a,
`
`96:9NM
`
`IIIIIIIIIIIIII
`
`I,
`
`
`
`4.
`
`5.
`
`E] a. A check in the amount of $_ is enclosed to cover the reexamination fee, 37 CFR 1.20(c);
`
`[X] b. The Commissioner is hereby authorized to charge the fee as set forth in 37 CFR
`120(c)(1) to Deposit Account No. 15-0665 (submit duplicate of this form for fee processing);
`or
`
`[I c. Payment by credit card. Form PTO-2038 is attached.
`
`El Any refund should be made by E] check or by IX] credit to Deposit Account No. 15-0665. 37
`CFR 126(0).
`
`X] A copy of the patent to be reexamined having a double column format on one side of a
`separate paper is enclosed. 37 CFR 1.510(b)(4).
`
`
`PTO/SB/57 (04-04)
`
`Approved for use through 04/30/2007. OMB 0651-0033
`US. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`
`Also referred to as FORM PTO- 1465 ‘3‘" '
`
`
`
`U.
`REQUEST FOR EXPARTE REEXAMINATION TRANSMITTAL FO)R|\;I1338
`
`S. PTO
`
`o
`rrrrr‘v 65
`Addressed to:
`
`
`
`Ex
`..
`"2““IIIIIIIIIIIIIIIIIIIII
`
`
`
`Commissioner for Patents
`
`
`P.O. Box1450
`Date. December 13, 2007
`12/18 07
`Washington, D.C. 20231
`
`
`
`
`
`[E This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`
`5 617 567
`issued
`April 1, 1997
`. The request is made by:
`
`
`E] patent owner. X third party requester.
`
`XI The name and address of the person requesting reexamination is:
`
`wm—__—
`
`500 Oracle Parkway, 50P7
`Redwood Shores CA 94065
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6.
`
`I] CD-ROM or CD-R in duplicate, Computer Program (appendix) or large table
`
`7.
`
`8.
`
`9.
`
`I] Nucleotide and/0r Amino Acid Sequence Submission
`If applicable, all of the following are necessary
`a.
`[:I Computer Readable Form (CFR)
`b. Specification Sequence Listing on:
`i.
`[:1
`CD- ROM (2 copies) or CD- R (2 copies); or
`ii. 1:]
`paper
`[I
`Statements verifying identity of above copies
`
`c.
`
`[:J A copy of any disclaimer, certificate of correction or reexamination certificate issued in the
`patent is included.
`
`E Reexamination of claim(s)
`
`1-16
`
`is requested.
`
`10. E A copy of every patent or printed publication relied upon is submitted herewith including a
`listing thereof on Form PTO-1449 or equivalent.
`
`
`
`
`
`
`11.
`
`[Z An English language translation of all necessary and pertinent non-English langua
`patents
`and/or printed publications is included.
`31/59/35“ magnum BQBBU%81 158565
`
`
` [Page 1 of 2] 31 ff; 1
`This collection of informationis required by 37 CFR 1510. The information'IS required to obtain or retain a benefit by the public which is to file (and
`by the USPTO to process) an application. Confidentiality'IS governed by 35 U.S.C 1222 and 37 CFR 1.14. This collectionIS estimated to take 2
`hours to complete including gathenng, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the
`individual case. Any comment on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent
`to the Chief Information Officer, US. Patent and Trademark Office. US. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450.
`DO NO SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Mail Stop Ex Pane Reexam, Commissioner for Patent, PO. Box
`1450, Alexandria, VA 22313-1450.
`
`001
`
`IBM EX. 1031
`
`
`
`
`
`
`93838965
`
`001
`
`

