Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 451

Defendant New Frontier Media, Inc.'s Amended ANSWER to 285 Amended Complaint,,, COUNTERCLAIM against Eolas Technologies Incorporated by New Frontier Media, Inc..(Simons, Michael)

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION EOLAS TECHNOLOGIES INCORPORATED, Plaintiff, ADOBE SYSTEMS INC., ET AL., Defendants. § § § § § § § § Civil Action No. 6:09-cv-446-LED JURY TRIAL DEMANDED

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DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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Defendant, New Frontier Media, Inc. ("New Frontier Media") through its undersigned counsel, files its amended answers and counterclaims to Plaintiff Eolas Technologies Incorporated's ("Eolas" or "Plaintiff") First Amended Complaint for Patent Infringement ("First Amended Complaint") as follows: I. PARTIES 1. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 1 and therefore denies same. 2. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 2 and therefore denies same. 3. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 3 and therefore denies same. 4. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 4 and therefore denies same.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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5.

New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 5 and therefore denies same. 6. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 6 and therefore denies same. 7. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 7 and therefore denies same. 8. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 8 and therefore denies same. 9. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 9 and therefore denies same. 10. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 10 and therefore denies same. 11. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 11 and therefore denies same. 12. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 12 and therefore denies same. 13. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 13 and therefore denies same. 14. New Frontier Media admits it is a corporation organized and existing under the

laws of the State of Colorado, with its principle place of business at 7007 Winchester Circle, Suite 200, Boulder, Colorado 80301-3505. New Frontier Media admits it may be served with process by serving its registered agent, Marc Callipari, 7007 Winchester Circle, Suite 200, Boulder, Colorado. New Frontier Media denies the remaining allegations of paragraph 14.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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15.

New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 15 and therefore denies same. 16. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 16 and therefore denies same. 17. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 17 and therefore denies same. 18. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 18 and therefore denies same. 19. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 19 and therefore denies same. 20. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 20 and therefore denies same. 21. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 21 and therefore denies same. 22. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 22 and therefore denies same. 23. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 23 and therefore denies same. II. JURISDICTION AND VENUE 24. New Frontier Media incorporates by reference its answers to the allegations of

paragraph 1-23 above as though fully set forth here. 25. New Frontier Media admits that Plaintiff alleges to have brought an action that

arises under the patent laws of the United States. New Frontier Media does not contest that this

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). New Frontier Media denies the remaining allegations of paragraph 25, and specifically denies committing or being liable for any patent infringement. 26. New Frontier Media does not contest personal jurisdiction of this Court only in

respect to this action. New Frontier Media denies the remaining allegations of paragraph 26. 27. New Frontier Media denies the allegations of paragraph 27. III. ALLEGED PATENT INFRINGEMENT 28. New Frontier Media incorporates by reference its answers to the allegations of

paragraph 1-27 above as though fully set forth here. 29. New Frontier Media admits that based on the face of United States Patent Nos.

5,838,906 (the '906 patent) and 7,599,985 (the '985 patent), the title and date of issuance appear to be as alleged in Paragraph 29 of the First Amended Complaint. New Frontier Media denies that the patents were duly and legally issued. New Frontier Media is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in paragraph 29 and therefore denies same. 30. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 30 and therefore denies same. 31. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 31 and therefore denies same. 32. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 32 and therefore denies same. 33. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 33 and therefore denies same.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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34.

New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 34 and therefore denies same. 35. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 35 and therefore denies same. 36. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 36 and therefore denies same. 37. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 37 and therefore denies same. 38. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 38 and therefore denies same. 39. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 39 and therefore denies same. 40. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 40 and therefore denies same. 41. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 41 and therefore denies same. 42. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 42 and therefore denies same. 43. 44. New Frontier Media denies the allegations in paragraph 43. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 44 and therefore denies same. 45. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 45 and therefore denies same.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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46.

