of the ‘906 patent, to not disclose to the PTO the information he received regarding the
ViolaWWW browser.
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168.

On information and belief, the ViolaWWW browser was material to the

patentability of the claimed inventions in the ‘906 patent.
169.

On information and belief, there is a remarkable similarity between the

ViolaWWW browser and the preferred embodiment of the ‘906 patent:

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ViolaWWW

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

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Both the ViolaWWW browser (on the left) and the preferred
embodiment of the ‘906 patent (on the right) enabled a user to
interact with a 3-dimensional image embedded in the middle of a
webpage. In the ViolaWWW screenshot above, there are three
slide controls to the right of the 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.
Thus, ViolaWWW, like the ‘906 patent, teaches a browser capable
of displaying embedded interactive objects.
170.

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

for the ‘906 patent was filed included the following statements:
Materiality is defined in 37 CFR 1.56(b) and discussed herein at
MPEP § 2001.05. In addition to prior art such as patents and
publications, 37 CFR 1.56 includes, for example, information on
possible prior public uses, sales, offers to sell, derived knowledge,
prior invention by another, inventorship conflicts, and the like.
[emphasis in bold added]
171.

The Manual of Patent Examining Procedure in force today contains similar

language:
Materiality is defined in 37 CFR 1.56(b) and discussed herein at
MPEP § 2001.05. In addition to prior art such as patents and
publications, 37 CFR 1.56 includes, for example, information on
>enablement,< possible prior public uses, sales, offers to sell,
derived knowledge, prior invention by another, inventorship
conflicts, and the like. >“Materiality is not limited to prior art but
embraces any information that a reasonable examiner would be
substantially likely to consider important in deciding whether to
allow an application to issue as a patent.” Bristol-Myers Squibb
Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1234, 66
USPQ2d 1481, 1486 (Fed. Cir. 2003) (emphasis in original)
(finding article which was not prior art to be material to
enablement issue).< [emphasis in bold added]
172.

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

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

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173.

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).
174.

The Federal Circuit held that “Wei’s May 7, 1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C.
§ 102(b)].” 399 F.3d 1325, 1335 (Fed. Cir. 2005).
175.

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

of the ‘906 patent obvious in light of the ViolaWWW browser. See 399 F.3d 1325, 1335 (Fed.
Cir. 2005).
176.

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).
177.

On information and belief, 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, but he still did not discuss the ViolaWWW browser further with Doyle.
178.

On information and belief, even after 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 he did not disclose any additional information to help the Patent
Office consider ViolaWWW browser.
179.

The Patent Office has also confirmed that the ViolaWWW browser was material

to the patentability of the claimed inventions in the ‘906 patent.
180.

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

Patent Office rejected all claims of the ‘906 patent as being anticipated by DX95, which includes
a copy of the text found in Pei Wei’s August 1994 Viola paper.
181.

On information and belief, Pei Wei had told Doyle on August 31, 1994, about the

August 1994 Viola paper and Doyle had downloaded and read that paper the same day, yet

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Doyle never disclosed the Viola paper to the Patent Office during the original examination of the
‘906 patent.
182.

On information and belief, the fact that Doyle may have conceived of the

inventions claimed in the ‘906 patent before August 16, 1994, does not render the August 1994
Viola paper immaterial, because the Viola paper describes features of the ViolaWWW browser
that existed before the invention date for the ‘906 patent and/or over one year before the
application for the ‘906 patent was filed.
183.

On information and belief, the plotting demo described in the August 1994 Viola

paper was part of the ViolaWWW browser software that was demonstrated to Sun Microsystems
on May 7, 1993 — over one year before the application for the ‘906 patent was filed.
184.

On information and belief, none of the claimed inventions in the ‘906 patent was

conceived before August 1993.
185.

On information and belief, the ViolaWWW browser software that was described

in the August 1994 Viola paper and demonstrated to Sun Microsystems on May 7, 1993, also
corroborates anticipation of the claimed inventions in the ‘906 patent under 35 U.S.C. § 102(g).
186.

