Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 822

AMENDED ANSWER to Second Amended Answer, Defenses, and Counterclaims 517 Amended Complaint,,, COUNTERCLAIM against Eolas Technologies Incorporated by Staples, Inc.. (Attachments: # 1 Part 2 of 5, # 2 Part 3 of 5, # 3 Part 4 of 5, # 4 Part 5 of 5)(Richardson, Michael)

STAPLESO INC'OS SECOND AMENDED ANSWER,
DEFENSESO AND COUNTERCLAIMS

PART2

OF

5

Such new accessories can be as simple as little applets that

accompany documents, or conceivably as complicated as a news or
mail reader. An analogy is how Emacs's programming
environment allows that text editor to become much more than just
a text editor.

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

2I

Two Front-Ends
W, One has the native viola
front-end, The GUls layouts for

There're currently two front
XLib front-end., and the

One can imagine many plug-in accessories/applets/tools possible

with this facility. Like, a self guiding slideshow tool. Or,
document set specific navigational tools/icons that are not pasted
onto the page so that the navigational icons don't scroll away from
view. Etc.
49.

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

50.

On August 31,1994, at approximately 9:06 p.m. California time, Doyle

responded to Pei Wei's statement at approximately 6:52 p.m. that
case of program objects embedded

"I don't think this is the first

in docs and transported over the WWW. ViolaWWW has

had this capabilities for months and months

now." Doyle

responded by asking Pei Wei, "How

many months and months? We demonstrated our technology in 1993."

51

.

On August 31, 7994, at approximately I I :16 p.m. California time, Pei Wei

responded to the message that Doyle had sent at approximalely 9:06 p.m. Pei Wei's response

included the following statements:

Definitely by May 8,1993 we had demonstrated that plotting demo
(the very one shown in the viola paper) to visitors from a certain
computer manufacturer... This demo was memorable because
someone and I at ORA had lost sleep the night before the meeting,
in order to cook up that parlicular plotting demo :) We had to
show something cool.
That demo wasn't very hard to do because by that time the basic
capability was already in place for violaWWW to fetch viola
22

objects over HTTP (or whatever) and plug them into documents.
Of course, our wire-frame plotting demo isn't anywhere as
comprehensive as yours. But, the point was that there was a \#ay
to embed programmable & interactive objects into HTML
documents.

52.

When Pei Wei referred to the "plotting demo (the very one shown in the viola

paper)," he was referring to the plot of the fighter jet shown above in the window titled "XPlot."
See

supraff48.

53.

When Pei Wei referred to a demonstration "by May 8,7993" to "visitors from a

certain computer manufacturer," he was referring to a demonstration of the plotting demo to Karl
Jacob and James Kempf from Sun Microsystems on May 7, 1993. This demonstration took

place in Northern California. There was no limitation, restriction or obligation of secrecy on

Karl Jacob or James Kempf.

54.

The Federal Circuit has held that "Wei's }l4ay 7,1993 demonstration to two Sun

Microsystems employees without confidentiality agreements was a public use under t35 U.S.C.
102(b)1." 399 F.3d 1325, 1335 (Fed. Cir. 2005).

55.

On August 31, 1994, at approximately 11:13 p.m. California time, Doyle

responded again to the message that Pei Wei had sent at approximately 6:52 p.m.

56.

On information and beliet Doyle's response was sent after Doyle had read Pei

Wei's August 1994 Yiolapaper.

57.

Doyle's response included the following statements: "Pei is mistaken on two

counts, as I describe below . . . . As Pei's paper on Viola states, thaf package did not support
what it calls 'embeddable program objects' untll1994.. . . Furthermore, Viola merely
implements an internal scripting language . . . ."

58.

On August

3I,

1994, at approximately 11:36 p.m. California time, Doyle

responded to the message that Pei Wei had sent at approximately 11:16
23

p.m. Doyle's response

$

included the following statements: "Out of curiosity, did you publicly demonstrate this or
publish any results before 19942"

59.

