Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 1341

PLEASE IGNORE. FILED IN ERROR. CORRECTED DOCUMENT REFILED AT DE 1342. PLEASE IGNORE. TRIAL BRIEF DEFENDANTS' OFFER OF PROOF REGARDING TIME LIMITATION FOR INVALIDITY TRIAL by Adobe Systems Incorporated, Amazon.com Inc., CDW Corporation, Google Inc., J.C. Penney Corporation, Inc., Staples, Inc., The Go Daddy Group, Inc., Yahoo! Inc., YouTube, LLC. (Attachments: # 1 Declaration of Jennifer H. Doan, # 2 Declaration of Andrew L. Perito, # 3 Exhibit Exhibit A, # 4 Exhibit Exhibit B, # 5 Exhibit Exhibit C, # 6 Exhibit Exhibit D, # 7 Exhibit Exhibit E, # 8 Exhibit Exhibit F, # 9 Exhibit Exhibit G, # 10 Exhibit Exhibit H, # 11 Exhibit Exhibit I, # 12 Exhibit Exhibit J, # 13 Exhibit Exhibit K, # 14 Exhibit Exhibit L)(Doan, Jennifer) Modified on 2/9/2012 (leh, ).

EXHIBIT F

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

EOLAS TECHNOLOGIES, INC.
Plaintiff,
v.
ADOBE SYSTEMS, INC. ET AL.,

Defendants.

)
)
)
) CIVIL ACTION NO. 6:09-C-446 (LED)
)
)
)
)
)
)
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SUPPLEMENTAL EXPERT REPORT OF NICHOLAS P. GODICI

I.

INTRODUCTION
1.

I am the same Nicholas P. Godici who provided the Expert Report of

Nicholas P. Godici, dated July 20, 2011 in the above referenced matter.
2.

This Supplemental Expert Report incorporates the opinions set forth in my

initial Expert Report of July 20, 2011 and addresses issues raised in this matter
subsequent to my initial report.
3.

In my initial Expert Report, I specifically contemplated that a

supplemental report may be necessary if other matters including information and/or
expert reports arose subsequent to my initial report. See ¶¶ 2 and 12 of my initial report.
2.
I reserve the right to give opinions on facts and other
matters arising subsequent to this report, including rebuttal to any
matter raised by the parties or their experts, either prior to or
during any hearing or trial in this action.
***
12.
The opinions stated in this report are based on information
currently available to me. I reserve the right to continue my
investigation and study, which may include a review of documents,
expert reports, or other information that may yet be produced, as
well as any testimony from depositions for which transcripts are
not yet available and that may yet be taken in this case. Therefore,
I reserve the right to expand or modify this report as my
investigation and study continues, and to supplement my opinions
in response to any additional information that becomes available to
me, to any matters raised by the parties, and/or other opinions
provided by the parties‟ expert(s). In my testimony I may use
exhibits and demonstratives.

4.

My curriculum vita attached as Exhibit A to my initial report remains

unchanged.

Supplemental Expert Report of Nicholas P. Godici

Page 2

A.
5.

Prior Testimony
An updated list of cases in which I have testified as an expert at trial or by

deposition in the last four years is attached as Exhibit B.
B.
6.

Materials Considered
Exhibit C to this report lists materials that I have considered in addition to

the materials that were listed in Exhibit C to my initial report.
II.

MY SUPPLEMENTAL ANALYSIS AND OPINIONS

7.

I have been asked to address the following issues in this supplemental

report.
A.
8.

The Addition of the University of California as a Co-Plaintiff
I am informed that the University of California has been added as a co-

plaintiff in this action. I have been asked to evaluate the impact of this change with
respect to the opinions expressed in my initial report.
9.

As stated in my initial report, in 37 CFR § 1.56(c) the PTO sets forth who

owes a duty of disclosure during the prosecution of a patent application as follows:

(c) Individuals associated with the filing or prosecution of a patent
application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the
application; and
(3) Every other person who is substantively involved in the
preparation or prosecution of the application and who is associated with
the inventor, with the assignee or with anyone to whom there is an
obligation to assign the application.

Supplemental Expert Report of Nicholas P. Godici

Page 3

10.

Additionally, section 2001.01 of the MPEP gives the following guidance

regarding who has the duty to disclose:

Individuals having a duty of disclosure are limited to those who are
“substantively involved in the preparation or prosecution of the
application.” This is intended to make clear that the duty does not extend
to typists, clerks, and similar personnel who assist with an application.
The word “with” appears before “the assignee” and “anyone to whom
there is an obligation to assign” to make clear that the duty applies only to
individuals, not to organizations. For instance, the duty of disclosure
would not apply to a corporation or institution as such. However, it would
apply to individuals within the corporation or institution who were
substantively involved in the preparation or prosecution of the application,
and actions by such individuals may affect the rights of the corporation or
institution.
11.

Further, MPEP section 2280 provides the following guidance regarding

who has a duty of disclosure during reexamination proceedings as follows:

The duty of disclosure in reexamination proceedings applies to the patent
owner; to each attorney or agent who represents the patent owner, and to
every other individual who is substantively involved on behalf of the
patent owner. That duty is a continuing obligation on all such individuals
throughout the proceeding. The continuing obligation during the
reexamination proceeding is that any such individual to whom the duty
applies who is aware of, or becomes aware of, patents or printed
publications which (A) are material to patentability in a reexamination
proceeding, and (B) which have not previously been made of record in the
patent file, must bring such patents or printed publications to the attention
of the Office.
12.

Based on the above PTO guidance individuals have the duty to disclose

information during both initial examination and reexamination. The duty also applies to
individuals within corporations and institutions who are inventors or were substantively
involved in the preparation and prosecution of an application and the actions by such
individuals may affect the rights of the corporation or institution.

Supplemental Expert Report of Nicholas P. Godici

Page 4

13.

My opinions set forth in my initial report regarding the violations of the

duty of disclosure by Mr. Doyle and Mr. Krueger during the prosecution of the „906
patent are unchanged by the addition of the University of California as a co-plaintiff.
14.