Neither reexamination of the ‘906 patent considered whether the claimed

inventions were anticipated by “Wei’s May 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).
187.

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

patents or printed publications, such as public use.” See Manual of Patent Examining Procedure
(MPEP) § 2258(I).
188.

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

public use art during an ex parte reexamination.
189.

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 they had
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in their possession that the ViolaWWW browser was in “public use” more than one year before
the application for the ‘906 patent was filed.
190.

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

the ‘906 patent if Doyle, the University, or Krueger had not engaged in inequitable conduct and
instead had fulfilled their duty of candor and good faith in dealing with the Patent Office.
191.

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

‘906 patent, Doyle, the University, and Krueger withheld extensive evidence about the
ViolaWWW browser.
192.

On information and belief, Doyle and the University 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 ViolaWWW browser and
the embedded interactive plotting demo that was in public use in May 1993; the August 1994
Viola paper describing the ViolaWWW browser and the embedded interactive plotting demo that
was in public use in May 1993; the communications with Pei Wei in 1995 about the ViolaWWW
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 May 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.
193.

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 in 1994 about the ViolaWWW browser and the
embedded interactive plotting demo that was in public use in May 1993; the Viola paper
describing the ViolaWWW browser and the embedded interactive plotting demo that was in
public use in 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
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conference in July 1993 and links to the ViolaWWW browser software, including source code
for the embedded interactive plotting demo that was in public use in May 1993.
194.

On information and belief, the University failed to disclose the following material

information: ViolaWWW code written on computers in the XCF lab and posted to the
University’s FTP sites, the message between David Martin and Pei Wei in May 1994 about
ViolaWWW, the ViolaWWW browser including at least the August 1994 Viola paper the prior
public demonstrations of the ViolaWWW browser; and the emails asserting that Pei Wei was the
prior inventor of the invention claimed by the application for the ‘906 patent.
195.

On information and belief, Doyle, the University, and Krueger withheld

information about the ViolaWWW browser with the specific intent to deceive the Patent Office.
196.

On information and belief, Doyle had a financial interest in the patentability of the

claimed inventions in the ‘906 patent.
197.

On information and belief, the ViolaWWW browser threatened the patentability

of the claimed inventions in the ‘906 patent, and thus threatened Doyle’s financial interests.
198.

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

application number 08/324,443, which matured into the ‘906 patent.
199.

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.
200.

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

Patent Office in an effort to establish an earlier date of invention for the claims of the ‘906 patent
application.
201.

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.
202.

On or about May 27, 1997, Doyle signed a 28-page declaration (including an

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

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in the subject matter of the claimed invention and to overcome various obviousness rejections to
the claims of the ‘906 patent application.
203.

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.
204.

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.
205.

On information and belief, the 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.
206.

On information and belief, Doyle personally reviewed and approved papers

submitted to the Patent Office during prosecution of the ‘906 patent.
207.

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

of application number 08/324,443, which matured into the ‘906 patent, Doyle and Krueger never
disclosed the ViolaWWW browser to the Patent Office during that prosecution.
208.

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

deceive the Patent Office.
209.

On information and belief, during prosecution of the ‘906 patent, Doyle and

Krueger made arguments for patentability that could not have been made if they had disclosed
the ViolaWWW browser to the Patent Office.
210.

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

anticipated by the University of Southern California’s “Mercury Project.”
211.

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

Patent Office.
212.

On information and belief, Doyle personally reviewed and approved the response

submitted to the Patent Office on or about August 6, 1996.

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213.

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.
214.

If Doyle, the University, 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 a portion of the original document is displayed.”
215.

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

obvious in light of “Khoyi et al. US Patent 5,206,951” in combination with other prior art.
216.

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

217.

Doyle and Krueger personally reviewed and approved the response submitted to

Office.

the Patent Office on or about June 2, 1997.
218.

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 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.
219.

On information and belief, if Doyle, the University, or Krueger had disclosed the

ViolaWWW prior art to the Patent Office, it would not have been possible to distinguish the

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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.”
220.

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.
221.

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

Patent Office.
222.

