Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 805

AMENDED ANSWER to 517 Amended Complaint,, Affirmative Defenses and, COUNTERCLAIM against Eolas Technologies Incorporated by Ebay Inc.. (Doan, Jennifer)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
EOLAS TECHNOLOGIES, INC.

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Plaintiff,
v.
ADOBE SYSTEMS, INC. ET AL.,
Defendants.

CIVIL ACTION NO. 6:09-CV-446 (LED)

DEFENDANT EBAY INCORPORATED’S AMENDED ANSWER, AFFIRMATIVE
DEFENSES, AND COUNTERCLAIMS TO THE SECOND AMENDED PATENT
INFRINGEMENT COMPLAINT OF PLAINTIFF EOLAS TECHNOLOGIES
INCORPORATED
Defendant eBay Inc. (―eBay‖) responds to Plaintiff Eolas Technologies,
Incorporated‘s (―Eolas‖) Second Amended Complaint for Patent Infringement (―Complaint‖) as
follows:
AMENDED ANSWER
I.

PARTIES

1. eBay denies that ―[d]uring the last 15 years, Eolas‘ innovations have enabled
corporations around the world to enhance their products and improve their customers‘ website
experiences by enabling browsers, in conjunction with servers, to act as platforms for fully
interactive embedded applications‖ to the extent that Eolas intends this allegation to apply to
eBay. As to the remaining allegations, eBay is without knowledge or information sufficient to
form a belief as to the truth of the statements in Paragraph 1 of the Complaint, and, on that basis,
denies those allegations.
2. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 2 of the Complaint, and, on that basis, denies those

allegations.
3. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 3 of the Complaint, and, on that basis, denies those
allegations.
4. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 4 of the Complaint, and, on that basis, denies those
allegations.
5. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 5 of the Complaint, and, on that basis, denies those
allegations.
6. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 6 of the Complaint, and, on that basis, denies those
allegations.
7. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 7 of the Complaint, and, on that basis, denies those
allegations.
8. eBay admits the allegations in Paragraph 8 of the Complaint.
9. eBay is without knowledge or information sufficient to form a belief as to the
truth of the statements in Paragraph 9 of the Complaint, and, on that basis, denies those
allegations.
10.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 10 of the Complaint, and, on that basis, denies those
allegations.
11.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 11 of the Complaint, and, on that basis, denies those
allegations.
12.

eBay is without knowledge or information sufficient to form a belief as to

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 2

the truth of the statements in Paragraph 12 of the Complaint, and, on that basis, denies those
allegations.
13.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 13 of the Complaint, and, on that basis, denies those
allegations.
14.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 14 of the Complaint, and, on that basis, denies those
allegations.
15.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 15 of the Complaint, and, on that basis, denies those
allegations.
16.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 16 of the Complaint, and, on that basis, denies those
allegations.
17.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 17 of the Complaint, and, on that basis, denies those
allegations.
18.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 18 of the Complaint, and, on that basis, denies those
allegations.
19.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 19 of the Complaint, and, on that basis, denies those
allegations.
20.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 20 of the Complaint, and, on that basis, denies those
allegations.
21.

eBay is without knowledge or information sufficient to form a belief as to

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 3

the truth of the statements in Paragraph 21 of the Complaint, and, on that basis, denies those
allegations.
22.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 22 of the Complaint, and, on that basis, denies those
allegations.
23.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 23 of the Complaint, and, on that basis, denies those
allegations.
II.
24.

JURISDICTION AND VENUE

eBay incorporates its responses contained in Paragraphs 1–23 as though

fully set forth here.
25.

eBay admits that this Court has subject matter jurisdiction under 28 U.S.C.

§§ 1331 and 1338(a). eBay admits that Eolas‘ Complaint purports to be an action that arises
under the patent laws of the United States, 35 U.S.C. § 1 et seq, but denies any wrongdoing or
liability on its own behalf for the reasons stated herein. Except as so expressly admitted herein,
eBay denies the allegations in Paragraph 25 of the Complaint.
26.

eBay admits that the Complaint alleges that personal jurisdiction over

Defendants exists generally and specifically.

eBay admits that it operates a website,

www.ebay.com, that may be accessed from anywhere in the world, including the Eastern District
of Texas. eBay denies that it has committed any acts of infringement within this district and
specifically denies any wrongdoing, infringement, inducement of infringement or contribution to
infringement. eBay lacks sufficient knowledge or information regarding the other defendants
and on that basis denies the allegations of Paragraph 26 with respect to the other defendants.
Except as so expressly admitted herein, eBay denies the allegations in Paragraph 26 of the
Complaint.
27.

eBay denies that venue is appropriate in this district and has filed a motion

to transfer venue.
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 4

III.
28.

PATENT INFRINGEMENT

eBay incorporates its responses contained in Paragraphs 1–27 as though

fully set forth here.
29.

eBay admits that U.S. Pat. No. 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 eBay admits
that U.S. Pat. No. 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.‖ eBay admits that the issue date on the face
of the ‘906 patent is November 17, 1998 and eBay admits that the issue date on the face of the
‘985 patent is October 6, 2009. eBay denies that either the ‘906 patent or the ‘985 patent was
―duly and legally issued.‖ Except as so expressly admitted, eBay denies the allegations in
Paragraph 29 of the Complaint.
30.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 30 of the Complaint, and, on that basis, denies those
allegations.
31.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 31 of the Complaint, and, on that basis, denies those
allegations.
32.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 32 of the Complaint, and, on that basis, denies those
allegations.
33.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 33 of the Complaint, and, on that basis, denies those
allegations.
34.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 34 of the Complaint, and, on that basis, denies those

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 5

allegations.
35.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 35 of the Complaint, and, on that basis, denies those
allegations.
36.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 36 of the Complaint, and, on that basis, denies those
allegations.
37.