Additionally, I note that at the time that the subject matter of the „906

patent was allegedly conceived, September 7 1993,1 all three inventors listed on the „906
patent application were employed by the University of California. Mr. Doyle was the
Director of the Center for Knowledge and Technology at the University of California‟s
San Francisco campus2 and Mr. Martin was the Assistant Director of the same facility.3
Mr. Ang was also employed by the University in the same Center for Knowledge and
Technology.4
15.

Furthermore, the evidence of Mr. Doyle‟s extensive knowledge of the

ViolaWWW browser and the warnings he received from others before the filing of the
„906 patent application (on October 17, 1994) (see ¶ 175 of my initial report) occurred
while Mr. Doyle was the Director of the Center for Knowledge and Technology at the
University of California‟s San Francisco campus. This included his discussions with
O‟Reilly & Associates “people” regarding Viola, the email Dr. Doyle received from Mr.
Raggett advising him to look into Viola, the multiple emails Dr. Doyle received from Pei
Wei, the inventor and developer of Viola, in 1994 and 1995 stating that ViolaWWW had
the capabilities of the alleged „906 invention and that Viola had been publicly released
well prior to the conception of the „906 invention, and Mr. Doyle‟s reading of the Viola

1

See Exhibit 13 of the Martin deposition of 8/19/11.
See the Doyle Dep. Tr. of 2/29/2000 at 237:19-238:8 and the Doyle Dep. Tr. of 1/25/2000 at 183:24185:7.
3
See the Martin Dep. Tr. of 8/18/11 at 36:6-38:3.
4
See the Ang Dep. Tr. of 7/22/11 at 492:10-15.
2

Supplemental Expert Report of Nicholas P. Godici

Page 5

Article. As explained in my initial report, despite being warned that the ViolaWWW
browser preceded the „906 invention and being informed of the capabilities of the
ViolaWWW browser, Mr. Doyle failed to disclose any information about the
ViolaWWW browser to the PTO during the prosecution of the „906 patent application.
16.

Co-inventor David Martin was the Assistant Director of the Center for

Knowledge and Technology at the University of California‟s San Francisco campus
during the same time period described in the preceding paragraph. Mr. Martin hired and
supervised an individual named Chris McRae who was also employed at the Center for
Knowledge and Technology at the University of California‟s San Francisco campus
during 1993 and 1994.5 I have reviewed testimony from Mr. Chris McRae.6 Mr. McRae
was aware of the ViolaWWW browser at least as early as July of 1993.7 He discussed
the ViolaWWW browser with Mr. Martin and Cheong Ang (both co-inventors of the „906
patent) before he left the University of California San Francisco in December 1993.8
More specifically, he testified that he told Mr. Martin that he had seen the Viola WWW
browser,9 including the drawing area widget in Viola, and that the idea that Mr. Martin
and Dr. Doyle had was not patentable because Viola already had this technology.10
17.

Mr. Martin also became aware of the ViolaWWW browser through his

discussions with Mr. Doyle before they applied for the „906 patent. On May 19, 1994, he
received an email inquiry from ViolaWWW developer Pei Wei wherein Pei Wei asked
for donations of guest accounts to test Viola in exchange for an updated ViolaWWW

5

See the McRae Dep. Tr. of 9/19/11 at 120:8-9, 161:15-22.
See the McRae Dep. Tr. of 9/19/11 at 36:25-37:10.
7
See the McRae Dep. Tr. of 9/19/11 at 87:15-88:23.
8
See the McRae Dep. Tr. of 9/19/11 at 190:1-11; 199:6-10.
9
See the McRae Dep. Tr. of 9/19/11 at 193:22-194:15.
10
See the McRae Dep. Tr. of 9/19/11 at 93:1-22; 148:4-149:3.
6

Supplemental Expert Report of Nicholas P. Godici

Page 6

executable. Mr. Martin replied to Pei Wei‟s inquiry stating that he would be willing to
discuss providing a guest account on the University of California computer system.11
That same day, Dr. Doyle forwarded an email from Dave Raggett to Mr. Martin. The
email from Mr. Raggett informed Mr. Martin about the ViolaWWW browser, disclosed
Viola‟s ability to display interactive objects embedded within webpages, and provided a
location where Mr. Martin could download the Viola browser.12
18.

As explained in my initial report, information about the ViolaWWW

browser is “but-for” material to the examination of the „906 patent application.13 As an
inventor, Mr. Martin had a duty to disclose material information to the PTO under his
duty of disclosure. He did not disclose information about the ViolaWWW to the PTO
during the prosecution of the „906 patent applications. In fact he testified that he did not
disclose the information about the ViolaWWW to the PTO because he relied on Mr.
Doyle to determine that it was not relevant.14 In my opinion Mr. Martin‟s failure to
disclose the ViolaWWW browser information was a violation of his duty of disclosure.
19.

Further, the ViolaWWW browser was developed by Mr. Pei Wei who was

a former student at the University of California. When Pei Wei learned via a University
of California press release dated August 30, 1994 that managers at the University of
California claimed to have invented the subject matter of the „906 patent application he
immediately informed Mr. Doyle that in fact the ViolaWWW browser he had earlier
developed and publicly disclosed included the subject matter allegedly invented by Dr.

11

See Exhibit 35 of the Martin deposition on 9/19/11.
EOLASTX-0000025961.
13
See section IV. D. of my initial report.
14
See the Martin Dep. Tr. of 8/91/11 at 427:23-428:14.
12

Supplemental Expert Report of Nicholas P. Godici

Page 7

Doyle and Mr. Martin.15 As fully explained in my initial report Mr. Doyle failed to
disclose the information he was aware of and received regarding the Pei Wei‟s prior
development of the ViolaWWW browser and its capabilities to the PTO during the
examination of the „906 patent application.16
20.

As inventors, both Mr. Doyle and Mr. Martin signed an inventor‟s

declaration as required by PTO regulations.

17

The declaration states that the inventors

believed they were the original and first inventors of the claimed subject matter of the
„906 application.18 The declaration was made to complete the filing requirements of the
application on behalf of the assignee, the University of California. Based on Mr. Doyle‟s
communications with former University student, Pei Wei, and Dave Raggett and Mr.
Martin‟s communications with Mr. McRae both Dr. Doyle and Mr. Martin had
information regarding the earlier invented ViolaWWW browser prior to signing the
declaration in the „906 application on November 22, 2005. Based on Dr. Phillips‟
analysis the ViolaWWW browser includes the subject matter of the claimed invention of
the „906 patent and therefore Dr. Doyle and Mr. Martin were not the first to invent that
subject matter. As such, the declaration signed by Doyle and Martin was false.
21.

