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

PART 4

OF

5

129.

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
ViolaW-W-W browser.
D.

130.

The ViolaWWW browser wâs material to the patentability of
the '906 patent

The ViolaWWW browser was material to the patentability of the claimed

inventions in the'906 patent.
131

.

There is a remarkable similarity between the ViolaWWW browser and the

preferred embodiment of the'906 patent:

i/358

ItÈ lt ! dcño ot\rblåWww eîìàcdrhg r vid¡tlri-aùg ogct üat lr gogmed
b ùt r.Þ ñd cmmfic!æ r¡atr r Þ¡ot Fo4$,
TÞffi-6d Þ$ ür g¡ot Flom ûr v,ftil tDb ûilùq s|d clvæ tüË øm

oomonstrolioni l¡leræl¡ve vilmlizolion of o 7. w€sk old 30

File Modo Owl¡iy Oplions

lhis

ViolaWWW
ViolaWWW

proiecl w¡ll serve lhc dwl purpo¡e of...

Fig. 9 of U.S. Patent No. 5,8380906

Both the ViolaWWW browser (on the left) and the preferred embodiment of the '90ó 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. In addition to prior art such as patents and
publications, 37 CFR 1.56 includes, for example, information on
possible príor publíc uses, sales, offers to sell, derived knowledge,
príor ínventíon by another, 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,< possíble príor publíc uses, sales, offers to sell, derived
knowledge, prìor ínventíon by another, inventorship conflicts, and the like.

>"Materiality is not limited to prior art but embraces any information that

a reasonable

examiner would be substantially likely to consider important in deciding whether to allow
an application to issue as a patent." Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer,

Inc.,326F.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

t34.

The Federal Circuit has confirmed that the ViolaWWW 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 I and 6
of the '906 patent anticipated by the ViolaW-WW browser under 35 U.S.C. $ 102(a), (b), and/or

(g).

See 399 F.3d

136.

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

The Federal Circuit held that "W'ei's ,ll4ay 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).

137.

The Federal Circuit held that a reasonable jury could find at least claims 1 and 6

of the '906 patent obvious in light of the ViolaW-W-W 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 ViolaWW-W 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 ViolaWWW browser was material to the patentability of the claimed invention in the

'906 patent, but he still did not discuss the ViolaV/WW browser further with Doyle.

140.

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.

141. The Patent Offrce has also confirmed that the ViolaWWW
to the patentability of the claimed inventions in the '906 patent.

41

browser was material

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 1994 Yiola paper, see supra

T43.

I48.

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

see suprafl1l44-48, and Doyle had downloaded and read that paper the same day, see

supralll

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 L994Yíolapaper 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

lgg4Yiolapaper was

part of the ViolaWW-W 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

l.[T

51-54.

146.

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

147.

Thus, the ViolaWWW browser software that was described in the August 1994

1993.

Viola paper and demonstrated to Sun Microsystems on ll4:ay 7,1993, also corroborates
anticipation of the claimed inventions in the '906 patent under 35 U.S.C. g 102(g).

I48.

Neither reexamination of the '906 patent considered whether the claimed

inventions were anticipated by "Wei's }lfay 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 reexaÍrtination, "fr]ejections will not be based on matters other than

patents or printed publications, such as public use."

,S¿¿

Manual of Patent Examining Procedure

(MPEP) $ 2258(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 Offrce during that examination the evidence they had

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

152.
the '906 patent

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

if Doyle or Krueger

of

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 08/324,443, which matured into the

'906 patent, Doyle and Krueger withheld extensive evidence about the ViolaW-W'W browser.

I54.

For example, Doyle failed to disclose the following material information: the

message from Raggett about the ViolaWW-W browser and embedded objects, see supra l.[ll 37-

40; the communications with Pei Wei in 1994 about the ViolaWW.W browser and the embedded
interactive plotting demo that was in public use in }l4ay 1993, see supra !ffi a3-61; the August

1994Yiola paper describing the ViolaWWW browser and the embedded interactive plotting
demo that was in public use in }l4ay 1993, see supra\\aa-a8; the communications with Pei Wei

in 1995 about the ViolaWWW browser and the embedded interactive plotting demo that was in
43

public use in }l{.ay 1993 and againat the Wizards conference in July 1993, see suprallT3-9I;
the contents of the "Viola stuff' folder that Doyle maintained, which included information about
the Wizards conference in July 1993 and links to the ViolaWWW browser software, including
source code for the embedded interactive plotting demo that was in public use

in .May 1993, see

supra TT 95-116; and Pei Wei's talk at Stanford in September 7994 about the embedded
interactive plotting demo that was in public use in }l4ay 1993, see supraffi

155.

In-123.

