Case 2:11-cv-01292-DWA Document 93 Filed 09/07/12 Page 1 of 40
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`Plaintiff,
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`v.
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`Case No. 2:11-cv-01292-DWA
`Honorable Judge Donetta W. Ambrose
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`JURY TRIAL DEMANDED
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`DECLARATION OF DR. JOHN P.J. KELLY
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`SIGHTSOUND TECHNOLOGIES, LLC,
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`APPLE INC.,
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`Defendant.
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`Case 2:11-cv-01292-DWA Document 93 Filed 09/07/12 Page 2 of 40
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`I, John Kelly, hereby declare as follows:
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`I. INTRODUCTION
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`1.
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`I have been retained to provide assistance in the above captioned matter, which I
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`understand to be related to patent infringement. Attached hereto as Appendix A is a true and
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`correct copy of my Curriculum Vitae describing my background and experience. I have personal
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`knowledge of the facts and opinions set forth in this declaration, and, if called upon to do so, I
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`would testify competently thereto.
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`2.
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`I hold Bachelor of Arts and Master of Arts degrees with Honors in Mathematics
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`from the University of Cambridge, England. I hold a Ph.D. in Computer Science from U.C.L.A.
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`From 1982 through 1986, I was a professor in the Computer Science Department at U.C.L.A.
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`From 1986 through 1997, I was a professor in the Electrical and Computer Engineering
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`Department of the University of California, Santa Barbara, where I held tenure.
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`3.
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`I am the principal of Kelly Computing, Inc. I teach and consult in many different
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`aspects of computer science and engineering, including computer hardware and software
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`architecture and design, software engineering and fault tolerance. My particular areas of
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`expertise include computer architecture, software engineering and “clean-room” development
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`and evaluation, reverse engineering, operating systems (including real-time and embedded),
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`network computing (including Internet computing), storage systems, fault tolerance, parallel and
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`distributed computing systems, transaction processing systems, database systems, and program
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`management.
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`4.
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`As a result of my education and professional experience, I have extensive
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`knowledge of computer operating systems including access control concepts, networking
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`technologies, database systems, communication protocols including network communication
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`protocols, user interfaces including graphical user interfaces and computer hardware design, and
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`software analysis, design, and development.
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`5.
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`I have analyzed web browsers (e.g., Safari and Internet Explorer), web
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`applications and other computer products related to e-commerce (e.g., IBM’s Net.Commerce,
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`BEA's middleware platform, the Finance Express DMS and the iTunes store).
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`6.
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`I have analyzed data storage devices such as floppy drives, hard drives, CD drives
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`and DVD drives; and software related to storage of audio and video in multimedia databases.
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`7.
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`I have analyzed software and hardware products related to network transmission
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`of audio and video including software and systems for Voice over IP and streaming video; I have
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`also analyzed content delivery networks. For example, I have analyzed network-based
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`distribution of electronic coupons, set top boxes, and the content delivery network architecture of
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`leading content delivery network providers. I have analyzed audio and video coding methods
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`such as MPEG, MPEG2, MPEG4, H.264 and DTS.
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`8.
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`I have evaluated software and hardware products related to audio and video
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`playback. For example, I have analyzed portable media players such as the Apple iPod, iPhone
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`and iPad, Audible player, Creative Nomad and Rio; jukebox applications such as iTunes,
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`RealPlayer, Winamp, MusicMatch and Rio Port Audio Manager; and portable media recorders
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`such as phones and video cameras.
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`9.
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`I have also analyzed the source code for computer operating systems such as
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`Microsoft Windows, Mac OS, Linux, etc. I have also testified in Court on several occasions as a
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`computer science expert.
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`10.
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`I have worked in the area of computer software, hardware and system design and
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`development for over thirty-five years. I have extensive experience in the design and
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`development of small and large scale software systems. I have been involved in the
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`specification, development, integration, and testing of computer systems with a wide range of
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`requirements, sizes and types. These have included, by way of example, custom hardware and
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`software for a US Air Force fighter plane, a distributed real-time system for US FAA air traffic
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`control, and a distributed geographical information system for the US Department of Energy.
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`11.
