Eolas Technologies Incorporated v. Adobe Systems Incorporated et al

Filing 887

ANSWER to 810 Answer to Amended Complaint, Counterclaim by Eolas Technologies Incorporated.(McKool, Mike)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

Eolas Technologies Incorporated,
Plaintiff,
vs.
Adobe Systems Inc., Amazon.com, Inc.,
Apple Inc., Argosy Publishing, Inc.,
Blockbuster Inc., CDW Corp.,
Citigroup Inc., eBay Inc., Frito-Lay, Inc.,
The Go Daddy Group, Inc., Google Inc.,
J.C. Penney Company, Inc., JPMorgan
Chase & Co., New Frontier Media, Inc.,
Office Depot, Inc., Perot Systems Corp.,
Playboy Enterprises International, Inc.,
Rent-A-Center, Inc., Staples, Inc., Sun
Microsystems Inc., Texas Instruments Inc.,
Yahoo! Inc., and YouTube, LLC
Defendants.

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Civil Action No. 6:09-CV-00446-LED

JURY TRIAL

EOLAS’ REPLY TO CDW’S FOURTH ANSWER AND COUNTERCLAIMS TO
EOLAS’ FIRST AMENDED COMPLAINT
Plaintiff Eolas Technologies Incorporated (“Eolas” or “Plaintiff”) hereby replies to the
Counterclaim set forth in CDW LLC’s (“CDW”) Fourth Answer and Counterclaims to Plaintiff’s
First Amended Complaint (Dkt. 810, hereinafter “Answer and Counterclaims”) as follows:
COUNTERCLAIM
1.

Paragraph 1 of CDW’s Counterclaims does not contain a statement which

warrants an affirmance or denial. To the extent any response is warranted, Eolas responds as
follows: denied.
2.

Eolas admits that CDW purports to bring claims for declaratory judgment and that

CDW’s Answer and Counterclaims arise under the Patent Laws of the United States and that this

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Court has jurisdiction over these counterclaims.

Except as so admitted, Eolas denies the

allegations in paragraph 2 of CDW’s Answer and Counterclaims.
3.

On information and belief, based solely on CDW’s response to paragraph 6 of

Eolas’ First Amended Complaint, Eolas admits the allegations in paragraph 3 of CDW’s Answer
and Counterclaims.
4.

Eolas admits the allegations in paragraph 4 of CDW’s Answer and Counterclaims.

5.

Eolas admits the allegations in paragraph 5 of CDW’s Answer and Counterclaims.

6.

Eolas admits that this Court has personal jurisdiction over it and that venue is

proper in this District, and in the Tyler Division. Except as so admitted, Eolas denies the
allegations in paragraph 6 of CDW’s Answer and Counterclaims.
COUNT I
DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING U.S.
PATENT NO. 5,838,906
7.

Paragraph 7 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
8.

Eolas admits the allegations in paragraph 8 of CDW’s Answer and Counterclaims.

9.

Paragraph 9 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
10.

Eolas admits the allegations in paragraph 10 of CDW’s Answer and

Counterclaims.
11.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
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To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 11 of
CDW’s Answer and Counterclaims.

12.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
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McKool 396267v1

the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 12 of
CDW’s Answer and Counterclaims.
13.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 13 of
CDW’s Answer and Counterclaims.

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14.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 14 of
CDW’s Answer and Counterclaims.
15.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.

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Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 15 of
CDW’s Answer and Counterclaims.
16.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 16 of
CDW’s Answer and Counterclaims.

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17.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 17 of
CDW’s Answer and Counterclaims.
18.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.

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McKool 396267v1

Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 18 of
CDW’s Answer and Counterclaims.
COUNT II
DECLARATORY JUDGMENT OF PATENT INVALIDITY REGARDING U.S. PATENT
NO. 5,838,906
19.

Paragraph 19 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
20.

Eolas admits the allegations in paragraph 20 of CDW’s Answer and

Counterclaims.
21.

Paragraph 21 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
22.

Eolas admits the allegations in paragraph 22 of CDW’s Answer and

Counterclaims.
23.

Eolas denies the allegations in paragraph 23 of CDW’s Answer and

Counterclaims.

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COUNT III
DECLARATORY JUDGMENT OF NON-INFRINGEMENT REGARDING U.S.
PATENT NO. 7,599,985
24.

Paragraph 24 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
25.

Eolas admits the allegations in paragraph 25 of CDW’s Answer and

Counterclaims.
26.

Paragraph 26 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
27.

Eolas admits the allegations in paragraph 27 of CDW’s Answer and

Counterclaims.
28.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 28 of CDW’s Answer and Counterclaims.
29.

Eolas admits the allegations in paragraph 29 of CDW’s Answer and

Counterclaims.
30.

The allegations in paragraph 30 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
31.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

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The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 31 of CDW’s Answer and Counterclaims.
32.

The allegations in paragraph 32 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
33.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 33 of CDW’s Answer and Counterclaims.
34.

The allegations in paragraph 34 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
35.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 35 of CDW’s Answer and Counterclaims.
36.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 36 of CDW’s Answer and Counterclaims.
37.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

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The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 37 of CDW’s Answer and Counterclaims.
38.

The allegations in paragraph 38 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
39.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 39 of CDW’s Answer and Counterclaims.
40.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 40 of CDW’s Answer and Counterclaims.
41.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 41 of CDW’s Answer and Counterclaims.
42.

The allegations in paragraph 42 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
43.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

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The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 43 of CDW’s Answer and Counterclaims.
44.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 44 of CDW’s Answer and Counterclaims.
45.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 45 of CDW’s Answer and Counterclaims.
46.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 46 of CDW’s Answer and Counterclaims.
47.

The allegations in paragraph 47 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
48.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 48 of CDW’s Answer and Counterclaims.
49.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

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The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 49 of CDW’s Answer and Counterclaims.
50.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 50 of CDW’s Answer and Counterclaims.
51.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 51 of CDW’s Answer and Counterclaims.
52.

Eolas admits that its infringement contentions against CDW are in the claim

charts attached hereto as Exhibits A, B, and C.

The infringement contentions speak for

themselves. No further affirmance or denial is warranted in response to the allegations in
paragraph 52 of CDW’s Answer and Counterclaims.
53.

The allegations in paragraph 53 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the extent
a response is required, Eolas answers as follows: denied.
54.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
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McKool 396267v1

and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 54 of CDW’s Answer and
Counterclaims.
55.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 55 of CDW’s Answer and
Counterclaims.
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McKool 396267v1

56.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.
Except as so admitted, Eolas denies the allegations in paragraph 56 of
CDW’s Answer and Counterclaims.
57.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
Eolas is asserting claims 24 and 28 of U.S. Patent No. 7,599,985
(and their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
"executable application" limitation is satisfied by something other
than a Microsoft product (e.g. Silverlight or ActiveX Controls).
Except as so admitted, Eolas denies the allegations in paragraph 57 of CDW’s Answer
and Counterclaims.

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58.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
Eolas is asserting claims 24 and 28 of U.S. Patent No. 7,599,985
(and their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
"executable application" limitation is satisfied by something other
than a Microsoft product (e.g. Silverlight or ActiveX Controls).
Except as so admitted, Eolas denies the allegations in paragraph 58 of CDW’s Answer
and Counterclaims.
59.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
Eolas is asserting claims 24 and 28 of U.S. Patent No. 7,599,985
(and their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
"executable application" limitation is satisfied by something other
than a Microsoft product (e.g. Silverlight or ActiveX Controls).
Except as so admitted, Eolas denies the allegations in paragraph 59 of CDW’s Answer
and Counterclaims.
60.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
Eolas is asserting claims 24 and 28 of U.S. Patent No. 7,599,985
(and their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
"executable application" limitation is satisfied by something other
than a Microsoft product (e.g. Silverlight or ActiveX Controls).

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McKool 396267v1

Except as so admitted, Eolas denies the allegations in paragraph 60 of CDW’s Answer
and Counterclaims.
61.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
Eolas is asserting claims 24 and 28 of U.S. Patent No. 7,599,985
(and their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
"executable application" limitation is satisfied by something other
than a Microsoft product (e.g. Silverlight or ActiveX Controls).
Except as so admitted, Eolas denies the allegations in paragraph 61 of CDW’s Answer
and Counterclaims.
62.

Eolas admits that correspondence was sent from Eolas’ counsel to counsel for all

defendants in the above captioned matter on August 23, 2010. That correspondence included the
following text:
To confirm, we provide the following representation to all
defendants:
Eolas is asserting claims 1, 4, 5, 6, 9, and 10 of the ’906 patent
(and their dependent claims) and claims 1, 16 and 36 of the ’985
patent (and their dependent claims) against the defendants only for,
and is seeking damages only for, acts of infringement wherein the
“browser application” limitation is satisfied by something other
than Microsoft Internet Explorer.
Eolas is asserting claims 4, 5, 9 and 10 of the ’906 patent (and their
dependent claims) against the defendants only for, and is seeking
damages only for, acts of infringement wherein the “executing, on
the network server” or “said network server to execute” limitations
are satisfied by something other than Microsoft server software.
Eolas is asserting claims 20, 32, 40 and 44 of the ’985 patent {and
their dependent claims) against the defendants only for, and is
seeking damages only for, acts of infringement wherein the
“communicating via a/the network server”' limitation is satisfied
by something other than Microsoft server software.

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Except as so admitted, Eolas denies the allegations in paragraph 62 of CDW’s Answer
and Counterclaims.
63.

Denied.

COUNT IV
DECLARATORY JUDGMENT OF PATENT INVALIDITY REGARDING U.S. PATENT
NO. 7,599,985
64.

Paragraph 64 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
65.

Eolas admits the allegations in paragraph 65 of CDW’s Answer and

Counterclaims.
66.

Paragraph 66 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
67.

Eolas admits the allegations in paragraph 67 of CDW’s Answer and

Counterclaims.
68.

Eolas denies the allegations in paragraph 68 of CDW’s Answer and

Counterclaims.
COUNT V
DECLARATORY JUDGMENT OF UNENFORCEABILITY REGARDING U.S.
PATENT NO. 5,838,906
69.

Paragraph 69 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.

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70.

Eolas denies the allegations in paragraph 70 of CDW’s Answer and

Counterclaims.
71.

Eolas admits the allegations in paragraph 71 of CDW’s Answer and

Counterclaims.
72.

Eolas admits that Charles E. Krueger was a patent prosecutor for U.S. Patent Nos.

5,838,906 and 7,599,985. Except as so admitted, Eolas denies the allegations in paragraph 72 of
CDW’s Answer and Counterclaims.
73.

Eolas admits the allegations in paragraph 73 of CDW’s Answer and

Counterclaims.
74.

Eolas admits the allegations in paragraph 74 of CDW’s Answer and

Counterclaims s.
75.

The allegations in paragraph 75 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the
extent a response is required, Eolas answers as follows: denied.
76.