New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 46 and therefore denies same. 47. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 47 and therefore denies same. 48. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 48 and therefore denies same. 49. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 49 and therefore denies same. 50. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 50 and therefore denies same. 51. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 51 and therefore denies same. 52. New Frontier Media is without knowledge or information sufficient to form a

belief as to the truth of the allegations in paragraph 52 and therefore denies same. 53. New Frontier Media admits that it is now aware of the '906 patent. New Frontier

Media denies the remaining allegations in paragraph 53 as to New Frontier Media. As to the remaining Defendants, New Frontier Media is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 53 and therefore denies same. 54. Media. New Frontier Media denies the allegations in paragraph 54 as to New Frontier

As to the remaining Defendants, New Frontier Media is without knowledge or

information sufficient to form a belief as to the truth of the allegations in paragraph 54 and therefore denies same.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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55.

New Frontier Media denies the allegations in paragraph 55 as to New Frontier

Media. For the remaining Defendants, New Frontier Media is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 55 and therefore denies same. 56. New Frontier Media denies the allegations in paragraph 56 as to New Frontier

Media. For the remaining Defendants, New Frontier Media is without knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 56 and therefore denies same. IV. PLAINTIFF'S PRAYER FOR RELIEF New Frontier Media denies that Plaintiff is entitled to any of the relief sought in the First Amended Complaint. V. PLAINTIFF'S JURY DEMAND No response is required to Plaintiff's jury demand. NEW FRONTIER MEDIA'S AFFIRMATIVE DEFENSES New Frontier Media pleads the following as affirmative defenses to Plaintiff's First Amended Complaint: FIRST DEFENSE (Failure to State a Claim) 57. be granted. Plaintiff fails to state a claim against New Frontier Media upon which relief can

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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SECOND DEFENSE (Non-infringement of the '906 and '985 Patents) 58. New Frontier Media has not infringed, willfully infringed, contributed to the

infringement, or induced infringement, and does not directly, contributorily, or by inducement infringe (either literally or under the doctrine of equivalents) any claim of the '906 and '985 patents. THIRD DEFENSE (Invalidity of the '906 and '985 Patents) 59. One or more claims of the '906 and '985 patents are invalid for failing to satisfy

one or more of the requirements of patentability specified in 35 U.S.C. § 1, et seq., including but not limited to, 35 U.S.C. § § 102, 103, and 112. FOURTH DEFENSE (Limitations on Damages) 60. Plaintiff's claims for damages for any alleged infringement of the '906 and '985

patents are limited pursuant to 35 U.S.C. § § 252, 286, 287, 307 and/or 316. FIFTH DEFENSE (License, Waiver, Estoppel) 61. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, under the doctrines of implied license, waiver, laches, estoppel and patent exhaustion. SIXTH DEFENSE (Unclean Hands) 62. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, under the doctrine of unclean hands.

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SEVENTH DEFENSE (Failure to Mitigate Damages) 63. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, due to Plaintiff's failure to reasonably mitigate damages, if any. EIGHTH DEFENSE (Patent Exhaustion) 64. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, by the doctrine of patent exhaustion and/or the full compensation rule. NINTH DEFENSE (Laches) 65. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, by laches and/or 35 U.S.C. § 286. TENTH DEFENSE (Intervening Rights) 66. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, due to legal and/or equitable intervening rights under 35 U.S.C. §§ 252 and 307(b). ELEVENTH DEFENSE (Standing) 67. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, because Eolas lacks standing to sue as a mere licensee.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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TWELFTH DEFENSE (Marking) 68. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred, in whole or in part, because Eolas failed to comply with the requirements of 35 U.S.C. § 287. THIRTEENTH DEFENSE (License) 69. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred to the extent they are based on acts performed by Microsoft products or any method practiced in connection with the use of any Microsoft product due to Microsoft's license to the '906 and '985 patents. FOURTEENTH DEFENSE (28 U.S.C. § 1498) 70. Plaintiff's claims against New Frontier Media for alleged infringement of the '906

and '985 patents are barred by 28 U.S.C. § 1498 to the extent that any products accused of infringement in this action have been manufactured by or for the United States. COUNTERCLAIMS The Parties 71. Counterclaim Plaintiff New Frontier Media, Inc., ("New Frontier Media"), is a

Colorado corporation and has a principal place of business in Colorado. 72. On information and belief based solely on Paragraph 1 of the Complaint as pled

by Eolas, Eolas is a Texas corporation with its principal place of business located in Tyler, Texas.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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Jurisdiction 73. This counterclaim arises under the patent laws of the United States, Title 35,

United States Code. The jurisdiction of this Court is proper under at least 35 U.S.C. § 271 et seq. and 28 U.S.C. §§ 1331, 1338, 1367, and 2201-02. 74. Venue is proper in this District pursuant to at least 28 U.S.C. §§ 1391 and 1400.