As named inventors Dr. Doyle and Mr. Martin were under a duty to

disclose material information to the PTO during the examination of the „906 patent. As
managers at the University of California at the time they allegedly conceived of the
invention of the „906 patent, their actions, or in this case inactions (failure to disclose the
ViolaWWW browser information), would affect the right of the patent owner or assignee,

15

EOLASTX-0000061841.
Sections II C & D.
17
See 37 CFR 1.63.
18
EOLASTX-0000007737.
16

Supplemental Expert Report of Nicholas P. Godici

Page 8

the University of California, to enforce the „906 patent. Stated another way, if the Court
finds that inventors Doyle, Martin, or anyone else substantively involved in the
prosecution of the „906 patent withheld the ViolaWWW browser information with intent
to deceive the PTO and that the ViolaWWW browser information was material, the „906
patent in not enforceable by either Eolas or the University of California.
22.

It is my understanding that the University of California has not completed

and is still producing documents in this matter. Also, I understand that to date the
University of California has not produced certain pieces of prior art located in its libraries
that Dr. Phillip‟s cites in his Supplemental Expert Report On Invalidity and which were
never submitted to the USPTO during the prosecution and re-examinations of the „906
and „985 patents.19 Therefore, I reserve the right to further supplement my opinions
based upon the University of California‟s continued production.
B.

23.

The Court’s Recent Construction of the Claim Term Executable
Application
Additionally, I have been asked to review the term “executable

application” as defined by the PTO and this Court. Specifically, I note that the Court has
now construed the claim term “executable application” to mean, “any computer program
code that is not the operating system or a utility that is launched to enable an end user to
directly interact with data”.20

19

See October 27, 2011 Supplemental Expert Report on Invalidity by R. Phillips at p. 25 (Ohtsu93 and
Rowe92).
20
Dkt. No. 914 at p. 11. I understand that the Court adopted this construction of the term “executable
application” in view of the fact that the Illinois District Court and Federal Circuit construed this term of the
„906 patent in this manner in the previous Microsoft litigation. Eolas Techs., Inc. v. Microsoft Corp., 399
F.3d 1325, 1336-38 (Fed. Cir. 2005).

Supplemental Expert Report of Nicholas P. Godici

Page 9

24.

In the Office Action of September 27, 2005 in the first reexamination

proceeding, the PTO examiner explained his construction of the term “executable
application” in the context of interactive processing.21

The examiner stated that

executable application must be a separate application from the browser application.22
Specifically, when examining the relationship between the interactive processing element
and the executable application the examiner stated:
Instant '906 independent claims 1 and 6 therefore require an operative
coupling between the claimed “executable application” and the claimed
“interactive processing” such that the claimed “interactive processing”
must be enabled by an “executable application” that meets five explicitly
claimed requirements:
1. The executable application must be external to the first
distributed multimedia document.
2. The executable application must be automatically
invoked by the browser application when the “embed
text format” is parsed by the browser application.
3.

The executable application must execute on the client
workstation.

4. The executable application must display the object
within the display area created at the first location
within the portion of the first distributed hypermedia
document being displayed in the first browser
controlled window.
5. The executable application must enable interactive
processing of the object within the display area created
at the first location within the portion of the first
distributed hypermedia document being displayed in the
first browser-controlled window.23

21

EOLASTX-0000006893-6973 and January 20, 2006 Office Action EOLASTX-0000006974-7048.
EOLASTX-0000006904 (“In contrast, the instant „906 claims explicitly require the „interactive
processing‟ to be enabled by an ‟executable application‟ that is a separate application from the browser
application.”).
23
EOLASTX-0000006905-06 (emphasis added).
22

Supplemental Expert Report of Nicholas P. Godici

Page 10

The examiner used this understanding of the term “executable application” to distinguish
the Berners-Lee, Raggett I, and Raggett II prior art from the claimed invention during the
first reexamination.24
25.

In the same action, the examiner eliminated ViolaWWW as a rejecting

reference because he concluded that Viola scripts were not an “executable application”.
In his explanation, the examiner first reiterated his understanding of “executable
application” as a separate binary code automatically invoked by the browser.25 The
examiner then differentiated Viola‟s computer code from executable applications because
Viola uses a scripting language that is not written in binary code. 26
26.

After the completion of the re-examination proceeding which included the

examiner‟s elimination of the Viola prior art, this Court construed the term “executable
application,” which is currently defined as described in Paragraph 23. I understand from
Dr. Phillips that in Plaintiffs‟ application of this construction as part of its infringement
case, Plaintiffs have not limited the “executable application” to just that, but rather
includes scripts that are interpreted by the browser. This definition is significantly
broader that the definition used by the examiner.
27.

It is my opinion that the PTO construed the term “executable application”

in a more narrow way than the Court has in this matter construed the term. By doing so
the PTO eliminated prior art, including the ViolaWWW browser, that under this Court‟s

24

EOLASTX-0000006906. Notably, during re-examination this art was distinguished based upon the
PTO‟s interpretation that excluded scripts. EOLASTX-0000005839-41.
25
EOLASTX-0000006951 (“To be “executable” the contents of the memory location pointed to by the
program counter must contain an instruction in binary form.”)
26
EOLASTX-0000006951. The examiner concluded that Viola‟s scripting language was not an executable
application because a script was not written in binary code.

Supplemental Expert Report of Nicholas P. Godici

Page 11

interpretation would not be eliminated but would be material to the more broadly
construed claims in this action.
C.
28.

Use of the Internet at the PTO
At the time the „906 patent application was under examination at the PTO,

that is between October 1994 and November 1998, the PTO was in the initial stages of
deploying Internet capability to patent examiners.27 In July 1996 the PTO distributed a
document entitled “Rules of the Road” setting forth policies and rules for employees
when using PTO systems.28 In early 1997, the PTO began the process of providing
Internet access to PTO employees. Prior to that time PTO examiners did not have the
capability to use the Internet to conduct prior art searches. Further, at that time by law, 35
U.S.C. §122, patent applications were considered confidential until such time as a patent
may have issued from the application. Since communications and data transmitted on the
Internet at that time were not encrypted or secure, examiners were instructed to restrict
Internet search queries to general state of the art so as not to disclose confidential
information in Internet search queries.29 In June 1999, the PTO issued an Internet Usage
Policy to PTO employees again reiterating that search queries must be limited to general
state of the art and that all Internet prior art searches must be documented in accordance
with procedures set forth in MPEP 719.05.30
29.

