Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 457

Amended ANSWER to 285 Amended Complaint,, Defenses and, COUNTERCLAIM against Eolas Technologies Incorporated by Staples, Inc..(Richardson, Michael)

Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Doc. 457

TN

THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION
$

EOLAS TECHNOLOGIES INCORPORATED,

$ $

Plaintiff,
v.

ADOBE SYSTEMS INC., ET AL.,
Defendants.

$ $ $ $
$ $

C.A. NO. 6:09-CY-446

ruDGE LEONARD E. DAVIS
JURY TRIAL DEMANDED

$ $ $

STAPLES. INC.'S AMENDED ANS\ilER. DEFENSES. AND COUNTERCLAIMS Defendant Staples, Inc. ("Staples") files this Amended Answer
Technologies Incorporated's ("Eolas"

to Plaintiff

Eolas Patent

or "Plaintiff') First Amended Complaint for

Infringement ("Amended Complaint") and asserts counterclaims, as follows:

PARTIES

1.

Staples lacks knowledge and information sufficient to form a belief as to the truth

of the allegations in
allegations.

Paragraph

1 of the Amended Complaint and therefore

denies those

2.

Paragraph 2 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of ParagraphT andtherefore denies those allegations.

3.

Paragraph 3 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 3 and therefore denies those allegations.

Dockets.Justia.com

4.

Paragraph 4 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 4 and therefore denies those allegations.

5.

Paragraph 5 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 5 and therefore denies those allegations.

6.

Paragraph 6 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 6 and therefore denies those allegations.

7.

Paragraph 7 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of ParagraphT and therefore denies those allegations.

8.

Paragraph 8 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 8 and therefore denies those allegations.

9.

Paragraph 9 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 9 and therefore denies those allegations.

10.

Paragraph 10 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 10 and therefore denies those allegations.

I

1.

Paragraph 1 1 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph I

I

and therefore denies those allegations.

12.

Paragraph 12 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph12 andtherefore denies those allegations.

13.

Paragraph 13 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 13 and therefore denies those allegations.

14.

Paragraph 14 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 14 and therefore denies those allegations.

15.

Paragraph 15 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 15 and therefore denies those allegations.

16.

Paragraph 16 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph 16 and therefore denies those allegations.

17.

Paragraph 17 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of ParagraphlT andtherefore denies those allegations.

18.

Paragraph 18 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as to the truth of the allegations of Paragraph 18 and therefore denies those allegations.

19. 20.

Staples admits the allegations of Paragraph

l9 of the Amended Complaint.

Paragraph 20 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph 19 and therefore denies those allegations.

21.

Paragraph 21 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 21 and therefore denies those allegations.

22.

Paragraph 22 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph22 and therefore denies those allegations.

23.

Paragraph 23 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as to the truth of the allegations of Paragraph23 and therefore denies those allegations.

JURISDICTION AND VENUE

24. 25.

Staples refers to and incorporates herein its previous answers to Paragraphs 1-23. Staples admits that Paragraph25 of the Amended Complaint alleges that 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. Staples admits that this Court has subject matter jurisdiction

pursuantto 28 U.S.C. $$ 1331 and 1338(a).

26.

The allegations contained in paragraph 26 constitute conclusions of law to which

no answer is required.

27.

The allegations contained in paragraph 27 constitute conclusions of law to which

no answer is required.

ANSWER TO ALLEGED INFRINGEMENT OF U.S. PATENT NOS.5.838.906 and 7,599.985

28. 29.

Staples refers to and incorporates herein its previous answers to Paragraphs l-27.

Staples admits that U.S. Patent

No. 5,838,906 (the "'906 Patent") entitled

"Distributed hypermedia method for automatically invoking external application providing
interaction and display of embedded objects within a hypermedia document," and U.S. Patent

No. 7,599,985 (the "'985 Patent") entitled "Distributed hypermedia method and system for
automatically invoking extemal application providing interaction and display

of

embedded

objects within a hypermedia document" \ryere issued by the U.S. Patent and Trademark Office on

November 17,1998 ('906 Patent) and October 6,2009 ('985 Patent). Staples lacks knowledge

and information suffrcient

to form a belief as to the truth of the remaining

allegations of

Paragraph 29 of the Amended Complaint, and therefore denies them.

30.

Staples lacks knowledge and information sufficient to form a belief as to the truth

of the allegations of
allegations.
31

Paragraph 30

of the Amended Complaint and therefore denies those

.

Paragraph 31 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 31 and therefore denies those allegations.

32.

Paragraph 32 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph32 andtherefore denies those allegations.

33.

Paragraph 33 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 33 and therefore denies those allegations.

34.

