Free Answer to Complaint - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE SUN MICROSYSTEMS, INC., Plaintiff, v. VERSATA ENTERPRISES, INC., VERSATA SOFTWARE, INC., VERSATA DEVELOPMENT GROUP, INC., VERSATA COMPUTER INDUSTRY SOLUTIONS, INC., VERSATA, INC., TRIOLOGY, INC., and NEXTANCE, INC., Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) )

C.A. No. 07-782 (JJF) JURY TRIAL DEMANDED

DEFENDANTS' ANSWER TO COMPLAINT AND COUNTERCLAIMS Defendants, Versata Enterprises, Inc., Versata Software, Inc., Versata Development Group, Inc., Versata Computer Industry Solutions, Inc., Versata, Inc., Trilogy, Inc., and Nextance, Inc. (collectively "Versata"), hereby answer the Complaint of Plaintiff, Sun Microsystems, Inc.'s ("Sun"), as follows: THE PARTIES 1. Versata admits, upon information and belief, that Sun is a Delaware corporation

with its principal place of business in Santa Clara, California. 2. Versata admits that Defendants, Versata Enterprises, Inc., Versata Software, Inc.,

Versata Development Group, Inc., Versata Computer Industry Solutions, Inc., Versata, Inc., Trilogy, Inc., and Nextance, Inc., are all corporations incorporated and existing under the laws of the State of Delaware. Further, Versata admits that Defendants, Versata Enterprises, Inc., Versata Software, Inc., Versata Development Group, Inc., Versata Computer Industry Solutions, Inc., Versata, Inc., Trilogy, Inc., and Nextance, Inc., each have their principal place of business

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in Austin, Texas. Versata denies that there have been any acts "in connection with the infringement of Sun's patents." Versata is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in Paragraph 2 of Sun's Complaint and, on that basis, denies them. JURISDICTION AND VENUE 3. Versata admits that this Court has subject matter jurisdiction over the asserted

claims in Sun's Complaint arising under the patent laws of the United States, pursuant to 28 U.S.C. §§ 1331 and 1338(a). Versata also admits that this Court has personal jurisdiction over Versata. 4. Versata admits that venue is proper in this district. COUNT ONE 5. Versata admits that the title of U.S. Patent No. 6,832,223 ("the '223 patent") is

"Method and System for Facilitating Access to a Lookup Service," and that the '223 patent indicates on its face that it issued on December 14, 2004. Versata admits that a copy of the '223 patent is attached as Exhibit A to Sun's Complaint. Versata denies each of the remaining allegations in Paragraph 5 of Sun's Complaint. 6. 7. 8. 9. Versata denies the allegation of Paragraph 6 of Sun's Complaint. Versata denies the allegations of Paragraph 7 of Sun's Complaint. Versata denies the allegations of Paragraph 8 of Sun's Complaint. Versata denies the allegations of Paragraph 9 of Sun's Complaint. COUNT TWO 10. Versata admits that the title of U.S. Patent No. 5,870,719 ("the '719 patent") is

"Platform-Independent, Usage-Independent, and Access-Independent Distributed Quote

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Configuration System," and that the '719 patent indicates on its face that it issued on February 9, 1999. Versata admits that a copy of the '719 patent is attached as Exhibit B to Sun's Complaint. Versata denies each of the remaining allegations of Paragraph 10 of Sun's Complaint. 11. 12. 13. 14. Versata denies the allegations of Paragraph 11 of Sun's Complaint. Versata denies the allegations of Paragraph 12 of Sun's Complaint. Versata denies the allegations of Paragraph 13 of Sun's Complaint. Versata denies the allegations of Paragraph 14 of Sun's Complaint. COUNT THREE 15. Versata admits that the title of U.S. Patent No. 5,963,950 ("the '950 patent") is

"Method and System for Facilitating Access to Selectable Elements on a Graphical User Interface," and that the '950 patent indicates on its face that it issued on October 5, 1999. Versata admits that a copy of the '950 patent is attached as Exhibit C to Sun's Complaint. Versata denies each of the remaining allegations of Paragraph 15 of Sun's Complaint. 16. 17. 18. 19. Versata denies the allegations of Paragraph 16 of Sun's Complaint. Versata denies the allegations of Paragraph 17 of Sun's Complaint. Versata denies the allegations of Paragraph 18 of Sun's Complaint. Versata denies the allegations of Paragraph 19 of Sun's Complaint. COUNT FOUR 20. Versata admits that the title of U.S. Patent No. 5,761,662 ("the '662 patent") is

"Personalized Information Retrieval Using User-Defined Profile," and that the '662 patent indicates on its face that it issued on June 2, 1998. Versata admits that a copy of the '662 patent is attached as Exhibit D to Sun's Complaint. Versata denies each of the remaining allegations of Paragraph 20 of Sun's Complaint.

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21. 22. 23. 24.

Versata denies the allegations of Paragraph 21 of Sun's Complaint. Versata denies the allegations of Paragraph 22 of Sun's Complaint. Versata denies the allegations of Paragraph 23 of Sun's Complaint. Versata denies the allegations of Paragraph 24 of Sun's Complaint. DEFENSES FIRST DEFENSE (FAILURE TO STATE A CLAIM)

25.

Sun has failed, with respect to each and every count of the Complaint, to state a

claim upon which relief may be granted. SECOND DEFENSE (NON-INFRINGEMENT) 26. Versata has not infringed, directly or indirectly, willfully or otherwise, any valid

claim of the '223 patent, the '719 patent, the '950 patent, and the '662 patent. THIRD DEFENSE (INVALIDITY) 27. Versata is informed and believes and thereupon alleges that each claim of the

'223 patent, the '719 patent, the '950 patent, and the '662 patent is invalid for failure to meet the conditions of patentability set forth in 35 U.S.C. §§ 101, 102, 103 and 112. FOURTH DEFENSE (EQUITABLE ESTOPPEL) 28. Sun is estopped by its misleading, deceptive, and unlawful conduct from asserting

that Versata's products or methods infringe any valid claim of the '223 patent, the '719 patent, the '950 patent, and the '662 patent. FIFTH DEFENSE (LACHES) 29. Sun's claims are barred or limited by the doctrine of laches.