Based on my experience at the PTO, during the time the „906 patent

application was pending, the Internet was not widely used to do prior art searching and

27

Interim Internet Usage Policy, 1195 OG 89 (February 10, 1997) (“The Patent and Trademark Office
(PTO) is in the process of providing Internet access to PTO employees.”).
28
Id.
29
Id.
30
Internet Usage Policy, 64 F.R. 33056 (June 21, 1999).

Supplemental Expert Report of Nicholas P. Godici

Page 12

instead examiners used internal patent databases and commercial databases to search for
prior art. Additionally, if the Internet was used to conduct a prior art search, examiners
were required to document the search in the file history of the application. I note there is
no evidence or documentation in the file history that an Internet search was conducted by
the examiner during the original prosecution of the „906 patent application.
D.
30.

Lack of Testing Facilities at the PTO
The PTO does not have laboratories or testing facilities or equipment to

independently verify or test products embodying inventions submitted in patent
applications or other information submitted during the prosecution of a patent
application. Therefore, based on my experience, the PTO would have had no specialty
equipment to review and compile the source code submitted to the PTO on the CDs
containing DX34 and DX37 during the reexamination proceedings of the „906 patent.
There is no indication in the patent history that the examiner ever used a SunSparc
Station or any special equipment to examine DX34 or DX37. The PTO would only have
had a common PC, and therefore would only have had the ability to review the
information via a common PC as described by Examiner Courtenay in the NIRC mailed
on September 27, 2005 in the first reexamination of the „906 patent. As explained by
Examiner Courtenay, the PTO determined that the code found on the CD that included
DX34 and DX37 was to be considered a printed publication. Therefore the Examiner
took the steps described in the NIRC to determine to what extent the information on the
CD was relevant to the claims of the „906 patent. There is no evidence in the record that
the Examiner ever attempted to compile the code on the CD. Nor does the examiner state

Supplemental Expert Report of Nicholas P. Godici

Page 13

that he viewed or considered any demonstrations using the information contained on the
CDs submitted during reexamination.
E.
31.

Incomplete Submission of Viola to the PTO
In my previous report, I explained that when Viola was submitted in the

first instance to the USPTO as DX34 and DX37, it was not submitted in its entirety.
Attorney Krueger submitted the corrected DX34 and DX37 without identifying the
differences between the two submissions. Since that time, I have been provided a copy
of the discs submitted to the PTO. The differences between the discs are critical from the
examiner‟s standpoint for the following reasons.
32.

I understand that Dr. Phillips has reviewed copies of the discs purported to

be DX34 and DX37 that were submitted to the PTO during the first and second
reexamination proceedings.

I am informed by Dr. Phillips that the functionalities

disclosed in the second submission of DX34 and DX37 would anticipate the claims of the
„906 patent.
33.

I understand from Dr. Phillips that the disc provided to the PTO in the first

reexamination contained only Viola source code. The examiner noted that DX34 and
DX37 were contained in a CD disc stored as an artifact associated with the Image File
Wrapper for the reexamination.31 The examiner noted the following traits of the two files
contained in the originally submitted “Viola Code” disc:
1) viola930512.tar.gz.zip - this compressed file represents
the earlier Viola source code, also referred to as “DX34” in
the CAFC opinion (Docket no. 04-1234, March 2, 2005,
see also IFW “Reexam .Notice of Court Action” dated
April 11, 2005; see especially page 11 as numbered in the
printout (corresponding to IFW page 16 of 32). The
31

EOLASTX-0000006941.

Supplemental Expert Report of Nicholas P. Godici

Page 14

viola930512.tar.gz.zip (i.e., "DX34") file, when unzipped,
contains 1,027 files in 35 folders consisting of 8 total
megabytes in size.
2) violaTOGO.tar.Z.zip - this compressed file represents
the later Viola source code, also referred to as “DX37” in
the CAFC opinion. The violaTOGO.tar.Z.zip (i.e.,
“DX37'”) file, when unzipped, contains 1,030 files in 34
folders consisting of 7.7 total megabytes in size.32
Dr. Phillips informs me that this information corresponds to the first disc that was
submitted to the USPTO. In order to view any of the files in a human readable text
format on his common PC the examiner would need to extract both of the .tar files
creating a series of folders and files which could be examined in text format. My
understanding from discussions with Dr. Phillips is that the examiner only used dtsearch
to review DX37, and the examiner failed to disclose the terms used in the search.
34.

Also, I understand from Dr. Phillips that the second disc contained

different versions of DX37 and DX34.

Dr. Phillips informed me that the second

submission of DX34 included more than just the “viola930512.tar.gz.zip” file referred to
by the examiner as “DX34.”

Likewise, Dr. Phillips informed me that the primary

differences between the first and second submission of DX34 include:
an SGML file for Viola‟s browser named “sgmls-1_1_91_tar”;
a hypermedia document explaining many of the missing files from the
original submission named “Note”;
various documents and pictures explaining the Viola browser and showing
the browser in action contained within the “docs” folder; and
the vplot executable application
35.

Similarly, I understand from Dr. Phillips that the second submission of

DX37 contained more than just the “violaTOGO.tar.Z.zip” file. The second submission

32

EOLASTX-0000006942.

Supplemental Expert Report of Nicholas P. Godici

Page 15

of DX37 included over 150 pages of emails related to the Viola browser in a file named
“viola-email” and a timeline which shows the early development of key Viola features in
a file named “Viola timeline.”
36.

