PTO/SB/57 (04-04)
`Approved for use tltrough 4/30/2007. OMB 065l-0033
`
`1338 U 8. P39
`4
`US Patent and Trademark Office; U. S DEPARTMENT OF COMMERCE
`n er the Paerwork Reduction Act of I995 no uersons are re-uired to resend to a collection ofinformation unlessIt dis-la s a \alid OMB control number
`”II"mm
`as FORM PTO-I465)
`
`,
`EQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM .
`Address to:
`90008640
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`PO. Box 1450
`
`,
`
`Attorney Docket No.: 6883/23
`
`llllllllllllllllllllllllllllllll
`05/09/0
`
`Date: May 7, 2007 |||lll|||||||
`
`Alexandria, VA 22313-1450
`
`This is a request for ex parte reexamination pursuant to 37 CFR [.510 of patent number 5 826 259
`issued October 20 1998. This request is made by:
`
`El patent owner.
`
`‘X third party requester.
`
`The name and address ofthe person requesting reexamination is:
`
`William L. Anthony Jr.
`Orrick, Herrington & Sutcliffe
`[000 Marsh Road
`
`Menlo Park CA 94025
`
`-
`
`'
`
`A check in the amount of$
`
`is enclosed to cover the reexamination fee, 37 CFR 120(c)(1);
`
`The Director is hereby authorized to charge the fee as set forth in 37 CFR l.20(c)(l)
`to Deposit Account No. 15-0665 (submit duplicate ofthis form for fee processing); or
`
`c.
`
`_ Payment by credit card. Form PTO-2038 is attached.
`
`Any refund should be made by [:I check or E] credit to Deposit Account No.
`37 CFR l.26(c). If payment is made by credit card, refund must be to credit card account.
`
`A copy ofthe patent to be reexamined having a double column format on one side ofa separate
`paper is enclosed. 37 CFR 1.510(b)(4)
`-
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`
`Nucleotide and/or Amino Acid. Sequence Submission
`lfapplz'cable, all ofthefollowing are necessary.
`
`a.
`b.
`
`I] Computer Readable Form (CRF)
`Specification Sequence Listing on:
`
`i.
`ii.
`
`[:1 CD-ROM (2 copies) or CD-R (2 copies); or
`E] paper
`
`c.
`
`El Statements verifying identity of above copies
`
`A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`
`Is requested.
`1-18
`Reexamination ofclaim(s)
`85/22/2697 JHClDlljllBA 85835381]1 158565
`b
`I d
`bl
`d
`A
`r
`COpyo every patent or printe PU Ication re 16 upon is su mitlfiil 2%?ng Inc u lggaae.[BSIBInlfilt ereo on
`Form PTO- 1449 or equivalent.
`
`955545
`
`An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page I of2]
`This collection ot infonnationIS required by 37 CFR 1.510. The informationIS required to obtain or Ietain a benefit by the public whichIs to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U SC [22 and 37 CFR l 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 comments 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, U S. Patent and
`
`Trademark Office US Department of Commerce, PO Box 1450, Alexandria, VA 223l3- I450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS
`ADDRESS SEND TO: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450 Alexandria, VA 223”- I450.
`[/yuu needaxsislunce in completing tthorm call I800-1’10.)l99 and select option 2
`
`OHS West1260227791.-Il
`
`001
`
`IBM EX_ 1 021
`
`001
`
`