On information and belief, Doyle and Krueger personally reviewed and approved

the response submitted to the Patent Office on or about December 23 1997.
223.

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

statements:
[T]here is no disclosure or suggestion in Mosaic or Koppolu of
automatically invoking an external application when an embed text
format is parsed. Each of those references require user input,
specifically clicking with a mouse pointer, to activate external
applications to allow display and interaction with an external
object.
224.

On information and belief, if Doyle, the University, 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.”
225.

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

could not have been made if Doyle or Krueger had disclosed the ViolaWWW prior art
demonstrates an intent to deceive the Patent Office.
226.

On information and belief, 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 May 27, 1997.

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227.

On information and belief, on or about March 27, 1995, Doyle responded to a

post on the publicly-accessible WWW-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.” On information and belief, 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.
228.

On information and belief, 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
allow an embed text format (the applet tag) within a Web
document to be parsed by a Web browser to automatically invoke
an external executable application to execute on the client
workstation in order to display an external object and enable
interactive processing of that object within a display window
created at the applet tag’s location within the hypermedia
document being displayed in the browser-controlled window. The
book’s authors further emphasize the novelty and nonobviousness

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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 HotJava to view and hear these pages and to
interact with them; otherwise, all you'll access is static Web
pages minus the special effects.”
....
The above citations, as well as the additional details given in
Appendix A, provide ample evidence of the commercial success of
products incorporating features of the claimed invention, as well as
evidence of the widespread acclaim that these products have
garnered for the technical innovations which the features of the
claimed invention allowed them to provide. They further show
that the successes of these products was a direct result of the
features of the claimed invention, which they incorporated through
implementation of an embed text format that is parsed by a Web
browser to automatically invoke an external executable
application to execute on the client workstation in order to display
an external object and enable interactive processing of that object
within a display window created at the embed text format’s
location within the hypermedia document being displayed in the
browser-controlled window.
229.

The declaration Doyle signed on or about May 27, 1997, made no mention of

Viola or the ViolaWWW browser.
230.

On information and belief, Doyle’s 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 Office, especially given Doyle’s belief that Viola was similar to Java and
that Java embodied the claimed invention.
231.

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

232.

On information and belief, Doyle personally guided Eolas through the litigation

concerning the validity of the ‘906 patent.

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233.

On information and belief, throughout the litigation, the third party asserted that

the plotting demo involving the ViolaWWW browser anticipated the asserted claims of the ‘906
patent.
234.

On information and belief, the plotting demo relied on by the third party to prove

anticipation of the asserted claims of the ‘906 patent was the same plotting demo that Pei 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.
235.

On information and belief, in its contentions that the plotting demo involving the

ViolaWWW browser anticipated the asserted claims of the ‘906 patent, the third party
specifically identified the VOBJF tag, the plot.v file, and the vplot executable application.
236.

On information and belief, on or about December 14, 2001, the third party served

an expert report by Dr. John P.J. Kelly, that included the following statements:
When ViolaWWW encountered the tag
<VOBJF>/usr/work/viola/apps/plot.v</VOBJF>, an 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 external executable application, vplot,
that also was automatically invoked to enable display of and user
interaction with the object at a location within a display area within
the document being displayed in the browser-controlled window
corresponding to the location of the embed text format in the
document. Subsequently, when the user interacted with the object,
ViolaWWW sent messages to vplot based on the user input and
received output from vplot, thus updating the display of the object.
237.

On information and belief, at a trial in 2003 concerning the validity of the ‘906

patent, Dr. Kelly testified that the plotting demo involving the ViolaWWW browser anticipated
the asserted claims of the ‘906 patent, and he specifically identified the VOBJF tag, the plot.v
file, and the vplot executable application for purposes of his anticipation analysis.

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238.

On information and belief, Pei Wei also testified at the trial in 2003 about the

ViolaWWW browser and the plotting demo.
239.

On information and belief, at the trial, exhibit DX34 included source code for the

ViolaWWW browser dated May 12, 1993.
240.

On information and belief, at the trial, exhibit DX37 included source code for the

ViolaWWW browser dated May 27, 1993.
241.