Paragraph 34 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph34 and therefore denies those allegations.

35.

Paragraph 35 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 35 and therefore denies those allegations.

36.

Paragraph 36 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 36 and therefore denies those allegations.

37.

Paragraph 37 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph3T and therefore denies those allegations.

38.

Paragraph 38 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph 38 and therefore denies those allegations.

39.

Paragraph 39 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 39 and therefore denies those allegations.

40.

Paragraph 40 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufFrcient to form a belief as

to the truth of the allegations of Paragraph 40 and therefore denies those allegations.

41.

Paragraph

4l

of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph

4l

and therefore denies those allegations.

42.

Paragraph 42

of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph42 andtherefore denies those allegations.

43.

Paragraph 43 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 43 and therefore denies those allegations.

44.

Paragraph 44

of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph44 and therefore denies those allegations.

45.

Paragraph 45 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph 45 and therefore denies those allegations.

46.

Paragraph 46 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph46 andtherefore denies those allegations.

47

.

Paragraph 47 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph4T and therefore denies those allegations.

48. 49.

Staples denies the allegations of Paragraph 48 of the Amended Complaint. Paragraph 49 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as

to the truth of the allegations of Paragraph 49 andtherefore denies those allegations.

50.

Paragraph 50 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 50 and therefore denies those allegations.

51.

Paragraph 51 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information suff,rcient to form a belief as

to the truth of the allegations of Paragraph 5l and therefore denies those allegations.

52.

Paragraph 52 of the Amended Complaint is not directed at Staples. To the extent

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as

to the truth of the allegations of Paragraph 52 andtherefore denies those allegations.

53.

Staples admits that following commencement of this case

it obtained knowledge

of the '906 patent and

denies the remaining allegations

of

Paragraph 53

of the Amended

Complaint. V/ith respect to the other Defendants, Staples lacks knowledge and information
sufficient to form a belief as to the truth of the allegations of Paragraph 53 of the Amended
Complaint and therefore denies those allegations.

54.

With respect to Staples, Staples denies the allegations of Paragraph 54 of the

Amended Complaint. With respect

to the other Defendants,

Staples lacks knowledge and

information sufficient to form a belief as to the truth of the allegations of Paragraph 54 and
therefore denies those allegations.

55.

With respect to Staples, Staples denies the allegations of Paragraph 55 of the

Amended Complaint. With respect to the other Defendants, Staples lacks knowledge and information sufficient to form a belief as to the truth of the allegations of Paragraph 55 and
therefore denies those allegations.

56.

With respect to Staples, Staples denies the allegations of Paragraph 56 of the

Amended Complaint. With respect

to the other Defendants, Staples lacks knowledge and

information sufficient to form a belief as to the truth of the allegations of Paragraph 56 and
therefore denies those allegations.

ANSWER TO PRAYER FOR RELIEF

57.

Staples denies that Plaintiff

is entitled to any of the relief

requested

in

the

Amended Complaint for Patent Infringement.

DEF'ENSES

Without conceding that any of the following necessarily must be pled as an affirmative
defense, or that any of the following is not already at issue by virtue of the foregoing denials, and

without prejudice to Staples' right to plead additional defenses as discovery into the facts of the
matter may warrant, Staples hereby asserts the following defenses. Staples specifically reserves the right to amend its defenses further as additional information is developed through discovery or otherwise.

F'IRST DEFENSE Staples does not infringe and has not infringed (either directly, contributorily, or by inducement) any claim
doctrine of equivalents.
9

of the '906 Patent and the '985 Patent either literally or under the

SECOND DEF'ENSE The claims of the '906 Patent and the '985 Patent are invalid and/or unenforceable for

failing to meet the requirements of one or more sections of Title 35, United States Code,
includingatleastsections 102, 103, and/or II2,and oneormoresectionsof Title37, Codeof
Federal Regulations.

THIRD DEFENSE
Plaintiff s claim for damages is limited in time by 35 U.S.C. FOURTH DEF'ENSE
The Amended Complaint fails to plead, and Plaintiff cannot carry its burden to prove,
compliance with, or an exception to, the notice requirements of the patent laws, Title 35 of the
$ 286.

United States Code, including, but not limited to, 35 U.S.C.
damages,

ç

287, and therefore alleged

if

arry, predating Plaintiff s assertion

of the '906 Patent and the '985 Patent against

Staples are not recoverable by Plaintiff.

FIFTH DEFENSE
Plaintiff s Amended Complaint fails to state
a claim

for which relief can be granted.

SIXTH DEFENSE
The claims stated in the Amended Complaint are barred by the doctrines of laches, estoppel, or other equitable defenses.

