Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 798

***FILED IN ERROR. SEE DOCUMENT 808 FOR CORRECT PLEADING*** Adobe Systems Incorporated's Second Amended ANSWER to 517 Amended Complaint,,, COUNTERCLAIM against Eolas Technologies Incorporated by Adobe Systems Incorporated.(Healey, David) Modified on 8/1/2011 (mll, ). Modified on 8/3/2011 (mll, ).

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
EOLAS TECHNOLOGIES, INC.
Plaintiff,
Civil Action No. 6:09-CV-446 LED
v.
ADOBE SYSTEMS, INC., ET AL.,
Defendants.
DEFENDANT ADOBE SYSTEMS INCORPORATED’S SECOND AMENDED ANSWER
TO PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT
INFRINGEMENT
Pursuant to Rule 8 of the Federal Rules of Civil Procedure, Defendant Adobe Systems
Incorporated (“Adobe”), by and through its undersigned counsel, hereby responds to the First
Amended Complaint (“Complaint”) of Eolas Technologies, Inc. (“Eolas” or “Plaintiff”), on
personal knowledge as to its own activities and on information and belief as to the activities of
others, as follows.
Adobe denies each and every allegation contained in the Complaint that is not expressly
admitted below. Any factual allegation admitted below is admitted only as to the specific
admitted facts, not as to any purported conclusions, characterizations, implications, or
speculations that may arguably follow from the admitted facts. Adobe denies that Plaintiff is
entitled to the relief requested or any other.
PARTIES
1.

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

truth or falsity of the allegations of paragraph 1 and therefore denies the same.
DEFENDANT ADOBE SYSTEMS INCORPORATED’S SECOND AMENDED ANSWER TO
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2.

Adobe admits that it is a Delaware corporation with its principal place of business

at 345 Park Avenue, San Jose, California 95110-2704. Adobe admits that it is registered to do
business in the State of Texas and that it does business in this judicial district and elsewhere.
Adobe admits that it has appointed Corporation Service Company d/b/a CSC, 701 Brazos Street,
Suite 1050, Austin, Texas 78701, as its agent for service of process.
3.

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

truth or falsity of the allegations of paragraph 3 and therefore denies the same.
4.

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

truth or falsity of the allegations of paragraph 4 and therefore denies the same.
5.

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

truth or falsity of the allegations of paragraph 5 and therefore denies the same.
6.

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

truth or falsity of the allegations of paragraph 6 and therefore denies the same.
7.

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

truth or falsity of the allegations of paragraph 7 and therefore denies the same.
8.

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

truth or falsity of the allegations of paragraph 8 and therefore denies the same.
9.

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

truth or falsity of the allegations of paragraph 9 and therefore denies the same.
10.

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

truth or falsity of the allegations of paragraph 10 and therefore denies the same.
11.

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

truth or falsity of the allegations of paragraph 11 and therefore denies the same.
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12.

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

truth or falsity of the allegations of paragraph 12 and therefore denies the same.
13.

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

truth or falsity of the allegations of paragraph 13 and therefore denies the same.
14.

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

truth or falsity of the allegations of paragraph 14 and therefore denies the same.
15.

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

truth or falsity of the allegations of paragraph 15 and therefore denies the same.
16.

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

truth or falsity of the allegations of paragraph 16 and therefore denies the same.
17.

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

truth or falsity of the allegations of paragraph 17 and therefore denies the same.
18.

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

truth or falsity of the allegations of paragraph 18 and therefore denies the same.
19.

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

truth or falsity of the allegations of paragraph 19 and therefore denies the same.
20.

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

truth or falsity of the allegations of paragraph 20 and therefore denies the same.
21.

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

truth or falsity of the allegations of paragraph 21 and therefore denies the same.
22.

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

truth or falsity of the allegations of paragraph 22 and therefore denies the same.

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23.

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

truth or falsity of the allegations of paragraph 23 and therefore denies the same.
JURISDICTION AND VENUE
24.

Adobe incorporates by reference the foregoing responses, inclusive, as though set

forth in full herein.
25.

Adobe admits that this Complaint purports to state a claim of alleged patent

infringement and that this Court has subject matter jurisdiction over patent claims.
26.

Adobe admits that this Court has personal jurisdiction over Adobe for purposes of

this dispute. Adobe further admits that it is registered to do business in the State of Texas and
that it does business in this judicial district and elsewhere. Adobe denies the remaining
allegations of paragraph 26 with respect to Adobe. Adobe is without information or knowledge
sufficient to form a belief as to the truth or falsity of the allegations of paragraph 26 regarding
other defendants and therefore denies the same.
27.

Adobe admits that venue in this District is purportedly based on 28 U.S.C.

§§ 1391(b), (c) and 1400(b), but denies that this District is the most convenient venue for
adjudication of the claims raised by Eolas in this action.
PATENT INFRINGEMENT
28.

Adobe incorporates by reference the foregoing responses, inclusive, as though set

forth in full herein.
29.

Adobe admits that U.S. Patent 5,838,906 (“the ’906 patent”) is entitled

“Distributed hypermedia method for automatically invoking external application providing
interaction and display of embedded objects within a hypermedia document” and was issued by
the United States Patent and Trademark Office on November 17, 1998. Adobe admits that U.S.
DEFENDANT ADOBE SYSTEMS INCORPORATED’S SECOND AMENDED ANSWER TO
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Patent 7,599,985 (“the ’985 patent”) is entitled “Distributed hypermedia method and system for
automatically invoking external application providing interaction and display of embedded
objects within a hypermedia document” and was issued by the United States Patent and
Trademark Office on October 6, 2009. Adobe denies that either the ’906 or ’985 patent
(collectively “the Patents-in-Suit”) were duly and legally issued by the United States Patent and
Trademark Office. Adobe denies the remainder of the allegations in paragraph 29.
30.

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

truth or falsity of the allegations of paragraph 30 and therefore denies the same.
31.

Adobe admits that it maintains and controls servers located in and/or accessible

from the United States. Adobe admits that it owns and operates www.adobe.com and
tv.adobe.com. Adobe admits that Adobe Flash Player and Adobe Shockwave Player are Adobe
software products. Adobe otherwise denies the allegations of paragraph 31.
32.

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

truth or falsity of the allegations of paragraph 32.
33.

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

truth or falsity of the allegations of paragraph 33 and therefore denies the same.
34.

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

truth or falsity of the allegations of paragraph 34 and therefore denies the same.
35.

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

truth or falsity of the allegations of paragraph 35 and therefore denies the same.
36.

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

truth or falsity of the allegations of paragraph 36 and therefore denies the same.

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37.

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

truth or falsity of the allegations of paragraph 37 and therefore denies the same.
38.

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

truth or falsity of the allegations of paragraph 38 and therefore denies the same.
39.

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

truth or falsity of the allegations of paragraph 39 and therefore denies the same.
40.

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

truth or falsity of the allegations of paragraph 40 and therefore denies the same.
41.

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

truth or falsity of the allegations of paragraph 41 and therefore denies the same.
42.

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

truth or falsity of the allegations of paragraph 42 and therefore denies the same.
43.

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

truth or falsity of the allegations of paragraph 43 and therefore denies the same.
44.

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

truth or falsity of the allegations of paragraph 44 and therefore denies the same.
45.

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

truth or falsity of the allegations of paragraph 45 and therefore denies the same.
46.

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

truth or falsity of the allegations of paragraph 46 and therefore denies the same.
47.

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

truth or falsity of the allegations of paragraph 47 and therefore denies the same.

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48.

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

truth or falsity of the allegations of paragraph 48 and therefore denies the same.
49.

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

truth or falsity of the allegations of paragraph 49 and therefore denies the same.
50.

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

truth or falsity of the allegations of paragraph 50 and therefore denies the same.
51.

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

truth or falsity of the allegations of paragraph 51 and therefore denies the same.
52.

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

truth or falsity of the allegations of paragraph 52 and therefore denies the same.
53.

Adobe denies the allegations of paragraph 53 to the extent they pertain to Adobe.

Adobe otherwise is without information or knowledge sufficient to form a belief as to the truth or
falsity of the allegations of paragraph 53 as they pertain to the other defendants and therefore
denies the same
54.

Adobe denies the allegations of paragraph 54 to the extent they pertain to Adobe.

Adobe otherwise is without information or knowledge sufficient to form a belief as to the truth or
falsity of the allegations of paragraph 54 as they pertain to the other defendants and therefore
denies the same.
55.

Adobe denies the allegations of paragraph 55 to the extent they pertain to Adobe

and denies that Eolas is entitled to any of the requested relief from or with respect to Adobe.
56.

Adobe denies the allegations of paragraph 56 to the extent they pertain to Adobe

and denies that Eolas is entitled to any of the requested relief from or with respect to Adobe.

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ANSWER TO PRAYER FOR RELIEF BY EOLAS
57.

Adobe states that Eolas’ Prayer for Relief does not require a response.

58.

Adobe denies that Eolas is entitled to any relief whatsoever from Adobe, as

prayed for or otherwise.
59.

Adobe denies each and every allegation of the Complaint not already admitted or

denied and further denies that Eolas is entitled to any relief whatsoever from Adobe on the basis
of any of the purported claims for relief contained in the Complaint.
AFFIRMATIVE AND OTHER DEFENSES
60.

By way of further answer, and as Affirmative Defenses to the Complaint, Adobe

states as follows:
First Affirmative Defense (Failure to State a Claim)
61.

