Case 2:11—cv—01292-DWA Document 104-3 Filed 09/28/12 Page 1 of 16
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`Civil Action No. 2:1 1-cv-01292,—DWA
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`Honorable Judge Donetta W. Ambrose
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`)
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`) ) ) )
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`SIGHTSOUND TECHNOLOGIES, LLC,
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`Plaintiff,
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`V.
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`APPLE, INC,
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`Defendant.
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`)
`)
`)
`)
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`) )
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`) )
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`RESPONSIVE DECLARATION OF J.D. TYGAR, PH.D.
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`Apple Exhibit 1022 Page 00001
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`Apple Exhibit 1022 Page 00001
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`INTRODUCTION AND BACKGROUND
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`1.
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`My name is Justin Douglas Tygar.
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`I am a tenured, full Professor at the University
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`of California, Berkeley, with a joint appointment in the Department of Electrical Engineering
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`and Computer Science (Computer Science Division) and the School of Information. Prior to
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`joining UC Berkeley in 1998, I was a tenured faculty member in the Computer Science
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`Department at Carnegie Mellon University.
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`2.
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`I am an expert in software engineering, computer security, and cryptography.
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`I
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`have taught courses in software engineering and computer security, at the undergraduate,
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`master’s, and Ph.D. level at both UC Berkeley and Carnegie Mellon University.
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`3.
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`I have also co-written three books that address networking technology and
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`security for networking technology, and one of those books has been translated into Japanese. I
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`have helped design the DETER networking testbed supported by the US. National Science
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`Foundation and the US. Department of Homeland Security that is a widely used framework for
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`testing networking. Further, I led the team that designed the SWOON overlay network used to
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`test mobile networking in that environment.
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`4.
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`Among my awards are the National Science Foundation Presidential Young
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`Investigator Award and the Kyoto Fellowship.
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`5 .
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`I was the co-inventor of a major electronic commerce payment system called
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`NetBill which has been patented, implemented, and licensed to a commercial company
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`CyberCash.
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`I am the UC Berkeley lead of the US. National Science Foundation Science and
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`Technology Center TRUST, which studies issues associated with networking and security. The
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`US. State Department chose my project at UC Berkeley to examine the security and networking
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`issues, including load-balancing issues, for communications protocols and software to support
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`Internet freedom and allow users to bypass national firewalls in countries such as China, Iran,
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`and Syria.
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`I am also associated with the Intel Science and Technology Center SCRUB, which
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`focuses on issues related to networking and security.
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`I helped design the security standards for
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`the US Postal Service’s Information Based Indicia Program (cryptographic postal indicia).
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`6.
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`Appendix A of my initial declaration in support of SightSound Technologies
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`LLC’s (“SightSound”) Opening Claim Construction Brief contains a list of court cases for which
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`I have provided testimony at trial or at deposition since January 1, 2007. Appendix B of that
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`declaration also contains my curriculum vitae (including a full publication list for the last ten
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`years).
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`7.
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`Counsel for SightSound requested that I provide expert analysis pertinent to claim
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`construction issues in the case SightSound Technologies, LLC v. Apple, Inc, Civ. Action No.
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`2:11—cv-01292-DWA, in the United States District Court for the Western District of
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`Pennsylvania.
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`I am charging $500/hour for work performed (limited to a maximum charge of
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`$5000/day). My compensation is in no way dependent on the outcome of the case.
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`8.
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`In preparing to submit this Declaration, I have read the following materials: U.S.
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`Patent No. 5,191,573 (the “‘573 Patent”), U.S. Patent No. 5,675,734 (the “‘734 Patent”), and
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`U.S. Patent No. 5,966,440 (the “‘440 Patent”) (collectively, the “Hair Patents”); the parties’ Joint
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`Disputed Claim Terms Chart (Aug. 8, 2012); the Declaration of Dr. John PJ. Kelly (which I
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`refer to as the “Kelly Declaration” or “Kelly Decl.”), dated September 7, 2012; each parties’
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`opening brief; and other materials cited herein.
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`RESPONSE TO DECLARATION OF DR. KELLY
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`Telecommunications Lines
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`9.
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`Dr. Kelly references the prosecution history of the Hair patents and opines that
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`“one of ordinary skill in the art would interpret that the applicant disclaimed from coverage
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`anything less than the usage of telecommunications lines for every component in the connection
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`from the first party to the second party.” Kelly Decl. 1] 20.