On information and belief, DX34 contains the code for the plotting demo that Pei

Wei demonstrated to Sun Microsystems on May 7, 1993, in Northern California.
242.

On information and belief, DX37 contains code for a plotting demo similar to the

plotting demo in DX34.
243.

On information and belief, on May 31, 1993, Pei Wei posted DX37 on a publicly-

accessible Internet site and notified an engineer at Sun Microsystems that DX37 was available
for downloading.
244.

On information and belief, under 35 U.S.C. § 102(b), DX37 was a “printed

publication” over one year before the application for the ‘906 patent was filed.
245.

On information and belief, 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.
246.

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

jury to conclude that DX37 anticipates at least claims 1 and 6 of the ‘906 patent. See 399 F.3d
1325, 1335 (Fed. Cir. 2005).
247.

On information and belief, neither Dr. Kelly nor the third party ever relied on

anything other than the plotting demo involving plot.v and vplot to prove anticipation by the
ViolaWWW browser.
248.

On information and belief, Dr. Kelly never discussed clock.v during the trial in

July and August 2003.
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249.

On information and belief, Doyle attended the trial involving the third party held

in July and August 2003.
250.

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

about and understood the third party’s contention that the plotting demo involving the
ViolaWWW browser in DX37 anticipated the asserted claims of the ‘906 patent.
251.

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

University knew about and understood Pei Wei’s testimony that on May 31, 1993 — over one
year before the application for the ‘906 patent was filed — he posted DX37 on a publiclyaccessible Internet site and notified an engineer at Sun Microsystems that DX37 was available
for downloading.
252.

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.
253.

On information and belief, during the 2003 reexamination, Doyle, the University,

and Krueger withheld information about the ViolaWWW browser with the specific intent to
deceive the Patent Office.
254.

On information and belief, Doyle and the University had a financial interest in the

patentability of the claimed inventions in the ‘906 patent.
255.

On information and belief, the ViolaWWW browser threatened the patentability

of the claimed inventions in the ‘906 patent, and thus threatened Doyle’s financial interests.
256.

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

2003 reexamination of the ‘906 patent.
257.

On information and belief, on or about April 27, 2004, Doyle and Krueger

participated in an examiner interview in an effort to confirm the patentability of the claims of the
‘906 patent application. On information and belief, 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. On information and belief, neither Doyle nor Krueger
mentioned the ViolaWWW browser during the interview.
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258.

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

Patent Office in an effort to confirm the patentability of the claims of the ‘906 patent application.
This declaration made no mention of DX37 or the ViolaWWW browser.
259.

On information and belief, on or about August 18, 2005, Doyle and Kreuger

participated in an examiner interview in an effort to confirm the patentability of the claims of the
‘906 patent application. On information and belief, Doyle gave the examiner a presentation
supported by approximately 36 slides, none of which discussed DX37 or the ViolaWWW
browser.
260.

On information and belief, during the 2003 reexamination, Doyle and Krueger

submitted selected information from the litigation with the third party concerning the validity of
the ‘906 patent, but they withheld information that would have identified for the examiner the
key features of the prior art ViolaWWW browser and how they matched up to the asserted
claims of the ‘906 patent. On information and belief, this proved critical during the 2003
reexamination because when the examiner decided to look at the source code for the
ViolaWWW browser, he missed the key points.
261.

On information and belief, on or about December 30, 2003, Doyle and Krueger

submitted to the Patent Office a CD containing two compressed zip files, one for the “DX34”
version of the ViolaWWW source code dated May 12, 1993, and the other for the “DX37”
version of the ViolaWWW source code dated May 27, 1993.
262.

On information and belief, the compressed zip file for DX34 that Doyle and

Krueger submitted to the Patent Office was named viola930512.tar.gz.zip. When unzipped, it
contained 1,027 files in 35 folders consisting of 8 total megabytes in size.
263.

On information and belief, the compressed zip file for DX37 that Doyle and

Krueger submitted to the Patent Office was named violaTOGO.tar.Z.zip. When unzipped, it
contained 1,030 files in 34 folders consisting of 7.7 total megabytes in size.
264.

