Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 455

Oracle America, Inc's First Amended ANSWER to 285 Amended Complaint,, and, COUNTERCLAIM against Eolas Technologies Incorporated by Sun Microsystems, Inc..(Findlay, Eric)

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., Blockbuster Inc., CDW Corp., Citigroup Inc., eBay Inc., Frito-Lay, Inc., The Go Daddy Group, Inc., Google, Inc., J.C. Penney 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. § § § § § § § § § § § § § § § § § §

Civil Action No. 6:09-cv-446

JURY TRIAL

ORACLE AMERICA, INC.'S FIRST AMENDED ANSWER TO PLAINTIFF'S FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT Defendant Oracle America, Inc. ("OAI"), formerly known as Sun Microsystems, Inc., hereby submits its Answer and Counterclaims to Plaintiff Eolas Technologies Incorporated's ("Eolas") First Amended Complaint for Patent Infringement ("FAC") as follows: PARTIES 1. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 1 of the FAC, and therefore denies them. 2. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 2 of the FAC, and therefore denies them. 3. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 3 of the FAC, and therefore denies them.
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4.

OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 4 of the FAC, and therefore denies them. 5. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 5 of the FAC, and therefore denies them. 6. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 6 of the FAC, and therefore denies them. 7. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 7 of the FAC, and therefore denies them. 8. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 8 of the FAC, and therefore denies them. 9. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 9 of the FAC, and therefore denies them. 10. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 10 of the FAC, and therefore denies them. 11. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 11 of the FAC, and therefore denies them. 12. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 12 of the FAC, and therefore denies them. 13. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 13 of the FAC, and therefore denies them. 14. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 14 of the FAC, and therefore denies them.

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15.

OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 15 of the FAC, and therefore denies them. 16. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 16 of the FAC, and therefore denies them. 17. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 17 of the FAC, and therefore denies them. 18. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 18 of the FAC, and therefore denies them. 19. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 19 of the FAC, and therefore denies them. 20. OAI admits the allegations contained in paragraph 20 were correct until

February 15, 2010. On February 15, 2010, Oracle USA, Inc. merged with and into Sun Microsystems, Inc. Sun Microsystems, Inc., the surviving corporation was renamed Oracle America, Inc. ("OAI"). OAI is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 500 Oracle Parkway, Redwood Shores, California 94065. 21. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 21 of the FAC, and therefore denies them. 22. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 22 of the FAC, and therefore denies them. 23. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 23 of the FAC, and therefore denies them.

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II. 24.

JURISDICTION AND VENUE

OAI incorporates by reference its responses to the allegations contained in

paragraphs 1-23 above. 25. OAI admits this is an action for patent infringement arising under the patent laws

of the United States, Title 35 of the United States Code, but denies any liability thereunder. OAI admits that this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) over the claims brought against it in this suit, but OAI denies any liability thereunder. 26. OAI admits, for purposes of this litigation only, that this Court has personal

jurisdiction over it. OAI denies the remaining allegations in paragraph 26 of the FAC as related to OAI. OAI is without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in paragraph 26 of the FAC as they pertain to any other defendant, and therefore denies them. 27. For purposes of this litigation only, OAI does not dispute that venue exists in this

judicial district under 28 U.S.C. § 1391 (b); however, OAI maintains that under 28 U.S.C. § 1404(a), for the convenience of parties and witnesses, in the interests of justice, this action should be transferred to the Northern District of California. The allegations in this paragraph are legal conclusions for which no answer is required or given. III. 28. PATENT INFRINGEMENT

OAI incorporates by reference its responses to the allegations contained in

paragraphs 1 through 27 above. 29. OAI admits that the `906 Patent is entitled "Distributed hypermedia method for

automatically invoking external application providing interaction and display of embedded objects with a hypermedia document" and appears on its face to have been issued on

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November 17, 1998. OAI admits that the `985 Patent is entitled "Distributed hypermedia method and system for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document" and appears on its fact to have been issued on October 6, 2009. OAI is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations set forth in paragraph 29 of the FAC, and therefore denies them. 30. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 30 of the FAC, and therefore denies them. 31. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 31 of the FAC, and therefore denies them. 32. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 32 of the FAC, and therefore denies them. 33. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 33 of the FAC, and therefore denies them. 34. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 34 of the FAC, and therefore denies them. 35. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 35 of the FAC, and therefore denies them. 36. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 36 of the FAC, and therefore denies them. 37. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 37 of the FAC, and therefore denies them.