Eolas denies the allegations in paragraph 76 of CDW’s Answer and

Counterclaims.
77.

Eolas denies the allegations in paragraph 77 of CDW’s Answer and

Counterclaims.
78.

Eolas admits that Doyle worked at the University of California, San Francisco and

that he and the other named inventors conceived of the inventions claimed in the ’906 and ’985
patents. Except as so admitted, Eolas denies the allegations in paragraph 78 of CDW’s Answer
and Counterclaims.

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79.

Eolas admits the allegations in paragraph 79 of CDW’s Answer and

Counterclaims.
80.

Eolas admits the allegations in paragraph 80 of CDW’s Answer and

Counterclaims.
81.

Eolas admits the allegations in paragraph 81 of CDW’s Answer and

Counterclaims.
82.

Eolas admits that Doyle left his job at the University of California prior to

founding Eolas. Except as so admitted, Eolas denies the allegations in paragraph 82 of CDW’s
Answer and Counterclaims.
83.

Eolas admits that Doyle has had and has a financial interest in Eolas. Except as

so admitted, Eolas denies the allegations in paragraph 83 of CDW’s Answer and Counterclaims.
84.

Eolas admits that there exists a license agreement between Eolas and The Regents

of the University of California. Except as so admitted, Eolas the allegations in paragraph 84 of
CDW’s Answer and Counterclaims.
85.

Eolas admits that Doyle was involved in some aspects of the prosecution of the

‘906 patent, some aspects of the reexaminations of the ‘906 patent, and some aspects of the
prosecution of the ‘985 patent. Eolas also admits that Doyle has had and has a financial interest
in Eolas. Except as so admitted, Eolas denies the allegations in paragraph 85 of CDW’s Answer
and Counterclaims.
86.

Eolas denies the allegations in paragraph 86 of CDW’s Answer and

Counterclaims.
87.

Eolas denies the allegations in paragraph 87 of CDW’s Answer and

Counterclaims.

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88.

Eolas denies the allegations in paragraph 88 of CDW’s Answer and

Counterclaims.
89.

Eolas admits the allegations in paragraph 89 of CDW’s Answer and

Counterclaims.
90.

Eolas admits that the application for the ‘906 patent was filed on October 17,

1994. The remaining allegations in paragraph 90 of CDW’s Answer and Counterclaims contain
statements and/or conclusions of law which do not warrant an affirmance or denial. To the
extent a response is required, Eolas answers as follows: denied.
91.

Eolas denies the allegations in paragraph 91 of CDW’s Answer and

Counterclaims.
92.

Eolas admits that the District Court issued a publicly available ruling (Docket

Number 491) in the action (N.D.Ill. 1:99-cv-626) which states:
On May 20, 1994, Michael Doyle received an email from David
Raggett which said:
The EMBED tag was dropped after the WWW workshop in
Boston, late last July. It was felt by most browser writers that
further study was needed on how best to implement object level
embedding in Web browsers. This feature is still on most people’s
agenda though.
You might want to look at Viola which I seem to remember takes
advantage of the tk tool kit to provide a level of embedding. You
can find a point to viola off the CERN WWW project page.
Beyond this ruling, Eolas lacks knowledge or information sufficient to form a belief as to the
truth of the allegations in paragraph 92 of CDW’s Answer and Counterclaims and, on that basis,
denies them.
93.

Eolas admits that the District Court issued a publicly available ruling (Docket

Number 491) in the action (N.D.Ill. 1:99-cv-626) which states:

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On May 20, 1994, Michael Doyle received an email from David
Raggett which said:
The EMBED tag was dropped after the WWW workshop in
Boston, late last July. It was felt by most browser writers that
further study was needed on how best to implement object level
embedding in Web browsers. This feature is still on most people’s
agenda though.
You might want to look at Viola which I seem to remember takes
advantage of the tk tool kit to provide a level of embedding. You
can find a point to viola off the CERN WWW project page.
Beyond this ruling, Eolas lacks knowledge or information sufficient to form a belief as to the
truth of the allegations in paragraph 93 of CDW’s Answer and Counterclaims and, on that basis,
denies them.
94.

Eolas admits that David Martin was one of Doyle’s colleagues at the University

of California in San Francisco and that the ‘906 patent lists “David C. Martin” as one of the
inventors. Eolas admits that there is a document which purports to contain the following
contents as quoted: “Fri May 20 09:00:35 1994”; “David Martin”, “Pei Wei”;
“In order to do better testings and support of ViolaWWW, I would
like to solicit donations for guest accounts on the major Unix
platforms. (excuse me for asking this on the list, but…)
At this point, this means anything not close to SunOS 4.1.3 and
Ultrix 4.2 which I have access to, and paticularly [sic] (but not
limited to!) the AIX R6000, Dec Alpha, HP Snake, and SGI
systems.
Here’s the deal:
* You give me a guest account, say for atleast [sic] 3 months, on a
machine that I can access via the net
* I’ll restrict my use of the account to viola related portability
testings, like making sure that viola compiles and runs on the
platform. I’ll probably do this only just before releases.
* You’ll get updated ViolaWWW executable.
* Acknowledgement in the Viola credits list, and appreciation of
the users who’re current [sic] having trouble compiling viola on
the particular platforms.

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So, if your organization has some CPU crunchies to spare, good
network connectivity, don't have a firewall, want to help viola
development, etc, please drop me a note. Based mostly on network
connectivity, I'll select one (maybe two) offer(s) for each different
platform.”
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of
the allegations in paragraph 94 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
95.

Eolas denies the allegations in paragraph 95 of CDW’s Answer and

Counterclaims.
96.

Eolas denies the allegations in paragraph 96 of CDW’s Answer and

Counterclaims.
97.

Eolas denies the allegations in paragraph 97 of CDW’s Answer and

Counterclaims.
98.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Tue, 30 Aug 1994 23:15:10 -0700”; “FYI . . . press release”; “Researchers
at the U. of California have created software for embedding interactive program objects within
hypermedia documents. Previously, object linking and embedding (OLE) has been employed on
single machines or local area networks using MS Windows-TM-. This UC software is the first
instance where program objects have been embedded in documents over an open and distributed
hypermedia environment such as the World Wide Web on the Internet.” Except as so admitted,
Eolas denies the allegations in paragraph 98 of CDW’s Answer and Counterclaims..

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99.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 99 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
100.

Eolas admits that there is a document which purports to contain the following

statement: “Been meaning to propose something for VRML ever since the Geneva W3 conf. But
anyway, any body interested in learning more about how violaWWW does this embedded
objects thing can get a paper on it from ftp://ora.com/pub/www/viola/violaIntro.ps.gz” Eolas
lacks information regarding the accuracy of the quote(s), the purported date on the document, the
identity of the sender(s)/recipient(s), the authenticity of the document, etc.

Except as so

admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of the
allegations in paragraph 100 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
101.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 101 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
102.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 102 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
103.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 103 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
104.

Eolas admits that a publicly available opinion cited as 399 F.3d 1325, 1330 (Fed.

Cir. 2005) contains the following statement:

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Michael D. Doyle (Doyle), one of the inventors of the '906 patent,
knew of Viola yet did not disclose any information regarding that
reference to the United States Patent and Trademark Office (PTO).
On August 31, 1994, Doyle issued a press release to an e-mail list
indicating that researchers at the University of California had
"created software for embedding interactive program objects
within hypermedia documents." That same day, Wei contacted
Doyle via e-mail in response to the press release. Wei alleged that
his May 1993 demonstration of Viola (version DX34) to Sun
Microsystems engineers exhibited a way to embed interactive
objects and transport them over the web. Wei directed Doyle to his
paper about Viola (the Viola paper), which was available on the
Internet at least by August 13, 1994. Doyle downloaded and read
the paper. In a later email exchange, Doyle attempted to get Wei to
concede that he was not the first to invent. Additionally, Doyle told
Wei the inventions were different.
The opinion speaks for itself, and thus no further response is required. To the extent further
response is required, Eolas answers as follows: denied.
105.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Wed, 31 Aug 1994 21:06:17 -0700”; “Doyle”; “Pei Wei”; “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 now”; “How many months and
months? We demonstrated our technology in 1993”. Eolas lacks information regarding the
accuracy of the quote(s), the purported date on the document, the identity of the
sender(s)/recipient(s), the authenticity of the document, etc. Except as so admitted, Eolas lacks
knowledge or information sufficient to form a belief as to the truth of the allegations in
paragraph 105 of CDW’s Answer and Counterclaims and, on that basis, denies them.
106.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Date: Wed 31, Aug 94 23:16:41 - 0700”; “Doyle”; “Pei Wei”;
Not that I wish to content on the point of simply who’s first :) But,
let’s see… Wish I had kept better records and wrote papers about
things as they happened!)

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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 particular 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
objects over HTTP (or whatever) and plug them into documents.
Of course, our wire-frame plotting demo isn’t anywhere as
comphrehensive as yours. But, the point was that there was a way
to embed programmable & interactive objects into HTML
documents.
You see, the basic object/interpreter engine has been in viola from
day one of the old ViolaWWW from mid 1992. So basically it just
had to wait until the second (current) incarnation of ViolaWWW
for the HTML widget (as it were) to get good enough such that it
was feasible to embed such interactive objects inside of a
document.
If I dig more and harder into my archives I might find more earlier
evidence of having shown this to outside parties (we do these
demos to interested parties some times)… Unfortunately I don’t
remember when it was (definitely earlier than May 93) that we
showed Time Bernners-Lee a very early demo of the second
ViolaWWW with embedded interactive objects.
I don’t know how your system works (maybe you could post or
send me some detailed info or URLs), but I should mention that
Viola’s basic approach is to use an interpreter to run the “program
objects” (as opposed to linked-in executables).
I have say, thou [sic], that lots of this stuff is still in the Research
& Demo stage, and there’s still lots of details to work out.
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc.
Furthermore, Eolas admits that there is a document which purports to contain the following
contents as quoted: “Thu. 1 Sep 94 00:08:19 - 0700”, “Doyle”, “Pei Wei”;
[e-mail] (Michael D. Doyle):
> As Pei’s paper on Viola states, that package did not support
what it calls
> “embeddable program objects” until 1994. As our WWW server
shows
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> (http://visembryo.ucsf.edu/), we demonstrated a fully functional
volume
> visualization application embedded within a WWW document in
1993.
Well, Viola’s model was *demonstrated* in 1993, *released*
freely in 1994.
But we may be comparing apples and kiwis here, and nevermind
on this time thing as far as I’m concerned.
> Furthermore, Viola merely implements an internal scripting
language that
> allows one to code “mini application” scripts that are
transferred to the
> local client, and then interpreted an run locally on the client
machine. As
> Pei correctly notes in his paper, this is similar to the use of
EMACS’
> internal programming capabilities.
Right, this is the basic approach in viola. The mention of OLE had
me suspect that your system does not sue a scripting language.
That’s fine. It’s just another way of doing it.
> What we have accomplished is much different. Just as the
Microsoft Windows
> OLE function allow any OLE-compliant application to be
embedded, in its
> native form, within, for example, a MS Word for Windows
document, we can
> embed ANY interactive application IN ITS NATIVE FORM
within a WWW document.
> These program objects not only effectively encapsulate both data
and
> methods, they also “encapsulate” computational resources,
since the the
> program objects are, themselves, client server applications that
actually
> run remotely on one or more distributed computational server.
The access
> of the remote machines is transparent to the user, allowing, for
example,
> someone running a WWW client on a laptop to interactively
manipulate and
> analyze huge datasets running on a distributed array of
supercomputers
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> distributed across the country.
Actually, you could do it different ways. You could have the viola
object running entirely locally, or have the object act as a front-end
to a remote back-end.
There’s no reason why Viola’s model can’t also do a client-server
application (thou, OK not now quite the way you do it). The chatdrawing demo in the paper shows this. That mini app starts up,
then makes a connection to a message relay server.
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. (Viola scripts are
compiled to byte-codes for speed’s sake, but no, it’s not fast
enough to do the computation necessary for the plotting!)
Anyway, it sounds like what you have is a really defined standard
interface (akin to the OLE API), where as Viola’s model doesn’t
have a one (yet :-) -- Viola uses scripting rather than a stardard API
for the glues.
> The applicability for VR systems is obvious. One of the major
hurdles to
> widespread acceptance of VR technology has been the burden of
large local
> computational resources.
Our approach allows that
computational burden to
> be distributed to suitable remote “visualization engines,”
thereby allowing
> users to employ low-end machines to access sophisticated
graphical
> environments. It further allows easy access to those applications
through
> the World Wide Web.
Yup. No arguments here… There seems to be a few different
ways to do VRML. I was more interested in offering yet another
piece of what it might take to realise VRML.
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
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as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of
the allegations in paragraph 106 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
107.