eBay denies the allegations contained in Paragraph 37 of the Complaint

38.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 38 of the Complaint, and, on that basis, denies those
allegations.
39.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 39 of the Complaint, and, on that basis, denies those
allegations.
40.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 40 of the Complaint, and, on that basis, denies those
allegations.
41.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 41 of the Complaint, and, on that basis, denies those
allegations.
42.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 42 of the Complaint, and, on that basis, denies those
allegations.
43.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 43 of the Complaint, and, on that basis, denies those
allegations.
44.

eBay is without knowledge or information sufficient to form a belief as to

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the truth of the statements in Paragraph 44 of the Complaint, and, on that basis, denies those
allegations.
45.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 45 of the Complaint, and, on that basis, denies those
allegations.
46.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 46 of the Complaint, and, on that basis, denies those
allegations.
47.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 47 of the Complaint, and, on that basis, denies those
allegations.
48.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 48 of the Complaint, and, on that basis, denies those
allegations.
49.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 49 of the Complaint, and, on that basis, denies those
allegations.
50.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 50 of the Complaint, and, on that basis, denies those
allegations.
51.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 51 of the Complaint, and, on that basis, denies those
allegations.
52.

eBay is without knowledge or information sufficient to form a belief as to

the truth of the statements in Paragraph 52 of the Complaint, and, on that basis, denies those
allegations.
53.

As to eBay, eBay denies the allegations contained in Paragraph 53 of the

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 7

Complaint. As to the other defendants, eBay is without knowledge or information sufficient to
form a belief as to the truth of the statements in Paragraph 53 of the Complaint, and, on that
basis, denies those allegations.
54.

eBay denies the allegations contained in Paragraph 54 of the Complaint as

to eBay. As to the other defendants, eBay is without knowledge or information sufficient to
form a belief as to the truth of the statements in Paragraph 54 of the Complaint, and, on that
basis, denies those allegations.
55.

eBay denies the allegations contained in Paragraph 55 of the Complaint as

to eBay. As to the other defendants, eBay is without knowledge or information sufficient to
form a belief as to the truth of the statements in Paragraph 55 of the Complaint, and, on that
basis, denies those allegations.
56.

eBay denies the allegations contained in Paragraph 56 of the Complaint as

to eBay. As to the other defendants, eBay is without knowledge or information sufficient to
form a belief as to the truth of the statements in Paragraph 56 of the Complaint, and, on that
basis, denies those allegations.
IV.

PRAYER FOR RELIEF

eBay denies that Eolas is entitled to any of the relief sought in its prayer for relief.
eBay has not directly or indirectly infringed any claims of the ‘906 or ‘985 patents, either
literally or by the doctrine of equivalents, willfully or otherwise. Eolas is not entitled to recover
statutory damages, compensatory damages, enhanced damages, an accounting, injunctive relief,
costs, fees, interest, or any other type of recovery from eBay. Eolas‘ prayer should, therefore, be
denied in its entirety and with prejudice, and Eolas should take nothing.
AFFIRMATIVE DEFENSES
eBay‘s affirmative defenses are alleged below. eBay reserves the right to amend
its Answer, Affirmative Defenses, and Counterclaims to add additional affirmative defenses.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 8

I.
57.

FAILURE TO STATE A CLAIM

The Complaint fails to state a claim upon which relief can be granted.
II.

NON-INFRINGEMENT

58.

eBay restates its responses set forth above as if separately set forth herein.

59.

eBay does not and has not directly or indirectly infringed any valid claims

of the ‘906 patent or the ‘985 patent, either literally or under the doctrine of equivalents, willfully
or otherwise.
III.

INVALIDITY

60.

eBay restates its responses set forth above as if separately set forth herein.

61.

The claims of the ‘906 patent and the ‘985 patent are invalid for failure to

comply with the requirements of Title 35 of the United States Code, including but not limited to
Sections 101, 102, 103, and/or 112.
IV.

INEQUITABLE CONDUCT

62.

eBay restates its responses set forth above as if separately set forth herein.

63.

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.
64.

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.
65.

Charles E. Krueger (―Krueger‖) was the patent prosecutor for the patents-

in-suit, U.S. Patent NOs. 5,838,906 and 7,599,985.
66.

Doyle, as the 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.
67.

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

the reexaminations of the ‘906 patent.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 9

68.

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

duty to disclose to the Patent Office all information known to that individual to be material to
patentability as defined in 37 C.F.R. § 1.56.
69.

On information and belief, Doyle had a financial incentive to deceive the

70.

On information and belief, Doyle had a financial incentive to deceive the

Patent Office.

Patent Office during prosecution of the ‘906 patent, during the reexaminations of the ‘906 patent,
and during the prosecution of the ‘985 patent.
71.

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

San Francisco when he allegedly conceived of the inventions claimed in the ‘906 and ‘985
patents.
72.

On information and belief, the ‘906 and ‘985 patents are owned by The

Regents of the University of California.
73.

On information and belief, 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.
74.

On information and belief, Doyle is a founder of the plaintiff in this

75.

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

action, Eolas.

personally invested time and money in Eolas.
76.

On information and belief, Doyle has had a financial interest in Eolas

since at least August 21, 1995.
77.

On information and belief, on or about August 21, 1995, Eolas acquired

rights to the patent application that matured into the ‘906 patent.
78.

On information and belief, 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
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 10

any royalties on the ‘906 and/or ‘985 patents paid to The Regents of the University of California.
79.

As explained in more detail below, on information and belief, Krueger and

Doyle breached his duty of candor and good faith in dealing with the Patent Office.

On

information and belief, Krueger and Doyle failed to disclose material information and made
affirmative misrepresentations of material facts. On information and belief, Krueger and Doyle
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 Krueger‘s and Doyle‘s actions confirm an intent to deceive the Patent Office.
80.

As explained in more detail below, on information and belief, Krueger and

Doyle breached the duty of candor and good faith in dealing with the Patent Office by failing to
disclose material information related to the ViolaWWW browser. On information and belief,
Krueger and Doyle did so with knowledge of the information they withheld and with the specific
intent to deceive the Patent Office. The circumstances of Krueger‘s and Doyle‘s actions confirm
an intent to deceive the Patent Office.
81.