`

`PTO/SB/57 (04--04)
`Approved for use t111011g|1 4/30/2007. OMB 065| -0033
`U S. Patent and Trademark Office; U S DEPARTMENT OF COMMERCE
`Under the Pa-erwork Reduction Act of 1995 no Iersons are re uIred to resond to a collection ofinfonnation unless it dis In S a valid OMB control number
`
`X
`
`The attached detailed request includes at least the following items:
`
`a.
`
`b.
`
`A statement identifying cach substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1. 510(b)(l)
`An identification of every claim for which reexamination is requested and a detailed explanation ofthe
`pertinency and manner of applying the cited art to every claim for which reexamination is requested.
`37 CFR 1.510(b)(2)
`-
`
`[:1
`
`A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.5 10(e)
`
`X
`
`'
`
`a.-
`
`It is certified that a copy ofthis request (if filed by other than the patent owner) has been served in its
`entirety on the patent owner as provided in 37 CFR 1.3 3(c).
`.
`The name and address ofthe party served and the date of service are:
`ALLEN DYER DOPPELT MlLBRATH & GILCHRIST P.A.
`
`1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE
`
`'
`
`Orlando FL 32802-3791
`
`Date of Service: May 7, 2007
`
`; or
`
`A duplicate copy is enclosed since service on patent owner was not possible.
`
`Correspondence Address: Direct all communication about the reexamination to:
`
`El CUStomer Number:
`
`OR
`
`Orrick Herrington & Sutcliffe, LLP
`X] Firm or
`
`1nd1v1dua| Name William L. Anthon , Jr.
`Address (line D
`1000 Marsh Road
`Address—line2)
`
`Menlo Park
`
`State
`CA
`
`Zip
`94025
`
`_ountry
`
`T—elephone 6506147400
`
`- 650 6147401
`
`The patent is currently the subject ofthe following concurrent proceeding(s):
`E] .a.
`Copending reissue Application No.
`C] b.
`Copending reexamination Control No.
`C] c.
`Copending Interference No.
`1:] d.
`Copending litigation styled:
`
`XI For Third Party Requester
`
`WARNING: Information on this form may become public. Credit card information should not be
`
`ovide credit card inf rmationand authorization on PTO-2038..
`'
`'
`l 330’?
`
`
`Date
`
`Williams L. Anthony, Jr.
`Typed/Printed Name
`
`24771
`Registration No, ifapplicable
`
`El For Patent Owner Requester
`
`OHS West:260227791.1
`
`[Page 2 of2]
`
`002
`
`002
`
`

`

`1338 "US: PTO
`WWWWWWWWMW
`05/09/07
`
`‘
`
`.
`
`
`. PATENT
`
`IN THE UNITED STATES PATENT OFFICE
`‘
`
`Request For Ex Parte Reexamination Of:
`
`US. Patent No. 5,826,259
`
`Inventor:
`
`Karol Doktor
`
`
`
`
`
`1338 U3 pm ‘
`90008648
`
`WMWWWWWWWWWI
`
`- 05/09/07
`
`'
`
`A
`
`-
`
`SSlgnee
`
`:
`
`-
`
`-
`
`F
`
`1,13%:
`'
`'
`
`
`
`
`
`
`
`l S
`
`t
`
`ys ems
`
`T h
`
`l
`
`6C no Ogy
`
`INDEX FOR EX PARTE
`
`REEXAMINATION OF US. PATENT
`NO. 5,826,259
`
`Filed:
`
`May 22, 1997
`
`Issued:
`
`October 20, 1998
`
`For:
`
`Easily Expandable Data
`Processing Systems and
`Method
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`Enclosed please find Foundry Networks, Inc.’s request for ex parte reexamination of US.
`
`Patent No. 5,826,259. Included with the request is a compact disk that contains all
`
`exhibits and references in PDF format. The request comprises the following documents:
`
`.
`
`USPTO From SB/08A
`
`Exhibits to Form SB/OSA:
`
`
`DOCUMENT
`
`,
`
`I
`
`p
`
`V Exhibit PA-A -
`
`US. Patent No. 4,506,326
`
`NO. OF
`
`PAGES
`2
`
`28
`
`003
`
`003
`
`

`

`DOCUMENT
`
`No. OF
`PAGES
`
`16
`
`38
`
`25
`
`14
`
`20
`
`1 1
`
`17
`
`18
`
`27
`
`Exhibit PA-B
`
`US. Patent No. 4,774,661
`
`.
`
`Exhibit PA-C
`
`US. Patent No. 4,918,593
`
`Exhibit PA-D
`
`Exhibit PA-E
`
`Exhibit PA-F
`
`Exhibit PA-G
`
`Exhibit PA-H
`
`Exhibit PA-I
`
`Exhibit PA-J
`
`Toby J. Teorey, et al., A Logical Design
`Methodology for Relational Databases
`Using the Extended Entity-Relationship
`
`Model, Computing Surveys (June 1986) -
`
`1
`
`Daniel R. Dolk, et. al., A Relational
`Information Resource Dictionary
`System, Computing Practices,
`Communications of the ACM (January
`1987)
`
`M.M. Zloof, Query-by-Example: A
`Data Base Language, IBM Systems
`Journal, No. 4 (1977)
`
`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 99-115 (Pergamon Press 1978)
`
`Munz, Rudolf, Design of the Well
`System, in Entity-Relationship
`Approach to Systems Analysis and
`Design. Proc. lst International
`Conference on the Entity Relationship
`Approach »
`'
`'
`
`Ashok Malhotra, Yakov Tsalalikhin,
`Donald P. Pazel, Luanne M. Burns and
`Harry M. Markowitz, Implementing an
`Entity-Relationship Language on a
`Relational Data Base, IBM Research
`
`Report RC 12134 (#54499) (Aug. 27,
`
`004
`
`004
`
`