Eolas fails to state a claim upon which relief can be granted, at least because it has

not met the pleading standards or requirements of Ashcroft v. Iqbal, 129 S.Ct. 1973 (U.S. 2009)
and Bell Atlantic Corp., et al. v Twombly et al., 548 U.S. 903 (2006) as interpreted and applied
by this Court.
Second Affirmative Defense (Non-Infringement)
62.

Adobe and the use of Adobe’s products do not infringe and have never infringed

any claims of the ’906 or ’985 patents. Adobe has not and does not infringe, contribute to the
infringement of, or actively induce others to infringe any valid, enforceable claim of the Patentsin-Suit, either directly, indirectly, literally or under the doctrine of equivalents. By asserting this
affirmative defense, Adobe does not assume any burden of proof.

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Third Affirmative Defense (Invalidity)
63.

The claims of the ’906 and ’985 patents are invalid because they fail to satisfy one

or more of the conditions for patentability specified in Title 35 of the United States Code,
including, inter alia, §§ 101, 102, 103, 112, and 132, and the rules, regulations, and laws
pertaining thereto.
Fourth Affirmative Defense (Standing/Nonjoinder)
64.

Eolas lacks sufficient substantial rights in the Patents-in-Suit to assert and

maintain claims of patent infringement. By asserting this affirmative defense, Adobe does not
assume any burden of proof.
Fifth Affirmative Defense (Federal Government Use)
65.

Plaintiff’s remedies are limited by the provisions of 28 U.S.C. § 1498.
Sixth Affirmative Defense (Laches/Estoppel)

66.

Plaintiff is barred or limited by the doctrine of laches and/or equitable estoppel

from enforcing some or all of the asserted claims of the Patents-in-Suit against Adobe.
Seventh Affirmative Defense (Implied or Express License/Exhaustion)
67.

Eolas is barred by the doctrines of implied or express license and/or exhaustion

from enforcing the Patents-in-Suit against Adobe. Eolas and/or its predecessors-in-interest have
licensed the Patents-in-Suit to one or more of Adobe’s suppliers, customers, and/or users. Under
the doctrines of patent exhaustion, implied or express license, the use or sale of products
supplied by these licensees cannot give rise to liability for infringement of such licensed patents.
By asserting this affirmative defense, Adobe does not assume any burden of proof.
.

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Eighth Affirmative Defense (No Injunction)
68.

Eolas is not entitled to injunctive relief because any injury to it is not immediate

or irreparable, and Eolas has an adequate remedy at law for any claims it can prove.
Ninth Affirmative Defense (Failure To Mark)
69.

On information and belief, Eolas’ purported claims for relief concerning the

Patents-in-Suit are limited by failure to comply with the marking and notice requirements of 35
U.S.C. § 287(a). By asserting this affirmative defense, Adobe does not assume any burden of
proof.
Tenth Affirmative Defense (Limitation On Damages)
70.

Eolas’ recovery for alleged infringement of the Patents-in-Suit, if any, is limited

to any alleged infringement committed no more than six years prior to the filing of its complaint,
pursuant to 35 U.S.C. § 286. By asserting this affirmative defense, Adobe does not assume any
burden of proof.
Eleventh Affirmative Defense (Prosecution History Estoppel)
71.

Eolas is estopped, based on statements, representations, and admissions made

during prosecution of the patent application resulting in the Patents-in-Suit, from asserting any
interpretation of any valid, enforceable claims of the Patents-in-Suit that would be broad enough
to cover any of Adobe’s products or services alleged to infringe the Patents-in-Suit, either
literally or by application of the doctrine of equivalents. By asserting this affirmative defense
Adobe does not assume any burden of proof.
Twelfth Affirmative Defense (Costs)
72.

Eolas is barred by 35 U.S.C. § 288 from recovering any costs associated with this

action.
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Thirteenth Affirmative Defense (Waiver)
73.

Eolas’ claims for relief are barred by the doctrine of waiver.
Fourteenth Affirmative Defense (Intervening Rights)

74.

Eolas’ claims for relief are limited due to legal and/or equitable intervening rights

under 35 U.S.C. §§ 252 and 307(b).
Fifteenth Affirmative Defense (Inequitable Conduct/Unclean Hands)
75.

Each and every claim of the ’906 and ’985 Patents is unenforceable due to

inequitable conduct and/or Eolas’s unclean hands.
A. Overview
1. Doyle had a duty of candor and good faith in dealing with the Patent
Office
76.

Michael D. Doyle (“Doyle”) is one of the named inventors of the patents-in-suit,

U.S. Patent Nos. 5,838,906 and 7,599,985.
77.

Charles E. Krueger (“Krueger”) was the patent prosecutor for the patents-in-suit,

U.S. Patent Nos. 5,838,906 and 7,599,985.
78.

Doyle, as a named inventor, and Krueger, as the patent prosecutor, each 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.
79.

Doyle and Krueger’s duty of candor and good faith also existed during the

reexaminations of the ’906 patent.
80.

The duty of candor and good faith owed by Doyle and Krueger 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.

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2. Doyle had a financial incentive to deceive the Patent Office
81.

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.
82.

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

conceived of the inventions claimed in the ’906 and ’985 patents.
83.

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

California.
84.

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.
85.

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

(“Eolas”).
86.

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

87.

Doyle has had a financial interest in Eolas since at least August 21, 1995.

88.

On or about August 21, 1995, Eolas acquired rights to the patent application that

Eolas.

matured into the ’906 patent.
89.

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. Doyle and Krueger breached the duty of candor and good faith with an
intent to deceive the Patent Office

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90.

As explained in more detail below, Doyle and Krueger breached the duty of

candor and good faith in dealing with the Patent Office. Doyle and Krueger failed to disclose
material information and made affirmative misrepresentations of material facts. Doyle and
Krueger did so with knowledge of the information withheld, with knowledge of the falsity of the
misrepresentations, and with the specific intent to deceive the Patent Office. The circumstances
of Doyle and Krueger’s actions confirm an intent to deceive the Patent Office.
B. Doyle and Krueger failed to disclose material information related to the
ViolaWWW browser
91.

As explained in more detail below, Doyle and Krueger breached his duty of

candor and good faith in dealing with the Patent Office by failing to disclose material
information related to the ViolaWWW browser. Doyle and Krueger did so with knowledge of
the information withheld and with the specific intent to deceive the Patent Office. The
circumstances of Doyle and Krueger’s actions confirm an intent to deceive the Patent Office.
92.

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 and Krueger knew that the ViolaWWW browser
disclosed these limitations, yet he withheld this information from the Patent Office at the same
time that he argued to the Patent Office that these limitations were missing from the prior art.
1. Doyle knew about the ViolaWWW browser before the application for his
’906 patent was filed on October 17, 1994
93.

The application for the ’906 patent was filed on October 17, 1994.

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94.

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.
95.

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.
96.

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.”
97.

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

WWW project page.”
98.

Later on the same day, May 20, 1994, David Martin, who was one of Doyle’s

colleagues at the University of California in San Francisco and who was also named as an
inventor on the ’906 patent, responded to a posting from Pei Wei on a publicly-accessible e-mail
distribution list. Pei Wei’s post had included the following statements: “In order to do better
testings [sic] and support of ViolaWWW, I would like to solicit donations for guest accounts on
the major Unix platforms. . . . So, if your organization has some CPU crunchies to spare, good
network connectivity, don't have a firewall, want to help viola development, etc, please drop me
a note. Based mostly on network connectivity, I'll select one (maybe two) offer(s) for each
different platform.” David Martin’s response to Pei Wei included the following statements: “I am

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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...”
99.

Thus by May 20, 1994 — several months before the application for the ’906

patent was filed — Doyle knew about Pei Wei’s ViolaWWW browser.
100.

On information and belief, Doyle did not disclose this information to Krueger or

Charles J. Kulas (“Kulas”), the patent prosecutor that filed the ’906 patent application, prior to
the filing of the application that lead to the ’906 patent.
101.

Doyle learned even more about the ViolaWWW browser before the application

for the ’906 patent was filed.
102.

On August 30, 1994, at approximately 11:15 p.m. California time, Doyle posted a

“Press Release” to the publicly-accessible VRML e-mail distribution list that included the
following statements:
Researchers at the U. of California have created software for
embedding interactive program objects within hypermedia
documents. Previously, object linking and embedding (OLE) has
been employed on single machines or local area networks using
MS Windows -TM-. This UC software is the first instance where
program objects have been embedded in documents over an open
and distributed hypermedia environment such as the World Wide
Web on the Internet.
103.

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.”
104.

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.”

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105.

The paper cited by Pei Wei was entitled “A Brief Overview of the VIOLA

Engine, and its Applications.”
106.

The paper cited by Pei Wei was dated August 16, 1994 — over two months

before the application for the ’906 patent was filed.
107.

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

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.

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By the way, to make this possible, a multi-threaded/persistent
server was written to act as a message relay (and to handle HTTP
as well).

This next mini application front-ends a graphing process (on the
same machine as the viola process). An important thing to note is
that, like all the other document-embeddable mini applications
shown, no special modification to the viola engine is required for
ViolaWWW to support them. All the bindings are done via the
viola language, provided that the necessary primitives are available
in the interpreter [sic], of course.
Put it another way, because of the scripting capability, the
ViolaWWW browser has become very flexible, and can take on
many new features dynamically. C-code patches and recompilation
of the browser can frequently be avoided.
This attribute can be very important for several reasons. It keeps
the size of the core software small, yet can grow dynamically as
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less frequently used features are ocassionally [sic] used, or as new
accessories/components are added.
Such new accessories can be as simple as little applets that
accompany documents, or conceivably as complicated as a news or
mail reader. An analogy is how Emacs's programming
environment allows that text editor to become much more than just
a text editor.