Venue is further proper in the Tyler Division. Count I Declaratory Relief Regarding Non-infringement 75. Based on Eolas' filing of this action and New Frontier Media's defenses, an actual

controversy has arisen and now exists between the parties as to whether New Frontier Media infringes the '906 Patent. 76. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq., New

Frontier Media requests a declaration by the Court that it does not infringe any claim of the '906 Patent under any theory (including directly (whether individually or jointly) or indirectly (whether contributorily or by inducement)). 77. Based on Eolas' filing of this action and New Frontier Media's First Defense, an

actual controversy has arisen and now exists between the parties as to whether New Frontier Media infringes the '985 Patent. 78. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq., New

Frontier Media requests a declaration by the Court that it does not infringe any claim of the '985 Patent under any theory (including directly (whether individually or jointly) or indirectly (whether contributorily or by inducement)).

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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Count II Declaratory Relief Regarding Invalidity 79. Based on Eolas' filing of this action and New Frontier Media's Second Defense,

an actual controversy has arisen and now exists between the parties as to the validity of the claims of the '906 Patent. 80. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq., and

35 U.S.C. § 100 et seq., New Frontier Media requests a declaration by the Court that the claims of the '906 Patent are invalid. 81. Based on Eolas' filing of this action and New Frontier Media's Second Defense,

an actual controversy has arisen and now exists between the parties as to the validity of the claims of the '985 Patent. 82. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq., and

35 U.S.C. § 100 et seq., New Frontier Media requests a declaration by the Court that the claims of the '985 Patent are invalid. Count III Declaratory Relief of Unenforceability of U.S. Patent No. 5,838,906 83. New Frontier Media incorporates by reference the allegations contained in

Paragraphs 75 to 79 of its Counterclaims. 84. An actual controversy exists between the parties with respect to the

unenforceability of the '906 Patent. 85. Although Eolas alleges in its Complaint that the '906 Patent was duly and legally

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

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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A.

Overview 1. Doyle had a duty of candor and good faith in dealing with the Patent Office.

86.

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. 87. 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. 88. Doyle's duty of candor and good faith also existed during the reexaminations of

the '906 patent. 89. 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. 90. Doyle had a financial incentive to deceive the Patent Office.

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. 91. Doyle worked at the University of California, San Francisco when he allegedly

conceived of the inventions claimed in the '906 and '985 patents. 92. California. 93. 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.

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94. ("Eolas"). 95. Eolas. 96. 97.

Doyle is a founder of the plaintiff in this action, Eolas Technologies Incorporated

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

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

matured into the '906 patent. 98. 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. 99. Doyle breached his duty of candor and good faith with an intent to deceive the Patent Office.

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 to deceive the Patent Office. The circumstances of Doyle's actions confirm an intent to deceive the Patent Office. B. 100. Doyle failed to disclose material information related to the ViolaWWW browser 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

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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specific intent to deceive the Patent Office. The circumstances of Doyle's actions confirm an intent to deceive the Patent Office. 101. 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. 102. 103. Doyle knew about the ViolaWWW browser before the application for his '906 patent was filed on October 17, 1994.

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. 104. 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. 105. 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."

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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106.

