IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of:
`
`U.S. Patent No. RE40,526
`Filed: June 14, 2005
`Issued: September 30, 2008
`Inventor(s): Doktor, Karol
`Assignee: Financial Systems
`Technology (Intellectual Property) Pty.
`Ltd.
`Title: DATA PROCESSING SYSTEM
`AND METHOD FOR RETRIEVING
`AND [SIC] ENTITY SPECIFIED IN A
`SEARCH PATH RECORD FROM A
`RELATIONAL DATABASE
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Trial Number: To Be Assigned
`
`
`Attorney Docket No:
`
`
`
`Panel: To Be Assigned
`
`
`
`
`DECLARATION OF JOEL MERKIN
`
`
`
`
`
`In the Inter Partes Review of:
`
`U.S. Patent No. RE40,526
`Filed: June 14, 2005
`Issued: September 30, 2008
`Inventor(s): Doktor, Karol
`Assignee: Financial Systems
`Technology (Intellectual Property) Pty.
`Ltd.
`Title: DATA PROCESSING SYSTEM
`AND METHOD FOR RETRIEVING
`AND [SIC] ENTITY SPECIFIED IN A
`SEARCH PATH RECORD FROM A
`RELATIONAL DATABASE
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Trial Number: To Be Assigned
`
`
`Attorney Docket No:
`
`
`
`Panel: To Be Assigned
`
`
`
`
`DECLARATION OF JOEL MERKIN
`
`
`
`
`
`
`
`I, Joel Merkin, do hereby declare as follows:
`
`1.
`
`I am an attorney at the law firm of Kirkland & Ellis LLP, 300 N. LaSalle,
`
`Chicago, Illinois 60654, and serve as counsel for Petitioner International
`
`Business Machines, Corp. (“IBM”). I submit this declaration in support of
`
`IBM’s Petition for Inter Partes Review of U.S. Patent No. RE40,526
`
`(“Petition”). I am over twenty-one years of age and not under any legal
`
`disability. I have personal knowledge of the following facts and, if called as
`
`a witness, could and would testify competently thereto.
`
`2.
`
`Attached hereto as Exhibit 1005 is a true and correct copy of U.S. Patent No.
`
`RE40,526 (“the ’526 Patent”).
`
`3.
`
`Attached hereto as Exhibit 1006 is a true and correct copy of IBM Database
`
`2 SQL Reference (4th ed., May 1987).
`
`4.
`
`Attached hereto as Exhibit 1007 is a true and correct copy of U.S. Patent No.
`
`5,276,870 to Shan, et al.
`
`5.
`
`Attached hereto as Exhibit 1008 is a true and correct copy of U.S. Patent No.
`
`5,201,047 to Maki, et al.
`
`6.
`
`Attached hereto as Exhibit 1009 is a true and correct copy of U.S. Patent No.
`
`4,893,232 to Shimaoka, et al.
`
`7.
`
`Attached hereto as Exhibit 1010 is a true and correct copy of excerpts from
`
`Korth and Silberschatz, Database System Concepts (McGraw-Hill 1986).
`
`a
`
`
`
`
`
`8.
`
`Attached hereto as Exhibit 1011 is a true and correct copy of a Local Patent
`
`Rule 4.3 Joint Claim Construction and Pre-Hearing Statement, Pleading and
`
`Exhibit A of FST’s Proposed Constructions, FST v. Oracle, Case No. 2:08-
`
`cv-371 (E.D. Tex.)
`
`9.
`
`Attached hereto as Exhibit 1012 is a true and correct copy of a FST’s
`
`Opening Claim Construction Brief, FST v. Oracle, Case No. 2:08-cv-371
`
`(E.D. Tex.).
`
`10. Attached hereto as Exhibit 1013 is a true and correct copy of FST’s Reply in
`
`Support of its Opening Claim Construction Brief, FST v. Oracle, Case No.
`
`2:08-cv-371 (E.D. Tex.).
`
`11. Attached hereto as Exhibit 1014 is a true and correct copy of a Transcript of
`
`the October 7, 2010 Claim Construction Hearing, FST v. Oracle, Case No.
`
`2:08-cv-371 (E.D. Tex.).
`
`12. Attached hereto as Exhibit 1015 is a true and correct copy of FST’s Local
`
`Patent Rule 4.1 Identification of Claim Terms to be Construed and Proposed
`
`Constructions, Pleading and Exhibit A of FST’s Proposed Claim
`
`Constructions, FST v. IBM, Case No. 1:11-cv-08729 (N.D. Ill.).