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

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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.
108.

“Doyle downloaded and read the paper.” 399 F.3d 1325, 1330 (Fed. Cir. 2005).

109.

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.”
110.

On August 31, 1994, at approximately 11:16 p.m. California time, Pei Wei

responded to the message that Doyle had sent at approximately 9:06 p.m. Pei Wei’s response
included the following statements:
Definitely by May 8, 1993 we had demonstrated that plotting demo
(the very one shown in the viola paper) to visitors from a certain
computer manufacturer… This demo was memorable because
someone and I at ORA had lost sleep the night before the meeting,
in order to cook up that particular plotting demo :) We had to show
something cool.
That demo wasn't very hard to do because by that time the basic
capability was already in place for violaWWW to fetch viola
objects over HTTP (or whatever) and plug them into documents.
Of course, our wire-frame plotting demo isn't anywhere as
comprehensive as yours. But, the point was that there was a way to
embed programmable & interactive objects into HTML
documents.
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111.

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 ¶ 107.
112.

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.
113.

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).
114.

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.
115.

Doyle’s response was sent after Doyle had read Pei Wei’s paper about the

ViolaWWW browser dated August 16, 1994 (described above, supra ¶¶ 104–107).
116.

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 . . . .”
117.

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?”
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118.

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.
119.

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.
120.

Pei Wei’s message to Doyle at 12:08 a.m. included the following statements:
Well. Viola’s model was *demonstrated* in 1993, *released*
freely in 1994. . . . And, as for the plotting demo, it actually is
really just a front-end that fires up a back-end plotting program
(and the point is that that back-end could very well be running on a
remote super computer instead of the localhost). For that demo,
there is a simple protocol such that the front-end app could pass an
X window ID to the back-end, and the back-end draws the graphics
directly onto the window violaWWW has opened for it.

121.

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.
122.

Doyle was living in Northern California on August 31, 1994, when he exchanged

messages with Pei Wei about the ViolaWWW browser.
123.

Pei Wei was living in Northern California on August 31, 1994, when he

exchanged messages with Doyle about the ViolaWWW browser.
124.

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.
125.

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.
126.

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

Martin were among those named as inventors.

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127.

The application for the ’906 patent discloses the Mosaic browser and the Cello

browser, but not the ViolaWWW browser.
128.

The application for the ’906 patent included an information disclosure statement

that identified several pieces of prior art, but not the ViolaWWW browser.
129.

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.”
130.

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

Office during prosecution of application number 08/324,443, which matured into the ’906 patent.
2. Doyle was reminded about the ViolaWWW browser in 1995 during
prosecution of the ’906 patent
131.

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.
132.

On August 21, 1995, at approximately 11:42 a.m. California time, Doyle posted a

“Press Release” to the publicly-accessible WWW-talk e-mail distribution list. Doyle’s post
included the following statements: “Eolas Technologies Inc. announced today that it has
completed a licensing agreement with the University of California for the exclusive rights to a
pending patent covering the use of embedded program objects, or ‘applets,’ within World Wide
Web documents.”

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133.

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.”
134.

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.”
135.

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

responded to the message that Doyle had sent at approximately 1:14 p.m. Pei Wei’s response
included the following statements:
Please carefully
demonstrated in
applets stuff was
visited our office
time).

re-read my letter to you... I said Viola was
smaller settings, but before your demo. The
demo’ed to whomever wanted to see it and had
at O’Reilly & Associates (where I worked at the

This is what I wrote on the VRML list:
....
> Definitely by May 8, 1993 we had demonstrated that plotting
demo
> (the very one shown in the viola paper) to visitors from a certain
> computer manufacturer… This demo was memorable because
someone and I
> at ORA had lost sleep the night before the meeting, in order to
cook up
> that particular plotting demo :) We had to show something cool.

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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.
136.

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 ¶ 107.
137.

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).
138.

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.
139.

People attending the Wizards workshop included Tim Berners-Lee, Marc

Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei Wei.
140.

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

workshop.
141.

Dale Dougherty worked at O’Reilly & Associates in Northern California.

142.

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.

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143.

Scott Silvey worked with Pei Wei at O’Reilly & Associates in Northern

California.
144.

When Pei Wei wrote “This demo was memorable because someone and I at ORA

had lost sleep the night before the meeting, in order to cook up that particular plotting demo,” the
other person he was referring to was Scott Silvey.
145.

Tim Berners-Lee is the person generally considered to be the inventor of the

World Wide Web.
146.

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.
147.

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

another popular browser for the World Wide Web.
148.

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.
149.

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

Wizards workshop.
150.

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).
151.

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
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the ViolaWWW browser to the Patent Office during prosecution of application number
08/324,443, which matured into the ’906 patent.
152.

Instead, Doyle deleted from his computer his emails with Pei Wei on August 21,

1995. Doyle kept on his computer other emails from that timeframe, however.
3. In 1998, during prosecution of the ’906 patent, Doyle collected additional
information about the ViolaWWW browser
153.

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.
154.

During prosecution of the ’906 patent, Doyle maintained a folder called “Viola

155.

The “Viola stuff” folder included a printout of Pei Wei’s message to Doyle on

stuff.”

August 31, 1994, at approximately 6:52 p.m. California time, in which Pei Wei told Doyle, “I
don’t think this is the first case of program objects embedded in docs and transported over the
WWW. ViolaWWW has had this capabilities for months and months now.” See supra ¶¶ 103–
107.
156.

The “Viola stuff” folder included a printout of Doyle’s message to Pei Wei on

August 31, 1994, at approximately 11:36 p.m. California time, in which Doyle asked Pei Wei,
“Out of curiosity, did you publicly demonstrate this or publish any results before 1994?” See
supra ¶ 117.
157.

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.”
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158.

“WWWWizardsWorkshop” refers to the World-Wide Web Wizards Workshop

held in Cambridge, Massachusetts on July 28–30, 1993, that Pei Wei attended. See supra
¶¶ 138–150.
159.

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.
160.

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.
161.

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
¶ 135.
162.

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.
163.

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
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[e-mail].
Pei Y. Wei
[e-mail]
164.

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.”
165.

The “Viola stuff” folder included a printout of a message that Pei Wei had sent to

the publicly-accessible WWW-talk e-mail distribution list on February 25, 1994, that included
the following statements:
The new ViolaWWW is now available for ftp’ing. It’s beta and
feedback is very welcomed. The README file follows…
==============================================
ViolaWWW, Version 3.0 Beta
Feb 23 1994
======================
ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.
....
Notable features in the new ViolaWWW
------------------------------------------------....
* Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini viola applications (ie: a
chess board), or can cause mini apps to be placed in the toolbar.
....
Availability
--------------Source and binary can be found in ftp://ora.com/pub/www/viola.
Sparc binary is supplied.
....
Pei Y. Wei ([e-mail])
O’Reilly & Associates, Inc.
166.

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.
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....
Notable features in the new ViolaWWW
------------------------------------------------....
* Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini viola applications (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.
167.

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”.
168.

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”.
169.

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

plotDemo.html:

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170.

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

in the Viola paper dated August 16, 1994. See supra ¶ 107.
171.

The file plotDemo.html specifies the location of the file plot.v, which in turn

specifies the location of a separate executable application named vplot.
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172.

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

for the plotting demo, it actually is really just a front-end that fires up a back-end plotting
program (and the point is that that back-end could very well be running on a remote super
computer instead of the localhost). For that demo, there is a simple protocol such that the frontend app could pass an X window ID to the back-end, and the back-end draws the graphics
directly onto the window violaWWW has opened for it.” See supra ¶ 120.
173.

Pei Wei had told Doyle on August 31, 1994, see supra ¶ 110, and again on

August 21, 1995, see supra ¶ 135, 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.
174.

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).
175.

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.
176.

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.
177.

The webpages that Doyle printed included the following statements and graphic:
WWW Browsers: Extensibility Issues

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Pei Wei, O’Reilly & Associates
Stanford Computer Forum WWW Workshop - September 2021, 1994
....
Extensibility in WWW Browsers
The WorldWideWeb is a powerful medium which has many
applications beyond just publishing static documents. It is
certainly an interface to the space of “documents.” But already,
with established features such as input-forms and server-side
scripting, we see that the web is also increasingly becoming an
interface to the space of what is traditionally called “applications.”
....
In this talk I’ll describe a few possible approaches for a browser to
gain more flexibility, and to briefly describe one particular
approach as implemented by a system known as ViolaWWW.
....
Possible Ways to Extend Browsers
We already do “extend” browsers with things like “external
viewers.” But there’s not a very good integration with the
browser. Ideally those external viewers should be rendering inplace inside the document, and be working together with the
browser, be tightly integrated with the browser and other parts…
....
Work at O’Reilly & Associates: VIOLA-WWW
....
This is the Viola system that is being developed at O’Reilly and
Associates. This system has the following interesting
characteristics:
....
Three, program objects can be embedded into documents and the
toolbar. . . .
....
The next example is a front-end application to a backend. And the
back-end is what actually does the computation and the drawing.
....
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178.

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

the talk that Pei Wei gave at Stanford University in September 1994.
179.

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 ¶ 107.
180.