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`I disagree with this conclusion, and
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`disagree that the cited text supports this conclusion.
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`10.
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`Lightner required the second party to be at the location of the vending machine to
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`transfer money to the first party. In contrast, the claims of the Hair patents require, in various
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`terms, that the first party be at a first party location while the second party is at a second party
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`location remote from the first party location. See ‘573 PH, 06/25/92 Amend. at 20. The
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`emphasis was on the relative locations of the parties at the time money was transferred, not on
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`the nature of the method of communication between them. This is consistent with Mr. Hair’s
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`argument that “Lightner .
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`.
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`. does not teach or suggest the use of telephone or telecommunication
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`lines with respect to the transfer of money.”
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`11.
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`Accordingly, I stand by my Opinion put forth in paragraphs 17 to 25 of my
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`declaration of September 7, 2012. In 1988, one of reasonable skill in the art would have
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`understood “telecommunications lines” to include telephone lines, fiber-optic cable, wireless
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`networking, and several other mediums of electronic communication (such as cellular telephones
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`and microwave transmissions). The terms would have covered transmissions using metal wires,
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`non-metallic fiber—optic cables, and wireless transmissions using electromagnetic particles.
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`Line
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`12.
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`Dr. Kelly again references the prosecution history of the Hair patents and opines
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`that “one of ordinary skill in the art would understand the claim term ‘line,’ as used in the
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`asserted patents, to mean a ‘wire.”’ Kelly Decl.1]1l 15, 27.
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`I disagree with this conclusion, and
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`disagree that the cited text supports this conclusion.
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`13.
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`Dr. Kelly Observes that the Examiner found a claim including the term
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`“telecommunication link” indefinite and rejected in on this basis. In response, Mr. Hair amended
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`the claim to use “telecommunication line” instead. Kelly Decl. ll 24 (citing ‘573 PH 02/24/92
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`Office Action at 6; ‘573 PH 06/25/92 Amend. at 6). The rejection was made “for failing to
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`particularly point out and distinctly claim the subject matter which applicant regards as the
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`invention.” ‘573 PH 02/24/09 Office Action at 6. The Examiner cited a portion ofthe statute in
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`making his rejection, explaining that the “written description” must provide sufficiently “exact
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`terms as to enable any person skilled in the art to which it pertains, or with which it is most
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`nearly connected, to make and use the same.” Id. (citing 35 U.S.C. § 112) (emphasis added).
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`The Examiner went on to state that “the ‘telecommunications link’ is not well connected in the
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`system.” Id. Thus, the Examiner did not, as Dr. Kelly states, reject the use of “an intangible
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`‘1ink’” (Kelly Dec. 1} 15), but only found that one of ordinary skill in the art, on reading the
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`patent, would not understand what was meant by “telecommunication link.”
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`14.
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`My opinion is that one of ordinary skill in the art would understand that, by
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`changing “link” to “line” in response to an indefiniteness rejection, no narrowing of scope was
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`intended.
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`15.
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`Dr. Kelly opines “that the applicant, in the same amendment, was also
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`distinguishing Lightner as prior art.” Kelly Decl. 1H6. However, the applicant noted that
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`“Lightner, US. Patent 3,718,906 is currently not a basis of rejection of the claim” and sought to
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`clarify the differences between “new Claim 23” and Lightner.
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`‘573 PH 6/25/92 Amend. at 19.
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`No reference was made in the applicant’s argument regarding a distinction between “line” and
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`“link.” Thus, one of ordinary skill in the art would understand that the applicant’s discussion of
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`Lightner was unrelated to the changing of “link” to “line” in response to the indefiniteness
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`rejection.
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`16.
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`Dr. Kelly opines that the following quote from the prosecution history shows that
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`the applicant intended “line” to require a physical connection, while a “cellular call” does not:
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`[In the claimed invention], a customer can enjoy the ability to purchase audio or
`video digital signals wherever the customer wishes as totally dictated by the
`customer (assuming there is a telecommunications line at hand—in the U.S., there
`is a phone or cable line just about everywhere or a cellular call can be made
`literally everywhere) .
`.
`.
`.
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`Kelly Decl. 1126; see ‘440 PH 4/14/97 Amend. at 14.