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SIXTH DEFENSE (WAIVER) 30. Sun has waived all rights, if any, to enforce each of the '223 patent, the '719

patent, the '950 patent, and the '662 patent against Versata's products. SEVENTH DEFENSE (UNCLEAN HANDS) 31. Sun's claims are barred by the doctrine of unclean hands, the facts and

circumstances of which are generally described in Versata's counterclaims below. EIGHTH DEFENSE (LICENSE) 32. Versata and/or Versata's customer's are licensed to practice the inventions

claimed in the '223 patent, the '719 patent, the '950 patent, and the '662 patent. NINTH DEFENSE (IMPLIED LICENSE) 33. Versata is informed and believes and thereupon alleges that, based upon Sun's

conduct, Versata and/or Versata's customer's have an implied license to practice the claims of the '223 patent, the '719 patent, the '950 patent, and the '662 patent. TENTH DEFENSE (PATENT EXHAUSTION) 34. Versata is informed and believes and thereupon alleges that, based upon Sun's

conduct, Sun cannot enforce each of the '223 patent, the '719 patent, the '950 patent, and the '662 patent against Versata's products under the doctrine of patent exhaustion. ELEVENTH DEFENSE (FAILURE TO MARK) 35. Versata is informed and believes and thereupon alleges that Sun is precluded from

recovering, in whole or in part, the damages sought in Sun's Complaint, because of Sun's failure to mark and/or to require Sun's licensees to mark products that practice the '223 patent, the '719 patent, the '950 patent, and the '662 patent, as required by 35 U.S.C. § 287.

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TWELFTH DEFENSE (LIMITATION ON DAMAGES AND COSTS) 36. Sun's claims for relief and prayer for damages and injunctions are barred in whole

or in part by operation of the applicable statutes, including but not limited to 35 U.S.C. §§ 286 and 287. Sun's damages are further limited under 35 U.S.C. § 284, due to the fact that Sun is a customer of Nextance and uses Nextance's products. Sun's recovery of costs is limited under 35 U.S.C. § 288. THIRTEENTH DEFENSE (INEQUITABLE CONDUCT - '719 PATENT) 37. Versata is informed and believes and thereupon alleges that the '719 patent is

unenforceable because of the inequitable conduct of the named inventors and/or those involved in the prosecution of the '719 Application before the United States Patent and Trademark Office ("PTO"). Specifically, Versata contends that the '719 patent is unenforceable due to inequitable conduct because, prior to the issuance of the '719 patent, the named inventors of the '719 patent, L.M. Maritzen, Rolando D. Dimaandal, Julia Giannella, Raul Arregui, and Mark Moss, and/or others involved in prosecuting the application leading to the '719 patent, as the employees or agents of Sun, were aware of information material to the patentability of the claims of the '719 patent, but withheld that information from the PTO during prosecution of the '719 patent with the intention of deceiving the PTO, and made affirmative representations to the PTO during the prosecution of the '719 patent with the intention of deceiving the PTO, including without limitation: (a) failure to disclose information, publications, and press releases relating to the availability of JAVA and byte codes to the general public more than one year prior to the effective filing date of the '719 patent, during the prosecution of the '719 patent, each of which is material to the patentability of the claims of the '719 patent; (b) failure to cite material patents and prior art publications during the prosecution of the '719 patent, each of which is material to

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the patentability of the claims of the '719 patent; and (c) misrepresentation, with the intent to deceive the PTO. The specific prior art patents, publications, and misrepresentations that form the basis of Versata's allegations are set forth below in Count six of Versata's Counterclaims, which are incorporated herein by reference. FOURTEENTH DEFENSE (RESERVATION OF ADDITIONAL DEFENSES) 38. Discovery in this case has not been completed, and Versata continues to

investigate the allegations set forth in Sun's Complaint and to ascertain the full extent of Sun's claims. Versata intends to rely upon such other defenses as may become available by law, or pursuant to statute, or discovery proceedings in this case, and hereby reserves the right to amend it Answer and assert such defenses. COUNTERCLAIMS THE PARTIES 1. Versata Enterprises, Inc. is a corporation incorporated and existing under the laws

of the state of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730. 2. Versata Software, Inc., f/k/a Trilogy Software, Inc., is a corporation incorporated

and existing under the laws of the state of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730. 3. Versata Development Group, Inc. is a corporation incorporated and existing under

the laws of the state of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730.

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4.

Versata Computer Industry Solutions, Inc. is a corporation incorporated and

existing under the laws of the state of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730. 5. Versata, Inc. is a corporation incorporated and existing under the laws of the state

of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730. 6. Trilogy, Inc. is a corporation incorporated and existing under the laws of the state

of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730. 7. Nextance, Inc. is a corporation incorporated and existing under the laws of the

state of Delaware with its principal place of business at 6011 W. Courtyard, Austin, Texas 78730. 8. On information and belief, Sun Microsystems, Inc. ("Sun") is a corporation

existing under the laws of Delaware with a place of business at 4150 Network Circle, Santa Clara, California 95054. JURISDICTION AND VENUE 9. This Court has subject matter jurisdiction over Versata's antitrust and patent

claims pursuant to 15 U.S.C. §§ 4, 15, and 26; 28 U.S.C. §§ 1331, 1337, 1338, 2201 and 2202. This Court has supplemental jurisdiction over Versata's state law claims pursuant to 28 U.S.C. § 1367. 10. This Court has personal jurisdiction over Sun, at least because Sun filed its claim

for patent infringement in this Court, in response to which these counterclaims are filed. 11. 1391. Venue is proper in this judicial district under 15 U.S.C. § 22 and 28 U.S.C. §

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COUNT ONE DECLARATION OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE '223 PATENT 12. Versata hereby incorporates by reference Paragraphs 1­11 of the Counterclaims

as if fully set forth here. 13. 14. 15. Sun alleges that it holds all right, title, and interest in and to the '223 patent. Sun has sued Versata for alleged infringement of the '223 patent. Versata has not infringed and is not infringing, either directly or indirectly by way

of inducing infringement or contributory infringement, any valid claim of the '223 patent. 16. Each claim of the '223 patent is invalid for failure to comply with the conditions

for patentability set forth in the patent laws of the United States, including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112. 17. The '223 patent is unenforceable based upon, inter alia, equitable estoppel,

laches, waiver, unclean hands, license, implied license, patent exhaustion, failure to mark, and violations of the antitrust and unfair competition laws. 18. An actual controversy exists between Sun and Versata regarding whether the

claims of the '223 patent are not infringed by Versata, are invalid, and/or are unenforceable. 19. Versata seeks a declaration that the '223 patent is not infringed by Versata, is

invalid, and/or is unenforceable. COUNT TWO DECLARATION OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE '719 PATENT 20. Versata hereby incorporates by reference Paragraphs 1­11 of the Counterclaims

as if fully set forth here.

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21. 22. 23.

