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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Inter Partes Review of:
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`Trial Number: To Be Assigned
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`
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`U.S. Patent No. 6,314,409
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`Filed: October 26, 1998
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`Issued: November 6, 2001
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`Inventor(s): Paul B. Schneck, Marshall D.
`Abrams
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`Assignee: Intellectual Ventures II LLC
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`Title: System for controlling access and
`distribution of digital property
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`Panel: To Be Assigned
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`Mail Stop Inter Partes Review
`Commissions for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF ALICIA SHAH
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`
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`IBM Ex. 1005
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`I, Alicia Shah, 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 North LaSalle
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`Street, Chicago, Illinois 60654, and serve as counsel for Petitioner
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`International Business Machines, Corp. (“IBM”). I submit this declaration
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`in support of IBM’s Petition for Inter Partes Review Under 37 C.F.R. §
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`42.100 of U.S. Patent No. 6,314,409 (“Petition”). I am over twenty-one
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`years of age and not under any legal disability. I have personal knowledge
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`of the following facts and, if called as a witness, could and would testify
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`competently thereto.
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`2.
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`Attached hereto as Exhibit 1006 is a true and correct copy of U.S. Pat. No.
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`6,314,409 to Schneck, et al. (“the 409 Patent”).
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`3.
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`Attached hereto as Exhibit 1007 is a true and correct copy of the File History
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`of U.S. Pat. No. 6,314,409.
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`4.
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`Attached hereto as Exhibit 1008 is a true and correct copy of an article by
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`Sibert, et al., entitled DigiBox: A Self-Protecting Container for Information
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`Commerce (“DigiBox”).
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`5.
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`Attached hereto as Exhibit 1009 is a true and correct copy of U.S. Pat. No.
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`5,689,560 to Cooper, et al. (“Cooper”).
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`6.
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`Attached hereto as Exhibit 1010 is a true and correct copy of the Deposition
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`of Mark Stefik taken on May 10, 2013.
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`a
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`7.
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`Attached hereto as Exhibit 1011 is a true and correct copy of a paper
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`authored by Mark Stefik entitled Letting Loose the Light: Igniting
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`Commerce in Electronic Publication and including the note UIR-R-1996-10.
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`8.
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`Attached hereto as Exhibit 1012 is a true and correct copy of an article by
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`Marin Röscheisen et al., entitled A Communication Agreement Framework
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`for Access/Action Control.
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`9.
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`Attached hereto as Exhibit 1013 is a true and correct copy of a draft article
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`authored by Pamela Samuelson, entitled Technological Protection for
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`Copyrighted Works.
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`10. Attached hereto as Exhibit 1014 is a true and correct copy of U.S. Pat. No.
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`6,963,859 to Stefik, et al.
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`11. Attached hereto as Exhibit 1015 is a true and correct copy of a paper
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`authored by Mark Stefik entitled Letting Loose the Light: Igniting
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`Commerce in Electronic Publication (“Stefik”).
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`12. Attached hereto as Exhibit 1016 is a true and correct copy of the U.S. Patent
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`and Trademark Office Assignments on the Web for the ’409 Patent.
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`13. Attached hereto as Exhibit 1017 is a true and correct copy of excerpts from a
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`book by authored by Rosenblatt, et al., entitled Digital Rights Management:
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`Business and Technology.
`
`
`
`b
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`
`
`
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`14. Attached hereto as Exhibit 1018 is a true and correct copy of of an article
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`authored by Brad Cox, entitled Superdistribution.
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`15. Attached hereto as Exhibit 1019 is a true and correct copy of an article
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`authored by Karen Rodriguez entitled A piece of the ‘Net action.
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`16. Attached hereto as Exhibit 1020 is a true and correct copy of the Joint Claim
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`Construction Statement (D. 64), filed in Intellectual Ventures II LLC v. JP
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`Morgan Chase & Co., et al., No. 1:13–cv–03777 (S.D.N.Y.).
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`17. Attached hereto as Exhibit 1021 is a true and correct copy of the Claim
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`Construction Order (D. 82), filed in Intellectual Ventures II LLC v. JP
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`Morgan Chase & Co., et al., No. 1:13–cv–03777 (S.D.N.Y.).
