Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 452

Playboy Enterprises International, Inc.'s ANSWER to 285 Amended Complaint,, and, COUNTERCLAIM against Eolas Technologies Incorporated by Playboy Enterprises International, Inc..(Ross, Avelyn)

Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Doc. 452

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION Eolas Technologies Incorporated, Plaintiff, v. Adobe Systems Inc., Amazon.com, Inc., Apple Inc., Argosy Publishing, Inc., Blockbuster Inc., CDW Corp., Citigroup Inc., eBay Inc., Frito-Lay, Inc., The Go Daddy Group, Inc., Google Inc., J.C. Penny Company, Inc., JPMorgan Chase & Co., New Frontier Media, Inc., Office Depot, Inc., Perot Systems Corp., Playboy Enterprises International, Inc., Rent-A-Center, Inc., Staples, Inc., Sun Microsystems Inc., Texas Instruments, Inc., Yahoo! Inc., and YouTube, LLC Defendants. § § § § § § § § § § § § § § § § § § § § §

C.A. NO. 6:09-CV-446 (LED)

JURY TRIAL DEMANDED

PLAYBOY ENTERPRISES INTERNATIONAL, INC.'S ANSWER AND COUNTERCLAIMS IN RESPONSE TO PLAINTIFF EOLAS TECHNOLOGIES INC.'S FIRST AMENDED COMPLAINT Defendant Playboy Enterprises International, Inc. ("Playboy") files this answer to Eolas Technologies Incorporated's ("Eolas" or "Plaintiff") First Amended Complaint ("First Amended Complaint"), and hereby states as follows: PARTIES 1. Playboy lacks knowledge and information sufficient to form a belief as to the

truth of the allegations in Paragraph 1 of the First Amended Complaint and therefore denies those allegations.

Page 1 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

Dockets.Justia.com

2.

Paragraph 2 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 2 of the First Amended Complaint and therefore denies those allegations. 3. Paragraph 3 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 3 of the First Amended Complaint and therefore denies those allegations. 4. Paragraph 4 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 4 of the First Amended Complaint and therefore denies those allegations. 5. Paragraph 5 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 5 of the First Amended Complaint and therefore denies those allegations. 6. Paragraph 6 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 6 of the First Amended Complaint and therefore denies those allegations. 7. Paragraph 7 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a

Page 2 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

belief as to the truth of the allegations in Paragraph 7 of the First Amended Complaint and therefore denies those allegations. 8. Paragraph 8 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 8 of the First Amended Complaint and therefore denies those allegations. 9. Paragraph 9 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 9 of the First Amended Complaint and therefore denies those allegations. 10. Paragraph 10 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 10 of the First Amended Complaint and therefore denies those allegations. 11. Paragraph 11 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 11 of the First Amended Complaint and therefore denies those allegations. 12. Paragraph 12 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 12 of the First Amended Complaint and therefore denies those allegations.

Page 3 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

13.

Paragraph 13 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 13 of the First Amended Complaint and therefore denies those allegations. 14. Paragraph 14 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 14 of the First Amended Complaint and therefore denies those allegations. 15. Paragraph 15 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 15 of the First Amended Complaint and therefore denies those allegations. 16. Paragraph 16 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 16 of the First Amended Complaint and therefore denies those allegations. 17. 18. Admitted. Paragraph 18 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 18 of the First Amended Complaint and therefore denies those allegations.

Page 4 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

19.

Paragraph 19 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 19 of the First Amended Complaint and therefore denies those allegations. 20. Paragraph 20 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 20 of the First Amended Complaint and therefore denies those allegations. 21. Paragraph 21 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 21 of the First Amended Complaint and therefore denies those allegations. 22. Paragraph 22 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 22 of the First Amended Complaint and therefore denies those allegations. 23. Paragraph 23 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations in Paragraph 23 of the First Amended Complaint and therefore denies those allegations.