Sun alleges that it holds all right, title, and interest in and to the '719 patent. Sun has sued Versata for alleged infringement of the '719 patent. Versata has not infringed and is not infringing, either directly or indirectly by way

of inducing infringement or contributory infringement, any valid claim of the '719 patent. 24. Each claim of the '719 patent is invalid for failure to comply with the conditions

for patentability set forth in the patent laws of the United States, including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112. 25. The '719 patent is unenforceable based upon, inter alia, equitable estoppel,

laches, waiver, unclean hands, license, implied license, patent exhaustion, failure to mark, inequitable conduct, and violations of the antitrust and unfair competition laws. 26. An actual controversy exists between Sun and Versata regarding whether the

claims of the '719 patent are not infringed by Versata, are invalid, and/or are unenforceable. 27. Versata seeks a declaration that the '719 patent is not infringed by Versata, is

invalid, and/or is unenforceable. COUNT THREE DECLARATION OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE '950 PATENT 28. Versata hereby incorporates by reference Paragraphs 1­11 of the Counterclaims

as if fully set forth here. 29. 30. 31. Sun alleges that it holds all right, title, and interest in and to the '950 patent. Sun has sued Versata for alleged infringement of the '950 patent. Versata has not infringed and is not infringing, either directly or indirectly by way

of inducing infringement or contributory infringement, any valid claim of the '950 patent.

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32.

Each claim of the '950 patent is invalid for failure to comply with the conditions

for patentability set forth in the patent laws of the United States, including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112. 33. The '950 patent is unenforceable based upon, inter alia, equitable estoppel,

laches, waiver, unclean hands, license, implied license, failure to mark, and violations of the antitrust and unfair competition laws. 34. An actual controversy exists between Sun and Versata regarding whether the

claims of the '950 patent are not infringed by Versata, are invalid, and/or are unenforceable. 35. Versata seeks a declaration that the '950 patent is not infringed by Versata, is

invalid, and/or is unenforceable. COUNT FOUR DECLARATION OF NON-INFRINGEMENT, INVALIDITY, AND UNENFORCEABILITY OF THE '662 PATENT 36. Versata hereby incorporates by reference Paragraphs 1­11 of the Counterclaims

as if fully set forth here. 37. 38. 39. Sun alleges that it holds all right, title, and interest in and to the '662 patent. Sun has sued Versata for alleged infringement of the '662 patent. Versata has not infringed and is not infringing, either directly or indirectly by way

of inducing infringement or contributory infringement, any valid claim of the '662 patent. 40. Each claim of the '662 patent is invalid for failure to comply with the conditions

for patentability set forth in the patent laws of the United States, including but not limited to 35 U.S.C. §§ 101, 102, 103, and/or 112.

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41.

The '662 patent is unenforceable based upon, inter alia, equitable estoppel,

laches, waiver, unclean hands, license, implied license, failure to mark, and violations of the antitrust and unfair competition laws. 42. An actual controversy exists between Sun and Versata regarding whether the

claims of the '662 patent are not infringed by Versata, are invalid, and/or are unenforceable. 43. Versata seeks a declaration that the '662 patent is not infringed by Versata, is

invalid, and/or is unenforceable. COUNT FIVE ATTEMPTED MONOPOLIZATION UNDER 15 U.S.C. § 2 SHAM LITIGATION A. 44. Trilogy's Patented Product Configuration Technology One of Versata's primary product lines is its product configuration software. This

technology, as the name implies, enables a consumer to select different options on a product such as a computer or a car. Versata's product configuration technology ensures that only the proper options are presented to the consumer so that the final product is one that can be built and sold. 45. Versata owns three patents that relate to Versata's product configuration

technology (the "Versata Patents"). 46. The first of the Versata Patents is United States Patent No. 5,515,524 ("the '524

patent"), entitled "Method and Apparatus for Configuring Systems." The United States Patent and Trademark Office ("PTO") duly and legally issued the '524 patent on May 7, 1996. Versata holds all right, title, and interest in and to the '524 patent. 47. The second of the Versata Patents is United States Patent No. 5,708,798 ("the

'798 patent"), entitled "Method and Apparatus for Configuring Systems." The PTO duly and

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legally issued the '798 patent on January 13, 1998. Versata holds all right, title, and interest in and to the '798 patent. 48. The third of the Versata Patents is United States Patent No. 6,002,854 ("the '854

patent"), entitled "Method and Apparatus for Configuring Systems." The PTO duly and legally issued the '854 patent on December 14, 1999. Versata holds all right, title, and interest in and to the '854 patent. B. 49. Trilogy's License Agreement With Sun On or about November 30, 1998, Trilogy Software, Inc. ("Trilogy") (now known

as Versata Software, Inc.) and Sun executed a Software License Agreement ("License Agreement") and a Professional Services Agreement ("Services Agreement"). Pursuant to the License Agreement, Trilogy granted Sun a non-exclusive right and license to use its product configuration computer software in accordance with certain specified terms and conditions. Pursuant to the Services Agreement, Trilogy agreed to provide professional services related to its licensed products to Sun. 50. Trilogy establishes and memorializes a confidential relationship with each of its

customers, and Sun was no exception. Section 1.2 of the License Agreement and Section 4.1 of the Services Agreement each defined "Confidential Information" as: Any and all information disclosed by a party hereunder ("Discloser") to the other ("Recipient") in a written or other tangible form and which is clearly marked as being confidential or proprietary. Information disclosed orally shall also constitute "Confidential Information" if it is (a) designated as confidential or proprietary by the Discloser at the time of disclosure, and (b) summarized and identified as being Confidential Information in a writing which is received by Recipient within thirty (30) days after disclosure. 51. Section 9.2 of the License Agreement and Sections 4.2 and 4.5 of the Services

Agreement provided in part that:

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Recipient shall neither disclose Discloser's Confidential Information to any third party, nor use the same for any purpose other than as set forth in this Agreement. In the case of Sun, it may use Confidential Information of Trilogy only to support its use of the Licensed Product(s) as expressly authorized by this Agreement. Recipient shall use the same degree of reasonable care as it uses to protect its own confidential information, but no less than reasonable care, to prevent the unauthorized use, dissemination or publication of the Confidential Information. Recipient shall not, in whole or in part, copy or reproduce the Confidential Information except as necessary for the purposes expressly set forth in this Agreement. * * *

Notwithstanding the definition of "Confidential Information," . . . (iii) "Confidential Information" of Trilogy includes (A) all information or materials generated by Sun that contains or reflects Confidential Information of Trilogy, (B) the Software Tools; and (C) any source code of Trilogy (including source code for the Computer Industry Model (CIM)). 52. Additionally, Amendment No. 1 to the License Agreement provided that:

Trilogy's highly confidential and proprietary Computer Industry Model ("CIM") is a compilation of configuration modeling language code ("CML") and data that models generic product logic (including hardware and software configuration logic) and generic product data for certain data processing products. The CIM includes object code and source code forms. The CIM and nonpublic information relating thereto is Trilogy Confidential Information. CML modeling techniques and nonpublic information related to CML are also Trilogy Confidential Information. 53. In two addenda to the Services Agreement, the parties also agreed that Trilogy's

Confidential Information would include Trilogy's Source Safe database and Trilogy's Silk Framework Development Kit. 54. After the parties entered into the License Agreement and Services Agreement

(collectively, "Agreements"), Trilogy deployed its product configuration software at Sun. During the course of that deployment and Trilogy's subsequent business dealings with Sun, Sun gained access to and acquired valuable technical and commercial trade secrets and confidential and proprietary information belonging to Trilogy.

