IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`In the Inter Partes Review of:
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`U.S. Patent No. RE40,520
`Filed: June 14, 2005
`Issued: September 23, 2008
`Inventor(s): Doktor, Karol
`Assignee: Financial Systems
`Technology (Intellectual Property) Pty.
`Ltd.
`Title: EASILY EXPANDABLE DATA
`PROCESSING SYSTEM AND
`METHOD
`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Trial Number: To Be Assigned
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`Attorney Docket No:
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`
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`Panel: To Be Assigned
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`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. RE40,520
`
`
`
`
`
`
`
`In the Inter Partes Review of:
`
`U.S. Patent No. RE40,520
`Filed: June 14, 2005
`Issued: September 23, 2008
`Inventor(s): Doktor, Karol
`Assignee: Financial Systems
`Technology (Intellectual Property) Pty.
`Ltd.
`Title: EASILY EXPANDABLE DATA
`PROCESSING SYSTEM AND
`METHOD
`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
`
`
`
`SUBMISSION PURSUANT TO 35 U.S.C. § 301 AND 37 C.F.R. § 1.501 IN
`SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. RE40,520
`
`
`
`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
`
`Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501, International Business
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`Machines Corporation (“IBM”) offers this Submission Pursuant to 35 U.S.C. § 301
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`and 37 C.F.R. § 1.501 in Support of Petition for Inter Partes Review of U.S. Patent
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`No. RE40,520 (“Submission”) regarding: (1) prior art that bears on the
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`patentability of claims 10–13 and 15–16 of U.S. Patent No. RE40,520 (“the ’520
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`Patent”); and (2) statements that the patent owner, Financial Systems Technology
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`(Intellectual Property) Pty. Ltd. (“FST”) has filed with this Office and in Federal
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`court proceedings regarding the scope of claims 10–13 and 15–16 of the ’520
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`Patent. IBM files this Submission in connection with, and as Exhibit 1003 to, its
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`Petition for Inter Partes Review Under 37 C.F.R. § 42.100 of U.S. Patent No.
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`RE40,520 (“Petition”).
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`I.
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`PRIOR ART BEARING ON THE PATENTABILITY OF CLAIMS 10-
`13 AND 15-16 OF U.S. PATENT NO. RE40,520
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`Pursuant to 35 U.S.C. § 301(a)(1) and 37 C.F.R. § 1.501(a)(1), IBM
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`identifies the following prior art that it believes bears on the patentability of claims
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`10–13 and 15–16 of the ’520 Patent:
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`• James P. Davis, et al., EDICT - An Enhanced Relational Data Dictionary:
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`Architecture and Example (“Davis”) (Ex. 1006)1
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`1 All exhibit numbers given herein reference the Appendix of Exhibits attached to
`the Petition.
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`
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`1
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
`• Stephanie Cammarata, et al., Extending a Relational Database with Deferred
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`Referential Integrity Checking and Intelligent Joins (“Cammarata”) (Ex.
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`1007)
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`• U.S. Patent No. 4,868,733 to Fujisawa, et al. (“Fujisawa”) (Ex. 1008)
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`• U.S. Patent No. 5,206,951 to Khoyi, et al. (“Khoyi”) (Ex. 1009)
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`As required by 37 C.F.R. § 1.501(b)(1), the pertinence of this prior art to
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`claims 10–13 and 15–16 of the ’520 Patent is explained in Section V of the
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`Petition, and in particular, the manner of applying this prior art to claims 10–13
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`and 15–16 of the ’520 Patent may be found in the claim-by-claim analysis of
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`Section V.E of the Petition.
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`II.
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`STATEMENTS ABOUT THE SCOPE OF CLAIMS 10–13 AND 15–16
`OF U.S. PATENT NO. RE40,520 FILED IN A PROCEEDING
`BEFORE A FEDERAL COURT OR THE OFFICE
`
`Pursuant to 35 U.S.C. § 301(a)(2) and 37 C.F.R. § 1.501(a)(2), IBM
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`identifies the following statements made by FST in which FST took a position on
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`the scope of claims 10–13 and 15–16 of the ’520 Patent and that were filed in a
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`proceeding before a Federal court or this Office.
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`FST v. IBM Claim Constructions and Infringement Contentions
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`FST directly took a position on the scope of claims 10–13 and 15–16 of the
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`’520 Patent when it made statements in its currently pending litigation against IBM
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`about how certain claim terms that appear in those claims should be construed.
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`
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`2
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
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`(Ex. 1010, FST’s Local Patent Rule 4.1 Identification of Claim Terms to be
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`Construed and Proposed Constructions.) Additionally, FST implicitly took a
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`position on the scope of claims 10–13 and 15–16 of the ’520 Patent when it made
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`statements about how the accused IBM products allegedly infringe those claims.
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`(Ex. 1032, FST’s Local Patent Rule 3.1 Final Infringement Contentions for the
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`’520 Patent.) As required by 37 C.F.R. § 1.501(a)(3), IBM identifies the
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`following:
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`37 C.F.R. § 1.501(a)(3)(i), Forum: FST filed these statements during the
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`district court litigation captioned Financial Systems Technology (Intellectual
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`Property) Pty. Ltd. and Financial Systems Technology Pty. Ltd. v. International
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`Business Machines Corporation, Case No. 1:11-cv-08729 (U.S. District Court for
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`the Northern District of Illinois, Eastern Division).
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`37 C.F.R. § 1.501(a)(3)(ii), Specific Documents:
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` FST made these
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`statements about the scope of claims 10–13 and 15–16 of the ’520 Patent in the
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`following documents: (1) Local Patent Rule 4.1 Identification of Claim Terms to
`
`be Construed and Proposed Constructions (Ex. 1010); and (2) FST’s Local Patent
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`Rule 3.1 Final Infringement Contentions for the ’520 Patent (Ex. 1032).