SEVENTH DEFENSE

Plaintiff s claims for relief are limited by patent exhaustion and/or implied license.

EIGHTH DEFENSE
Plaintiff is estopped from asserting a construction of any claim of the '906 Patent and/or
the '985 Patent in any manner inconsistent with prior positions taken before the United States
Patent and Trademark Office or any court of law.
10

NINTH DEFENSE
Each and every claim of the '906 and '895 Patents is unenforceable due to inequitable

conduct andlor unclean hands. Staples incorporates by reference the allegations contained in
Paragraphs l7 to 268 and282 to 307 of its Counterclaims.

COUNTERCLAIMS
In further response to the Complaint by Eolas, Staples asserts the following
Counterclaims against Eolas :

PARTIES

1.

Counterclaimant Staples Inc. ("Staples") is a corporation organized and existing

under the laws of Delaware with a principal place of business at 500 Staples Drive, Framingham, Massachusetts 01702.

2.
("Eolas") is
a

On information and belief, Counterclaim-Defendant Eolas Technologies, Inc.

corporation organized and existing under the laws of Texas with a principal place

of business in at 313 East Charnwood Street, Tyler, Texas 75701.

JURISDICTION AND VENUE

3.

These Counterclaims arise under the patent laws of the United States, 35

U.S.C. $ 1 er. seq., and the Declaratory Judgment Act, 28 U.S.C. $$ 2201-02. The Court has
subject matter jurisdiction over these Counterclaims pursuant to 28 U.S.C. $$ 1331, 1338, and

220r-02.

4.

This Court has personal jtrisdiction over Eolas because Eolas is a corporation

organized and existing under the laws of Texas, Eolas has its principle place of business in this

district, and by virtue of Eolas filing the Complaint in this action in this Court.

11

5.

Subject to Defendants' motion to transfer, venue with respect to these

Counterclaims in this district is met under 28 U.S.C. $$ 1391 (b) and (c) because Eolas is a

corporation subject to the personal jurisdiction of this Court..

COIII{T

I
I to 5 of

6.

Staples incorporates by reference the allegations contained in Paragraphs

its Counterclaims.

7. 8.

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

infringeme nt' 90 6 Patent.

Although Eolas alleges in its Complaint that Staples has directly and/or indirectly

infringed the claims of the '906 Patent, Staples has not directly and/or indirectly infringed, and
does not directly andlor indirectly infringe, any claim of the'906 Patent.

9.
ç 220r.

A judicial determination of the respective rights of the parties with respect to the

infringement of the claims of the '906 Patent is now necess¿rry and appropriate under 28 U.S.C.

COUNT

II
of

10. l.

Staples incorporates by reference the allegations contained in Paragraphs 1 to 5

its Counterclaims.
1

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, ll2, and Il3.
12

13.

A judicial determination of the respective rights of the parties with respect to the

validity of the claims of the '906 patent is now necessary and appropriate under 28 U.S.C.
s 220t.

COTTNT

III
of

14. 15. 16.

Staples incorporates by reference the allegations contained in Paragraphs 1 to 5

its Counterclaims.

An actual controversy exists between the parties with respect to the

unenforceability of the '906 Patent.

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.

I.

Overview

A. 17. 18.

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. 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.

19.

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

the '906 patent.

13

20.

The duty of candor and good faith owed by Doyle included a duty to disclose to

the Patent Off,rce all information known to that individual to be material to patentability as
def,rned

in 37 C.F.R. $ 1.56.

B. 2I.

Doyle had a financial incentive to deceive the Patent Office

Doyle had a financial incentive to deceive the Patent Office durinþ prosecution of

the '906 patent, during the reexaminations of the '906 patent, and during the prosecution of the

'985 patent.

22. 23.
Califomia.

On information and belief, Doyle worked at the University of California, San

Francisco when he allegedly conceived of the inventions claimed in the '906 and '985 patents.

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

of

24. 25.
("Eolas").

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.

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

26. 27. 28. 29.

On information and belief, Doyle quit his job to found Eolas, and personally

invested time and money in Eolas.

Doyle has had a financial interest in Eolas since at least August2l,1995.
On or about August 2I,1995, Eolas acquired rights to the patent application that

matured into the '906 patent. On information and belief, Doyle was personally involved in the prosecution

of

the '906, the reexaminations of the '906 patent, and the prosecution of the '985 patent at the
same time that he had a

financial interest in Eolas and a financial interest in any royalties on the

'906 and/or'985 patents paid to The Regents of the University of California.

t4

C. 30.

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, on information and

beliel with the specific intent to deceive the Patent Office. The circumstances of Doyle's
actions confirm an intent to deceive the Patent Office.