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55.

Pursuant to the Agreements, Trilogy employees and contractors trained Sun

employees to use Trilogy's product configuration software. The Sun employees trained on Trilogy's configuration software included, but were not necessarily limited to, Ateet Goel, Rupa Krishnan, Andrew Magyar, Ranju Rajan, and Manav Sharma. These Sun employees gained access to and acquired valuable Trilogy trade secrets and confidential and proprietary information as part of the training process. C. 56. Sun's W5C Configurator In 2002, Sun issued a Request for Proposal ("RFP") soliciting a new vendor to

provide its product configuration software. Although Trilogy submitted a proposal to Sun in response to the RFP, Sun did not select Trilogy as its configuration software vendor going forward. Rather, during the summer of 2002, Sun selected Oracle Corporation ("Oracle") as its new vendor for product configuration software. 57. Upon information and belief, after selecting Oracle as its new vendor for product

configuration software, Sun began to develop its own internal configuration solution. In August 2002, Sun transitioned nearly all of the Sun employees assigned to work with the Trilogy Configurator in use at Sun (including, but not necessarily limited to Ateet Goel, Rupa Krishnan, Andrew Magyar, Ranju Rajan, Manav Sharma, and Shyam Lakshman) to its internal "W5C Configurator" development project. These Sun employees and others created Sun's W5C Configurator by developing functional companions for the simple configuration solution supplied to Sun by Oracle. Sun continued its use of Trilogy's product configuration software during its development project, but eventually phased out Trilogy's Configurator when the W5C Configurator was completed in May 2005.

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58.

Upon information and belief, Sun developed its W5C Configurator with trade

secrets and confidential and proprietary information belonging to Trilogy. Sun gained access to these trade secrets and confidential and proprietary information pursuant to the Agreements, which prohibit such use. Sun also gained access to Trilogy's trade secrets and confidential and proprietary information from two former Trilogy employees, Shyam Lakshman and Jean Murray, a former Trilogy contractor, Evan Kempner, and the Sun employees who were trained on Trilogy's software under the Agreements. Sun induced some or all of these individuals to improperly disclose Trilogy's trade secrets and confidential and proprietary information for use in the development of Sun's W5C Configurator. D. 59. Sun Hires Shyam Lakshman Shyam S. Lakshman ("Lakshman") formerly worked for pcOrder.com, a Trilogy

subsidiary. While at pcOrder.com, Lakshman was a key modeler using Trilogy's proprietary and trade secret configuration technology. 60. On or about September 11, 1995, Lakshman signed a Proprietary Information

Agreement under which he agreed not to use in any unauthorized manner or to disclose confidential, proprietary, or trade secret information of Trilogy to any third party at any time during or after his employment by Trilogy. As Lakshman acknowledged in his Proprietary Information Agreement: I understand that my work as an employee of Trilogy will involve access to and creation of confidential (including trade secrets) and proprietary information (collectively, "Proprietary Information"). I agree to keep all Proprietary Information in trust for the benefit of Trilogy. I will never use any Proprietary Information, except as required by my duties to Trilogy. I understand that this prohibition on use or disclosure prevents me from discussing Proprietary Information, even in general terms, with persons outside Trilogy.

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"Proprietary Information" means information, ideas, and materials of or about Trilogy or its affiliates, employees, customers, or others with whom Trilogy conducts business. Proprietary Information that is not generally known to the software industry or the public is confidential, and I agree to exercise diligence at all times to maintain the confidentiality of all confidential Proprietary Information and not disclose confidential Proprietary Information. I understand that my obligation to keep Proprietary Information strictly confidential shall survive the termination of my employment and/or this agreement. Proprietary Information includes, without limitation, information, ideas or materials of a technical nature such as research and development results, software design and specifications, source and object code, training and training materials, invention disclosures, patent applications, and other materials and concepts relating to Trilogy's products and processes. Proprietary Information also includes information, ideas, or materials of a business nature such as non-public financial information; information relating to profits, costs, marketing, strategy, purchasing, sales, customers, suppliers, contract terms, employees, and salaries, product development plans; business and financial plans and forecasts, and marketing and sales plans and forecasts. 61. During the course of his employment by pcOrder.com, Lakshman acquired

confidential, trade secret, and highly proprietary information concerning all aspects of Trilogy's product configuration software. 62. Lakshman resigned from his position at Trilogy's subsidiary pcOrder.com on

February 11, 1997. 63. Sun hired Lakshman after his departure from Trilogy. After Sun licensed

Trilogy's product configuration software in November 1998, Lakshman became the technical deployment lead for Trilogy's Configurator at Sun. 64. Upon information and belief, in or around August 2002, after working with

Trilogy's Configurator in use at Sun for more than three years, Lakshman transitioned from his position as technical deployment lead for Trilogy's Configurator in use at Sun to technical architecture lead for Sun's W5C Configurator project.

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65.

Upon information and belief, while working on Sun's W5C Configurator project,

Lakshman utilized and disclosed confidential, proprietary, and trade secret information regarding Trilogy's configuration software that he acquired while employed by Trilogy's subsidiary pcOrder.com and while working with Trilogy's Configurator in use at Sun. E. 66. Sun Hires Jean Murray Jean Murray ("Murray") is a former Trilogy employee. While employed by

Trilogy, Murray acted as the program manager for the deployment of Trilogy's configuration software at Sun. 67. On or about July 6, 1999, Murray signed a Proprietary Information Agreement

under which she agreed not to use in any unauthorized manner or to disclose confidential, proprietary, or trade secret information of Trilogy to any third party at any time during or after her employment by Trilogy. As Murray acknowledged in her Proprietary Information Agreement: I understand that my work as an employee of Trilogy will involve access to and creation of confidential (including trade secrets) and proprietary information (collectively, "Proprietary Information"). I agree to keep all Proprietary Information in trust for the benefit of Trilogy. I will never use any Proprietary Information, except as required by my duties to Trilogy. I understand that this prohibition on use or disclosure prevents me from discussing Proprietary Information, even in general terms, with persons outside Trilogy. "Proprietary Information" means information, ideas, and materials of or about Trilogy or its affiliates, employees, customers, or others with whom Trilogy conducts business. Proprietary Information that is not generally known to the software industry or the public is confidential, and I agree to exercise diligence at all times to maintain the confidentiality of all confidential Proprietary Information and not disclose confidential Proprietary Information. I understand that my obligation to keep Proprietary Information strictly confidential shall survive the termination of my employment and/or this agreement. Proprietary Information includes, without limitation, information, ideas or materials of a technical nature such as research and development results, software

