Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 819

MOTION for Leave to File Staples, Inc.'s Second Amended Answer, Defenses, and Counterclaims by Staples, Inc.. (Attachments: # 1 Exhibit A (part 1 of 4), # 2 Exhibit A (part 2 of 4), # 3 Exhibit A (part 3 of 4), # 4 Exhibit A (part 4 of 4), # 5 Text of Proposed Order)(Richardson, Michael)

EXHIBIT A
PART 1 OF 4

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

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Plaintiff,

ADOBE SYSTEMS INC.,
ET AL.,

C.A. NO. 6:09-CY-446
JUDGE LEONARD E. DAVIS
JURY TRIAL DEMANDED

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Defendants.

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STAPLES. INC.'S SECOND AMENDED ANSWER. DEFENSES. AND
COUNTERCLAIMS
Defendant Staples, Inc. ("Staples") files this Second Amended Answer to Plaintiff Eolas

Technologies Incorporated's ("Eolas" or

"Plaintiff')

Second Amended Complaint

for

Patent

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

PARTIES

1.

Stapies lacks knowiedge and information sufficient to form a belief as to the truth

of the allegations in

Paragraph

1 of the Amended Complaint and therefore denies those

allegations.

2.

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

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

to the truth of the allegations of Paragraph2 and therefore denies those allegations.

3.

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

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

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

4.

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

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

to the truth of the allegations of Paragraph 4 and therefore denies those allegations.

5.

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

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

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

6.

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

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

to the truth of the allegations of Paragraph 6 and therefore denies those allegations.
7

.

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

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

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

8.

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

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

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

9.

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

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

to the truth of the allegations of Paragraph 9 and therefore denies those allegations.

10.

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

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

to the truth of the allegations of Paragraph l0 and therefore denies those allegations.

1

1.

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

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

to the truth of the allegations of Paragraph 11 and therefore denies those allegations.

12.

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

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

to the truth of the allegations of Paragraph 12 and therefore denies those allegations.

13.

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

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

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

14.

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

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

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

15.

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

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

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

16.

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

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

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

17.

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

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

to the truth of the allegations of Paragraph 17 and therefore denies those allegations.

18.

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

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

to the truth of the allegations of Paragraph 18 and therefore denies those allegations.

19.

Staples admits the allegations of Paragraph

20.

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

i9 of the Amended Complaint.

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

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

21.

Paragraph

2l of the Amended Complaint is not directed

at Staples. To the extent

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

to the truth of the allegations of Paragraph2l and therefore denies those allegations.

22.

Paragraph22 of the Amended Complaint is not directed at Staples. To the extent

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

to the truth of the allegations of Paragraph22 and therefore denies those allegations.

23.

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

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

to the truth of the allegations of Paragraph23 and therefore denies those allegations.

JURISDICTION AND VENUE

24.

Staples refers to and incorporates herein its previous answers to Paragraphs 1-23.

25.

Staples admits that Paragraph25 of the Amended Complaint alleges that this is an

action arising under the patent laws of the United States, Title 35 of the United States Code, but
denies the merits of such action. Staples admits that this Court has subject matter jurisdiction
pursuant to 28 U.S.C. $$ 1331 and 1338(a).

26.

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

no answer is required.

27.

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

no answer is required.

ANSWER TO ALLEGED INFRINGEMENT OF
U.S. PATENT NOS. 5.838.906 and 7.599.985

28.

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

29.

Staples admits that U.S. Patent No. 5,838,906 (the "'906 Patent") entitled

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

No. 7,599,985 (the "'985 Patent") entitled "Distributed hypermedia method and system for

of

automatically invoking external application providing interaction and display

embedded

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

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

and information sufficient to form a belief as to the truth

of the remaining

allegations of

Paragraph29 of Ihe Amended Complaint, and therefore denies them.

30.

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

of the allegations of

Paragraph 30

of the Amended Complaint and therefore

denies those

allegations.
3

L

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

any response is necessary, Staples lacks knowledge and information suffrcient to form a belief as
to the truth of the allegations of Paragraph 31 and therefore denies those allegations.