As explained in more detail below, on information and belief, 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).

On

information and belief, Krueger and Doyle knew that the ViolaWWW browser disclosed these
limitations, yet he withheld this information from the Patent Office at the same time that he
argued to the Patent Office that these limitations were missing from the prior art.
82.

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

83.

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
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patentability.
84.

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

patent was filed that an individual in Northern California named Pei Wei had developed a
browser called ―ViolaWWW‖ before the critical date of October 17, 1993.
85.

On information and belief, 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.‖
86.

On information and belief, Raggett further advised Doyle that he could

―find a pointer to Viola off the CERN WWW project page.‖
87.

On information and belief, 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.

On information and belief, Pei Wei‘s post had

included the following statements: ―In order to do better testings and support of ViolaWWW, I
would like to solicit donations for guest accounts on the major Unix platforms. . . . So, if your
organization has some CPU crunchies to spare, good network connectivity, don't have a firewall,
want to help viola development, etc, please drop me a note.

Based mostly on network

connectivity, I'll select one (maybe two) offer(s) for each different platform.‖ On information
and belief, David Martin‘s response to Pei Wei included the following statements: ―I am willing
to discuss providing accounts on SGI IRIX 5.x, Solaris 2.x, Alpha OSF/1. Please let me know
what you require in terms of disk space, compiler, utilities, etc...‖
88.

On information and belief, by May 20, 1994 — several months before the

application for the ‘906 patent was filed — Doyle knew about Pei Wei‘s ViolaWWW browser.
89.

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

Krueger and 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.
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 12

90.

On information and belief, Doyle learned even more about the

ViolaWWW browser before the application for the ‘906 patent was filed.
91.

On information and belief, 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.
92.

On information and belief, 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.‖
93.

On information and belief, 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.‖
94.

On information and belief, the paper cited by Pei Wei was entitled ―A

Brief Overview of the VIOLA Engine, and its Applications.‖ (―August 1994 Viola Paper‖).
95.

On information and belief, the paper cited by Pei Wei was dated August

16, 1994 — over two months before the application for the ‘906 patent was filed.
96.

On information and belief, the paper cited by Pei Wei included the

following statements and graphics:
Embedding mini applications

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

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

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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.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 17

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.
97.

On information and belief, ―Doyle downloaded and read the paper.‖ 399

F.3d 1325, 1330 (Fed. Cir. 2005).
98.

On information and belief, 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.‖
99.

On information and belief, 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
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 18

comprehensive as yours. But, the point was that there was a way
to embed programmable & interactive objects into HTML
documents.
100.

On information and belief, 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.‖
101.

On information and belief, 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.
102.

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).
103.

On information and belief, 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.
104.

On information and belief, Doyle‘s response was sent after Doyle had read

Pei Wei‘s Viola paper.
105.

On information and belief, 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 . . . .‖
106.

On information and belief, 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?‖

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 19

107.

On information and belief, 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.
108.

On information and belief, 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.
109.

On information and belief, 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.
110.

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

with Pei Wei on August 31 and September 1, 1994, and the copy of the August 1994 Viola paper
that he had downloaded and read. Doyle kept on his computer other emails from that timeframe,
however.
111.

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

August 31, 1994, when he exchanged messages with Pei Wei about the ViolaWWW browser.
112.

On information and belief, Pei Wei was living in Northern California on

August 31, 1994, when he exchanged messages with Doyle about the ViolaWWW browser.
113.

On information and belief, 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.
114.

On information and belief, there was no limitation, restriction or

obligation of secrecy on the readers of Pei Wei‘s August 1994 Viola paper.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 20

115.

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

and Martin were among those named as inventors.
116.

The application for the ‘906 patent discloses the Mosaic browser and the

Cello browser, but not the ViolaWWW browser.
117.

The application for the ‘906 patent included an information disclosure

statement that identified several pieces of prior art, but not the ViolaWWW browser.
118.

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.‖
119.

On information and belief, 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.
120.

On information and belief, 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.
121.

On information and belief, on August 21, 1995, at approximately 11:42

a.m. California time, Doyle posted a ―Press Release‖ to the publicly-accessible WWW-talk email 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.‖
122.

On information and belief, on August 21, 1995, at approximately 12:54

p.m. California time, Pei Wei responded on the publicly-accessible WWW-talk e-mail
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 21

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.‖
123.

On information and belief, 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.‖
124.

On information and belief, 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.

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. . . .
....

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 22

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.
125.

On information and belief, 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.‖
126.

On information and belief, when Pei Wei referred to a demonstration ―by

May 8, 1993,‖ he was referring to the demonstration of the plotting demo to two Sun
Microsystems employees that the Federal Circuit has held ―was a public use under [35 U.S.C.
§ 102(b)].‖ 399 F.3d 1325, 1335 (Fed. Cir. 2005).
127.

On information and belief, 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.
128.

On information and belief, people attending the Wizards workshop

included Tim Berners-Lee, Marc Andreesen, Eric Bina, Dale Dougherty, Scott Silvey, and Pei
Wei.
129.

On information and belief, Tim Berners-Lee and Dale Dougherty were the

organizers of the Wizards workshop.
130.

On information and belief, Dale Dougherty worked at O‘Reilly &

Associates in Northern California.
131.

On information and belief, 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.
132.

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

& Associates in Northern California.
133.

On information and belief, when Pei Wei wrote ―This demo was

memorable because someone and I at ORA had lost sleep the night before the meeting, in order

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 23

to cook up that particular plotting demo,‖ the other person he was referring to was Scott Silvey.
134.

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

attributed to be the inventor of the World Wide Web.
135.

On information and belief, 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.
136.

On information and belief, Marc Andreesen and Eric Bina went on to

found Netscape, the manufacturer of another popular browser for the World Wide Web.
137.

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

ViolaWWW browser and its ability to automatically invoke interactive objects embedded within
a webpage using the ―VOBJF‖ tag to at least Marc Andreesen and Tim Berners-Lee at the
Wizards workshop in Cambridge, Massachusetts in July 1993 — over one year before the
application for the ‘906 patent was filed.
138.

