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 4 OF 4

I29.

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
ViolaWW-W browser.

D.

The ViolaWWW browser
the 6906 patent

130. The ViolaWWW

\ryas

material to the patentabilify of

browser was material to the patentability of the claimed

inventions in the'906 patent.

131. There is a remarkable

similarity between the ViolaWW-W browser and the

preferred embodiment of the'906 patent:
,356

TtÈ t!s&molVþtrWWW rùedúlgr vlolaffi-È!ûEoblcct ûdle gogl@rcd
b ltt r.p tld corftrlcltc r¡ür ¡ p¡d pl@!i.
TIEtEîtsd Þ{!tE plo¿pßgm üEc&dry lD b rf,üb, üd C¡G thè mm

Dsmon3lrolion: lnleræt¡ve

vilEl¡alion ol

o 7. we€k

old 3D

Th¡s projccl will serye lhe dwl pu¡Do¡e of..

ViolaWWW

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

Both the ViolaWIVW 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

39

embedded image that move up and down; these rotate the embedded image on the

X,Y, andZ

axes. Similarly, in the preferred embodiment of the '906 patent shown above, box 354 has three
slide controls to the right of the embedded image that rotate the image on the X, Y, and Z axes.
Thus, ViolaWWW, like the '906 patent, teaches a browser capable of displaying embedded

interactive objects.

132. The Manual of Patent Examining Procedure

in force at the time the application

for the '906 patent was filed included the following statements:

Materiality is defined in 37 CFR 1.56(b) and discussed herein at
MPEP $ 2001.05. ln addition to prior art such as patents and
publications, 37 CFR 1.56 includes, for example, information on
possíble príor public øses, sales, offers to sell, derived knowledge,
príor ínvention by ønother, inventorship conflicts, and the like,
femphasis in bold added]

133.

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,<possìble príor public uses, sales, offers to sell, derived
knowledge, prior ínventíon by another, inventorship conflicts, and the like.

>"Materiality is not limited to prior art but embraces any ínformation 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]

40

134. The Federal Circuit has confirmed that the ViolaW-WW browser was material

to

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

135. 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. g 102(a), (b), and/or

(g).

See 399 F.3d

1325,1329,1332-35 (Fed. Cir. 2005).

136. The Federal Circuit held that "'Wei's

}i4ay 7 ,1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was a public use under [35 U.S.C.
$ 102(b)1." 399 F.3d 1325,1335 (Fed. Cir.2005).
131

.

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

I

and 6

of the '906 patent obvious in light of the ViolaWWW browser. See 399 F.3d 1325,1335 (Fed.
Cir. 2005).

138.

The Federal Circuit held that a district court could find that Doyle had committed

inequitable conduct by failing to disclose the ViolaïVWW browser to the Patent Office. See 399
F.3d 1325,1336 (Fed. Cir. 2005).

139.

On information and belief, Krueger was aware that the Federal Circuit confirmed

that the ViolaWV/W 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.

I40.

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.

I41.

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

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

41

142.

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 l994YioIapaper, see

143.

supral48.

Pei Wei had told Doyle on August 31,1994, about the August 1994Yiolapaper,

see suprø fln 44-48, and Doyle had downloaded and read that paper the same day, see supra

fll

49, 55-57, yet Doyle never disclosed the Viola paper to the Patent Office during the original

examination of the'906 patent.

144.

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

145. For example, the plotting demo described in the August 1994 Viola paper was
part of the ViolaWWW browser software that was demonstrated to Sun Microsystems on May 7,
1993

-

over one year before the application for the '906 patent was filed. See supra T1[51-54.

146.

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

I47.

Thus, the ViolaW.WW browser software that was described in the August 1994

1993.

Viola paper and demonstrated to Sun Microsystems on }i4ay 7, 1993, also corroborates
anticipation of the claimed inventions in the '906 patent under 35 U.S.C. $ 102(9).

148.