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design and specifications, source and object code, training and training materials, invention disclosures, patent applications, and other materials and concepts relating to Trilogy's products and processes. Proprietary Information also includes information, ideas, or materials of a business nature such as non-public financial information; information relating to profits, costs, marketing, strategy, purchasing, sales, customers, suppliers, contract terms, employees, and salaries, product development plans; business and financial plans and forecasts, and marketing and sales plans and forecasts. 68. During the course of her employment with Trilogy, Murray acquired confidential,

trade secret, and highly proprietary information concerning all aspects of Trilogy's configuration software. 69. On or about December 3, 2003, Sun approached Trilogy and asked whether

Trilogy would object if Sun hired Murray. According to Sun, Murray would continue to work with Trilogy's Configurator in her new position at Sun, performing essentially the same role that she had been assigned while working for Trilogy. Based on Sun's representation regarding Murray's expected job function at Sun, Trilogy indicated that it would not object to Sun hiring Murray, provided that Murray abided by her ongoing confidentiality obligations to Trilogy in her new job. 70. Upon Murray's departure from Trilogy, Murray and Trilogy executed a contract

entitled "Employment Separation Agreement and Voluntary Release," which incorporated by reference Murray's Proprietary Information Agreement. Murray's separation from Trilogy was effective as of March 31, 2004. 71. Upon information and belief, Murray did not continue to work primarily with

Trilogy's Configurator in use at Sun after becoming a Sun employee. Rather, Murray became the program manager for Sun's W5C Configurator project.

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72.

Upon information and belief, while working on Sun's W5C Configurator project,

Murray utilized and disclosed confidential, proprietary, and trade secret information regarding Trilogy's configuration software that she acquired while employed by Trilogy. F. 73. Sun Hires Evan Kempner Trilogy hired Evan Kempner ("Kempner") as a contractor in April 2000. At the

time of his employment by Trilogy, Kempner was an employee of Onward, Inc. ("Onward"). Kempner's job duties as a Trilogy contractor included modeling computer products to be deployed at Sun, maintaining those models, and training Sun employees on Trilogy's configuration software. 74. On or about April 24, 2000, Kempner signed a "Nondisclosure Agreement For

Consultants," pursuant to which he agreed not to use in any unauthorized manner or to disclose confidential, proprietary, or trade secret information of Trilogy to any third party at any time during or after the termination of his business relationship with Trilogy. As Kempner acknowledged in the Nondisclosure Agreement For Consultants: WHEREAS, Trilogy in the course of its dealings with Consultant may furnish to Consultant "Confidential Information" as defined in Paragraph 1 and does not wish to convey any interest of copyright therein to Consultant, or make such Confidential Information public or common knowledge to be disclosed to any third party, or permit any use thereof except to engage in such discussions; and NOW, THEREFORE, in consideration of the business discussions, disclosure of Confidential Information and any future business relationship between the parties, it is hereby agreed as follows: 1. CONFIDENTIAL INFORMATION: For purposes of this Agreement, the term "Confidential Information" includes but is not limited to the following: Any information, business plan, concept, idea, know-how, process, technique, program, design, formula, algorithm or work-in-progress, any engineering, manufacturing, marketing, technical, financial, data, or sales information, pricing or business information, or any information regarding suppliers, customers, employees, investors, or business operations, and any other information or

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materials, whether written, or graphic, or any other form or that is disclosed orally, or electronically, whether tangible or intangible and in whatever form or medium provided, or otherwise which is learned or disclosed in the course of discussions, studies, or other work undertaken between the parties. Without limiting the generality of the foregoing, Confidential Information shall include all information and materials disclosed orally or in any other form, regarding Trilogy's software products or software product development, including, but not limited to, the configuration techniques, data classification techniques, user interface, applications programming interfaces, data modeling and management techniques, data structures, and other information of or relating to Trilogy's software products or derived from testing or other use thereof. Confidential Information shall not include any information included under Paragraph 7. 2. JOINT UNDERTAKING. Consultant agrees that Consultant will not at any time disclose, give or transmit in any manner or form or for any purpose, the Confidential Information received from Trilogy to any person, party, firm or corporation entity, or use such Confidential Information for its own benefit or the benefit of anyone else, or for any purpose other than to engage in discussions regarding possible business relationship involving both Consultant and Trilogy. Without limitation of the generality of the foregoing, Consultant may not use, refer to, or otherwise benefit from the Confidential Information of Trilogy in connection with Consultant's market research, competitive analysis, development, planning, marketing or other business activities. Consultant shall take all reasonable measures to preserve the confidentiality and avoid the disclosure of Trilogy's Confidential Information, including, but not limited to, those steps taken with respect to Consultant's own confidential information or like importance. Consultant shall not disassemble, decompile or otherwise reverse engineer any software product of Trilogy's and, to the extent any such activity may be permitted, the results thereof shall be deemed Confidential Information subject to the requirements of this Agreement. 75. Kempner's work on behalf of Trilogy was also performed subject to the August

10, 1997 Confidentiality Agreement between Onward and Trilogy, the confidentiality obligations set forth in Section 6 of the August 11, 1997 Computer Consulting Services Agreement between Onward and Trilogy, together with Addendum #1 and Addendum #2 to that agreement, and the confidentiality obligations set forth in Section 4 of the November 6, 2000 Consultant Agreement between Onward and Trilogy.

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76.

In his role as a Trilogy contractor, Kempner acquired confidential, trade secret,

and highly proprietary information concerning all aspects of Trilogy's configuration software. 77. On or about August 26, 2002, Sun approached Trilogy and asked whether Trilogy

would object if Sun hired Kempner. Sun indicated that, in his new position at Sun, Kempner would continue to model computer products to be deployed at Sun and replace Lakshman as the technical deployment lead for Trilogy's Configurator in use at Sun. 78. In a September 9, 2002 letter to Sun's Sze Fen Tan, Trilogy indicated that it

would not object if Sun hired Kempner, as long as Kempner abided by his ongoing confidentiality obligations to Trilogy. In that letter, Trilogy reminded Sun that Kempner "had access to very significant Trilogy Confidential Information" and reiterated its expectation "that Sun will take all necessary steps to ensure that Mr. Kempner and any other individuals who have had access to Trilogy Confidential Information will not use or disclose the information in any manner not expressly permitted." Trilogy also stated that Kempner "should be informed that he may not provide Sun with Trilogy Confidential Information that he accessed during his previous engagements in connection with Trilogy products and/or services." On or about September 26, 2002, Sun assured Trilogy in writing that it would take appropriate steps to ensure compliance with Sun's contractual confidentiality obligations to Trilogy upon hiring Kempner. 79. Also in September 2002, Trilogy reminded Kempner in writing of his continuing

obligations to Trilogy pursuant to his Nondisclosure Agreement for Consultants. 80. Upon information and belief, in the fall of 2003, Kempner began working

simultaneously as both technical deployment lead for Trilogy's Configurator in use at Sun and as technical deployment lead for Sun's W5C Configurator project.

