Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 449

Amended ANSWER to 285 Amended Complaint,,, COUNTERCLAIM against Eolas Technologies Incorporated by Adobe Systems Incorporated.(Healey, David)

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Eolas Technologies Incorporated v. Adobe Systems Incorporated et al Doc. 449 UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION EOLAS TECHNOLOGIES, INC. Plaintiff, Civil Action No. 6:09-CV-446 LED v. ADOBE SYSTEMS, INC., ET AL., Defendants. DEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Pursuant to Rule 8 of the Federal Rules of Civil Procedure, Defendant Adobe Systems Incorporated ("Adobe"), by and through its undersigned counsel, hereby responds to the First Amended Complaint ("Complaint") of Eolas Technologies, Inc. ("Eolas" or "Plaintiff"), on personal knowledge as to its own activities and on information and belief as to the activities of others, as follows. Adobe denies each and every allegation contained in the Complaint that is not expressly admitted below. Any factual allegation admitted below is admitted only as to the specific admitted facts, not as to any purported conclusions, characterizations, implications, or speculations that may arguably follow from the admitted facts. Adobe denies that Plaintiff is entitled to the relief requested or any other. PARTIES 1. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 1 and therefore denies the same. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 1 Civil Action No. 6:09-CV-446 LED Dockets.Justia.com 2. Adobe admits that it is a Delaware corporation with its principal place of business at 345 Park Avenue, San Jose, California 95110-2704. Adobe admits that it is registered to do business in the State of Texas and that it does business in this judicial district and elsewhere. Adobe admits that it has appointed Corporation Service Company d/b/a CSC, 701 Brazos Street, Suite 1050, Austin, Texas 78701, as its agent for service of process. 3. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 3 and therefore denies the same. 4. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 4 and therefore denies the same. 5. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 5 and therefore denies the same. 6. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 6 and therefore denies the same. 7. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 7 and therefore denies the same. 8. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 8 and therefore denies the same. 9. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 9 and therefore denies the same. 10. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 10 and therefore denies the same. 11. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 11 and therefore denies the same. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 2 Civil Action No. 6:09-CV-446 LED 12. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 12 and therefore denies the same. 13. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 13 and therefore denies the same. 14. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 14 and therefore denies the same. 15. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 15 and therefore denies the same. 16. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 16 and therefore denies the same. 17. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 17 and therefore denies the same. 18. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 18 and therefore denies the same. 19. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 19 and therefore denies the same. 20. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 20 and therefore denies the same. 21. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 21 and therefore denies the same. 22. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 22 and therefore denies the same. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 3 Civil Action No. 6:09-CV-446 LED 23. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 23 and therefore denies the same. JURISDICTION AND VENUE 24. Adobe incorporates by reference the foregoing responses, inclusive, as though set forth in full herein. 25. Adobe admits that this Complaint purports to state a claim of alleged patent infringement and that this Court has subject matter jurisdiction over patent claims. 26. Adobe admits that this Court has personal jurisdiction over Adobe for purposes of this dispute. Adobe further admits that it is registered to do business in the State of Texas and that it does business in this judicial district and elsewhere. Adobe denies the remaining allegations of paragraph 26 with respect to Adobe. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 26 regarding other defendants and therefore denies the same. 27. Adobe admits that venue in this District is purportedly based on 28 U.S.C. 1391(b), (c) and 1400(b), but denies that this District is the most convenient venue for adjudication of the claims raised by Eolas in this action. PATENT INFRINGEMENT 28. Adobe incorporates by reference the foregoing responses, inclusive, as though set forth in full herein. 29. Adobe admits that U.S. Patent 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 was issued by the United States Patent and Trademark Office on November 17, 1998. Adobe admits that U.S. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 4 Civil Action No. 6:09-CV-446 LED Patent 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" and was issued by the United States Patent and Trademark Office on October 6, 2009. Adobe denies that either the '906 or '985 patent (collectively "the Patents-in-Suit") were duly and legally issued by the United States Patent and Trademark Office. Adobe denies the remainder of the allegations in paragraph 29. 30. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 30 and therefore denies the same. 31. Adobe admits that it maintains and controls servers located in and/or accessible from the United States. Adobe admits that it owns and operates www.adobe.com and tv.adobe.com. Adobe admits that Adobe Flash Player and Adobe Shockwave Player are Adobe software products. Adobe otherwise denies the allegations of paragraph 31. 32. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 32. 33. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 33 and therefore denies the same. 34. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 34 and therefore denies the same. 35. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 35 and therefore denies the same. 36. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 36 and therefore denies the same. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 5 Civil Action No. 6:09-CV-446 LED 37. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 37 and therefore denies the same. 38. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 38 and therefore denies the same. 39. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 39 and therefore denies the same. 40. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 40 and therefore denies the same. 41. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 41 and therefore denies the same. 42. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 42 and therefore denies the same. 43. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 43 and therefore denies the same. 44. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 44 and therefore denies the same. 45. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 45 and therefore denies the same. 46. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 46 and therefore denies the same. 47. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 47 and therefore denies the same. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 6 Civil Action No. 6:09-CV-446 LED 48. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 48 and therefore denies the same. 49. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 49 and therefore denies the same. 50. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 50 and therefore denies the same. 51. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 51 and therefore denies the same. 52. Adobe is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 52 and therefore denies the same. 53. Adobe denies the allegations of paragraph 53 to the extent they pertain to Adobe. Adobe otherwise is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 53 as they pertain to the other defendants and therefore denies the same 54. Adobe denies the allegations of paragraph 54 to the extent they pertain to Adobe. Adobe otherwise is without information or knowledge sufficient to form a belief as to the truth or falsity of the allegations of paragraph 54 as they pertain to the other defendants and therefore denies the same. 55. Adobe denies the allegations of paragraph 55 to the extent they pertain to Adobe and denies that Eolas is entitled to any of the requested relief from or with respect to Adobe. 56. Adobe denies the allegations of paragraph 56 to the extent they pertain to Adobe and denies that Eolas is entitled to any of the requested relief from or with respect to Adobe. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 7 Civil Action No. 6:09-CV-446 LED ANSWER TO PRAYER FOR RELIEF BY EOLAS 57. 58. Adobe states that Eolas' Prayer for Relief does not require a response. Adobe denies that Eolas is entitled to any relief whatsoever from Adobe, as prayed for or otherwise. 59. Adobe denies each and every allegation of the Complaint not already admitted or denied and further denies that Eolas is entitled to any relief whatsoever from Adobe on the basis of any of the purported claims for relief contained in the Complaint. AFFIRMATIVE AND OTHER DEFENSES 60. By way of further answer, and as Affirmative Defenses to the Complaint, Adobe states as follows: First Affirmative Defense (Failure to State a Claim) 61. Eolas fails to state a claim upon which relief can be granted, at least because it has not met the pleading standards or requirements of Ashcroft v. Iqbal, 129 S.Ct. 1973 (U.S. 2009) and Bell Atlantic Corp., et al. v Twombly et al., 548 U.S. 903 (2006) as interpreted and applied by this Court. Second Affirmative Defense (Non-Infringement) 62. Adobe and the use of Adobe's products do not infringe and have never infringed any claims of the '906 or '985 patents. Adobe has not and does not infringe, contribute to the infringement of, or actively induce others to infringe any valid, enforceable claim of the Patentsin-Suit, either directly, indirectly, literally or under the doctrine of equivalents. By asserting this affirmative defense, Adobe does not assume any burden of proof. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 8 Civil Action No. 6:09-CV-446 LED Third Affirmative Defense (Invalidity) 63. The claims of the '906 and '985 patents are invalid because they fail to satisfy one or more of the conditions for patentability specified in Title 35 of the United States Code, including, inter alia, 101, 102, 103, 112, and 132, and the rules, regulations, and laws pertaining thereto. Fourth Affirmative Defense (Standing/Nonjoinder) 64. Eolas lacks sufficient substantial rights in the Patents-in-Suit to assert and maintain claims of patent infringement. By asserting this affirmative defense, Adobe does not assume any burden of proof. Fifth Affirmative Defense (Federal Government Use) 65. Plaintiff's remedies are limited by the provisions of 28 U.S.C. 1498. Sixth Affirmative Defense (Laches/Estoppel) 66. Plaintiff is barred or limited by the doctrine of laches and/or equitable estoppel from enforcing some or all of the asserted claims of the Patents-in-Suit against Adobe. Seventh Affirmative Defense (Implied or Express License/Exhaustion) 67. Eolas is barred by the doctrines of implied or express license and/or exhaustion from enforcing the Patents-in-Suit against Adobe. Eolas and/or its predecessors-in-interest have licensed the Patents-in-Suit to one or more of Adobe's suppliers, customers, and/or users. Under the doctrines of patent exhaustion, implied or express license, the use or sale of products supplied by these licensees cannot give rise to liability for infringement of such licensed patents. By asserting this affirmative defense, Adobe does not assume any burden of proof. . Eighth Affirmative Defense (No Injunction) UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 9 Civil Action No. 6:09-CV-446 LED 68. Eolas is not entitled to injunctive relief because any injury to it is not immediate or irreparable, and Eolas has an adequate remedy at law for any claims it can prove. Ninth Affirmative Defense (Failure To Mark) 69. On information and belief, Eolas' purported claims for relief concerning the Patents-in-Suit are limited by failure to comply with the marking and notice requirements of 35 U.S.C. 287(a). By asserting this affirmative defense, Adobe does not assume any burden of proof. Tenth Affirmative Defense (Limitation On Damages) 70. Eolas' recovery for alleged infringement of the Patents-in-Suit, if any, is limited to any alleged infringement committed no more than six years prior to the filing of its complaint, pursuant to 35 U.S.C. 286. By asserting this affirmative defense, Adobe does not assume any burden of proof. Eleventh Affirmative Defense (Prosecution History Estoppel) 71. Eolas is estopped, based on statements, representations, and admissions made during prosecution of the patent application resulting in the Patents-in-Suit, from asserting any interpretation of any valid, enforceable claims of the Patents-in-Suit that would be broad enough to cover any of Adobe's products or services alleged to infringe the Patents-in-Suit, either literally or by application of the doctrine of equivalents. By asserting this affirmative defense Adobe does not assume any burden of proof. Twelfth Affirmative Defense (Costs) 72. action. Thirteenth Affirmative Defense (Waiver) UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 10 Civil Action No. 6:09-CV-446 LED Eolas is barred by 35 U.S.C. 288 from recovering any costs associated with this 73. Eolas' claims for relief are barred by the doctrine of waiver. Fourteenth Affirmative Defense (Intervening Rights) 74. Eolas' claims for relief are limited due to legal and/or equitable intervening rights under 35 U.S.C. 252 and 307(b). Fifteenth Affirmative Defense (Inequitable Conduct/Unclean Hands) 75. Each and every claim of the `906 and `985 Patents is unenforceable due to inequitable conduct and/or Eolas's unclean hands. A. Overview 1. Doyle had a duty of candor and good faith in dealing with the Patent Office 76. 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. 77. 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. 78. Doyle's duty of candor and good faith also existed during the reexaminations of the '906 patent. 79. 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. 2. Doyle had a financial incentive to deceive the Patent Office 80. 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 11 Civil Action No. 6:09-CV-446 LED 81. Doyle worked at the University of California, San Francisco when he allegedly conceived of the inventions claimed in the '906 and '985 patents. 82. California. 83. Doyle and his co-inventors are entitled to receive a portion of any royalties paid to The '906 and '985 patents are owned by The Regents of the University of The Regents of the University of California related to the '906 and/or '985 patents. 84. ("Eolas"). 85. Eolas. 86. 87. Doyle has had a financial interest in Eolas since at least August 21, 1995. On or about August 21, 1995, Eolas acquired rights to the patent application that Doyle quit his job to found Eolas, and personally invested time and money in Doyle is a founder of the plaintiff in this action, Eolas Technologies Incorporated matured into the '906 patent. 88. 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. 3. Doyle breached his duty of candor and good faith with an intent to deceive the Patent Office 89. As explained in more detail below, Doyle breached his duty of candor and good faith in dealing with the Patent Office. Doyle failed to disclose material information and made affirmative misrepresentations of material facts. Doyle did so with knowledge of the information he withheld, with knowledge of the falsity of his misrepresentations, and with the specific intent UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 12 Civil Action No. 6:09-CV-446 LED to deceive the Patent Office. The circumstances of Doyle's actions confirm an intent to deceive the Patent Office. B. Doyle failed to disclose material information related to the ViolaWWW browser 90. As explained in more detail below, Doyle breached his duty of candor and good faith in dealing with the Patent Office by failing to disclose material information related to the ViolaWWW browser. 