`

`99%
`
`1986)
`
`NO. OF
`
`PAGES
`
`’ Exhibit PA-K
`
`Exhibit PA-L'
`
`Exhibit PA-M
`
`Exhibit PA-N
`
`Exhibit PAT-A1
`
`Exhibit PAT-A2
`
`Exhibit PAT-A3
`
`Exhibit PAT-A4
`
`Rudolph Munz, “Das WEB-Modell”
`(translated pages)(1976).
`
`Gio Wiederhold, “Database Design
`Second Edition” (1995).
`'
`
`Pin-Shan Chen, The entity-relationship
`model — A basis for the enterprise View
`
`ofdata (1977).
`
`Mark L. Gillenson, Database Step-by-
`'S_t§p 2nd Edition (1990), Other
`References
`
`US. Patent No. 5,826,259 ‘
`
`Preliminary Infringement Contentions
`filed by FST in Financial Systems
`Technology, et a1. V. Oracle Corporation
`(“PICS”).
`
`FST’s Response to the Notice of Non-
`Compliant Amendment, filed on Sept.
`21, 2006.
`
`'
`
`U.S. Reissue App’n, Amendment Filed
`July 25, 2006, 11/152,835.
`
`Exhibit PAT-A5
`
`FST’s Information Disclosure Statement
`
`Exhibit PAT-A6
`
`Exhibit PAT-A7
`
`Exhibit OTH-A
`
`(IDS) in the 90/007,707 re-examination
`(stamped by the USPTO on October 23,
`2006).
`
`Second Office Action in the .
`
`Reissue/Reexamination Proceedings for
`the ‘259 Patent.
`
`_
`Livingston Enterprises, Inc.,
`Configuration Guide for PortMaster
`Products (Dec. 1995)
`
`Full copy of the complaint filed by
`Patent Owner in Financial Systems
`
`005
`
`40
`
`46
`
`50
`
`47
`
`44
`
`52
`
`005
`
`

`

`DOCUMENT
`
`NO. OF
`PAGES
`
`Technology, et al. v. Oracle
`Corporation, Case No. 2:04-CV-358-
`TJW (E.D..Tex.) filed on October 12,
`2004.
`
`' The IBM Dictionary of Comguting
`
`Terms 87 (8th Ed. 1987).
`
`Telebit Corp., Telebit NetBlazer®
`Version 2.3 Release Notes (March 25,
`1994)
`
` Wllliam L. Anthony
`
`Reg. No. 24771 .
`Attorney for Oracle Corporation
`
`Exhibit OTH-B
`
`Exhibit OTH-C
`
`Certificate of Service
`
`Postcard
`
`CD
`
`Respectfully submitted,
`
`Dated: May 8, 2007
`
`OHS West:260228539.l
`
`006
`
`006
`
`