Neither reexamination of the '906 patent considered whether the claimed

inventions were anticipated by "Wei's }i4.ay 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).

42

149.

In an ex parte reexamination, "lr]ejections will not be based on matters other than

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

(MPEP) $ 22s8(r).

150.

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

consider public use art during an ex parte reexamination.

151. The Patent Office had the authority during the original examination

of the '906

patent to issue a rejection based on the "public use" provision of 35 U.S.C. $ 102(b), but Doyle
and Krueger never disclosed to the Patent Office during that examination the evidence they had

in their possession that the ViolaWWW browser was in "public use" more than one year before
the application for the '906 patent was filed.

152. 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.

E.
153.

Doyle and Krueger intended to deceive the Patent Office
during prosecution of the '906 patent

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

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

154. For example, Doyle failed to disclose the following material information:
message from Raggett about the ViolaWWW browser and embedded objects, see supra

the
TIT

37-

40; the communications with Pei Wei inl994 about the ViolaWWW browser and the embedded
interactive plotting demo that was in public use in }l4ay 1993, see suprct lJlT 43-61; the August

1994Yiolapaper describing the ViolaWW-W browser and the embedded interactive plotting
demo that was in public use in May 1993, see supra\laa-a9; the communications with Pei Wei

in

1995 about the ViolaWWW browser and the embedded interactive plotting demo that was in

43

public use in

,}i4.ay

1993 and again at the Wizards conference in July 7993, see supra tffl 73-91;

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 7993, see
supra T1195-116; and Pei Wei's talk at Stanford in September 1994 about the embedded

interactive plotting demo that was in public use in }l4ay 7993, see supraffiIn-123.

155.

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

references regarding the ViolaWïV'W browser including at least the August 1994Yiolapaper,

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

.};4ay

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 þlotting demo that was in public use in May 1993.

156. Doyle and Krueger

withheld information about the ViolaWWW browser with the

specific intent to deceive the Patent Office.

157.
'906 patent.

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

See

158.

suprafln22-30.

The ViolaWWW browser threatened the patentability of the claimed inventions in

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

159.

On information and belief Doyle was personally involved in the prosecution

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

44

of

160.

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.

16I.

See

supral70.

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

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

application.

162.

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.
163

.

On or about }i4ay 27 , 1997 , Doyle signed a 29-page declaration (including an

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

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

164.

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

submitted to the Patent Office in an effort to estabiish an earlier date of invention for the claims

of the '906 patent application.

165.

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.

166.

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.

167.

Doyle personally reviewed and approved papers submitted to the Patent Offìce

during prosecution of the '906 patent.

45

168.

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

of application number 081324,443, which matured into the '906 patent, Doyle and Krueger never
disclosed the ViolaWWW browser to the Patent Office during that prosecution.

169. On information

and belief, the circumstances of Doyle and Krueger's actions

demonstrate an intent to deceive the Patent Office.

I70.

For example, during prosecution of the '906 patent, Doyle and Krueger made

arguments for patentability that could not have been rnade if he had disclosed the ViolaWWW
browser to the Patent Office.

l71r

On or about ll4:ay 6,1996, the Patent Office rejected several claims as being

anticipated by the University of Southern California's "Mercury Project."

Il2.

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

Patent Office.

173. Doyle personally

reviewed and approved the response submitted to the Patent

Office on or about August 6,1996.

174.

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 extemal object within the window
in which a portion of the original document is displayed.

I75.

If Doyle or Krueger had disclosed the ViolaWW-W prior art to the Patent Office,

on information and belief, 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 "displayfing] and
46

processing the external object within the window in which a portion of the original document is

displayed."

116. On or about March 26,1997,

the Patent Office rejected several claims as being

obvious in light of "Khoyi et al. US Patent 5,206,95I" in combination with other prior
177

.

ar1.

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

Office.

178.

Doyle and Krueger personally reviewed and approved the response submitted to

the Patent Office on or about June 2,1997.

179.