On September 1, 1994, at approximately 12:08 a.m. California time, Pei Wei

responded to the message that Doyle had sent at approximately

60.

11

:13 p.m.

Pei Wei's message at approximately 12:08 a.m. was also responsive to the

message that Doyle had sent at approximately 11:36 p.m.

61.

Pei Wei's message to Doyle at 12:08 a.m. included the following statements:

Well. Viola's model was *demonstrated* in1993, *released*
freely in 1994.. . . And, as for the plotting demo, it actually is
really just a front-end that fires up a back-end plotting program
(and the point is that that back-end could very well be running on a
remote super computer instead of the localhost). For that demo,
there is a simple protocol such that the front-end app could pass an
X window ID to the back-end, and the back-end draws the graphics
directly onto the window violaWWW has opened for it.

62.

On information and belief Doyle deleted from his computer his emails with Pei

Wei on August 31 and September I,1994, and the copy of the August lgg4Yiolapaper that he
had downloaded and read. Doyle kept on his computer other emails from that timeframe,

however.

63.

On information and belief Doyle was living in Northern California on August 31,

l994,whenhe exchanged

64.

messages

with Pei Wei about the ViolaWWW browser.

Pei Wei was living in Northern Califomia on August

3I,1994, when he

exchanged messages with Doyle about the ViolaWWW browser.

65.

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

Pei Wei's messages on August 31 and September 1,1994, about the ViolaW"WW browser.

24

of

66.
'Wei's

There was no limitation, restriction or obligation of secrecy on the readers of Pei

August 1994 Yiolapaper.

67.

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

Martin were among those named as inventors.

68.

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

browser, but not the ViolaWWW browser.

69.

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

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

70.

On November

22,1994,Doyle signed a declaration under penalty of perjury that

includedthefollowingstatements:

"IbelieveIam... anoriginal, firstand jointinventor... of

the subject matter which is claimed and for which a patent is sought . . . the specification

which. . . was filed on October 17,1994

as

of

Application Serial No.08/324,443.. . .I

acknowledge the duty to disclose information which is material to the examination of this
application in accordance with Title

71.

37

, Code of Federal Regulations, Section 1.56."

No disclosure about the Viola'WWW browser was ever provided to the Patent

Office during prosecution of application number 08/324,443, which matured into the '906 patent.

B.
72.

Doyle was reminded about the ViolaW-W\il browser in 1995
during prosecution of the '906 patent

Doyle was reminded about Pei Wei and the ViolaWWW browser in 1995, during

prosecution of the '906 patent, but still no disclosure about the ViolaWWW browser was
provided to the Patent Office.

73.

On August 2I,1995, at approximately 11:42 a.m. California time, Doyle posted a

"Press Release" to the publicly-accessible WWW-talk e-mail distribution

25

list. Doyle's post

included the following statements: "Eolas Technologies Inc. announced today that it has
completed a licensing agreement with the University of California for the exclusive rights to a
pending patent covering the use of embedded program objects, or'applets,' within World Wide

Web documents."

74.

On August 2I,1995, at approximately 12:54 p.m. California time, Pei Wei

responded on the publicly-accessible W-WW-talk e-mail dishibution list to Doyle's "Press

Release." Pei Wei's response included the following statements: "[F]or the record, I just want
to point out that the 'technology which enabled Web documents to contain fully-interactive

"inline" program objects' was existing in ViolaWWW and was *released* to the public, and in

full

source code form, even back

in 1993... Actual conceptualization

and existence occurred

before'93."

75.

On August 2I,1995, at approximately 1:14 p.m. California time, Doyle

responded to the message Pei Wei had sent at approximately 12:54

p.m. Doyle's response

included the following statements: "'We've had this discussion before (last September,
remember?). You admitted then that you did NOT release or publish anything like this before
the Eolas demonstrations."

76.