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81.

Upon information and belief, while working on Sun's W5C Configurator project,

Kempner utilized and disclosed confidential, proprietary, and trade secret information regarding Trilogy's product configuration software that he acquired while employed by Trilogy and while working with the Trilogy Configurator at Sun. G. 82. Versata Sues Sun for Patent Infringement and Trade Secret Misappropriation On September 9, 2006, Versata sued Sun for infringing the '524, the '798, and the

'854 patents. In addition, Versata sued Sun for breach of contract, tortious interference with existing contract, and trade secret misappropriation. H. 83. Sun Retaliates by Filing This Lawsuit On November 30, 2007, Sun filed a complaint against Versata Enterprises, Inc.,

Versata Software, Inc., Versata Development Group, Inc., Versata Computer Industry Solutions, Inc., Versata, Inc., Trilogy, Inc., and Nextance, Inc. (collectively "Versata") for alleged infringement of the following four patents: U.S. Patent Nos. 6,832,223 ("the '223 patent"); 5,870,719 ("the '719 patent"); 5,963,950 ("the '950 patent"); and 5,761,662 ("the '662 patent") (collectively the "Sun Patents"). 84. Prior to filing suit, Sun did not provide notice to Versata of its alleged

infringement of any of the Sun Patents. 85. In its Complaint, Sun alleged that Versata has "made, used, offered for sale and/or

sold in the United States a system that infringes one or more claims of the '223 patent." Sun did not specify in its Complaint, which "system" allegedly infringed the '223 patent.

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86.

In its Complaint, Sun alleged that Versata has "made, used, offered for sale and/or

sold in the United States a system that infringement one or more claims of the '719 patent." Sun did not specify in its Complaint, which "system" allegedly infringed the '719 patent. 87. In its Complaint, Sun alleged that Versata has "made, used, offered for sale and/or

sold in the United States a system that infringement one or more claims of the '950 patent." Sun did not specify in its Complaint, which "system" allegedly infringed the '950 patent. 88. In its Complaint, Sun alleged that Versata has "made, used, offered for sale and/or

sold in the United States a system that infringement one or more claims of the '662 patent." Sun did not specify in its Complaint, which "system" allegedly infringed the '662 patent. 89. On December 17, 2007, counsel for Versata sent a letter to counsel for Sun,

requesting that Sun "file an Amended Complaint that identifies, for each asserted patent: (1) the particular system that allegedly infringes that patent (by trade name); and (2) the defendant that allegedly makes, uses, offers for sale, or sells that system." 90. On December 24, 2007, counsel for Sun, sent an email message to counsel for

Versata, stating that "the '950 and '662 patents are infringed at least by your client's contract management software product, the '223 is infringed at least by your client's Logic Suite product, the `719 patent is infringed at least by your client's Logic Server product, and the latter two patents are also likely infringed by your client's business rules management system." 91. Versata is informed and believes and thereupon alleges that Sun's claim of

infringement of the '950 patent by Versata is made in bad faith and constitutes sham litigation. Versata is informed and believes and thereupon alleges that Sun's claim is objectively baseless, because no reasonable litigant could conclude that Sun's infringement allegations relating to the '950 patent are reasonably calculated to elicit a favorable outcome. Moreover, Versata is

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informed and believes and thereupon alleges that Sun did not have probable cause to allege that Versata infringed the '950 patent, because each claim of the '950 patent is either invalid, unenforceable, or plainly not infringed by Versata's products. Further, Versata is informed and believes and thereupon alleges that Sun's claim is subjectively baseless, because Sun claim of infringement is merely an attempt to conceal Sun's attempt to interfere directly with the business relationships of Versata. 92. Versata is informed and believes and thereupon alleges that Sun's claim of

infringement of the '662 patent by Versata is made in bad faith and constitutes sham litigation. Versata is informed and believes and thereupon alleges that Sun's claim is objectively baseless, because no reasonable litigant could conclude that Sun's infringement allegations relating to the '662 patent are reasonably calculated to elicit a favorable outcome. Moreover, Versata is informed and believes and thereupon alleges that Sun did not have probable cause to allege that Versata infringed the '662 patent, because each claim of the '662 patent is either invalid, unenforceable, or plainly not infringed by Versata's products. Further, Versata is informed and believes and thereupon alleges that Sun's claim is subjectively baseless, because Sun claim of infringement is merely an attempt to conceal Sun's attempt to interfere directly with the business relationships of Versata. 93. Versata is informed and believes and thereupon alleges that Sun's claim of

infringement of the '223 patent by Versata is made in bad faith and constitutes sham litigation. Versata is informed and believes and thereupon alleges that Sun's claim is objectively baseless, because no reasonable litigant could conclude that Sun's infringement allegations relating to the '223 patent are reasonably calculated to elicit a favorable outcome. Moreover, Versata is informed and believes and thereupon alleges that Sun did not have probable cause to allege that

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Versata infringed the '223 patent, because each claim of the '223 patent is either invalid, unenforceable, or plainly not infringed by Versata's products. Further, Versata is informed and believes and thereupon alleges that Sun's claim is subjectively baseless, because Sun claim of infringement is merely an attempt to conceal Sun's attempt to interfere directly with the business relationships of Versata. 94. Versata is informed and believes and thereupon alleges that Sun's claim of

infringement of the '719 patent by Versata is made in bad faith and constitutes sham litigation. Versata is informed and believes and thereupon alleges that Sun's claim is objectively baseless, because no reasonable litigant could conclude that Sun's infringement allegations relating to the '719 patent are reasonably calculated to elicit a favorable outcome. Moreover, Versata is informed and believes and thereupon alleges that Sun did not have probable cause to allege that Versata infringed the '719 patent, because each claim of the '719 patent is either invalid, unenforceable, or plainly not infringed by Versata's products. Further, Versata is informed and believes and thereupon alleges that Sun's claim is subjectively baseless, because Sun claim of infringement is merely an attempt to conceal Sun's attempt to interfere directly with the business relationships of Versata. I. 95. Sun Attempts to Monopolize the Relevant Market in Web-Enabled Software Platforms in the United States Versata is informed and believes and thereupon alleges that, by filing this lawsuit,

Sun has attempted to acquire and unlawfully exploit monopoly power. More specifically, Sun has engaged in predatory or anticompetitive conduct with specific intent to monopolize, and there is a dangerous probability of Sun achieving monopoly power.