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

references regarding the ViolaWW-W browser including at least the August

lgg4Yiolapaper,

Doyle's communications with Pei V/ei in 1994 about the ViolaWWW browser and the
embedded interactive piotting demo that was in public use in May 1993; the Viola paper

describing the ViolaWW-W browser and the embedded interactive plotting demo that was in

public use in May 1993; and the contents of the "Viola stuff'folder that Doyle maintained and
was faxed to Krueger in August

of 1998, which included information

about the Wizards

conference in July 1993 and links to the ViolaW-WW browser software, including source code

for the embedded interactive þlotting demo that was in public use in }day 1993.

156. Doyle and Krueger

withheld information about the ViolaWW-W browser with the

specific intent to deceive the Patent Office.

I57.

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

'906 patent. See suprann22-30.

158.

The ViolaW.WW 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.

161.

See

suprafl7\.

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

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

application.

162.

On or about February 24, L997, Doyle and Krueger participated in an examiner

interview in an effort to secure allowance of the claims of the '906 patent application.
1

63

.

On or about }l4:ay 27 , 7997 , Doyle signed a 28-page declaration (including an

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

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

164.

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

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

of the '906 patent application.

165.

On or about November 6, 1997, Doyle and Krueger pafücipated 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 Office

during prosecution of the '906 patent.

45

168. Despite Doyle and Krueger's extensive personal involvement in the prosecution
of application number 08/324,443, 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 made if he had disclosed the ViolaWWW
browser to the Patent Office.

171. On or about May 6, 1996, the Patent Office rejected several claims as being
anticipated by the University of Southern California's "Mercury Project."

172. On or about August 6, 1996, a response to this rejection was submitted to the
Patent Office.

I73.

Doyle personally reviewed and approved the response submitted to the Patent

Office on or about August 6,1996.

I74.

The response submitted on or about August 6,1996, included the following

statements:

The claimed combination is fundamentally different from the
Mercury Project. In the claimed combination, the external object
and executable object are embedded by reference in the HTML
document and the object is displayed and processed within the
same window where a portion of the original document is
displayed. In the Mercury Project information is passed back to
the server and a new document is generated and displayed. There
is no display and processing the external object within the window
in which a portion of the original document is displayed.

I75.

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 "displayfing] and
46

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

displayed."

176.

On or about March 26, 1997, the Patent Office rejected several claims as being

obvious in light of "Khoyi et al. US Patent 5,206,951" in combination with other prior art.
I77

.

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 June2,1997.

I79.

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

statements:

[T]here is no suggestion in Khoyi of modifying Mosaic so that an
extemal application . . . is invoked to display and interactively
process the object within the document window while the
document is displayed by Mosaic in the same window.

180. 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 "an external application

fthat] is invoked to display and interactively process the object within the document window

while the document is displayed by fthe browser] in the same window."
1

8

1

.

On or about August 25 , 1997 , the Patent Office rej ected 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, 1991, 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 23,7997.

47

184. The response submitted on or about December 23, 1997, included

the following

statements:

fT]here is no disclosure or suggestion in Mosaic or Koppolu of
automatically invoking an external application when an embed text
format is parsed. Each of those references require user input,
specifically clicking with a mouse pointer, to activate external
applications to allow display and interaction with an external
object.

185. 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 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 ViolaWW-W prior art
demonstrates an intent to deceive the Patent Office.

187.

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 27,7997.

188.

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*," "1t's the most exciting thing to happen to the Web since

viola." Doyle's

response included the following statements:

If you take a ciose look at Java, you'll rcalize that it bears

a close

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

189. On or about }day 27 , 1997,Doyle

a

signed a declaration that was submitted to the

Patent Offrce. Doyle's declaration included the following statements:

48

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 extemal executable application to execute on the client
workstation in order to display an external object and enable
interactive processing of that object within a display window
created at the applet tag's location within the hypermedia
document being displayed in the browser-controlled window. The
book's authors further emphasize the novelty and nonobviousness
of this technology when they say, "Quite simply, Java-powered
pages are Web pages that have Java applets embedded in them.
They are also the Web pages with the coolest special effects
around .... Remember, you need a Java-compatibte Web
browser such as HotJava to view and hear these pages and to
interact with them; otherwiseo all you'll access is static Web
pages minus the special effects."

The above citations, as well as the additional details given
in Appendix A, provide ample evidence of the commercial success
of products incorporating features of the claimed invention, as well
as evidence of the widespread acclaim that these products have
gamered 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 ínvoke an external executable
49

application to execute on the client worl<station in order to dßplay
an external object and enable interactive processing ofthat object
within a displøy window created at the embed text þrmat's
location withín the hypermedia document being displayed ín the
brow s er-contro lled window.

190. The declaration Doyle signed on or about May 27, 1997, made no mention of
Viola or the ViolaWWW browser.

191. Doyle and Krueger's disclosure of Java forpurposes

of commercial success, but

not the ViolaWW'W 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 field believed that
the plotting demo for the VioIaWWW 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

concerning the validity of the '906 patent.

194.

Throughout the litigation, the third party asserted that the plotting demo involving

the ViolaWWIV browser anticipated the asserted claims of the'906 patent.

I95.