Eolas denies the allegations in paragraph

107 CDW’s Answer and

Counterclaims.
108.

Eolas admits that Doyle was living in Northern California on or about August 31,

1994. Except as so admitted, Eolas lacks knowledge or information sufficient to form a belief as
to the truth of the allegations in paragraph 108 CDW’s Answer and Counterclaims and, on that
basis, denies them.
109.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 109 CDW’s Answer and Counterclaims and, on that basis, denies
them.
110.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 110 CDW’s Answer and Counterclaims and, on that basis, denies
them.
111.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 111 CDW’s Answer and Counterclaims and, on that basis, denies
them.
112.

Eolas admits the allegations in paragraph 112 CDW’s Answer and Counterclaims.

113.

Eolas admits that the ‘906 patent contains the following statement: “An example

of a browser program is the National Center for Supercomputing Application’s (NCSA) Mosaic
software developed by the University of Illinois at Urbana/Champaign, Ill. Another example is
“Cello” available on the Internet at http://www.law.cornell.edu/.” The remainder of the publicly

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available application for the ‘906 patent speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
114.

Eolas admits that the application for the ‘906 patent included at least one

information disclosure statement. The publicly available information disclosure statement(s)
speaks for itself/themselves, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
115.

Eolas admits that there is a declaration signed by Doyle dated November 22, 1994

which contains the information included in quotes in paragraph 129 of Adobe’s Answer and
Counterclaims. Except, as otherwise admitted, Eolas denies the allegations of paragraph 115 of
CDW’s Answer and Counterclaims.
116.

Eolas admits that the prosecution history for the ‘906 patent is publicly available.

The publicly available prosecution history speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
117.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 117 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
118.

Eolas admits that there is a document which contains the following contents as

quoted: “Mon, 21 Aug 1995”, “Doyle”,
>> 8/21/95 CHICAGO: 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.
Except as so admitted, Eolas denies the allegations in paragraph 118 of CDW’s Answer and
Counterclaims.

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119.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Mon, 21 Aug 1995”; “Doyle”, “Pei Wei”;
>I sincerely hope this patent isn’t going to stick, for the good of
>the web as a whole. . .
>
>And for 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 occured [sic] before ’93
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
as so admitted, Eolas denies the allegations in paragraph 119 of CDW’s Answer and
Counterclaims.
120.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Mon, 21 Aug 1995 13:14:59 -0700”, “Doyle”; “Pei Wei”; “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.” Eolas lacks information regarding
the accuracy of the quote(s), the purported date on the document, the identity of the
sender(s)/recipient(s), the authenticity of the document, etc. Except as so admitted, Eolas denies
the allegations in paragraph 120 of CDW’s Answer and Counterclaims.
121.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Mon, 21 Aug 1995 16:09:46 -0700”; “Doyle”; “Pei Wei”;
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:
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> Not that I wish to content [sic] on the point of simply who’s first :)
> But, let’s see… (Wish I had kept better records and wrote papers
>about things as they happened!)
>
> 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 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 of
attendees at the first Web Conference in Cambridge. So, it was shown, just not
with lots of publicity and noise.
I’m sure I could find more evidence if I spent/waste the time of digging thru
archives.
If you’re talking about any display code transferred over network, look at a
number of predating systems, including say net-transmitted postscript (NeWS).
For transmitted interactive applications, even the early Viola (started around 88,
relased [sic] 1991) had a viola-app net transfer tool (the idea is to have something
like a Hypercard like environment on the scale of the net).
If you’re talking about interactive apps *specifically* on the web,
ie applets in-lined into HTML documents etc., and with bidirectional
communications, then look at ViolaWWW as it existed around late ’92 early ’93.
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Eolas
denies the allegations in paragraph 121 of CDW’s Answer and Counterclaims.
122.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Date: Fri, 28 Jan 94 08:02:44 -0800”;
Right now, the ViolaWWW that is under development can embed viola
objects/applications inside of HTML documents. This is useful in that, for
example, if you needed a hyper-active tree widget in your HTML document, and
that HTML+ doesn’t happen to define it, you could build it as a mini viola
application. Same thing with customized input-forms that could conceivably do
complicated client-side checking. Or, complex tables. Or, a chess board.

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Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of
the allegations in paragraph 122 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
123.

Eolas admits that there is a document which purports to contain the following

contents as quoted:
The new ViolaWWW is now available for ftp’ing. It’s beta and
feedback is very welcomed. The README file follows…

ViolaWWW, Version 3.0 Beta

Feb 23 1994

ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.
….
Notable features in the new ViolaWWW
_________________________________
….
*Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini voila applications (ie: a
chess board), or can cause mini apps to be placed in the toolbar.
….

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Availability
__________
Source and binary can be found in ftp://ora.com/pub/www/viola.
Sparc binary is supplied.
….
Pei Y. Wei ([e-mail])
O’Reilly & Associates, Inc.
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of
the allegations in paragraph 123 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
124.

Eolas admits that there is a document which purports to contain the following

contents as quoted:
ViolaWWW, Version 3.1 Beta

Mar 23 1994

ViolaWWW is an extensible World Wide Web hypermedia
browser for XWindows.
….
Notable features in the new ViolaWWW
_________________________________
….

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*Embeddable in-document and in-toolbar programmable viola
objects. A document can embed mini voila applications (ie: a
chess board), or can cause mini apps to be placed in the toolbar.
….
Availability
__________
Source and binary can be found in ftp://ora.com/pub/www/viola.
Sparc binary is supplied.
….
Pei Y. Wei ([e-mail])
O’Reilly & Associates, Inc.
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of
the allegations in paragraph 124 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
125.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “plotDemo.html.” Eolas lacks information regarding the accuracy of the
quote(s), the purported date on the document, the identity of the sender(s)/recipient(s), the
authenticity of the document, etc. Except as so admitted, Eolas lacks knowledge or information
sufficient to form a belief as to the truth of the allegations in paragraph 125 of CDW’s Answer
and Counterclaims and, on that basis, denies them.
126.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “plot.v.” Eolas lacks information regarding the accuracy of the quote(s), the
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McKool 396267v1

purported date on the document, the identity of the sender(s)/recipient(s), the authenticity of the
document, etc. Except as so admitted, lacks knowledge or information sufficient to form a belief
as to the truth of the allegations in paragraph 126 of CDW’s Answer and Counterclaims and, on
that basis, denies them.
127.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 127 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
128.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 128 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
129.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 129 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
130.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Thu. 1 Sep 94 00:08:19 - 0700”, “Doyle”, “Pei Wei”;
[e-mail] (Michael D. Doyle):
> As Pei’s paper on Viola states, that package did not support
what it calls
> “embeddable program objects” until 1994. As our WWW server
shows
> (http://visembryo.ucsf.edu/), we demonstrated a fully functional
volume
> visualization application embedded within a WWW document in
1993.
Well, Viola’s model was *demonstrated* in 1993, *released*
freely in 1994.
But we may be comparing apples and kiwis here, and nevermind
on this time thing as far as I’m concerned.
> Furthermore, Viola merely implements an internal scripting
language that

36
McKool 396267v1

> allows one to code “mini application” scripts that are
transferred to the
> local client, and then interpreted an run locally on the client
machine. As
> Pei correctly notes in his paper, this is similar to the use of
EMACS’
> internal programming capabilities.
Right, this is the basic approach in viola. The mention of OLE had
me suspect that your system does not sue a scripting language.
That’s fine. It’s just another way of doing it.
> What we have accomplished is much different. Just as the
Microsoft Windows
> OLE function allow any OLE-compliant application to be
embedded, in its
> native form, within, for example, a MS Word for Windows
document, we can
> embed ANY interactive application IN ITS NATIVE FORM
within a WWW document.
> These program objects not only effectively encapsulate both data
and
> methods, they also “encapsulate” computational resources,
since the the
> program objects are, themselves, client server applications that
actually
> run remotely on one or more distributed computational server.
The access
> of the remote machines is transparent to the user, allowing, for
example,
> someone running a WWW client on a laptop to interactively
manipulate and
> analyze huge datasets running on a distributed array of
supercomputers
> distributed across the country.
Actually, you could do it different ways. You could have the viola
object running entirely locally, or have the object act as a front-end
to a remote back-end.
There’s no reason why Viola’s model can’t also do a client-server
application (thou, OK not now quite the way you do it). The chatdrawing demo in the paper shows this. That mini app starts up,
then makes a connection to a message relay server.
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
37
McKool 396267v1

window ViolaWWW has opened for it. (Viola scripts are
compiled to byte-codes for speed’s sake, but no, it’s not fast
enough to do the computation necessary for the plotting!)
Anyway, it sounds like what you have is a really defined standard
interface (akin to the OLE API), where as Viola’s model doesn’t
have a one (yet :-) -- Viola uses scripting rather than a stardard API
for the glues.
> The applicability for VR systems is obvious. One of the major
hurdles to
> widespread acceptance of VR technology has been the burden of
large local
> computational resources.
Our approach allows that
computational burden to
> be distributed to suitable remote “visualization engines,”
thereby allowing
> users to employ low-end machines to access sophisticated
graphical
> environments. It further allows easy access to those applications
through
> the World Wide Web.
Yup. No arguments here… There seems to be a few different
ways to do VRML. I was more interested in offering yet another
piece of what it might take to realise VRML.
Eolas lacks information regarding the accuracy of the quote(s), the purported date on the
document, the identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except
as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of
the allegations in paragraph 130 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
131.