`
`13. Attached hereto as Exhibit 1016 is a true and correct copy of excerpts from
`
`FST’s Local Patent Rule 3.1 Final Infringement Contentions, FST v. IBM,
`
`Case No. 1:11-cv-08729 (N.D. Ill.).
`
`
`
`b
`
`
`
`
`
`14. Attached hereto as Exhibit 1017 is a true and correct copy of U.S. Patent
`
`Appl. No. 08/439,013 (“the ’013 Application”).
`
`15. Attached hereto as Exhibit 1018 is a true and correct copy of excerpts from
`
`the file history of the ’013 Application: May 11, 1995 Preliminary
`
`Amendment.
`
`16. Attached hereto as Exhibit 1019 is a true and correct copy of excerpts from
`
`the file history of the ’013 Application: August 24, 1995 Office Action.
`
`17. Attached hereto as Exhibit 1020 is a true and correct copy of excerpts from
`
`the file history of the ’013 Application: February 26, 1996 Amendment.
`
`18. Attached hereto as Exhibit 1021 is a true and correct copy of excerpts from
`
`the file history of the ’013 Application: May 2, 1996 Office Action.
`
`19. Attached hereto as Exhibit 1022 is a true and correct copy of excerpts from
`
`the file history of the ’013 Application: August 7, 1996 Amendment.
`
`20. Attached hereto as Exhibit 1023 is a true and correct copy of excerpts from
`
`the file history of the ’013 Application: August 20, 1996 Office Action.
`
`21. Attached hereto as Exhibit 1024 is a true and correct copy of U.S. Patent No.
`
`5,617,567.
`
`22. Attached hereto as Exhibit 1025 is a true and correct copy of U.S. Reissue
`
`Appl. No. 11/152,833 (“the ’833 Reissue Application”).
`
`
`
`c
`
`
`
`
`
`23. Attached hereto as Exhibit 1026 is a true and correct copy of Reexamination
`
`Request No. 90/007,705 (“the ‘705 Reexamination”).
`
`24. Attached hereto as Exhibit 1027 is a true and correct copy of excerpts from
`
`the file history of the ’705 Reexamination: September 30, 2005 Statement
`
`Granting Reexamination.
`
`25. Attached hereto as Exhibit 1028 is a true and correct copy of excerpts from
`
`the file history of the ’705 Reexamination: December 6, 2005 Decision
`
`Merging ’833 Reissue Application and ’705 Reexamination.
`
`26. Attached hereto as Exhibit 1029 is a true and correct copy of excerpts from
`
`the file history of the ’705 Reexamination: July 17, 2007 Office Action.
`
`27. Attached hereto as Exhibit 1030 is a true and correct copy of excerpts from
`
`the file history of the ’705 Reexamination: February 22, 2008 Notice of
`
`Allowability.
`
`28. Attached hereto as Exhibit 1031 is a true and correct copy of Reexamination
`
`Request No. 90/008,965 (“the ‘965 Reexamination”).
`
`29. Attached hereto as Exhibit 1032 is a true and correct copy of excerpts from
`
`the file history of the ’965 Reexamination: March 14, 2008 Decision
`
`Denying Reexamination.
`
`30. Attached hereto as Exhibit 1033 is a true and correct copy of excerpts from
`
`the file history of the ’965 Reexamination: September 23, 2010 Statement.
`
`
`
`d
`
`
`
`
`
`31. Attached hereto as Exhibit 1035 is a true and correct copy of Exhibit A to
`
`the Declaration of Frank Barrese: Announcement Letter 287-189.
`
`32.
`
`I hereby declare under penalty of perjury under the laws of the United States
`
`of America that the foregoing is true and correct, and that all statements
`
`made of my own knowledge are true and that all statements made on
`
`information and belief are believed to be true. I understand that willful false
`
`statements are punishable by fine or imprisonment or both. See 18 U.S.C.
`
`§ 1001.
`
`Date: December 12, 2012
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Joel Merkin
`Joel Merkin
`
`e
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Declaration of
`
`Joel Merkin was served on December 12, 2012 via FedEx delivery directed to the
`
`attorney of record for the patent at the following address:
`
`Scott A. McKeown
`OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT LLP
`1940 Duke Street
`Alexandria, VA 22314
`
` copy was also served via messenger delivery on:
`
` A
`
`Robert A. Conley
`NIRO, HALLER & NIRO, LTD.
`181 West Madison Street, Suite 4600
`Chicago, IL 60602-4515
`
`
`
`
` /s/ Joel R. Merkin
`Joel R. Merkin
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