II. 31.

Dovle failed to disclose material information related to
ViolaWWW browser

the

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 ViolaWW'W browser. On information and belief Doyle did so with knowledge of the information he withheld and with the specific intent to deceive the Patent Office. The
circumstances of Doyle's actions confirm an intent to deceive the Patent Office.

32.

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 ViolaV/WW browser disclosed these limitations, yet he withheld this information from the Patent Offrce at the same time that he
argued to the Patent Office that these limitations were missing from the prior art.

l5

A. 33. 34.

Doyle knew about the ViolaW-WW browser before the application for his '906 patent was filed on October 17 r 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.

35.

On information and belief, Doyle knew before the application for the '906 patent

was filed that an individual in Northern California named Pei Wei had developed a browser called "ViolaWWW" before the critical date of October 17,1993.

36.

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."

37. 38.

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

V/V/V/ project page."
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 ViolaWW-W, I would like to solicit donations for guest accounts on the

major Unix platfoÍns. . . . 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
t6

select one (maybe two) offer(s) for each

different platform." David Martin's response to Pei V/ei included the following statements:

"I

am willing to discuss providing accounts on SGI IRD( 5.x, Solaris 2.x, AlphaOSF/l. Please let me know what you require in terms of disk space, compiler, utilities, etc..."

39. 40. 4I.

Thus by }/.ay 20,1994

-

several months before the application for the '906

patent was filed

-

Doyle knew about Pei Wei's Viola'WrWW browser.

On information and belief, Doyle learned even more about the ViolaWWW

browser before the application for the '906 patent was filed. On August 30,1994, at approximately 11:15 p.m. Califomia 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 V/indows -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 V/ide V/eb on the Internet.

42.

On August 3I,1994, at approximately 6:52 p.m. Califomia 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. ViolaWWV/ has had this capabilities for months and months now."

43. 44.

Pei Wei's response included a link to an FTP site where anyone "interested in

learning more about how violaV/V/W does this embedded objects thing can get a paper on it." The paper cited by Pei Wei was entitled "A Brief Overview of the VIOLA

Engine, and its Applications."

t7

45. 46.

The paper cited by Pei Wei was dated August 16,1994

-

over two months

before the application for the '906 patent was filed. The paper cited by Pei Wei included the following statements and graphics:

Embedding mini applications

Viola's language and toolkit allows ViolaV/WW to render documents with embedded viola objects. Although the viola language is not part of the V/orld 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
seryer.

Or, if your document needs to show datathat is continuously updated, you could build a small application such as this which display the CPU load of a machine. Note that only the graph field is continuously updated, but not the rest of the document.

Other possible applications include front-ends to the stock market quotes, new wire updates, tele-video style service, etc.

Here's another example of a mini interactive application that is embedded into a HTML document. It's a chess board in which the chess pieces are actually active and movable. And, illegal moves can be checked and denied straight off by the intelligence of the scripts in the application. Given more work, this chess board application can front-end a chess server, connected to it using the socket facility in viola.

t8

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).

19

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 ViolaWWV/ to support them. All the bindings are done via the viola language, provided that the necessary primitives are available in the interpreter, ofcourse.
Put it another way, because of the scripting capability, the ViolaWWV/ browser has become very flexible, and can take on many new features dynamically. C-code patches and re-

compilation 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.

20

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

Not only can mini applications be embedded inside of documents, they can even be plugged into the ViolaWWW's "toolbar".
The following picture shows a "bookmark tool" that acts as a mini table of contents for the page. In this case, the bookmark is linked to the document (by using the <LINK> tag of HTML 3.0), and the bookmark will appear and disappear with the document.

21

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. 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

48.

responded to Pei'Wei's statement at approximately 6:52 p.m. that
case of program objects embedded

"I don't think this is the first

in docs and transported over the V/V/W. ViolaWV/W has

had this capabilities for months and months

now." Doyle responded by asking Pei Wei, "How

many months and months? V/e demonstrated our technology in1993."

49.

On August 31,1994, at approximately 11:16 p.m. Califomia 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 violaW'WW to fetch viola
22

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.

50.

'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

supral 46.

51.

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.

52.

The Federal Circuit has held that "Wei's I|l4ay 7,1993 demonstration to two Sun
$

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C. 102(b)1." 399 F.3d 1325,1335 (Fed. Cir. 2005).

53. 54.

On August 31,1994, at approximately 11:13 p.m. California time, Doyle

responded again to the message that Pei V/ei had sent at approximately 6:52 p.m.

On information and beliet Doyle's response was sent after Doyle had read Pei

Wei's paper about the ViolaV/W'W browser dated August 16,1994 (described above, suprall
43-46).

55.

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 . . . ."

23

56.