Eolas admits that there is a document which purports to contain the following

contents as quoted: “Date: Wed 31, Aug 94 23:16:41 - 0700”; “Doyle”; “Pei Wei”;
Not that I wish to content on the point of simply who’s first :) But,
let’s see… Wish I had kept better records and wrote papers about
things as they happened!)
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 particular plotting demo :) We had to
show something cool.
38
McKool 396267v1

That demo wasn’t very hard to do because by that time the basic
capability was already in place for violaWWW to fetch viola
objects over HTTP (or whatever) and plug them into documents.
Of course, our wire-frame plotting demo isn’t anywhere as
comphrehensive as yours. But, the point was that there was a way
to embed programmable & interactive objects into HTML
documents.
You see, the basic object/interpreter engine has been in viola from
day one of the old ViolaWWW from mid 1992. So basically it just
had to wait until the second (current) incarnation of ViolaWWW
for the HTML widget (as it were) to get good enough such that it
was feasible to embed such interactive objects inside of a
document.
If I dig more and harder into my archives I might find more earlier
evidence of having shown this to outside parties (we do these
demos to interested parties some times)… Unfortunately I don’t
remember when it was (definitely earlier than May 93) that we
showed Time Bernners-Lee a very early demo of the second
ViolaWWW with embedded interactive objects.
I don’t know how your system works (maybe you could post or
send me some detailed info or URLs), but I should mention that
Viola’s basic approach is to use an interpreter to run the “program
objects” (as opposed to linked-in executables).
I have say, thou [sic], that lots of this stuff is still in the Research
& Demo stage, and there’s still lots of details to work out.
Eolas admits that there is a document which purports to contain the following contents as quoted:
“Mon, 21 Aug 1995 16:09:46 -0700”; “Doyle”; “Pei Wei”;
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:
> Not that I wish to content [sic] on the point of simply who’s first :)
> But, let’s see… (Wish I had kept better records and wrote papers
>about things as they happened!)
>
> 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 particular plotting demo :) We had to show something cool.
That date (May 93), at least, predates your demo if I’m not
39
McKool 396267v1

mistaken. Then around August 93, it was shown to a bunch of
attendees at the first Web Conference in Cambridge. So, it was shown, just not
with lots of publicity and noise.
I’m sure I could find more evidence if I spent/waste the time of digging thru
archives.
If you’re talking about any display code transferred over network, look at a
number of predating systems, including say net-transmitted postscript (NeWS).
For transmitted interactive applications, even the early Viola (started around 88,
relased [sic] 1991) had a viola-app net transfer tool (the idea is to have something
like a Hypercard like environment on the scale of the net).
If you’re talking about interactive apps *specifically* on the web,
ie applets in-lined into HTML documents etc., and with bidirectional
communications, then look at ViolaWWW as it existed around late ’92 early ’93.
Eolas lacks information regarding the accuracy of the quote(s), the purported dates on the
documents, the identity of the sender(s)/recipient(s), the authenticity of the documents, etc.
Except as so admitted, Eolas lacks knowledge or information sufficient to form a belief as to the
truth of the allegations in paragraph 131 of CDW’s Answer and Counterclaims and, on that
basis, denies them.
132.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
In sum, with respect to the district court's prior art
rulings, this court finds: the district court erred in finding
as a matter of law that DX34 was abandoned, suppressed
or concealed within the meaning of section 102(g); Wei's
May 7, 1993 demonstration to two Sun Microsystems
employees without confidentiality agreements was a
public use under section 102(b); and the district court
erred in its JMOL that DX37 did not as a matter of law
anticipate or render the '906 patent obvious. As a result,
this court remands for additional proceedings on these issues.
The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
133.

Eolas denies the allegations in paragraph 133 of CDW’s Answer and

Counterclaims.

40
McKool 396267v1

134.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 134 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
135.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 135 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
136.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 136 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
137.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 137 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
138.

Eolas admits there are documents which purports to contain the following

contents as quoted “very one” and “to visitors from a certain computer manufacturer.” Eolas
lacks information regarding the accuracy of the quote(s), the purported dates on the documents,
the identity of the sender(s)/recipient(s), the authenticity of the documents, etc. Except as so
admitted, Eolas lacks knowledge or information sufficient to form a belief as to the truth of the
allegations in paragraph 138 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
139.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
In sum, with respect to the district court's prior art
rulings, this court finds: the district court erred in finding
as a matter of law that DX34 was abandoned, suppressed
or concealed within the meaning of section 102(g); Wei's
41
McKool 396267v1

May 7, 1993 demonstration to two Sun Microsystems
employees without confidentiality agreements was a
public use under section 102(b); and the district court
erred in its JMOL that DX37 did not as a matter of law
anticipate or render the '906 patent obvious. As a result,
this court remands for additional proceedings on these issues.
The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
140.

The prosecution history for the ‘906 patent is publicly available. The publicly

available prosecution history speaks for itself, and thus no further response is required. To the
extent a further response is required, Eolas answers as follows: denied.
141.

Eolas admits that Krueger previously testified in his deposition:
Q. Are you familiar with something called the Viola browser?
A. I've heard of it.
Q. Do you know what it is?
A. It's software that was developed by a man named Pei Wei.
Q. Do you know when it was developed?
A. No.
Q. When did you first become aware of it?
A. I think -MR. AYERS: Objection. Form.
THE WITNESS: I think it was in late summer of 1998.
BY MR. STROY: Q. Did you or how did you first become aware
of it?
A. I received a fax with a bunch of documents related to Viola.
Q. Who was the fax from?
A. I'm not sure.
Q. Did the -- was there a cover letter on the fax?
A. I don't remember.
Q. So did you have any idea when you got the fax why you had
received it?

42
McKool 396267v1

A. Yes. We were going to have a telephone conversation about it.
So I was supposed to look at those documents before the telephone
conversation.
Q. So when you say "we," who was -- who do you mean was
going to have a conversation?
A. I think it was someone from Robins Kaplan. There was an
attorney from Baker & McKenzie, and I'm not sure if Mike Doyle
was on the conversation or not. I just can't remember.
Q. And just to clarify, Robins Kaplan was then Eolas' counsel?
A. They were the litigation counsel on the Microsoft side.
Q. What was the -- so was the conversation you were going to
have about Viola related to the Microsoft case?
MR. AYERS: And I'll object as calling for attorney-client
privilege communication.
You can -- if you can answer the question without revealing the
substance of -- the purpose of your conversation, you may do so.
THE WITNESS: What was the question again?
BY MR. STROY: Q. Was the conversation that you had planned
to have related to the fax that you received containing the Viola
information, was that conversation related to the Viola's versus
Microsoft litigation?
A. No.
Q. Was it related to the prosecution of the '906 patent?
A. Yes.
Q. Do you remember, was there an outcome of that conversation
with respect to your opinion as to the Viola browser?
A. I do.
Q. What was the outcome?
A. I made the decision not to submit those reference to the patent
office.
Q. Why did you make that decision?
A. I decided they weren't prior art.
Q. Do you remember what the basis was for that?
A. Not completely, but I went through the documents and evaluate
each one, decided they weren't prior art.

43
McKool 396267v1

Q. Was that based on a technical view in terms of the disclosures
in the Viola references? Or was that based on a timing -- timing
aspects?
A. It could have been both, but I'm not sure which one -- which
way was which.
Q. Did you come to that conclusion on your own?
A. We had a discussion.
Q. Well, so I guess what I mean was, was it initially your
suggestion after having reviewed the documents that the Viola
references were not prior art?
A. It was my decision at the end that they were not.
June 14, 2011, Deposition of Charles Krueger 58–61. Except as so admitted, Eolas denies the
allegations in paragraph 141 of CDW’s Answer and Counterclaims.
142.

Eolas admits that Krueger previously testified in his deposition:
Q. Are you familiar with something called the Viola browser?
A. I've heard of it.
Q. Do you know what it is?
A. It's software that was developed by a man named Pei Wei.
Q. Do you know when it was developed?
A. No.
Q. When did you first become aware of it?
A. I think -MR. AYERS: Objection. Form.
THE WITNESS: I think it was in late summer of 1998.
BY MR. STROY: Q. Did you or how did you first become aware
of it?
A. I received a fax with a bunch of documents related to Viola.
Q. Who was the fax from?
A. I'm not sure.
Q. Did the -- was there a cover letter on the fax?
A. I don't remember.
Q. So did you have any idea when you got the fax why you had
received it?

44
McKool 396267v1

A. Yes. We were going to have a telephone conversation about it.
So I was supposed to look at those documents before the telephone
conversation.
Q. So when you say "we," who was -- who do you mean was
going to have a conversation?
A. I think it was someone from Robins Kaplan. There was an
attorney from Baker & McKenzie, and I'm not sure if Mike Doyle
was on the conversation or not. I just can't remember.
Q. And just to clarify, Robins Kaplan was then Eolas' counsel?
A. They were the litigation counsel on the Microsoft side.
Q. What was the -- so was the conversation you were going to
have about Viola related to the Microsoft case?
MR. AYERS: And I'll object as calling for attorney-client
privilege communication.
You can -- if you can answer the question without revealing the
substance of -- the purpose of your conversation, you may do so.
THE WITNESS: What was the question again?
BY MR. STROY: Q. Was the conversation that you had planned
to have related to the fax that you received containing the Viola
information, was that conversation related to the Viola's versus
Microsoft litigation?
A. No.
Q. Was it related to the prosecution of the '906 patent?
A. Yes.
Q. Do you remember, was there an outcome of that conversation
with respect to your opinion as to the Viola browser?
A. I do.
Q. What was the outcome?
A. I made the decision not to submit those reference to the patent
office.
Q. Why did you make that decision?
A. I decided they weren't prior art.
Q. Do you remember what the basis was for that?
A. Not completely, but I went through the documents and evaluate
each one, decided they weren't prior art.

45
McKool 396267v1

Q. Was that based on a technical view in terms of the disclosures
in the Viola references? Or was that based on a timing -- timing
aspects?
A. It could have been both, but I'm not sure which one -- which
way was which.
Q. Did you come to that conclusion on your own?
A. We had a discussion.
Q. Well, so I guess what I mean was, was it initially your
suggestion after having reviewed the documents that the Viola
references were not prior art?
A. It was my decision at the end that they were not.
June 14, 2011, Deposition of Charles Krueger 58–61. Except as so admitted, Eolas denies the
allegations in paragraph 142 of CDW’s Answer and Counterclaims.
143.