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`From 1978 to 1995, I specified, designed and implemented distributed database
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`architectures, systems and applications for Los Alamos National Laboratory and NASA’s Jet
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`Propulsion Laboratory and database machine design and implementation at Transaction
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`Technology Incorporated, Ordain, Inc. and Teradata.
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`12.
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`From 1985 to 1998, I consulted for AT&T GIS, NCR, Symbios Logic, and LSI
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`Logic, including working as a member of the AT&T GIS Science Advisory Committee (“SAC”).
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`The SAC evaluated AT&T’s organization, technical direction and product strategy and made
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`recommendations to the Vice President of Technology and Development.
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`13.
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`I have served as an expert witness in numerous patent cases, and have provided
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`opinion testimony regarding the meaning of terms in computer-related patents. I am familiar
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`with the law regarding claim construction. I have also been informed of common claim
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`construction principles by the attorneys for Apple. Further, I understand the claim construction
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`principles governing “means-plus-function” limitations. I have used my education, background,
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`training and experience in determining the meaning that one of skill in the art would attribute to
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`the claim limitations requiring construction in this case.
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`14.
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`In preparing my opinions, I have reviewed the patents, prosecution histories and
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`reexamination prosecution histories for United States Patent Nos. 5,191,573 (the ‘573 patent),
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`5,675,734 (the ‘734 patent) and 5,966,440 (the ‘440 patent). I have also reviewed the Markman
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`Order in the matter of SightSound.com Incorporated v. N2K, Inc., et al. (“N2K litigation”)
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`issued Feb. 8, 2002, the transcript of the Markman hearing in the N2K litigation [SST-028903 -
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`SST-029420], Plaintiff’s and Defendants’ opening and reply claim construction briefs in the
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`N2K litigation, SightSound’s and Apple’s proposed claim constructions, and other materials
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`referenced herein.
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`II. OPINIONS REGARDING A PERSON OF ORDINARY SKILL IN THE ART
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`15.
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`In my opinion, a person of ordinary skill in the art relating to the technology of
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`the asserted patents at the time at which the patents were filed would have had a bachelor’s
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`degree or equivalent in computer engineering or computer science and approximately two years
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`of experience in developing software and hardware that transmit and receive files over a
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`network.
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`16.
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`I base this opinion on my direct experience over the past 35 years, including in the
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`1988-93 timeframe, working in network communications, as well as my knowledge and
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`understanding of the skill levels of others working in the field.
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`III. OPINIONS REGARDING THE MEANING OF PARTICULAR CLAIM TERMS
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`A.
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`“TELECOMMUNICATIONS LINES”
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`17.
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`All of the independent asserted claims recite the use of a “telecommunication[s]
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`line[s].”
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`18.
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`The asserted claims can be separated into three sets, all of which claim the
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`“telecommunication[s] line[s]” extending from a component at one end to a component at the
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`other end. A first set recites that the “telecommunications line” “connect[s] ... the first memory
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`with the second memory.” [See ‘573 patent at claims 1, 4; ‘734 patent at claims 11, 16; ‘440
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`patent at claims 23, 29, 82, 88, 95] A second set recites that “telecommunications lines”
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`“connect[] to the first party control unit and the second party control unit.” [See ‘734 patent at
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`claims 4, 28; ‘440 patent at claims 12, 47, 72, 100] A third set recites that they “form[] a
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`connection between a first memory ... and a second memory.” [See ‘440 patent at claims 1, 64]
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`19.
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`The specification uses the same language as the claims when describing “the
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`invention.” [See, e.g., ‘573 patent at Abstract, 3:8-12; ‘734 patent at Abstract, 3:19-23, 5:47-51,
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`6:38-45, 7:67-8:3; and ‘440 patent at Abstract, 3:20-24, 5:49-53, 6:41-48, 8:3-6] The figures of
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`the patents-in-suit show an end-to-end connection between the components of the system. See,
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`e.g., ‘573 patent at Fig. 1, which is reproduced below.
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`20.
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`In the prosecution history of the patents-in-suit, the applicant distinguished a
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`claim reciting “selling electronically via telecommunications lines” from U.S. Patent No.
