`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
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`Trial Number: To Be Assigned
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`Attorney Docket No:
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`Panel: To Be Assigned
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`DECLARATION OF JOEL MERKIN
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`I, Joel Merkin, do hereby declare as follows:
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`1.
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`I am an attorney at the law firm of Kirkland & Ellis LLP, 300 N. LaSalle,
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`Chicago, Illinois 60654, and serve as counsel for Petitioner International
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`Business Machines, Corp. (“IBM”). I submit this declaration in support of
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`IBM’s Petition for Inter Partes Review of U.S. Patent No. RE40,520
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`(“Petition”). I am over twenty-one years of age and not under any legal
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`disability. I have personal knowledge of the following facts and, if called as
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`a witness, could and would testify competently thereto.
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`2.
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`Attached hereto as Exhibit 1005 is a true and correct copy of U.S. Patent No.
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`RE40,520 (“the ’520 Patent”).
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`3.
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`Attached hereto as Exhibit 1006 is a true and correct copy of James P.
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`Davis, et al., EDICT – An Enhanced Relational Data Dictionary:
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`Architecture and Example.
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`4.
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`Attached hereto as Exhibit 1007 is a true and correct copy of Stephanie
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`Cammarata, et al., Extending a Relational Database with Deferred
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`Referential Integrity Checking and Intelligent Joins.
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`5.
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`Attached hereto as Exhibit 1008 is a true and correct copy of U.S. Patent No.
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`4,868,733 to Fujisawa, et al.
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`6.
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`Attached hereto as Exhibit 1009 is a true and correct copy of U.S. Patent No.
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`5,206,951 to Khoyi, et al.
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`1
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`7.
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`Attached hereto as Exhibit 1010 is a true and correct copy of Local Patent
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`Rule 4.1 Identification of Claim Terms to be Construed and Proposed
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`Constructions, Pleading and Exhibit A of FST’s Proposed Claim
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`Constructions, FST v. IBM, Case No. 1:11-cv-08729 (N.D. Ill.).
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`8.
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`Attached hereto as Exhibit 1011 is a true and correct copy of Local Patent
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`Rule 4.3 Joint Claim Construction and Pre-Hearing Statement, FST v.
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`Oracle, Case No. 2:08-cv-371 (E.D. Tex.).
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`9.
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`Attached hereto as Exhibit 1012 is a true and correct copy of U.S. Patent
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`Appl. No. 08/862,176 (“the ’176 Application”).
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`10. Attached hereto as Exhibit 1013 is a true and correct copy of excerpts from
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`the file history of the ’176 Application: March 5, 1998 Notice of
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`Allowability.
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`11. Attached hereto as Exhibit 1014 is a true and correct copy of U.S. Patent No.
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`5,826,259.
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`12. Attached hereto as Exhibit 1015 is a true and correct copy of U.S. Reissue
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`Appl. No. 11/152,835 (“the ’835 Reissue Application”).
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`13. Attached hereto as Exhibit 1016 is a true and correct copy of Reexamination
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`Request No. 90/007,707 (“the ’707 Reexamination”).
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`2
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`14. Attached hereto as Exhibit 1017 is a true and correct copy of excerpts from
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`the file history of the ’707 Reexamination: September 30, 2005 Order
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`Granting Reexamination.
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`15. Attached hereto as Exhibit 1018 is a true and correct copy of excerpts from
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`the file history of the ’707 Reexamination: December 5, 2005 Decision
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`Merging ’835 Reissue Application and ’707 Reexamination.
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`16. Attached hereto as Exhibit 1019 is a true and correct copy of excerpts from
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`the file history of the ’707 Reexamination: June 1, 2006 Interview Summary.
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`17. Attached hereto as Exhibit 1020 is a true and correct copy of excerpts from
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`the file history of the ’707 Reexamination: February 20, 2008 Notice of
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`Allowability.
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`18. Attached hereto as Exhibit 1021 is a true and correct copy of Reexamination
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`Request No. 90/008,648 (“the ’648 Reexamination”).
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`19. Attached hereto as Exhibit 1022 is a true and correct copy of excerpts from
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`the file history of the ’648 Reexamination: July 19, 2007 Order Granting
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`Reexamination.
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`20. Attached hereto as Exhibit 1023 is a true and correct copy of excerpts from
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`the file history of the ’648 Reexamination: February 11, 2009 Amendment.
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`21. Attached hereto as Exhibit 1024 is a true and correct copy of excerpts from
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`the file history of the ’648 Reexamination: March 5, 2009 Office Action.
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`3
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`22. Attached hereto as Exhibit 1025 is a true and correct copy of excerpts from
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`the file history of the ’648 Reexamination: June 4, 2009 Applicant
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`Response.
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`23. Attached hereto as Exhibit 1026 is a true and correct copy of excerpts from
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`the file history of the ’648 Reexamination: September 18, 2009 Notice of
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`Intent to Issue a Reexamination Certificate.
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`24. Attached hereto as Exhibit 1027 is a true and correct copy of January 5,
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`2010 Reexamination Certificate.
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`25. Attached hereto as Exhibit 1028 is a true and correct copy of a FST’s
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`Opening Claim Construction Brief, FST v. Oracle, Case No. 2:08-cv-371
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`(E.D. Tex.).
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`26. Attached hereto as Exhibit 1029 is a true and correct copy of FST’s Reply in
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`Support of its Opening Claim Construction Brief, FST v. Oracle, Case No.
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`2:08-cv-371 (E.D. Tex.).
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`27. Attached hereto as Exhibit 1030 is a true and correct copy of a Transcript of
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`the October 7, 2010 Claim Construction Hearing, FST v. Oracle, Case No.
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`2:08-cv-371 (E.D. Tex.).
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`28. Attached hereto as Exhibit 1031 is a true and correct copy of excerpts from
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`the file history of the ’648 Reexamination: June 13, 2007 Notice of
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`Reexamination Request Filing Date.
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`4
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`29. Attached hereto as Exhibit 1032 is a true and correct copy of excerpts from
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`FST’s Local Patent Rule 3.1 Final Infringement Contentions, FST v. IBM,
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`Case No. 1:11-cv-08729 (N.D. Ill.).
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`30.
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`I hereby declare under penalty of perjury under the laws of the United States
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`of America that the foregoing is true and correct, and that all statements
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`made of my own knowledge are true and that all statements made on
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`information and belief are believed to be true. I understand that willful false
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`statements are punishable by fine or imprisonment or both. See 18 U.S.C.
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`§ 1001.
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`Date: December 12, 2012
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`Respectfully submitted,
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`/s/ Joel Merkin
`Joel Merkin
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Declaration of
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`Joel Merkin was served on December 12, 2012 via FedEx delivery directed to the
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`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
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` copy was also served via messenger delivery on:
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` A
`
`Robert A. Conley
`NIRO, HALLER & NIRO, LTD.
`181 West Madison Street, Suite 4600
`Chicago, IL 60602-4515
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`
`
`
` /s/ Joel R. Merkin
`Joel R. Merkin
`
`
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`6
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