`

`iI
`
`PTO/SB/57 (04-04)
`Approved for use through 04/30/2007. 0MB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Pa-erwork Reduction Act of 1995. no nersons are reuired to resend to a collection of information unless it disla s a valid OMB control number.
`
`12.
`
`[Z The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents
`and printed publication. 37 CFR 1.510(b)(1)
`
`b. An identification of every claim for which reexamination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited prior art to every claim for which
`reexamination is requested. 37 CFR 1.510(b)(2)
`
`[j A proposed amendment is included (only where the patent owner is the requester). 37 CFR
`1.510(e).
`
`It is certified that a copy of this request (if filed by other than the patent owner) has been
`IX a.
`served in its entirety on the patent owner as provided in 37 CFR 1.33(c).
`
`The name and address of the party served and the date of service are:
`
`MACPHERSON KWOK CHEN & HEID LLP
`
`2033 GATEWAY PLACE
`
`SUITE 400
`
`SAN JOSE CALIFORNIA 95110
`
`Date of Service: December 13 2007
`
`
`
`15.
`
`Correspondence Address: Direct all communication about the reexamination to:
`
`Customer Number:
`
`34313
`
`Firm or Individual
`Name
`
`Orrick, Herrington & Sutcliffe LLP
`
`.
`
`Address (line 1)
`
`4 Park Plaza
`
`Address (line 2)
`
`Suite 1600
`
`—_--n__
`
`- 9(49) 567-6710
`(949)567-6700
`Telephone
`16. E] The patent is currently the subject of the following concurrent proceeding(s
`IE a. Copending reissue application Serial No.
`11/152,833
`
`IX] b. Copending reexamination Control No.
`
`90/007 705
`
`[I c. Copending Interference No.
`
`[I d. Copending litigation styled:
`
`WARNING: Information on this form may ecome public. Credit card information should not be
`included on this form. Provide credit car
`nformation and authorization on PTO-2038.
`
`Authorized Signatur
`
`Donald E. Daybell
`Typed/Printed Name
`
`December 13 2007
`
`Date
`
`50 877
`Registration No., if applicable
`I] For Parent Owner Requester
`E For Third Party Requester
`
`[Page 2 of 2)
`
`002
`
`002
`
`

`

`
`CERTIFICATE or MAILING
`(37 C.F.R.§ 1.83)
`
`I hereby certify that this paper (along with any referred to as being attached or enclosed) is being deposited with the United States Postal Service
`on the date shown below with sufficient postage as First Class Mail in an envelope ad
`essed to the Com ‘ssioner for Patents, P.
`1450,
`
`Alexandria, VA 22313-1450.
`
`
`December 13 2007
`Date of Deposit
`
`US_WEST:26182439.1
`
`003
`
`003
`
`

`

`l\
`
`PTO/5857 (04-04)
`Approved for use through 04/30/2007. OMB 0651 ~0033
`U.S. Patent and Trademark Office: US. DEPARTMENT OF COMMERCE
`Under the Pa-erwork Reduction Act of 1995. no . - rsons are r - uired to res ~ -nd to a collection of information unless it dis - la
`a valid OMB control number.
`Also referred to as FORM PTO - 1465)
`
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Addressed to:
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`PO. Box 1450
`
`Washin -ton, D.C. 20231
`
`Attorney Docket: 6883.23 (3)
`
`Date: December 13. 2007
`
`IZI This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`5 617 567
`issued
`April 1, 1997
`. The request is made by:
`
`E] patent owner.
`
`third party requester.
`
`X] The name and address of the person requesting reexamination is:
`
`Oracle Corporation
`
`500 Oracle Parkway. 50P7
`
`Redwood Shores CA 94065
`
`[:1 a. A check in the amount of $_ is enclosed to cover the reexamination fee, 37 CFR 1.20(c);
`
`E b. The Commissioner is hereby authorized to charge the fee as set forth in 37 CFR
`120(c)(1) to Deposit Account No. 15-0665 (submit duplicate of this form for fee processing);
`or
`
`D c. Payment by credit card. Form PTO-2038 is attached.
`
`X Any refund should be made by [:1 check or by
`CFR 1.26(c).
`
`credit to Deposit Account No. 15-0665. 37
`
`X A copy of the patent to be reexamined having a double column format on one side of a
`separate paper is enclosed. 37 CFR 1.510(b)(4).
`
`E] CD-ROM or CD-R in duplicate. Computer Program (appendix) or large table
`
`
`
`E] Nucleotide and/or Amino Acid Sequence Submission
`If applicable, all of the following are necessary
`a. C] Computer Readable Form (CFR)
`b. Specification Sequence Listing on:
`i. E]
`CD-ROM (2 copies) or CD-R (2 copies); or
`ii.
`[:1
`paper
`c. E]
`Statements verifying identity of above copies
`
`[3 A copy of any disclaimer. certificate of correction or reexamination certificate issued in the
`patent is included.
`
`E Reexamination of claim(s)
`
`1—16
`
`is requested.
`
`IZI A copy of every patent or printed publication relied upon is submitted herewith including a
`listing thereof on Form PTO-1449 or equivalent.
`
`E An English language translation of all necessary and pertinent non-English language patents
`and/or printed publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and
`by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 1222 and 37 CFR 1.14. This collection is estimated to take 2
`hours to complete including gathering, preparing. and submitting the completed application form to the USPTO. Time will vary depending upon the
`individual case. Any comment on the amount of time you require to complete this form and/or suggestions for reducing this burden. should be sent
`to the Chief Information Ofiicer. U.S. Patent and Trademark Office. U.S. Department of Commerce. P.0. Box 1450. Alexandria, VA 22313-1450.
`DO NO SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Mail Stop Ex Parte Reexam. Commissioner for Patent. PO. Box
`1450. Alexandria. VA 22313-1450.
`
`004
`
`004
`
`