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`I disagree with Dr. Kelly. In my opinion,
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`this quote would show one of ordinary skill in the art that phone lines, cable lines, and cellular
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`calls are all examples of telecommunications lines.
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`17.
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`Dr. Kelly relies on a number of dictionary definitions to support his opinion that
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`“the claim term ‘line,’ as used in the asserted patents, [means] a ‘wire.”’ Kelly Decl. W27-28.
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`However, the dictionaries he uses also contain a number of broader definitions.
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`18.
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`For example, Webster ’5 II New Riverside University Dictionary (1988) at p. 695
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`defines “line” as “a functioning or open telephone connection” or “a source of information.”
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`Webster ‘s Ninth New Collegiate Dictionary (1988) also defines “line” as “a telephone
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`connection.” These definitions comport with the use of the term in the Hair patents that “line” is
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`not restricted to mean the narrow term “wire.”
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`Electronic
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`19.
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`In addition to the cited definitions in Dr. Kelly’s report, Chambers Science and
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`Technology Dictionary (1988) at p.294 notes that “Telecommunications, radar, and computers all
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`use electronic components and techniques.” In many of the asserted claims, “electronic” is used
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`to refer to the nature of the devices involved, not to the methods by which information is
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`transferred.
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`Dlgital A udio 5131131
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`20.
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`Regarding the proper understanding of “digital audio signal[s],” Dr. Kelly opines
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`that “modules, available in 1987, explicitly bundled the samples in the same file as the
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`instructions.” Kelly Decl.1l39. As I stated in my September 7, 2012 declaration, one of ordinary
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`skill in the art in 1988 would recognize that any digital data can be playable as an audible sound
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`wave. What distinguishes “digital audio signals” from other digital data is that it is a genuine,
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`standalone substitute for studio— or performance-quality sound. Tygar Decl. W 12—13. That is,
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`“digital audio signals” are digitized sounds, not merely computer instructions to generate sound.
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`Small portions of Dr. Kelly’s modules are digitized sounds, but the modules themselves are
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`computer instructions to generate sound through various manipulations of those digitized sounds.
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`21.
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`I disagree with Dr. Kelly that “it would be ambiguous whether these modules
`3”
`constituted ‘digital audio signals. Kelly Decl. 1B 9. In my opinion, one of ordinary skill in the
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`art would understand that modules are not “digital audio signals.”
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`22.
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`Dr. Kelly also opines that since MIDI files can be stored on compact discs, and
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`digital audio can also be stored on compact discs, MIDI files must be “digital audio signals.”
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`Kelly Decl.1l40. If this were the criteria to be used, all computer files, including images, Word
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`documents, and Windows applications, would be “digital audio signals,” since they can be stored
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`on CDs. In my opinion, one of ordinary skill in the art would not assume that any file that can be
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`stored on a CD would fall within the definition of “digital audio signals.”
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`Hard Disk; Hard Drive
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`23.
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`Dr. Kelly cites a number of dictionary definitions in support of his proposed
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`constructions of these terms. One of the sources he cites, the IBM Dictionary of Computing
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`(1994) at p.308 includes the following note: “The term hard disk is also used loosely in the
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`industry for boards and cartridges containing microchips or bubble memory that simulate the
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`operations of a hard disk drive.” This supports the better understanding of the term, as I
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`explained in my prior declaration, that the terms “hard disk” and “hard drive” refer to non—
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`volatile storage devices that can be arbitrarily overwritten. In sum, a person of skill in the art in
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`1988 would recognize the term hard drive to cover non—volatile storage devices utilizing rotating
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`magnetic disks as well as solid—state drives.
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`Second Party Hard Disk (‘440 Patent, Claim 16)
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`24.
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`Dr. Kelly opines that one of ordinary skill in the art would be unable to determine
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`how the second party hard disk in claim 16 relates to the remainder of the claimed system. Kelly
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`Decl. 1159. However, Dr. Kelly goes on to identify the best possible antecedent basis for the term
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`as a “non-volatile storage portion that stores the desired digital video or digital audio signals.”
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`1d. 1160. He also opines that “hard disk” is a narrower term than “non-volatile storage portion.”
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`Id.
