Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 304

Defendant Amazon.com, Inc.'s ANSWER to 285 Amended Complaint,, Affirmative Defenses and, COUNTERCLAIM against Eolas Technologies Incorporated by Amazon.com Inc..(Lumish, Douglas)

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-CV-446 (LED)

DEFENDANT AMAZON.COM, INC.'S ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO THE AMENDED PATENT INFRINGEMENT COMPLAINT OF PLAINTIFF EOLAS TECHNOLOGIES INCORPORATED Defendant Amazon.com, Inc. ("Amazon.com") by and through its undersigned counsel, hereby responds to Plaintiff Eolas Technologies, Incorporated's ("Eolas") Complaint for Patent Infringement ("Complaint") as follows: ANSWER I. 1. PARTIES

Amazon.com denies that "[d]uring the last 15 years, Eolas' innovations

have enabled corporations around the world to enhance their products and improve their customers' website experiences by enabling browsers, in conjunction with servers, to act as platforms for fully interactive embedded applications" to the extent that Eolas intends this allegation to apply to Amazon.com. As to the remaining allegations, Amazon.com is without knowledge or information sufficient to form a belief as to the truth of the statements in Paragraph 1 of the Complaint, and, on that basis, denies those allegations. 2. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 2 of the Complaint, and, on that basis, denies those allegations.

3. 4.

Amazon.com admits the allegations in Paragraph 3 of the Complaint. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 4 of the Complaint, and, on that basis, denies those allegations. 5. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 5 of the Complaint, and, on that basis, denies those allegations. 6. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 6 of the Complaint, and, on that basis, denies those allegations. 7. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 7 of the Complaint, and, on that basis, denies those allegations. 8. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 8 of the Complaint, and, on that basis, denies those allegations. 9. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 9 of the Complaint, and, on that basis, denies those allegations. 10. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 10 of the Complaint, and, on that basis, denies those allegations. 11. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 11 of the Complaint, and, on that basis, denies those allegations. 12. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 12 of the Complaint, and, on that basis, 2

denies those allegations. 13. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 13 of the Complaint, and, on that basis, denies those allegations. 14. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 14 of the Complaint, and, on that basis, denies those allegations. 15. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 15 of the Complaint, and, on that basis, denies those allegations. 16. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 16 of the Complaint, and, on that basis, denies those allegations. 17. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 17 of the Complaint, and, on that basis, denies those allegations. 18. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 18 of the Complaint, and, on that basis, denies those allegations. 19. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 19 of the Complaint, and, on that basis, denies those allegations. 20. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 20 of the Complaint, and, on that basis, denies those allegations. 21. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 21 of the Complaint, and, on that basis, 3

denies those allegations. 22. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 22 of the Complaint, and, on that basis, denies those allegations. 23. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 23 of the Complaint, and, on that basis, denies those allegations. II. 24. JURISDICTION AND VENUE

Amazon.com incorporates its responses contained in Paragraphs 1­23 as

though fully set forth here. 25. Amazon.com admits that this Court has subject matter jurisdiction under

28 U.S.C. §§ 1331 and 1338(a). Amazon.com admits that Eolas's Complaint purports to be an action that arises under the patent laws of the United States, 35 U.S.C. § 1 et seq, but denies any wrongdoing or liability on its own behalf for the reasons stated herein. Except as so expressly admitted herein, Amazon.com denies the allegations in Paragraph 25 of the Complaint. 26. Amazon.com admits that the Complaint alleges that personal jurisdiction Amazon.com admits that it operates a

over Defendants exists generally and specifically.

website, www.amazon.com, that may be accessed from anywhere in the world, including the Eastern District of Texas. Amazon.com denies that it has committed any acts of infringement within this district and specifically denies any wrongdoing, infringement, inducement of infringement or contribution to infringement. Amazon.com lacks sufficient knowledge or

information regarding the other defendants and on that basis denies the allegations of Paragraph 26 with respect to the other Defendants. Except as so expressly admitted herein, Amazon.com denies the allegations in Paragraph 26 of the Complaint. 27. Amazon.com denies that venue is appropriate in this district and has filed

a motion to transfer venue.

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III. 28.