`

`PTO/58157 (04-04)
`Approved for use through 04/30/2007. OMB 0651-0033
`US. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Pa -rwork Reduction Act of 1995. no - -rsons are re-uired to res-0nd to a collection of information unless it dis-Ia . a valid OMB control number.
`
`V‘
`
`12. E The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents
`and printed publication. 37 CFR 1.510(b)(1)
`
`b. An identification of every claim for which reexamination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited prior art to every claim for which
`reexamination is requested. 37 CFR 1.510(b)(2)
`
`E] A proposed amendment is included (only where the patent owner is the requester). 37 CFR
`1.510(e).
`
`It is certified that a copy of this request (if filed by other than the patent owner) has been
`IZI a.
`served in its entirety on the patent owner as provided in 37 CFR 1.33(c).
`
`The name and address of the party served and the date of service are:
`
`MACPHERSON KWOK CHEN & HEID LLP
`
`2033 GATEWAY PLACE
`
`SUITE 400
`
`SAN JOSE CALIFORNIA 95110
`
`Date of Service: December 13 2007
`
`15.
`
`Correspondence Address: Direct all communication about the reexamination to:
`
`Customer Number:
`
`34313
`
`OR
`
`Firm or Individual
`Name
`
`Orrick, Herrington & Sutcliffe LLP
`
`
`
`16. IX The patent is currently the subject of the following concurrent proceeding(s):
`
`IX! a. Copending reissue application Serial No.
`
`X b. Copending reexamination Control No.
`
`11/152,833
`
`90/007,705
`
`II] c. Copending Interference No.
`
`C] d. Copending litigation styled:
`
`WARNING: Information on this form may ecome public. Credit card information should not be
`included on this form. Provide credit ca
`nformation and authorization on PTO-2038.
`
`Authorized Signatur
`
`Donald E. Daybell
`Typed/Printed Name
`
`December 13 2007
`
`Date
`
`50 877
`Registration No., if applicable
`I] For Patent Owner Requester
`E For Third Party Requester
`
`[Page 2 of 2]
`
`005
`
`005
`
`

`

`
`CERTIFICATE OF MAILING
`(37 C.F.R. § 1.83)
`
`I.
`
`I hereby certify that this paper (along with any referred to as being attached or enclosed) is being deposited with the United States Postal Service
`on the date shown below with sufficient postage as First Class Mail in an envelope ad
`ssed to the Co
`‘ssioner for Patents, P.
`1450,
`Alexandria, VA 22313-1450.
`
`Date of Deposit
`
`December 13, 2007
`
`US_WEST:26182439.1
`
`006
`
`006
`
`

`

`71338?
`
`‘
`p.
`-
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`U S PTO
`llllllllllllllllllllllllHllllllllllll1N WED
`
`12/18/07
`
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`TRADEMARK
`
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`
`713038 us PTI)
`90008965
`CEIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII
`
`‘
`
`Request for Reexamination of:
`
`US. Patent No. 5,617,567
`
`Inventor:
`
`Karol Doktor
`
`REQUEST FOR REEXAMINATION UNDER
`
`3SLLS£1§§302307AND‘
`37 CPR § 1.510
`
`ATTACHMENT To FORM 1465
`
`MATTER IN RE-EXAMINATION
`
`,
`ATTN: EXAMINER LUKE S. WASSUM
`
`GAU2M@
`
`Assignee:
`'
`
`Financial Systems Technology
`(Intellectual Property) Pty Ltd
`Melbourne’ Aumal‘a
`
`Filed:
`
`May 11, 1995
`
`Issued:
`
`For:
`
`April 1, 1997
`.
`Data Processmg System and
`Method for Retrieving and
`Entity Specified in a Search
`Path Record from a Relational
`
`Database
`
`Mail Stop Ex Parte Reexamination
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR EX PARTE REEXAMINATION OF US. PATENT NO. 5,617,567
`
`007
`
`007
`
`