`

`{3'36
`
`u.é."i5T'o_
`
`.Imuuummmmmmwumnumm‘
`
`05/09/07
`
`7
`
`-
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 90008648
`
`
`
`P6333133
`illlllllllllllllllllllllllllllllllllllllll
`
`05/09/07
`
`I
`
`Request for Reexamination of:
`
`REQUEST FOR EX PARTE
`REEXAMINATION OF US. PATENT NO.
`
`US. Patent No. 5,826,259
`
`5,826,259
`
`Karol Doktor
`
`ATTACHMENT TO FORM 1465
`
`Inventor:
`
`Assignee:
`
`
`
`
`Financial Systems Technology MATTER IN REEXAMINATION
`
`(Intellectual Property) Pty Ltd
`Melbourne, Australia
`
`
`ATTN: EXAMINER LUKE S. WASSUM
`
`GAU: 2167
`
`Filed:
`
`' May 22, 1997
`
`Issued:
`
`'
`
`October 20, 1998
`
`
`
`
`'For:
`
`Easily Expandable Data
`Processin S stem and Method
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`
`PO. Box 1450,
`
`Alexandria, VA 223 1 3- 1450
`
`007
`
`007
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`TABLE OFEXHIBITS....................... 5
`
`LIST OF EXHIBITS....................; ................................................................................... 5
`
`A.
`
`B.
`C.
`
`Prior Art (PA) .......................................................................................... 5
`
`Relevant Patent Materials (PAT) ........................................................... 6
`Other Documents (0TH) ......................................................................... 6
`
`REQUIREMENTS UNDER 37' C.F.R. § 1.510 .......................................... 8
`
`A.
`
`B.
`
`C.
`
`Pram:
`
`II.
`
`III.
`
`PAYMENT OF FEES; 37 C.F.R. § 1.510(A) ...................................'.................. 8
`
`. STATEMENT POINTING OUT EACH SUBSTANTIAL-NEW
`
`QUESTION OF PATENTABILITY; 37 C.F.R. § 1.510(B)(1) ........................ 8
`
`IDENTIFICATION OF CLAIMS FOR REEXAMINATION; 37
`C.F.R. § 1.510(B)(2) ............................................................................................. 8
`
`APPLICATION OF CITED PRIOR ART; 37 C.F.R. § 1.510(B)(2)
`
`............ 9
`
`COPIES OF THE PRIOR ART; 37 C.F.R. § 1.510(B)(3) ................................ 9
`
`COPY OF US. PATENT 5,826,259; 37 C.F.R. § 1.510(B)(4) .......................... 9
`
`CERTIFICATION OF SERVICE ON PATENT OWNER, 37 C.F.R.
`§ 1.510(B)(5) .......................................................................................................... 9
`
`CLAIMS FOR WHICH RE-EXAM IS REQUESTED .................................. 10
`
`‘
`STATEMENT OF SUBSTANTIAL NEW QUESTION OF
`PATENTABILITY ............................................................................................ 11
`
`' A.
`
`The Prior Art .......................................................................................... 11
`
`B.
`
`New Question of Patentability .............................................................. 12
`
`IV.
`
`EXPLANATION OF THE PERTINENCE AND MANNER OF
`
`APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH
`
`REEXAMINATION IS REQUESTED BASED ON PRIOR ART ............... 14
`
`A.
`
`B
`
`C
`
`D.
`
`E
`
`Teorey.................................................... .................._............................... 14
`
`' Huber ...................................................................................................... 18
`
`Kuinpati
`
`22
`
`Dolk ............................................................................'. ............................ 24’
`
`Zloof ........................................................................................................ 26
`
`F. Shaw ........................................................... 28
`
`V.
`
`DISCUSSION OF FST’S RESPONSE TO NOTICE OF NON-I
`COMPLIANT AMENDMENT......................................................................... 29
`
`2
`
`008
`
`008
`
`

`

`TABLE OF CONTENTS
`
`(continued)
`
`Page
`
`A.
`
`-B.
`
`C.
`
`FST Identification of Alleged “Benefits Achieved by the
`Claimed Invention” is Unavailing as the “Benefits” are
`.
`Unclaimed, and Because the “Benefits” are Disclosed by Prior
`Art............................................................................................................ 30
`
`The ‘259 Patent Claims are Non-Statutory ......................................... 38
`
`The ‘259 Patent is Invalid Under 35 USC 102/103 Over the
`
`'Munz, Malhotra and Tsichritzis References ....................................... 39
`
`VI.
`
`DISCUSSION OF FST’S RESPONSE TO THE EXAMINER’S
`
`SECOND OFFICE ACTION ............................................................................ 43
`
`A.
`
`B
`
`C
`
`D.
`
`E
`
`Wiederhold’s “Database Design SecOnd Edition” Discloses
`Definition Tables .................................................................................... 43
`
`Requester Agrees with Examiner’s Section 101 Rejections ............... 45
`
`The Munz Reference is Anticipatory Prior Art .................................. 48
`
`The Malhotra Reference is Anticipatory Prior Art.................... 52
`
`The Claims Are Not Entitled to a Presumption of Validity ............... 53
`
`_VII.
`
`APPLICATION OF PRIOR ART PATENTS AND PUBLICATIONS
`
`54
`
`A.
`
`B.
`
`C.
`
`D.
`
`Teorey andHuber ........................ 54
`
`. Teorey and Kumpati.............................................................................. 80
`
`Dolk, Teorey, Zloof and/or Shaw ....................................................... 108
`
`Tsichritzis, Munz, Zloof, and Shaw References ................................ 132
`
`VIII.
`
`CONCLUSION ................................................................................................ 138
`
`3
`
`009
`
`009
`
`