After the above described versions of DX34 and DX37 were submitted to

the USPTO during the second reexamination proceeding a subsequent Office Action was
issued. However, the patent examiner never considered the re-submitted versions of
Viola when issuing this Action.33 Instead the examiner quoted and relied on the review
of DX34 and DX37 by the examiner in the first-reexamination where the first examiner
considered only the incomplete versions of DX34 and DX37.34 There is no evidence in
the record that indicates that any PTO examiner considered the information contained on
the second set of discs containing different versions of DX34 and DX37, which includes
the information that Dr. Phillips states anticipates the claims of the „906 patent. As stated
above the only evidence in the PTO record indicating that DX34 or DX37 were
considered was contained in the record of the first reexamination in which examiner
Courtenay considered the incomplete versions of DX34 and DX37.
37.

As mentioned in my initial report (¶ 169), I am informed by Dr. Phillips

that in addition to reviewing an incomplete version of DX37, Examiner Courtenay‟s
search and review of the DX37 CD failed to uncover material portions of the code,
including plotting portions and plot.v. Therefore, there is no indication that Examiner
Courtenay considered the material portion of the DX37 source code. I am further
informed by Dr. Phillips that DX34 and DX37 considered by Examiner Courtenay
contained the following applications: Clock, Vicon, Query, Wave fun, and Noodle

33
34

EOLASTX-0000003316.
EOLASTX-0000003316.

Supplemental Expert Report of Nicholas P. Godici

Page 16

Exhibit A

Nicholas P. Godici
Executive Advisor
Birch, Stewart, Kolasch, & Birch, LLP

Professional Experience

Birch, Stewart, Kolasch & Birch, LLP, Falls Church, VA.
Executive Advisor (April 2005-present)
Responsibilities include business development, public relations, expert witness, and IP
consulting.

United States Patent and Trademark Office, Department of Commerce, Washington
D.C.
Commissioner for Patents (March 2000-March 2005)
Appointed by the Secretary of Commerce to a five-year term as Commissioner for
Patents in 2000. Direct report to the Under Secretary Of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office. Served as the
Chief Operating Officer for all aspects of patent related operations with the mission to
properly implement the patent laws and regulations of the United States. Oversaw a
budget of over $750 million dollars and a staff of over 5000 employees. Areas of
responsibility included strategic planning, budget formulation and execution, information
technology systems, staffing, employee development, labor management relations,
customer outreach, congressional relations, public advisory committee relations, and
patent policy formulation. Testified before the United States House and Senate on various
intellectual property matters.
Acting Under Secretary of Commerce for Intellectual Property and Director of the
United States Patent and Trademark Office (January 2001-December 2001)
Served as Acting Under Secretary during the change in Administration in 2001. As the
head of the Agency, chief executive officer and a direct report to the Secretary of
Commerce, was responsible for all aspects of intellectual property policy and operations
for the Administration. Represented the United States in international meetings at the
World Intellectual Property Organization (WIPO) and with other national IP offices.
Lead the “heads of office” meeting with the President of the European Patent
Organization (EPO) and the Commissioner of the Japan Patent Office (JPO). Interacted
with Congress, other agencies within the Administration, and major IP bar and trade
associations on legal issues, operations of the USPTO, and national security.

1

Expert Advisor at the USPTO (July-September 2009)
At the request of the Secretary of Commerce I accepted a temporary assignment as an
expert advisor to the Secretary and the Under Secretary of Commerce to strengthen the
management structure of the USPTO and provide an up-to-date assessment of the
challenges facing the agency.
Various Positions Within the USPTO (June 1972-March 2000)
Held various positions with the USPTO starting with patent examiner in the mechanical
arts, Supervisory Patent Examiner, Group Director, Deputy Assistant Commissioner for
Patents, and Acting Assistant Commissioner for Patents. Lectured in the Patent Academy
for many years. Responsibilities included oversight for Patent Cooperation Treaty (PCT)
operations which included the processing of all international applications. Assumed
responsibility for the entire patent examining corps as Deputy Assistant Commissioner
for Patents in 1997.
Education
B.S., Pennsylvania State University, Engineering Mechanics, 1972
Certificate of Advanced Public Management, The Maxwell School of Citizenship and
Public Affairs, Syracuse University, 1999.

Professional Affiliations and Awards
Elected fellow of the National Academy of Public Administration (NAPA) 2001.
Outstanding Engineering Alumni, Pennsylvania State University, 2002
Member of the Industrial and Professional Advisory Committee for the College of
Engineering at Pennsylvania State University.2001-2003.
Named “One of the most important people in intellectual property today” by Legal Times
Magazine in 2001.
Registered to Practice before the United States Patent and Trademark Office

Publications
“Supporting a Knowledge Based Economy, Software Patents”, Managing Intellectual
Property Magazine, Innovation and Invention Focus 2004.
“Adequately Funding the USPTO: A Critical Problem that Must be Solved”, Medical
Innovation & Business, Summer 2010-Volume 2- Issue 2

2

Exhibit B
List of Cases in Which Nicholas P. Godici Has Served as an Expert Witness and Given Testimony
(either at deposition or trial) Within the Last Four Years

ConnecTel LLC v Cisco Systems, Inc., United States District Court for the Eastern District of
Texas, Civil Action 2:24-cv-00396-LED
Certain Flash Memory Devices and Components Thereof, and Products Containing Such
Devices and Components, United States International Trade Commission, Investigation No. 337TA-552 (Hynix v Toshiba)
Forgent Networks, Inc. v EchoStar Technologies, Inc., Scientific-Atlanta, Inc, Motorola, Inc.,
and Digeo, Inc., United States District Court For The Eastern District Of Texas, Consolidated
Civil Action No. 6:06-cv-208
New York University v AutoDesk, Inc., United States District Court For The Southern District Of
New York, Civil Action No. 06-cv-5274 (JSR) (MHD)
Trading Technologies Int’l, Inc. v eSpeed, Inc., eSpeed International, Ltd., Ecco LLC, and
EccoWare, Ltd, United States District Court For The Northern District of Illinois, Civil Action
2:06-CV-156
American Calcar, Inc. v American Honda Motor Co., Inc. and Honda Of America Mfg., Inc.,
United States District Court for the Southern District of California, Civil No. 06-2433-DMS
(CAB)
Lazare Kaplan International Inc. v Photoscribe Technologies, Inc. et al., United States District
Court for the Southern District of New York, Civil Action No. 06-4005 (TPG) (GWG)
Repligen Corporation and the Regents of the University of Michigan, v Bristol-Myers Squibb
Company, United States District Court for the Eastern District of Texas, Case No. 2:06-CV-004TJW
Net2Phone, Inc., v eBay, Inc., Skype Technologies SA, Skype Inc., and John Does 1-10, United
States District Court District of New Jersey, Civil Action No. 06-2469 (KSH)
In re K-Dur Antitrust Litigation, United States District Court District of New Jersey, Civil
Action No. 01-1652 (JAG)
Bally Gaming, Inc. v IGT and Sierra Design Group, United States District Court for the District
of Nevada, Case No. 3:06-CV-00483-Erc-(RAM)