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

statements:

lTlhere is no suggestion in Khoyi of modifying Mosaic so that an
external application . . . is invoked to dispiay and interactively
process the object within the document window while the
document is displayed by Mosaic in the same window.

180. If Doyle or Krueger

had disclosed the ViolaWWW prior art to the Patent Office,

on information and belief, 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

fthat] 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."
181

.

On or about August 25, 7997 , 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.

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

to the

Patent Office.

183.

On information and belief, Doyle and Krueger personally reviewed and approved

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

47

184.

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 extemal application when an embed text
format is parsed. Each of those references require user input,
specifically clicking with a mouse pointer, to activate extemal
applications to allow display and interaction with an external
object.

185. If Doyle or Krueger

had disciosed the ViolaWWW prior art to the Patent Office,

on information and belief, 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."

186.

On information and belief, Doyle and Krueger's repeated use of arguments that

could not have been made

if Doyle or Krueger

had disclosed the ViolaWWW prior art

demonstrates an intent to deceive the Patent Office.

181.

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

i

88.

.

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

WWW-talk e-mail distribution list in which another author had written, under the heading
"HotJava is here! And it *rocks*," "It's the most exciting thing to happen to the Web since

viola." Doyle's response included the following

statements:

If you take a close iook atJava, you'll realize that it bears

a close

similarity to Viola, since the "applets" must be coded from
predefined language, downloaded and locally interpreted.

189.
Patent

a

On or about }day 27,7997,Doy\e signed a declaration that was submitted to the

Office. Doyle's declaration included the following
48

statements:

The three exemplary products which incorporate the
features of the claimed invention include Netscape Navigator 2.0
(or newer versions), Java, from Sun Microsystems, and ActiveX,
from Microsoft. . . . [T]he success of these products is directly
attributable to the claimed features of the invention.

A good indicator that Sun Microsystems felt that enabling
interactivity in Web pages was the key feature of Java is given in
the first chapter of "Hooked on Java," which was written by
members of the original Java development team. They say, "With
applets written in the Java programming language, Web users can
design Web pages that include animation, graphics, games, and

other special effects Most important, Java applets can make
Web pages highly interactive."

This statement shows that the developers of Java felt that
the most important feature of the Java technology was the ability
of Java to allow an embed text format (the applet tag) within a
Web document to be parsed by a Web browser to automatically
invoke an external executable application to execute on the client
workstation in order to display an extemal 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 fuither 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 aecess 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 textþrmat that is parsed by a Web
browser to automatically invoke an external executable
49

application to execute on the client workstation in order to display
an external object and enable interactive processing ofthat object
within a display window creøted at the embed textformat's
location within the hypermedia document being displayed in the
br ows er-contr o I I ed window.

190.

The declaration Doyle signed on or about May 21, 1997, made no mention

of

Viola or the ViolaWWW browser.

l9I.

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

not the ViolaWWW browser which Doyle knew was prior artthat existed over one year before
the application for the '906 patent was filed, demonstrates, on information and belief, 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.

F.

Between 1999 and 2003, Doyle learned about additional Viola

prior art, and learned that an expert in the fTeld believed that
the plotting demo for the ViolaWWW browser anticipated the
asserted claims of the '906 patent

192.

Between 1999 and2003, a third party disputed the validity of the '906 patent.

193.

On information and belief, Doyle personally guided Eolas through the litigation

conceming the validity of the'906 patent.

194. Throughout the litigation, the third party asserted that the plotting demo involving
the ViolaWWW browser anticipated the asserted claims of the '906 patent.

195.

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

claims of the '906 patent was the same plotting demo that Pei Wei had repeatedly described to

Doyle, see suprann44-54,74-78, and which the Federal Circuit has held was a "public use"

orì.

ll4ay 7 , 1993,399 F.3d L325, 1335 (Fed. Cir. 2005), and which Doyle himself came across from

his own research into Viola, see supra lffl 108-i23.

50

196.