`

`LlST OF EXHIBITS
`
`TABLE OF EXHIBITS
`
`The exhibits to the present Request are arranged in three groups: prior art (“PA”),
`relevant patent prosecution file history, patents, and claim dependency relationships
`(“PAT”), and other (“0TH”).
`
`A.
`
`Prior Art gPAg
`
`PA-SB/08A
`
`USPTO Form SB/08A .
`
`PA-A
`
`PA-B
`
`PA—C
`
`PA-D
`
`PA-E
`
`PA-tF
`
`PA—G
`
`PA-H -
`
`PA-I
`
`’
`
`' US. Patent No. 4,506,326 to Philip S. Shaw, et al., Apparatus and
`Method for Synthesizing a Query for Accessing a Relational Database,
`issued March 19, 1985, filed Feb. 28, 1983 (“Shaw”).
`
`US. Patent No. 4,774,661 to Murari Kumpati, Database Management
`System with Active Data Dictionary, issued Sept. 27, 1988, filed Nov.
`19, 1985 (“Kumpati”).
`'
`
`US. Patent No. 4,918,593 to Val. J. Huber, Relational Database System,
`issued April 17,- 1990, filed January 8, 1987 (“Huber”).
`
`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, pp. 197-222 (“Teorey”).
`
`Daniel R. Dolk, et. al., A Relational Information Resource Dictionary
`System, Computing Practices, Communications of the ACM, Vol. 30,
`No. 1, January 1987 (“Dolk”).
`
`M.M. Zloof, Query-by-Example: A Data Base Language, IBM Systems
`Journal, No. 4, 1977, pp. 324-343 (“2100f”).
`
`,
`
`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 (“Tsi‘chritzis”).
`'
`
`Munz, Rudolf, The Well System: A Multi-User Database System Based
`on Binary Relationships and Graph-Pattern-Matching, 3 Information ,
`Systems 99-115 (Pergamon Press 1978) (“Munz I”).
`
`Munz, Rudolf, Design of the Well System, in Entity-Relationship
`Approach to Systems Analysis and Design. Proc. lst International
`Conference on the Entity Relationship Approach, 505-522 (1979)
`(“Munz II”)
`
`010
`
`010
`
`

`

`PA-J
`
`Ashok Malhotra, Yakov Tsalalikhin, Donald P. Pazel, Luanne M. Burns
`
`
`and Harry M. Markowitz, Im lementin an Entit —Relationshi
`Lan ua e on a Relational Data Base, IBM Research Report RC 12134
`
`(#54499) (Aug. 27, 1986) (“Malhotra”).
`
`PA-K
`
`PA-L
`
`PA-M
`
`PA-N
`
`Rudolph Munz, “Das WEB-Modell” (translated pages), pp. 155-156, Fig.
`10.2.1, (1976) (“Munz III”), with English translation.
`'
`
`Gio Wiederhold, “Database Design Second Edition”, Discloses
`Definition Tables, Sections 7-3-1, 7-3-7, 7-4-4, 7-4-5, and 9-7-6 and
`
`Figs. 8-5, 8-7, 8-9 (1995).
`
`Pin-Shan Chen, The entity-relationship model — A basis for the entegprise
`View of data 77 (1977).
`
`Mark L. Gillenson, Database Step-by-Step 141-42, 2d Ed. (1990).
`
`B.)
`
`Relevant Patent Materials (PAT)
`
`PAT-A1
`
`PAT-A2
`
`PAT-A3
`
`PAT-A4
`
`PAT-A5
`
`PAT-A6
`
`PAT—A7
`
`US. Patent No. 5,826,259 (the ‘259 patent).
`
`Preliminary Infringement Contentions filed by FST in Financial Systems
`Technology, et al. v. Oracle Corporation (“PICS”).
`‘
`
`FST’s Response to the Notice of Non-Compliant Amendment, Filed on
`Sept. 21, 2006.
`
`US. Reissue App’n, Amendment, Filed on July 25, 2006, 11/152,835.
`
`FST’s Information Disclosure Statement (IDS) in the 90/007,707 re-
`examination, stamped by the USPTO on October 23, 2006.
`
`Second Office Action in the Reissue/Reexamination Proceedings for the
`‘259 Patent.
`
`FST’s Response to Office Action, Filed on March 22, 2007.
`
`C.
`
`Other Documents 10TH)
`
`OTH-A
`
`OTH—B
`
`OTH—C
`
`Full copy of the complaint filed by Patent Owner in Financial Systems
`Technology, et al. v. Oracle Copporation, Case No. 2:04-CV-358-TJW
`(E.D. Tex.) filed on October 12, 2004.
`
`'
`
`The IBM Dictionary of Computing Terms 87 (8th Ed. 1987).
`
`Webster’s New World Dictionary of Computer Terms 107 (3d Ed. 1988).
`
`011
`
`011
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`Request for Reexamination of:
`
`REQUEST FOR EX PARTE
`REEXAMINATION OF US. PATENT NO.
`
`US. Patent No. 5,826,259
`
`5,826,259
`
`Karol Doktor
`
`ATTACHMENT TO FORM 1465
`
`Inventor:
`
`Assignee:
`
`
`
`
`
`Financial Systems Technology MATTER IN REEXAMINATION
`(Intellectual Property) Pty Ltd
`Melbourne, Australia
`
`ATTN: EXAMINER LUKE S. WASSUM
`
`
`
`Filed:
`
`May 22, 1997
`
`GAU: 2167
`
`Issued:
`
`October 20, 1998
`
`
`
`For:
`Easily Expandable Data
`Processin S stern and Method
`
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`
`P.O. Box 1450,
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`.
`
`Pursuant to the provisions of 35 U.S.C. §§ 302 et seq. and 37 CPR. § 1.510,
`
`Oracle Corporation (“Oracle” or “Requester”) hereby requests ex parte reexamination of
`
`US. Patent No. 5, 826,259 (“the ‘259 patent”). Attached as Exhibit PAT-A1 is a copy of
`
`the ‘259 patent, as required under 37 CPR. § 1.510(b)(4). The ‘259 patent was issued
`
`on October 20, 1998 to Karol Doktor. On its face, the ‘259 patent indicates that it was
`assigned to Financial Systems 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 will be referred to as “FST” in this
`
`request. FST has stated it believes the ‘259 patent is enforceable and there'is no terminal
`
`disclaimer, certificate of correction, or reexamination certificate.
`
`The ‘259 patent is presently the subject of a merged re-issue/re-examination. Re-
`
`012
`
`012
`
`