Pei Wei had told Doyle on August 31, 1994, see supra ¶ 110, and again on

August 21, 1995, see supra ¶ 135, 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.
181.

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).
182.

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.
183.

The ViolaWWW browser, including the August 1994 Viola paper, was disclosed

to Krueger in August of 1998, after the Notice of Allowance for the ’906 patent issued but before
the ’906 patent issued, when he received a fax containing a number of references regarding the
ViolaWWW browser.
184.

The fax sent to Krueger in August of 1998 was to allow him to analyze whether

the ViolaWWW browser, including the August 1994 Viola paper, should be submitted to the
Patent Office.
185.

Kruger was aware of Pei Wei's May 1993 demonstration of the ViolaWWW

browser to Sun Microsystems employees without a confidentiality agreement.
186.

Krueger considered Pei Wei's statements regarding the May 1993 demonstration

of the ViolaWWW browser to Sun Microsystems employees when he analyzed whether to
disclose the ViolaWWW browser to the Patent Office.

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187.

Krueger had no reason to disbelieve Pei Wei's statements regarding the May 1993

demonstration of the ViolaWWW browser to Sun Microsystems employees.
188.

Krueger made the determination, prior to the issuance of the ’906 patent, to not

disclose to the PTO the information he received regarding the ViolaWWW browser.
4. The ViolaWWW browser was material to the patentability of the ’906
patent
189.

The ViolaWWW browser was material to the patentability of the claimed

inventions in the ’906 patent.
190.

There is a remarkable similarity between the ViolaWWW browser and the

preferred embodiment of the ’906 patent:

191.

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
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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.
192.

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,
prior invention by another, inventorship conflicts, and the like.
[emphasis in bold added]
193.

The Manual of Patent Examining Procedure in force today contains similar

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]
194.

The Federal Circuit has confirmed that the ViolaWWW browser was material to

the patentability of the claimed inventions in the ’906 patent.
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195.

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, 1332–35 (Fed. Cir. 2005).
196.

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).
197.

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).
198.

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).
199.

Krueger was aware that the Federal Circuit confirmed that the ViolaWWW

browser was material to the patentability of the claimed invention in the ’906 patent.
200.

Even after Krueger was aware that the Federal Circuit confirmed that the

ViolaWWW browser was material to the patentability of the claimed invention in the ’906 patent
he did not disclose any additional information to help the Patent Office consider ViolaWWW
browser.
201.

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

to the patentability of the claimed inventions in the ’906 patent.
202.

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 ¶ 107.
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203.

Pei Wei had told Doyle on August 31, 1994, about the Viola paper dated August

16, 1994, see supra ¶¶ 104–107, and Doyle had downloaded and read that paper the same day,
see supra ¶¶ 108, 114–116, yet Doyle never disclosed the Viola paper to the Patent Office during
the original examination of the ’906 patent.
204.

Even if Doyle had conceived of the purported inventions claimed in the ’906

patent before August 16, 1994, that would not have rendered the Viola paper immaterial, because
the Viola paper describes features of the ViolaWWW browser that existed before the invention
date for the ’906 patent and/or over one year before the application for the ’906 patent was filed.
205.

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
¶¶ 110–113.
206.

None of the claimed inventions in the ’906 patent was conceived before August

207.

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

1993.

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).
208.

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).

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209.

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).
210.

On information and belief, Krueger knew that the Patent Office could not

consider public use art during an ex parte reexamination.
211.

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
and Krueger never disclosed to the Patent Office during that examination the evidence they had
in their possession that the ViolaWWW browser was in “public use” more than one year before
the application for the ’906 patent was filed.
212.

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

the ’906 patent if Doyle and Krueger had not engaged in inequitable conduct and instead had
fulfilled his duty of candor and good faith in dealing with the Patent Office.
5. Doyle and Krueger intended to deceive the Patent Office during
prosecution of the ’906 patent
213.

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

’906 patent, Doyle and Krueger withheld extensive evidence about the ViolaWWW browser.
214.

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

message from Raggett about the ViolaWWW browser and embedded objects, see supra ¶¶ 96–
98; the communications with Pei Wei in 1994 about the ViolaWWW browser and the embedded
interactive plotting demo that was in public use in May 1993, see supra ¶¶ 102–120; the Viola
paper describing the ViolaWWW browser and the embedded interactive plotting demo that was
in public use in May 1993, see supra ¶¶ 104–107; the communications with Pei Wei in 1995
about the ViolaWWW browser and the embedded interactive plotting demo that was in public
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use in May 1993 and again at the Wizards conference in July 1993, see supra ¶¶ 132–150; the
contents of the “Viola stuff” folder that Doyle maintained, which included information about the
Wizards conference in July 1993 and links to the ViolaWWW browser software, including
source code for the embedded interactive plotting demo that was in public use in May 1993, see
supra ¶¶ 154–175; and Pei Wei’s talk at Stanford in September 1994 about the embedded
interactive plotting demo that was in public use in May 1993, see supra ¶¶ 176–182.
215.

Krueger failed to disclose a number of material references regarding the

ViolaWWW browser including at least the August 1994 Viola paper, Doyle’s communications
with Pei Wei in 1994 about the ViolaWWW browser and the embedded interactive plotting
demo that was in public use in May 1993; the Viola paper describing the ViolaWWW browser
and the embedded interactive plotting demo that was in public use in May 1993; and the contents
of the “Viola stuff” folder that Doyle maintained and was faxed to Krueger in August of 1998,
which included information about the Wizards conference in July 1993 and links to the
ViolaWWW browser software, including source code for the embedded interactive plotting
demo that was in public use in May 1993.
216.

Doyle and Krueger withheld information about the ViolaWWW browser with the

specific intent to deceive the Patent Office.
217.

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

’906 patent. See supra ¶¶ 81–89.
218.

The ViolaWWW browser threatened the patentability of the claimed inventions in

the ’906 patent, and thus threatened Doyle’s financial interests.
219.

Doyle was personally involved in the prosecution of application number

08/324,443, which matured into the ’906 patent.
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220.

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 ¶ 129.
221.

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

Patent Office in an effort to establish an earlier date of invention for the claims of the ’906 patent
application.
222.

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

interview in an effort to secure allowance of the claims of the ’906 patent application.
223.

On or about May 27, 1997, Doyle signed a 28-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.
224.

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

submitted to the Patent Office in an effort to establish an earlier date of invention for the claims
of the ’906 patent application.
225.

On or about November 6, 1997, Doyle and Krueger participated in another

examiner interview in an effort to secure allowance of the claims of the ’906 patent application.
226.

Krueger lacked a technical degree in computer science or electrical engineering,

and thus he relied on Doyle to understand and describe the subject matter of the claimed
invention and the prior art.
227.

Doyle personally reviewed and approved papers submitted to the Patent Office

during prosecution of the ’906 patent.

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228.

Despite Doyle and Krueger’s extensive personal involvement in the prosecution

of application number 08/324,443, which matured into the ’906 patent, Doyle and Krueger never
disclosed the ViolaWWW browser to the Patent Office during that prosecution.
229.

The circumstances of Doyle’s actions demonstrate an intent to deceive the Patent

230.

For example, during prosecution of the ’906 patent, Doyle made arguments for

Office.

patentability that could not have been made if he had disclosed the ViolaWWW browser to the
Patent Office.
231.

On or about May 6, 1996, the Patent Office rejected several claims as being

anticipated by the University of Southern California’s “Mercury Project.”
232.

On or about August 6, 1996, a response to this rejection was submitted to the

Patent Office.
233.

Doyle personally reviewed and approved the response submitted to the Patent

Office on or about August 6, 1996.
234.

The response submitted on or about August 6, 1996, included the following

statements:
The claimed combination is fundamentally different from the
Mercury Project. In the claimed combination, the external object
and executable object are embedded by reference in the HTML
document and the object is displayed and processed within the
same window where a portion of the original document is
displayed. In the Mercury Project information is passed back to the
server and a new document is generated and displayed. There is no
display and processing the external object within the window in
which a portion of the original document is displayed.
235.

If Doyle or Krueger had disclosed the ViolaWWW prior art to the Patent Office,

it would not have been possible to distinguish the claims of the ’906 patent over the prior art on

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the basis that the prior art failed to disclose “display[ing] and processing the external object
within the window in which a portion of the original document is displayed.”
236.

On or about March 26, 1997, the Patent Office rejected several claims as being

obvious in light of “Khoyi et al. US Patent 5,206,951” in combination with other prior art.
237.

On or about June 2, 1997, a response to this rejection was submitted to the Patent

238.

Doyle and Krueger personally reviewed and approved the response submitted to

Office.

the Patent Office on or about June 2, 1997.
239.

The response submitted on or about June 2, 1997, included the following

statements:
[T]here is no suggestion in Khoyi of modifying Mosaic so that an
external application . . . is invoked to display and interactively
process the object within the document window while the
document is displayed by Mosaic in the same window.
240.

If Doyle or Krueger had disclosed the ViolaWWW prior art to the Patent Office,

it would not have been possible to distinguish the claims of the ’906 patent over the prior art on
the basis that the prior art failed to disclose “an external application [that] is invoked to display
and interactively process the object within the document window while the document is
displayed by [the browser] in the same window.”
241.

On or about August 25, 1997, the Patent Office rejected several claims as being

obvious in light of “Koppolu et al. US Patent 5,581,686” in combination with other prior art.
242.

On or about December 23, 1997, a response to this rejection was submitted to the

Patent Office.
243.