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`3,718,906 to Lightner (“Lightner”). Lightner disclosed a vending machine connected to
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`telephone lines and into which a credit card could be inserted. [See, e.g., ‘573 patent file history,
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`06/25/92 Amendment at p. 19] After insertion of a credit card, the credit card terminal at the
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`vending machine “read[s] the magnetic strip on the inserted credit card and transmits the
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`numbers in digital form ... over the telephone line” to a remote system, where the credit card is
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`verified and later billed. [See Lightner at 11:60-12:34] The applicant argued that “Lightner ...
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`does not teach or suggest the use of telephone or telecommunication lines with respect to the
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`transfer of money.” [See ‘573 patent file history, 06/25/92 Amendment at p. 20] Because the
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`entire credit card transaction in Lightner is performed over telecommunications lines (telephone
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`lines) with the exception of the initial reading of the magnetic strip, one of ordinary skill in the
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`art would interpret that the applicant disclaimed from coverage anything less than the usage of
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`telecommunications lines for every component in the connection from the first party to the
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`second party.
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`21.
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`In the reexamination history of the patents-in-suit, SightSound’s expert, Dr.
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`Tygar, represented to the Patent Office that the “invention” of the patents-in-suit included
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`“[f]orming an end-to-end electronic connection over the telecommunications lines between [the
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`seller and buyer’s memories].” [See ‘573, ‘734 and ‘440 patents reexamination file histories,
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`12/27/05 Tygar Decl. at p. 3]
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`22.
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`Based on the above, it is my opinion that one of ordinary skill in the art would
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`understand the claim phrase “telecommunication[s] line[s],” as used in the asserted patents, to
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`mean “an electronic line for communicating between computers, which requires end-to-end
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`connectivity.”
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`B.
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`“LINE”
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`23.
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`All of the independent asserted claims of the patents-in-suit recite the use of a
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`“line.”
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`24.
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`In the prosecution history of the patents-in-suit, the June 23, 1988 application, to
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`which all the patents-in-suit claim priority, disclosed and claimed only “telephone lines” as filed.
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`[See 06/23/88 Application at pp. 1-6] On December 11, 1991, the applicant attempted to amend
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`the specifications and claims of the ‘573 patent to include a “telecommunication link” to
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`“connect[] ... the first memory with the second memory.” [See ‘573 patent file history, 12/11/91
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`Amendment at pp. 1-6] The USPTO rejected the claim as indefinite because “the
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`‘telecommunication link’ is not well connected in the system.” [See ‘573 patent file history,
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`02/24/92 Office Action at p. 6] In their response, the applicant amended the phrase to its present
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`form of “telecommunications line.” [See ‘573 patent file history, 06/25/92 Amendment at pp. 6,
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`15] My opinion is that one of ordinary skill in the art would understand that, by changing “link”
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`to “line,” the applicant narrowed its scope from an intangible “link” to a physical wire.
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`25.
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`This is supported by the fact that the applicant, in the same amendment, was also
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`distinguishing Lightner as prior art. Lightner refers to physical wires as “standard telephone dial
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`lines” and a “picture phone trunk line” as opposed to a wireless “microwave [transmission] link.”
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`[See, e.g., Lightner at 3:46-62, 14:30-52, Fig. 12 element 165]
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`26.
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`Also in the prosecution history of the patents-in-suit, the applicant referred to
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`“phone or cable lines” as “just about everywhere” while a “cellular call” could be “made literally
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`everywhere.” [See ‘440 patent file history, 04/14/97 Response at p. 14] By doing so, my
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`opinion is that one of ordinary skill in the art would understand that the applicant distinguished
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`the wireless communications of a “cellular call” from “phone or cable lines” by pointing out a
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`difference in their accessibility. A difference in accessibility would make sense only if a “line”
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`was physical, while a “cellular call” was not.
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`27.
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`Based on the above, it is my opinion that one of ordinary skill in the art would
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`understand the claim term “line,” as used in the asserted patents, to mean a “wire.”