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. 91. As explained in more detail below, the ViolaWWW browser was material to the patentability of all the claims of the '906 patent because it disclosed limitations that the Patent Office believed were missing in the prior art, including interactivity embedded 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). 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 Office that these limitations were missing from the prior art. 1. Doyle knew about the ViolaWWW browser before the application for his '906 patent was filed on October 17, 1994 92. 93. 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 13 Civil Action No. 6:09-CV-446 LED 94. 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. 95. 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." 96. Raggett further advised Doyle that he could "find a pointer to Viola off the CERN WWW project page." 97. 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. Pei Wei's post had included the following statements: "In order to do better testings [sic] and support of ViolaWWW, I would like to solicit donations for guest accounts on the major Unix 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." 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..." 98. Thus by May 20, 1994 -- several months before the application for the '906 patent was filed -- Doyle knew about Pei Wei's ViolaWWW browser. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 14 Civil Action No. 6:09-CV-446 LED 99. Doyle learned even more about the ViolaWWW browser before the application for the '906 patent was filed. 100. 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. 101. 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." 102. 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." 103. The paper cited by Pei Wei was entitled "A Brief Overview of the VIOLA Engine, and its Applications." 104. The paper cited by Pei Wei was dated August 16, 1994 -- over two months before the application for the '906 patent was filed. 105. The paper cited by Pei Wei included the following statements and graphics: Embedding mini applications Viola's language and toolkit allows ViolaWWW to render documents with embedded viola objects. Although the viola language is not part of the World Wide Web standard (yet?), having this capability provides a powerful extension mechanism to the basic HTML. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 15 Civil Action No. 6:09-CV-446 LED 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 16 Civil Action No. 6:09-CV-446 LED 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 17 Civil Action No. 6:09-CV-446 LED 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). This next mini application front-ends a graphing process (on the same machine as the viola process). An important thing to note is that, like all the other document-embeddable mini applications shown, no special modification to the viola engine is required for ViolaWWW to support them. All the bindings are done via the viola language, provided that the necessary primitives are available in the interpreter [sic], of course. 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 UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 18 Civil Action No. 6:09-CV-446 LED less frequently used features are ocassionally [sic] used, or as new accessories/components are added. 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 19 Civil Action No. 6:09-CV-446 LED 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. 106. 107. "Doyle downloaded and read the paper." 399 F.3d 1325, 1330 (Fed. Cir. 2005). 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." 108. 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 comprehensive as yours. But, the point was that there was a way to embed programmable & interactive objects into HTML documents. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 20 Civil Action No. 6:09-CV-446 LED 109. 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." See supra 105. 110. 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. 111. 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). 112. 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. 113. Doyle's response was sent after Doyle had read Pei Wei's paper about the ViolaWWW browser dated August 16, 1994 (described above, supra 102105). 114. 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 . . . ." 115. 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?" UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 21 Civil Action No. 6:09-CV-446 LED 116. 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. 117. 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. 118. 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. 119. 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. 120. Doyle was living in Northern California on August 31, 1994, when he exchanged messages with Pei Wei about the ViolaWWW browser. 121. Pei Wei was living in Northern California on August 31, 1994, when he exchanged messages with Doyle about the ViolaWWW browser. 122. 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. 123. There was no limitation, restriction or obligation of secrecy on the readers of Pei Wei's paper about the ViolaWWW browser dated August 16, 1994. 124. On October 17, 1994, the application for the '906 patent was filed. Doyle and Martin were among those named as inventors. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 22 Civil Action No. 6:09-CV-446 LED 125. The application for the '906 patent discloses the Mosaic browser and the Cello browser, but not the ViolaWWW browser. 126. The application for the '906 patent included an information disclosure statement that identified several pieces of prior art, but not the ViolaWWW browser. 127. 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." 128. No disclosure about the ViolaWWW browser was ever provided to the Patent Office during prosecution of application number 08/324,443, which matured into the '906 patent. 2. Doyle was reminded about the ViolaWWW browser in 1995 during prosecution of the '906 patent 129. 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. 130. On August 21, 1995, at approximately 11:42 a.m. California time, Doyle posted a "Press Release" to the publicly-accessible WWW-talk e-mail distribution list. Doyle's post included the following statements: "Eolas Technologies Inc. announced today that it has completed a licensing agreement with the University of California for the exclusive rights to a pending patent covering the use of embedded program objects, or `applets,' within World Wide Web documents." UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 23 Civil Action No. 6:09-CV-446 LED 131. On August 21, 1995, at approximately 12:54 p.m. California time, Pei Wei responded on the publicly-accessible WWW-talk e-mail distribution list to Doyle's "Press Release." Pei Wei's response included the following statements: "[F]or the record, I just want to point out that the `technology which enabled Web documents to contain fully-interactive "inline" program objects' was existing in ViolaWWW and was *released* to the public, and in full source code form, even back in 1993... Actual conceptualization and existence occurred before `93." 132. 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." 133. 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 demonstrated in applets stuff was visited our office time). re-read my letter to you... I said Viola was smaller settings, but before your demo. The demo'ed to whomever wanted to see it and had at O'Reilly & Associates (where I worked at the 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 24 Civil Action No. 6:09-CV-446 LED That date (May 93), at least, predates your demo if I'm not mistaken. Then around August 93, it was shown to a bunch of attendees at the first Web Conference in Cambridge. . . . .... If you're talking about interactive apps *specifically* on the web, ie applets in-lined into HTML documents etc., and with bidirectional communications, then look at ViolaWWW as it existed around late '92 early '93. 134. 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." See supra 105. 135. 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). 136. 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. 137. People attending the Wizards workshop included Tim Berners-Lee, Marc Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei. 138. workshop. 139. 140. Dale Dougherty worked at O'Reilly & Associates in Northern California. In 1992, Dale Dougherty learned about Viola and recruited Pei Wei to join Tim Berners-Lee and Dale Dougherty were the organizers of the Wizards O'Reilly & Associates. Pei Wei's job at O'Reilly & Associates was to continue developing the ViolaWWW browser. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 25 Civil Action No. 6:09-CV-446 LED 141. California. 142. Scott Silvey worked with Pei Wei at O'Reilly & Associates in Northern When Pei Wei wrote "This demo was memorable because someone and I at ORA had lost sleep the night before the meeting, in order to cook up that particular plotting demo," the other person he was referring to was Scott Silvey. 143. Tim Berners-Lee is the person generally considered to be the inventor of the World Wide Web. 144. 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. 145. Marc Andreesen and Eric Bina went on to found Netscape, the manufacturer of another popular browser for the World Wide Web. 146. 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. 147. There was no limitation, restriction or obligation of secrecy on anyone at the Wizards workshop. 148. 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). 149. 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 UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 26 Civil Action No. 6:09-CV-446 LED the ViolaWWW browser to the Patent Office during prosecution of application number 08/324,443, which matured into the '906 patent. 150. Instead, Doyle deleted from his computer his emails with Pei Wei on August 21, 1995. Doyle kept on his computer other emails from that timeframe, however. 3. In 1998, during prosecution of the '906 patent, Doyle collected additional information about the ViolaWWW browser 151. In 1998, during prosecution of the '906 patent, Doyle collected additional information about the ViolaWWW browser, but he still did not disclose any information about the ViolaWWW browser to the Patent Office, as explained in more detail below. 152. stuff." 153. The "Viola stuff" folder included a printout of Pei Wei's message to Doyle on During prosecution of the '906 patent, Doyle maintained a folder called "Viola 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." See supra 101 105. 154. 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?" See supra 115. 155. 