In its contentions that the plotting demo involving the ViolaWWW browser

arficipated the asserted claims of the '906 patent, the third party specifically identified the
VOBJF tag, the plot.v file, and the vplot executable application.
197

.

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

report by Dr. John P.J. Kelly, that included the following statements:

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

198.

Similarly, at atnal 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.

I99.

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

plotting demo.

200.
dated

May 12,1993.

201.
dated

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

ì!;4:ay

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

27, 1993.

51

202.

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

Microsystems on ll4ay 7,1993, in Northem California.

203.

DX37 contains code for

204.

On May 3I,1993, Pei Wei posted DX37 on a publicly-accessible Intemet site and

a

plotting demo similar to the plotting demo in DX34.

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

205.

Under 35 U.S.C. $ 102(b), DX37 was a "printed publication" over one year

before the application for the '906 patent was filed.

206.

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

asserted claims of the '906 patent. Dr.

Kelly specifically identified the VOBJF tag, the plot.v

file, and the vplot executable application for purposes of his anticipation analysis of DX37.

207.

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

jury to conclude thatDX3T anticipates at least claims

1 and 6

of the '906 patent. See 399 F.3d

7325,1335 (Fed. Cir. 2005).

208.

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 ViolaWW-W browser.

209.

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

210.

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

2Aæ.

in July and August2003.

2I1.

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 assefied claims of the '906 patent.

52

212.

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

application for the '906 patent was filed

-

3l, 1993

one year before the

he posted DX37 on a publicly-accessible Internet site

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

213.

During the 2003 reexamination of the '906 patent, Doyle and
Krueger concealed material information about the
ViolaWWW plotting demo that Pei Wei and an expert had
repeatedly contended anticipated the '906 patent

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.

2I4.

During the 2003 reexamination, Doyle and Krueger withheld information about

the ViolaWWW browser with, on information and belief, the specific intent to deceive the Patent

Office.

2I5.

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

'906 patent. See supra fln22-30.

216.

The ViolaWWW browser threatened the patentability of the claimed inventions in

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

217.

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

2003 reexamination of the '906 patent.

2I8.

For example, on or about Apnl27,2004, Doyle and Krueger participated in an

examiner interview in an effort to confirm the patentability of the claims of the '906 patent

application. Doyle gave the examiner

a

presentation supported by approximately 22 slides

prepared by Doyle and Krueger, none of which discussed DX37 or the

ViolaWWW browser.

Neither Doyle nor Krueger mentioned the ViolaWWW browser during the interview.

53

219.
Patent Office

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

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.

220.

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

22I.

During the 2003 reexamination, Doyle and Krueger submitted selected

information from the litigation with the third party conceming the validity of the '906 patent, but
he withheld information that would have identified for the examiner the key features of the prior

art ViolaWW'W browser and how they matched up to the asserted claims of the '906 patent.

This proved critical during the 2003 reexamination because when the examiner decided to look
at the source code for the ViolaWWW browser, he missed the key points.

222.

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

Office a CD containing two compressed zip files, one for the "DX34" version of the ViolaWWW
source code dated }l4ay 12,1993, and the other for the

"DX3T" version of the ViolaWWW

source code dated }i4ay 27, 1993.

223.

The compressed zip f/re for DX34 that Doyle and Krueger submitted to the Patent

'When
Office was named vio1a930512.tar.gz.zip.
unzipped, it contained 1,027 files in 35 folders

consisting of 8 total megabytes in size.

224.

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.

54

225.

DX34 and DX37 contained source code for the ViolaWW-W browser.

226.

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

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

227.

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

executing that binary code (such as a Sun SPARCstation from the early i990s), the Patent Office
had no practical way to see the ViolaWWW browser in operation.

228.

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

practical inability of the Patent Office to run the ViolaWW-W 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.

229.

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.

230.

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.

231.

On information and belief, the fuIl contents of DX34 and DX37 were not

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

232.