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

responded to the message that Doyle had sent at approximately 1:14 p.m. Pei Wei's response

included the following statements:
Please carefully re-read my letter to you... I said Viola was
demonstrated in smaller settings, but before your demo. The
applets stuff was demo'ed to whomever wanted to see it and had
visited our office at O'Reilly & Associates (where I worked at the

time).
This is what I wrote on the VRML list:

26

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

That date (May 93), at least, predates your demo if I'm not
mistaken. Then around August 93, it was shown to a bunch
attendees at the first Web Conference in Cambridge. . . .

of

If you're talking about interactive apps *specifically* on the web,
ie applets inJined into HTML documents etc., and with bidirectional communications, then look at ViolaWWW as it existed
around late' 92 early' 93.

77.

When Pei Wei referred to the "plotting demo (the very one shown in the viola

paper)," he was referring to the plot of the fighter jet shown above in the window titled "XPlot."
See

supra\48.

78.

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).

79.

When Pei Wei referred to the "first Web Conference in Cambridge" "around

August 1993," he was referring to the "World-Wide V/eb Wizards Workshop" held in
Cambridge, Massachusetts on July 28-30, 1993.

80.

On information and belief people attending the V/izards workshop included Tim

Berners-Lee, Marc Andreesen, Eric Bina, Dale Dougherty, Scott silvey, and Pei wei.

81.

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

organizers of the Wizards workshop.
21

82.

On information and belief, Dale Dougherty worked at O'Reilly & Associates in

Northern Califomia.

83.

On information and belief, in 1992, Dale Dougherty learned about Viola and

recruited Pei Wei to join O'Reilly & Associates. Pei Wei's job at O'Reilly & Associates was to
continue developing the ViolaWWW browser.

84.

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

&

Associates in Northem California.

85.

On information an belief, when Pei Wei wrote "This demo was memorable

because someone and

I at ORA had lost sleep the night before the meeting, in order to cook up

that particular plotting demo," the other person he was referring to was Scott Silvey.

86.

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

be the inventor of the World Wide Web.

87.

Marc Andreesen and Eric Bina were the authors of Mosaic,

a

popular browser for

the World Wide Web created at the National Center for Supercomputing Applications (NCSA) at
the University of

88.

Illinois at Urbana-Champaign.

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

of

another popular browser for the World Wide Web.

89.

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

ViolaWWW browser and its ability to automatically invoke interactive objects embedded within
a webpage using the

"VOBJF" tag to at least Marc Andreesen and Tim Berners-Lee at the

Wizards workshop in Cambridge, Massachusetts in July 1993
application for the '906 patent was filed.

28

-

over one year before the

90.

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

Wizards workshop.

91.

Pei Wei's demonstration at the Wizards workshop of the ViolaWW-W browser

and its ability to automatically invoke interactive objects embedded within a webpage using the

"VOBJF" tag was a public use under 35 U.S.C. $ 102(b).

92.

Despite Pei Wei's communications to Doyle repeatedly providing evidence that

the ViolaW.WW browser was material prior art under 35 U.S.C. $ 102(b), Doyle never disclosed
the ViolaW.WW browser to the Patent Office during prosecution of application number
08/324,443, which matured into the '906 patent.

93.

Instead, on information and belief, Doyle deleted from his computer his emails

with Pei Wei on August 2I,1995. Doyle kept on his computer other emails from that timeframe,
however.

C.
94.

during prosecution of the (906 patent, Doyle collected
additional information about the ViolaWW\ü browser

In

1998,

In 1998, during prosecution of the '906 patent, Doyle obtained additional

information about the ViolaV/WW browser, but he still did not disclose any information about
the ViolaWV/W browser to the Patent Office, as explained in more detail below.

95.

During prosecution of the '906 patent, Doyle maintained a folder called "Viola

96.

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

stuff."

August 31,1994, at approximately 6:52 p.m. Califomia time, in which Pei Wei told Doyle,

"I

don't think this is the first case of program objects embedded in docs and transported over the

WWW. ViolaWWW

has had this capabilities for months and months

48.
29

now."

See

supraln44-