Page 5 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

JURISDICTION AND VENUE 24. Playboy. 25. Playboy admits that Paragraph 25 of the First Amended Complaint alleges that Paragraph 24 of the First Amended Complaint does not require a response from

this is an action arising under the patent laws of the United States, Title 35 of the United States Code, but denies the merits of such action. Playboy admits that this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). 26. Playboy admits that this Court has personal jurisdiction over it for purposes of

this action. Playboy specifically denies that it has committed patent infringement in the State of Texas, in the Eastern District of Texas, or in any other state or judicial district. With respect to the other Defendants, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 26 of the First Amended Complaint and therefore denies those allegations. 27. With respect to Playboy, Playboy admits that this Court has personal jurisdiction

over it for purposes of this action and therefore, the statutory requirements for venue under 28 U.S.C. §§ 1391(b)-(c) and 1400 are met. However, while venue may be had in the Eastern District of Texas, this forum is inconvenient and burdensome for Playboy. With respect to the other Defendants, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 27 of the First Amended Complaint and therefore denies those allegations.

Page 6 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

ANSWER TO INFRINGEMENT ALLEGATION REGARDING U.S. PATENT NOS. 5,838,906 and 7,599,985 28. Playboy. 29. Playboy admits that United States Patent No. 5,838,906 ("the '906 Patent") Paragraph 28 of the First Amended Complaint does not require a response from

entitled "Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document," and United States Patent No. 7,599,985 ("the '985 Patent") entitled "Distributed hypermedia method and system for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document" were issued by the United States Patent and Trademark Office on November 17, 1998 ('906 Patent) and October 6, 2009 ('985 Patent) respectively. Playboy lacks knowledge and information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 29, and therefore denies the same. 30. Playboy lacks knowledge and information sufficient to form a belief as to the

truth of the allegations of Paragraph 30 of the First Amended Complaint and therefore denies those allegations. 31. Paragraph 31 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 31 of the First Amended Complaint and therefore denies those allegations. 32. Paragraph 32 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a

Page 7 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

belief as to the truth of the allegations of Paragraph 32 of the First Amended Complaint and therefore denies those allegations. 33. Paragraph 33 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 33 of the First Amended Complaint and therefore denies those allegations. 34. Paragraph 34 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 34 of the First Amended Complaint and therefore denies those allegations. 35. Paragraph 35 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 35 of the First Amended Complaint and therefore denies those allegations. 36. Paragraph 36 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 36 of the First Amended Complaint and therefore denies those allegations. 37. Paragraph 37 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 37 of the First Amended Complaint and therefore denies those allegations.

Page 8 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

38.

Paragraph 38 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 38 of the First Amended Complaint and therefore denies those allegations. 39. Paragraph 39 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 39 of the First Amended Complaint and therefore denies those allegations. 40. Paragraph 40 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 40 of the First Amended Complaint and therefore denies those allegations. 41. Paragraph 41 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 41 of the First Amended Complaint and therefore denies those allegations. 42. Paragraph 42 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 42 of the First Amended Complaint and therefore denies those allegations. 43. Paragraph 43 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a

Page 9 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

belief as to the truth of the allegations of Paragraph 43 of the First Amended Complaint and therefore denies those allegations. 44. Paragraph 44 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 44 of the First Amended Complaint and therefore denies those allegations. 45. Paragraph 45 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 45 of the First Amended Complaint and therefore denies those allegations. 46. 47. Denied. Paragraph 47 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 47 of the First Amended Complaint and therefore denies those allegations. 48. Paragraph 48 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 48 of the First Amended Complaint and therefore denies those allegations. 49. Paragraph 49 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a