Eolas denies the allegations in paragraph 143 of CDW’s Answer and

Counterclaims.
144.

Eolas denies the allegations in paragraph 144 of CDW’s Answer and

Counterclaims.
145.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 145 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
146.

Eolas admits that Krueger previously testified in his deposition:
Q. Are you familiar with something called the Viola browser?
A. I've heard of it.
Q. Do you know what it is?
A. It's software that was developed by a man named Pei Wei.
Q. Do you know when it was developed?
A. No.
Q. When did you first become aware of it?
A. I think -MR. AYERS: Objection. Form.
46

McKool 396267v1

THE WITNESS: I think it was in late summer of 1998.
BY MR. STROY: Q. Did you or how did you first become aware
of it?
A. I received a fax with a bunch of documents related to Viola.
Q. Who was the fax from?
A. I'm not sure.
Q. Did the -- was there a cover letter on the fax?
A. I don't remember.
Q. So did you have any idea when you got the fax why you had
received it?
A. Yes. We were going to have a telephone conversation about it.
So I was supposed to look at those documents before the telephone
conversation.
Q. So when you say "we," who was -- who do you mean was
going to have a conversation?
A. I think it was someone from Robins Kaplan. There was an
attorney from Baker & McKenzie, and I'm not sure if Mike Doyle
was on the conversation or not. I just can't remember.
Q. And just to clarify, Robins Kaplan was then Eolas' counsel?
A. They were the litigation counsel on the Microsoft side.
Q. What was the -- so was the conversation you were going to
have about Viola related to the Microsoft case?
MR. AYERS: And I'll object as calling for attorney-client
privilege communication.
You can -- if you can answer the question without revealing the
substance of -- the purpose of your conversation, you may do so.
THE WITNESS: What was the question again?
BY MR. STROY: Q. Was the conversation that you had planned
to have related to the fax that you received containing the Viola
information, was that conversation related to the Viola's versus
Microsoft litigation?
A. No.
Q. Was it related to the prosecution of the '906 patent?
A. Yes.
Q. Do you remember, was there an outcome of that conversation
with respect to your opinion as to the Viola browser?
A. I do.
47
McKool 396267v1

Q. What was the outcome?
A. I made the decision not to submit those reference to the patent
office.
Q. Why did you make that decision?
A. I decided they weren't prior art.
Q. Do you remember what the basis was for that?
A. Not completely, but I went through the documents and evaluate
each one, decided they weren't prior art.
Q. Was that based on a technical view in terms of the disclosures
in the Viola references? Or was that based on a timing -- timing
aspects?
A. It could have been both, but I'm not sure which one -- which
way was which.
Q. Did you come to that conclusion on your own?
A. We had a discussion.
Q. Well, so I guess what I mean was, was it initially your
suggestion after having reviewed the documents that the Viola
references were not prior art?
A. It was my decision at the end that they were not.
June 14, 2011, Deposition of Charles Krueger 58–61. Except as so admitted, Eolas denies the
allegations in paragraph 146 of CDW’s Answer and Counterclaims.
147.

Eolas denies the allegations in paragraph 147 of CDW’s Answer and

Counterclaims.
148.

Paragraph 148 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas denies
the allegations in paragraph 148 of CDW’s Answer and Counterclaims.
149.

It appears that paragraph 149 of CDW’s Answer and Counterclaims is missing

text. Eolas presumes that this text, which Eolas presumes was meant to be quoted, can be found
in paragraph 150 of CDW’s Answer and Counterclaims. To the extent that this presumption is

48
McKool 396267v1

correct, Eolas admits that the publicly available The Manual of Patent Examining Procedure (5th
edition, 16th Revision) contains the following statement:

The Manual of Patent Examining Procedure speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
150.

It appears that paragraph 150 of CDW’s Answer and Counterclaims contains

misplaced text. Eolas presumes that a portion of the beginning text was meant to be included in
paragraph 149 of CDW’s Answer and Counterclaims. To the extent that this presumption is
correct, Eolas admits that the publicly available The Manual of Patent Examining Procedure (8th
edition, 7 revision) contains the following statement as quoted:
The term “information” as used in 37 CFR 1.56 means all of the kinds of
information required to be disclosed and includes any information which is
“material to patentability.” 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,<
possible prior public uses, sales, offers to sell, derived knowledge, prior invention
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., 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).
The Manual of Patent Examining Procedure speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.

49
McKool 396267v1

151.

Eolas denies the allegations in paragraph 151 of CDW’s Answer and

Counterclaims.
152.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
In addition, this court vacates the district court's
JMOL that DX37 did not anticipate the '906 patent. To
anticipate, a single reference must teach each and every
limitation of the claimed invention. See EMI Group N.
Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d
1342, 1350 (Fed. Cir. 2001). When viewed in "a
light most favorable" to Microsoft, the testimony by
Microsoft's expert, Dr. Kelly, presents a question of fact
as to whether DX37 anticipates the '906 patent. See
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996)
The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
153.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
In sum, with respect to the district court's prior art
rulings, this court finds: the district court erred in finding
as a matter of law that DX34 was abandoned, suppressed
or concealed within the meaning of section 102(g); Wei's
May 7, 1993 demonstration to two Sun Microsystems
employees without confidentiality agreements was a
public use under section 102(b); and the district court
erred in its JMOL that DX37 did not as a matter of law
anticipate or render the '906 patent obvious. As a result,
this court remands for additional proceedings on these issues.
The opinion speaks for itself, and thus no further response is required. To the extent further
response is required, Eolas answers as follows: denied.
154.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
The district court also erred in its granting JMOL on
50
McKool 396267v1

obviousness. Dr. Kelly's testimony provided sufficient
evidence to survive JMOL. In his testimony, Dr. Kelly
discussed: (1) the scope of DX34 and DX37; (2) the
potential differences between DX34 and DX3 7 and the
claimed invention; and (3) the state of the art and the
level of skill in the art in 1993. Dr. Kelly's testimony
could also be read to provide a suggestion to use a
browser in a distributed hypermedia environment as in
the claimed invention. Although Microsoft's direct
examination of Dr. Kelly focused on anticipation, the
information solicited from Dr. Kelly might also support
an argument of obviousness in the alternative. In light of
this court's determination that DX34 was not abandoned
or concealed, Microsoft should also have the opportunity
to present DX34 as part of its obviousness defense. See
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1568 (Fed. Cir. 1987) (indicating that a key preliminary
legal inquiry in obviousness analysis is: "what is the prior
art?"). Weighing the facts in favor of the non-moving
party, as required by Rule 50, a reasonable jury should
have the opportunity to determine whether the
claimed invention would have been obvious at the time of
invention based on the record.
The opinion speaks for itself, and thus no further response is required. To the extent further
response is required, Eolas answers as follows: denied.
155.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1336 (Fed. Cir. 2005) contains the following statement:
This court also vacates the district court's decision on
inequitable conduct. Again the district court based its
inequitable conduct finding on the misunderstanding that
Viola could not possibly constitute prior art. Relying on
that erroneous determination, the district court concluded
that Viola could not be material to patentability. As
discussed above, the district court erred in determining
that DX34 was abandoned, suppressed or concealed
within the meaning of section 102(g). Further,
the district court did not explain a reason for declining to
consider DX37, also created prior to Doyle's invention, as
immaterial to patentability of the '906 patent. In respect
to potential prior art software under section 102(b), this
court has explained that the software product constitutes
prior art, not necessarily the later published abstract
51
McKool 396267v1

associated with that software product. In re Epstein, 32
F.3d 1559, 1567-68 (Fed. Cir. 1994). Similarly, in the
case at bar, the Viola browser itself, not the later
developed Viola paper or "Viola stuff" file, constitutes
prior art. On remand, the district court will have an
opportunity to include this potential prior art in its
inequitable conduct inquiry. At the same time, the district
court may reconsider its findings on Doyle's intent to deceive the PTO.
The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
156.

Eolas denies the allegations in paragraph 156 of CDW’s Answer and

Counterclaims.
157.

Eolas denies the allegations in paragraph 157 of CDW’s Answer and

Counterclaims.
158.

Eolas denies the allegations in paragraph 158 of CDW’s Answer and

Counterclaims.
159.

Eolas admits that during the reexamination of the ‘906 patent, the Patent Office

issued an office action on or about July 30, 2007. Eolas admits that the office action contains but
is not limited to the following statement as:
Thus, while the Viola DX37 source code files were not effective in
expressly teaching each of the limitations of independent claims 1
and 6, as noted above in the previous reexamination proceedings,
the examiner notes that a new reference regarding Viola, noted as
“A Brief Overview of the VIOLA Engine, and its applications”,
written by Pei Wei, pages TT 05441 - TT 05600, which include the
“Viola in a Nutshell: the Viola World Wide Web Toolkit, being
included on the Information Disclosure Statement dated 8/24/06,
can be interpreted as teaching each of the limitations. A full
discussion of the reference follows below.
Except as so admitted, Eolas denies the allegations in paragraph 159 of CDW’s Answer and
Counterclaims.

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160.

Eolas denies the allegations that “Pei Wei had told Doyle on August 31, 1994,

about the Viola paper dated August 16, 1994 and Doyle had downloaded and read that paper on
the same day.” The prosecution history for the ‘906 patent is publicly available. The publicly
available prosecution history speaks for itself, and thus no further response is required. To the
extent a further response is required, Eolas answers as follows: denied.
161.

The allegations in paragraph 161 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the
extent a response is required, Eolas answers as follows: denied.
162.

Eolas admits that the application for the ‘906 patent was filed on October 17,

1994. Except as so admitted, Eolas lacks knowledge or information sufficient to form a belief as
to the truth of the allegations in paragraph 162 of CDW’s Answer and Counterclaims and, on
that basis, denies them.
163.

Eolas denies the allegations in paragraph 163 of CDW’s Answer and

Counterclaims.
164.

Eolas denies the allegations in paragraph 164 of CDW’s Answer and

Counterclaims.
165.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
In sum, with respect to the district court's prior art
rulings, this court finds: the district court erred in finding
as a matter of law that DX34 was abandoned, suppressed
or concealed within the meaning of section 102(g); Wei's
May 7, 1993 demonstration to two Sun Microsystems
employees without confidentiality agreements was a
public use under section 102(b); and the district court
erred in its JMOL that DX37 did not as a matter of law
anticipate or render the '906 patent obvious. As a result,
this court remands for additional proceedings on these issues.
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Eolas also admits that the prosecution history for the ‘906 patent is publicly available. The
opinion and prosecution history speak for themselves and thus no further response is required.
To the extent a further response is required, Eolas answers as follows: denied.
166.