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38.

OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 38 of the FAC, and therefore denies them. 39. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 39 of the FAC, and therefore denies them. 40. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 40 of the FAC, and therefore denies them. 41. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 41 of the FAC, and therefore denies them. 42. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 42 of the FAC, and therefore denies them. 43. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 43 of the FAC, and therefore denies them. 44. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 44 of the FAC, and therefore denies them. 45. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 45 of the FAC, and therefore denies them. 46. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 46 of the FAC, and therefore denies them. 47. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 47 of the FAC, and therefore denies them. 48. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 48 of the FAC, and therefore denies them. 49. OAI denies the allegations contained in paragraph 49 of the FAC.

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50.

OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 50 of the FAC, and therefore denies them. 51. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 51 of the FAC, and therefore denies them. 52. OAI is without knowledge or information sufficient to form a belief as to the truth

of the allegations set forth in paragraph 52 of the FAC, and therefore denies them. 53. OAI denies the allegations contained in paragraph 53 as related to OAI. OAI is

without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in paragraph 53 of the FAC as they pertain to any other defendant, and therefore denies them. 54. OAI denies the allegations contained in paragraph 54 as related to OAI. OAI is

without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in paragraph 54 of the FAC as they pertain to any other defendant, and therefore denies them. 55. OAI denies the allegations contained in paragraph 55 as related to OAI. OAI is

without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in paragraph 55 of the FAC as they pertain to any other defendant, and therefore denies them. 56. OAI denies the allegations contained in paragraph 56 as related to OAI. OAI is

without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in paragraph 56 of the FAC as they pertain to any other defendant, and therefore denies them.

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I.

PRAYER FOR RELIEF

Plaintiff prays for the following relief: A. Judgment that each Defendant has infringed, directly and indirectly, one or more

claims of the `906 Patent and one or more claims of the `985 Patent; B. A judgment and order preliminarily and permanently enjoining each Defendant,

its employees and agents, and any other person(s) in active concert or participation with it from infringing, directly or indirectly, the `906 Patent and the `985 Patent; C. A judgment and order requiring each Defendant to pay Plaintiff's damages under

35 U.S.C. § 284, including treble damages for willful infringement as provided by 35 U.S.C. § 284, and supplemental damages for any continuing post-verdict infringement up until entry of the final judgment with an accounting as needed; D. E. An award of all costs of this action, including attorneys' fees and interest; and Such other and further relief as the Court deems just and equitable.

OAI'S RESPONSE TO PRAYER FOR RELIEF: OAI denies that Eolas is entitled to any relief requested in its Prayer for Relief or any other relief. II. DEMAND FOR JURY TRIAL

Plaintiff hereby demands that all issues be determined by a jury. OAI'S RESPONSE TO DEMAND FOR JURY TRIAL: This paragraph requires no response. GENERAL DENIAL OAI denies any allegations in the FAC not specifically admitted in OAI's responsive pleadings above.