On information and belief, there was no limitation, restriction or

obligation of secrecy on anyone at the Wizards workshop.
139.

On information and belief, 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).
140.

On information and belief, despite Pei Wei‘s communications to Doyle

repeatedly providing evidence that the ViolaWWW browser was material prior art under 35
U.S.C. § 102(b), Doyle never disclosed the ViolaWWW browser to the Patent Office during
prosecution of application number 08/324,443, which matured into the ‘906 patent.
141.

On information and belief, Doyle instead deleted from his computer his

emails with Pei Wei on August 21, 1995. Doyle kept on his computer other emails from that
timeframe, however.
142.

On information and belief, in 1998, during prosecution of the ‘906 patent,

Doyle collected additional information about the ViolaWWW browser, but he still did not
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 24

disclose any information about the ViolaWWW browser to the Patent Office, as explained in
more detail below.
143.

On information and belief, during prosecution of the ‘906 patent, Doyle

maintained a folder called ―Viola stuff.‖
144.

On information and belief, the ―Viola stuff‖ folder included a printout of

Pei Wei‘s message to Doyle on 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.‖
145.

On information and belief, 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?‖
146.

On information and belief, 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.‖
147.

On information and belief, ―WWWWizardsWorkshop‖ refers to the

World-Wide Web Wizards Workshop held in Cambridge, Massachusetts on July 28–30, 1993,
that Pei Wei attended.
148.

On information and belief, 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.
149.

On information and belief, the ―Agenda‖ link links to a webpage at

<http://www.w3.org/History/1994/WWW/WorkingNotes/1993_Workshop/Agenda.html>
states that ―Interactive objects‖ was on the agenda for discussion at the Wizards workshop.
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 25

that

150.

On information and belief, the webpages for the Wizards workshop

corroborate Pei Wei‘s statement to Doyle on August 21, 1995, that the plotting demo described
in the August 1994 Viola paper, 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.
151.

On information and belief, 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.
152.

On information and belief, the ―Viola stuff‖ folder included a printout of a

webpage with the ―README‖ file for viola-2.1.2. The date at the top of the ―README‖ file is
July 27, 1992. The ―README‖ file includes instructions for building the binary code for the
―viola‖ program, and instructions for running the ViolaWWW browser. The ―README‖ file
states at the bottom:
Comments and questions:
Please send WWW specific bugs to [e-mail],
general comments to [e-mail], and anything to
[e-mail].
Pei Y. Wei
[e-mail]
153.

On information and belief, 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.‖
154.

On information and belief, 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:

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 26

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.
155.

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.
....

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 27

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.
156.

On information and belief, 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‖.
157.

On information and belief, 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‖.
158.

On information and belief, the following is a screenshot of the

ViolaWWW browser after parsing the file plotDemo.html:

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 28

159.

On information and belief, the files plotDemo.html and plot.v include

code for the plotting demo described in the August 1994 Viola paper.
160.

On information and belief, 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.
161.

On information and belief, 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

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 29

protocol such that the front-end app could pass an X window ID to the back-end, and the backend draws the graphics directly onto the window violaWWW has opened for it.‖
162.

On information and belief, Pei Wei had told Doyle on August 31, 1994,

and again on August 21, 1995 that the plotting demo described in the August 1994Viola paper,
was the ―very one‖ demonstrated ―to visitors from a certain computer manufacturer‖ by May 8,
1993.
163.

On information and belief, when Pei Wei referred to a demonstration ―by

May 8, 1993,‖ he was referring to the demonstration of the plotting demo to two Sun
Microsystems employees that the Federal Circuit has held ―was a public use under [35 U.S.C.
§ 102(b)].‖ 399 F.3d 1325, 1335 (Fed. Cir. 2005).
164.

On information and belief, 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.
165.

On information and belief, 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.
166.

On information and belief, the webpages that Doyle printed included the

following statements and graphic:
WWW Browsers: Extensibility Issues
Pei Wei, O‘Reilly & Associates
Stanford Computer Forum WWW Workshop - September 20-21,
1994
....
Extensibility in WWW Browsers

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 30

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.
....

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 31

167.

On information and belief, there was no limitation, restriction or

obligation of secrecy on anyone attending the talk that Pei Wei gave at Stanford University in
September 1994.
168.

On information and belief, the plotting demo described in the talk at

Stanford University in September 1994 is the same plotting demo described in the August 1994
Viola paper.
169.

On information and belief, Pei Wei had told Doyle on August 31, 1994,

and again on August 21, 1995 that the plotting demo described in the August 1994 Viola paper
was the ―very one‖ demonstrated ―to visitors from a certain computer manufacturer‖ by May 8,

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 32

1993.
170.

On information and belief, when Pei Wei referred to a demonstration ―by

May 8, 1993,‖ he was referring to the demonstration of the plotting demo to two Sun
Microsystems employees that the Federal Circuit has held ―was a public use under [35 U.S.C.
§ 102(b)].‖ 399 F.3d 1325, 1335 (Fed. Cir. 2005).
171.

On information and belief, 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.
172.

On information and belief, the ViolaWWW browser, including the August

1994 Viola paper, was disclosed to Krueger in August of 1998 after the Notice of Allowance for
‘906 patent issued but before the ‘906 patent issued, when he received a fax containing a number
of references regarding the ViolaWWW browser.
173.

On information and belief, 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.
174.

On information and belief, Krueger was aware of Pei Wei‘s May 1993

demonstration of the ViolaWWW browser to Sun Microsystems employees without a
confidentiality agreements.
175.

On information and belief, 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.
176.

On information and belief, Krueger had no reason to disbelieve Pei Wei‘s

statements regarding the May 1993 demonstration of the ViolaWWW browser to Sun
Microsystems employees.
177.

On information and belief, Krueger made the determination, prior to the

issuance of the ‘906 patent, to not disclose to the PTO the information he received regarding the
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 33

ViolaWWW browser.
178.