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." UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 27 Civil Action No. 6:09-CV-446 LED 156. "WWWWizardsWorkshop" refers to the World-Wide Web Wizards Workshop held in Cambridge, Massachusetts on July 2830, 1993, that Pei Wei attended. See supra 136148. 157. The "Announcement" link links to a webpage at <http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Announcement.html> that states that "Interactive objects" would be discussed at the Wizards workshop. 158. The "Agenda" link links to a webpage at <http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Agenda.html> that states that "Interactive objects" was on the agenda for discussion at the Wizards workshop. 159. 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. See supra 133. 160. 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. 161. 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 www-bugs@info.cern.ch, general comments to www-talk@info.cern.ch, and anything to UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 28 Civil Action No. 6:09-CV-446 LED wei@xcf.Berkeley.EDU. Pei Y. Wei wei@xcf.berkeley.edu 162. 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." 163. The "Viola stuff" folder included a printout of a message that Pei Wei had sent to the publicly-accessible WWW-talk e-mail distribution list on February 25, 1994, that included the following statements: The new ViolaWWW is now available for ftp'ing. It's beta and feedback is very welcomed. The README file follows... ============================================== ViolaWWW, Version 3.0 Beta Feb 23 1994 ====================== ViolaWWW is an extensible World Wide Web hypermedia browser for XWindows. .... Notable features in the new ViolaWWW ------------------------------------------------.... * Embeddable in-document and in-toolbar programmable viola objects. A document can embed mini viola applications (ie: a chess board), or can cause mini apps to be placed in the toolbar. .... Availability --------------Source and binary can be found in ftp://ora.com/pub/www/viola. Sparc binary is supplied. .... Pei Y. Wei (wei@ora.com) O'Reilly & Associates, Inc. 164. 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 29 Civil Action No. 6:09-CV-446 LED .... 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 (wei@ora.com) O'Reilly & Associates, Inc. 165. 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". 166. 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". 167. The following is a screenshot of the ViolaWWW browser after parsing the file plotDemo.html: UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 30 Civil Action No. 6:09-CV-446 LED 168. The files plotDemo.html and plot.v include code for the plotting demo described in the Viola paper dated August 16, 1994. See supra 105. 169. 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. UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 31 Civil Action No. 6:09-CV-446 LED 170. 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 frontend app could pass an X window ID to the back-end, and the back-end draws the graphics directly onto the window violaWWW has opened for it." See supra 118. 171. Pei Wei had told Doyle on August 31, 1994, see supra 108, and again on August 21, 1995, see supra 133, 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. 172. 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). 173. Thus, during prosecution of the '906 patent, Doyle knew about Pei Wei's demonstration of the plotting demo that the Federal Circuit has held was a "public use" under 35 U.S.C. 102(b); Doyle knew how the plotting demo worked; and Doyle had access to the code for that plotting demo. 174. 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. 175. The webpages that Doyle printed included the following statements and graphic: WWW Browsers: Extensibility Issues UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 32 Civil Action No. 6:09-CV-446 LED Pei Wei, O'Reilly & Associates Stanford Computer Forum WWW Workshop - September 2021, 1994 .... Extensibility in WWW Browsers The WorldWideWeb is a powerful medium which has many applications beyond just publishing static documents. It is certainly an interface to the space of "documents." But already, with established features such as input-forms and server-side scripting, we see that the web is also increasingly becoming an interface to the space of what is traditionally called "applications." .... In this talk I'll describe a few possible approaches for a browser to gain more flexibility, and to briefly describe one particular approach as implemented by a system known as ViolaWWW. .... Possible Ways to Extend Browsers We already do "extend" browsers with things like "external viewers." But there's not a very good integration with the browser. Ideally those external viewers should be rendering inplace inside the document, and be working together with the browser, be tightly integrated with the browser and other parts... .... Work at O'Reilly & Associates: VIOLA-WWW .... This is the Viola system that is being developed at O'Reilly and Associates. This system has the following interesting characteristics: .... Three, program objects can be embedded into documents and the toolbar. . . . .... The next example is a front-end application to a backend. And the back-end is what actually does the computation and the drawing. .... UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 33 Civil Action No. 6:09-CV-446 LED 176. There was no limitation, restriction or obligation of secrecy on anyone attending the talk that Pei Wei gave at Stanford University in September 1994. 