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`18. Attached hereto as Exhibit 1022 is a true and correct copy of JP Morgan
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`Chase’s February 26, 2014 Opening Claim Construction Brief (D. 68), filed
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`in Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al., No. 1:13–
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`cv–03777 (S.D.N.Y.).
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`19. Attached hereto as Exhibit 1023 is a true and correct copy of JP Morgan
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`Chase’s February 27, 2014 Opening Claim Construction Brief (D. 70), filed
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`in Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al., No. 1:13–
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`cv–03777 (S.D.N.Y.).
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`20. Attached hereto as Exhibit 1024 is a true and correct copy of Intellectual
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`Ventures II LLC’s Opening Claim Construction Brief (D. 72), filed in
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`
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`c
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`
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`
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`Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al., No. 1:13–
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`cv–03777 (S.D.N.Y.).
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`21. Attached hereto as Exhibit 1025 is a true and correct copy of a letter to
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`Judge Hellerstein regarding enclosing a “Revised Joint Chart of Proposed
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`Claim Constructions” (D. 74), filed in Intellectual Ventures II LLC v. JP
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`Morgan Chase & Co., et al., No. 1:13–cv–03777 (S.D.N.Y.).
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`22. Attached hereto as Exhibit 1026 is a true and correct copy of the Second
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`Letter to Judge Hellerstein enclosing a Second Revised Claim Construction
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`Chart (D. 76), filed in Intellectual Ventures II LLC v. JP Morgan Chase &
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`Co., et al., No. 1:13–cv–03777 (S.D.N.Y.).
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`23. Attached hereto as Exhibit 1027 is a true and correct copy of a Letter to
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`Judge Hellerstein regarding claim construction comments (D. 77), filed in
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`Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al., No. 1:13–
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`cv–03777 (S.D.N.Y.).
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`24. Attached hereto as Exhibit 1028 is a true and correct copy of the Transcript
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`of the March 5, 2014 Claim Construction Hearing, held in Intellectual
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`Ventures II LLC v. JP Morgan Chase & Co., et al., No. 1:13–cv–03777
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`(S.D.N.Y.).
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`25. Attached hereto as Exhibit 1029 is a true and correct copy of the Transcript
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`of the March 6, 2014 Claim Construction Hearing, held in Intellectual
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`
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`d
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`
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`Ventures II LLC v. JP Morgan Chase & Co., et al., No. 1:13–cv–03777
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`(S.D.N.Y.).
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`26.
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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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`
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`Date: April 18, 2014
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`
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`Respectfully submitted,
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`/s/ Alicia Shah
`Alicia Shah
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`e
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`
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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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`Alicia Shah was served on April 18, 2014 directed to the attorney of record for the
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`patent at the following addresses:
`
`Via U.S. Priority Mail
`Perkins Coie LLP
`Patent - Sea
`P.O. Box 1247
`Seattle, WA 98111
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`
`
`Via Federal Express
`Perkins Coie LLP
`Patent - Sea
`1201 Third Avenue, Suite 4900
`Seattle, WA 89101
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`A copy will also be served on April 21, 2014 via Federal Express on:
`
`Ian N. Feinberg
`Feinberg, Day Law Firm
`1600 El Camino Real, Suite 280
`Menlo Park, CA 94025
`David J. Koukol
`Koukol, Johnson Law Firm
`12020 Shamrock Plaza, Suite 333
`Omaha, NE 68154
`
`William Irvin Dunnegan
`Dunnegan LLC
`350 Fifth Avenue
`New York, NY 10118
`A H Gaede , Jr
`Bainbridge Mims Rogers & Smith LLP
`600 Luckie Drive
`P O Box 530886
`Birmingham, AL 35253
`
`
`Norman Eli Siegel
`Stueve Siegel Hanson, LLP
`460 Nichols Road, Suite 200
`Kansas City, MO 64112
`Zahra S. Karinshak
`Krevolin & Horst LLC
`One Atlantic Center
`1201 West Peachtree Street, Suite 3250
`Atlanta, GA 30309
`Edwin E Voigt, II
`Vidas Arrett & Steinkraus
`6640 Shady Oak Rd, Suite 400
`Eden Prairie, MN 55344
`Charles Joseph Faruki
`Faruki Ireland & Cox PLL - 3
`500 Courthouse Plaza, SW
`10 N Ludlow Street
`Dayton, OH 45402-1818
`
` /s/ Alicia Shah
`Alicia Shah
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`
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