`

`TABLE OF CONTENTS
`
`LIST OF EXHIBITS ................................................................. 7........................................................... 3
`
`PRIOR ART (PA) .................................................................................................................. 3
`A.
`PATENT RELATED MATERIALS (PAT) ............................................................................... 4
`B.
`C. CLAIM CHARTS (CC) .......................................................................................................... 4
`D. OTHER DOCUMENTS (0TH) ............................................................................................... 4
`Requirements under 37 CPR. § 1.510 ................................................................................... 7
`1.
`11. Claims For Which Re-Exam is Requested .............................................................................. 8
`III.
`Statement of Substantial New Question of Patentability ..................................................... 9
`A. The ‘567 Patent Disclosure .................................................................................................. 9
`
`B. New Question of Patentability ........................................................................................... 12
`C.
`FST’S New Interpretations & the New Prior Art ............................................................... 13
`D. Cited Prior Art’s Inclusion of All Purportedly Novel Elements ....................................... 14
`IV.
`FST’S ADMISSIONS OF CLAIM SCOPE AND CONTENT ......................................... 15
`
`V. EXPLANATION OF THE PERTINENCE AND MANNER OF APPLYING CITED
`PRIOR ART TO EVERY CLAIM FOR WHICH REEXAMINATION IS REQUESTED
`BASED ON PRIOR ART .............................................................................................................. 17
`
`A. Elmasri ............................................................................................................................... l7
`
`Elmasri: ER to Relational Database Mapping .............................................................. 18
`1.
`Elmasri: Materializing the Views ................................................................................. 21
`2.
`Elmasri: QBE ................................................................................................................ 24
`3.
`Elmasri: SQL ................................................................................................................ 25
`4.
`B. Zloof .................................................................................................................................. 28
`
`C.
`
`Shaw .................................................................................................................................. 29
`
`D. Teorey ................................................................................................................................ 32
`VI.
`APPLICATION OF PRIOR ART PATENTS AND PUBLICATIONS ........................... 36
`
`A. Elmasri Exemplar Claims 1 & 2 ...................................................................................... 39
`B. Elmasri & Shaw: Exemplar Claims 1&2 .....................................................................‘......56
`C.
`Shaw, Zloof, & Teorey Exemplar Claims 1&2 ................................................................ 83
`D. Zloof & Teorey Exemplar Claims 1&2 .......... '. ............................................................... 103
`VII.
`DISCUSSION OF FST'S RESPONSE TO EXAMINER'S FINAL OFFICE ACTION. 1 16
`
`A.
`
`INTRODUCTION ........................................................................................................... 1 16
`
`B. REJECTION UNDER 35 U.S.C. §§ 102, 103 — MUNZ ............................................... 117
`1.
`Relational Database ..................................................................................................... 1 17
`
`Independent Claims — Inquiry Definition Table Means / Search Path Records ....... 120
`2.
`Independent claims — Abbreviated Results Gathering Means ................................... 124
`3.
`C. REJECTION UNDER 35 U.S.C. § 102 — TSICHRITZIS ............................................ 125
`1 .
`Relational Database ..................................................................................................... 125
`
`Independent Claims — Inquiry Definition Table Means / Search Path Records .......... 126
`2.
`D. Munz & Tsichritzis Anticipate All Claims of the '567 Patent ......................................... 131
`VIII. Conclusion ....................................................................................................................... 132
`
`-2-
`
`008
`
`008
`
`