Page 10 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

belief as to the truth of the allegations of Paragraph 49 of the First Amended Complaint and therefore denies those allegations. 50. Paragraph 50 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 50 of the First Amended Complaint and therefore denies those allegations. 51. Paragraph 51 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 51 of the First Amended Complaint and therefore denies those allegations. 52. Paragraph 52 of the First Amended Complaint is not directed at Playboy. To the

extent any response is necessary, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 52 of the First Amended Complaint and therefore denies those allegations. 53. With respect to Playboy, Playboy denies that Playboy has infringed (whether

willfully or otherwise) the '906 Patent. Playboy further denies any knowledge of the '906 Patent prior to the filing of this action. With respect to the other Defendants, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 53 of the First Amended Complaint and therefore denies those allegations. 54. With respect to Playboy, Playboy denies that Playboy has infringed, either

directly or indirectly, any claim of the '906 Patent or the '985 Patent. Playboy further denies that Eolas has suffered or will suffer any injury due to Playboy's accused acts or practices and denies

Page 11 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

Eolas is entitled to any relief, whether monetary or injunctive.

With respect to the other

Defendants, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 54 of the First Amended Complaint and therefore denies those allegations. 55. With respect to Playboy, Playboy denies that Playboy has infringed, either

directly or indirectly, any claim of the '906 Patent or the '985 Patent. Playboy further denies that Eolas has suffered or will suffer any injury due to Playboy's accused acts or practices and denies Eolas is entitled to any relief, whether monetary or injunctive. With respect to the other

Defendants, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 55 of the First Amended Complaint and therefore denies those allegations. 56. With respect to Playboy, Playboy denies that Playboy has infringed, either

directly or indirectly, any claim of the '906 Patent or the '985 Patent. Playboy further denies that Eolas has suffered or will suffer any injury due to Playboy's accused acts or practices and denies Eolas is entitled to any relief, whether monetary or injunctive. With respect to the other

Defendants, Playboy lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 56 of the First Amended Complaint and therefore denies those allegations. ANSWER TO PRAYER FOR RELIEF 57. Playboy denies that Plaintiff is entitled to any of the relief requested in its First

Amended Complaint.

Page 12 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

JURY DEMAND 58. Playboy. DEFENSES 59. Without conceding that any of the following necessarily must be pled as an Paragraph 58 of the First Amended Complaint does not require a response from

affirmative defense, or that any of the following is not already at issue by virtue of the foregoing denials, and without prejudice to Playboy's right to plead additional defenses as discovery into the facts of the matter warrant, Playboy hereby asserts the following defenses. Playboy

specifically reserves the right to amend its defenses further as additional information is developed through discovery or otherwise. FIRST AFFIRMATIVE DEFENSE Noninfringement 60. Playboy has not directly infringed, contributed to the infringement, and/or

induced infringement of any claim of the `906 or `985 Patents. SECOND AFFIRMATIVE DEFENSE Patent Invalidity 61. Each and every claim of the `906 and `985 Patents is invalid for failure to comply

with the patent laws, including, but not limited to, 35 U.S.C. §§ 101, 102, 103, 112, and 113. THIRD AFFIRMATIVE DEFENSE Prosecution History Estoppel/Prosecution Disclaimer 62. Prosecution history estoppel and/or prosecution disclaimer preclude any finding

of infringement.

Page 13 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

FOURTH AFFIRMATIVE DEFENSE 35 U.S.C. § 286 63. The claims for damages are limited in time 35 U.S.C. § 286. FIFTH AFFIRMATIVE DEFENSE Notice of Infringement 35 U.S.C. § 286 64. Without shifting the burden of proof, which lies with Plaintiff, Playboy avers that

the First Amended Complaint fails to plead, and that Plaintiff cannot carry its burden to prove compliance with, or an exception to, the notice requirements of the patent laws, Title 35 of the United States code, including, but not limited to, 35 U.S.C. § 287, and therefore that alleged damages, if any, predating Plaintiff's assertion of the '906 Patent and the '985 Patent against Playboy are not recoverable by Plaintiff. SIXTH AFFIRMATIVE DEFENSE Laches/Equitable Estoppel/Waiver 65. Plaintiff's claims against Playboy are barred in whole or in part by one or more of

the equitable doctrines of laches, equitable estoppel and/or waiver. SEVENTH AFFIRMATIVE DEFENSE Patent Exhaustion / Full Compensation 66. The claims for relief are barred due to patent exhaustion and/or under the full

compensation rule.