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96. 97. 98.

The relevant product market is the market for web-enabled software platforms. The relevant geographic market is the United States. Sun's conduct has achieved, or has a dangerous probability of achieving

monopoly power over the relevant product and geographic markets, unless such conduct is restrained and enjoined. If not restrained and enjoined, all manufacturers of web-enabled software platforms in the United States will be forced to enter into anticompetitive license agreements with Sun, thereby giving Sun control over 100% of the relevant product and geographic markets and thereby increasing its monopoly power and monopoly control thereover. 99. In fact, if Sun's public statements are accepted as true, Sun has already achieved

monopoly power and monopoly control over the relevant markets. According to a Sun press release: Since its introduction in May 1995, the Java platform has been adopted more quickly across the industry than any other technology in computing history. All major computing platform vendors have signed up to integrate Java technology as a core component of their products. What got the Java platform from there to here appears to have been sheer momentum. As Lisa Friendly said, "The developer's really made all this happen. It wasn't the hype." (Exhibit A, Jon Byous, Java Technology: The Early Years, April 2003, available at http://java.sun.com/features/1998/05/birthday.html.) 100. Sun's monopoly power over the relevant product and geographic markets has not

been acquired or achieved as a result of business growth or development or legitimate acquisition and enforcement of patents, or as a consequence of superior technology, business acumen, or historic accident. Rather, Sun has achieved monopoly power through predatory and anticompetitive conduct, such as filing the present lawsuit, which it engaged in with specific intent to obtain monopoly power.

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101.

Sun's conduct has had a substantial effect on interstate commerce, and it will

continue to have such an effect. 102. As a direct and proximate cause of Sun's unlawful attempted monopolization,

Versata has been injured in its business and property in an amount that has yet to be determined but will be established at trial. 103. Unless Sun is enjoined by a court of law, Sun's unlawful conduct will continue

and Versata will continue to sustain injury and damage. COUNT SIX ATTEMPTED MONOPOLIZATION UNDER 15 U.S.C. § 2 WALKER PROCESS FRAUD ('719 PATENT) 104. Versata hereby realleges and incorporates by reference the preceding allegations

of these counterclaims. 105. The patent application that resulted in the '719 patent was filed on July 3, 1996

and was assigned Application No. 08/675,683 ("the '719 Application") by the United States Patent and Trademark Office ("PTO"). 106. The '719 patent, entitled "Platform-Independent, Usage-Independent, and Access-

Independent Distributed Quote Configuration System" issued on February 9, 1999. A. The Independent Claims of the '719 Patent Require Either or Both of the User Interface and the Server Interface to Include "Platform Independent Byte-Codes" Claim 1 of the '719 patent claims "a quote configurator comprising: a client

107.

module ... having a user interface... and a server ... including a server interface." Claim 1 further claims that "said user interface and said server interface being comprised of platform independent byte-codes."

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108.

Claim 2 of the '719 patent claims "wherein the client module is JAVA

compatible." Claim 5 of the '719 patent claims "wherein the server is JAVA compatible." Claim 6 of the '719 patent claims "wherein the client interface byte-codes are interpreted for operation on a particular client platform." Claim 7 of the '719 patent claims "wherein the server interface byte-codes are interpreted for operation on a particular server platform." 109. Claim 12 of the '719 patent claims a "method for configuring quotes comprising:

receiving quote input and command selections from a user via a user interface in a client module, ... sending said quote input and command selections to a server across a server interface, said user interface and said server interface being comprised of platform independent byte-codes." 110. Claim 15 of the '719 patent claims "wherein the client module is JAVA

compatible." Claim 16 of the '719 patent claims "wherein the server is JAVA compatible." Claim 17 of the 719 patent claims "interpreting the client interface byte-codes for operation on a particular client platform." Claim 18 of the '719 patent claims "interpreting the server interface byte-codes for operation on a particular server platform." 111. Claim 23 of the '719 patent claims "said user interface and said server interface

being comprised of platform independent byte-codes." 112. Claim 24 of the '719 patent claims "said server interface being comprised of

platform independent byte-codes." 113. Therefore, all of the claims of the '719 patent include the "platform independent

byte-codes" limitation.

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B.

Throughout Prosecution, the Patent Examiner Refused to Allow Sun's Proposed Claims Based Solely on a "Platform-Independent User Interface" and/or a "Platform Independent Server Interface" as Anticipated and/or Obvious in View of the Prior Art When Sun filed the '719 Application, none of the independent claims included the

114.

"platform independent byte-codes" limitation. 115. On or around October 3, 1997, the patent examiner issued an office action

rejecting all 24 claims pending in the '719 Application. Claims 1-3, 12-14, 23, and 24 were all rejected under 35 U.S.C. § 102(e) "as being clearly anticipated by Dudle et al (5,570,291)." Claims 1-3, 12-14, 23 and 24 were also all rejected under 35 U.S.C. § 102(b) "as being clearly anticipated by Yajima et al (5,331,543)." Claims 4-11 and 15-22 were rejected under 35 U.S.C. § 103(a) "as being unpatentable over either Yajima et al (5,331,543) or Dudle et al (5,570,291) ... in view of an obvious modification." 116. In response to the examiner's rejection, Sun filed an Amendment and Response to

Office Action that was received by the PTO on February 9, 1998. In that response, Sun stated that "neither Yajima nor Dudle disclose a `platform-independent user interface' or a `platformindependent interface' as recited in amended claim 1." 117. Sun further stated that:

"Platform-independent," as it is understood and defined in the specification, means that all common configuration and usage models are enabled by a single architecture and single user interface model independent of the machine implementation. The user interface and server interface of amended claim 1 are platform independent, then, in that both are implemented without platformspecific code, and without the need to create multiple interface versions to support multiple platforms. In one embodiment, this is accomplished using JAVATM, which is an object-oriented programming language similar to C++. JAVA is unique in that a program written in JAVA is compiled into byte-codes and subsequently interpreted into machine dependent processor instructions. Bytecodes are similar to machine instructions, but are not specific to a particular machine or platform. Thus, JAVA programs can run on any platform that

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supports JAVA. In is not necessary to recompile a JAVA program to run on a new machine. 118. Sun further stated that:

Moreover, Dudle is silent as to implementing platform independency. Applicants submit that platform-independency, as defined in the specification, was not known by those skilled in the art at the time of Dudle. Therefore, Dudle does not enable a `platform-independent user interface' or `platform independent server interface' as recited in amended claim 1. Thus, Applicants respectfully submit that Dudle does not anticipate amended claim 1, for at least the reasons discussed above. 119. Sun further stated that:

Moreover, like Dudle, Yajima is silent as to implementing platform independency. Applications submit that platform-independency, as defined in the specification, was not known by those skilled in the art at the time of Yajima. Therefore Yajima does not enable a "platform-independent user interface" or "platform independent server interface" as recited in amended claim 1. Thus, Applicants respectfully submit that Yajima does not anticipate amended claim 1, for at least the reasons discussed above. 120. Sun went on to state that:

Applicants respectfully submit that the arguments presented above with respect to amended claim 1 similarly apply to claims 12, 23, and 24, as amended, in that each includes a `platform-independent server interface," and claims 12 and 23 also include a `platform-independent user interface.' Thus, for at least the reasons discussed above, Applicants respectfully submit that claims 12, 23, and 24, as amended, are not anticipated by Yajima or Dudle. 121. Sun also stated that, "Given that claims 2 and 3 from claim 1, and claims 13 and

14 depend from claim 12, Applicants respectfully submit that claims 2, 3, 13, and 14 are likewise not anticipated by Yajima or Dudle for at least the reasons discussed above." 122. Sun also argued that:

Claims 4-11 depend from amended claim 1, and claims 15-22 depend from amended claim 12. As discussed above, Applicants respectfully submit that neither Yajima nor Dudle suggest or disclose a "platform-independent user interface" or "platform independent server interface" as recited in amended claims 1 and 12. Neither Dudle nor Yajima enable platform independency, as discussed

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above. Thus, Applicants respectfully submit that claims 4-11 and 15-22 are not obvious in light of Yajima or Dudle for at least the reasons discussed above. 123. Thus, Sun tried to distinguish all 24 pending claims from the prior art on the basis

that the prior art did not disclose "platform independency." 124. In response to Sun's arguments, the patent examiner issued an office action, on or

around March 30, 1998, again rejecting all 24 claims pending in the '719 Application. Again, claims 1-3, 12-14, 23, and 24 were all rejected under 35 U.S.C. § 102(e) "as being clearly anticipated by Dudle et al (5,570,291)." Claims 1-3, 12-14, 23 and 24 were also all rejected again under 35 U.S.C. § 102(b) "as being clearly anticipated by Yajima et al (5,331,543)." Finally, claims 4-11 and 15-22 were rejected again under 35 U.S.C. § 103(a) "as being unpatentable over either Yajima et al(5,331,543) or Dudle et al (5,570,291) ... in view of an obvious modification." 125. With respect to the § 102 rejections, the patent examiner stated:

[I]t is respectfully noted that at the time the invention was made the computer systems were designed, i.e. standardized, so that any program written to operate within anyone of the DOS, MSDOS, WINDOWS, NT WINDOWS, or UNIX operating systems could be moved from one computer system, i.e. platform, using the appropriate operating system to any other computer system, i.e. platform, that used the same operating system. Where is standardization of the design of computer systems and programs was required to meet the needs of the consumer. Hence, programs are platform independent and applicant's arguments are not persuasive. 126. The patent examiner further added that:

[I]t is respectfully noted that at the time the invention was made the systems of each of Yajima et al (`543) and Dudle et al (`291) taught the claimed limitations by disclosing the claimed functions on a generic computer system, i.e. platform, the systems of each of Yajima et al (`543) and Dudle et al (`291) anticipate the instant claims. Hence, applicant's arguments are not persuasive.

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127.

With regard to the § 103 obviousness rejection, the patent examiner stated:

[S]ince the systems of each of Yajima et al (`543) and Dudle et al (`291) teach the required over all function/purpose of the system but do not disclose ... either a specific protocol or the system's components, it would be obvious to one of ordinary skill at the time the invention was made that the systems of Yajima et al (`543) and Dudle et al (`291) could be modified to use any suitable interface language/protocol/program which would allow the systems of Yajima et al (`543) and Dudle et al (`291) to accomplish the required function/purpose of allowing a user to remotely complete an order. 128. The patent examiner further stated:

[I]t is respectfully noted that at the time the invention was made the systems of each of Yajima et al (`543) and Dudle et al (`291) clearly suggested the claimed limitations by generically disclosing the claimed functions on a generic computer system, i.e. platform. Therefore, the systems of each of Yajima et al (`543) and Dudle et al (`291) would have suggested to a skilled artisan by example of the desired functions how to implement the claimed invention and hence, applicant's arguments are not persuasive. 129. In response to the patent examiner's rejection under § 102, Sun filed a Response

Under 37 C.F.R. §1.116 - Expedited Procedure that was received by the PTO on May 22, 1998. In that response, Sun stated that "neither Dudle nor Yajima suggest, disclose, or enable a `platform-independent' user interface as claimed in claims 1, 12, 23, and 24." 130. In response to the patent examiner's rejection under § 103, Sun stated "neither

Yajima nor Dudle suggest, disclose, or enable a `platform-independent' user interface as claimed in claims 1 and 12. 131. In making these arguments relating to lack of anticipation and obviousness, Sun

asserted that the patent examiner had not defined the term "platform" correctly. Sun stated: "`Platform,' as it is understood and defined in the specification, means the combination of hardware architecture and operating system."

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132.

As a result, Sun argued:

Thus, the user interface and server interface of claim 1 are platform independent in that both are implemented without hardware-specific code and without operating system-specific code, eliminating the need to create multiple interface versions to support multiple hardware architectures or operating systems. 133. In response to Sun's arguments, the patent examiner issued an Advisory Action in

1998, advising Sun that all 24 claims pending in the '719 Application remained rejected. The patent examiner also stated that his previous rejections in the Office Action dated March 30, 1998, had "clearly define[d] a platform as a combination of a computer hardware and operating system, since neither the hardware or operating system are useful with out [sic] the other component." C. 134. Sun Convinces the Patent Examiner that the Point of Novelty is "Platform Independent Byte Codes" In response to the Advisory Action, Sun filed a Continued Prosecution

Application and a Preliminary Amendment that was received by the PTO on July 30, 1998. 135. In the Preliminary Amendment, Sun amended the independent claims to delete the

adjective "platform-independent" associated with the terms "user interface" and/or "server interface." 136. In the Preliminary Amendment, Sun further amended the independent claims to

add the concept of either of both of the user interface and server interface including "platform independent byte-codes." 137. Specifically, Sun amended independent claims 1 and 23 to add the phrase "said

user interface and said server interface being comprised of platform independent byte codes." Sun amended independent claim 12 to add the phrase "said user interface and server interface

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being comprised of platform independen