`

`LIST OF EXHIBITS
`
`EXHIBITS
`
`The exhibits to the present Request are arranged in four groups: prior art (“PA”), relevant patent
`prosecution file history, patents, and claim dependency relationships (“PAT”), claim charts
`(“CC”), and other (“0TH”).
`
`A. PRIOR ART (PA)
`
`PA-SB/08A
`
`USPTO Form SB/08A
`
`PA-A
`
`PA-B
`
`PA-C
`
`PA-D
`
`PA-E
`
`PA-F
`
`PA-G
`
`PA-H
`
`PA-I
`
`PA-J
`
`Ramez Elmasri and Shamkant B. Navathe, Fundamentals ofDatabase Systems
`
`(1989)
`
`Toby J. Teorey, et al., A Logical Design Methodologyfor Relational Databases
`Using the Extended Entity-Relationship Model, Computing Surveys, Vol. 18, No.
`2 (June 1986), at 197-222
`
`M. M. Zloof, Query-by-Example: a data base language, IBM Systems Journal,
`No. 4, 1977, pp. 324-343
`
`US Patent No. 4,506,326 to Philip S. Shaw, et al., Apparatus and Methodfor
`Synthesizing a Queryfor Accessing a Relational Database, issued March 19,
`1985, filed Feb. 28, 1983
`
`Tsichritzis, LSL: A Link and Selector Language, Proceedings of the 1976 ACM
`SIGMOD International Conference on Management of Data, Washington, DC.
`June 2-4, 1976.
`
`Munz, Rudolf, The Well System: A Multi- User Database System Based on Binary
`Relationships and Graph-Pattern-Matching, 3 Information Systems 99—1 15
`(Pergamon Press 1978).
`
`Munz, Rudolf, Design ofthe Well System, in Entity—Relationship Approach to
`Systems Analysis and Design. Proc. lst International Conference on the Entity
`Relationship Approach, 505-522 (1979).
`
`Munz, Rudolf, Das WEB-Model], translated pages 154-157 (1976).
`
`Jose A. Blakeley and Nancy L. Martin, Join Index, Materialized View, and
`Hybrid-Hash Join: A Performance Analysis, Technical Report No. 280, Indiana
`University Computer Science Department, June 1989
`
`Michel E. Adiba and Bruce G. Lindsay, Database Snapshots, Proceedings of the
`1980 International Conference on Very Large Data Bases, 87 (IEEE 1980)
`
`009
`
`009
`
`

`

`B. PATENT RELATED MATERIALS (PAT)
`
`PAT-A1
`
`U.S. Patent No. 5,617,567 ("'567 patent").
`
`PAT-A2
`
`Office Action mailed August 24, 1995.
`
`PAT-A3
`
`Amendment filed February 26, 1996
`
`PAT-A4
`
`Office Action mailed May 2, 1996
`
`PAT-A5
`
`Amendment filed August 7, 1996
`
`PAT—A6
`
`PAT-A7
`
`Information Disclosure Statement (IDS) (stamped by the USPTO on July 24,
`2006)
`
`Amendment filed October 17, 2007, in Merged Re-Issue/Re-Examination
`Proceeding 11/152,833 and 90/007,705.
`
`C. CLAIM CHARTS (CC)
`
`CC—A
`
`Elmasri
`
`CC—B
`
`Elmasri and Shaw
`
`CC-C
`
`CC-D
`
`Shaw, Zloof and Teorey
`
`Zloof and Teorey
`
`D. OTHER DOCUMENTS (0TH)
`
`OTH-A
`
`OTH-B
`
`OTH-C
`
`Preliminary Infringement Contentions filed by Patent Owner FST in Financial
`Systems Technology, et al. v. Oracle Corporation (“PICS”)
`
`Full copy of the complaint filed by Patent Owner in Financial Systems
`Technology, et al. v. Oracle Corporation, Case No. 2:04-CV-358-TJW (ED.
`Tex.), on October 12, 2004.
`
`J. L. Hainaut, Theoretical and Practical Tools for Data Base Design, Proceedings
`of the Seventh International Conference on Very Large Data Bases (1981 IEEE).
`
`OTH-D
`
`Mark L. Gillenson, Database Step-by-Step 141-42 (2d Ed. 1990).
`
`010
`
`010
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Request for Reexamination of:
`
`U.S. Patent No. 5,617,567
`
`Inventor:
`
`Karol Doktor
`
`Assignee:
`
`Financial Systems Technology REQUEST FOR REEXAMINATION UNDER
`(Intellectual Property) Pty Ltd
`35 U.S.C. §§ 302-307 AND
`Melbourne, Australia
`37 C,F.R. § 1.510
`
`Filed:
`
`May 11, 1995
`
`Issued:
`
`April 1, 1997
`
`For:
`
`Data Processing System and
`Method for Retrieving and
`Entity Specified in a Search
`Path Record from a Relational
`
`Database
`
`Mail Stop Ex Parte Reexamination
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR EX PARTE REEXAMINATION OF U.S. PATENT NO. 5,617,567
`
`Dear Sir:
`
`Pursuant to the provisions of 35 U.S.C. §§ 302 et seq. and 37 C.F.R. § 1.510,
`
`Oracle Corporation ("Oracle" or "Requester") hereby requests ex parte reexamination of U.S.
`
`Patent No. 5,617,567 ("the '567 patent"). Attached as Exhibit PAT-A1 is a copy of the '567
`
`patent, as required under 37 C.F.R. § 1.510(b)(4). The '567 patent was issued on April 1, 1997 to
`
`Karol Doktor. On its face, the '567 patent indicates that it was assigned to Financial Systems
`
`011
`
`011
`
`