Doyle and Krueger personally reviewed and approved the response submitted to

the Patent Office on or about December 23, 1997.
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244.

The response submitted on or about December 23, 1997, included the following

statements:
[T]here is no disclosure or suggestion in Mosaic or Koppolu of
automatically invoking an external application when an embed text
format is parsed. Each of those references require user input,
specifically clicking with a mouse pointer, to activate external
applications to allow display and interaction with an external
object.
245.

If Doyle or Krueger had disclosed the ViolaWWW prior art to the Patent Office,

it would not have been possible to distinguish the claims of the ’906 patent on the basis that the
prior art failed to disclose “automatically invoking an external application when an embed text
format is parsed.”
246.

Doyle and Krueger’s repeated use of arguments that could not have been made if

Doyle or Krueger had disclosed the ViolaWWW prior art demonstrates an intent to deceive the
Patent Office.
247.

Doyle’s intent to deceive the Patent Office is also demonstrated by comparing

what he told an audience of web developers on or about March 27, 1995, to what he told the
Patent Office on or about May 27, 1997.
248.

On or about March 27, 1995, Doyle responded to a post on the publicly-accessible

WWW-talk e-mail distribution list in which another author had written, under the heading
“HotJava is here! And it *rocks*,” “It’s the most exciting thing to happen to the Web since
viola.” Doyle’s response included the following statements:
If you take a close look at Java, you’ll realize that it bears a close
similarity to Viola, since the “applets” must be coded from a
predefined language, downloaded and locally interpreted.

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249.

On or about May 27, 1997, Doyle signed a declaration that was submitted to the

Patent Office. Doyle’s declaration included the following statements:
The three exemplary products which incorporate the
features of the claimed invention include Netscape Navigator 2.0
(or newer versions), Java, from Sun Microsystems, and ActiveX,
from Microsoft. . . . [T]he success of these products is directly
attributable to the claimed features of the invention.
....
A good indicator that Sun Microsystems felt that enabling
interactivity in Web pages was the key feature of Java is given in
the first chapter of “Hooked on Java,” which was written by
members of the original Java development team. They say, “With
applets written in the Java programming language, Web users can
design Web pages that include animation, graphics, games, and
other special effects. Most important, Java applets can make
Web pages highly interactive.”
This statement shows that the developers of Java felt that
the most important feature of the Java technology was the ability
of Java to allow an embed text format (the applet tag) within a
Web document to be parsed by a Web browser to automatically
invoke an external executable application to execute on the client
workstation in order to display an external object and enable
interactive processing of that object within a display window
created at the applet tag’s location within the hypermedia
document being displayed in the browser-controlled window. The
book’s authors further emphasize the novelty and nonobviousness
of this technology when they say, “Quite simply, Java-powered
pages are Web pages that have Java applets embedded in them.
They are also the Web pages with the coolest special effects
around .... Remember, you need a Java-compatible Web
browser such as HotJava to view and hear these pages and to
interact with them; otherwise, all you'll access is static Web
pages minus the special effects.”
....
The above citations, as well as the additional details given
in Appendix A, provide ample evidence of the commercial success
of products incorporating features of the claimed invention, as well
as evidence of the widespread acclaim that these products have
garnered for the technical innovations which the features of the
claimed invention allowed them to provide. They further show that
the successes of these products was a direct result of the features of
the claimed invention, which they incorporated through
implementation of an embed text format that is parsed by a Web
browser to automatically invoke an external executable
application to execute on the client workstation in order to display
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an external object and enable interactive processing of that object
within a display window created at the embed text format’s
location within the hypermedia document being displayed in the
browser-controlled window.
250.

The declaration Doyle signed on or about May 27, 1997, made no mention of

Viola or the ViolaWWW browser.
251.

Doyle and Krueger’s disclosure of Java for purposes of commercial success, but

not the ViolaWWW browser which Doyle knew was prior art that existed over one year before
the application for the ’906 patent was filed, demonstrates an intent to deceive the Patent Office,
especially given Doyle’s belief that Viola was similar to Java and that Java embodied the
claimed invention.
6. Between 1999 and 2003, Doyle learned about additional Viola prior art,
and learned that an expert in the field believed that the plotting demo for the
ViolaWWW browser anticipated the asserted claims of the ’906 patent
252.

Between 1999 and 2003, a third party disputed the validity of the ’906 patent.

253.

Doyle personally guided Eolas through the litigation concerning the validity of

the ’906 patent.
254.

Throughout the litigation, the third party asserted that the plotting demo involving

the ViolaWWW browser anticipated the asserted claims of the ’906 patent.
255.

The plotting demo relied on by the third party to prove anticipation of the asserted

claims of the ’906 patent was the same plotting demo that Pei Wei had repeatedly described to
Doyle, see supra ¶¶ 103–113, 133–136, and which the Federal Circuit has held was a “public
use” on May 7, 1993, 399 F.3d 1325, 1335 (Fed. Cir. 2005), and which Doyle himself came
across from his own research into Viola, see supra ¶¶ 167–182.

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256.

In its contentions that the plotting demo involving the ViolaWWW browser

anticipated the asserted claims of the ’906 patent, the third party specifically identified the
VOBJF tag, the plot.v file, and the vplot executable application.
257.

For example, on or about December 14, 2001, the third party served an expert

report by Dr. John P.J. Kelly, that included the following statements:
When
ViolaWWW
encountered
the
tag
<VOBJF>/usr/work/viola/apps/plot.v</VOBJF>, an embed text
format specifying the location of an object, it looked in the
specified path for at least part of the object, parsed the path, and
automatically loaded the object into the program. The file (plot.v)
also contained type information associated with the object, such as
the name and location of an external executable application, vplot,
that also was automatically invoked to enable display of and user
interaction with the object at a location within a display area within
the document being displayed in the browser-controlled window
corresponding to the location of the embed text format in the
document. Subsequently, when the user interacted with the object,
ViolaWWW sent messages to vplot based on the user input and
received output from vplot, thus updating the display of the object.
258.

Similarly, at a trial in 2003 concerning the validity of the ’906 patent, Dr. Kelly

testified that the plotting demo involving the ViolaWWW browser anticipated the asserted
claims of the ’906 patent, and he specifically identified the VOBJF tag, the plot.v file, and the
vplot executable application for purposes of his anticipation analysis.
259.

Pei Wei also testified at the trial in 2003 about the ViolaWWW browser and the

plotting demo.
260.

At the trial, exhibit DX34 included source code for the ViolaWWW browser

dated May 12, 1993.
261.

At the trial, exhibit DX37 included source code for the ViolaWWW browser

dated May 27, 1993.
262.

DX34 contains the code for the plotting demo that Pei Wei demonstrated to Sun

Microsystems on May 7, 1993, in Northern California.
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263.

DX37 contains code for a plotting demo similar to the plotting demo in DX34.

264.

On May 31, 1993, Pei Wei posted DX37 on a publicly-accessible Internet site and

notified an engineer at Sun Microsystems that DX37 was available for downloading.
265.

Under 35 U.S.C. § 102(b), DX37 was a “printed publication” over one year

before the application for the ’906 patent was filed.
266.

Dr. Kelly testified that the plotting demo in DX34 and DX37 anticipates the

asserted claims of the ’906 patent. Dr. Kelly specifically identified the VOBJF tag, the plot.v file,
and the vplot executable application for purposes of his anticipation analysis of DX37.
267.

The Federal Circuit has held that Dr. Kelly’s testimony would allow a reasonable

jury to conclude that DX37 anticipates at least claims 1 and 6 of the ’906 patent. See 399 F.3d
1325, 1335 (Fed. Cir. 2005).
268.

Neither Dr. Kelly nor the third party ever relied on anything other than the

plotting demo involving plot.v and vplot to prove anticipation by the ViolaWWW browser.
269.

For example, Dr. Kelly never discussed clock.v during the trial in July and August

270.

Doyle attended the trial involving the third party held in July and August 2003.

271.

By the end of the trial in August 2003, Doyle knew about and understood the third

2003.

party’s contention that the plotting demo involving the ViolaWWW browser in DX37 anticipated
the asserted claims of the ’906 patent.
272.

By the end of the trial in August 2003, Doyle knew about and understood Pei

Wei’s testimony that on May 31, 1993 — over one year before the application for the ’906 patent
was filed — he posted DX37 on a publicly-accessible Internet site and notified an engineer at
Sun Microsystems that DX37 was available for downloading.
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7. During the 2003 reexamination of the ’906 patent, Doyle and Krueger
concealed material information about the ViolaWWW plotting demo that Pei
Wei and an expert had repeatedly contended anticipated the ’906 patent
273.

On or about October 30, 2003, the Director of the Patent Office initiated a

reexamination of the ’906 patent. The control number for this reexamination was 90/006,831.
274.

During the 2003 reexamination, Doyle withheld information about the

ViolaWWW browser with the specific intent to deceive the Patent Office.
275.

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

’906 patent. See supra ¶¶ 81–89.
276.

The ViolaWWW browser threatened the patentability of the claimed inventions in

the ’906 patent, and thus threatened Doyle’s financial interests.
277.

Doyle and Krueger were personally involved in the 2003 reexamination of the

’906 patent.
278.

For example, on or about April 27, 2004, Doyle and Krueger participated in an

examiner interview in an effort to confirm the patentability of the claims of the ’906 patent
application. Doyle gave the examiner a presentation supported by approximately 22 slides
prepared by Doyle and Krueger, none of which discussed DX37 or the ViolaWWW browser. On
information and belief, neither Doyle nor Krueger mentioned the ViolaWWW browser during
the interview.
279.