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AFFIRMATIVE DEFENSES First Affirmative Defense (Failure to State a Claim) The FAC fails to state a claim upon which relief can be granted because OAI has not performed any act or thing, and is not proposing to perform any act or thing, in violation of any rights validly belonging to Eolas under the `906 Patent or the `985 Patent (collectively, the "Eolas Patents-in-Suit"). Second Affirmative Defense (Non-Infringement) OAI has not and does not infringe the Eolas Patents-in-Suit, either directly or indirectly, literally or under the doctrine of equivalents. Third Affirmative Defense (Invalidity) On information and belief, the subject matter of the Eolas Patents-in-Suit do not meet the requirements of 35 U.S.C. § 101, et seq., and the Eolas Patents-in-Suit therefore are invalid, void and unenforceable because they fail to meet the conditions specified in 35 U.S.C. § 101, et seq., including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112. Fourth Affirmative Defense (Equitable Estoppel, Laches, Waiver and Unclean Hands) On information and belief, Eolas' claims are barred by the equitable doctrines of estoppel, laches, waiver and/or unclean hands. Fifth Affirmative Defense (35 U.S.C. § 287) Any claim for damages for patent infringement by Eolas is limited, at a minimum, by 35 U.S.C. § 287 to those damages occurring only after the notice of infringement.
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Sixth Affirmative Defense (Limitation on Damages) Eolas' claims for monetary relief, if any, are limited by 35 U.S.C. § 286. Seventh Affirmative Defense (Improper Joinder) The Defendants are improperly joined. Eighth Affirmative Defense (Injunctive Relief) Eolas is not entitled to injunctive relief because any injury to Eolas is not immediate or irreparable, and Eolas has an adequate remedy at law. Ninth Affirmative Defense (Reservation of Additional Defenses) OAI 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 and equity, that may now or in the future be available based on discovery or any other factual investigation concerning this case or any related action. Tenth Affirmative Defense (Lack of Standing) Eolas lacks standing to sue because it is a mere licensee. Eleventh Affirmative Defense (Prosecution History Estoppel/Prosecution Disclamer) Prosecution history estoppels and/or prosecution disclaimer preclude any finding of infringement.

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Twelfth Affirmative Defense (Inequitable Conduct/Unclean Hands) Each and every claim of the '906 and '985 Patents is unenforceable due to inequitable conduct and/or unclean hands. OAI incorporates by reference the allegations contained in Paragraphs 20 to 274 and 286 to 316 of its Counterclaims. Thirteenth Affirmative Defense (Estoppel/Waiver/Implied License/Express License) The claims for relief are barred on the grounds of estoppel, waiver, implied license, and/or express license. Fourteenth Affirmative Defense (Patent Exhaustion/Full Compensation) The claims for relief are barred due to patent exhaustion and/or under the full compensation rule.

Fifteenth Affirmative Defense (Notice of Infringement) The claims for relief are barred for failure to comply with the notice requirements of 35 U.S.C. § 287(a) Sixteenth Affirmative Defense (Intervening Rights) The claims for relief are limited due to legal and/or equitable intervening rights under 35 U.S.C. §§ 252 and 307(b).

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Seventeenth Affirmative Defense (28 U.S.C. § 1498) The claims for relief are barred by 28 U.S.C. § 1498 to the extent that any products accused of infringement in this action have been used or manufactured by or for the United States. COUNTERCLAIMS Defendant/Counterclaimant Oracle America, Inc. ("OAI"), formerly known as Sun Microsystems, Inc., brings the following counterclaims against Plaintiff/Counterdefendant Eolas Technology Incorporated ("Eolas") as follows: THE PARTIES 1. Defendant/Counterclaimant OAI is a corporation organized under the laws of the

Delaware, having its principal place of business in Redwood Shores, California. On February 15, 2010, Oracle USA, Inc. merged with and into Sun Microsystems, Inc. Sun Microsystems, Inc., the surviving corporation was renamed Oracle America, Inc. ("OAI"). 2. Plaintiff/Counterdefendant Eolas alleges in its Complaint that it is a corporation

organized and existing under the laws of Texas with a principal place of business at 313 East Charnwood Street, Tyler, Texas 75071. JURISDICTION AND VENUE 3. On October 6, 2009 Eolas filed its Complaint for Patent Infringement alleging

that OAI and others infringe United States Patent No. 5,838,906 ("the '906 Patent") and United States Patent No. 7,599,985 ("the '985 Patent") (collectively "the Eolas Patents-in-Suit"). 4. On May 20, 2010 Eolas filed its First Amended Complaint for Patent

Infringement alleging that OAI and others infringe the Eolas Patents-in-Suit.

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5.