Eolas admits that the Manual of Patent Examining Procedure section 2258 (8th

edition, 7 revision) is entitled “Scope of Ex Parte Reexamination” and that section 2258 contains
the following statement:
Rejections will not be based on matters other than patents or
printed publications, such as public use or sale, inventorship, 35
U.S.C. 101, *>conduct issues<, etc. In this regard, see In re
Lanham, 1 USPQ2d 1877 (Comm’r Pat. 1986), and Stewart
Systems v. Comm’r of Patents and Trademarks, 1 USPQ2d 1879
(E.D. Va. 1986). A rejection on prior public use or sale,
insufficiency of disclosure, etc., cannot be made even if it relies on
a prior art patent or printed publication. Prior art patents or printed
publications must be applied under an appropriate portion of 35
U.S.C. 102 and/or 103 when making a rejection.
Except as so admitted, Eolas denies the allegations in paragraph 166 of CDW’s Answer and
Counterclaims.
167.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 167 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
168.

Eolas admits that the application for the ‘906 patent was filed on October 17,

1994. The prosecution history for the ‘906 patent is publicly available. The publicly available
prosecution history speaks for itself, and thus no further response is required. To the extent a
further response is required, Eolas answers as follows: denied. To the extent that the remaining
allegations in paragraph 168 of CDW’s Answer and Counterclaims contain statements and/or
conclusions of law, no affirmance or denial is required.

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169.

Eolas denies the allegations in paragraph 169 of CDW’s Answer and

Counterclaims.
170.

Eolas denies the allegations in paragraph 170 of CDW’s Answer and

Counterclaims.
171.

Eolas denies the allegations in paragraph 171 of CDW’s Answer and

Counterclaims.
172.

Eolas denies the allegations in paragraph 172 of CDW’s Answer and

Counterclaims.
173.

Eolas denies the allegations in paragraph 173 of CDW’s Answer and

Counterclaims.
174.

Eolas admits that Doyle has had and has a financial interest in Eolas. Except as

so admitted, Eolas denies the allegations in paragraph 174 of CDW’s Answer and
Counterclaims.
175.

Eolas denies the allegations in paragraph 175 of CDW’s Answer and

Counterclaims.
176.

Eolas admits that Doyle was involved in some aspects of the prosecution of

application number 08/324,443, which became the ’906 patent. Except as so admitted, Eolas
denies the allegations in paragraph 176 of CDW’s Answer and Counterclaims.
177.

Eolas admits that Doyle signed a declaration on or about November 22, 1994.

The publicly available declaration speaks for itself, and thus no further response is required. To
the extent a further response is required, Eolas answers as follows: denied.

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178.

Eolas admits that Doyle signed a declaration on or about January 2, 1997. The

publicly available declaration speaks for itself, and thus no further response is required. To the
extent a further response is required, Eolas answers as follows: denied.
179.

Eolas admits that Doyle and Krueger participated in an examiner interview on or

about February 24, 1997. The publicly available interview summaries speak for themselves, and
thus no further response is required. To the extent a further response is required, Eolas answers
as follows: denied.
180.

Eolas admits that Doyle signed a declaration on or about May 27, 1997 and that

the declaration was submitted to the Patent Office. Eolas admits that the declaration contains
approximately 28 pages. The publicly available declaration speaks for itself, and thus no further
response is required. To the extent a further response is required, Eolas answers as follows:
denied.
181.

Eolas admits that Doyle signed a declaration on or about October 29, 1997 and

that the declaration was submitted to the Patent Office. The publicly available declaration
speaks for itself, and thus no further response is required. To the extent a further response is
required, Eolas answers as follows: denied.
182.

Eolas admits that Doyle and Krueger participated in an examiner interview on or

about November 6, 1997. The publicly available interview summaries speak for themselves, and
thus no further response is required. To the extent a further response is required, Eolas answers
as follows: denied.
183.

Eolas admits that Doyle participated in certain aspects of the prosecution of the

’906 patent. Eolas admits that the ‘906 patent lists the following as quoted: “Attorney, Agent, or

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Firm—Townsend and Townsend and Crew LLP”. Except as so admitted, Eolas denies the
allegations in paragraph 183 of CDW’s Answer and Counterclaims.
184.

Eolas admits the Doyle reviewed and approved at least some papers submitted to

the Patent Office during the prosecution of the ‘906 patent. Except as so admitted, Eolas denies
the allegations in paragraph 184 of CDW’s Answer and Counterclaims.
185.

Eolas admits that the application for the ‘906 patent included at least one

information disclosure statement.

The prosecution history for the ‘906 patent is publicly

available. The publicly available prosecution history speaks for itself, and thus no further
response is required. To the extent a further response is required, Eolas answers as follows:
denied.
186.

Eolas denies the allegations in paragraph 186 of CDW’s Answer and

Counterclaims.
187.

Eolas denies the allegations in paragraph 187 of CDW’s Answer and

Counterclaims.
188.

Eolas admits that the Patent Office issued an office action on or about May 6,

1996. The publicly available office action speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
189.

Eolas admits that on or about August 6, 1996, a response to an office action was

submitted to the Patent Office. The publicly available response speaks for itself, and thus no
further response is required. To the extent a further response is required, Eolas answers as
follows: denied.
190.

Eolas admits that on or about August 6, 1996, a response to an office action was

submitted to the Patent Office. Eolas admits that Doyle reviewed and approved at least part of

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McKool 396267v1

the response. Except as so admitted, Eolas denies the allegations in paragraph 190 of CDW’s
Answer and Counterclaims.
191.

Eolas admits the allegations in paragraph 191 of CDW’s Answer and

Counterclaims.
192.

Eolas denies the allegations in paragraph 192 of CDW’s Answer and

Counterclaims.
193.

Eolas admits that the Patent Office issued an office action and that the office

action contains but is not limited to the following content as quoted: “Date Mailed: 03/26/97”.
The publicly available Office Action speaks for itself, and thus no further response is required.
To the extent a further response is required, Eolas answers as follows: denied.
194.

Eolas admits that a response to an office action was submitted to the Patent Office

on or about June 2, 1997. Except as so admitted, Eolas denies the allegations in paragraph 194
of CDW’s Answer and Counterclaims.
195.

Eolas admits that a response to an office action was submitted to the Patent Office

on or about June 2, 1997. Eolas admits that Doyle and Krueger reviewed and approved at least
part of the response. Except as so admitted, Eolas denies the allegations in paragraph 195 of
CDW’s Answer and Counterclaims.
196.

Eolas admits that a response to an office action was submitted to the Patent Office

on or about June 2, 1997 and that the response contains but is not limited to the following
statement: “Thus, there is no suggestion in Khoyi of modifying Mosaic so that an external
application, by analogy to Khoyi the source document manager, is invoked to display and
interactively process the object within the document window while the document is displayed by

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McKool 396267v1

Mosaic in the same window.” Except as so admitted, Eolas denies the allegations in paragraph
196 of CDW’s Answer and Counterclaims.
197.

Eolas denies the allegations in paragraph 197 of CDW’s Answer and

Counterclaims.
198.

Eolas admits that the Patent Office issued an office action on or about August 25,

1997. The publicly available office action speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
199.

Eolas admits that a response to an office action was submitted to the Patent Office

on or about December 23, 1997.

Except as so admitted, Eolas denies the allegations in

paragraph 199 of CDW’s Answer and Counterclaims.
200.

Eolas admits that a response to an office action was submitted to the Patent Office

on or about December 23, 1997 and that Doyle and Krueger reviewed and approved at least part
of the response. Except as so admitted, Eolas denies the allegations in paragraph 200 of CDW’s
Answer and Counterclaims.
201.

Eolas admits that a response to an office action was submitted to the Patent Office

on or about December 23, 1997 and that the response contains but is not limited to the following
statement:
The first part of the argument demonstrates that the cited art does
not disclose or suggest several of the elements and limitations
recited in claim 1. The second part of the argument demonstrates
that the purpose, functions, and technology utilized in Mosaic and
Koppolu are so different that, even if the missing features were
disclosed in isolation, it would not have been obvious or even
feasible for a person of skill in the art to combine the teachings of
the reference to realize the claimed invention.
Turning to the first part of the argument, there 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
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McKool 396267v1

clicking with a mouse pointer, to activate external applications to
allow display and interaction with an external object.
Except as so admitted, Eolas denies the allegations in paragraph 201 of CDW’s Answer and
Counterclaims.
202.

Eolas denies the allegations in paragraph 202 of CDW’s Answer and

Counterclaims.
203.

Eolas denies the allegations in paragraph 203 of CDW’s Answer and

Counterclaims.
204.

Eolas denies the allegations in paragraph 204 of CDW’s Answer and

Counterclaims.
205.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 205 of CDW’s Answer and Counterclaims.
206.

Eolas admits that Doyle signed a declaration on or about May 27, 1997 and that

the declaration was submitted to the Patent Office. The publicly available declaration speaks for
itself, and thus no further response is required. To the extent a further response is required, Eolas
answers as follows: denied.
207.

Eolas admits that Doyle signed a declaration on or about May 27, 1997 and that

the declaration was submitted to the Patent Office. The publicly available declaration speaks for
itself, and thus no further response is required. To the extent a further response is required, Eolas
answers as follows: denied.
208.

Eolas denies the allegations in paragraph 208 of CDW’s Answer and

Counterclaims.
209.

Eolas admits the allegations in paragraph 209 of CDW’s Answer and

Counterclaims.

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210.

Eolas admits that a litigation involved the validity of the ‘906 patent and that

Doyle was involved in some aspects of the litigation. Except as so admitted, Eolas denies the
allegations in paragraph 210 of CDW’s Answer and Counterclaims.
211.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 211 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
212.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement as
block quoted:
In sum, with respect to the district court's prior art
rulings, this court finds: the district court erred in finding
as a matter of law that DX34 was abandoned, suppressed
or concealed within the meaning of section 102(g); Wei's
May 7, 1993 demonstration to two Sun Microsystems
employees without confidentiality agreements was a
public use under section 102(b); and the district court
erred in its JMOL that DX37 did not as a matter of law
anticipate or render the '906 patent obvious. As a result,
this court remands for additional proceedings on these
issues.
The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied
213.

Eolas denies the allegation that “the plotting demo involving the ViolaWWW

browser anticipated the asserted claims of the ’906 patent.”

Eolas lacks knowledge or

information sufficient to form a belief as to the truth regarding the remaining allegations in
paragraph 213 of CDW’s Answer and Counterclaims and, on that basis, denies them.
214.

Eolas admits that there is a document which purports to contain the information

included in quotes in paragraph 214 of CDW’s Answer and Counterclaims.

Eolas lacks

information regarding the accuracy of the quote(s), the purported date on the document, the
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identity of the sender(s)/recipient(s), the authenticity of the document, etc. Except as so admitted,
Eolas lacks knowledge or information sufficient to form a belief as to the truth of the allegations
in paragraph 214 of CDW’s Answer and Counterclaims and, on that basis, denies them.
215.