On information and belief, the ViolaWWW browser was material to the

patentability of the claimed inventions in the ‘906 patent.
179.

On information and belief, there is a remarkable similarity between the

ViolaWWW browser and the preferred embodiment of the ‘906 patent:

ViolaWWW

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

Both the ViolaWWW browser (on the left) and the preferred embodiment of the
‘906 patent (on the right) enabled a user to interact with a 3-dimensional image
embedded in the middle of a webpage. In the ViolaWWW screenshot above,
there are three slide controls to the right of the embedded image that move up and
down; these rotate the embedded image on the X, Y, and Z axes. Similarly, in the
preferred embodiment of the ‘906 patent shown above, box 354 has three slide
controls to the right of the embedded image that rotate the image on the X, Y, and
Z axes. Thus, ViolaWWW, like the ‘906 patent, teaches a browser capable of
displaying embedded interactive objects.
180.

The Manual of Patent Examining Procedure in force at the time the

application for the ‘906 patent was filed included the following statements:

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 34

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]
181.

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]
182.

The Federal Circuit has confirmed that the ViolaWWW browser was

material to the patentability of the claimed inventions in the ‘906 patent.
183.

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).
184.

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).
185.

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).
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 35

186.

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).
187.

On information and belief, 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, but he still did not discuss the ViolaWWW browser further with
Doyle.
188.

On information and belief, 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.
189.

The Patent Office has also confirmed that the ViolaWWW browser was

material to the patentability of the claimed inventions in the ‘906 patent.
190.

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 August 1994 Viola paper.
191.

On information and belief, Pei Wei had told Doyle on August 31, 1994,

about the August 1994 Viola paper and Doyle had downloaded and read that paper the same
day, yet Doyle never disclosed the Viola paper to the Patent Office during the original
examination of the ‘906 patent.
192.

On information and belief, the fact that Doyle may have conceived of the

inventions claimed in the ‘906 patent before August 16, 1994, does not render the August 1994
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.
193.

On information and belief, the plotting demo described in the August 1994

Viola paper dated, was part of the ViolaWWW browser software that was demonstrated to Sun
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 36

Microsystems on May 7, 1993 — over one year before the application for the ‘906 patent was
filed.
194.

On information and belief, none of the claimed inventions in the ‘906

patent was conceived before August 1993.
195.

On information and belief, the ViolaWWW browser software that was

described in the August 1994 Viola paper 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).
196.

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).
197.

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).
198.

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

consider prior public use art or prior inventorship during an ex parte reexamination.
199.

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 he
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.
200.

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

claims of the ‘906 patent if Doyle or Krueger had not engaged in inequitable conduct and instead
had fulfilled their duty of candor and good faith in dealing with the Patent Office.
201.

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

the ‘906 patent, Doyle and Krueger withheld extensive evidence about the ViolaWWW browser.
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 37

202.

On information and belief, Doyle failed to disclose the following material

information: the message from Raggett about the ViolaWWW browser and embedded objects;
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; the August 1994 Viola paper
describing the ViolaWWW browser and the embedded interactive plotting demo that was in
public use in May 1993; the communications with Pei Wei in 1995 about the ViolaWWW
browser and the embedded interactive plotting demo that was in public use in May 1993 and
again at the Wizards conference in July 1993; 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; and Pei Wei‘s talk at Stanford in September 1994
about the embedded interactive plotting demo that was in public use in May 1993.
203.

On information and belief, Krueger failed to disclose a number of material

references and other prior art 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.
204.

On information and belief, Doyle and Krueger withheld information about

the ViolaWWW browser with the specific intent to deceive the Patent Office.
205.

On information and belief, Doyle had a financial interest in the

patentability of the claimed inventions in the ‘906 patent.
206.

On information and belief, the ViolaWWW browser threatened the

patentability of the claimed inventions in the ‘906 patent, and thus threatened Doyle‘s financial
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 38

interests.
207.

On information and belief, Doyle was personally involved in the

prosecution of application number 08/324,443, which matured into the ‘906 patent.
208.

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.
209.

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.
210.

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.
211.

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.
212.

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.
213.

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.
214.

On information and belief, 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.
215.

On information and belief, Doyle personally reviewed and approved

papers submitted to the Patent Office during prosecution of the ‘906 patent.
216.

Despite Doyle‘s and Krueger‘s extensive personal involvement in the

prosecution of application number 08/324,443, which matured into the ‘906 patent, Doyle and
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 39

Krueger never disclosed the ViolaWWW browser to the Patent Office during that prosecution.
217.

The circumstances of Krueger‘s and Doyle‘s actions demonstrate an intent

to deceive the Patent Office.
218.

On information and belief, during prosecution of the ‘906 patent, Doyle

made arguments for patentability that could not have been made if they had disclosed the
ViolaWWW browser to the Patent Office.
219.

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

being anticipated by the University of Southern California‘s ―Mercury Project.‖
220.

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

the Patent Office.
221.

On information and belief, Doyle personally reviewed and approved the

response submitted to the Patent Office on or about August 6, 1996.
222.

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.
223.

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 ―display[ing] and processing the external
object within the window in which a portion of the original document is displayed.‖
224.

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.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 40

225.

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

226.

Doyle and Krueger personally reviewed and approved the response

Patent Office.

submitted to the Patent Office on or about June 2, 1997.
227.

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.
228.

On information and belief, 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.‖
229.

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.
230.

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

submitted to the Patent Office.
231.

On information and belief, Doyle and Krueger personally reviewed and

approved the response submitted to the Patent Office on or about December 23 1997.
232.

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

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 41

applications to allow display and interaction with an external
object.
233.

On information and belief, 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.‖
234.

On information and belief, Doyle‘s 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.
235.

On information and belief, 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.
236.

On information and belief, 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.‖ On information and belief, 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.
237.

On information and belief, 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.
....
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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
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.
238.

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

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 43

of Viola or the ViolaWWW browser.
239.

On information and belief, Doyle‘s 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.
240.