This Court has subject matter jurisdiction over OAI's counterclaims under the

Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202, and the patent laws of the United States. An actual, substantial and continuing justiciable controversy exists between Eolas and OAI, with respect to which OAI requires a declaration of rights. Specifically, the controversy related to the invalidity, unenforceability and non-infringement of the Eolas Patents-in-Suit. 6. By filing its Complaint, Eolas has consented to the personal jurisdiction of this

Court. This is an action for declaratory relief. This Court has jurisdiction over this counterclaim based on 28 U.S.C. §§ 1331, 1338(a), 2201 and 2202. 7. Venue is proper in this judicial district under 28 U.S.C. §§ 1391, however, OAI

maintains that under 28 U.S.C. § 1404(a), for the convenience of parties and witnesses, in the interests of justice, this action should be transferred to the Northern District of California. FIRST COUNTERCLAIM (Declaration of Non-Infringement of U.S. Patent No 5,838,906) 8. OAI hereby incorporates and realleges paragraphs 1 through 7 above as though

fully set forth herein. 9. Eolas has alleged, and now alleges, that Sun Microsystems, Inc. has been and is

directly infringing the '906 Patent in this District or otherwise within the United States by making, using, selling, offering to sell, and/or importing in or into the United States, without authority: (i) web pages and content to be interactively presented in browsers, including, without limitation, the web pages and content accessible via www.sun.com and maintained on servers located in and/or accessible from the United States under the control of Sun Microsystems, Inc.; (ii) software, including, without limitation, software that allows content to be interactively presented in and/or served to browsers, including, without limitation, Java and JavaFX; and/or

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(iii) computer equipment, including, without limitation, computer equipment that stores, serves, and/or runs any of the foregoing. 10. Eolas has alleged, and now alleges, that Sun Microsystems, Inc. indirectly

infringes one or more claims of the '906 Patent by active inducement under 35 U.S.C. § 271(b). Eolas further alleges that Sun Microsystems, Inc. has induced and continues to induce users of the web pages, software, and computer equipment identified above to directly infringe one or more claims of the '906 Patent. Eolas also alleges that Sun Microsystems, Inc. indirectly infringes one or more claims of the '906 Patent by contributory infringement under 35 U.S.C. § 271(c). Specifically, Eolas alleges that by providing the web pages, software, and computer equipment identified above, Sun Microsystems, Inc. contributes to the direct infringement of users of said web pages, software, and computer equipment. 11. Eolas also contends that such alleged direct and indirect infringement has caused

Eolas to suffer damages and that irreparable injury has been caused to Eolas. 12. 11. 13. OAI has alleged, and hereby alleges, that it has not infringed and presently is not OAI denies the allegations of Eolas referenced in preceding paragraphs 9 through

infringing the '906 Patent, either literally or under the doctrine of equivalents. OAI also has alleged, and hereby alleges, that it has not and presently is not actively inducing or contributing to the infringement of the '906 Patent. As such, OAI has alleged, and hereby continues to allege, that it is not liable for damages arising from the claimed infringement. 14. OAI has been injured and damaged by Eolas' filing of a FAC against OAI

asserting patents that are not infringed by OAI.

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15.

OAI desires and requests a judicial determination and declaration of the

respective rights and duties of the parties based on the disputes recited above. Such a determination and declaration are necessary and appropriate at this time so that the parties may ascertain their respective rights and duties regarding the non-infringement, unenforceability and invalidity of the '906 Patent. SECOND COUNTERCLAIM (Declaration of Invalidity of U.S. Patent No. 5,838,906) 16. OAI hereby incorporates and realleges paragraphs 1 through 15 above as though

fully set forth herein. 17. On information and belief, the '906 Patent is invalid for failing to meet the

conditions specified in 35 U.S.C. § 101, et seq., including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112. 18. OAI has been injured and damaged by Eolas' filing of a FAC against OAI

asserting patents that are invalid. 19. invalid. THIRD COUNTERCLAIM (Declaratory Judgment of Unenforceability of U.S. Patent No. 5,838,906) 20. OAI incorporates by reference the allegations contained in Paragraphs 1 to 19 of Based on the foregoing, OAI is entitled to a judgment that the '906 Patent is

its Counterclaims. An actual controversy exists between the parties with respect to the unenforceability of the '906 Patent. 21. 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