`

`Technology Pty Ltd. Financial Systems Technology Pty Ltd. claims it has assigned the patent to
`
`Financial Systems Technology (Intellectual Property) Pty Ltd. For convenience, both entities,
`
`and inventor Karol Doktor, will be referred to as "FST" in this request. FST has stated it
`
`believes the '567 patent is enforceable and there is no disclaimer, certificate of correction, or
`
`reexamination certificate.
`
`The '567 patent is based upon application 08/439,013, filed May 11, 1995, which was a
`
`division of application 08/083,861, filed June 28, 1993 (now US. Patent 5,604,899), which is a
`
`continuation of application 07/526,424, filed May 21, 1990 (now abandoned).
`
`The '567 patent is presently the subject of a merged reissue / reexamination (reissue
`
`serial number 11/152,833; reexamination serial number 90/007705).l Moreover, the '567
`
`patent was previously the subject of litigation proceedings in the District Court for the Eastern
`
`District of Texas, in the case of Financial Systems Technology, et al. v. Oracle Corporation,
`
`Case No. 2:04-CV—358-TJW, filed on October 12, 2004. During these proceedings, FST
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`prepared and served on Oracle its Preliminary Infringement Contentions ("PICS") as required
`
`under the Patent Local Rules of the Eastern District of Texas. This document is a court record
`
`that contains admissions of the patentee, and is therefore proper for consideration under MPEP
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`§2217 for purposes including determining claim scope and the content of the prior art. A copy of
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`these PICs is attached as Exhibit OTH-A to this request. This litigation was dismissed without
`
`prejudice.
`
`FST has stated that
`
`it
`
`intends to assert
`
`the '567 patent following the reissue
`
`proceedings.
`
`I A discussion of FST’S response to the Examiner’s final office action (rejecting all claims) in that merged
`proceeding is also included below, at § VII.
`
`012
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`012
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`

`

`1.
`
`RE UIREMENTS UNDER 37 C.F.R.
`
`1.510
`
`Pursuant to 37 C.F.R. § 1.510, Oracle satisfies each of the requirements for ex parte
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`reexamination of the ‘567 patent.
`
`A.
`
`Payment of Fees; 37 C.F.R. § 1.510(a)
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`Requester authorizes the Patent Office to charge Deposit Account No. 15-0665 for the fee
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`set in 37 CFR § 120(c)(1) for reexamination. The fee for ex parte reexamination is $2,520, and
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`the fee for an Information Disclosure Statement is $180.00.
`
`B.
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`Statement Pointing Out Each Substantial New Question of Patentability; 37
`
`C.F.R. § 1.510(b)(1)
`
`A statement pointing out each substantial new question of patentability based on prior
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`patents and publications is provided in Section III.
`
`C.
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`Identification of Claims for Reexamination; 37 C.F.R. § 1.510(b)(2)
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`Requester requests reexamination of claims 1-16 of the ‘567 patent, as further discussed
`
`in Section II.
`
`D.
`
`Application of Cited Prior Art; 37 C.F.R. § 1.510(b)(2)
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`A detailed explanation of the pertinence and manner of applying the cited prior art to
`
`every claim for which reexamination is requested is provided in Sections V and VI.
`
`E.
`
`Copies of the Prior Art; 37 C.F.R. § 1.510(b)(3)
`
`Patent Office Form 1449 states the patents and printed publications upon which this
`
`Request is based. A complete copy of each listed patent and printed publication is included
`herewith as further outlined in Section III.
`
`F.
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`Copy of US. Patent 5,617,567; 37 C.F.R. § 1.510(b)(4)
`
`As noted above, attached as Exhibit PAT-A1 is a copy of the ‘567 patent, as required
`
`under 37 C.F.R. § 1.510(b)(4). There is no Certificate of Correction, Terminal Disclaimer, or
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`Certificate of Reexamination.
`
`G.
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`Certification of Service on Patent Owner; 37 C.F.R. § 1.510(b)(5)
`
`013
`
`013
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`