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EIGHTH AFFIRMATIVE DEFENSE Intervening Rights 67. The claims for relief are limited due to legal and/or equitable intervening rights

under 35 U.S.C. §§ 252 and 307(b). NINTH AFFIRMATIVE DEFENSE Implied License 68. The claims for relief are barred on the grounds of implied license. TENTH AFFIRMATIVE DEFENSE Inequitable Conduct/Unclean Hands 69. Each and every claim of the `906 and `895 Patents is unenforceable due to

inequitable conduct and/or unclean hands. Playboy incorporates by reference the allegations contained in paragraphs 13 to 267 and 274 to 304 of its Counterclaims contained herein. 70. Playboy reserves all affirmative defenses under Rule 8(c) of the Federal Rules of

Civil Procedure, the Patent Laws of the United States, and any other defenses at law or in equity, that may now or in the future be available based on discovery or any other factual investigation concerning this case, including without limitation any applicable defenses asserted by any other defendant in this action. COUNTERCLAIMS In further response to the Complaint by Eolas, Playboy asserts the following Counterclaims against Eolas.

Page 15 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

PARTIES 1. Counterclaimant Playboy Enterprises International Inc. ("Playboy") is organized

and exists under the laws of the State of Delaware, with its principal place of business located at 680 North Lake Shore Drive, Chicago, Illinois 60611. 2. On information and belief, Counterclaim-Defendant Eolas Technologies, Inc.

("Eolas") is a Texas corporation with a principal place of business in Evanston, Illinois. JURISDICTION AND VENUE 3. These Counterclaims arise under the Patent Laws of the United States, 35 U.S.C.

§ 1 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§2201-02. This Court has subject matter jurisdiction over these Counterclaims pursuant to 28 U.S.C. §§ 2201, 2202, 1331 and 1338. 4. Court. 5. 1400(b). 6. In view of the filing by Eolas of this suit and Playboy's defenses, there exists an Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and By filing the Complaint, Eolas has consented to the personal jurisdiction of this

actual and justiciable controversy between the parties regarding the validity, enforceability, and alleged infringement by Playboy of the `906 and `985 Patents. COUNT I Declaratory Judgment of Unenforceability of U.S. Patent No 5,838,906 7. Playboy incorporates by reference the allegations contained in paragraphs 1 to 6

of its Counterclaims.

Page 16 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

8.

An actual controversy exists between the parties with respect to the alleged

infringement of the `906 patent. 9. Although Eolas alleges in its Complaint that Playboy has directly and/or

indirectly infringed the claims of the `906 patent, Playboy has not directly and/or indirectly infringed, and does not directly and/or indirectly infringe any claim of the `906 patent. COUNT II Declaratory Judgment of Invalidity of U.S. Patent No 5,838,906 10. Playboy incorporates by reference the allegations contained in paragraphs 1 to 6

of its Counterclaims. 11. An actual controversy exists between the parties with respect to the invalidity of

the `906 patent. 12. 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 invalid for failure to comply with the patent laws, including but not limited to 35 U.S.C. §§ 101, 102, 103, 112, and 113. COUNT III Declaratory Judgment of Unenforceability of U.S. Patent No 5,838,906 13. Playboy incorporates by reference the allegations contained in paragraphs 1 to 6

of its Counterclaims. 14. An actual controversy exists between the parties with respect to the

unenforceability of the `906 patent.

Page 17 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

15.