1

Cross Atlantic Capital Partners Inc. v Facebook, Inc., United States District Court for the
Eastern District of Pennsylvania, CA No. 07-CV-02768-JP
PDL Biopharma Inc. v SUN Pharmaceuticals Industries, United States District Court District of
New Jersey, CA No. 07-1788 (KSH)(PS)
Medtronic Sofamor Danek v Globus Medical Inc., United States District Court for the Eastern
District of Pennsylvania, CA No. 06-CV-4248-JG
Atlantic Research Marketing Systems, Inc. v Troy Industries, Inc., United States District Court
for the District of Massachusetts, C.A. No. 07-cv-11576
DESA IP, LLC and HEATHCO, LLC v EML Technologies and Costco Wholesale Corp., United
States District Court for the Middle District of Tennessee, Civil Action no. 3-04-0160
Certain Vein Harvesting Surgical Systems and Components Thereof, United States International
Trade Commission, Investigation No. 337-TA-645, (Marquet v Terumo)
Degelman Industries LTD., v Pro-Tech Welding and Fabricating, Inc. and Michael P. Weagley,
United States District Court Western District of New York, Civ. Action No.: 06-CV-6346
Conrad O. Gardner v. Toyota Motor Corp. et al., United States District Court Western District
of Washington at Seattle, No. C 08-0632 RAJ
DataTreasury Corp. v. Wells Fargo & Co. et al, United States District Court for the Eastern
District of Texas Marshall Division, case 2:06-cv-72DF
Semiconductor Energy Laboratory Co. v. Samsung Electronics Co. et al., United States District
Court Western District of Wisconsin, civil action no. 3:09-cv-00001-BBC
Phillip M. Adams & Associates v. Fujitsu Limited et al., United States District Court for the
Northern District of Utah, Civil No. 1:05-CV-64 TS
Software Tree LLC, v. Red Hat et al., United States District Court for the Eastern District of
Texas, civil action no. 6:09-cv-00097
B.Braun Melsungen AG et al. v. Terumo Medical Corp. et al.,United States District Court for the
District of Delaware, civil action no. 1:09-cv-00347
Ebay Inc. v. IDT Corp, IDT Telecom, Inc., Union Telecard Alliance LLC, and Net2phone, Inc.,
United States District Court Western District of Arkansas, civil action 4:08-cv-04015
The Chamberlain Group, Inc. and Johnson Controls Interiors LLC v. Lear Corporation, United
States District Court for the Northern District of Illinois, civil action no. 05-C-3449

2

Kathrein-Werke KG, v. RYMSA, United States District Court Northern District of Illinois, 07 C
2921
SYNQOR Inc., v. Artesyn Technologies, Inc., United States District Court Eastern District of
Texas, civil action no. 2:07-CV-497-TJW-CE
Joy MM Delaware Inc., v. Cincinnati Mine Machinery Co., United States District Court Western
District of Pennsylvania, civil action no. 2:09-cv-01415- GLL
Halo Electronics, Inc., v. Pulse Engineering Inc., United States District Court District of Nevada,
case no. 2:07-cv-00331-PMP-PAL
Wi-Lan, Inc. v. Acer et al, and Westell Technologies Inc .et al, United States District Court
Eastern District of Texas, case no 2:07-cv-473-TJW and 2:07-cv-474-TJW
Mformation Technologies, Inc. v. Research In Motion Limited et al, United States District Court
Northern District of California , case no. 08-cv-4990
Bedrock Computer Technologies LLC v. Softlayer Technologies et al, United States District
Court Eastern District of Texas Tyler Division, Civil Action No. 6:09-cv-269-LED
US Rubber Recycling, Inc., v. ECORE International Inc., United States District Court Central
District of California, Case No. CV 09-9516 SJO
Bedrock Computer Technologies LLC v. Google et al, United States District Court Eastern
District of Texas Tyler Division, Civil Action No. 6:09-cv-269-LED
Halliburton Energy Services, Inc. v. Weatherford International, Inc., United States District Court
Northern District of Texas Dallas Division, civil action no. 3:10-cv-02595-N
Sever Technology Inc. v. American Power Conversion Corp., United States District Court
District of Nevada, case no. 3:06-CV-698-LRH-VPC
Apple Inc. v. Samsung Electronics Co., United States District Court, Northern District of
California, San Jose Division, case no. 11-cv-01846-LHK
* I served as an expert witness for the underlined party

3

Exhibit C
Materials Considered
PATENT INFORMATION:
5,838,906 Patent
7,599,985 Patent
5,838,906 Patent File Wrapper
‛831 Patent File Re-Exam
‛858 Patent File Re-Exam
7,599,985 Patent File Wrapper
Documents submitted to USPTO during 1st & 2nd Patent Re-examinations
PLEADINGS:
Plaintiff’s Second Amended Complaint for Patent Infringement [Docket 517]
Defendant Yahoo! Inc.’s Answer, Affirmative Defenses, and Counterclaims to the Second
Amended Patent Infringement Complaint of Plaintiff Eolas Technologies Incorporated [Docket
No. 561]
Defendant eBay Incorporated’s Answer, Affirmative Defenses, and Counterclaims to the Second
Amended Patent Infringement Complaint of Plaintiff Eolas Technologies Incorporated [Docket
No. 562]
Defendant Amazon.com, Inc.’s Answer, Affirmative Defenses, and Counterclaims to the Second
Amended Patent Infringement Complaint of Plaintiff Eolas Technologies Incorporated [Docket
No. 563]
Eolas’ Reply to Defendant Yahoo! Inc.’s Answer, Affirmative Defenses, and Counterclaims to
the Second Amended Patent Infringement Complaint of Plaintiff Eolas Technologies
Incorporated [Docket No. 578]
Eolas’ Reply to Defendant eBay Incorporated’s Answer, Affirmative Defenses, and
Counterclaims to the Second Amended Patent Infringement Complaint of Plaintiff Eolas
Technologies Incorporated [Docket No. 579]
Eolas’ Reply to Defendant Amazon.com, Inc.’s Answer, Affirmative Defenses, and
Counterclaims to the Second Amended Patent Infringement Complaint of Plaintiff Eolas
Technologies Incorporated [Docket No. 580]
1

