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 5

OF

5

257.

On or about October I,2007, 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 May 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 lgg4Yiolapaper to the

Patent Office on or about August

263.

2I,2006.

This was the first time Doyle and Krueger had disclosed the August l994Yiola

paper to the Patent Office.

264.

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

August 31,1994, see suprafln449,56, 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 lgg4Yiolapaper no

later than August of 1998, but waited 8 years

-

and two prosecutions of the '906 patent

disclose that paper to the Patent Office

6l

- 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 l994Yiola paper, see supra

268.

I48.

The rejection based on the August 1994Yiolapaper 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. lnstead 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 Viola paper.

271.

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 thatDX3T did not invalidate the asserted claims of the '906 patent.

272.

The conclusions about DX37 reached in the 2003 reexamination were effoneous

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

suprøffi229-

2s0.

273.

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

infected the 2005 reexamination.

m.

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 lune2, 1997,Doyle submitted to the Patent Office a

sworn declaration executed on or about }i4ay 27, 1997, for the purpose of overcoming the
examiner's rejection on March 26,7997.

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 feafures 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 l8 months after the
applicants initially demonstrated the first Web plug-in and applet technology to the founders
Netscape and engineers employed by Sun Microsystems in November and December

of

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:
*1993 Demos to Sun & Netscape's Founders."

281.

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. V/ithout these false assertions, Doyle had no
support for his argument that Netscape and Sun copied his alleged invention or that his
technology was Íesponsible for their commercial success.

282.

By making these false statements under oath to the Patent Offrce, 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. ç220t.

64

COUNT TV

285.

of

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

its Counterclaims.

286.

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

infringement' 985 Patent.

281.

Although Eolas alleges in its Complaint that Staples has directly and/or indirectly

infünged the claims of the '985 Patent, Staples has not directly andlor indirectly infünged, and
does not directly and/or indirectly infringe, any claim of the '985 Patent.

288.

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

infüngement 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.

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

the'985 Patent.

291.

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 invalid for failure to comply with the patent laws, including, but
not limited to, 35 U.S.C. $$ 101, 702, 103,

292.

Il2,

and 113.

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 pattern 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 filed 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 assefi 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 California 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 luly 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.

312.

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.
3

13.

On or about April I 1, 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 90i006,831 [the 2003 reexamination of the '906 patent] and Re exam
90/007,838 fthe 2005 reexamination of the '906 patent] for the same reasons as set forth in the

NIRC of the two Re exams."

319.

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.

321.

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.
REOUESTS FOR RELIEF
Staples respectfully 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 from Staples;

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

employees, attorneys, 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 Staples;
69

D. An a'ward to Staples of its reasonable

attorneys' fees and costs;

E. A declaration

that Staples has not infünged 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: August 4,2011

Respectfully submitted,

/s/ Michael E. Richardson
Michael E. Richardson, TX Bar No. 24002838
BECK REDDEN & SECREST
l22I McKinney, Suite 4500
Houston, TX77010
Telephone: (7 13) 9 5l -6284
Facsimile: (7 13) 951 -3720
mri chardson@brs fi rm. com

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

Facsimile: [phone]
mark. matuschak@wilmerhale. com
donald. steinb erg@wilmerhale. com

Kate Hutchins, admitted pro hac vice

WILMER CUTLER PICKERING
HALE AND DORR LLP
399 Park Avenue

New York, NY 10011
Telephone: [phone]
Facsimile : (212) 23 0 -8888
kate.hutchins@wilmerhale. com
Daniel V. Williams, admitted pro hac vice
WILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue NW
Washington, DC 20006
Telephone: [phone]
Facsimile: (202) 663 -63 63
daniel.williams@wilmerhale. com

ATTORNEYS FOR DEFENDAI{T
STAPLES, INC.

7t

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
CVI/ECF system per Local Rule CV-5(aX3). Any other counsel of record will be served by
facsimile transmission and/or first class mail this 4ü day of August, 2011.

/s/ Michael E. Ríchardson
Michael E. Richardson

72