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`28. My opinion is further supported by the fact that a “line,” particularly with respect
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`to “telephone” or “telecommunications,” was known to one of ordinary skill in the art to be a
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`wire. For example, Webster’s II New Riverside University Dictionary (1988) at p. 695 defines
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`“line” as “[a] wire or system of wires linking telephone or telegraph systems;” Webster’s Ninth
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`New Collegiate Dictionary (1988) at p. 694 defines “line” as “a wire or pair of wires connecting
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`one telegraph or telephone station with another or a whole system of such wires;” Microsoft
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`Press Computer Dictionary (1991) at p. 210 defines “line” as “[a]ny wire or wires, such as
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`power lines and telephone lines, used to transmit electrical power or signals” and further states,
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`“In communications, a connection between sending and receiving (or calling and called) devices
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`including telephones, computers, and terminals. A line in this sense is generally a physical wire
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`or other cable connecting two pieces of equipment, as on a network.” While wireless
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`communications were known at the time of the patents-in-suit, connections formed by such
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`means were generally not described as a “line.” For example, then, as now, radio or over-the-
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`air/satellite television broadcasts would not be referred to as travelling over “lines.”
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`C.
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`“ELECTRONIC”
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`29.
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`All of the independent asserted claims of the patents-in-suit recite variations of
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`the term “electronic” to modify certain objects or actions, such as “connecting electronically via
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`telecommunications lines” and “electronic sales.” The specification also uses phrases such as
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`“electronic sales and distribution.”
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`30.
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`At the time of the patents-in-suit, the term “electronic” had a well-accepted
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`definition in the art requiring the flow of electrons. For example, Chambers Science and
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`Technology Dictionary (1988) at p. 294 defines “electronic” as “pertaining to devices or systems
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`which depend on the flow of electrons;” and Webster’s II New Riverside University Dictionary
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`(1988) at p. 423 defines “electronic” as “of or relating to electrons.” Electrons are subatomic
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`particles with a negative charge whose flow results in an electric current.
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`31.
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`Certain forms of communications do not involve the flow of electrons and
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`therefore are not considered “electronic.” [See, e.g., Types of Broadband Connections1 at
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`APPLE0031461] For example, since fiber optic cables use light impulses rather than electrons,
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`1 www.broadband.gov/broadband_types.html
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`they are considered optical rather than electronic communications. A technical document
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`published by IBM, a pioneer and well-respected company in fiber optics, stated the following:
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`It is important to realise that optical communications is not like electronic
`communications. While it seems that light travels in a fibre much like electricity
`does in a wire this is very misleading. Light is an electromagnetic wave and
`optical fibre is a waveguide. Everything to do with transport of the signal even to
`simple things like coupling (joining) two fibres into one is very different from
`what happens in the electronic world. The two fields (electronics and optics)
`while closely related employ different principles in different ways. [Harry J.R.
`Dutton, Understanding Optical Communications (1998)2 at p. 3]
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`Similarly, wireless communications, as performed by cellular phones or WiFi, use radio waves
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`rather than electrons to communicate. Copper wires, on the other hand, are electronic owing to
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`their use of electric impulses, i.e., the flow of electrons. I agree with SightSound’s expert, Dr.
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`Tygar, in the N2K litigation where he distinguished among (1) light impulses in fiber optic
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`cables, (2) radio waves for cell phones, and (3) electric impulses through copper wire, which use
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`the flow of electrons. [See, e.g., 185 F. Supp. 2d at 458-59]
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`32.
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`Claim 16 of the ‘734 patent also supports the identification of “electronic” with
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`the “electrons.” This claim says that the “means or a mechanism for storing” is in “electrical
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`communication” with the receiver of the “transmitting means or mechanism” (which is at the
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`second party location) and with the “sales random access memory” (which is at the first party
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`location). Regardless of the location of the “means or a mechanism for storing,” this system
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`requires electrical communication between the first party location and the second party location.
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`Since the only disclosed connection between the two parties is the “telecommunications lines,”
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`the telecommunications lines must be of a type that utilizes the flow of electrons.
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`2 APPLE0030409-APPLE0031046
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`33.
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`Based on the above, it is my opinion that one of ordinary skill in the art would
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`understand the claim term “electronic,” as used in the asserted patents, to mean “through the
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`flow of electrons.”
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`D.
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`“DIGITAL AUDIO SIGNAL”
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`34.