`

`issue serial number 11/152,835, reexamination serial number 90/007,707. Additionally,
`
`the ‘259 patent was previously the subject of litigation proceedings in the District Court
`
`
`
`for the Eastern District of Texas, styled as Financial S stems Technolo et al. v. Oracle
`
`Corporation, Case No. 2:04-CV-358-TJW. A copy of the Complaint is attached as
`
`Exhibit OTH—A. During these proceedings, FST prepared and served on Oracle its
`Preliminary Infringement Contentions (“PICS”) as required under the Patent Local Rules
`
`of the Eastern District of Texas.” The PICs, as admissions by the patent owner of record
`
`in a court record, may be utilized in combination with a patent or printed publication
`
`, during an ex parte reexamination proceeding. United States Patent & Trademark Office,
`I Manuallof Patent Examining Procedure § 2217(11). Admissions by the patent owner as to
`
`any matter affecting patentability may be utilized to determine the scope and content of
`
`the prior art in conjunction with patents and' printed publications in a prior art
`
`rejection, whether such admissions result from patents or printed publications or from
`
`some other source. Id. A copy of these PICs is attached as Exhibit PAT-A2. This
`
`litigation was dismissed without prejudice to allow FST to pursue the above-noted reissue
`
`application. FST has stated that it intends to assert the ‘259 patent following the'reissue
`
`proceedings.
`
`'
`
`RES QUIREIVIENTS UNDER 37 C.F.R. § 1.510
`
`Pursuant to 37 C.F.R. § 1.510,’Oracle satisfies each of the requirements for ex
`
`parte reexamination of the ‘259 patent.
`
`A.
`
`Payment of Fees; 37 C.F.R. § 1.510(a)
`
`Requester authorizes the Patent Office to charge Deposit Account No. 15-0665
`
`for the fee set in 37 CFR § 120(c)(1) for reexamination. The fee for reexamination is
`
`$8,800, and the fee-for an Information Disclosure Statement is $180.00.
`
`B.
`
`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 patents and publications is provided in Section II.
`
`C.
`
`Identification of Claims for Reexamination; 37 C...FR § 1.510(b)(2)
`
`Requester requests reexamination of claims 1-18 of the ‘259 Patent, as further
`
`013
`
`013
`
`