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`37 C.F.R. § 1.501(a)(3)(iii), How Statement is a Position on the Scope of
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`Any Claim: In proposing how the district court should construe certain terms that
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`appear in claims 10-13 and 15-16 of the ’520 Patent, FST was taking a direct
`
`
`
`3
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`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
`
`position about the scope of those claims. (See Ex. 1010.) FST’s infringement
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`contentions are an implicit statement about the scope of those claims. By saying
`
`that certain features or functionalities of the IBM accused products allegedly
`
`infringe a limitation of claims 10-13 and 15-16, FST is stating that the scope of
`
`that claim limitation is such that it would encompass that feature or functionality.
`
`(See Ex. 1032.)
`
`An explanation of the pertinence of these statements and how to apply them
`
`to claims 10–13 and 15–16 of the ’520 Patent, as required by 37 C.F.R.
`
`§ 1.501(b)(1), may be found in Section IV.C of the Petition.
`
`FST v. Oracle Claim Constructions
`
`FST also took a position on the scope of claims 10–13 and 15–16 of the ’520
`
`Patent when it made statements in a prior district court proceeding about how
`
`certain claim terms that appear in those claims should be construed. (Ex. 1011,
`
`Local Patent Rule 4.3 Joint Claim Construction and Pre-Hearing Statement.) As
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`required by 37 C.F.R. § 1.501(a)(3), IBM identifies the following:
`
`37 C.F.R. § 1.501(a)(3)(i), Forum: FST filed these statements during the
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`district court litigation captioned Financial Systems Technology (Intellectual
`
`Property) Pty. Ltd. and Financial Systems Technology Pty. Ltd. v. Oracle
`
`Corporation, Case No. 2:08-cv-371 (U.S. District Court for the Eastern District of
`
`Texas, Marshall Division).
`
`
`
`4
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`
`
`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
`
`37 C.F.R. § 1.501(a)(3)(ii), Specific Documents:
`
` FST made these
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`statements proposing construction for certain terms of claims 10–13 and 15–16 of
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`the ’520 Patent in the following documents2: (1) Local Patent Rule 4.3 Joint Claim
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`Construction and Pre-Hearing Statement (Ex. 1011, Ex. A at 1–7); (2) FST
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`Opening Claim Construction Brief (Ex. 1028 at 1–2, 4–16); (3) FST’s Reply in
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`Support of its Opening Claim Construction Brief (Ex. 1029 at 1–8); and (4)
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`Transcript of the October 7, 2010 Claim Construction Hearing (Ex. 1030).
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`37 C.F.R. § 1.501(a)(3)(iii), How Statement is a Position on the Scope of
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`Any Claim: In proposing how the district court should construe certain terms that
`
`appear in claims 10–13 and 15–16 of the ’520 Patent, FST was taking a direct
`
`position about the scope of those claims.
`
`An explanation of the pertinence of these statements and how to apply them
`
`to claims 10–13 and 15–16 of the ’520 Patent, as required by 37 C.F.R.
`
`§ 1.501(b)(1), may be found in Section IV.C of the Petition.
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`Reexamination Proceedings
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`FST also took a position on the scope of claims 10–13 and 15–16 of the ’520
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`Patent when it made statements to the Office about the scope of the term “entity
`
`
`2 While FST may have filed additional documents or evidence in which such
`statements were addressed, IBM is not aware of any such documents or
`evidence, as it was not a party to that district court proceeding. IBM presents
`here the publicly available documents that include these statements.
`
`
`
`5
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
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`type record.” As required by 37 C.F.R. § 1.501(a)(3), IBM identifies the
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`following:
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`37 C.F.R. § 1.501(a)(3)(i), Forum: FST filed these statements during
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`reexamination proceedings before the Office in response to an Office Action dated
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`March 5, 2009.
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`37 C.F.R. § 1.501(a)(3)(ii), Specific Documents:
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` FST made these
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`statements about the scope of the term “abbreviated results” in a Response dated
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`June 4, 2009. (Ex. 1025.)
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`37 C.F.R. § 1.501(a)(3)(iii), How Statement is a Position on the Scope of
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`Any Claim: In stating that one of ordinary skill in the art would understand that
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`“entity type” and “entity instance table” were two separate attributes, FST was
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`taking a direct position about the scope of the term “entity instance record” in
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`claims 10–13 and 15–16 of the ’520 Patent.
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`An explanation of the pertinence of this statement and how to apply it to
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`claims 10–13 and 15–16 of the ’520 Patent, as required by 37 C.F.R. § 1.501(b)(1),
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`may be found in Section IV.C of the Petition.
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`
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`6
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
`
`
`
`Date: December 12, 2012
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`
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`Respectfully submitted,
`
` /s/ Joel R. Merkin
`Kenneth R. Adamo (Reg. No. 27299)
`Joel R. Merkin (Reg. No. 58600)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`kenneth.adamo@kirkland.com
`joel.merkin@kirkland.com
`Attorneys For Petitioners
`
`7
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`
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`Submission Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of
`Petition for Inter Partes Review of U.S. Patent No. RE40,520
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Submission
`
`Pursuant to 35 U.S.C. § 301 and 37 C.F.R. § 1.501 in Support of Petition for Inter
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`Partes Review of U.S. Patent No. RE40,520 was served on December 12, 2012 via
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`FedEx delivery directed to the attorney of record for the patent at the following
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`address:
`
`Scott A. McKeown
`OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT LLP
`1940 Duke Street
`Alexandria, VA 22314
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` 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
`
`
`
`
`
`
`
`
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