On August 31, 1994, at approximately I 1:36 p.m. California time, Doyle
1

responded to the message that Pei Wei had sent at approximately

1:16 p.m. Doyle's response

included the following statements: "Out of curiosity, did you publicly demonstrate this or

publish any results before 1994?"

57. 58.

On September 1, 1994,atapproximately 12:08 a.m. Californiatime, Pei Wei
1

responded to the message that Doyle had sent at approximately

I :13 p.m.

Pei Wei's message at approximately l2:08 a.m. was also responsive to the
1

message that Doyle had sent at approximately

1:36 p.m.

59.

Pei Wei's message to Doyle at 12:08a.m. includedthe following statements:

Well. Viola's model was *demonstrated* in 1993, *released* freely ín 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 violaV/WW has opened for it.

60.
V/ei on August

On information and belief, Doyle deleted from his computer his emails with Pei

3l

and September 1,1994, and the copy of the Viola paper dated August 16,

1994,thathe had downloaded and read. Doyle kept on his computer other emails from that
timeframe, however.

61. 62.

On information and belief, Doyle was living in Northern California on August 3 1,

1994, when he exchanged messages with Pei Wei about the ViolaW'W'W browser.

Pei V/ei was living in Northem California on August 31, 1994, when he

exchanged messages with Doyle about the ViolaV/WW browser.

24

63. 64. 65. 66. 67. 68.

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

Pei Wei's messages on August 31 and September I,1994, about the ViolaWWW browser. There \¡/as no limitation, restriction or obligation of secrecy on the readers of Pei

Wei's paper about the ViolaWWW browser dated August 16,1994.
On October 17, 1994, the application for the '906 patent was filed. Doyle and

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

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

that identified several pieces of prior art, but not the Viola'WWW browser. On November 22, I994,Doyle signed a declaration under penalty of perjury that

includedthefollowingstatements:

"IbelieveIam... anoriginal, firstandjointinventor... of
of

the subject matter which is claimed and for which a patent is sought . . . the specification

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 Title37, Code of Federal Regulations, Section 1.56."

69.

No disclosure about the ViolaWWW browser was ever provided to the Patent

Offrce during prosecution of application number 081324,443, which matured into the '906 patent.

B. 70.

Doyle was reminded about the ViolaW'WW 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 \¡ias provided to the Patent Office.

25

7L

On August 2l,1995, at approximately 1l:42 a.m. California time, Doyle posted a

"Press Release" to the publicly-accessible WWV/-talk e-mail distribution

list. Doyle's post

included the following statements: "Eolas Technologies Inc. announced today that it has completed a licensing agreement with the University of California for the exclusive rights to a pending patent covering the use of embedded program objects, or 'applets,' within'World Wide Web documents."

72.

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 ViolaV/WV/ and was *released* to the public, and in

full source code form, even back in 1993... Actual conceptualization and existence occurred
before'93."

73.

On August 21,1995, at approximately l:14 p.m. California time, Doyle

responded to the message Pei V/ei 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."

74.

OnAugust 21,1995, at approximately 4:09 p.m. Californiatime, Pei Wei

responded to the message that Doyle had sent at approximately l: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 stuffwas demo'ed to whomever wanted to see it and had

26

visited our office at O'Reilly & Associates (where I worked at the time). This is what I wrote on the VRML list:

> Definitely by May 8, 1993 we had demonstrated that plotting demo > (the very one shown in the viola paper) to visitors from a certain ) computer manufacturer... This demo was memorable because someone
and I

> at ORA had lost sleep the night before the meeting, in order to cook up > that particular plotting demo :) We had to show something cool.
That date (May 93), at least, predates your demo if I'm not mistaken. Then around August 93, it was shown to a bunch attendees at the first V/eb Conference in Cambridge. . . .

of

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 ViolaV/WW as it existed around late'92 early '93.

75.

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

supral 46.

76.

When Pei V/ei 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.
200s).

77.

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 28-30,1993.

27

78. 79. 80.

On information and belief, people attending the Wizards workshop included Tim

Berners-Lee, Marc Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei \Mei. On information and belief Tim Bemers-Lee and Dale Dougherty were the

organizers of the Wizards workshop. On information and belief, Dale Dougherty worked at O'ReiIly &, Associates in

Northem California.

81.

On information and belief, in1992, Dale Dougherty leamed about Viola and

recruited Pei Wei to join O'Reilly & Associates. Pei Wei's job at O'Reilly & Associates was to continue developing the ViolaWWV/ browser.

82.

On information and belief, Scott Silvey worked with Pei Wei at O'Reilly &

Associates in Northern California.

83.

