Free Declaration - District Court of Delaware - Delaware

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

--------------------------------------------RATES TECHNOLOGY INC., Plaintiff, v. QWEST COMMUNICATIONS CORPORATION AND QWEST COMMUNICATIONS INTERNATIONAL, INC., Defendants ---------------------------------------------Civil Action No. 07-442(JJF)

DECLARATION OF ROBERT L. EPSTEIN

I, Robert L. Epstein, hereby declare: 1. I am a partner in Epstein Drangel Bazerman & James, LLP, a law firm

specializing in intellectual property matters, located at 60 East 42nd Street, Suite 820, New York, New York 10165. I am counsel of record for plaintiff, Rates Technology Inc., in this case. The matters stated below are true of my own knowledge, and if called as a witness, I could and would testify truthfully to the same. 2. I make this declaration in support of plaintiff's opposition to Defendants'

Motion to Continue Stay in this case dated March 31, 2008.

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3.

I am a patent attorney registered to practice before the United States Patent

and Trademark Office (USPTO) since 1973. I have over thirty years experience in preparing and prosecuting patent applications, and representing clients in related patent matters, before the USPTO. 4. I am admitted in good standing to practice before the courts of the State of

New York, the United States District Courts for the Southern and Eastern Districts of New York, the Court of Appeals for the Second Circuit, the Court of Appeals for the Federal Circuit and the Supreme Court of the United States of America. 5. Over the last twenty two years, I have represented Rates Technology Inc.

(RTI) on a number of intellectual property matters including: (a) the original prosecution before the USPTO of the applications upon which U.S. Patent Nos. 5,425,085 (`085) and U.S. Patent No. 5,579,769 (`769), the RTI patents involved in this lawsuit (collectively the "RTI patents") are based, leading to the allowance of each of the RTI patents; (b) the 1999 reexamination by the USPTO of each of the RTI patents, leading to the confirmation of the validity of all of the claims of each of the RTI patents; and (c) the current reexamination by the USPTO of the `085 patent. As a result, I am familiar with both of the RTI patents involved in this case, the prosecution history of each RTI patent, the reexamination history of each RTI patent and the references considered by the USPTO in conjunction with the original prosecution of each of the RTI patents, the 1999 reexaminations of each of the RTI patents and the current reexamination of the `085 patent.

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6.

As attorney for RTI in the current reexamination of the `085 patent, I am

personally familiar with that proceeding, and in particular the status of the proceeding as it stands on the date hereof. 7. The statement by Qwest that "On March 7, 2008, the Patent Office issued

a final rejection over all assertable claims of the `085 patent" is incorrect. At no time in this reexamination has the Patent Office ever issued a rejection, final or otherwise, of all of the claims in the `085 patent. In fact, page 45, paragraph 32, of the Office Action dated March 7, 2008 (Exhibit 1 to defendants' motion) states: "Claims 6 and 17 are deemed as patentable." 8. The statement by Qwest that "This Final Rejection closes prosecution of

the `085 patent reexamination." is incorrect. On March 31, 2008, RTI submitted a response to the final rejection which included further arguments concerning the patentability of the rejected claims, supported by the declaration of Shlomo Shur, the head of the group of software engineers responsible for the development, programming and support for two of the telephone systems the manuals for which constitute references upon which the claim rejections are based, solidly refuting the basis for the rejections. A copy of that submission is Exhibit 1 hereto. 9. Subsequently, on April 3, 2008, Mr. Weinberger, one of the inventors of

the `085 patent and the president of RTI, and I traveled to the USPTO for a personal interview with the panel of examiners in charge of the reexamination. At that time, the merits of the rejections were discussed, in particular that the claims are patentable because none of the references teaches means for comparing the cost rate of each (communications) path so as to determine a least cost route (for the telephone call), as is

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required by the majority of the rejected claims. Examiner Pokrzywa, the principle signatory on all Office Actions in this reexamination, pointed out that the claims also require means for addressing a database to identify a plurality of communication switch paths and the cost rate of each path, the claims do not explicitly require that the cost rates compared in the comparing means to select the least cost route be obtained for the database. 10. It was explained to Examiner Pokrzywa that, at least in the view of the

Patent Owner (RTI), the claims implicitly required that the source of the cost rates being compared was the database because any other interpretation would render the database and means for addressing the database, both of which are required by the claims, to be superfluous. 11. Examiner Pokrzywa suggested that if the claims were amended to

explicitly state that the cost rates being compared were obtained from the database, same would alleviate his concern in that regard. Although he made he made no commitment to withdraw the rejections, Examiner Pokrzywa invited RTI to submit a supplemental response to the final rejection which he would consider. The impression that both I and Mr. Weinberger came away with was that such an amendment would be favorably considered. 12. Accordingly, on April 8, 2008, RTI submitted a supplemental response to

the final rejection amending the majority of the rejected claims to require that the cost rates being compared be "obtained from said database" as discussed during the interview. A copy of that submission is Exhibit 2 hereto.

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13.

Based on the above, my expectation is that the Patent Office will respond

to the supplemental response quickly. 14. In the event that the Patent Office response to RTI's supplemental

response is not a confirmation of the patentability of the `085 claims, RTI has the right to appeal the rejections to the Board of Patent Appeals and Interferences. If dissatisfied with the decision of the Board of Patent Appeals and Interference, RTI has the right to appeal same to the U.S. Court of Appeals for the Federal Circuit or to institute a civil action against the Director of the United States Patents and Trademark Office in the United States District Court for the District of Columbia. That appeals process is likely to extend beyond June 1, 2009, the trial date set in this case. 15. The statement by Qwest that "...the `769 patent claims a system for

updating the billing rate parameters used by the least cost routing device claimed in the `085 patent" is incorrect. The preamble of the main claims of the `769 patent all state that the invention claimed is a system of updating the database in "a call rating device used for cost determination for a calling station" or "call rating devices which are associated with respective subscriber calling stations" or for "determining the cost of telephone calls originating from a calling station to a destination calling station". 16. Other than the above, the main claims of the `769 patent do not specify the

structure of the call rating device, other than to require that it have a database and that it be connectable to a telephone line to transmit and receive data. In fact, the patent describes and illustrates the invention as it would be used in a pay telephone system and some of the dependant claims specify that the call rating device is a pay telephone. None

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