On information and belief, DX34 and DX37 contained source code for the

ViolaWWW browser.
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265.

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

into binary code before it can be executed by a computer.
266.

On information and belief, without the compiled binary code, and without a

suitable computer capable of executing that binary code (such as a Sun SPARCstation from the
early 1990s), the Patent Office had no practical way to see the ViolaWWW browser in operation.
267.

On information and belief, given the voluminous nature of the contents of DX34

and DX37, and the practical inability of the Patent Office to run the ViolaWWW browser on a
computer, it was especially important for Doyle and Krueger to be candid with the Patent Office
about the contents of DX34 and DX37 so that the Patent Office could focus on the relevant files.
268.

On information and belief, 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.
269.

On information and belief, Doyle and Krueger did not disclose the full contents of DX34 

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

270.

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

submitted in their entirety until the Invention Disclosure Statement filed on November 1, 2006.
271.

On information and belief, during the 2003 reexamination, neither Doyle or

Krueger disclosed to the Patent Office the trial testimony of Pei Wei, who testified about the
plotting demo in DX34 and DX37; 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
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.
272.

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 1 and 6 of the ‘906 patent. 399 F.3d 1325, 1335 (Fed. Cir.
2005).

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273.

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

not disclose Dr. Kelly’s testimony to the Patent Office during the 2003 reexamination, nor did
they disclose to the Patent Office that Dr. Kelly’s anticipation analysis relied upon the VOBJF
tag, the plot.v file, and the vplot executable application.
274.

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

patentability in which the examiner confirmed the patentability of claims 1–10 of the ‘906
patent.
275.

On information and belief, the examiner’s statement never discussed the plotting

demo that Dr. Kelly had testified anticipated the asserted claims of the ‘906 patent.
276.

On information and belief, when the examiner considered DX37, the examiner

did not know where to look or what to look for. There were too many files in DX37 for the
examiner to read himself. Thus the examiner was forced to resort to running text searches across
all the files in DX37 in the hope of stumbling across relevant information.
277.

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

files that contained textual content. See http://www.dtsearch.com/.
278.

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

search terms.
279.

On information and belief, Doyle knew precisely what to look for, but he never

told the examiner. On information and belief, for example, if Doyle or Krueger had told the
examiner to look for plot.v, the examiner’s text searches would have quickly found the plotting
demo that Dr. Kelly had testified anticipated the asserted claims of the ‘906 patent.
280.

On information and belief, 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.
281.

On information and belief, the file clock.v is a script file that displays the image

of a clock. On information and belief, the clock application does not involve any separate
executable application. On information and belief, it just involves a webpage and the clock.v
script file.
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282.

The examiner reasoned that a script file like clock.v does not satisfy 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.
283.

On information and belief, the ViolaWWW source code teaches two ways of

creating interactive webpages using embedded applications. On information and belief, one way
is by using a simple script file, such as clock.v. On information and belief, all that is required is
a webpage (such as violaApps.hmml) and the script file (such as clock.v). On information and
belief, no binary executable application is involved. On information and belief, the other way
taught by the ViolaWWW source code does use a binary executable application (such as vplot)
in addition to a webpage and a file that contains the object (such as plot.v). On information and
belief, 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.
284.

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. Alternately, 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 “C-like” Viola scripts (or corresponding bytecode representations) are not “executable applications” . . . .

285.

On information and belief, the examiner’s reasoning overlooked the fact that the

plotting demo in DX37 does use a separate executable application: vplot.

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286.

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

separate executable application, but Doyle and Krueger did not bring this fact to the examiner’s
attention and instead allowed the examiner to confirm the patentability of the claims of the ‘906
patent on the basis of an incomplete understanding of DX37.
287.

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

separate executable application for at least the following reasons:
a.

On information and belief, the August 1994 Viola paper, 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.”
b.