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`Claims 1 and 2 of the ‘573 patent, claims 4-14, 16-18, and 28-34 of the ‘734
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`patent, and claims 1, 12-21, 23-35, 64, 72-78, and 82-95 of the ‘440 patent recite a “digital audio
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`signal” that is downloaded by the second party from the first party.
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`35.
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`The specification relates to the “electronic sales and distribution” of “digital audio
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`signals,” rather than the generation such signals in the first place. [See, e.g., ‘573 patent at 1:9-
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`15] For example, the specification states,
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`Digital Audio Music is music converted into a very basic computer
`language known as binary. A series of commands known as zeros
`or ones encode the music for future playback.” [‘573 patent at
`1:53-59]
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`There is no mention that the “audio” or “music” must be a recording of sound waves.
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`36.
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`The specification also sets forth multiple functions for Digital Audio Music to be
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`achieved by the invention, none of which would be affected by its method of creation: electronic
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`sales and distribution, storage and retrieval, playback, and prevention of copying. [See, e.g.,
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`‘573 patent at 2:10-24]
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`37.
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`Based on the above, it is my opinion that one of ordinary skill in the art would
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`understand the claim term “digital audio signal,” as used in the asserted patents, to mean “digital
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`data playable as an audible sound wave.” One of ordinary skill in the art would not interpret
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`“digital audio signal” to require that it must originate from a sound wave so long as it can be
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`played as one.
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`38. My opinion is further supported by the fact that, at the time of the patents-in-suit,
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`as now, one could generate audible sounds using a computer by (1) “synthesizing original tones
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`from scratch” or (2) “converting analog audio signals into a digital signal that can be further
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`manipulated.” [See Thom Holmes, Electronic and Experimental Music (3rd ed. 2008)
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`(“Holmes”) at p. 297]
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`39.
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`I understand that SightSound intends to exclude MIDI (Musical Instrument
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`Digital Interface) files from its construction of “digital audio signal” because it comprises
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`“digital instructions” rather than “digital sound,” which I understand to be recorded sound
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`waves. However, I do not believe that the difference is relevant. Playing MIDI files can involve
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`the use of recorded sound wave samples. A technique called wavetable synthesis uses “digital
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`audio recordings of the actual instrument that serve as the basis for the synthesized sound.” [See
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`Mobileer White Paper, Direct Synthesis versus Wavetable Synthesis at p. 2; see also Holmes at
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`pp. 304-306] Other sound files called modules, available in 1987, explicitly bundled the samples
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`in the same file as the instructions. [See, e.g., Mod Archive] Under SightSound’s proposal, it
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`would be ambiguous whether these modules constituted “digital audio signals.”
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`40.
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`Also, the specification indicates that “Digital Audio Music” is “used on Compact
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`Discs.” [See, e.g., ‘573 patent at 1:50-53] The compact disc specification explicitly includes a
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`mode for MIDI that allows MIDI files to be stored on compact discs. [See, e.g., CD-MIDI logo;
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`Soren G. Stan, Compact Disc Standards and Formats, Origins and Successors of the Compact
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`Disc (2009) at p. 141]. I see no reason why “digital audio signal” should exclude any form of
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`digital audio available on compact discs, when the objective of the invention is to avoid the
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`shortcomings of their physical nature. [See, e.g., ‘573 patent at 1:17-2:24]
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`E.
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`“HARD DISK” AND “HARD DRIVE”
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`41.
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`Claims 4-8, 13, 16, 28, and 30-33 of the ‘734 patent and claims 13, 15, 16, 27, 34,
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`49, 51, 52, 64, 72-77, 82, 86, 88, 93, 95, 100-105 of the ‘440 patent recite the use of a “hard
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`disk.” Claim 33 of the ‘734 patent and claim 77 of the ‘440 patent recite the use of a “hard
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`drive.” According to the claims, the “hard disk” and “hard drive” are used to store the recited
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`digital audio and video signals.
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`42.