PATENT INFRINGEMENT

Amazon.com incorporates its responses contained in Paragraphs 1­27 as

though fully set forth here. 29. Amazon.com admits that U.S. Pat. No. 5,838,906 ("the '906 patent") is

entitled "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document" and Amazon.com admits that U.S. Pat. No. 7,599,985 ("the '985 patent") is entitled "Distributed hypermedia method and system for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document." Amazon.com admits that the issue date on the face of the '906 patent is November 17, 1998 and Amazon.com admits that the issue date on the face of the '985 patent is October 6, 2009. Amazon.com denies that either the '906 patent or the '985 patent was "duly and legally issued." Except as so expressly admitted, Amazon.com denies the allegations in Paragraph 29 of the Complaint. 30. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 30 of the Complaint, and, on that basis, denies those allegations. 31. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 31 of the Complaint, and, on that basis, denies those allegations. 32. Complaint. 33. Amazon.com is without knowledge or information sufficient to form a Amazon.com denies the allegations contained in Paragraph 32 of the

belief as to the truth of the statements in Paragraph 33 of the Complaint, and, on that basis, denies those allegations. 34. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 34 of the Complaint, and, on that basis, denies those allegations.

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35.

Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 35 of the Complaint, and, on that basis, denies those allegations. 36. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 36 of the Complaint, and, on that basis, denies those allegations. 37. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 37 of the Complaint, and, on that basis, denies those allegations. 38. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 38 of the Complaint, and, on that basis, denies those allegations. 39. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 39 of the Complaint, and, on that basis, denies those allegations. 40. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 40 of the Complaint, and, on that basis, denies those allegations. 41. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 41 of the Complaint, and, on that basis, denies those allegations. 42. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 42 of the Complaint, and, on that basis, denies those allegations. 43. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 43 of the Complaint, and, on that basis, denies those allegations. 6

44.

Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 44 of the Complaint, and, on that basis, denies those allegations. 45. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 45 of the Complaint, and, on that basis, denies those allegations. 46. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 46 of the Complaint, and, on that basis, denies those allegations. 47. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 47 of the Complaint, and, on that basis, denies those allegations. 48. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 48 of the Complaint, and, on that basis, denies those allegations. 49. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 49 of the Complaint, and, on that basis, denies those allegations. 50. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 50 of the Complaint, and, on that basis, denies those allegations. 51. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 51 of the Complaint, and, on that basis, denies those allegations. 52. Amazon.com is without knowledge or information sufficient to form a

belief as to the truth of the statements in Paragraph 52 of the Complaint, and, on that basis, denies those allegations. 7

53.

As to Amazon.com, Amazon.com denies the allegations contained in

Paragraph 53 of the Complaint. As to the other defendants, Amazon.com is without knowledge or information sufficient to form a belief as to the truth of the statements in Paragraph 53 of the Complaint, and, on that basis, denies those allegations. 54. Amazon.com denies the allegations contained in Paragraph 54 of the

Complaint as to Amazon.com. As to the other defendants, Amazon.com is without knowledge or information sufficient to form a belief as to the truth of the statements in Paragraph 54 of the Complaint, and, on that basis, denies those allegations. 55. Amazon.com denies the allegations contained in Paragraph 55 of the

Complaint as to Amazon.com. As to the other defendants, Amazon.com is without knowledge or information sufficient to form a belief as to the truth of the statements in Paragraph 55 of the Complaint, and, on that basis, denies those allegations. 56. Amazon.com denies the allegations contained in Paragraph 56 of the

Complaint as to Amazon.com. As to the other defendants, Amazon.com is without knowledge or information sufficient to form a belief as to the truth of the statements in Paragraph 56 of the Complaint, and, on that basis, denies those allegations. IV. PRAYER FOR RELIEF

Amazon.com denies that Eolas is entitled to any of the relief sought in its prayer for relief. Amazon.com has not directly or indirectly infringed any claims of the '906 or '985 patents, either literally or by the doctrine of equivalents, willfully or otherwise. Eolas is not entitled to recover statutory damages, compensatory damages, enhanced damages, an accounting, injunctive relief, costs, fees, interest, or any other type of recovery from Amazon.com. Eolas's prayer should, therefore, be denied in its entirety and with prejudice, and Eolas should take nothing. AFFIRMATIVE DEFENSES

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Amazon.com's affirmative defenses are alleged below. Amazon.com reserves the right to amend its Answer, Affirmative Defenses, and Counterclaims to add additional affirmative defenses. I. 57. FAILURE TO STATE A CLAIM

The Complaint fails to state a claim upon which relief can be granted. II. NON-INFRINGEMENT

58. herein. 59.