For example, during the 2003 reexamination, neither Doyle nor Krueger disclosed

to the Patent Office the trial testimony of Pei Wei, who testified about the plotting demo in

DX34 andDX3l,

see supra !i'!i 199-205, nor did either Doyle or Kreuger disclose the

trial

testimony of Dr. Kelly, who testified that the plotting demo in DX34 andDX3T anticipated the
asserted claims of

the'906 patent, see supra TT 198, 206,nor did either disclose that Dr. Kelly

55

specifically identified the VOBJF tag, the plot.v file, and the vplot executable application for
pulposes of his anticipation analysis, see supra ll197.

233.

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

DX3l anticipates at least claims

1 and 6 of the '906

patent. 399 F.3d 1325, 1335 (Fed. Cir.

200s).

234.

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

not disclose Dr. Kelly's testimony to the Patent Office during the 2003 reexamination, nor did
they disclose to the Patent Office that Dr. Kelly's anticipation analysis relied upon the VOBJF

tag,the plot.v file, and the vplot executable application.

235.

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.

236.

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

testified anticipated the asserted claims of the '906 patent.

237.

When the examiner consideredDX3T, the examiner did not know where to look

or what to look

for. There were too many files in DX31 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.

238.

The examiner used the oodtSearch" program to index and text search

f,rles that contained

239.

allDX3l

textual content. ^|ee http://www.dtsearch. com/.

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

search terms.

56

240.

On information and beliet Doyle knew precisely what to look for, but he never

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

241.

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.

242.

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

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

243.

The examiner reasoned that a script file like clock.v does not satisfl, 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.

244.

The ViolaWWW source code teaches two ways of creating interactive webpages

using embedded applications. One way is by using a simple script file, such as clock.v.

All that

is required is a webpage (such as violaApps.hmml) and the script file (such as clock.v). No

binary executable application is involved. The other way taught by the ViolaWWW source code
does use a binary executable application (such as vplot) in addition to a webpage and a file that

contains the object (such as plot.v). The examiner did not consider this second way during the
2003 reexamination; he only considered the first way, and thus erroneously confirmed the

patentability of the asserted claims of the '906 patent.

245.

The examiner's reasons for patentability included the following statements:
The Viola system uses "C-like" Viola scripts that must be
INTERPRETED by the browser and then TRANSLATED or
CONVERTED into binary native executable machine code that
can be understood by the CPU. Alternately, the Viola script is
57

precompiled into intermediate byte-code form and the byte-code rs
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 b¡ecode representations) are not "executable applications" . . . .

246.

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

does use a separate executable application: vplot.

247.

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.

248.

On information and beliet Doyle and Krueger knew that the plotting demo used a

separate executable application for at least the following reasons:

r

The August l994Yiola paper, which states "This next mini application frontends a graphing process (on the same machine as the viola process)" and

which shows the plot of a fighter jet in a window titled "XPlot."

See

supralll

48-49.

o

Pei Wei's message to Doyle on September 1, 1994, which included the

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

a

front-end that fires up a back-end plotting program (and the point is that that
back-end could very well be running on a remote super computer instead

of

the localhost). For that demo, there is a simple protocol such that the frontend app could pass an

X window ID to the back-end, and the back-end draws

s8

the graphics directly onto the window violaWWW has opened for

supra

o

I

it."

See

61.

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

""

:,ïï";J;ï:ïl;*'
o

prot of a nghter jet in a window titled

Pei Wei's presentation at Stanford in September 1994, which included the

following statements: "The next example is a front-end application to

a

backend. And the back-end is what actually does the computation and the

drawing." Included with the presentation was a screenshot of the ViolaWWW
browser after parsing the file plotDemo.html. The screenshot shows the plot

of a fighter jet in a window titled "XPlot." The text in the webpage states,
This is a demo of ViolaWWW embedding a viola front-ending object that is
progranìmed to start up and communicate with a plot process. The front-end

tells the plot program the window ID to draw to, and gives it the camera
coordinate changes." See supra

fT 1 18.