On information an belief, when Pei V/ei wrote "This demo was memorable

because someone and

I at ORA had lost sleep the night before the meeting, in order to cook up

that particular plotting demo," the other person he was referring to was Scott Silvey.

84. 85.

On information and belief, Tim Berners-Lee is the person generally attributed to

be the inventor of the World Wide Web.

Marc Andreesen and Eric Bina were the authors of Mosaic, a popular browser for

the World Wide Web created at the National Center for Supercomputing Applications (NCSA) at the University of Illinois at Urbana-Champaign.

86.

Marc Andreesen and Eric Bina went on to found Netscape, the manufacturer of

another popular browser for the World Wide Web.

28

87.

On information and belief, Pei Wei and Scott Silvey demonstrated the

ViolaWWW browser and its ability to automatically invoke interactive objects embedded within
a webpage using the

"VOBJF" tag to at least Marc Andreesen and Tim Berners-Lee at the

Wizards workshop in Cambridge, Massachusetts in July 1993

-

over one year before the

application for the '906 patent was filed.

88. 89.

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

V/izards workshop. 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).

90.

Despite Pei Wei's communications to Doyle repeatedly providing evidence that

the ViolaWV/W browser was material prior art under 35 U.S.C. $ 102(b), Doyle never disclosed the ViolaV/WW browser to the Patent Office during prosecution of application number
081324,443, which matured into the '906 patent.

91.

Instead, on information and belief, 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.

C. 92.

In

1998, during prosecution of the '906 patent, Doyle collected additional information about the Viola\ilW'W browser

In 1998, during prosecution of the '906 patent, Doyle obtained additional

information about the ViolaWW'W browser, but he still did not disclose any information about
the ViolaWWW browser to the Patent Office, as explained in more detail below.

93.
stuff."

During prosecution of the '906 patent, Doyle maintained a folder called "Viola

29

94.

The "Viola stuff'folder included a printout of Pei Wei's message to Doyle on

August 3I, 7994, at approximately 6:52 p.m. Califomia 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. ViolaWWV/
46.

has had this capabilities for months and months

now."

See

supraffi42-

95.

The "Viola stuff' folder included a printout of Doyle's message to Pei

'Wei

on

August 31, 1994, at approximately l1:36 p.m. Califomia time, in which Doyle asked Pei

'Wei,
See

"Out of curiosity, did you publicly demonstrate this or publish any results before 1994?"
supra

I

56.

96. The "Viola stuff' folder included a printout from the URL <http:/hwvw.w3.org/Histo . This webpage has a heading for the
"'W\ /'WwizardsWorkshop" "Cambridge, Mass, July 1993" and includes links to
"Announcement," "Agenda," and "Photos of attendees."

97.
89.

"V/Ww'WizardsV/orkshop" refers to the World-Wide Web Wizards Workshop

held in Cambridge, Massachusetts on July 28-30, 1993,that Pei Wei attended. See suprøn\77-

98.
:

The "Announcement" link links to a webpage at
.

<http /hwvw. w3 org/Hi sto

that states that "Interactive objects" would be discussed at the Wizards workshop.

99.

The "Agenda" link links to a webpage at that

<http:/hwvw.w3.org/Hist
states that "Interactive objects" was on the agenda

for discussion at the Wizards workshop.

30

100. 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 931

0l .

over one year before the application for the '906 patent was filed. See supral74.
The "Viola stuff ' folder included a printout of a webpage with a link to the source

code for viola-2.L2, archived on September 2,1993

-

over one year before the application for

the '906 patent was filed.

I02.

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

file for viola-2.1 .2. The date atthe 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 V/V/W specific bugs to www-bugs@.info.cern.ch, general comments to [e-mail], and anything to

[e-mail].
Pei Y.'Wei [e-mail]

103. The "Viola stuffl' folder included a printout of a message that Pei Wei had sent to
the publicly-accessible V/V/V/-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."

t04.

The "Viola stufÎ'folder included a printout of a message that Pei Wei had sent to

the publicly-accessible V/WW-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...
31

ViolaWWW, Version 3.0 Beta

Feb231994

ViolaV/WW 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/wwdviola. 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:llxcf.berkeley.edu/hlprojects/viola/>. The printout included the following statements:
ViolaWW-W, Version 3.1 Beta Mar 23 1994

ViolaWWV/ is an extensible World Wide V/eb hypermedia browser for XWindows.

Notable features in the new ViolaWWV/

32

* 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 inftp:lloru.com/pub/wwdviola. Sparc binary is supplied.

Pei Y. Wei ([e-mail]) O'Reilly & Associates, Inc.

106.

The "Viola stuff' folder included a printout from the URL One of the files listed in the printout is

<http://xcf.berkeley.edu/htþrojects/viola/docs/viola/>.
named "plotDemo.html".