On information and belief, Pei Wei’s message to Doyle on September 1,

1994, which included the following statements: “[A]s for the plotting demo, it actually is
really just a front-end that fires up a back-end plotting program (and the point is that that
back-end could very well be running on a remote super computer instead of the
localhost). For that demo, there is a simple protocol such that the front-end app could
pass an X window ID to the back-end, and the back-end draws the graphics directly onto
the window violaWWW has opened for it.”
c.

On information and belief, 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 program 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.”

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d.

On information and belief, Pei Wei’s presentation at Stanford in

September 1994, which included the following statements: “The next example is a frontend application to a backend. And the back-end is what actually does the computation
and the drawing.” On information and belief, included with the presentation was a
screenshot of the ViolaWWW browser after parsing the file plotDemo.html. The
screenshot shows the plot of a fighter jet in a window titled “XPlot.” The text in the
webpage states, “This is a demo of 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.”
e.
f.
288.

On information and belief, the trial testimony of Pei Wei.
On information and belief, the expert opinion of Dr. Kelly.

On information and belief, Doyle’s, the University’s, 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’s 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.
289.

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 had not engaged in inequitable conduct and instead had fulfilled their duty of
candor and good faith in dealing with the Patent Office.
290.

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

‘906 patent.

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291.

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.
292.

On information and belief, Doyle had a financial interest in the patentability of the

claimed inventions in the ‘906 patent.
293.

On information and belief, the ViolaWWW browser threatened the patentability

of the claimed inventions in the ‘906 patent, and thus threatened Doyle’s financial interests.
294.

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

2005 reexamination of the ‘906 patent.
295.

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

an examiner interview in an effort to confirm the patentability of the claims of the ‘906 patent
application.
296.

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.
297.

On or about May 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.
298.

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.
299.

On information and belief, Doyle’s and Krueger’s inequitable conduct during the

2003 reexamination infected the 2005 reexamination.
300.

On information and belief, 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.
301.

On information and belief, Doyle and Krueger disclosed the August 1994 Viola

paper to the Patent Office on or about August 21, 2006.
302.

On information and belief, this was the first time Doyle and Krueger had

disclosed the August 1994 Viola paper to the Patent Office.

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303.

On information and belief, 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.
304.

On information and belief, Krueger knew about the August 1994 Viola paper no

later than August of 1998, but waited 8 years – and two prosecutions of the ‘906 patent – to
disclose that paper to the Patent Office.
305.

On information and belief, shortly after Doyle and Krueger disclosed the August

1994 Viola paper to the Patent Office during the 2005 reexamination, the Patent Office rejected
all claims of the ‘906 patent.
306.

On information and belief, in particular, on or about July 30, 2007, the Patent

Office rejected all claims of the ‘906 patent as being anticipated by DX95, which includes a copy
of the text found in Pei Wei’s August 1994Viola paper.
307.

On information and belief, the rejection based on the August 1994 Viola confirms

that the ViolaWWW browser was material prior art.
308.

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

August 1994 Viola paper , however. Instead Doyle filed a declaration asserting that his date of
invention was before August 16, 1994.
309.

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

the August 1994 Viola paper.
310.

On information and belief, 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 that DX37 did not invalidate the asserted claims of the
‘906 patent.
311.

On information and belief, the conclusions about DX37 reached in the 2003

reexamination were erroneous due to Doyle’s, the University’s, and Krueger’s inequitable
conduct during that reexamination.
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312.

Thus, Doyle’s, the University’s, and Krueger’s inequitable conduct during the

2003 reexamination infected the 2005 reexamination.
313.

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.
314.

Specifically, on 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.
315.

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.”
316.

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 18 months after the
applicants initially demonstrated the first Web plug-in and applet technology to the founders of
Netscape and engineers employed by Sun Microsystems in November and December of 1993, as
described in reference #4 from Appendix A (Dr. Dobb’s Journal, 2/96), both Netscape and Sun
released software products that incorporated features of the claimed invention . . . .”
317.

On information and belief, this statement was false. On information and belief,

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.
318.

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

did not know whether any engineer employed by Sun Microsystems ever saw any of his
demonstrations in November or December of 1993.
319.

On information and belief, 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.
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On information and belief, 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.”
320.