On or about May 6, 2004, Doyle signed a declaration that was submitted to the

Patent Office in an effort to confirm the patentability of the claims of the ’906 patent application.
This declaration made no mention of DX37 or the ViolaWWW browser.
280.

On or about August 18, 2005, Doyle and Krueger participated in an examiner

interview in an effort to confirm the patentability of the claims of the ’906 patent application.
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Doyle gave the examiner a presentation supported by approximately 36 slides, none of which
discussed DX37 or the ViolaWWW browser.
281.

During the 2003 reexamination, Doyle and Krueger submitted selected

information from the litigation with the third party concerning the validity of the ’906 patent, but
he withheld information that would have identified for the examiner the key features of the prior
art ViolaWWW browser and how they matched up to the asserted claims of the ’906 patent. This
proved critical during the 2003 reexamination because when the examiner decided to look at the
source code for the ViolaWWW browser, he missed the key points.
282.

On or about December 30, 2003, Doyle and Krueger submitted to the Patent

Office a CD containing two compressed zip files, one for the “DX34” version of the ViolaWWW
source code dated May 12, 1993, and the other for the “DX37” version of the ViolaWWW
source code dated May 27, 1993.
283.

The compressed zip file for DX34 that Doyle and Krueger submitted to the Patent

Office was named viola930512.tar.gz.zip. When unzipped, it contained 1,027 files in 35 folders
consisting of 8 total megabytes in size.
284.

The compressed zip file for DX37 that Doyle and Krueger submitted to the Patent

Office was named violaTOGO.tar.Z.zip. When unzipped, it contained 1,030 files in 34 folders
consisting of 7.7 total megabytes in size.
285.

DX34 and DX37 contained source code for the ViolaWWW browser.

286.

Source code cannot be executed by a computer. Source code must be compiled

into binary code before it can be executed by a computer.

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287.

Without the compiled binary code, and without a suitable computer capable of

executing that binary code (such as a Sun SPARCstation from the early 1990s), the Patent Office
had no practical way to see the ViolaWWW browser in operation.
288.

Given the voluminous nature of the contents of DX34 and DX37, and the

practical inability of the Patent Office to run the ViolaWWW browser on a computer, it was
especially important for Doyle to be candid with the Patent Office about the contents of DX34
and DX37 so that the Patent Office could focus on the relevant files.
289.

Doyle and Krueger were not candid and instead withheld material information

that would have assisted the Patent Office in understanding the contents of DX34 and DX37.
290.

Doyle and Krueger did not disclose the full contents of DX34 and DX37 in their

entirety to the Patent Office during the first reexamination of the ’906 patent.
291.

The full contents of DX34 and DX37 were not submitted in their entirety until the

Invention Disclosure Statement filed on November 1, 2006.
292.

For example, during the 2003 reexamination, Doyle and Krueger did not disclose

to the Patent Office the trial testimony of Pei Wei, who testified about the plotting demo in
DX34 and DX37, see supra ¶¶ 259–265; Doyle and Krueger did not disclose the trial testimony
of Dr. Kelly, who testified that the plotting demo in DX34 and DX37 anticipated the asserted
claims of the ’906 patent, see supra ¶¶ 258, 266; and Doyle and Krueger did not disclose that Dr.
Kelly specifically identified the VOBJF tag, the plot.v file, and the vplot executable application
for purposes of his anticipation analysis, see supra ¶ 256.
293.

On March 2, 2005 — while the 2003 reexamination was still pending — the

Federal Circuit held that Dr. Kelly’s testimony would allow a reasonable jury to conclude that

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DX37 anticipates at least claims 1 and 6 of the ’906 patent. 399 F.3d 1325, 1335 (Fed. Cir.
2005).
294.

Even after the Federal Circuit’s decision, however, Doyle and Krueger still did

not disclose Dr. Kelly’s testimony to the Patent Office during the 2003 reexamination, nor did
they disclose to the Patent Office that Dr. Kelly’s anticipation analysis relied upon the VOBJF
tag, the plot.v file, and the vplot executable application.
295.

On or about September 27, 2005, the examiner issued a statement for reasons of

patentability in which the examiner confirmed the patentability of claims 1–10 of the ’906
patent.
296.

The examiner’s statement never discussed the plotting demo that Dr. Kelly had

testified anticipated the asserted claims of the ’906 patent.
297.

When the examiner considered DX37, the examiner did not know where to look

or what to look for. There were too many files in DX37 for the examiner to read himself. Thus
the examiner was forced to resort to running text searches across all the files in DX37 in the hope
of stumbling across relevant information.
298.

The examiner used the “dtSearch” program to index and text search all DX37

files that contained textual content. See http://www.dtsearch.com/.
299.

It is unclear what words the examiner searched for or how he came up with his

search terms.
300.

Doyle knew precisely what to look for, but he never told the examiner. For

example, if Doyle or Krueger had told the examiner to look for plot.v, the examiner’s text
searches would have quickly found the plotting demo that Dr. Kelly had testified anticipated the
asserted claims of the ’906 patent.
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301.

The examiner’s text searches did not lead him to the plotting demo, but instead

led him to a clock application that used the file clock.v.
302.

The file clock.v is a script file that displays the image of a clock. The clock

application does not involve any separate executable application. It just involves a webpage and
the clock.v script file.
303.

The examiner reasoned that a script file like clock.v does not satisfy the

“executable application” requirement of the claims of the ’906 patent, and thus the examiner
concluded that DX37 does not anticipate the asserted claims of the ’906 patent.
304.

The ViolaWWW source code teaches two ways of creating interactive webpages

using embedded applications. One way is by using a simple script file, such as clock.v. All that is
required is a webpage (such as violaApps.html) and the script file (such as clock.v). No binary
executable application is involved. The other way taught by the ViolaWWW source code does
use a binary executable application (such as vplot) in addition to a webpage and a file that
contains the object (such as plot.v). The examiner did not consider this second way during the
2003 reexamination; he only considered the first way, and thus erroneously confirmed the
patentability of the asserted claims of the ’906 patent.
305.

The examiner’s reasons for patentability included the following statements:
The Viola system uses “C-like” Viola scripts that must be
INTERPRETED by the browser and then TRANSLATED or
CONVERTED into binary native executable machine code that
can be understood by the CPU. Alternately, the Viola script is
precompiled into intermediate byte-code form and the byte-code is
interpreted (i.e., translated) into binary native executable machine
code at runtime. This extra step of translation results in an
unavoidable performance penalty, as interpreted applications run
much slower than compiled native binary executable applications.
Accordingly, the “C-like” Viola scripts (or corresponding bytecode
representations) are not “executable applications” . . . .

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306.

The examiner’s reasoning overlooked the fact that the plotting demo in DX37

does use a separate executable application: vplot.
307.

Doyle and Krueger knew that the plotting demo used a separate executable

application, but Doyle and Krueger did not bring this fact to the examiner’s attention and instead
allowed the examiner to confirm the patentability of the claims of the ’906 patent on the basis of
an incomplete understanding of DX37.
308.

Doyle and Krueger knew that the plotting demo used a separate executable

application for at least the following reasons:
•

The Viola paper dated August 16, 1994, which states “This next mini application
front-ends a graphing process (on the same machine as the viola process)” and
which shows the plot of a fighter jet in a window titled “XPlot.” See supra
¶¶ 106–107.

•

Pei Wei’s message to Doyle on September 1, 1994, which included the following
statements: “[A]s for the plotting demo, it actually is really just a front-end that
fires up a back-end plotting program (and the point is that that back-end could
very well be running on a remote super computer instead of the localhost). For
that demo, there is a simple protocol such that the frontend app could pass an X
window ID to the back-end, and the back-end draws the graphics directly onto the
window violaWWW has opened for it.” See supra ¶ 120.

•

The source code listed in the “Viola stuff” file included the file plotDemo.html,
which states, “This is a demo of ViolaWWW embedding a viola front-ending
object that is programmed to start up and communicate with a plot process. The
front-end tells the plot program the window ID to draw to, and gives it the camera

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coordinate changes.” When the file plotDemo.html is parsed, it shows the plot of
a fighter jet in a window titled “XPlot.” See supra ¶¶ 167–169.
•

Pei Wei’s presentation at Stanford in September 1994, which included the
following statements: “The next example is a front-end application to a backend.
And the back-end is what actually does the computation and the drawing.”
Included with the presentation was a screenshot of the ViolaWWW browser after
parsing the file plotDemo.html. The screenshot shows the plot of a fighter jet in a
window titled “XPlot.” The text in the webpage states, “This is a demo of
ViolaWWW embedding a viola front-ending object that is programmed to start up
and communicate with a plot process. The front-end tells the plot program the
window ID to draw to, and gives it the camera coordinate changes.” See supra
¶ 177.

•

The trial testimony of Pei Wei. See supra ¶ 259.

•

The expert opinion of Dr. Kelly. See supra ¶¶ 257–258, 266.

309.

Doyle and Krueger’s failure to tell the examiner about the vplot and plot.v files,

and failure to disclose documents from the litigation that identified how Dr. Kelly matched up
the plotting demo in DX37 with the claims of the ’906 patent, both alone and in combination
with Doyle and Krueger’s prior failure to disclose the ViolaWWW browser during the original
prosecution of the ’906 patent, constituted a knowing and intentional violation of their duty of
candor and good faith in dealing with the Patent Office.
310.