Between 1999 and 2003, a third party disputed the validity of the ‘906

241.

On information and belief, Doyle personally guided Eolas through the

patent.

litigation concerning the validity of the ‘906 patent.
242.

On information and belief, throughout the litigation, the third party

asserted that the plotting demo involving the ViolaWWW browser anticipated the asserted
claims of the ‘906 patent.
243.

On information and belief, 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, 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.
244.

On information and belief, 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.
245.

On information and belief, 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)
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 44

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.
246.

On information and belief, 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.
247.

On information and belief, Pei Wei also testified at the trial in 2003 about

the ViolaWWW browser and the plotting demo.
248.

On information and belief, at the trial, exhibit DX34 included source code

for the ViolaWWW browser dated May 12, 1993.
249.

On information and belief, at the trial, exhibit DX37 included source code

for the ViolaWWW browser dated May 27, 1993.
250.

On information and belief, DX34 contains the code for the plotting demo

that Pei Wei demonstrated to Sun Microsystems on May 7, 1993, in Northern California.
251.

On information and belief, DX37 contains code for a plotting demo

similar to the plotting demo in DX34.
252.

On information and belief, 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.
253.

On information and belief, under 35 U.S.C. § 102(b), DX37 was a

―printed publication‖ over one year before the application for the ‘906 patent was filed.
254.

On information and belief, Dr. Kelly testified that the plotting demo in

DX34 and DX37 anticipates the asserted claims of the ‘906 patent. Dr. Kelly specifically

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identified the VOBJF tag, the plot.v file, and the vplot executable application for purposes of his
anticipation analysis of DX37.
255.

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).
256.

On information and belief, 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.
257.

On information and belief, Dr. Kelly never discussed clock.v during the

trial in July and August 2003.
258.

On information and belief, Doyle attended the trial involving the third

party held in July and August 2003.
259.

On information and belief, by the end of the trial in August 2003, Doyle

knew about and understood the third party‘s contention that the plotting demo involving the
ViolaWWW browser in DX37 anticipated the asserted claims of the ‘906 patent.
260.

On information and belief, 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.
261.

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.
262.

On information and belief, during the 2003 reexamination, Doyle and

Krueger withheld information about the ViolaWWW browser with the specific intent to deceive
the Patent Office.
263.

On information and belief, Doyle had a financial interest in the

patentability of the claimed inventions in the ‘906 patent.
264.

On information and belief, the ViolaWWW browser threatened the

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 46

patentability of the claimed inventions in the ‘906 patent, and thus threatened Doyle‘s financial
interests.
265.

On information and belief, Doyle and Krueger were personally involved in

the 2003 reexamination of the ‘906 patent.
266.

On information and belief, 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. On information and belief, 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.
267.

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.
268.

On information and belief, 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. On information and belief, Doyle gave the examiner a
presentation supported by approximately 36 slides, none of which discussed DX37 or the
ViolaWWW browser.
269.

On information and belief, 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 they 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. On information and belief, 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.
270.

On information and belief, on or about December 30, 2003, Doyle and

Krueger submitted to the Patent Office a CD containing two compressed zip files, one for the
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 47

―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.
271.

On information and belief, 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.
272.

On information and belief, 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.
273.

On information and belief, DX34 and DX37 contained source code for the

ViolaWWW browser.
274.

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

compiled into binary code before it can be executed by a computer.
275.

On information and belief, 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.
276.

On information and belief, 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 and Krueger 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.
277.

On information and belief, 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.
278.

On information and belief, 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.
279.

On information and belief, the contents of DX34 and DX27 were not

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 48

submitted in their entirety until the Invention Disclosure Statement filed during the second
reexamination on November 1, 2006.
280.

On information and belief, during the 2003 reexamination, neither Doyle

or Krueger disclosed to the Patent Office the trial testimony of Pei Wei, who testified about the
plotting demo in DX34 and DX37; 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; and
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.
281.

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 DX37 anticipates at least claims 1 and 6 of the ‘906 patent. 399 F.3d 1325, 1335 (Fed. Cir.
2005).
282.

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 he 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.
283.

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.
284.

On information and belief, the examiner‘s statement never discussed the

plotting demo that Dr. Kelly had testified anticipated the asserted claims of the ‘906 patent.
285.

On information and belief, 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.
286.

The examiner used the ―dtSearch‖ program to index and text search all

DX37 files that contained textual content. See http://www.dtsearch.com/.
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 49

287.

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

with his search terms.
288.

On information and belief, Doyle knew precisely what to look for, but he

never told the examiner. On information and belief, 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.
289.

On information and belief, 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.
290.

On information and belief, the file clock.v is a script file that displays the

image of a clock. On information and belief, the clock application does not involve any separate
executable application. On information and belief, it just involves a webpage and the clock.v
script file.
291.

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.
292.

On information and belief, the ViolaWWW source code teaches two ways

of creating interactive webpages using embedded applications. On information and belief, one
way is by using a simple script file, such as clock.v. On information and belief, all that is
required is a webpage (such as violaApps.hmml) and the script file (such as clock.v). On
information and belief, no binary executable application is involved. On information and belief,
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). On
information and belief, 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.
293.

The examiner‘s reasons for patentability included the following

statements:
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 50

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‖ . . . .
294.

On information and belief, the examiner‘s reasoning overlooked the fact

that the plotting demo in DX37 does use a separate executable application: vplot.
295.

On information and belief, 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.
296.

On information and belief, Doyle and Krueger knew that the plotting

demo used a separate executable application for at least the following reasons:
On information and belief, the August 1994 Viola paper 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.‖
On information and belief, 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

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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 backend, and the back-end draws the graphics directly onto the window
violaWWW has opened for it.‖
On information and belief, 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 coordinate changes.‖ When
the file plotDemo.html is parsed, it shows the plot of a fighter jet in a window
titled ―XPlot.‖
On information and belief, Pei Wei‘s presentation at Stanford in September
1994, which included the following statements: ―The next example is a frontend application to a backend. And the back-end is what actually does the
computation and the drawing.‖ On information and belief, 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.‖
On information and belief, the trial testimony of Pei Wei.