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 supra
IMay

7

ln 44-54,l4-78, and which the Federal Circuit has held was a "public use" on

, 1993,399 F.3d 1325, 1335 (Fed. Cir. 2005), and which Doyle himself came across from

his own research into Viola, see supra TT 108-123.

50

196. ln its contentions that the plotting demo involving the ViolaWWW

browser

anticipated the asserted claims of the '906 patent, the third party specifically identified the

VOBJF tag, the plot.v file, and the vplot executable application.
I97

.

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), ffi 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 progËm. 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 conceming 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.

199.

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

plotting demo.

200.

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

dated May 12,1993.

201' At the trial, exhibit DX37 included source code for the ViolaWWW
dated May 27,1993.

51

browser

202.

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

Microsystems on ll4.ay 7, 1993, in Northem California.

203.

DX37 contains code for a plotting demo similar to the plotting demo in DX34.

204.

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

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 I and 6 of the '906 patent.

See 399 F.3d

1325,1335 (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 ViolaWWW 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

2003.

in July and August2003.

211.

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

ViolaW-WW browser in DX37 anticipated the asserted 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 3I,1993

application for the '906 patent was filed
and

-

-

over one year before the

he posted DX37 on a publicly-accessible Intemet site

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

G.

213.

During the 2003 reexamination of the 0906 patent, Doyle and
Krueger concealed material information about the
Viola\ilWW 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.

214.

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 nn22-30.

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 Apn|27,2004, Doyle and Krueger participated in an

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

application. 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 Doyie nor Krueger mentioned the ViolaWWW browser during the interview.

53

219.

On or about }i4ay 6,2004, Doyle signed a declaration that was submitted to the

Patent Office in an effort to confirm the patentability of the claims of the '906 patent application.

This declaration made no mention of DX37 or the ViolaWWW browser.

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.

221.

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 ViolaWWW 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

222.

for the ViolaWWW browser, he missed the key points.

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

"DX37" version of the ViolaWWW

source code dated May 27, 1993.

223.

The compressed zip file for DX34 that Doyle and Krueger submitted to the Patent

Office was named viola930512.tar.gz.zip. When unzipped, it contained 1,027 files in 35 folders
consisting of 8 total megabytes in size.

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 ViolaWWW 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 1990s), the Patent Office
had no practical way to see the ViolaWW.W 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 ViolaWWW browser on a computer, it was
especially important for Doyle and Krueger to be candid with the Patent Office about the
contents of DX34 and DX37 so that the Patent Office could focus on the relevant files.

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 andDX3T in their entirety to the Patent Office during the first reexamination of the '906
patent.

231.

On information and belief the full 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 andDX37, see supra

TlJ 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 ITI 198, 206,nor did either disclose that Dr.

55

Kelly

specifically identified the VOBJF tag, the plot.v file, and the vplot executable application for
purposes

ofhis anticipation analysis, see supra

233.

On March 2,2005

-

11

197.

while the 2003 reexamination was still pending

-

the

Federal Circuit held that Dr. Kelly's testimony would allow a reasonable jury to conclude that

DX37 anticipates at least claims

1 and 6

of the '906 patent. 399 F.3d 1325, 1335 (Fed. Cir.

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 the2003 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 forreasons 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 considered DX37, the examiner did not know where to look

or what to look

for. There were too many files in DX37 for the examiner to read himself. Thus

the examiner was forced to resort to running text searches across all the files in DX37 in the hope

of stumbling across relevant information.

238.

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

alIDX3l

files that contained textual content. See http://www.dtsearch.com/.

239.

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

search terms.

56

240.

On information and belief, 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 fìle 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 satis$i the

"executable application" requirement of the claims of the '906 patent, and thus the examiner
concluded thatDX3T 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 abinary 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 is
interpreted (i.e., translated) into binary native executable machine
code at runtime. This extra step of translation results in an
unavoidable performance penalty as interpreted applications run
much slower than compiled native binary executable applications.

Accordingly, the "C-like" Viola scripts (or corresponding b¡ecode representations) are not "executable applicatiotls" . . . .

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 belief, Doyle and Krueger knew that the plotting demo used a

separate executable application for at least the following reasons:

o

The August 1994 Viola 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 suprall\f
48-49.

o

Pei Wei's message to Doyle on September 7, T994, 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

58

the graphics directly onto the window violaWWW has opened for

supra

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

:,ï:î";"
o

""

;;ï:ïl:*'

Pei Wei's presentation at Stanford

prot of a fighter jet in a window titled

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 ViolaW'WW 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." See supra tl 1 18.

c
o
249.

The trial testimony of Pei Wei. ^lee

The expert opinion of Dr. Kelly. See supra TT 197-198,206.

supralll99.

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

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

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 ViolaWWW browser during the original
prosecution of the '906 patent, constituted a knowing and intentional violation of their duty

of

candor and good faith in dealing with the Patent Office.

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 suprann22-30.

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

application.

60