`

`discussed in Section I.
`
`D.
`
`Application of Cited Prior Art; 37 C.F.R. § 1.510(b)(2)
`
`A detailed explanation of the pertinency and manner of applying the cited prior
`
`art to every claim for which reexamination is requested is provided in Section III.
`
`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 II.
`
`F.
`
`Copy of US. Patent 5,826,259; 37 C.F.R. § 1.510(b)(4)
`
`As noted above, attached as Exhibit PAT-A1 is a copy of the ‘259 patent, as
`
`required under 37 C.F.R. § 1.510(b)(4). There is no Certificate of Correction, Terminal
`
`Disclaimer, or Certificate of Reexamination.
`
`G.
`
`Certification- of Service on Patent Owner; 37 C.F.R. § 1.510(b)(5)
`
`The undersigned certifies that a complete and entire copy of the Request for Ex
`
`Parte Reexamination and all supporting documents have been provided to the Patent
`
`Owner by serving the attorneys of record at the Patent Office for the ‘259 Patent and for
`
`the pending reissue/reexamination proceedings:
`
`Kwok, Edward
`
`MacPherson, Kwok, Chen & Heid LLP
`2033 GATEWAY PLACE
`
`Suite 400
`
`San Jose CA 95110
`
`(on file for the ‘259 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 P.C.
`
`- 505 E. Travis, Suite 105, PO. Box 0
`
`014
`
`014
`
`

`

`Marshall, TX 75760
`
`11.
`
`CLAIMS FOR WHICH RE-EXAM IS REQUESTED
`
`Reexamination is requested of claims 1-18 of the ‘259 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,,pp. 197-222, attached as Exhibit PA-D.
`
`Reexamination is also requested of claims 1-18 of the ‘259 patent in view of the
`
`disclosure in US Patent No. 4,918,593 to Val. J. Huber, Relational Database System,
`
`issued April 17, 1990, filed January 8, 1987, attached as Exhibit PA-C
`
`Reexamination is also requested of claims 1-18 of the ‘259 patent in view of the
`disclosure in US Patent No. 4,774,661 to Murari Kumpati, Database Management System
`
`with Active Data Dictionary, issued Sept. 27, 1988, filed Nov. 19, 1985, attached as
`
`Exhibit PA-B.
`
`Reexamination is also requested of claims 1-18 of the ‘259 patent in view of the
`disclosure in Daniel R. Dolk, et. al., A Relational Information Resource Dictionary
`
`System, Computing Practices, Communications of the ACM, Vol. 30, No. 1, January
`
`1987, attached as Exhibit PA-E.
`
`Reexamination is also requested of claims 1-18 of the ‘259 patent in view of the
`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-F.
`
`Reexamination is also requested of claims 1-18 of the ‘259 patent in view of the
`
`disclosure in US Patent No. 4,506,326 to Philip S. Shaw, et a1., Apparatus and Method
`for Synthesizing a Query for Accessing a Relational Database, issued March 19, 1985,
`
`' filed Feb. 28, 1983, attached as Exhibit PA-A.
`
`'
`
`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 five prior art publications noted
`
`above.
`
`_
`
`015
`
`015
`
`

`

`III.
`
`STATENIENT OF SUBSTANTIAL NEW QUESTION OF
`PATENTABILITY
`
`A.
`
`The Prior Art
`
`FST’s Response filed Sept. 21, 2006, has presented certain new interpretations
`
`that it attributes to certain claims Iin the ‘259 patent. Due to these new interpretations,
`
`Requester Oracle has identified additional prior art references which anticipate or render
`
`obvious the claims of the ‘259 patent. Of the additional prior art documents cited above,
`Teorey, Kumpati, Dolk, Zloof, and Shaw were not of record in the file of the ‘259 patent.
`
`‘
`
`In addition to the foregoing, FST’s amendment of'claims 4, 9, 12, 17, and 18 in its
`
`first reexamination request have raised a substantial new question of patentability with
`
`respect to those claims. U.S. Reissue App’n, Amendment Filed July 25, 2006,
`11/152,835, attached as Exhibit PAT-A4. Under the Manual of Patent Examining
`
`Procedure, the second or subsequent request for reexamination may raise a substantial
`
`new question of patentability "with respect to 'any new or amended claim which has been
`proposed under 37 CFR l-.530(d) in the first (or prior) pending reexamination proceeding.
`United States Patent & Trademark Office, Manual of Patent Examining Procedure § 2240,
`
`11 (8th ed. 2001).
`
`Teorey, as part of the 90/007,707 re-examination, was cited as reference BA in an
`
`Information Disclosure Statement (IDS) (stamped by the USPTO on October 23, 20062),
`
`attached as Exhibit PAT-A5, and initialed by the Examiner on December 18, 2006. This
`
`reference was cited more or less in the middle of 63 citations in the IDS. As this
`
`1
`
`reference was effectively buried in dozens of other references, reconsideration of this
`
`reference is warranted. Also, in light of the positions taken by FST as to claim breadth
`
`and the amended claims, a substantial question of patentability exists as to the Teorey
`
`reference.
`
`.
`
`Huber was of record in the file of the ‘259 patent, but qualifies for consideration
`
`in this re-examination proceeding. Huber was cited by the Examiner on a PTO-892 form
`
`during prosecution of the great-grandparent application for this patent, but was otherwise
`
`1 Oracle notes that while FST may have advanced certain claim interpretations, Oracle does not necessarily
`adopt them, and is therefore is not bound by those interpretations.
`2 The Same Information Disclosure Statement, included in Examiner’s second office action, has a receipt
`stamp of July 25, 2006.
`
`10
`
`016
`
`016
`
`