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every claim of the '906 Patent is unenforceable due to inequitable conduct before the United States Patent and Trademark Office. A. Overview 1. 22. 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. 23. 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. 24. Doyle's duty of candor and good faith also existed during the reexaminations of

the '906 patent. 25. 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. 26. 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. 27. Doyle worked at the University of California, San Francisco when he allegedly

conceived of the inventions claimed in the '906 and '985 patents. 28. California. The '906 and '985 patents are owned by The Regents of the University of

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29.

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. 30. ("Eolas"). 31. Eolas. 32. 33. 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. 34. Doyle was personally involved in the prosecution of the '906 patent, 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. 35. 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. 36. Doyle failed to disclose material information related to the ViolaWWW browser 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
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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. 37. 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. 38. 39. 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. 40. 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. 41. 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

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Viola which [Raggett] seem[s] to remember takes advantage of the tk tool kit to provide a certain level of embedding." 42. Raggett further advised Doyle that he could "find a pointer to Viola off the CERN

WWW project page." 43. 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..." 44. Thus by May 20, 1994 -- several months before the application for the '906

patent was filed -- Doyle knew about Pei Wei's ViolaWWW browser. 45. Doyle learned even more about the ViolaWWW browser before the application

for the '906 patent was filed. 46. 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

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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. 47. 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." 48. 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." 49. The paper cited by Pei Wei was entitled "A Brief Overview of the VIOLA

Engine, and its Applications." 50. The paper cited by Pei Wei was dated August 16, 1994 -- over two months

before the application for the '906 patent was filed. 51. 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 [sic] 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.

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What follows is a screendump of a demo of an embedded viola application that lets readers of this HTML page communicate by typing or drawing. Like the chess board application above, this chat application can stand-alone (and have nothing to do with the World Wide Web), or be embedded into a HTML document. By the way, to make this possible, a multi-threaded/persistent server was written to act as a message relay (and to handle HTTP as well).

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This next mini application front-ends a graphing process (on the same machine as the viola process). An important thing to note is that, like all the other document-embeddable mini applications shown, no special modification to the viola engine is required for ViolaWWW to support them. All the bindings are done via the viola language, provided that the necessary primitives are available in the interperter, of course. Put it another way, because of the scripting capability, the ViolaWWW browser has become very flexible, and can take on many new features dynamically. C-code patches and recompilation of the browser can frequently be avoided.

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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. Such new accessories can be as simple as little applets that accompany documents, or conceivably as complicated as a news or mail reader. An analogy is how Emacs's programming environment allows that text editor to become much more than just a text editor.

Not only can mini applications be embedded inside of documents, they can even be plugged into the ViolaWWW's "toolbar". The following picture shows a "bookmark tool" that acts as a mini table of contents for the page. In this case, the bookmark is linked
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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. 52. 53. "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." 54. 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.

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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. 55. 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 ¶ 51. 56. 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. 57. 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). 58. 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. 59. Doyle's response was sent after Doyle had read Pei Wei's paper about the

ViolaWWW browser dated August 16, 1994 (described above, supra ¶¶ 48­51). 60. 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 . . . ."

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61.

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?" 62. 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. 63. 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. 64. 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 local host). 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. 65. 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. 66. Doyle was living in Northern California on August 31, 1994, when he exchanged

messages with Pei Wei about the ViolaWWW browser. 67. Pei Wei was living in Northern California on August 31, 1994, when he

exchanged messages with Doyle about the ViolaWWW browser. 68. 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.

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69.

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

Martin were among those named as inventors. 71. The application for the '906 patent discloses the Mosaic browser and the Cello

browser, but not the ViolaWWW browser. 72. The application for the '906 patent included an information disclosure statement

that identified several pieces of prior art, but not the ViolaWWW browser. 73. 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." 74. 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. 75. 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. 76. 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

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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." 77. 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." 78. 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." 79. On August 21, 1995, at approximately 4:09 p.m. California time, Pei Wei

responded to the message that Doyle had sent at approximately 1:14 p.m. Pei Wei's response included the following statements: Please carefully re-read my letter to you... I said Viola was demonstrated in smaller settings, but before your demo. The applets stuff was demo'ed to whomever wanted to see it and had visited our office at O'Reilly & Associates (where I worked at the time). This is what I wrote on the VRML list: ....