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`The specification contrasts “hard disks” with other forms of storage: “The high
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`speed transfer of Digital Audio Music as prescribed by this invention is stored onto one piece of
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`hardware, a hard disk, thus eliminating the need to unnecessarily handle records, tapes, or
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`compact discs on a regular basis.” [See ‘734 patent, col. 2:43-47; ‘440 patent, col. 2:44-48. It
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`also describes “the agent’s Hard Disk 10” and “the user’s Hard Disk 60” as “commercially
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`available.” [See, e.g., ‘734 patent at 4:31-35]
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`43.
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`In the reexamination history of the patents-in-suit, SightSound described “hard
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`disks” as merely one example of “non-volatile storage”: “A hard disk is a form of non-volatile
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`storage … Examples of non-volatile storage include computer hard disks.” [See ‘573
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`reexamination file history, 11/29/06 Applicant Arguments at p. 8; see also ‘734 reexamination
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`file history, 11/29/06 Applicant Arguments at pp. 21-22; ‘440 reexamination file history,
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`11/29/06 Applicant Arguments at pp. 33-34] Moreover, SightSound amended claim 10 of the
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`‘440 patent during reexamination proceedings to include the following limitation: “A method as
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`described in claim 4, wherein the non-volatile storage portion comprises is [sic] a second party
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`hard disk; ….” [See ‘440 patent at claim 10]
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`44.
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`The term “hard disk” was and is well known in the art to refer specifically to a
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`storage device that operated by magnetic means:
`
`One or more flexible platters coated with material that allows the
`magnetic recording of computer data. A typical hard disk rotates
`at 3600 RPM (revolutions per minute), and the read/write heads
`ride over the surface of the disk on a cushion of air 10 to 25
`millionths of an inch deep … Because platters are rigid, they can
`be stacked so that one hard-disk drive can access more than one
`platter. [Microsoft Press Computer Dictionary (1991) at pp. 168-
`169]
`
`In addition, the IBM Dictionary of Computing (1994) at p. 308 defines “hard disk” as “a rigid
`
`magnetic disk such as the internal disks used in the system units of personal computers and in
`
`external hard disk drives …;” Chambers Science and Technology Dictionary (1988) at p. 415
`
`defines “hard disk” as “rigid magnetic disk;” McGraw-Hill Dictionary of Scientific and
`
`Technical Terms (4th ed. 1989) at p. 856 defines “hard disk” as “a magnetic disk made of rigid
`
`material, providing high-capacity random-access storage;” The Random House Dictionary of the
`
`English Language (2nd ed. 1987) at pp. 871, 1156 defines “hard disk” as “see magnetic disk”
`
`and “magnetic disk” as “a rigid disk coated with magnetic material, on which data and programs
`
`can be stored;” Merriam Webster’s Collegiate Dictionary (10th ed. 2001) at p. 528 defines “hard
`
`disk” as “a rigid metal disk coated with a magnetic material on which data for a computer can be
`
`stored;” The American Heritage Dictionary of the English Language (3rd ed. 1996) at p. 823
`
`defines “hard disk” as “a rigid magnetic disk fixed permanently within a drive unit and used for
`
`storing computer data.”
`
`   
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`45.
`
`Also, the term “hard drive” was well known in the art to refer to a specific type of
`
`storage medium that involved a rotating disk platter with a read-write head and extensible arm
`
`composed of hard disks:
`
`A storage device that uses a set of rotating, magnetically coated
`disks called platters to store data or programs. … A typical hard
`disk platter rotates at up to 3600 rpm and the read/write heads float
`on a cushion of air from 10 to 25 millionths of an inch think so that
`the heads never come into contact with the recording surface. [The
`PC User’s Essential Accessible Pocket Dictionary (1994) at pp.
`252-253]
`
`A stand-alone disk drive that reads and writes data on rigid disks
`and can be attached to a port on the system unit. [IBM Dictionary
`of Computing (1994) at p. 308]
`
`and
`
`and
`
`[A] data-storage device consisting of a drive and one or more hard
`disks. [Merriam Webster’s Collegiate Dictionary (10th ed. 2001)
`at p. 528]
`
`46.
`
`A useful diagram of a hard drive is included in The PC User’s Essential
`
`Accessible Pocket Dictionary (1994) at p. 253:
`
`   
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`
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`47.