Amazon.com restates its responses set forth above as if separately set forth

Amazon.com does not and has not directly or indirectly infringed any

valid claims of the '906 patent or the '985 patent, either literally or under the doctrine of equivalents, willfully or otherwise. III. 60. herein. 61. The claims of the '906 patent and the '985 patent are invalid for failure to INVALIDITY

Amazon.com restates its responses set forth above as if separately set forth

comply with the requirements of Title 35 of the United States Code, including but not limited to Sections 101, 102, 103, and/or 112. IV. 62. herein. 63. Although Eolas alleges in its Complaint that the `906 Patent was duly and INEQUITABLE CONDUCT

Amazon.com restates its responses set forth above as if separately set forth

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. 64. 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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65.

As a named inventor, Doyle 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. 66. Doyle's duty of candor and good faith also existed during the

reexaminations of the '906 patent. 67. The duty of candor and good faith owed by 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. 68. Patent Office. 69. On information and belief, Doyle had a financial incentive to deceive the 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. 70. 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. 71. On information and belief, the '906 and '985 patents are owned by The

Regents of the University of California. 72. On information and belief, Doyle and his co-inventors are entitled to

receive a portion of any royalties paid to The Regents of the University of California related to the '906 and/or '985 patents. 73. action, Eolas. 74. On information and belief, Doyle quit his job to found Eolas, and On information and belief, Doyle is a founder of the plaintiff in this

personally invested time and money in Eolas. 75. On information and belief, Doyle has had a financial interest in Eolas

since at least August 21, 1995. 10

76.

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

rights to the patent application that matured into the '906 patent. 77. On information and belief, Doyle was personally involved in the

prosecution of the '906, the reexaminations of the '906 patent, and the prosecution of the '985 patent at the same time that he had a financial interest in Eolas and a financial interest in any royalties on the '906 and/or '985 patents paid to The Regents of the University of California. 78. As explained in more detail below, on information and belief, Doyle

breached his duty of candor and good faith in dealing with the Patent Office. On information and belief, Doyle failed to disclose material information and made affirmative misrepresentations of material facts. On information and belief, Doyle did so with knowledge of the information he withheld, with knowledge of the falsity of his misrepresentations, and with the specific intent to deceive the Patent Office. The circumstances of Doyle's actions confirm an intent to deceive the Patent Office. 79. As explained in more detail below, on information and belief, Doyle

breached has 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, Doyle did so with knowledge of the information he withheld and with the specific intent to deceive the Patent Office. The circumstances of Doyle's actions confirm an intent to deceive the Patent Office. 80. 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 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, Doyle knew that the ViolaWWW browser disclosed these limitations, yet he withheld this information from the Patent Office at the same time that he argued to the Patent 11

Office that these limitations were missing from the prior art. 81. 82. The application for the '906 patent was filed on October 17, 1994. 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. 83. On information and belief, Doyle 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. 84. 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." 85. On information and belief, Raggett further advised Doyle that he could

"find a pointer to Viola off the CERN WWW project page." 86. 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 publicly-accessible 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 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..." 12

87.

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

application for the '906 patent was filed -- Doyle knew about Pei Wei's ViolaWWW browser. 88. On information and belief, Doyle learned even more about the

ViolaWWW browser before the application for the '906 patent was filed. 89. 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. 90. 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 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." 91. 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." 92. On information and belief, the paper cited by Pei Wei was entitled "A

Brief Overview of the VIOLA Engine, and its Applications." 93. 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. 94. On information and belief, the paper cited by Pei Wei included the

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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.

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 interperter, 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 ocassionally 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. 95. On information and belief, "Doyle downloaded and read the paper." 399

F.3d 1325, 1330 (Fed. Cir. 2005). 96. 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." 97. 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 18

comprehensive as yours. But, the point was that there was a way to embed programmable & interactive objects into HTML documents. 98. 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." 99. 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. 100. 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). 101. 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. 102. On information and belief, Doyle's response was sent after Doyle had read

Pei Wei's paper about the ViolaWWW browser dated August 16, 1994. 103. 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 . . . ." 104. 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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105.