¡
o
249.

The trial testimony of Pei Wei. See supra T 199.
The expert opinion of Dr. Kelly. See supra ITT 197-198,206.

Doyle and Krueger's failure to tell the examiner about the vplot and p1ot.v files,

and failure to disclose documents from the litigation that identified how Dr. Kelly matched up

59

the plotting demo in DX37 with the claims of the '906 patent, both alone and in combination

with Doyle and Krueger's prior failure to disclose the ViolaWW'W 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.

250.

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.

H.
251.

Doyle and Krueger's inequitable conduct during the 2003
reexamination infected the 2005 reexamination

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

'906 patent.

252.

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.

253.

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

'906 patent. See supra\n2210.

254.

The ViolaWWW browser threatened the patentability of the claimed inventions in

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

255.

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

2005 reexamination of the'906 patent.

256.

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

an examiner interuiew

in an effort to confirm the patentability of the claims of the '906 patent

application.

60

257.

On or about October I,200J, Doyle submitted a declaration to the Patent Office

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

258.

On or about ll4ay 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.

259.

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.

260.

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

the 2005 reexamination.

26I.

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.

262.

For example, Doyle and Krueger disclosed the August 1994Yiolapaper to the

Patent Office on or about August 21,2006.

263.

This was the first time Doyle and Krueger had disclosed the August 1994 Viola

paper to the Patent Office.

264.

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

August 3I,1994, see supronn4M9,56, but Doyle waited over 10 years
prosecutions of the '906 patent

265.

-

-

and two

to disclose that paper to the Patent Office.

On information and belief, Krueger knew about the August lg94Yiolapaper no

later than August of 1998, but waited 8 years

-

and two prosecutions of the '906 patent

disclose that paper to the Patent Office

61

-

to

266.

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.

267.

In particular, on or about July 30, 2007, the Patent Office rejected all claims of the

'906 patent as being anticipated by DX95, which includes a copy of the text found in Pei Wei's
August 1994Yiolapaper, see supra ff48.

268.

The rejection based on the August 1994Yiol.a paper confirms that the

ViolaWWW browser was material prior art.

269.

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

August 1994Yiolapaper. Instead Doyle filed

a declaration asserting that

his date of invention

was before August 16,1994.

270.

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

the August 1994 Yiolapaper.

211.

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.

272.

The conclusions about DX37 reached in the 2003 reexamination were erroneous

due to Doyle and Krueger's inequitable conduct during that reexamination. See suprafl1l229-

250.

273.

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

infected the 2005 reexamination.

ilI.

Dovle submitted false statements about the secondary considerations
of non-obviousness
62

274.

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.

275.

Specifically, on or about June2, 1997,Doyle submitted to the Patent Office a

sworn declaration executed on or about }l4:ay 27,1991, for the purpose of overcoming the

examiner's rejection on March 26,1997.

276.

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

not have been obvious over the cited prior art in view of "secondary considerations, including, in
part, commercial success of products incorporating features of the claimed invention and

industry recognition of the innovative nature of these products."

277.

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, 2196), both Netscape and Sun
released software products that incorporated features of the claimed invention . . . ."

278.

On information and belief this statement was false. Neither Doyle nor any of the

other named inventors of the '906 patent demonstrated Web plug-in technology to any of the
founders of Netscape in November or December of 1993.

279.

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
dernonstrations in November or December of 1993.

63

280.

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

the examiner in a personal interview on or about February 24,1997. On a slide entitled

"Relevant History of DHOE" (Doyle's name for his invention), Doyle included as a bullet point:
*7993 Demos to Sun & Netscape's Founders."

2SL

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

pending claims. These statements purported to provide evidence of copying by others and thus

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

282.