Defendant Microsoft’s Local Rule 56.1(b)(3) Response to Plaintiffs’ Statement of Undisputed
Facts, and Microsoft’s Statement of Additional Material Facts, in Opposition to Plaintiffs’
Motion for Summary Judgment on Inequitable Conduct (with Exhibits) [EOLASTX0000044448, EOLASTX-E-00000226121_HC-AEO]
Plaintiffs’ Memorandum of Law in Support of Their Motion for Summary Judgment of
Inequitable Conduct and Plaintiffs’ Opposition to Defendant’s Motion for Leave to Amend Its
Answer and Counterclaim [Eolas v. Microsoft, Docket No. 686]
Plaintiffs’ Reply Brief in Support of Their Motion for Summary Judgment on Inequitable
Conduct [Eolas v. Microsoft, Docket No. 813]
Plaintiffs’ Local Rule 56.1(a) Response to Defendant’s Statement of Facts Regarding Plaintiffs’
Motion for Summary Judgment on Inequitable Conduct [Eolas v. Microsoft, Docket No. 822]
Plaintiffs’ Statement of Undisputed Facts in Support of Their Motion for Summary Judgment on
Inequitable Conduct [Eolas v. Microsoft, Docket No. 685]
Plaintiffs’ Motion for Summary Judgment [Eolas v. Microsoft, Docket No. 679]
Defendant Microsoft’s Opposition to Plaintiffs’ Motion for Summary Judgment on Inequitable
Conduct [Eolas v. Microsoft, Docket No. 801]
Declaration of Richard A. Cederoth [Eolas v. Microsoft, Docket No. 800]
Defendant Microsoft’s Motion for Leave to Amend Its Answer and Counterclaim [Eolas v.
Microsoft, Docket No. 670]
Plaintiffs’ Memorandum of Law in Support of Their Motion for Summary Judgment on
Inequitable Conduct and Plaintiffs’ Opposition to Defendant’s Motion for Leave to Amend Its
Answer and Counterclaim [Eolas v. Microsoft, Docket No. 686]
Defendant Microsoft’s Reply Memorandum In Support of Its Motion for Leave to Amend Its
Answer and Counterclaim [Eolas v. Microsoft, Docket No. 691]
Plaintiffs’ Sur-Reply Memorandum of Law in Opposition to Defendants’ Motion for Leave to
Amend Its Answer and Counterclaim [Eolas v. Microsoft, Docket No. 699]
Ruling on the Defense of Inequitable Conduct [Eolas v. Microsoft, Docket No. 491]
Defendant Yahoo! Inc.s Answer, Affirmative Defenses, and Counterclaims to Plaintiffs’ Third
Amended Patent Infringement Complaint [Docket No. 1025]
Plaintiffs’ Third Amended Complaint for Patent Infringement [Docket No. 891]
Memorandum Opinion and Order [Docket No. 914]
2

Order [Docket No. 989]
DEPOSITION TRANSCRIPTS:
Eolas v. Microsoft – Depositions of Michael Doyle [EOLASTX-E-0000000178, 180, 181, 182,
185, 186]
Eolas v. Microsoft – Depositions of Pei Wei
Eolas v. Microsoft – Deposition of Charles Krueger [EOLASTX-0000318685]
Deposition of Charles Kulas [6/15/2011]
Deposition of Dr. Michael Doyle [6/24/2011]
Deposition of Dr. Michael Doyle [6/30/2011]
Deposition of Charles Krueger [6/14/2011]
Revised Deposition of Dr. Michael Doyle [8/10/2011]
Revised Deposition of Dr. Michael Doyle [8/11/2011]
Deposition of David Martin [8/18/2011]
Deposition of David Martin [8/19/2011]
Deposition of Christopher McRae [9/19/2011]
Revised Deposition of Pei Wei [10/5/2011]
EOLAS PRODUCTION:
858 Re-exam [EOLASTX-0000003004-3806]
831 Re-exam [EOLASTX-0000004542-7068]
906 Patent Prosecution [EOLASTX-0000007069-8338]
985 Patent Prosecution [EOLASTX-0000008339-9072]
Subject: How to Reach Cheong Ang - Martha Leuhrmann email to Michael Doyle, 8/29/94
[Defendant’s Trial Exhibit 825, EOLASTX-0000026094]
RE: Testing accounts for ViolaWWW – David Martin email to Pei Wei 5/20/94 [Defendant’s
Trial Exhibit 89, EOLASTX-0000025958-25959]
Index of Michael D. Doyle E-Mails [Defendant’s Trial Exhibit 703B, EOLASTX-000002605926092]
3