Raggett further advised Doyle that he could "find a pointer to Viola off the CERN

WWW project page." 107. 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..." 108. Thus by May 20, 1994 -- several months before the application for the '906

patent was filed -- Doyle knew about Pei Wei's ViolaWWW browser. 109. Doyle learned even more about the ViolaWWW browser before the application

for the '906 patent was filed. 110. 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

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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and distributed hypermedia environment such as the World Wide Web on the Internet. 111. 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." 112. 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." 113. The paper cited by Pei Wei was entitled "A Brief Overview of the VIOLA Engine,

and its Applications." 114. The paper cited by Pei Wei was dated August 16, 1994 -- over two months before

the application for the '906 patent was filed. 115. The paper cited by Pei Wei included the following statements and graphics: Embedding mini applications Viola's language and toolkit allows ViolaWWW to render documents with embedded viola objects. Although the viola language is not part of the World Wide Web standard (yet?), having this capability provides a powerful extension mechanism to the basic HTML. For example, if the HTML's input-forms do not do exactly what you want, you have the option to build a mini customized inputform application. And it could have special scripts to check for the validity of the entered data before even making a connection to the server. Or, if your document needs to show data that is continuously updated, you could build a small application such as this which display the CPU load of a machine. Note that only the graph field is continuously updated, but not the rest of the document.

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Other possible applications include front-ends to the stock market quotes, new wire updates, tele-video style service, etc. Here's another example of a mini interactive application that is embedded into a HTML document. It's a chess board in which the chess pieces are actually active and movable. And, illegal moves can be checked and denied straight off by the intelligence of the scripts in the application. Given more work, this chess board application can front-end a chess server, connected to it using the socket facility in viola.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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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).

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.

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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 [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.

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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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.

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. 116. 117. "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." 118. 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,

DEFENDANT NEW FRONTIER MEDIA, INC.'S AMENDED ANSWER AND COUNTERCLAIMS TO EOLAS' FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT

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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. 119. 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 ¶ 119. 120. 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. 121. 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). 122. 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. 123. Doyle's response was sent after Doyle had read Pei Wei's paper about the

ViolaWWW browser dated August 16, 1994 (described above, supra ¶¶ 116­119). 124. 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

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it calls `embeddable program objects' until 1994. . . . Furthermore, Viola merely implements an internal scripting language . . . ." 125. 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?" 126. 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. 127. 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. 128. 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 window ID to the back-end, and the back-end draws the graphics directly onto the window violaWWW has opened for it. 129. 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. 130. 133. Doyle was living in Northern California on August 31, 1994, when he

exchanged messages with Pei Wei about the ViolaWWW browser. 131. Pei Wei was living in Northern California on August 31, 1994, when he

exchanged messages with Doyle about the ViolaWWW browser.

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132.

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. 133. 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. 134. On October 17, 1994, the application for the '906 patent was filed. Doyle and

Martin were among those named as inventors. 135. The application for the '906 patent discloses the Mosaic browser and the Cello

browser, but not the ViolaWWW browser. 136. The application for the '906 patent included an information disclosure statement

that identified several pieces of prior art, but not the ViolaWWW browser. 137. 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." 138. 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. 139. Doyle was reminded about the ViolaWWW browser in 1995 during prosecution of the '906 patent.

Doyle was reminded about Pei Wei and the ViolaWWW browser in 1995, during

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

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140.

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." 141. 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." 142. 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." 143. 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

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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. . . . .... 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. 144. 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 ¶ 119. 145. 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). 146. 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. 147. People attending the Wizards workshop included Tim Berners-Lee, Marc

Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei.

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148. workshop. 149. 150.

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

Dale Dougherty worked at O'Reilly & Associates in Northern California. 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. 151. California. 152. When Pei Wei wrote "This demo was memorable because someone and I at ORA Scott Silvey worked with Pei Wei at O'Reilly & Associates in Northern

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. 153. Wide Web. 154. Marc Andreesen and Eric Bina were the authors of Mosaic, a popular browser for Tim Berners-Lee is the person generally attributed to be the inventor of the World

the World Wide Web created at the National Center for Supercomputing Applications (NCSA) at the University of Illinois at Urbana-Champaign. 155. Marc Andreesen and Eric Bina went on to found Netscape, the manufacturer of

another popular browser for the World Wide Web. 156. 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.

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157.

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

Wizards workshop. 158. 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). 159. 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. 160. 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. 161. In 1998, during prosecution of the '906 patent, Doyle collected additional information about the ViolaWWW browser.

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. 162. stuff." 163. 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 ¶¶ 115­ 119.