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

issued by the United States Patent and Trademark Office after full and fair examination, each and every claim of the `906 Patent is unenforceable due to inequitable conduct before the United States Patent and Trademark Office. A. Overview 1. 16. Named Inventor Doyle had a duty of candor and good faith in dealing with the Patent Office 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. 17. 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. 18. Doyle's duty of candor and good faith also existed during the reexaminations of

the '906 patent. 19. The duty of candor and good faith owed by Doyle included a duty to disclose to

the Patent Office all information known to him to be material to patentability as defined in 37 C.F.R. § 1.56. 2. 20. 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. 21. Doyle worked at the University of California, San Francisco, when he allegedly

conceived of the inventions claimed in the '906 and '985 patents.
Page 18 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

22. California. 23.

The '906 and '985 patents are owned by The Regents of the University of

Doyle and his co-inventors are entitled to receive a portion of any royalties paid to

The Regents of the University of California related to the '906 and/or '985 patents. 24. ("Eolas"). 25. Eolas. 26. 27. 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. 28. 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. 29. 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.
Page 19 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

B.

Doyle failed to disclose material information related to the ViolaWWW browser 30. As explained in more detail below, Doyle breached has duty of candor and good

faith in dealing with the Patent Office by failing to disclose material information related to the ViolaWWW browser. 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. 31. 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. 32. 33. 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.

Page 20 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

34.

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

WWW project page." 37. 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 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..." 38. Thus by May 20, 1994 -- several months before the application for the '906

patent was filed -- Doyle knew about Pei Wei's ViolaWWW browser.

Page 21 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

39.

Doyle learned even more about the ViolaWWW browser before the application

for the '906 patent was filed. 40. 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. 41. 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." 42. 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." 43. The paper cited by Pei Wei was entitled "A Brief Overview of the VIOLA

Engine, and its Applications." 44. The paper cited by Pei Wei was dated August 16, 1994 -- more than two months

before the application for the '906 patent was filed. 45. 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

Page 22 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

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 input form 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, news wire updates, televideo 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.

Page 23 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

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).

Page 24 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

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 documentembeddable mini applications shown, no special modification to the viola engine is required for ViolaWWW to support them. All the bindings are done via the viola language, provided that the necessary primitives are available in the interperter, of course. Put it another way, because of the scripting capability, the ViolaWWW browser has become very flexible, and can take on many new features dynamically. Ccode patches and recompilation of the browser can frequently be avoided. This attribute can be very important for several reasons. It keeps the size of the core software small, yet can grow dynamically as less frequently used features are occasionally used, or as new accessories/components are added.

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Such new accessories can be as simple as little Playboyts 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.

Page 26 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

One can imagine many plug-in accessories/Playboyts/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. 46. 47. "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." 48. 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

Page 27 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

anywhere as comprehensive as yours. But, the point was that there was a way to embed programmable & interactive objects into HTML documents. 49. 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 ¶ 45. 50. 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. 51. 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). 52. 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. 53. Doyle's response was sent after Doyle had read Pei Wei's paper about the

ViolaWWW browser dated August 16, 1994 (described above, supra ¶¶ 40-45). 54. 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 ...." 55. 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
Page 28 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

included the following statements: "Out of curiosity, did you publicly demonstrate this or publish any results before 1994?" 56. 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. 57. 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. 58. 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. 59. 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. 60. Doyle was living in Northern California on August 31, 1994, when he exchanged

messages with Pei Wei about the ViolaWWW browser. 61. Pei Wei was living in Northern California on August 31, 1994, when he

exchanged messages with Doyle about the ViolaWWW browser. 62. 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. 63. 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.

Page 29 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

64.

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

Martin were among those named as inventors. 65. The application for the '906 patent discloses the Mosaic browser and the Cello

browser, but not the ViolaWWW browser. 66. The application for the '906 patent included an information disclosure statement

that identified several pieces of prior art, but not the ViolaWWW browser. 67. 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." 68. 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. 69. 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. 70. 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
Page 30 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

pending patent covering the use of embedded program objects, or `Playboyts,' within World Wide Web documents." 71. 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." 72. 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." 73. 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 reread my letter to you... I said Viola was demonstrated in smaller settings, but before your demo. The Playboyts stuff was demo'ed to whomever wanted to see it and had visited our office at O'Reilly & Associates (where I worked at the time). This is what I wrote on the VRML list: ... > Definitely by May 8, 1993 we had demonstrated that plotting demo
Page 31 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

> (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 inlined into HTML documents etc., and with bi-directional communications, then look at ViolaWWW as it existed around late '92 early '93. 74. 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 ¶ 45. 75. 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). 76. 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. 77. People attending the Wizards workshop included Tim Berners-Lee, Marc

Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei. 78. workshop. 79. Dale Dougherty worked at O'Reilly & Associates in Northern California.
Page 32 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

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

80.