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> 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. 80. 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 ¶ 51. 81. 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). 82. 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. 83. People attending the Wizards workshop included Tim Berners-Lee, Marc

Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei. 84. workshop. 85. Dale Dougherty worked at O'Reilly & Associates in Northern California. Tim Berners-Lee and Dale Dougherty were the organizers of the Wizards

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86.

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. 87. California. 88. 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. 89. Wide Web. 90. 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. 91. Marc Andreesen and Eric Bina went on to found Netscape, the manufacturer of

another popular browser for the World Wide Web. 92. 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. 93. There was no limitation, restriction or obligation of secrecy on anyone at the

Wizards workshop.

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94.

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). 95. 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. 96. 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. 97. 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. 98. stuff." 99. 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 [sic] for months and months now." See supra ¶¶ 47­51. 100. 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,

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"Out of curiosity, did you publicly demonstrate this or publish any results before 1994?" See supra ¶ 61. 101. 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." 102. "WWWWizardsWorkshop" refers to the World-Wide Web Wizards Workshop

held in Cambridge, Massachusetts on July 28­30, 1993, that Pei Wei attended. See supra ¶¶ 82­ 94. 103. 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. 104. The "Agenda" link links to a webpage at

http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Agenda.html that states that "Interactive objects" was on the agenda for discussion at the Wizards workshop. 105. 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 ¶ 79. 106. 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.

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107.

The "Viola stuff" folder included a printout of a webpage with the "README"

file for viola-2.1.2. The date at the top of the "README" file is July 27, 1992. The "README" file includes instructions for building the binary code for the "viola" program, and instructions for running the ViolaWWW browser. The "README" file states at the bottom: Comments and questions: Please send WWW specific bugs to [e-mail], general comments to [e-mail], and anything to [e-mail]. Pei Y. Wei [e-mail] 108. 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." 109. 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. 110. 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. ....

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Pei Y. Wei ([e-mail]) O'Reilly & Associates, Inc. 111. 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". 112. 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". 113. The following is a screenshot of the ViolaWWW browser after parsing the file

plotDemo.html:

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114.

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

in the Viola paper dated August 16, 1994. See supra ¶ 51. 115. 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. 116. 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

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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 ¶ 64. 117. Pei Wei had told Doyle on August 31, 1994, see supra ¶ 54, and again on

August 21, 1995, see supra ¶ 79, 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. 118. 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). 119. 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. 120. 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. 121. 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

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.... 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. . . . .... 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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122.

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

the talk that Pei Wei gave at Stanford University in September 1994. 123. 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 ¶ 51. 124. Pei Wei had told Doyle on August 31, 1994, see supra ¶ 54, and again on

August 21, 1995, see supra ¶ 79, that the plotting demo described in the Viola paper dated

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August 16, 1994, was the "very one" demonstrated "to visitors from a certain computer manufacturer" by May 8, 1993. 125. 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). 126. 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. 127. 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. 128. 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 embedded interactive objects. 129. 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] 130. 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] 131. 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. 132. 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). 133. 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). 134. 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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135.

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

to the patentability of the claimed inventions in the '906 patent. 137. 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 ¶ 51. 138. Pei Wei had told Doyle on August 31, 1994, about the Viola paper dated

August 16, 1994, see supra ¶¶ 48­51, and Doyle had downloaded and read that paper the same day, see supra ¶¶ 52, 58­60, yet Doyle never disclosed the Viola paper to the Patent Office during the original examination of the '906 patent. 139. 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. 140. 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 ¶¶ 54­57. 141. August 1993. None of the claimed inventions in the '906 patent was conceived before

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142.

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). 143. 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). 144. 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). 145. 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. 146. 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