Re: the <EMBED> tag in HTML+ - Michael Doyle message to David Martin 5/20/94
[Defendant’s Trial Exhibit 90, EOLASTX-0000025961-25962]
7,599,985 Patent [EOLASTX-E-0002374729_HC-AEO]
Re: Eolas Acquires Milestone Internet Software Patent – Pei Wei 8/21/95 [Defendant’s Trial
Exhibit 135, EOLASTX-0000022474-22475]
Re: Viola.tar.z for ftping – Pei Wei email to James Kempf 5/31/1993 [Defendant’s Trial Exhibit
41, EOLASTX-0000065008]
Re: ViolaWWW – Pei Wei message to [e-mail], [e-mail] 10/17/93 [Defendant’s
Trial Exhibit 62, EOLASTX-0000022428]
Re: ViolaWWW alpha – John Cahill message to [e-mail] 10/21/93 [Defendant’s
Trial Exhibit 63, EOLASTX-0000022429]
Re: ViolaWWW beta release is available – Pei Wei posting 2/25/1994 [Defendant’s Trial
Exhibit 73, EOLASTX-0000022436-22437]
Viola Stuff [Defendant’s Trial Exhibit 147, EOLASTX-00000168065-168090]
“A Brief Overview of the VIOLA Engine, and its Applications” [Defendant’s Trial Exhibit 93A,
EOLASTX-0000025964-25974]
Re: FYI…press release – Michael Doyle posting 8/31/94 [Defendant’s Trial Exhibit 100,
EOLASTX-0000168171]
FYI…press release – Michael Doyle posting 8/30/94 [Defendant’s Trial Exhibit 826,
EOLASTX-0000022772-22773]
Re: FYI…press release – Pei Wei message to [e-mail] 8/31/94 [Defendant’s
Trial Exhibit 98, EOLASTX-0000061841]
Re: FYI…press release – Michael Doyle message to Pei Wei 8/31/94 [Defendant’s Trial Exhibit
99, EOLASTX-0000035966]
Re: FYI…press release – Michael Doyle posting 8/31/94 [Defendant’s Trial Exhibit 101,
EOLASTX-0000025980-25981]
Re: FYI…press release – Michael Doyle posting 8/31/94 [Defendant’s Trial Exhibit 102,
EOLASTX-0000043735-43736]
Re: FYI…press release – Pei Wei message to Michael Doyle 8/31/94 [Defendant’s Trial Exhibit
107, EOLASTX-0000042939-42940]

4

Re: FYI…press release – Pei Wei posting 9/1/94 [Defendant’s Trial Exhibit 111, EOLASTX0000025989-25990]
Viola Information from Stanford Computer Forum WWW Workshop – September 20-21, 1994
[Defendant’s Trial Exhibit 121, EOLASTX-0000168057-168063]
Viola Information from Stanford Computer Forum WWW Workshop – September 20-21, 1994
[Defendant’s Trial Exhibit 122, EOLASTX-0000168154-168165]
Eolas Acquires Milestone Internet Software Patent – [e-mail] to [e-mail]
8/21/95 [Defendant’s Trial Exhibit 196, EOLASTX-0000026057]
Eolas Acquires Milestone Internet Software Patent – Pei Wei to [e-mail] 8/21/95
[Defendant’s Trial Exhibit 136, EOLASTX-0000026004]
Eolas Acquires Milestone Internet Software Patent – Pei Wei to Michael Doyle 8/21/95
[Defendant’s Trial Exhibit 138, EOLASTX-0000026006]
Eolas v. Microsoft - Supplemental Expert Invalidity Report of John Kelly [EOLASTX0000098503-98637]
The Virtual Embryo: VR Applications in Human Developmental Anatomy [EOLASTX0000000273-276]
9/27/2005 Notice of Intent to Issue Ex Parte Reexammination Certificate [EOLASTX0000006893-6969]

OTHER PRODUCTION:
RE: Hot Java is here! And it *rocks* - Michael Doyle message to [e-mail]
3/27/95 [Defendant’s Trial Exhibit 127, PH_001_0000597952]
Eolas v. Microsoft - Expert Invalidity Report of John Kelly [PH_001_0000035135-35184]
Portable Document Format Reference Manual [ADBE0195521]
TRIAL TRANSCRIPTS:
Eolas v. Microsoft Inequitable Conduct Hearing Transcript [EOLASTX-E-0000000631, 632,
633]
Eolas v. Microsoft Trial Transcript
OTHER DOCUMENTS:

5

Report by the National Academy of Public Administration, “U.S. Patent and Trademark Office:
Transforming to Meet the Challenges of the 21st Century”, August 2005
Claim Chart for Adobe Showing Indirect Infringement of the 906 Patent Through PDF
Authoring Tools and Direct and/or Indirect Infringement Via Its PDF Viewers
Claim Chart for Adobe Showing Indirect Infringement of the 906 Patent Through Flash
Authoring Tools and Direct and Indirect Infringement Via Players
Claim Chart for Adobe Showing Indirect Infringement of the 985 Patent Through PDF
Authoring Tools and Direct and/or Indirect Infringement Via Its PDF Viewers
Claim Chart for Adobe Showing Indirect Infringement of the 985 Patent Through Flash
Authoring Tools and Direct and Indirect Infringement Via Players
Adobe Systems Incorporated – Preferred Customer Agreement for Disclosures of Adobe
Information between UCSF [8/19/93] [ADBE0195776]
Kevin Altis post Re: Adobe’s PDF found at [http://www.intercom.co.cr/www-archives/1993q3/0207.html] [7/19/93]
Email from John Dawes re: Acrobat and UCSF [5/17/93]
Email from Christopher McRae to www-talk re: HTML spec [6/21/93]
Email from Christopher McRae to David Martin re: Adobe Acrobat beta agreement? [6/2/93]
Email from Christopher McRae to John Dawes re: Acrobat and UCSF [5/14/93]
Email from David Martin to Christopher McRae re: Adobe Acrobat Beta Agreement? [6/21/93]
Email from David Martin to Daniel Miles Kehoe re: Adobe’s PDF [7/20/93]
Email from David Martin to Marc Solomon re: [[e-mail] (Daniel Miles Kehoe):
Adobe’s PDF] [7/19/93]
Webpage - An Overview of Hypertext and IR Systems and Applications
http://info.cern.ch/hypertext/products/overview.html
Image of Los Alamos National Laboratory CD – LANL – Software and Visualization Sampler
Email from Christopher McRae to David Martin re: More hypertext systems [9/8/93]
“Mediaview” posting found at:
[http://www.w3.org/History/19921103-hypertext/hypertext/Products/MediaView/Mail.html]

6

Email from [e-mail] to [e-mail], [e-mail],
luotonen@ re: WWWWorkshop [7/16/93]
Email from Daniel Miles Kehoe to [e-mail] re: Adobe’s PDF [7/16/93]
Email from Christopher McRae to David Martin re: Adobe Acrobat Beta Agreement? [6/18/93]
A Brief History of Adobe Acrobat [ADBE0196062-0196071]
Eolas v. The Regents of the University of California 399 F.3d 1325
REPORTS:
Richard Phillips Report - Appendix C – video demonstrations
Richard Phillips Supplemental Invalidity Report dated 10/27/2011

7