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`In my opinion, if “hard disk” is a narrower term than “non-volatile storage portion,” and if
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`“non-volatile storage portion” provides the antecedent basis for “the second party hard disk,”
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`then one of ordinary skill in the art would understand “the second party hard disk” to be the
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`“non—volatile storage portion,” and to provide the additional limitation that the storage portion be
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`a hard disk.
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`Means-Plus—Function Limitations
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`25.
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`I will next respond to certain points raised by Apple and Dr. Kelly with respect to
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`the means-plus—function limitations at issue.
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`26.
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`As an initial matter, I understand that Apple and Dr. Kelly have presumptively
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`treated all the means—plus function limitations at issue as reciting functions requiring specially—
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`programmed computers of which an algorithmic disclosure in the patent is necessary. Kelly
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`Decl. 111165—66.
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`I have been informed, however, that this is only one side in the analysis of
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`computer—implement means—plus function limitations.
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`1 am informed that for certain computer-
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`implemented functions, such as storing, receiving, and processing (without any narrower
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`constructions), any general purpose computer without special programming can be used.
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`In such
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`a situation, I understand that the patent need only disclose a general purpose processor that
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`performs the function.
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`27.
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`A person of ordinary skill in the art would understand that certain recited
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`functions in properly analyzed means-plus function limitations, such as storing, can be
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`performed by a general purpose processor of a computer, 6. g. , an integrated circuit.
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`28. With respect to the means or mechanism for connecting electronically and the
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`connecting means or mechanism, I understand that Apple and Dr. Kelly contend that the claimed
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`structures for claims 11 and 16 of the ‘734 patent, and claims 24, 31, and 83 of the ‘440 patent,
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`are non-structural “functional features” and are thus insufficient to rebut the presumption that
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`this limitation should be analyzed as a means-plus function claim. Kelly Decl. 1l77.
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`I disagree
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`with this assessment. For instance, the language of Claim 11 and 16, which Dr. Kelly includes in
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`his declaration (id. 1W4), states:
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`means or a mechanism for connecting electronically Via the telecommunications
`lines the first memory with the second memory such that the desired digital Video
`or digital audio signals can pass therebetween, said connecting means or
`mechanism in electrical communication with the transferring means or
`mechanism, said connecting means or mechanism comprises a first control unit in
`possession and control of the first party, and a second control unit in possession
`and control of the second party, said first control unit comprises a first control
`panel, first control integrated circuit and a sales random access memory, said sales
`random access memory and said first control panel in electrical communication
`with said first control integrated circuit, said second control unit comprising a
`second control panel, a second control integrated circuit, an incoming random
`access memory and a playback random access memory, said second control panel,
`said incoming random access memory and said playback random access memory
`in electrical communication with said second control integrated circuit; (‘734
`patent, cl. 11 (emphasis added»
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`means or a mechanism for connecting electronically via telecommunications lines
`the first memory with the second memory such that the desired digital video or
`digital audio signals can pass therebetween, said connecting means or mechanism
`in electrical communication with the transferring means or mechanism, we}
`connecting means or mechanism comprises a first control unit disposed at the first
`party location and a second control unit disposed at the second party location
`remote from said first control unit, said first control unit comprises a first control
`panel, first control integrated circuit, and a sales random access memory
`connected to the first hard disk for temporarily storing a replica of the desired
`digital video or digital audio signals to be transmitted from the first control unit,
`said sales random access memory, said first hard disk and said first control panel
`in electrical communication with said first control integrated circuit, said second
`control unit comprising a second control panel, a second control integrated circuit,
`and an incoming random access memory which temporarily stores the desired
`digital video or digital audio signals transmitted from the sales random access
`memory, said playback random access memory connected to the incoming
`random access memory for temporarily storing a replica of the desired digital
`video signals or digital audio signals to be played, said incoming random access
`memory connected to said second party hard disk, said second control panel, said
`incoming random access memory, said second party hard disk and said playback
`random access memory in electrical communication with said second control
`integrated circuit; (‘734 patent, cl. 16 (emphasis added))
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`29.
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`A person of ordinary skill in the art would not consider the recited components
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`that comprise the means for connecting to be non—structural functional features. Claims 11 and
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`16 of the ‘734 patent, for example, claim that the first control unit “comprises a first control
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`panel, first control integrated circuit, and a sales random access memory,” where the “sales
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`random access memory and said first control panel [is] in electrical communication with said
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`first control integrated circuit.” And, likewise, the “second control unit [is claimed to comprise]
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`a second control panel, a second control integrated circuit, an incoming random access memory
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`and a playback random access memory.”