On information and belief, Doyle’s false statements in his declaration were

material to the patentability of the pending claims. These statements purported to provide
evidence of copying by others and thus objective evidence of nonobviousness, a factor to be
considered in determining whether an alleged invention is patentable over the prior art. On
information and belief, 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.
321.

On information and belief, 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. On information and belief, moreover, by
making these false statements, Doyle was trying to convince the Patent Office that the Netscape
and Sun products succeeded because they incorporated his alleged invention.
322.

On information and belief, Doyle’s submission of false statements under oath in

his declaration to the Patent Office constituted a knowing and intentional violation of his duty of
candor and good faith in dealing with the Patent Office.
323.

Because Doyle, the University, and Krueger committed inequitable conduct

during prosecution reexamination of the ‘906 patent (reexamination application number
90/006,831), every claim of the ‘906 patent is unenforceable in its entirety. The inequitable
conduct also renders unenforceable all claims that issue as a result of any reissue and
reexamination proceedings, including claims that issued from the reexaminations of the ‘906
patent (reexamination application numbers 90/006,831 and 90/007,858).
324.

The ‘985 patent is likewise unenforceable in its entirety due to Doyle’s, the

University’s, and Krueger’s inequitable conduct during the prosecution of the application that the

J.C. PENNEY CORPORATION, INC.’S ANSWER TO PLAINTIFFS’ THIRD AMENDED
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issued as the ‘906 patent and Doyle’s and Krueger’s inequitable conduct during the first
reexamination of the ‘906 patent (reexamination application number 90/006,831).
325.

Doyle’s, the University’s, and Krueger’s inequitable conduct during prosecution

of the application that issued as the ‘906 patent relates, both immediately and necessarily, to the
claims of the ‘985 patent.
326.

Doyle’s, the University’s, and Krueger’s inequitable conduct during the first

reexamination of the ‘906 patent (reexamination application number 90/006,831) relates, both
immediately and necessarily, to the claims of the ‘985 patent.
327.

The ‘985 patent issued from an application that was a continuation application of

a continuation application of the application that issued as the ‘906 patent, and the ‘985 patent
claims priority to the ‘906 patent.

The ‘906 patent and the ‘985 patent share the same

specification.
328.

On July 20, 2004, the PTO determined that the claims pending in the application

that issued as the ‘985 patent were identical in scope to or were obvious variations of the thenissued claims of the ‘906 patent, which were confirmed in the first reexamination of the ‘906
patent (reexamination application number 90/006,831) on June 6, 2006. Accordingly, the PTO
rejected the pending claims under the doctrines of statutory double-patenting and obviousnesstype double-patenting.
329.

On March 11, 2005, to overcome the double-patenting rejections, the owner of the

‘985 patent cancelled one pending claim and filed a terminal disclaimer for the remaining claims.
It was not argued that the pending claims were patentably distinct from the then-issued claims of
the ‘906 patent.
330.

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

unenforceability of the claims of the ‘906 and ‘985 patents is now necessary and appropriate
under 28 U.S.C. § 2201.

J.C. PENNEY CORPORATION, INC.’S ANSWER TO PLAINTIFFS’ THIRD AMENDED
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ELEVENTH DEFENSE
331.

To the extent that Plaintiff’s 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 to the ‘985 Patent.
TWELFTH DEFENSE
332.

Plaintiff’s claims are barred in whole or in part by the equitable doctrines of

laches and/or unclean hands.
THIRTEENTH DEFENSE
333.

To the extent Eolas 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.
FOURTEENTH DEFENSE
334.

Eolas’ claims are improper to the extent that Eolas seeks asserted infringement of

claims that are subject to the intervening rights of JCP.
FIFTEENTH DEFENSE
335.

Eolas’ claims against JCP are barred to the extent that Eolas lacks standing to sue

for infringement of the ‘906 patent or the ‘985 patent.
SIXTEENTH DEFENSE
336.

Eolas’ claims against JCP are barred by the doctrine of patent exhaustion to the

extent Eolas has already relinquished its rights to the ‘906 patent or the ‘985 patent.
SEVENTEENTH DEFENSE
337.