Eolas admits that Dr. Kelly testified at trial. Eolas does not admit to the veracity

of his testimony. The publicly available trial testimony speaks for itself, and thus no further
response is required. To the extent a response is required, Eolas answers as follows: denied.
216.

Eolas admits that Pei Wei testified at trial. Eolas does not admit to the veracity of

his testimony. The publicly available trial testimony speaks for itself, and thus no further
response is required. To the extent a response is required, Eolas answers as follows: denied.
217.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 217 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
218.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 218 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
219.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 219 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
220.

Paragraph 220 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.

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221.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 221 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
222.
1994.

Eolas admits that the application for the ‘906 patent was filed on October 17,

The allegations in paragraph 222 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the
extent a response is required, Eolas answers as follows: denied.
223.

Eolas admits that Dr. Kelly testified at trial. Eolas does not admit to the veracity

of his testimony. The publicly available trial testimony speaks for itself, and thus no further
response is required. To the extent a response is required, Eolas answers as follows: denied.
224.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
The district court also erred in its granting JMOL on obviousness.
Dr. Kelly's testimony provided sufficient evidence to survive
JMOL. In his testimony, Dr. Kelly discussed: (1) the scope of
DX34 and DX37; (2) the potential differences between DX34 and
DX37 and the claimed invention; and (3) the state of the art and
the level of skill in the art in 1993. Dr. Kelly's testimony could also
be read to provide a suggestion to use a browser in a distributed
hypermedia environment as in the claimed invention. Although
Microsoft's direct examination of Dr. Kelly focused on
anticipation, the information solicited from Dr. Kelly might also
support an argument of obviousness in the alternative. In light of
this court's determination that DX34 was not abandoned or
concealed, Microsoft should also have the opportunity to present
DX34 as part of its obviousness defense. See Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)
(indicating that a key preliminary legal inquiry in obviousness
analysis is: "what is the prior art?"). Weighing the facts in favor of
the non-moving party, as required by Rule 50, a reasonable jury
should have the opportunity to determine whether the claimed
invention would have been obvious at the time of invention based
on the record.

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The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
225.

Eolas denies the allegations in paragraph 225 of CDW’s Answer and

Counterclaims.
226.

Eolas admits that Dr. Kelly testified at trial. Eolas does not admit to the veracity

of his testimony. The publicly available trial testimony speaks for itself, and thus no further
response is required. To the extent a response is required, Eolas answers as follows: denied.
227.

Eolas admits that Doyle attended portions of the trial. Eolas denies the remaining

allegations in paragraph 227 of CDW’s Answer and Counterclaims.
228.

Eolas denies the allegations in paragraph 228 of CDW’s Answer and

Counterclaims s.
229.

Eolas denies the allegations in paragraph 229 of CDW’s Answer and

Counterclaims.
230.

Eolas admits the allegations in paragraph 230 of CDW’s Answer and

Counterclaims.
231.

Eolas denies the allegations in paragraph 231 of CDW’s Answer and

Counterclaims.
232.

Eolas admits that Doyle has had and has a financial interest in Eolas. Except as

so admitted, Eolas denies the allegations in paragraph 232 of CDW’s Answer and
Counterclaims.
233.

Eolas denies the allegations in paragraph 233 of CDW’s Answer and

Counterclaims.

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234.

Eolas admits that Doyle and Krueger were involved in some aspects of the re-

examination. Eolas denies the remaining allegations in paragraph 234 of CDW’s Answer and
Counterclaims.
235.

Eolas admits that Doyle and Krueger participated in an examiner interview on or

about April 27, 2004 and that the interview involved a presentation containing approximately 22
slides. The publicly available interview and the presentation speak for themselves, and thus no
further response is required. To the extent a further response is required, Eolas answers as
follows: denied.
236.

Eolas admits that Doyle signed a declaration on or about May 6, 2004 and that the

declaration was submitted to the Patent Office. The publicly available declaration speaks for
itself, and thus no further response is required. To the extent a further response is required, Eolas
answers as follows: denied.
237.

Eolas admits that Doyle and Krueger participated in an examiner interview on or

about August 18, 2005. Eolas admits that the Interview Summary contains but is not limited to
the following statement: “The issues were discussed in connection with a set of slides which are
attached hereto.”

Eolas admits that the presentation included some slides.

The publicly

available interview summaries and the publicly available presentation speak for themselves, and
thus no further response is required. To the extent a further response is required, Eolas answers
as follows: denied.
238.

Eolas denies the allegations in paragraph 238 of CDW’s Answer and

Counterclaims.
239.

Eolas admits that an information disclosure statement was submitted to the Patent

Office on or about December 30, 2003. The publicly available information disclosure statement

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McKool 396267v1

speaks for itself, and thus no further response is required. To the extent a further response is
required, Eolas answers as follows: denied.
240.

Eolas admits that an information disclosure statement was submitted to the Patent

Office on or about December 30, 2003. The publicly available information disclosure statement
speaks for itself, and thus no further response is required. To the extent a further response is
required, Eolas answers as follows: denied.
241.

Eolas admits that an information disclosure statement was submitted to the Patent

Office on or about December 30, 2003. The publicly available information disclosure statement
speaks for itself, and thus no further response is required. To the extent a further response is
required, Eolas answers as follows: denied.
242.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 242 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
243.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 243 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
244.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 244 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
245.

Paragraph 245 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.

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246.

Eolas denies the allegations in paragraph 246 of CDW’s Answer and

Counterclaims.
247.

The prosecution history for the reexamination of the ‘906 patent is publicly

available. The prosecution history speaks for itself, and thus no further response is required. To
the extent a response is required, Eolas answers as follows: denied.
248.

The prosecution history for the reexamination of the ‘906 patent is publicly

available. The prosecution history speaks for itself, and thus no further response is required. To
the extent a response is required, Eolas answers as follows: denied.
249.

The prosecution history for the reexamination of the ‘906 patent is publicly

available. The prosecution history speaks for itself, and thus no further response is required. To
the extent a response is required, Eolas answers as follows: denied.
250.

Eolas admits that a publicly available opinion issued by the Federal Circuit Court

of Appeals cited as 399 F.3d 1325, 1335 (Fed. Cir. 2005) contains the following statement:
The district court also erred in its granting JMOL on
obviousness. Dr. Kelly's testimony provided sufficient
evidence to survive JMOL. In his testimony, Dr. Kelly
discussed: (1) the scope of DX34 and DX37; (2) the
potential differences between DX34 and DX3 7 and the
claimed invention; and (3) the state of the art and the
level of skill in the art in 1993. Dr. Kelly's testimony
could also be read to provide a suggestion to use a
browser in a distributed hypermedia environment as in
the claimed invention. Although Microsoft's direct
examination of Dr. Kelly focused on anticipation, the
information solicited from Dr. Kelly might also support
an argument of obviousness in the alternative. In light of
this court's determination that DX34 was not abandoned
or concealed, Microsoft should also have the opportunity
to present DX34 as part of its obviousness defense. See
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1568 (Fed. Cir. 1987) (indicating that a key preliminary
legal inquiry in obviousness analysis is: "what is the prior
art?"). Weighing the facts in favor of the non-moving
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party, as required by Rule 50, a reasonable jury should
have the opportunity to determine whether the
claimed invention would have been obvious at the time of
invention based on the record.
The opinion speaks for itself, and thus no further response is required. To the extent a further
response is required, Eolas answers as follows: denied.
251.

The prosecution history for the ‘906 patent is publicly available. The prosecution

history speaks for itself, and thus no further response is required. To the extent a response is
required, Eolas answers as follows: denied.
252.

Eolas admits that an examiner issued a statement for reasons of patentability on or

about September 27, 2005 and that the statement for reasons of patentability confirmed the
patentability of claims 1-10 of the ’906 patent.

Except as so admitted, Eolas denies the

allegations in paragraph 252 of CDW’s Answer and Counterclaims.
253.

Eolas admits that an examiner issued a statement for reasons of patentability on or

about September 27, 2005. The publicly available statement for reasons of patentability speaks
for itself, and thus no further response is required. To the extent a further response is required,
Eolas answers as follows: denied.
254.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 254 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
255.

Eolas admits that the examiner issued a statement for reasons of patentability.

Eolas admits that the statement includes but is not limited to the following statement: “The
Examiner used the “dtSearch” program to index and text search all DX7 files that contained
textual content. See http://www.dtsearch.com/”.

Except as so admitted, Eolas denies the

allegations in paragraph 255 of CDW’s Answer and Counterclaims.

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256.

Paragraph 256 of CDW’s Answer and Counterclaims does not contain a statement

which warrants an affirmance or denial. To the extent any response is warranted, Eolas responds
as follows: denied.
257.

Eolas denies the allegation that “Doyle knew precisely what to look for, but he

never told the examiner.” Eolas lacks knowledge or information sufficient to form a belief as to
the truth of the remaining allegations in paragraph 257 of CDW’s Answer and Counterclaims
and, on that basis, denies them.
258.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 258 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
259.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 259 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
260.

Eolas admits that an examiner issued a statement for reasons of patentability. The

publicly available statement of reasons of patentability speaks for itself, and thus no further
response is required. To the extent a further response is required, Eolas answers as follows:
denied.
261.

Eolas denies that the examiner “thus erroneously confirmed the patentability of

the asserted claims of the ‘906 patent.” Eolas lacks knowledge or information sufficient to form
a belief as to the truth of the remaining allegations in paragraph 261 of CDW’s Answer and
Counterclaims that and, on that basis, denies them.

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262.

Eolas admits that the examiner issued a statement for reasons of patentability and

that the statement for reasons of patentability contains but is not limited to the following
statement:
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
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 bytecode
representations) are not “executable applications” From the
perspective of the CPU, which is the only perspective that really
matters at runtime. A conventional CPU is only capable of
processing binary machine language instructions from its own
native instruction set.
Except as so admitted, Eolas denies the allegations in paragraph 262 of CDW’s Answer and
Counterclaims.
263.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 263 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
264.

Eolas denies the allegations in paragraph 264 of CDW’s Answer and

Counterclaims.
265.

Eolas denies the allegations in paragraph 265 of CDW’s Answer and

Counterclaims.
266.

Eolas denies the allegations in paragraph 266 of CDW’s Answer and

Counterclaims.

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267.

Eolas denies the allegations in paragraph 267 of CDW’s Answer and

Counterclaims.
268.

Eolas admits the allegations in paragraph 268 of CDW’s Answer and

Counterclaims.
269.

Eolas admits the allegations in paragraph 269 of CDW’s Answer and

Counterclaims.
270.

Eolas admits that Doyle has had and has a financial interest in Eolas. Except as

so admitted, Eolas denies the allegations in paragraph 270 of CDW’s Answer and
Counterclaims.
271.

Eolas denies the allegations in paragraph 271 of CDW’s Answer and

Counterclaims.
272.