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On information and belief, the expert opinion of Dr. Kelly.
297.

On information and belief, Doyle‘s 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‘s 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.
298.

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
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.
299.

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

the ‘906 patent.
300.

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.
301.

On information and belief, Doyle had a financial interest in the

patentability of the claimed inventions in the ‘906 patent.
302.

On information and belief, the ViolaWWW browser threatened the

patentability of the claimed inventions in the ‘906 patent, and thus threatened Doyle‘s financial
interests.
303.

On information and belief, Doyle and Krueger were personally involved in

the 2005 reexamination of the ‘906 patent.
304.

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.
305.

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

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Office in an effort to establish an earlier date of invention for the claims of the ‘906 patent
application.
306.

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.
307.

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.
308.

On information and belief, Doyle‘s and Krueger‘s inequitable conduct

during the 2003 reexamination infected the 2005 reexamination.
309.

On information and belief, 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.
310.

On information and belief, Doyle and Krueger disclosed the August 1994

Viola paper to the Patent Office on or about August 21, 2006.
311.

On information and belief, this was the first time Doyle had disclosed the

Viola paper dated August 16, 1994 to the Patent Office.
312.

On information and belief, Doyle knew about the Viola paper no later than

August 31, 1994, but Doyle waited over 10 years — and two prosecutions of the ‘906 patent —
to disclose that paper to the Patent Office.
313.

On information and belief, 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.
314.

On information and belief, shortly after Doyle and Krueger disclosed the

August 1994 Viola paper to the Patent Office during the 2005 reexamination, the Patent Office
rejected all claims of the ‘906 patent.
315.

On information and belief, in particular, on or about July 30, 2007, the

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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 August 1994 Viola paper.
316.

On information and belief, the rejection based on the August 1994 Viola

paper confirms that the ViolaWWW browser was material prior art.
317.

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

the August 1994 Viola paper, however. Instead Doyle filed a declaration asserting that his date
of invention was before August 16, 1994.
318.

In response to Doyle‘s declaration, the examiner withdrew the rejection

based on the August 1994 Viola paper.
319.

On information and belief, 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.
320.

On information and belief, the conclusions about DX37 reached in the

2003 reexamination were erroneous due to Doyle‘s and Krueger ‗s inequitable conduct during
that reexamination.
321.

Thus, Doyle‘s and Krueger‘s inequitable conduct during the 2003

reexamination infected the 2005 reexamination.
322.

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.
323.

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.
324.

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,
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 55

including, in part, commercial success of products incorporating features of the claimed
invention and industry recognition of the innovative nature of these products.‖
325.

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 . . . .‖
326.

On information and belief, this statement was false. On information and

belief, 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.
327.

On information and belief, 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.
328.

On information and belief, 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 information and belief, 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.‖
329.

On information and belief, 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. On
information and belief, without these false assertions, Doyle had no support for his argument that
Netscape and Sun copied his alleged invention or that his technology was responsible for their
commercial success.
EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 56

330.

On information and belief, 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. On information and belief, 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.
331.

On information and belief, 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.
332.

Because Doyle and Krueger committed inequitable conduct during

prosecution reexamination of the ‘906 patent (reexamination application number 90/006,831),
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).
333.

The ‘985 patent is likewise unenforceable in its entirety due to Doyle‘s

and Krueger ‘s inequitable conduct during the prosecution of the application that the issued as
the ‘906 patent and Doyle‘s and Krueger‘s inequitable conduct during the first reexamination of
the ‘906 patent (reexamination application number 90/006,831).
334.

Doyle‘s and Krueger‘s inequitable conduct during prosecution of the

application that issued as the ‘906 patent relates, both immediately and necessarily, to the claims
of the ‘985 patent.
335.

Doyle‘s and Krueger‘s inequitable conduct during the first reexamination

of the ‘906 patent (reexamination application number 90/006,831) relates, both immediately and
necessarily, to the claims of the ‘985 patent.
336.

The ‘985 patent issued from an application that was a continuation

application of a continuation application of the application that issued as the ‘906 patent, and the
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‘985 patent claims priority to the ‘906 patent. The ‘906 patent and the ‘985 patent share the
same specification.
337.

On July 20, 2004, the PTO determined that the claims pending in the

application that issued as the ‘985 patent were identical in scope to or were obvious variations of
the then-issued claims of the ‘906 patent, which were confirmed in the first reexamination of the
‘906 patent (reexamination application number 90/006,831) on June 6, 2006. Accordingly, the
PTO rejected the pending claims under the doctrines of statutory double-patenting and
obviousness-type double-patenting.
338.

On March 11, 2005, to overcome the double-patenting rejections, the

owner of the ‘985 patent cancelled one pending claim and filed a terminal disclaimer for the
remaining claims. It was not argued that the pending claims were patentably distinct from the
then-issued claims of the ‘906 patent.
V.

LACHES

339.

eBay restates its responses set forth above as if separately set forth herein.

340.

Eolas‘ claims for relief are barred in whole or in part by the doctrine of

laches.
VI.
341.

STATUTE OF LIMITATIONS

To the extent Eolas seeks damages for alleged infringement more than six

years prior to filing of this action, the relief sought by Eolas is barred by 35 U.S.C. § 286.
VII.

LICENSE

342.

eBay restates its responses set forth above as if separately set forth herein.

343.

Eolas‘ claims against eBay are barred to the extent that any of the

allegedly infringing products are directly or indirectly provided to eBay from or by an entity,
including without limitation Microsoft Corp., that has an express or implied license to the ‘906
patent or the ‘985 patent.
VIII. INTERVENING RIGHTS
344.

eBay restates its responses set forth above as if separately set forth herein.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 58

345.

Eolas‘ claims are improper to the extent that Eolas asserts infringement of

claims that are subject to eBay‘s intervening rights.
IX.

STANDING

346.

eBay restates its responses set forth above as if separately set forth herein.