I07.

The "Viola stuff' folder included a printout from the URL

<hup://xcf.berkeley.edu/hlprojects/viola/docs/objsi>. One of the files listed in the printout is
named "plot.v".

108.

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

plotDemo.html:

JJ

109.

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

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

I46.

110.

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.

111.

Pei Wei had told Doyle on August 31,1994 how the plotting demo worked:
a front-end that fires up a back-end plotting

"[A]s for the plotting demo, it actually is really just

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-

34

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\59. supra\ 49, and again on August

II2.

Pei Wei had told Doyle on August

3I,

1994, see

21,1995, see supra \74,thatthe 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.

113.

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.
200s).

Il4.

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. g 102(b); Doyle knew how the plotting demo worked; and Doyle had access to the code for that plotting demo.

115.

During prosecution of the '906 patent, Doyle printed webpages containing
'Wei
gave at Stanford University in Northern California in

information about atalkthat Pei
September 1994.

116. The webpages

that Doyle printed included the following statements and graphic: Issues

WW\il Browsers: Extensibility
Pei'Wei, O'Reillv & Associates

Stanford Computer Forum \ry\ilW Workshop - September 20-

2l,lgg4

Extensibility in WWW Browsers

35

The WorldWideWeb is a powerful medium which has many applications beyond just publishing static documents. It is certainly an interface to the space of "documents." But already, with established features such as input-forms and server-side scripting, we see that the web is also increasingly becoming an interface to the space of what is traditionally called "applications."

In this talk I'll describe a few possible approaches for a browser to gain more flexibility, and to briefly describe one particular approach as implemented by a system known as ViolaWWW.

Possible Ways to Extend Browsers We already do "extend" browsers with things like "external viewers." But there's not a very good integration with the browser. Ideally those external viewers should be rendering inplace inside the document, and be working together with the browser, be tightly integrated with the browser and other parts...

Work at O'Reilly & Associates: VIOLA-\ilWW

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.

36

ll7.
I

There was no limitation, restriction or obligation olseureuy un anyurlu attending

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

18.

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

I46.

119.
2I,1995,

Pei V/ei had told Doyle on August 31,1994, see supra fl 49, and again on August

see supra

lT4,fhatthe plotting demo described in the Viola paper dated August
a certain computef

16,

1994, was the

oÎery one" demonstrated "to visitors from

manufactufer" by

May 8, 1993.

37

I20.

On information and belief when Pei Wei referred to a demonstration "by May 8,

1993," he was referring to the demonstration of the plotting demo to two Sun Microsystems employees that the Federal Circuit has held "was a public use under [35 U.S.C. $ 102(b)]." 399

F.3d 1325, 1335 (Fed. Cir. 2005).

l2l.

Thus, during prosecution of the '906 patent, Doyle was repeatedly confronted

with evidence that the ViolaV/WW 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 081324,443, which matured into the '906 patent.

D.

The ViolaWWW browser was material to the patentability of the'906 patent to the patentability of the claimed

122. The ViolaWV/W browser was material
inventions in the '906 patent.

1,23.

There is a remarkable similarity between the ViolaV/WW browser and the

preferred embodiment of the '906 patent:

38

Dsmonstrol¡on: lnterocllve visuo¡izolion

ol

o 7-wâk old 3D

This Þroiecl will rerve lhe dwl purpos of......

ViolaWW'W

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

Both the ViolaV/WV/ 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, andZ

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, ViolaV/WW, like the '906 patent, teaches a browser capable of displaying embedded

interactive objects.

124. 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
39

possible prior public uses, sales, offers to sell, derived knowledge, prior invention by ønother, inventorship conflicts, and the like, [emphasis in bold added]

125.
language:

The Manual of Patent Examining Procedure in force today contains similar

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,(passíble prior publíc uses, sales, offers to sell, derived
knowledge
,

prior invention by ønother, 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 apatent." Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer,

Inc.,326F.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]

126. The Federal Circuit has confirmed that the ViolaWWW browser was material to
the patentability of the claimed inventions in the '906 patent.

l2l.

The Federal Circuit held that a reasonable jury could find at least claims

I

and 6

of the '906 patent anticipated by the ViolaWV/W browser under 35 U.S.C. $ 102(a), (b), and/or

(e).

See 399 F.3d 1325,

1329,1332-35 (Fed. Cir. 2005).

I28.

The Federal Circuit held that "Wei's I|lday 7,1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C. $ 102(b)1." 399 F.3d 1325,1335 (Fed. Cir.2005).

40

I29.

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 ViolaWV/W browser. See 399 F.3d 1325,1335 (Fed.

Cir.2005).