32.

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

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as
to the truth of the allegations of Paragraph32 and therefore denies those allegations.

33.

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

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

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

34.

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

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as
to the truth of the allegations of Paragraph 34 and therefore denies those allegations.

35.

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

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as
to the truth of the allegations of Paragraph 35 and therefore denies those allegations.

36.

Paragraph 36

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

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

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

37.

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

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

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

38.

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

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

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

39.

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

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

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

40.

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

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

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

4L

Paragraph 41 of the Amended Complaint is not directed at Staples. To the extent

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

to the truth of the allegations of Paragraph 41 and therefore denies those allegations.

42.

Paragraph 42

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

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

to the truth of the allegations of Paragraph 42 and therefore denies those allegations.

43.

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

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

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

44.

Paragraph 44 of the Amended Complaint is not directed at Staples. To the extent

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

to the truth of the allegations of Paragraph 44 and therefore denies those allegations.

45.

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

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

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

46.

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

any response is necessary, Staples lacks knowledge and information sufficient to form a belief as
to the truth of the allegations of Paragraph 46 and therefore denies those allegations.

47.

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

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

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

48.

Staples denies the allegations of Paragraph 48 of the Amended Complaint.

49.

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

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

to the truth of the allegations of Paragraph 49 and therefore denies those allegations.

50.

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

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

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

51.

Paragraph

5i of the Amended Complaint

is not directed at Staples. To the extent

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

to the truth of the allegations of Paragraph 51 and therefore denies those allegations.

52.

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

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

to the truth of the allegations of Paragraph 52 and therefore denies those allegations.

53.
of the '906

Staples admits that following commencement of this case

patent and denies the remaining allegations

of

it obtained knowledge

Paragraph 53

of the Amended

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

54.

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

Arnended Complaint. With respect

to the other Defendants, Staples lacks knowledge

and

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

55.

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

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

56.

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

Amended Complaint. With respect to the other Defendants, Staples lacks knowledge and
information sufficient to form a belief as to the truth of the allegations of Paragraph 56 and
therefore denies those allegations.

ANS\ryER TO PRAYER FOR RELIEF

57.

Staples denies that Plaintiff

is entitled to any of the reiief

requested

in the

Amended Complaint for Patent Infringement.

DEFENSES

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

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

F'IRST DEF'ENSE
Staples does not infringe and has not infünged (either directly, contributorily, or by
inducement) any claim

of the '906 Patent and the '985 Patent

doctrine of equivalents.
9

either literally

or under the

SECOND DEFENSE
The claims of the '906 Patent and the '985 Patent are invalid andlor unenforceable for

faiiing to meet the requirements of one or more sections of Title 35, United States

Code,

includingatleastsections 102, 103,and/or 7l2,and oneormoresectionsof Title37, Codeof
Federal Regulations.

THIRD DEFENSE
Plaintiff

s claim for damages is

limited in time by 35 U.S.C.

$ 286.

F'OURTH DEFENSE
The Amended Complaint fails to plead, and Plaintiff cannot cary its burden to prove,
compliance with, or an exception to, the notice requirements of the patent laws, Title 35 of the

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

if

ç

287, and therefore alleged

any, predating Plaintiff s assertion of the '906 Patent and the '985 Patent against

Staples are not recoverabie by Plaintiff.

FIFTH DEFENSE
Plaintiff s Amended Complaint fails to state a claim for which relief can be granted.

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

SEVENTH DEFENSE
Plaintiff

s claims for

relief are limited by patent exhaustion and/or implied license.

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

NINTH DEFENSE
Each and every claim of the '906 and '895 Patents is unenforceable due to inequitable
conduct and/or unclean hands. Staples incorporates by reference the allegations contained in
Paragraphs 17 to268 and282to307 of its Counterclaims.

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

PARTIES

1.