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. 81. California. 82. 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. 83. Wide Web. 84. 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. 85. Marc Andreesen and Eric Bina went on to found Netscape, the manufacturer of

another popular browser for the World Wide Web. 86. 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 -- more than one year before the application for the '906 patent was filed. 87. There was no limitation, restriction or obligation of secrecy on anyone at the

Wizards workshop.

Page 33 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

88.

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). 89. 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. 90. 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. 91. 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. 92. stuff." 93. 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 ¶¶ 41-45. 94. 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,

Page 34 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

"Out of curiosity, did you publicly demonstrate this or publish any results before 1994?" See supra ¶ 55. 95. 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." 96. "WWWWizardsWorkshop" refers to the World-Wide Web Wizards Workshop

held in Cambridge, Massachusetts on July 28­30, 1993, that Pei Wei attended. See supra ¶¶ 7688. 97. 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. 98. 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. 99.

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" -- more than one year before the application for the '906 patent was filed. See supra ¶ 73.

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100.

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 -- more than one year before the application for the '906 patent was filed. 101. 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] 102. 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." 103. 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.
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.... Notable features in the new ViolaWWW _________________________________ .... * Embeddable in-document and in-toolbar programmable viola objects. A document can embed mini viola applications (i.e.: 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. 104. 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 3.0 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 (i.e.: a chess board), or can cause mini apps to be placed in the toolbar. ....
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Availability _________ Source and binary can be found in ftp://ora.com/pub/www/viola. Sparc binary is supplied. .... Pei Y. Wei ([e-mail]) O'Reilly & Associates, Inc. 105. 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". 106. 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". 107. The following is a screenshot of the ViolaWWW browser after parsing the file

plotDemo.html:

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108.

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

in the Viola paper dated August 16, 1994. See supra ¶ 45. 109. 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.

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110.

Pei Wei had told Doyle on August 31, 1994 how the plotting demo worked: "[A]s

for the plotting demo, it actually is really just a front-end that fires up a back-end plotting program (and the point is that that back-end could very well be running on a remote super computer instead of the localhost). For that demo, there is a simple protocol such that the front end app could pass an X window ID to the back-end, and the back-end draws the graphics directly onto the window violaWWW has opened for it." See supra ¶ 58. 111. Pei Wei had told Doyle on August 31, 1994, see supra ¶ 48, and again on August

21, 1995, see supra ¶ 73, 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. 112. 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). 113. 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. 114. 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. 115. The webpages that Doyle printed included the following statements and graphic:

Page 40 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

WWW Browsers: Extensibility Issues Pei Wei, O'Reilly & Associates Stanford Computer Forum WWW Workshop - September 20- 21, 1994 .... Extensibility in WWW Browsers The WorldWideWeb is a powerful medium which has many applications beyond just publishing static documents. It is certainly an interface to the space of "documents." But already, 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 in-place 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.... ....

Page 41 of 75 Playboy Enterprises International, Inc.'s Answer and Counterclaims in response to Plaintiff Eolas Technologies Inc.'s First Amended Complaint

The next example is a front-end application to a backend. And the back-end is what actually does the computation and the drawing. ....

116.

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

the talk that Pei Wei gave at Stanford University in September 1994.

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117.

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 ¶ 45. 118. Pei Wei had told Doyle on August 31, 1994, see supra ¶ 48, and again on

August 21, 1995, see supra ¶ 73, 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. 119. 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 pu