On information and belief, the Patent Office would not have confirmed the

patentability of the claims of the ’906 patent that were the subject of the 2003 reexamination if

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Doyle and Krueger had not engaged in inequitable conduct and instead had fulfilled their duty of
candor and good faith in dealing with the Patent Office.
8. Doyle and Krueger’s inequitable conduct during the 2003 reexamination
infected the 2005 reexamination
311.

On or about December 22, 2005, a third party filed a request to reexamine the

’906 patent.
312.

On or about February 9, 2006, the Patent Office granted the request to reexamine

the ’906 patent. The control number for this reexamination was 90/007,858.
313.

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

’906 patent. See supra ¶¶ 81–89.
314.

The ViolaWWW browser threatened the patentability of the claimed inventions in

the ’906 patent, and thus threatened Doyle’s financial interests.
315.

Doyle and Krueger were personally involved in the 2005 reexamination of the

’906 patent.
316.

For example, on or about September 6, 2007, Doyle and Krueger participated in

an examiner interview in an effort to confirm the patentability of the claims of the ’906 patent
application.
317.

On or about October 1, 2007, Doyle submitted a declaration to the Patent Office

in an effort to establish an earlier date of invention for the claims of the ’906 patent application.
318.

On or about May 9, 2008, Doyle and Krueger participated in another examiner

interview in an effort to confirm the patentability of the claims of the ’906 patent application.
319.

On or about June 3, 2008, Doyle and Krueger participated in another examiner

interview in an effort to confirm the patentability of the claims of the ’906 patent application.

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320.

Doyle and Krueger’s inequitable conduct during the 2003 reexamination infected

the 2005 reexamination.
321.

Although Doyle and Krueger disclosed material information about the

ViolaWWW browser to the Patent Office during the 2005 reexamination, by that time it was too
late.
322.

For example, Doyle and Krueger disclosed the Viola paper dated August 16,

1994, to the Patent Office on or about August 21, 2006.
323.

This was the first time Doyle or Krueger had disclosed the Viola paper dated

August 16, 1994 to the Patent Office.
324.

Doyle knew about the Viola paper no later than August 31, 1994, see supra

¶¶ 104–108, 115, but Doyle waited over 10 years — and two prosecutions of the ’906 patent —
to disclose that paper to the Patent Office.
325.

Krueger knew about the August 1994 Viola paper no later than August of 1998,

but waited 8 years – and two prosecutions of the ’906 patent – to disclose that paper to the Patent
Office
326.

Shortly after Doyle and Krueger disclosed the Viola paper dated August 16, 1994,

to the Patent Office during the 2005 reexamination, the Patent Office rejected all claims of the
’906 patent.
327.

In particular, on or about July 30, 2007, 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 ¶ 107.
328.

The rejection based on the Viola paper dated August 16, 1994, confirms that the

ViolaWWW browser was material prior art.
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329.

Doyle and Krueger did not respond to the merits of the rejection based on the

Viola paper dated August 16, 1994, however. Instead Doyle filed a declaration asserting that his
date of invention was before August 16, 1994.
330.

In response to Doyle’s declaration, the examiner withdrew the rejection based on

the Viola paper dated August 16, 1994.
331.

The 2005 examiner could have entered a new rejection based on DX37, which

was a printed publication before the alleged conception of the inventions claimed in the ’906
patent, but the 2005 examiner did not independently examine DX37 because the 2003 examiner
had already concluded that DX37 did not invalidate the asserted claims of the ’906 patent.
332.

The conclusions about DX37 reached in the 2003 reexamination were erroneous

due to Doyle and Krueger’s inequitable conduct during that reexamination. See supra ¶¶ 278–
310.
333.

Thus, Doyle and Krueger’s inequitable conduct during the 2003 reexamination

infected the 2005 reexamination.
C. Doyle submitted false statements about the secondary considerations of nonobviousness
334.

During the original prosecution of the ’906 patent, Doyle submitted a declaration

to the Patent Office containing false and misleading statements in an effort to obtain allowance
of the claims.
335.

Specifically, on or about June 2, 1997, Doyle submitted to the Patent Office a

sworn declaration executed on or about May 27, 1997, for the purpose of overcoming the
examiner’s rejection on March 26, 1997.
336.

On page 12 of the declaration, Doyle asserted that his claimed invention would

not have been obvious over the cited prior art in view of “secondary considerations, including, in
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part, commercial success of products incorporating features of the claimed invention and
industry recognition of the innovative nature of these products.”
337.

In support of his assertion, Doyle declared to the Patent Office that Sun

Microsystems and Netscape had incorporated his invention into their Java software and
Navigator Web browser, respectively. He stated: “Approximately 12 to 18 months after the
applicants initially demonstrated the first Web plug-in and applet technology to the founders of
Netscape and engineers employed by Sun Microsystems in November and December of 1993, as
described in reference #4 from Appendix A (Dr. Dobb’s Journal, 2/96), both Netscape and Sun
released software products that incorporated features of the claimed invention . . . .”
338.

This statement was false. Neither Doyle nor any of the other named inventors of

the ’906 patent demonstrated Web plug-in technology to any of the founders of Netscape in
November or December of 1993.
339.

When Doyle made these statements under oath, he also did not know whether any

engineer employed by Sun Microsystems ever saw any of his demonstrations in November or
December of 1993.
340.

Doyle made these same false assertions in slides that he prepared and presented to

the examiner in a personal interview on or about February 24, 1997. On a slide entitled
“Relevant History of DHOE” (Doyle’s name for his invention), Doyle included as a bullet point:
“1993 Demos to Sun & Netscape’s Founders.”
341.

Doyle’s false statements in his declaration were material to the patentability of the

pending claims. These statements purported to provide evidence of copying by others and thus
objective evidence of nonobviousness, a factor to be considered in determining whether an
alleged invention is patentable over the prior art. Without these false assertions, Doyle had no
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support for his argument that Netscape and Sun copied his alleged invention or that his
technology was responsible for their commercial success.
342.

By making these false statements under oath to the Patent Office, Doyle intended

to mislead the Patent Office to believe that responsible persons at Netscape and Sun saw his
alleged invention, appreciated its supposed merits, and therefore incorporated it into the
Navigator browser and Java. Moreover, by making these false statements, Doyle was trying to
convince the Patent Office that the Netscape and Sun products succeeded because they
incorporated his alleged invention.
343.

Doyle’s submission of false statements under oath in his declaration to the Patent

Office constituted a knowing and intentional violation of his duty of candor and good faith in
dealing with the Patent Office.
344.

Because of Doyle and Krueger inequitable conduct during the prosecution and

reexamination of the ’906 patent, every claim of the ’906 patent is unenforceable in its entirety.
The inequitable conduct also renders unenforceable all claims that issue as a result of any reissue
and reexamination proceedings, including claims that issued from the reexaminations of the ’906
patent (reexamination application numbers 90/006,831 and 90/007,858).
D. Doyle and Krueger’s Inequitable Conduct Also Renders the ’985 Patent
Unenforceable
345.

The ’985 patent is likewise unenforceable in its entirety due to Doyle and

Krueger’s inequitable conduct during the prosecution of the application that the issued as the
’906 patent and Doyle’s inequitable conduct during the first reexamination of the ’906 patent
(reexamination application number 90/006,831).
346.

Adobe incorporates by reference the allegations contained in Paragraphs 76 to

343 of its Counterclaims.
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347.

The actions of Doyle and Krueger demonstrate a broad pattern of inequitable

conduct that infected the prosecution of the ’906 patent, the reexaminations of the ’906 patent,
and the prosecution of the ’985 patent.
348.

The application that matured into the ’985 patent was filed on August 9, 2002.

349.

The application number for the ’985 patent was 10/217,955. This application was

a continuation of a continuation of the application that had matured into the ’906 patent.
350.

Eolas had and still has rights to the patent application that matured into the ’985

351.

Doyle was personally involved in the prosecution of the ’985 patent at the same

patent.

time that he had a financial interest in Eolas.
352.

Doyle knew that Eolas could assert the ’985 patent in litigation to seek substantial

settlements and/or damage awards, and thus the prosecution of the ’985 patent was relevant to
Doyle’s financial interest in Eolas.
353.

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 ’985 patent, and for this reason as well
the prosecution of the ’985 patent was relevant to Doyle’s financial interests.
354.

The claims at issue during prosecution of the ’985 patent were similar to the

claims at issue during the reexaminations of the ’906 patent.
355.

Accordingly, the information that Doyle and Krueger withheld during prosecution

of the ’906 patent was material to the patentability of the claims at issue during prosecution of
the ’985 patent for the same reasons previously stated.
356.

As a result of the similarity between the claims at issue during prosecution of the

’985 patent, and the claims of the ’906 patent, the Patent Office issued a “double patenting”
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rejection during prosecution of the ’985 patent. The rejection was issued on or about July 20,
2004.
357.

To overcome the “double patenting” rejection during prosecution of the ’985

patent, a terminal disclaimer was filed on or about March 7, 2005. As a result of the terminal
disclaimer, the ’985 patent may be in force up until November 17, 2015, the date on which the
’906 patent will expire.
358.

For at least this reason, Doyle and Krueger’s inequitable conduct during the

prosecution of the ’906 patent infected the prosecution of the ’985 patent.
359.