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. 106. 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. 107. 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. 108. 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 Viola paper dated August 16, 1994, that he had downloaded and read. Doyle kept on his computer other emails from that timeframe, however. 109. On information and belief, Doyle was living in Northern California on

August 31, 1994, when he exchanged messages with Pei Wei about the ViolaWWW browser. 110. 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. 111. 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. 112. On information and belief, there was no limitation, restriction or

obligation of secrecy on the readers of Pei Wei's paper about the ViolaWWW browser dated

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August 16, 1994. 113. On October 17, 1994, the application for the '906 patent was filed. Doyle

and Martin were among those named as inventors. 114. The application for the '906 patent discloses the Mosaic browser and the

Cello browser, but not the ViolaWWW browser. 115. The application for the '906 patent included an information disclosure

statement that identified several pieces of prior art, but not the ViolaWWW browser. 116. 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." 117. 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. 118. 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. 119. 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 email 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." 120. On information and belief, on August 21, 1995, at approximately 12:54 21

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." 121. 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." 122. 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: ....
> 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. . . . .... 22

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. 123. 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." 124. 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). 125. 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 28­30, 1993. 126. On information and belief, people attending the Wizards workshop

included Tim Berners-Lee, Marc Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei. 127. On information and belief, Tim Berners-Lee and Dale Dougherty were the

organizers of the Wizards workshop. 128. On information and belief, Dale Dougherty worked at O'Reilly &

Associates in Northern California. 129. 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. 130. On information and belief, Scott Silvey worked with Pei Wei at O'Reilly

& Associates in Northern California. 131. 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 23

to cook up that particular plotting demo," the other person he was referring to was Scott Silvey. 132. On information and belief, Tim Berners-Lee is the person generally

attributed to be the inventor of the World Wide Web. 133. 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. 134. 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. 135. 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. 136. On information and belief, there was no limitation, restriction or

obligation of secrecy on anyone at the Wizards workshop. 137. 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). 138. 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. 139. 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. 140. 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 24

disclose any information about the ViolaWWW browser to the Patent Office, as explained in more detail below. 141. On information and belief, during prosecution of the '906 patent, Doyle

maintained a folder called "Viola stuff." 142. 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." 143. 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 Doyle asked Pei Wei, "Out of curiosity, did you publicly demonstrate this or publish any results before 1994?" 144. 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." 145. On information and belief, "WWWWizardsWorkshop" refers to the

World-Wide Web Wizards Workshop held in Cambridge, Massachusetts on July 28­30, 1993, that Pei Wei attended. 146. 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. 147. On information and belief, the "Agenda" link links to a webpage at that On information and belief, the "Announcement" link links to a webpage

<http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Agenda.html> states that "Interactive objects" was on the agenda for discussion at the Wizards workshop. 25

148.

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 Viola paper dated August 16, 1994, 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. 149. 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. 150. 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: 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] 151. 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." 152. 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:

26

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

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

27

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. 154. 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". 155. 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". 156. On information and belief, the following is a screenshot of the

ViolaWWW browser after parsing the file plotDemo.html:

28

157.

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

code for the plotting demo described in the Viola paper dated August 16, 1994. 158. 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. 159. 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-

29

end draws the graphics directly onto the window violaWWW has opened for it." 160. 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 Viola paper dated August 16, 1994, was the "very one" demonstrated "to visitors from a certain computer manufacturer" by May 8, 1993. 161. 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). 162. 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. 163. 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. 164. On information and belief, the webpages that Doyle printed included the

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

30

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. ....

31

165.

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. 166. 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 Viola paper dated August 16, 1994. 167. 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 Viola paper dated August 16, 1994, was the "very one" demonstrated "to visitors from a certain computer manufacturer" by May 8, 1993.

32

168.