`

`The undersigned certifies that a complete and entire copy of the Request for Ex Parte
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`Reexamination and all supporting documents have been provided to the Patent Owner by serving
`
`the attorneys of record on file with the Patent Office for the ‘567 patent and for the pending
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`reissue/reexamination proceedings:
`
`Kwok, Edward
`MacPherson, Kwok, Chen & Heid LLP
`2033 GATEWAY PLACE
`Suite 400
`San Jose CA 95110
`
`(on file for the ‘567 patent)
`
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, RA.
`1401 Citrus Center
`
`255 South Orange Avenue
`PO. Box 3791
`
`Orlando, FL 32802-3791
`(on file for the reissue/reexamination proceedings)
`
`The undersigned further certifies that it served an additional copy on the Patent Owners’
`
`current litigation counsel of record:
`
`Sam Baxter, Esq.
`McKool Smith RC.
`
`505 E. Travis, Suite 105, PO. Box 0
`Marshall, TX 75760
`
`II.
`
`CLAIMS FOR WHICH RE-EXAM IS REQUESTED
`
`Reexamination is requested of claims 1-16 of the '567 patent in view of the disclosure in
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`Ramez Elmasri and Shamkant B. Navathe, Fundamentals of Database Systems (1989), attached
`
`as Exhibit PA-A.
`
`Reexamination is also requested of claims 1-16 of the ,'567 patent
`
`in view of the
`
`disclosure in Toby J. Teorey, et al., A Logical Design Methodology for Relational Databases
`
`Using the Extended Entity-Relationship Model, Computing Surveys, Vol. 18, No. 2 (June 1986),
`
`at 197-222, attached as Exhibit PA-B.
`
`Reexamination is also requested of claims 1-16 of the '567 patent
`
`in view of the
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`014
`
`014
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`

`

`disclosure in M. M. Zloof, Query—by-Example: a data base language, IBM Systems Journal, No.
`
`4, 1977, pp. 324-343, attached as Exhibit PA-C.
`
`Reexamination is also requested of claims 1-16 of the '567 patent
`
`in view of the
`
`disclosure in US Patent No. 4,506,326 to Philip S. Shaw, et al., Apparatus and Method for
`
`Synthesizing a Queryfor Accessing a Relational Database, issued March 19, 1985, filed Feb. 28,
`
`1983, attached as Exhibit PA-D.
`
`Reexamination is also requested of claims 1-16 of the '567 patent
`
`in view of the
`
`disclosure in Jose A. Blakeley and Nancy L. Martin, Join Index, Materialized View, and Hybrid-
`
`Hash Join: A Performance Analysis, Technical Report No. 280, Indiana University Computer
`
`Science Department, June 1989, attached as Exhibit PA-I.
`
`Reexamination is also requested of claims 1-16 of the '567 patent
`
`in view of the
`
`disclosure in Michel E. Adiba and Bruce G. Lindsay, Database Snapshots, Proceedings of the
`
`1980 International Conference on Very Large Data Bases, 87 (IEEE 1980), attached as Exhibit
`
`PA-J.
`
`All of the claims cited above are anticipated under 35 U.S.C. § 102 and / or rendered
`
`obvious under 35 U.S.C. § 103 in view of the six prior art publications noted above.
`
`III.
`
`STATEMENT OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY
`
`The prior art documents discussed herein were not of record in the file of the ‘567 patent.
`
`Since claims 1-16 in the ‘567 patent are not patentable over these prior art documents, a
`
`substantial new question of patentability is raised. Further, the prior art documents discussed
`
`herein are closer to the subject matter of the ‘567 patent than any prior art which was cited
`
`during the prosecution of the ‘567 patent, as demonstrated in detail below. These prior art
`
`documents provide teachings not provided during prosecution of the ‘567 patent.
`
`A.
`
`The ‘567 Patent Disclosure
`
`The ‘567 patent relates to systems and methods of performing compound queries on
`
`particular types of databases. The ‘567 patent purports to disclose several variations on a
`
`015
`
`015
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`