On or about May 5, 2005, the Patent Office suspended prosecution of the ’985

patent in light of the 2003 reexamination of the ’906 patent. The Patent Office determined that
the outcome of the 2003 reexamination had a material bearing on the patentability of the claims
at issue during prosecution of the ’985 patent.
360.

For at least this reason, Doyle and Krueger’s inequitable conduct during the 2003

reexamination of the ’906 patent infected the prosecution of the ’985 patent.
361.

On or about January 18, 2006, the Patent Office suspended prosecution of the

’985 patent in light of the 2005 reexamination of the ’906 patent. The Patent Office determined
that the outcome of the 2005 reexamination had a material bearing on the patentability of the
claims at issue during prosecution of the ’985 patent.
362.

For at least this reason, Doyle and Krueger’s inequitable conduct during the 2005

reexamination of the ’906 patent infected the prosecution of the ’985 patent.
363.

On or about April 11, 2008, the claims at issue during prosecution of the ’985

patent were amended to claim substantially the same subject matter claimed in the ’906 patent.

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364.

Accordingly, the Patent Office did not undertake a separate substantive

examination of the patentability of the claims in the ’985 patent. Instead, the Patent Office
simply applied the results of the prosecution of the ’906 patent (including the results of the two
reexaminations of the ’906 patent) to the ’985 patent.
365.

For at least this reason, Doyle and Krueger’s inequitable conduct during the

prosecution and reexaminations of the ’906 patent infected the prosecution of the ’985 patent.
366.

On or about November 13, 2008, a request was filed to lift the stay on the

prosecution of the ’985 patent in light of the completion of the 2005 reexamination of the ’906
patent.
367.

On or about March 20, 2009, the Patent Office allowed the claims in the ’985

patent for the same reasons set forth by the Patent Office during the reexaminations of the ’906
patent.
368.

The examiner’s reasons for allowance patent included the following statement:

“[T]he claims [of the ’985 patent] are allowable as the claims contain the subject matter deemed
allowable in both Re exam 90/006,831 [the 2003 reexamination of the ’906 patent] and Re exam
90/007,838 [the 2005 reexamination of the ’906 patent] for the same reasons as set forth in the
NIRC of the two Re exams.”
369.

The examiner’s reasons for allowance of the ’985 patent confirm that Doyle and

Krueger’s inequitable conduct during the prosecution and reexaminations of the ’906 patent
infected the prosecution of the ’985 patent.
370.

Eolas filed the complaint in this action on October 6, 2009, the same day that the

’985 patent issued.

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371.

As a result of Doyle and Krueger’s pattern of inequitable conduct, Eolas came to

this Court with unclean hands.
372.

As a result of Doyle and Krueger’s inequitable conduct, and the unclean hands of

Eolas, the ’906 and ’985 patents are unenforceable.
Sixteenth Affirmative Defense (Reservation of Defenses)
373.

Adobe expressly reserves the right to allege and assert additional defenses.

374.

Adobe expressly incorporates by reference herein all defenses pled by co-

defendants in this action in their respective Answers to Eolas’ Complaint.
COUNTERCLAIMS
The Parties
375.

Counterclaim Plaintiff Adobe Systems Incorporated (“Adobe”), is a Delaware

corporation and has a principal place of business in California.
376.

On information and belief based solely on Paragraph 1 of the Complaint as pled

by Eolas, Eolas is a Texas corporation with its principal place of business located in Tyler,
Texas.
Jurisdiction
377.

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

United States Code. The jurisdiction of this Court is proper under at least 35 U.S.C. § 271 et seq.
and 28 U.S.C. §§ 1331, 1338, 1367, and 2201-02.
378.

Venue is proper in this District pursuant to at least 28 U.S.C. §§ 1391 and 1400.

Venue is further proper in the Tyler Division.

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Count I
Declaratory Relief Regarding Non-infringement
379.

Based on Eolas’ filing of this action and Adobe’s Second Defense, an actual

controversy has arisen and now exists between the parties as to whether Adobe infringes the ‘906
Patent.
380.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq.,

Adobe requests a declaration by the Court that it does not infringe any claim of the ‘906 Patent
under any theory (including directly (whether individually or jointly) or indirectly (whether
contributorily or by inducement)).
381.

Based on Eolas’ filing of this action and Adobe’s Second Defense, an actual

controversy has arisen and now exists between the parties as to whether Adobe infringes the ‘985
Patent.
382.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq.,

Adobe requests a declaration by the Court that it does not infringe any claim of the ‘985 Patent
under any theory (including directly (whether individually or jointly) or indirectly (whether
contributorily or by inducement)).
Count II
Declaratory Relief Regarding Invalidity
383.

Based on Eolas’ filing of this action and Adobe’s Third Defense, an actual

controversy has arisen and now exists between the parties as to the validity of the claims of the
‘906 Patent.

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384.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq., and

35 U.S.C. § 100 et seq., Adobe requests a declaration by the Court that the claims of the ‘906
Patent are invalid.
385.

Based on Eolas’ filing of this action and Adobe’s Third Defense, an actual

controversy has arisen and now exists between the parties as to the validity of the claims of the
‘985 Patent.
386.

Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §2201 et seq., and

35 U.S.C. § 100 et seq., Adobe requests a declaration by the Court that the claims of the ‘985
Patent are invalid.
Count III
Declaratory Relief of Unenforceability of U.S. Patent No. 5,838,906
387.

Based on Eolas’ filing of this action and Adobe’s Fifteenth Defense, an actual

controversy has arisen and now exists between the parties with respect to the unenforceability of
the ‘906 Patent.
388.

Adobe repeats and realleges the allegations of paragraphs 76–344 as if separately

set forth herein.
389.

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.
390.

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

unenforceability of the claims of the ‘906 Patent is now necessary and appropriate under 28
U.S.C. § 2201.
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Count IV
Declaratory Relief of Unenforceability of U.S. Patent No. 7,599,985
391.

Based on Eolas’ filing of this action and Adobe’s Fifteenth Defense, an actual

controversy has arisen and now exists between the parties with respect to the unenforceability of
the ‘985 Patent.
392.

Adobe repeats and realleges the allegations of paragraphs 76–372 as if separately

set forth herein.
393.

Although Eolas alleges in its Complaint that the ‘985 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 ‘985 Patent is unenforceable due to inequitable conduct before the United
States Patent and Trademark Office.
394.

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

unenforceability of the claims of the ‘985 Patent is now necessary and appropriate under 28
U.S.C. § 2201.
COUNT V
Exceptional Case
395.

Adobe repeats and realleges paragraphs 76–372 as if separately set forth herein.

396.

Because of, inter alia, Doyle’s inequitable conduct, this is an exceptional case

warranting an award of attorneys’ fees to Adobe under 35 U.S.C. §285.
PRAYER
Adobe respectfully requests a judgment against Eolas as follows:
A.

A declaration that Adobe does not infringe, under any theory, any valid claim of
the ‘906 Patent that may be enforceable;

DEFENDANT ADOBE SYSTEMS INCORPORATED’S SECOND AMENDED ANSWER TO
PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 68
Civil Action No. 6:09-CV-446 LED

B.

A declaration that Adobe does not infringe, under any theory, any valid claim of
the ‘985 Patent that may be enforceable;

C.

A declaration that the asserted claims of the ‘906 Patent are invalid;

D.

A declaration that the asserted claims of the ‘985 Patent are invalid;

E.

A declaration that the asserted claims of the ‘906 Patent are unenforceable;

F.

A declaration that the asserted claims of the ‘985 Patent are unenforceable;

G.

A declaration that Eolas take nothing by its Complaint;

H.

Judgment against Eolas and in favor of Adobe;

I.

Dismissal of the Complaint with prejudice;

J.

An award to Adobe of its costs and attorneys’ fees incurred in this action; and

K.

Further relief as the Court may deem just and proper.

JURY DEMAND
397.

Pursuant to Local Rule CV-38.1 and Fed. R. Civ. P. 38, Adobe hereby demands a

trial by jury on all issues relating to Eolas so triable in this action.

DEFENDANT ADOBE SYSTEMS INCORPORATED’S SECOND AMENDED ANSWER TO
PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 69
Civil Action No. 6:09-CV-446 LED

Dated: July 29, 2011.

Respectfully submitted,

By: David J. Healey
David J. Healey
E-mail: [e-mail]
FISH & RICHARDSON P.C.
1 Houston Center
1221 McKinney Street, Suite 2800
Houston, TX 77010
713-654-5300 (Telephone)
713-652-0109 (Facsimile)
OF COUNSEL:
Frank E. Scherkenbach
E-mail: [e-mail]
FISH & RICHARDSON P.C.
225 Franklin Street
Boston, MA 02110-2804
617-542-5070 (Telephone)
617-542-8906 (Facsimile)
Joseph P. Reid
E-mail: [e-mail]
Jason W. Wolff
E-mail: [e-mail]
FISH & RICHARDSON P.C.
12390 El Camino Real
San Diego, CA 92130
858-678-5070 (Telephone)
858-678-5099 (Facsimile)
Counsel for Defendant
ADOBE SYSTEMS INCORPORATED

DEFENDANT ADOBE SYSTEMS INCORPORATED’S SECOND AMENDED ANSWER TO
PLAINTIFF’S SECOND AMENDED COMPLAINT FOR PATENT INFRINGEMENT - PAGE 70
Civil Action No. 6:09-CV-446 LED

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on July 29, 2011, to all counsel of record who are deemed to have
consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).
/s/ David J. Healey
David J. Healey