Eolas’ claims against JCP are barred to the extent that JCP is a third-party

beneficiary to a license/agreement granting rights to the ‘906 patent or the ‘985 patent.
EIGHTEENTH DEFENSE

J.C. PENNEY CORPORATION, INC.’S ANSWER TO PLAINTIFFS’ THIRD AMENDED
COMPLAINT, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

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338.

Eolas’ claims against JCP are barred by the doctrine of equitable estoppels.
COUNTERCLAIMS

339.

JCP incorporates its responses as set forth above as though fully set forth herein.

340.

JCP has not directly or indirectly infringed, contributed to or induced

infringement of any valid or enforceable claim of the ‘906 Patent or the ‘985 Patent, and has not
otherwise committed any acts in violation of 35 U.S.C. §271.
341.

The ‘906 Patent and the ‘985 Patent, and every claim thereof, are invalid for

failing to meet the conditions for patentability as set forth in 35 U.S.C. §§100, 101, 102, 103 and
112.
342.

An actual controversy exists between JCP and Plaintiff concerning the alleged

infringement and validity of the ‘906 Patent and the ‘985 Patent by virtue of Plaintiff’s
Complaint herein.
343.

JCP is entitled to judgment from this Court that no claim of either of the ‘906

Patent or the ‘985 Patent has been infringed by JCP, and that all claims are invalid.
344.

The ‘906 patent and the ‘985 patent are unenforceable due to inequitable conduct

as alleged above, which are incorporated hereby reference.
345.

This is an exceptional case entitling JCP to an award of its attorney’s fees

incurred in connection with this action pursuant to 35 U.S.C. §285.
346.

JCP continues to investigate this matter and reserves the right to amend its

Answer and/or Counterclaims to assert any additional defenses or counterclaims that come to
light upon further investigation and discovery.
PRAYER FOR RELIEF
WHEREFORE, JCP prays that:

J.C. PENNEY CORPORATION, INC.’S ANSWER TO PLAINTIFFS’ THIRD AMENDED
COMPLAINT, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

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347.

the Court dismiss the Complaint against JCP with prejudice;

348.

the Court declare that JCP has not and does not infringe the ‘906 Patent or the

‘985 Patent;
349.

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

350.

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

against JCP;
351.

the Court award JCP its costs, together with reasonable attorneys’ fees and all of

its expenses for this suit because this is an exceptional case under 35 U.S.C. §285; and
352.

the Court award JCP such other relief as this Court may deem just and proper at

law or in equity.

Dated: January 17, 2012

Respectfully submitted,

J.C. PENNEY CORPORATION, INC.’S ANSWER TO PLAINTIFFS’ THIRD AMENDED
COMPLAINT, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

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BUETHER JOE & CARPENTER, LLC
By: /s/ Christopher M. Joe
Christopher M. Joe (Lead Counsel)
State Bar No. 00787770
[e-mail]
Eric W. Buether
State Bar No. 03316880
[e-mail]
Brian A. Carpenter
State Bar No. 03840600
[e-mail]
Mark D. Perantie
State Bar No. 24053647
[e-mail]
Niky Bukovcan
WA State Bar No. 39403
[e-mail]
1700 Pacific Avenue
Suite 2390
Dallas, Texas 75201
Telephone: [phone]
Facsimile:
[phone]
ATTORNEYS FOR DEFENDANT J.C.
PENNEY CORPORATION, INC.

CERTIFICATE OF SERVICE
The undersigned certifies that all counsel of record who are deemed to have consented to
electronic service are being served with a copy of this document via the Court’s CM/ECF system
per Local Rule CV-5(a)(3) on 17th day of January, 2012. Any other counsel of record will be
served by facsimile transmission and/or electronic mail pursuant to Local Rule CV-5(d).

/s/ Christopher M. Joe
Christopher M. Joe

J.C. PENNEY CORPORATION, INC.’S ANSWER TO PLAINTIFFS’ THIRD AMENDED
COMPLAINT, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS

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