`

`compound querying method of retrieving data from a database, wherein the results of one query
`
`are used in a second query to locate information within a database.
`
`The basic method
`
`purportedly disclosed in the ‘567 patent is shown in Figure 1 below.
`
`Basic Method Purportodly Disclosed in
`'567 patent
`
`Form First Search Path
`Record
`
`b.
`
`Retrieve Results oi First
`Search Path Record
`
`Taught by
`Prior Art
`
`Cited During
`_
`.
`
`C.
`
`Form Second Search Path
`Record
`
`Examination
`
`
`
`SdDO Retrieve Results of Second
`'
`Search Path Record Using
`Results 0! First Search Path
`Record
`
`Alleged Point of
`novelty for claims
`2. 4. 6, 8. 13, 14.
`15, and 16
`
`Alleged point oi
`novelty tor claims
`1,3, 5, 7, 9, to,
`11, and 12
`
`e
`
`'
`
`f
`
`Store Results of First
`Search Path Record in
`Abbreviated Results
`Gathering Means
`
`Store First and Second
`Search Path Records in
`Inquiry Definition Table
`Means
`
`Figure 1
`
`The basis for allowability of all of the claims of the ‘567 patent was the “abbreviated
`
`results gathering means” and “inquiry definition table means” limitations, one or the other of
`
`which is found in every claim. The Examiner found, and Applicants eventually conceded, that
`
`the prior art of record in the prosecution of the ‘567 patent, namely US. Patent 4,893,232 to
`
`Shimaoka (“Shimaoka”) and Korth and Silberschatz, Database System Concepts (“Korth”),
`
`taught all of the elements of all of the claims, except for the “abbreviated results gathering
`
`-10-
`
`016
`
`016
`
`

`

`means” and “inquiry definition table means” elements.2 The Examiner then found that the prior
`
`art of record did not teach an abbreviated results gathering means, nor an inquiry definition table
`
`means. The Examiner stated:
`
`11. The following is an Examiner’s statement of reasons for the
`indication of allowable subject matter: Although breaking a
`compound query into separate queries which depend upon previous
`queries (often called “pipelining” in other prior art) was well
`known and widely appreciated in the field of query optimization at
`the time of Applicant’s invention, Applicant’s “inquiry definition
`table” means
`interpreted in light of the specification (pages 44,
`line 30 — page 46, line 5) and the “abbreviated results gathering
`means”
`also interpreted in light of the Specification (page 50,
`line 26 — page 57, line 6), in conjunction with the limitations of the
`claims upon which they depend was not shown by, nor fairly
`suggested by, nor would have been obvious over, the prior art of
`record.
`
`See Exhibit PAT-A2, Office Action mailed August 24, 1995, at 4, 1] 11.
`
`Applicant then unsuccessfully sought to argue that its broader claims that lacked the
`
`“inquiry definition table means” and “abbreviated results gathering means” limitations were
`
`allowable over Shimaoka and Korth. See Exhibit PAT-A3, Amendment filed February 26,
`
`1996. The Examiner found Applicant’s arguments unpersuasive and maintained his rejections of
`
`the broader claims.
`
`See Exhibit PAT-A4, Office Action mailed May 2, 1996,
`
`111] 4-8.
`
`Specifically, the Examiner found that “Applicant’s claims are so broadly stated that they read
`
`upon Boolean combination of clauses in a compound query,” which was taught by Korth. See id.
`
`at 11 8. The Applicant then acquiesced to the Examiner’s rejections, and accepted the claims the
`
`Examiner found allowable,
`
`including the limitations directed to the “inquiry definition table
`
`means” and “abbreviated results gathering means.” See Exhibit PAT-A5, Amendment filed
`
`August 7, 1996.
`
`2 The patent also discusses extensively the use of“entities” and “relations.” The concepts of entities and relations
`originates from the Entity-relationship model originally developed by Peter Chen. See Chen, Peter P., The Entity-
`Relationship Model — Towards a Unified View of Data, ACM Trans. Database Syst. l, 1 (March 1976) p. 9-36.
`This model is different from the classical relational database model. Notably, while the patentee cited extensive art
`related to relational databases, it did not cite any relevant art related to the entity-relation model, including relevant
`pages from Korth and Silberschatz, Database System Concepts, which described both models. Patentee only cited
`those pages related to relational databases but not the entity-relation model.
`
`-11-
`
`017
`
`017
`
`

`

`Claims 1, 3, 5, 7, 9, 10, 11 and 12 allegedly are novel because they store first and second
`
`se