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). 169. 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. 170. On information and belief, the ViolaWWW browser was material to the

patentability of the claimed inventions in the '906 patent. 171. On information and belief, there is a remarkable similarity between the

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

ViolaWWW

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

33

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. 172. 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] 173. 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] 174. The Federal Circuit has confirmed that the ViolaWWW browser was The Manual of Patent Examining Procedure in force today contains

material to the patentability of the claimed inventions in the '906 patent. 175. The Federal Circuit held that a reasonable jury could find at least claims 1

34

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, 1332­35 (Fed. Cir. 2005). 176. 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). 177. 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). 178. 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). 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 Viola paper dated August 16, 1994. 181. On information and belief, Pei Wei had told Doyle on August 31, 1994,

about the Viola paper dated August 16, 1994 and Doyle had downloaded and read that paper the same day, yet Doyle never disclosed the Viola paper to the Patent 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 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 Viola paper

dated August 16, 1994, was part of the ViolaWWW browser software that was demonstrated to 35

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 Viola paper dated August 16, 1994, 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. 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 never disclosed to the Patent Office during that examination the evidence he had in his possession that the ViolaWWW browser was in "public use" more than one year before the application for the '906 patent was filed. 189. On information and belief, the Patent Office would not have allowed the

claims of the '906 patent if Doyle had not engaged in inequitable conduct and instead had fulfilled his duty of candor and good faith in dealing with the Patent Office. 190. During prosecution of application number 08/324,443, which matured into

the '906 patent, Doyle withheld extensive evidence about the ViolaWWW browser. 191. On information and belief, Doyle failed to disclose the following material

information: the message from Raggett about the ViolaWWW browser and embedded objects; 36

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 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. 192. On information and belief, Doyle withheld information about the

ViolaWWW browser with the specific intent to deceive the Patent Office. 193. On information and belief, Doyle had a financial interest in the

patentability of the claimed inventions in the '906 patent. 194. 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. 195. On information and belief, Doyle was personally involved in the

prosecution of application number 08/324,443, which matured into the '906 patent. 196. 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. 197. 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. 198. On or about February 24, 1997, Doyle participated in an examiner

interview in an effort to secure allowance of the claims of the '906 patent application. 37

199.

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" in the subject matter of the claimed invention and to overcome various obviousness rejections to the claims of the '906 patent application. 200. 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. 201. On or about November 6, 1997, Doyle participated in another examiner

interview in an effort to secure allowance of the claims of the '906 patent application. 202. On information and belief, the prosecuting attorney for the '906 patent

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. 203. On information and belief, Doyle personally reviewed and approved

papers submitted to the Patent Office during prosecution of the '906 patent. 204. Despite Doyle's extensive personal involvement in the prosecution of

application number 08/324,443, which matured into the '906 patent, Doyle never disclosed the ViolaWWW browser to the Patent Office during that prosecution. 205. Patent Office. 206. On information and belief, during prosecution of the '906 patent, Doyle The circumstances of Doyle's actions demonstrate an intent to deceive the

made arguments for patentability that could not have been made if he had disclosed the ViolaWWW browser to the Patent Office. 207. On or about May 6, 1996, the Patent Office rejected several claims as

being anticipated by the University of Southern California's "Mercury Project." 208. the Patent Office. 209. On information and belief, Doyle personally reviewed and approved the 38 On or about August 6, 1996, a response to this rejection was submitted to

response submitted to the Patent Office on or about August 6, 1996. 210. 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. 211. If Doyle had disclosed the ViolaWWW prior art to the Patent Office, it The response submitted on or about August 6, 1996, included the

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." 212. 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. 213. Patent Office. 214. Doyle personally reviewed and approved the response submitted to the On or about June 2, 1997, a response to this rejection was submitted to the

Patent Office on or about June 2, 1997. 215. 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. 216. On information and belief, if Doyle had disclosed the ViolaWWW prior The response submitted on or about June 2, 1997, included the following

art to the Patent Office, it would not have been possible to distinguish the claims of the '906

39

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." 217. 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. 218. On or about December 23, 1997, a response to this rejection was

submitted to the Patent Office. 219. On information and belief, Doyle personally reviewed and approved the

response submitted to the Patent Office on or about December 23 1997. 220. 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. 221. On information and belief, if Doyle had disclosed the ViolaWWW prior The response submitted on or about December 23, 1997, included the

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." 222. On information and belief, Doyle's repeated use of arguments that could

not have been made if Doyle had disclosed the ViolaWWW prior art demonstrates an intent to deceive the Patent Office. 223. 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 2