Eolas admits that Doyle and Krueger were involved in some aspects of the 2005

re-examination of the ’906 patent. Eolas denies the remaining allegations in paragraph 272 of
CDW’s Answer and Counterclaims.
273.

Eolas admits that Doyle and Krueger participated in an examiner interview on or

about September 6, 2007. The publicly available interview summaries speak for themselves, and
thus no further response is required. To the extent a further response is required, Eolas answers
as follows: denied.
274.

Eolas admits that a declaration was submitted to the Patent Office on or about

October 1, 2007 and that Doyle signed the declaration. The publicly available declaration speaks
for itself, and thus no further response is required. To the extent a further response is required,
Eolas answers as follows: denied.

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275.

Eolas admits that an examiner interview occurred on or about May 9, 2008. The

publicly available interview summaries speak for themselves, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
276.

Eolas admits that an examiner interview took place on or about June 3, 2008. The

publicly available interview summaries speak for themselves, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
277.

Eolas denies the allegations in paragraph 277 of CDW’s Answer and

Counterclaims.
278.

Eolas denies the allegations in paragraph 278 of CDW’s Answer and

Counterclaims.
279.

Eolas admits that an information disclosure statement was submitted to the Patent

Office on or about August 21, 2006. Eolas admits that the publicly available information
disclosure statement includes but is not limited to the following reference as quoted: “Pei Wei,
“A Brief Overview of the VIOLA Engine, and its applications””. Eolas lacks information
regarding the accuracy of the document, the purported date on the document, the identity of the
author, the authenticity of the document, etc. Except as so admitted, Eolas denies the allegations
in paragraph 279 of CDW’s Answer and Counterclaims.
280.

Eolas denies the allegations in paragraph 280 of CDW’s Answer and

Counterclaims.
281.

Eolas denies the allegations in paragraph 281 of CDW’s Answer and

Counterclaims.
282.

Eolas denies the allegations in paragraph 282 of CDW’s Answer and

Counterclaims.

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283.

Eolas admits that the Patent Office issued an office action on or about July 30,

2007. The publicly available office action speaks for itself, and thus no further response is
required. To the extent a further response is required, Eolas answers as follows: denied.
284.

Eolas admits that the Patent Office issued an office action on July 30, 2007. The

publicly available office action speaks for itself, and thus no further response is required. To the
extent a further response is required, Eolas answers as follows: denied.
285.

Eolas denies the allegations in paragraph 285 of CDW’s Answer and

Counterclaims.
286.

Eolas admits that the Patent Office issued an office action on April 18, 2008

which includes the following statements:
4. The Patent Owner submitted arguments on 10/1/07 and
submitted a Declaration under 37 CFR 1.131, which establishes the
invention prior to August 16, 1994, being the date utilized as the
publication date of the Viola reference noted above.
5. With this, the Declaration filed on 10/1/07 under 37 CFR 1.131
is sufficient to overcome the Viola reference utilized in the
rejection noted in the Office action dated 7/30/07. The examiner
notes that the Viola reference lists on the first page, titled “The
Viola Home Page” (being TT 05441), that “Vintage Viola
screendumps” are included from “applications of the old viola
(1991)”. However, the examiner cannot find any other documents
in the record that disclose the specific teachings of the Viola
browser, as described in the previous Office action dated 7/40/07,
that establish a date prior to August 16, 1994. Therefore, the
rejection of claims 1-10, as indicated in the previous Office action
under 35 U.S.C. 102(e), as being anticipated by Viola, has been
withdrawn.
Except as so admitted, Eolas denies the allegations in paragraph 286 of CDW’s Answer and
Counterclaims.
287.

Eolas admits that the Patent Office issued an office action on April 18, 2008. The

publicly available office action speaks for itself, and thus no further response is required. To the
extent a further response is required, Eolas answers as follows: denied.
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288.

Eolas lacks knowledge or information sufficient to form a belief as to the truth of

the allegations in paragraph 288 of CDW’s Answer and Counterclaims and, on that basis, denies
them.
289.

Eolas denies the allegations in paragraph 289 of CDW’s Answer and

Counterclaims.
290.

Eolas denies the allegations in paragraph 290 of CDW’s Answer and

Counterclaims.
291.

Eolas denies the allegations in paragraph 291 of CDW’s Answer and

Counterclaims.
292.

Eolas admits that a declaration was submitted to the Patent Office on or about

June 2, 1997. Eolas admits that the declaration was executed on or about May 27, 1997. The
publicly available declaration speaks for itself, and thus no further response is required. To the
extent a further response is required, Eolas answers as follows: denied.
293.

Eolas admits that a declaration was signed by Doyle. Eolas admits that the

declaration includes but is not limited to the following statement as quoted: “Further, in my
opinion 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, demonstrate that the claimed invention is not obvious over the cited
references.” Except as so admitted, Eolas denies the allegations in paragraph 293 of CDW’s
Answer and Counterclaims.
294.

Eolas admits that a declaration was signed by Doyle. Eolas admits that the

declaration includes but is not limited to the following:
The three exemplary products which incorporate the features of the
claimed invention include Netscape Navigator 2.0 (or newer
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versions), Java, from Sun Microsystems, and ActiveX, from
Microsoft. One need only open the pages of any major business
publication to see that these three products have been
tremendously successful in the marketplace. Appendix A of this
declaration presents a collection of excerpts from prestigious
Industry publications which support the contention that the success
of these products is directly attributable to the claimed features of
the invention.
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, 2/96), both
Netscape and Sun released software products that incorporated
features of the claimed invention, including an embed text
format that is parsed by a Web browser to automatically
invoke an external 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 embed text format’s location within the
hypermedia document being displayed in the browsercontrolled window. Sun released the Java applet programming
environment and the HotJava applet-capable Web browser in May
of 1995, and Netscape release [sic] version 2.0 of their Navigator
Web browser, which incorporated both Java technology and a
plug-in API, in October of 1995.
Except as so admitted, Eolas denies the allegations in paragraph 294 of CDW’s Answer and
Counterclaims.
295.

Eolas denies the allegations in paragraph 295 of CDW’s Answer and

Counterclaims.
296.

Eolas denies the allegations in paragraph 296 of CDW’s Answer and

Counterclaims.
297.

Eolas denies the allegations in paragraph 297 of CDW’s Answer and

Counterclaims.
298.

Eolas denies the allegations in paragraph 298 of CDW’s Answer and

Counterclaims.
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299.

Eolas denies the allegations in paragraph 299 of CDW’s Answer and

Counterclaims.
300.

Eolas denies the allegations in paragraph 300 of CDW’s Answer and

Counterclaims.
301.

Eolas denies the allegations in paragraph 301 of CDW’s Answer and

Counterclaims.
302.

Eolas denies the allegations in paragraph 302 of CDW’s Answer and

Counterclaims.
303.

The allegations in paragraph 303 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the
extent a response is required, Eolas answers as follows: denied.
304.

The allegations in paragraph 304 of CDW’s Answer and Counterclaims contain

statements and/or conclusions of law which do not warrant an affirmance or denial. To the
extent a response is required, Eolas answers as follows: denied.
305.

Eolas admits that the ‘985 patent is a “[c]ontinuation of application No.

09/075,359, filed on May 8, 1998, now abandoned, which is a continuation of application No.
08/324,443, filed on Oct. 17, 1994, now Pat. No., 5,838,906.” Eolas further admits that the ‘906
and ‘985 patents share nearly identical specifications. Except as so admitted, Eolas responds as
follows: denied.
306.

Eolas admits that the Patent Office issued an office action on or about July 20,

2004. The publicly available office action speaks for itself, and thus no further response is
required. To the extent a response is required, Eolas answers as follows: denied.

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307.

Eolas admits that a terminal disclaimer was filed in “Application No.:

10/217,955.” The publicly available disclaimer speaks for itself, and thus no further response is
required. To the extent a response is required, Eolas answers as follows: denied.
308.

Eolas admits that there is an actual and justiciable controversy between Eolas and

CDW. Except as so admitted, Eolas denies the allegations in paragraph 308 of CDW’s Answer
and Counterclaims.
CDW’S REQUESTED RELIEF
Eolas denies that CDW is entitled to the relief requested in paragraphs A-F of its Answer
and Counterclaims or any other relief on its Counterclaims.
RESPONSE TO JURY DEMAND
CDW’s jury demand does not contain a statement which warrants an affirmance or
denial.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Eolas Technologies Incorporated, prays for the following relief
against Defendant CDW LLC:
A. that all relief requested by Eolas in its Complaint be granted;
B. that all relief requested by CDW in its Answer and Counterclaims be denied and that
CDW take nothing by way of its Counterclaims;
C. that CDW be ordered to pay the costs of this action (including all disbursements) and
attorney fees as provided by 35 U.S.C. § 285 and all other applicable statutes, rules, and common
law; and
D. such other and further relief as the Court deems just and equitable.
AFFIRMATIVE DEFENSES
As affirmative defenses, Eolas alleges as follows:
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FIRST AFFIRMATIVE DEFENSE
CDW has failed to state a claim upon which relief can be granted, with respect to each
cause of action set forth in its Answer and Counterclaims.
SECOND AFFIRMATIVE DEFENSE
CDW has failed to state facts and/or a legal basis sufficient to permit recovery of its
attorneys’ fees and/or expenses for defending this suit.
OTHER AFFIRMATIVE DEFENSES
Eolas hereby gives notice that it intends to rely upon any other defense that may become
available in this case and hereby reserves the right to amend this Answer to assert any such
defense.
DEMAND FOR JURY TRIAL
Eolas demands a trial by jury of any and all issues triable of right before a jury.

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Dated: August 18, 2011.

MCKOOL SMITH, P.C.
/s/ Mike McKool
Mike McKool
Lead Attorney
Texas State Bar No. 13732100
[e-mail]
Douglas Cawley
Texas State Bar No. 04035500
[e-mail]
Holly Engelmann
Texas State Bar No. 24040865
[e-mail]
J.R. Johnson
Texas State Bar No. 24070000
[e-mail]
MCKOOL SMITH, P.C.
300 Crescent Court, Suite 1500
Dallas, Texas 75201
Telephone: [phone]
Telecopier: [phone]
Kevin L. Burgess
Texas State Bar No. 24006927
[e-mail]
Josh W. Budwin
Texas State Bar No. 24050347
[e-mail]
Gretchen K. Curran
Texas State Bar No. 24055979
[e-mail]
Matthew B. Rappaport
Texas State Bar No. 24070472
[e-mail]
MCKOOL SMITH, P.C.
300 West Sixth Street, Suite 1700
Austin, Texas 78701
Telephone: [phone]
Telecopier: [phone]
ATTORNEYS FOR PLAINTIFF
EOLAS TECHNOLOGIES INC.

McKool 396267v1

CERTIFICATE OF SERVICE
The undersigned certifies that true and correct copies of the foregoing document were
served to all counsel of record via the Court’s ECF system.
/s/ Josh Budwin
Josh Budwin

McKool 396267v1