By making these false statements under oath to the Patent Office, on information

and belief, Doyle intended to mislead the Patent Office to believe that responsible persons at
Netscape and Sun saw his alleged invention, appreciated its supposed merits, and therefore

incorporated it into the Navigator browser and Java. Moreover, by making these false
statements, Doyle, on information and belief, was trying to convince the Patent Office that the
Netscape and Sun products succeeded because they incorporated his alleged invention.

283.

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.

IV.
284.

Conclusion

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

unenforceability of the claims of the '906 Patent is now necessary and appropriate under 28

u.s.c.

ç 220r.

64

COUNT IV

285.

Staples incorporates byreference the allegations contained in Paragraphs 1 to 5

of

its Counterclaims.

286. An actual controversy

exists between the parties with respect to the alleged

infringement'985 Patent.
287

.

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

infringed the claims of the '985 Patent, Staples has not directly andlor indirectly infringed, and
does not directly andlor indirectly infünge, any claim of the '985 Patent.

288. A judicial determination of the respective rights of the parties with respect to the
infringement of the claims of the '985 Patent is now necessary and appropriate under 28 U.S.C.
ç 2201.

COUNT V

289.

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

of

its Counterclaims.

290.
the'985

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

Patent.

29I.

Although Eolas alleges in its Complaint that the'985 Patent was duiy and legally

issued by the United States Patent and Trademark Office after

full and fair examination, each and

every claim of the '985 Patent is invalid for failure to comply with the patent laws, including, but

not limited to, 35

292.

u.s.c.

$$ 101, 102,I03,112, and

II3.

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

infringement of the claims of the '985 Patent is now necessary and appropriate under 28 U.S.C.
ç220r.

COUNT VI
65

293.

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

of

its Counterclaims.

294.

An actual controversy exists between the parties with respect to the

unenforceability of the '985 Patent.

295.

Although Eolas alleges in its Complaint that the '985 Patent was duly and legally

issued by the United States Patent and Trademark Office after

full and fair examination, each and

every claim of the '985 Patent is unenforceable due to inequitable conduct before the United
States Patent and Trademark Office.

296.

Staples incorporates by reference the allegations contained in Paragraphs 17 to

268 of its Counterclaims.

297.

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

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

298.

The application that matured into the '985 patent was fiied on August 9,2002.

299.

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

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

300.

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

301.

On information and belief, Doyle was personally involved in the prosecution

patent.

of

the '985 patent at the same time that he had a financial interest in Eolas.

302.

On information and belief, Doyle knew that Eolas could asserl the '985 patent in

litigation to seek substantial settlements andlor damage awards, and thus the prosecution of the
'985 patent was relevant to Doyle's financial interest in Eolas.

66

303.

Doyle and his co-inventors are entitled to receive a portion of any royalties paid to

The Regents of the University of Califomia related to the '985 patent, and for this reason as well
the prosecution of the '985 patent was relevant to Doyle's financial interests.

304.

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

claims at issue during the reexaminations of the '906 patent.

305.

Accordingly, the information that Doyle and Krueger withheld during prosecution

of the '906 patent was material to the patentability of the claims at issue during prosecution

of

the '985 patent for the same reasons previously stated.

306.

As

a

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

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

307.

To overcome the "double patenting" rejection during prosecution of the '985

patent, a terminal disclaimer was filed on or about March 7,2005. As a result of the terminal

disclaimer, the '985 patent may be in force up until November 17,2015, the date on which the
'906 patent will expire.

308.

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

prosecution of the '906 patent infected the prosecution of the '985 patent.

309.

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

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

67

310.

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

reexamination of the '906 patent infected the prosecution of the '985 patent.
31

1

.

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

'985 patent in light of the 2005 reexamination of the '906 patent. The Patent Office determined
that the outcome of the 2005 reexamination had a material bearing on the patentability of the

claims at issue during prosecution of the '985 patent.

3I2.

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

reexamination of the '906 patent infected the prosecution of the '985 patent.

313.

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

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

3I4.