`
`Based on the above, it is my opinion that one of ordinary skill in the art would
`
`understand the claim phrase “hard disk” to mean “a rigid, magnetically coated platter for
`
`computer storage” and “hard drive” to mean “a magnetic computer storage medium comprising a
`
`rotating disk platter with a read-write head and extensible arm.”
`
`48.
`
`I understand that SightSound proposes “hard disk” to mean “a permanent storage
`
`device utilizing rigid media” and “hard drive” to mean “a permanent storage device.” Such
`
`constructions would encompass storage devices that one of ordinary skill in the art would not
`
`consider to be a “hard disk” or “hard drive,” such as solid state drives, records, and compact
`
`discs.
`
`49.
`
`For example, compared to hard disks, “solid-state drives don’t have moving heads
`
`and rotating platters; every block is accessible at the same speed as every other block, whether
`
`   
`
`17 
`
`they’re stored right next to each other or in different physical NAND chips. Reading and writing
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`data to and from the solid-state drive is faster as well, so not only does the computer have to wait
`
`fewer milliseconds for its requests to be serviced, but the solid-state drive can also effectively
`
`read and write data faster. Quicker responses (lower latency) plus faster transfer speeds (more
`
`bandwidth) mean that an SSD can move more data faster-its throughput is higher.” [See Lee
`
`Hutchinson, Solid-state revolution: in-depth on how SSDs really work, ars technica (June 4,
`
`2012) at p. 4 (APPLE0029944)]
`
`F.
`
`“REPLICA”
`
`50.
`
`The term “replica” appears in asserted claims 4, 5, 16, 28, and 30 of the ‘734
`
`patent, and in asserted claims 13, 14, 49, 50, 73, 74, 101, and 102 of the ‘440 patent.
`
`51.
`
`In each of these claims, the term “replica” is used in the context of either a sales
`
`random access memory “for [temporarily] storing” the recited “replica” or a playback random
`
`access memory “for [temporarily] storing” the “replica.” For example, claims 4 and 5 of the
`
`‘734 patent recite, in relevant part:
`
`a sales random access memory chip electronically connected to the
`first party hard disk for storing a replica of the desired digital video
`or digital audio signals of the first party’s hard disk to be
`transferred from the first party control unit
`
`and
`
`a playback random access memory chip electronically connected to
`the second party hard disk for storing a replica of the desired
`digital video or digital audio signals from the second party hard
`disk as a temporary staging area for playback
`
`52.
`
`Use of the play back random access memory chip for storage of a “replica” is
`
`further explained in the specification of the ’734 patent:
`
`   
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`
`When a song is retrieved from the Hard Disk 60 only a replica of
`the permanently stored song is retrieved. The permanently stored
`song remains intact on the Hard Disk 60, thus allowing repeated
`playback. The Control Integrated Circuit 50b stores the replica
`onto the Play Back Random Access Memory Chip 50d at a high
`transfer rate. [’734 patent at 5:5-12]
`
`53.
`
`During prosecution of the ’734 patent, the Examiner rejected as indefinite the
`
`applicant’s use of the term “replica.” [See ‘734 file history, 6/28/95 Final Office Action at p. 3]
`
`In response, the applicant offered the following explanations:
`
`The Examiner questions in regard to Claim 9, at lines 5-7, that the
`function of the replica of the desired ... signals to be stored in the
`sales RAM is not clear and is not functionality [sic] associated and
`participated within the claimed system. Applicant has amended
`Claim 9 to identify that the sales random access memory chip is
`electronically connected to the first party hard disk and is for the
`purpose of storing a replica of the desired digital video or digital
`audio signals of the first party’s hard disk to be transferred from
`the first party control unit. Furthermore, at line 19, the “first party
`hard disk” has been replaced by -- sales random access memory
`chip -- to more clearly define applicant’s claimed invention and the
`function of the sales random access memory chip in the claimed
`invention. In this way, it is now clear that the plurality of digital
`audio or video signals are stored in the first party hard disk, but
`those desired video or audio signals which are to be transferred
`from the first party control unit are replicated from the first party
`hard disk and then stored in the sales random access memory
`chip so they can be electronically transferred from the sales
`random access memory chip. [See ’734 patent file history,
`5/21/96 Amendment at p. 22 (emphasis added)]
`
`and