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 3 OF 4

97.

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

August 31,7994, at approximately 11:36 p.m. Califomia time, in which Doyle asked Pei Wei,

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

See

supral58.

98. The "Viola stuff' folder included a printout from the URL
<http:/Âvrvw.w3.org/History/1
>. This webpage has a heading for the
"WwwWizardsV/orkshop" "Cambridge, Mass, July 1993" and includes links to
"Announceme11t," "Agenda," and "Photos of attendees."

99.

"WwwwizardsWorkshop" refers to the World-V/ide Web Wizards Workshop

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

9t.

100. The "Announcement"

link links to a webpage at

<http://www.w3.org/History/1994/WV/WWorkineNotes/1993_Workshop/Announcement.html>
that states that "Interactive objects" would be discussed at the Wizards workshop.

101.

The "Agenda" link links to a webpage at

<http://www.w3.org/History/1994/WWWMorkineNotes/1993_Workshop/Agenda.html>

that

states that "Interactive objects" was on the agenda for discussion at the Wizards workshop.

I02.

The webpages for the Wizards workshop corroborate Pei Wei's statement to

Doyle on August 21,7995, 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. See supra176.

30

103. 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,

7993

-

over one year before the application for

the'906 patent was filed.

104.

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

fiie 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 WW-W specific bugs to [e-mail],
general comments to www-talk@,info.cern.ch, and anything to

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

[e-mail]

105.

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."

106.

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

the publicly-accessible WW-W-talk e-mail distribution list on February 25,1994, that included

the following statements

:

The new ViolaWWW is now available for ftp'ing. It's beta and
feedback is very welcomed. The README file follows...

Feb 23 1994

ViolaWWW, Version 3.0 Beta

ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.

31

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.

I07.

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

<http:llxcf.berkeley.edulhVprojects/vioIa/>. The printout included the following statements:

ViolaWWW, Version 3.1 Beta

}y4ar

23 1994

ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.

Notable features in the new ViolaWWW

* Embeddable in-document and in-tooibar 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

32

Source and binary can be found in ftp://ora.cornl-pub/www/viola.
Sparc binary is supplied.

Pei Y. Wei ([e-mail])

o;Reiu¡, & Àssõiates, Inc.

108.

The "Viola stuff' folder included a printout from the

<http:llxcf.berkeley.edu/trtlprojects/viola/docs/viola/>.
'named

URt

One of the files listed in the printout is

þlotDemo,htû¡.100.

109. The "Viola stuff'folder

included a printout from the URL

<http:llxef.berkeley.eduftt/p - jects/viola/docs/objs/>. One of the fïles listed in the printout is
named þlot.vn';
1

10.

The ,following is a screenshot of the ViolaWS/W browser aftø piareing the

plotDemo.htr¡l:

JJ

file

111.

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

in the August 1994Ytola paper.

Il2.

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.

113.

Pei Wei had told Doyle on August 31,1994 how the plotting demo worked:

"[A]s for the plotting demo, it actually is really just a front-end that fires up a back-end plotting
program (and the point is that that back-end could very well be running on a remote super
computer instead of the localhost). For that demo, there is a simple protocol such that the front-

34

end app could pass an X window ID to the back-end, and the back-end draws the graphics

directly onto the window violaWWW has opened for

it."

See

supral6L

1L4. Pei Wei had told Doyle on August 37, 1994, see sLtpra fl 51 , and again on August
2I,1995,

see supra

lT6,thafthe plotting

demo described in the August 1994 Viola paper was

the "very one" demonstrated "to visitors from a cefiain computer manufacturer" by May 8, 1993.

115. When Pei Wei referred to a demonstration

"by May 8,1993," he was referring to

the demonstration of the plotting demo to two Sun Microsystems employees that the Federal

Circuit has held "was

a

public use under [35 U.S.C. $ 102(b)]." 399 F.3d 1325,1335 (Fed. Cir.

200s).

116.

Thus, during prosecution of the '906 patent, Doyle knew about Pei Wei's

demonstration of the plotting demo that the Federal Circuit has held was a "public use" under 35

U.S.C. $ 102(b); Doyle knew how the plotting demo worked; and Doyle had access to the code

for that plotting demo.

II7.

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.
1

18.

The webpages that Doyle printed included the following statements and graphic:

WWW Browsers: Extensibility Issues
Pei Wei, O'Reillv

& Associates

Stanford Computer Forum WWW Workshop - September 2021,tgg+

Extensibility in WWW Browsers
The WorldWideWeb is a powerful medium which has many
applications beyond just publishing static documents. It is
35

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 VioiaWWW.

Possible Ways to Extend Browsers

We already do "extend" browsers with things like "extemal
viewers." But there's not a very good integration with the
browser. Ideally those extemal 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 & Assoeiates: 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.

36

Il9.

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

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

120. The plotting demo described in the talk at Stanford University

in September 1994

is the same plotting demo described in the August 1994 Yiola paper. See suprø

12I.

I48.

Pei Wei had told Doyle on August 37,7994, see supra fl 51, and again on August

21,1995, see supra 176, that the plotting demo described in August 1994Yiola paper was the

"very one" demonstrated "to visitors from a certain computer manufacturer" by May 8, 1993.

I22.

On information and belief, when Pei Wei referred to a demonstration'oby May 8,

1993," he was referring to the demonstration of the plotting demo to two Sun Microsystems

3t

employees that the Federal Circuit has held "was a public use under [35 U.S.C. $ 102(b)]." 399

F.3d i325, 1335 (Fed. Cir.2005).

123.

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

with evidence that the ViolaWW-W browser was material prior art under 35 U.S.C. $ 102(b), yet
Doyle never disclosed the ViolaWWW browser to the Patent Offrce during prosecution of
application number 081324,443, which matured into the '906 patent.

124.

On information and beliet the ViolaWWW browser, including the August i994

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

125.

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 l994Yiolapaper, should
be submitted to the Patent Office.

126.

On information and belief, Kruger was aware of Pei Wei's May 1993

demonstration of the ViolaWWW browser to Sun Microsystems employees without a

confidentiality agreements.

I2l.

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

128.

ViolaWWW browser to the Patent Office.

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

statements regarding the May 1993 dernonstration of the ViolaWWW browser to Sun

Microsystems employees.

38