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164.

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 ¶ 129. 165. 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." 166. "WWWWizardsWorkshop" refers to the World-Wide Web Wizards Workshop

held in Cambridge, Massachusetts on July 28­30, 1993, that Pei Wei attended. See supra ¶¶ 150­162. 167. 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. 168. The "Agenda" link links to a webpage at that

<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. 169.

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 ¶ 147.

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170.

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. 171. The "Viola stuff" folder included a printout of a webpage with the "README" The date at the top of the "README" file is July 27, 1992. The

file for viola-2.1.2.

"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] 172. 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." 173. 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 ------------------------------------------------....
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* 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. 174. 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. .... 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. 175. 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".

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176.

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". 177. The following is a screenshot of the ViolaWWW browser after parsing the file

plotDemo.html:

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178.

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

in the Viola paper dated August 16, 1994. See supra ¶ 119. 179. 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. 180. 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 ¶ 132. 181. Pei Wei had told Doyle on August 31, 1994, see supra ¶ 122, and again on August

21, 1995, see supra ¶ 147, 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. 182. 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). 183. 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.

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184.

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. 185. 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 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. deally 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 ....

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This is the Viola system that is being developed at O'Reilly and Associates. This system has the following interesting characteristics: .... Three, program objects can be embedded into documents and the toolbar. . . . .... The next example is a front-end application to a backend. And the back-end is what actually does the computation and the drawing. ....

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186.

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

the talk that Pei Wei gave at Stanford University in September 1994. 187. 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 ¶ 19. 188. Pei Wei had told Doyle on August 31, 1994, see supra ¶ 122, and again on August

21, 1995, see supra ¶ 147, 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. 189. 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). 190. 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. 191. The ViolaWWW browser was material to the patentability of the '906 patent

The ViolaWWW browser was material to the patentability of the claimed

inventions in the '906 patent. 192. There is a remarkable similarity between the ViolaWWW browser and the

preferred embodiment of the '906 patent:

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Both the ViolaWWW browser (on the left) and the preferred embodiment of the '906 patent (on the right) enabled a user to interact with a 3-dimensional image embedded in the middle of a webpage. In the ViolaWWW screenshot above, there are three slide controls to the right of the embedded image that move up and down; these rotate the embedded image on the X, Y, and Z axes. Similarly, in the preferred embodiment of the '906 patent shown above, box 354 has three slide controls to the right of the embedded image that rotate the image on the X, Y, and Z axes. Thus, ViolaWWW, like the '906 patent, teaches a browser capable of displaying embeddedinteractive objects. 193. 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,

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prior invention by another, inventorship conflicts, and the like. [emphasis in bold added] 194. 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] 195. 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. 196. 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). 197. 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). 198. 201. 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).

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199.

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

to the patentability of the claimed inventions in the '906 patent. 201. 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 ¶ 19. 202. Pei Wei had told Doyle on August 31, 1994, about the Viola paper dated August

16, 1994, see supra ¶¶ 116­119, and Doyle had downloaded and read that paper the same day, see supra ¶¶ 120, 126­128, yet Doyle never disclosed the Viola paper to the Patent Office during the original examination of the '906 patent. 203. 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. 204. 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 ¶¶ 122­125. 205. 1993. None of the claimed inventions in the '906 patent was conceived before August

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206.

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). 207. 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). 208. 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). 209. 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. 210. 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. 211. Doyle intended to deceive the Patent Office during prosecution of the '906 patent.

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

'906 patent, Doyle withheld extensive evidence about the ViolaWWW browser. 212. For example, Doyle failed to disclose the following material information: the

message from Raggett about the ViolaWWW browser and embedded objects, see supra ¶¶

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109-112; 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 ¶¶ 114­132; the Viola paper describing the ViolaWWW browser and the embedded interactive plotting demo that was in public use in May 1993, see supra ¶¶ 116­119; the communications with Pei Wei in 1995 about the ViolaWWW browser and the embedded interactive plotting demo that was in ublic use in May 1993 and again at the Wizards conference in July 1993, see supra ¶¶ 144­162; the contents of the "Viola stuff" folder that Doyle maint