130. The Federal Circuit held that a district court could find that Doyle had committed
inequitable conduct by failing to disclose the ViolaV/WW browser to the Patent Office. See 399 F.3d 1325,1336 (Fed. Cir. 2005).

131.

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

to the patentability of the claimed inventions in the '906 patent.

I32.

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 supral46.

133.

Pei V/ei had told Doyle on August 3I,1994, about the Viola paper dated August

16, 1994, see suprann

ß46,

and Doyle had downloaded and read that paper the same day, see

suprafln 47,53-55, yet Doyle never disclosed the Viola paper to the Patent Office during the
original examination of the '906 patent.

134. 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 ViolaV/WW 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.

135.

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
nn 4e-s2.

-

over one year before the application for the '906 patent was filed. See supra

4t

136. None of the claimed inventions in the '906 patent was conceived before August
t993.

137.

Thus, the ViolaWWW browser software that was described in the Viola paper

dated August 16,1994, and demonstrated to Sun Microsystems on ili4ay 7,1993, also

corroborates anticipation of the claimed inventions in the '906 patent under 35 U.S.C. $ 102(g).

138.

Neither reexamination of the '906 patent considered whether the claimed
i|l4;ay

inventions were anticipated by "'Wei's

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).

139.

ln an ex parte reexarÍtination, "fr]ejections will not be based on matters other than

patents or printed publications, such as public use." ,See Manual of Patent Examining Procedure

(MPEP) $ 22s8(r).

140.

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 Off,rce during that examination the evidence he had in his
possession that the ViolaWV/W browser was in "public use" more than one year before the

application for the '906 patent was filed.

l4l.

On information and belief, the Patent Office would not have allowed the claims of

the '906 patent if Doyle had not engaged in inequitable conduct and instead had fulfilled his duty

of candor and good faith in dealing with the Patent Office.

E.
142.

Doyle intended to deceive the Patent OffTce during prosecution of the '906 patent

During prosecution of application number 081324,443, which matured into the

'906 patent, Doyle withheld extensive evidence about the ViolaWWW browser.
42

143.

For example, Doyle failed to disclose the following material information: the

message from Raggett about the

ViolaWWV/ browser and embedded objects, see supra

'lTT

36-

39;the communications with Pei Wei inl994 about the ViolaW'WW browser and the embedded
interactive plotting demo that was in public use in }L4ay 1993, see supra flfl a1-59; the Viola
paper describing the ViolaW'W'W browser and the embedded interactive plotting demo that was

in public use in lly'ray 1993, see supranna3a6; the communications with Pei Wei in 1995 about
the ViolaV/W'W browser and the embedded interactive plotting demo that was in public use in

May 1993 and againat the Wizards conference in July t993, see supra

Ill 7l-89;

the contents

of

the "Viola stuff' folder that Doyle maintained, which included information about the Wizards conference in July 1993 and links to the ViolaWWW browser software, including source code

for the embedded interactive plotting demo that was in public use in }l4ay 1993, see supra

111193-

lI4;

and Pei

Wei's talk at Stanford in September 1994 about the embedded interactive plotting

demo that was in public use in }./:ay 1993, see supra lTf 115-121.

I44.
145.

Doyle withheld information about the ViolaW'WW browser with the specific

intent to deceive the Patent Offrce.

Doyle had a financial interest in the patentability of the claimed inventions in the

'906 patent. See suprann2l-2g.

146.

The ViolaWWW browser threatened the patentability of the claimed inventions in

the '906 patent, and thus threatened Doyle's financial interests.

147.

On information and belief, Doyle \ilas personally involved in the prosecution of

application number 081324,443, which matured into the '906 patent.

43

148. For example,

Doyle signed a declaration on or about November 22,1994, stating

that he was an inventor and acknowledging his duty of candor and good faith in dealing with the
Patent Office. See

supra\68.

149.

On or about January 2, 1997, Doyle signed a declaration that was submitted to the

Patent Offrce in an effort to establish an earlier date of invention for the claims of the '906 patent

application.

150.

On or about February 24, 1997, Doyle participated in an examiner interview in an

effort to secure allowance of the claims of the '906 patent application.
1

51

.

On or about }day 27 , 1997 , Doyle signed a 29-page declaration (including an

appendix) that was submitted to the Patent Office in an effort to establish himself as an "expert"

in the subject matter of the claimed invention and to overcome various obviousness rejections to
the claims of the '906 patent application.

152.

On or about October 29,1997, Doyle signed another declaration that was

submitted to the Patent Offrce in an effort to establish an earlier date of invention for the claims

of the '906 patent application.

153. On or about November 6,1997,

Doyle participated in another examiner interview

in an effort to secure allowance