177. 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. See supra 105. 178. Pei Wei had told Doyle on August 31, 1994, see supra 108, and again on August 21, 1995, see supra 133, that the plotting demo described in the Viola paper dated UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 34 Civil Action No. 6:09-CV-446 LED August 16, 1994, was the "very one" demonstrated "to visitors from a certain computer manufacturer" by May 8, 1993. 179. 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). 180. Thus, during prosecution of the '906 patent, Doyle was repeatedly confronted with evidence that the ViolaWWW browser was material prior art under 35 U.S.C. 102(b), yet Doyle never disclosed the ViolaWWW browser to the Patent Office during prosecution of application number 08/324,443, which matured into the '906 patent. 4. The ViolaWWW browser was material to the patentability of the '906 patent 181. The ViolaWWW browser was material to the patentability of the claimed inventions in the '906 patent. 182. There is a remarkable similarity between the ViolaWWW browser and the preferred embodiment of the '906 patent: UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 35 Civil Action No. 6:09-CV-446 LED 183. 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. 184. The Manual of Patent Examining Procedure in force at the time the application for the '906 patent was filed included the following statements: UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 36 Civil Action No. 6:09-CV-446 LED 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] 185. 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] 186. The Federal Circuit has confirmed that the ViolaWWW browser was material to The Manual of Patent Examining Procedure in force today contains similar the patentability of the claimed inventions in the '906 patent. 187. The Federal Circuit held that a reasonable jury could find at least claims 1 and 6 of the '906 patent anticipated by the ViolaWWW browser under 35 U.S.C. 102(a), (b), and/or (g). See 399 F.3d 1325, 1329, 133235 (Fed. Cir. 2005). 188. 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). 189. 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). UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 37 Civil Action No. 6:09-CV-446 LED 190. 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). 191. The Patent Office has also confirmed that the ViolaWWW browser was material to the patentability of the claimed inventions in the '906 patent. 192. 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, see supra 105. 193. Pei Wei had told Doyle on August 31, 1994, about the Viola paper dated August 16, 1994, see supra 102105, and Doyle had downloaded and read that paper the same day, see supra 106, 112114, yet Doyle never disclosed the Viola paper to the Patent Office during the original examination of the '906 patent. 194. Even if Doyle had conceived of the purported inventions claimed in the '906 patent before August 16, 1994, that would not have rendered 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. 195. For example, the plotting demo described in the Viola paper dated August 16, 1994, was part of the ViolaWWW browser software that was demonstrated to Sun Microsystems on May 7, 1993 -- over one year before the application for the '906 patent was filed. See supra 108111. 196. 1993. None of the claimed inventions in the '906 patent was conceived before August UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 38 Civil Action No. 6:09-CV-446 LED 197. Thus, 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). 198. 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). 199. 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). 200. 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. 201. 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. 5. Doyle intended to deceive the Patent Office during prosecution of the '906 patent 202. During prosecution of application number 08/324,443, which matured into the '906 patent, Doyle withheld extensive evidence about the ViolaWWW browser. 203. For example, Doyle failed to disclose the following material information: the message from Raggett about the ViolaWWW browser and embedded objects, see supra 95 UDEFENDANT ADOBE SYSTEMS INC.'S AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 39 Civil Action No. 6:09-CV-446 LED 97; 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, see supra 100118; the Viola paper describing the ViolaWWW browser and the embedded interactive plotting demo that was in public use in May 1993, see supra 102105; 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, see supra 130148; 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, see supra 152173; and Pei Wei's talk at Stanford in September 1994 about the embedded interactive plotting demo that was in public use in May 1993, see supra 174180. 204. Doyle withheld information about the ViolaWWW browser with the specific intent to deceive the Patent Office. 205. Doyle had a financial interest in the patentability of the claimed inventions in the '906 patent. See supra 8088. 206. The ViolaWWW browser threatened the patentability of the claimed inventions in the '906 patent, and thus threatened Doyle's financial interests. 207. Doyle was personally involved in the prosecution of application number 08/324,443, which matured into the '906 patent. 208. For example, Doyle signed a declaration on or about November 22, 1994, stating that he was an inve

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