`

`not referenced by the Examiner in any further proceedings. Huber was cited by FST on
`
`PTO-1449 forms in each subsequent filing, but Applicant failed to make references to
`
`Huber in these filings as well. MPEP § 2242.II.A permits consideration of art previously
`
`before the Examiner, where such art is presented in a new light or in a different way as
`
`compared with its use in the earlier concluded examination(s). Since Huber was not used
`
`in any manner in the prior Examinations, its use here constitutes a presentation in a new
`
`or different way. Furthermore, Huber is being used in this request in combination with
`art not previously before the Examiner.
`.
`
`Additionally, Requester Oracle presents an update to the required “detailed
`
`explanation and pertinency and manner of applying the cited prior art to every claimfor _
`which reexamination is requested” pursuant to 37 CFR 1.510 and MPEP § 2214, for the
`
`Munz, Malhotra, and Tsichritzis references that are already cited and are already of
`
`record:
`
`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, attached as Exhibit PA-G;
`
`I
`
`'Munz, Rudolf, The Well System: A Multi-User Database System Based on
`
`Binary Relationships and Graph—Pattern-Matching, 3 Information Systems 99-115
`
`(Pergamon Press 1978), attached as Exhibit PA-H;
`
`Munz, Rudolf, Design of the Well System, in Entity-Relationship Approach to
`Systems Analysis and Design. Proc. lst International Conference on the Entity
`
`Relationship Approach, 505-522 (1979), attached as'Exhibit PA-I; and
`
`Ashok Malhotra, YakovTSalalikhin, Donald P. Pazel, Luanne M. Burns and
`
`Harry M. Markowitz, Implementing an Entity-Relationship Language on a Relational
`
`Data Base, IBM Research ReportRC 12134 (#54499) (Aug. 27, 1986), attached as ,
`
`,
`
`Exhibit PA-J.
`
`B.
`
`New Question of Patentability
`
`The prior art documents discussed herein, including the additional prior art
`
`documents and the presently pending prior art documents, are closer to the subject matter
`
`of the ‘259 patent than any prior art which was cited during the prosecution of the ‘259
`
`patent, as demonstrated in detail below. These prior art decuments provide teachings not
`
`11.
`
`017
`
`017
`
`

`

`provided during prosecution of the ‘259 patent.
`
`FST now identifies four features, as listed below in Section IV, that it believes are
`
`benefits of the supposed “inventions” recited in the claims: (1) interposing metadata
`
`between the table catalog and the query; (2) using two-part keys; (3) using an inquiry
`
`table; or (4) using multi-tailed relation types. As will be discussed in detail below, all of
`
`these features are found in the additional prior art cited above (Teorey, Huber, Kumpati,
`
`Dolk, Zloof, and Shaw) and in the prior art cited in the presently pending re-issue/re-
`
`examination proceedings (Munz, Malhotra, Tsichritzis). Accordingly, all of the claims of
`
`the ‘259 patent are either anticipated or obvious in light of the cited prior art.
`Claims 1-18 specify systems and methods for retrieving data from a relational
`
`database. Presuming these distinctions are embodied in the language of the claims, a
`
`substantial new question of patentability in this reexamination is whether (1) interposing
`
`metadata between the table catalog and the query; (2) using two-part keys; (3) using an
`inquiry table; or (4) using multi—tailed relation types, is anticipated and/or obvious in
`
`view of the prior art cited herein.
`
`In any event, the Teorey, Huber, Kumpati, Dolk, Zloof, and Shaw publications
`
`' anticipate and/or render obvious, either alone or in combination with each other or With
`
`the prior art of record in this patent, claims 1-18 of the ‘259 patent. All of the references
`
`cited herein raise a substantial new issue of patentability because they anticipate or render
`
`obvious all of the claims for which reexamination is sought and, except for Huber, they
`I were not previously of record or cited by the Examiner or the Applicants. As discussed
`
`above, Huber is being presented in a new or different way tha