`Exhibit 104 8
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Inventor: Hair
`United States Patent No.: 5,191,573
`Formerly Application No.: 586,391
`Issue Date: March 2, 1993
`Filing Date: September 18, 1990
`Former Group Art Unit: 369
`Former Examiner: Hoa Nguyen
`
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`Attorney Docket No.:
`104677—5005—801
`Customer No. 28120
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`Petitioner: Apple Inc.
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`For: Method for Transmitting a Desired Digital Video or Audio Signal
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`MAIL STOP PATENT BOARD
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`Post Office BOX 1450
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`Alexandria, Virginia 22313—1450
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`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 5,191,573
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`I, Roberto J. Gonzalez, make the following Declaration pursuant to 28 U.S.C. §
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`1746:
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`1.
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`2.
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`I am a paralegal at the law firm of Ropes & Gray LLP.
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`I provide this Declaration in connection with the above—identified
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`Covered Business Method Patent Review proceeding that is being requested at the
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`United States Patent and Trademark Office by Apple, Inc. under 35 U.S.C. § 321, 37
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`CPR. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
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`on my personal knowledge.
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`3.
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`Page 00001
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`Page 00001
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`4.
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`Exhibit 1001 hereto is a true and correct copy of United States Patent
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`No. 5,191,573 to Arthur Hair, with its November 30, 2010 Ex Parte Reexamination
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`Certificate, which are records of the USPTO to which all parties have access. Page
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`5.
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`Exhibit 1002 hereto is a true and correct copy of the file history for
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`United States Patent No. 5,191,573 to Arthur Hair, which was downloaded from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. Page numbers have been added to the bottom of this document and an
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`6.
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`Exhibit 1003 hereto is a true and correct copy of the reexamination file
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`history for Application No. 90/007,402, which was downloaded from the USPTO
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`PAIR website and which is a record of the USPTO to which all parties have access.
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`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
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`7.
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`Exhibit 1004 hereto is a true and correct copy of United States Patent
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`No. 5,675,734 to Arthur Hair, with its December 14, 2010 Ex Parte Reexamination
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`Certificate, which are records of the USPTO to which all parties have access. Page
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`Page 00002
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`Page 00002
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`
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`8.
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`Exhibit 1005 hereto is a true and correct copy of United States Patent
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`No. 5,966,440 to Arthur Hair, with its July 27, 2010 Ex Parte Reexamination
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`Certificate, which are records of the United States Patent and Trademark Office ("the
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`USPTO") to which all parties have access. Page numbers have been added to the
`
`bottom of this document and an exhibit label has been added to the top of this
`
`document but no other alterations have been made.
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`9.
`
`Exhibit 1006 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,966,440 to Arthur Hair, which was downloaded from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. Page numbers have been added to the bottom of this document and an
`
`exhibit label has been added to the top of this document but no other alterations have
`
`been made.
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`10.
`
`Exhibit 1011 hereto is a true and correct copy of the World Patent
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`Application W085/ 02310,
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`filed on November 14, 1984 by SoftNet Inc., and
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`published on May 23, 1985, which was downloaded from the World Intellectual
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`Property Organization’s PATENTSCOPE search page to which all parties have
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`access. Page numbers have been added to the bottom of this document and an
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`Page 00003
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`Page 00003
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`
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`exhibit label has been added to the top of this document but no other alterations have
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`been made.
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`11.
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`Exhibit 1014 hereto is a true and correct copy of an Order regarding
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`Claim Construction in Sig/affozma’ Tet/95., LLC 0. Apple Ina, No. 11~01292, before the
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`District Court of the Western District of Pennsylvania, signed by Senior Judge,
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`Donetta W. Ambrose on February 13, 2013, which was downloaded from the Public
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`Access to Court Electronic Records (“PACER”) website and is a record of the
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`aforementioned District Court (Dkt. No. 175) to which all parties have access. Page
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`12.
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`Exhibit 1015 hereto is a true and correct copy of Special Master’s Report
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`and Recommendation on Claim Construction in Sig/affozmd Tet/95., LLC 12. Apple Ina,
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`No. 11—01292, before the District Court of the Western District of Pennsylvania,
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`signed by Claim Construction Special Master, Gregory L. Bradley and dated
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`November 19, 2012, which was downloaded from the PACER website and is a record
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`of the aforementioned District Court (Dkt. No. 142) to which all parties have access.
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`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
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`13.
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`Exhibit 1012 hereto is a true and correct copy of United States Patent
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`No. 3,718,906 to Robert W. Lightner, which is a record of the USPTO to which all
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`Page 00004
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`Page 00004
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`
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`parties have access. Page numbers have been added to the bottom of this document
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`and an exhibit label has been added to the top of this document but no other
`
`alterations have been made.
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`14.
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`Exhibit 1013 hereto is a true and correct copy of United States Patent
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`No. 3,990,710 to Robert M. Hughes, which is a record of the USPTO to which all
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`parties have access. Page numbers have been added to the bottom of this document
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`and an exhibit label has been added to the top of this document but no other
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`alterations have been made.
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`15.
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`Exhibit 1016 hereto is a true and correct copy of the transcript of the
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`Markman Hearing held on Friday, April 20, 2001 in the District Court of the Western
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`District of Pennsylvania before Honorable Kenneth]. Senson, U.S. Magistrate Judge
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`in SightSoundCom Inc. V. NZK, Inc., No. 98—118, which was produced by counsel
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`for SightSound Techs, LLC, the law firm of Arnold & Porter LLC, to counsel for
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`Apple Inc., Ropes & Gray LLP, during discovery relating to SightSound Techs, LLC
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`V. Apple Inc., No. 11—01292, before the District Court of the Western District of
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`Pennsylvania. The document, as produced, bears identification numbers SST—029141
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`to SST-029293, and bears the certification of Virginia Pease, Official Reporter. Page
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`numbers have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`Page 00005
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`Page 00005
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`16.
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`Exhibit 1018 hereto is a true and correct copy of the transcript of
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`October 8, 2012 Deposition of Jusiin Douglas Tygar in SightSound Techs, LLC V.
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`Apple Inc., No. 11—01292, before the District Court of the Western District of
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`Pennsylvania, which was received from the Merrill Corporation and certified by
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`Natalie Y. Botelho, CSR No. 9897.
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`17.
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`Exhibit 1027 hereto is a true and correct copy of the transcript of
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`December 11, 2012 Deposition of Arthur Hair in SightSound Techs, LLC V. Apple
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`Inc., No. 11-01292, before the District Court of the Western District of Pennsylvania,
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`which was received from the Merrill Corporation and certified by Rachel Ferrier, CSR
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`No. 6948.
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`18.
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`Exhibit 1028 hereto is a true and correct copy of the transcript of
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`December 18, 2012 Deposition of Scott Sander in SightSound Techs, LLC v. Apple
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`Inc., No. 11—01292, before the District Court of the Western District of Pennsylvania,
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`which was received from the Merrill Corporation and certified by Rachel Perrier, CSR
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`No. 6948.
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`19.
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`I make this declaration of my own personal knowledge.
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`If called to
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`testify as to the truth of the matters stated herein, 1 could and would testify
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`competently.
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`20.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed this 5th day of May, 2013, at New York, NY.
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`Page 00006
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`Page 00006
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`/
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`Roberto]. Gonzalez
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`Page 00007
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`Page 00007
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