Accordingly, the Patent Office did not undertake a separate substantive

examination of the patentability of the claims in the '985 patent. Instead, the Patent Office

simply applied the results of the prosecution of the '906 patent (including the results of the two
reexaminations of the '906 patent) to the '985 patent.

315.

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

prosecution and reexaminations of the '906 patent infected the prosecution of the '985 patent.

316.

On or about November 13, 2008, a request was filed to

lift the stay on the

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

317.

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

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

68

318.

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

"[T]he claims fof the '985 patent] are allowable

as the claims contain the subject matter deemed

allowable in both Re exam 90/006,831 lthe 2003 reexamination of the '906 patentl and Re exam
90/007,838 lthe 2005 reexamination of the '906 patentl for the same reasons as set forth in the

NIRC of the two Re exams."

3T9.

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

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

320.

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

'985 patent issued.

32L

As

a

result of Doyle and Krueger's pattern of inequitable conduct, Eolas came to

this Court with unclean hands.

322.

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

Eolas, the '906 and '985 patents are unenforceable.
323

.

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

unenforceability of the claims of the '985 Patent is now necessary and appropriate under 28

u.s.c.

ç 220r.

REQUESTS FOR RELIEF
Staples respectfuily requests that this Court grant the following relief:

A.

Dismissal of the Second Amended Complaint for Patent Infringement against
Staples with prejudice;

B. A declaration

that Plaintiff recovers nothing fi'om Staples;

C. An order enjoining Plaintiff, its owners, agents,

employees, attomeys, and
representatives, and any successors or assigns thereof, from charging or
asserting infringement of any claim of the '906 Patent and the'985 Patent
against Staples or anyone in privity with Stapies;
69

D. An award to Staples of its reasonable attomeys'

fees and costs;

E. A declaration

that Staples has not infringed any claim of the '906 Patent,
either directly or indirectly;

F. A declaration

that each and every claim of the '906 Patent is invalid;

G. A declaration that

each and every claim of the '906 Patent is unenforceable;

H. A declaration

that Staples has not infringed any claim of '985 Patent, either
directly or indirectly;

I.

A declaration that each and every claim of the '985 Patent is invalid;

J.

A declaration that each and every claim ofthe'985 Patent is unenforceable;
and

K.

Such other and further relief as the Court deems just and proper.

JURY DEMAND
Under Federal Rule of Civil Procedure 38(b), Staples respectfully requests a trial by jury

on all matters raised in its Answer, and Defenses, or in the Amended Complaint for Patent
Infringement.

Date:

August4,20ll

Respectfully submitted,

/s/ Míchael E. Richardson
Michael E. Richardson, TX Bar No. 24002838
BECK REDDEN & SECREST
I22l McKinney, Suite 4500
Houston, TX170l0
Telephone: [phone]
Facsimile: (7 13) 9 5l -37 20
mri chardson@brs fi rm. com

Mark G. Matuschak, admitted pro hac vice
Donald R. Steinberg, admitted pro hac vice
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
70

Facsimilo: (6lV) 526-5000
mark. matuschak@rvilmerhale- çolR
donald. steinb erg@wilmerhal &eortl

Kate Hutchins, admitted pra hacvice
V/ILMER CUTLER PICKERING
HALB AND DORR LLP
399 Park Avenue
New Yorþ NY 10CI11
Telryåone : (212) 23 0-8800
Facsimile: (2 12) 230-8888
kate. hutchins@wilmerhale. com

\l

Williams, adtnitted pro hø.eviee
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue NW
\Mashington DC 20006
Telephonc QAÐ 663-6008
Facsimile Qt2) 663 -63 6j
Daniel

dani el. wil.li ams@wilmerhale. cûrn

ATTORNEYS FOR DEFENIDANT
STAPLES NC.

71

CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court's
CMIECF syst@ per Local Rule CV-5(aX3), Any other aounsel of record will be served by
faesimiletransmission and/or ñrst class mail this # AW of August, 2011.

/s/ Míchael E. Rickardson
Michael E. Richardson

72