Counterclaimant Staples Inc. ("Staples") is a corporationorganized and existing

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

2.

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

("Eo1as") is a corporation organized and existing under the laws of Texas with a principal place

of business in at313 East Charnwood Street, Tyler, Texas 7570I.

JURISDICTION AND VENUE

3.

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

U.S.C. $ 1 e/. seq., and the Declaratory Judgment Act, 28 U.S.C. $$ 2201-02. The Court has
subject matter jurisdiction over these Counterclaims pursuantto 28 U.S.C. $$ i331, 1338, and

2201-02.

4.

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

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

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

11

5.

Venue with respect to these Counterclaims in this district is met undu 28 U.S.C.

$$ 1391 (b) and (c) because Eolas is a corporation subject to the personal jurisdiction of this
Court..

COUNT

6.

I

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

of

its Counterclaims.

7.

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

infüngement'906 Patent.

8.

Although Eolas alleges in its Complaint that Staples has directly andlor indirectly

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

9.

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

infringement of the claims of the '906 Patent is now necessary and appropriate under 28 U.S.C.
ç 220t.

COUNT

10.

II

Staples incorporates byreference the allegations contained in Paragraphs 1 to 5

of

its Counterclaims.

11.

An actual controversy exists between the parties with respect to the invalidity of

the '906 Patent.

12.

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

issued by the United States Patent and Trademark Office after

full and fair examination, each and

every claim of the '906 patent is invalid for failure to comply with the patent laws, including, but
not limited to, 35

u.s.c.

$$ 101, I02,103,172, and 173.

t2

13.

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

validity of the claims of the '906 patent is now necessary and appropriate under 28 U.S.C.
ç 2201.

COUNT

14.

III

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

of

its Counterclaims.

15.

An actual controversy exists between the parties with respect to the

unenforceability of the '906 Patent.

16.

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

issued by the United States Patent and Trademark Offrce after

full and fair examination, each and

every claim of the '906 Patent is unenforceable due to inequitable conduct before the United
States Patent and Trademark Office.

I.

Overview

A.
17.

Doyle and Krueger had a duty of candor and good faith in
dealing with the Patent Office

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

U.S. Patent Nos. 5,838,906 and1,599,985.

18.

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

U.S. Patent Nos. 5,838,906 and7,599,985.

19.

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

duty of candor and good faith in dealing with the United States Patent and Trademark Office
("the Patent Office") during prosecution of the '906 and '985 patents.

20.

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

reexaminations of the '906 patent.

l3

2L

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

disclose to the Patent Office all information known to that individual to be material to

patentability as definedin3T C.F.R. $ 1.56.

B.
22.

Doyle had a financial incentive to deceive the Patent Offïce

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

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

'985 patent.

23.

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.

24.

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

of

Califomia.

25.

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 andlor'985 patents.

26.

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

("Eolas").

27.

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

invested time and money in Eolas.

28.

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

29.

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

matured into the '906 patent.

30.

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 any royalties on
the '906 andlor'985 patents paid to The Regents of the University of California.

t4

C.
31.

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

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

of

candor and good faith in dealing with the Patent Office. Doyle and Krueger failed to disclose

material information and made affirmative misrepresentations of material facts. Doyle and
Krueger did so with knowledge of the information they withheld, with knowledge of the falsity
of their misrepresentations, and with the specific intent to deceive the Patent Office. The
circumstances of Doyle and Krueger's actions confirm an intent to deceive the Patent Office.

II.
32.

Dovle and Krueger failed to disclose material information related to
the Viola\il"WW browser

As explained in more detail below, Doyle and Krueger 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, Doyle and Krueger

did so with knowledge of the information they withheld and with the specific intent to deceive
the Patent Office. The circumstances of Doyle and Krueger's actions confirm an intent to
deceive the Patent Office.

33.