347.

Eolas‘ claims against eBay are barred to the extent that Eolas lacks

standing to sue for infringement of the ‘906 patent or the ‘985 patent.
X.

PATENT EXHAUSTION

348.

eBay restates its responses set forth above as if separately set forth herein.

349.

Eolas‘ claims against eBay are barred by the doctrine of patent exhaustion

to the extent Eolas has already relinquished its rights to the ‘906 patent or the ‘985 patent.
XI.

THIRD-PARTY BENEFICIARY

350.

eBay restates its responses set forth above as if separately set forth herein.

351.

Eolas‘ claims against eBay are barred to the extent that Amazon.com is a

third-party beneficiary to a license/agreement granting rights to the ‘906 patent or the ‘985
patent.
XII.

EQUITABLE ESTOPPEL

352.

eBay restates its responses set forth above as if separately set forth herein.

353.

Eolas‘ claims against eBay are barred by the doctrine of equitable

estoppel.
XIII. LIMITATION OF DAMAGES
354.

eBay restates its responses set forth above as if separately set forth herein.

355.

Eolas‘ claims for damages, if any, against eBay for alleged infringement

of the asserted patents are limited by 35 U.S.C. §§ 286, 287, and 288.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 59

COUNTERCLAIMS
I.
356.

PARTIES

eBay is a corporation organized under the laws of the State of Delaware

and having a principal place of business at 2145 Hamilton Avenue, San Jose, California 95125.
357.

Eolas alleges that it is a corporation organized and existing under the laws

of Texas and having a principal place of business at 313 East Charnwood Street, Tyler, Texas
75701.
II.
358.

JURISDICTION AND VENUE

These counterclaims arise under Title 35 of the United States Code. The

Court has subject matter jurisdiction over these counterclaims pursuant to 28 U.S.C. §§ 1331,
1338(a), 2201, and 2202.
359.

Eolas is subject to personal jurisdiction in this district because Eolas filed

this action in this district.
360.

Venue is not is appropriate in this district and eBay shall file a motion to

transfer venue. However, Eolas claims that venue is proper in this judicial district under 28
U.S.C. § 1391 because Eolas filed this action in this district and purports to have a place of
business in this district.
III.
361.

FIRST COUNTERCLAIM: DECLARATORY JUDGMENT
eBay restates its responses set forth above in Paragraphs 1–360 as if

separately set forth herein.
362.

eBay counterclaims against Eolas pursuant to the patent laws of the United

States, Title 35 of the United States Code, and the Declaratory Judgments Act, 28 U.S.C.
§§ 2201 and 2202.
363.

In its Complaint, Eolas alleges that eBay is now and has been directly

and/or indirectly infringing the ‘906 patent and/or the ‘985 patent and that the ‗906 and ‗985
patents are valid, enforceable and were ―duly and legally issued.‖

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 60

364.

An actual controversy exists between Eolas and eBay by virtue of the

allegations of Eolas‘ Complaint and eBay‘s Answer as to the validity, infringement, and
enforceability of the ‘906 patent and the ‘985 patent.
365.

eBay has not directly or indirectly infringed, contributed to or induced

infringement of any claim of the ‘906 patent or the ‘985 patent as alleged in paragraphs 60–61
above, which are incorporated here by reference.
366.

The ‘906 patent and the ‘985 patent are invalid for failing to meet the

conditions of patentability as set forth in 35 U.S.C. §§ 101, 102, 103, and 112 as alleged in
paragraphs 60–61 above, which are incorporated here by reference.
367.

The ‘906 patent and the ‘985 patent are unenforceable due to inequitable

conduct as alleged in paragraphs 62–338 above, which are incorporated here by reference.
368.

eBay is entitled to judgment that eBay does not infringe either the ‘906

patent or the ‘985 patent, that both patents are invalid, and that both patents are unenforceable.
369.

Because of the inequitable conduct alleged in paragraphs 62–323 above,

this is an exceptional case warranting an award of attorneys‘ fees to Defendant under 35 U.S.C.
§ 285.
IV.

RELIEF REQUESTED

FOR ALL THESE REASONS, eBay respectfully requests the following relief be
granted on Eolas‘ Complaint and on eBay‘s Answer, Affirmative Defenses, and Counterclaims:
A.

That Eloas‘s Complaint be dismissed with prejudice and that Eolas take
nothing;

B.

That judgment be entered in favor of eBay against Eolas;

C.

For entry of a Judgment declaring each and every claim of the ‘906 patent
and the ‘985 patent invalid, unenforceable, and not infringed by eBay or
by the use of its products or services;

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 61

D.

That pursuant to 35 U.S.C. § 285 and/or other applicable laws, Eolas‘
conduct be found to render this an exceptional case and that eBay be
awarded its attorneys‘ fees in connection with this action;

E.

That Eolas and each of its officers, employees, agents, alter egos,
attorneys and any persons in active concert or participation with them be
restrained from further prosecuting or instituting any action against eBay
claiming that the ‘906 and ‘985 patents are valid, enforceable, or
infringed, or from representing that eBay‘s products or services, or that the
use thereof, infringes the ‘906 or ‘985 patents; and

F.

That eBay be awarded such other and further relief as the Court may deem
just and proper.

EBAY’S AMENDED ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS – Page 62

Respectfully submitted,
/s/ Jennifer H. Doan ________
Jennifer H. Doan
Texas Bar No. 08809050
Joshua R. Thane
Texas Bar No. 24060713
HALTOM & DOAN
Crown Executive Center, Suite 100
6500 Summerhill Road
Texarkana, TX 75503
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Edward R. Reines
Sonal N. Mehta
Aaron Y. Huang
Andrew L. Perito
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
ATTORNEYS FOR DEFENDANT
EBAY, INC.
CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a). All other counsel of record not deemed to have consented
to electronic service were served with a true and correct copy of the foregoing by certified mail,
return receipt requested, on this the 29th day of July, 2011.
/s/ Jennifer H. Doan
Jennifer H. Doan

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