As explained in more detail below, the ViolaWWW browser was material to the

patentability of al1 the claims of the '906 patent because it disclosed limitations that the Patent

Office believed were missing in the prior art, including interactivity embedded within the
webpage (as opposed to a separate window), automatic invocation of the interactivity (as
opposed to requiring a mouse click to enable the interactivity), and use of a separate executable

application (as opposed to a script). Doyle and Krueger knew that the ViolaWW-W browser
disclosed these limitations, yet they withheid this information from the Patent Office at the same

time that they argued to the Patent Office that these limitations were missing from the prior art.

l5

A.

Doyle knew about the ViolaWWW browser before the
application for his '906 patent was filed on October 17 r 1994

34.

The application for the '90ó patent was filed on October 77, 1994.

35.

Thus the critical date for purposes of 35 U.S.C. $ 102(b) was October 71,7993.

Any printed publication describing the claimed invention, or any public use of the claimed
invention in the United States, before October

Il,

1993, would be an absolute bar to

patentability.

36.

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

was filed that an individuai in Northern Califomia named Pei Wei had developed a browser

called "ViolaWWW" before the critical date of October 17, 1993.

37.

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 lRaggettl seemlsl to remember takes advantage of the tk tool kit to provide

a certain

level of embedding."

38.

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

WWW project page;'

39.

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

colleagues at the University of California in San Francisco and who was also named as an

inventor on the '906 patent, responded to a posting from Pei Wei on a publicly-accessible e-mail
distribution list. Pei Wei's post had included the following statements: "In order to do better
testings and support of ViolaWWW, I would like to solicit donations for guest accounts on the

major Unix platfoñns. . . . 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 rne
a

note. Based mostly on network connectivity,

I'll
16

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

different platform." David Martin's response to Pei Wei included the following statements:
am

willing to discuss providing accounts on SGI IRIX 5.x, Solaris 2.x, Alpha OSF/1.

"l

Please let

me know what you require in terms of disk space, compiler, utilities, etc..."

40.

Thus by May 20,1994

patent was filed

41.

-

-

several months before the application for the '906

Doyle knew about Pei Wei's ViolaWWW browser.

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

Charles J. Kulas ("Kulas"), the patent prosecutor that filed the '906 patent application, prior to
the filing of the application that lead to the '906 patent.

42.

On information and belief, Doyle learned even more about the ViolaWW-W

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

43.

On August 30, 1994, at approximately

"Press Release" to the publicly-accessible

1 1 : 15

p.m. California time, Doyle posted a

VRML e-mail distribution list that included the

following statements:
Researchers at the U. of Califomia have created software for

embedding interactive program objects within hypermedia
documents. Previously, object linking and embedding (OLE) has
been employed on single machines or local area networks using
MS V/indows -TM-. This UC software is the first instance where
program objects have been embedded in documents over an open
and distributed hypermedia environment such as the World V/ide
Web on the Internet.
44.

On August 3I,1994, at approximately 6:52 p.m. California time, Pei Wei posted

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. ViolaW-W-W has had this capabilities for months and months now."

45.

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

learning more about how violaWW-W does this embedded objects thing can get a paper on

t7

it."

46.

The paper cited by Pei Wei was entitled

"A Brief Overview of the VIOLA

Engine, and its Applications."
47.

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

filed ("August

before the application for the '906 patent was

48.

-

over two months

1994 Viola Paper").

The paper cited by Pei Wei included the following statements and graphics:

Embedding mini applications

Viola's language and toolkit allows ViolaWWW to render
documents with embedded viola objects. Although the viola
language is not parl 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 datathat is continuously
updated, you could buiid 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.

ntinuously Updating Field
Activity monítor:
The above mon¡tor application maintains a continuous network connection to a
server to listen to a data stream.
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
18

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.

Ghess Board
This is a demo a viola "application" (the chess board) being retrieved via HTTP,
instantiated, and plugged into this HTML document,

-NErqE E tr
'Etrtr trtrEtr
-IüEEI

'TIII
-ITII

'I ffiEIffiI
'EIEgIgEEE
'E @ËrMsIË
abcdefsh

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).

t9