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`30.
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`Claim 16 of the ‘734 patent adds the further limitation that the “sales random
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`access memory [is] connected to [the] first hard disk” and that the “incoming random access
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`memory [is] connected to [the] second hard disk.”
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`31.
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`In fact, control units, as disclosed in the patent specifications, include very
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`specific, physical structures, such as a control panel, control integrated circuits, and RAM for
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`sales, storage and playback. See, e.g.,"440 patent at col. 37-67; Figs. 1-2; ‘734 patent at col.
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`4:35-65; Figs. 1—2.
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`32.
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`A person of ordinary skill in the art would unquestionably understand these to be
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`structural components. This is also especially true in light of the physical, electrical connections
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`among the claimed components within the control units. See, e. g., ‘734 patent, cl. 11, 16.
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`33.
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`To support his conclusion that the claimed control units are non-structural
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`“functional features,” Dr. Kelly cites one line from each specification (‘734 patent, col. 4:3 8—39;
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`‘440 patent, col. 4:39—41), which states: “The design of the control units would incorporate the
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`following functional features.” Kelly Decl. 1W7. However, the remainder of the passage is
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`directed to identifying structural components (as also illustrated in Figures 1 and 2) of which a
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`person of ordinary skill in the art has long understood to be physical structures in a computing
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`system, 6. g. , integrated circuits and memory chips. See ‘440 patent, col. 37-67; ‘734 patent, col.
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`4:35—65.
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`34.
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`I also understand Dr. Kelly to opine that the claims do not explain the relationship
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`between the first control unit and the second control unit. Kelly Decl. 1178. But, claims 11 and
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`16 of the ‘734 patent describe the relationship between the two through a connection Via
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`telecommunications lines to the memory within each unit:
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`Means or a mechanism for connecting electronically via the telecommunications
`lines the first memory with the second memory .
`.
`. said connecting means or
`mechanism comprises a first control unit [] and a second control unit .
`.
`. [where]
`said first control unit comprises a first control panel, first control integrated circuit
`and a sales random access memory .
`.
`. [and] said second control unit comprising
`a second control panel, a second control integrated circuit, and incoming random
`access memory and a playback random access memory .
`.
`. (‘734 patent, cl. 11)
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`Means or a mechanism for connecting electronically via telecommunications lines
`the first memory with the second memory .
`.
`. said connecting means or
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`. said first
`.
`mechanism comprises a first control unit [] and a second control unit .
`control unit comprises a first unit comprises a first control panel, first control
`integrated circuit, and a sales random access memory connected to the first hard
`disk .
`.
`. said second control unit comprising a second control panel, a second
`control integrated circuit, and an incoming random access memory .
`.
`. (‘734
`patent, cl. 16)
`
`35.
`
`The specifications also corroborate this relationship in, for example, Figs. 1 and 2,
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`as well as column 4, lines 12—16 and column 6, lines 38—45 of the ‘734 patent, which illustrate
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`and explain to one of skill the art that the control units maintain their relationship to one another
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`via telecommunications lines. See also ‘440 patent, Figs. 1-2, col. 4: 14-18, 6:41—48.
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`36.
`
`With respect to claims 23, 29, 82, and 88 of the ‘440 patent, which I believe—~as
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`do Apple and Dr. Kelly—should be interpreted as a means-plus function limitation, I understand
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`Apple and Dr. Kelly to challenge the level of disclosure to perform the recited function of
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`connecting electronically. Kelly Decl. ‘|l77.
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`I disagree that the patent does not disclose a specific
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`methodology to perform this function.
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`37.
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`The Specification states that the function of connecting electronically is done “via
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`telecommunications lines,” which links the “first memory with a receiver of the second party
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`while the receiver is in possession and control of the second party.” ‘440 patent, col. 8:3—6. This
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`receiver is included as part of the second party control integrated circuit. Id. col. 6:64-66.
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`Indeed, to properly form a connection, the patent describes that the first party control unit
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`includes a control integrated circuit electrically connected to memory, and then to the user’s
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`receiver (included as part of the second party control integrated circuit) through
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`telecommunications lines. Id. at 7:20—26.
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`38.
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`Also, in light of this and in looking at Figure 1, which is described to serve as a
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`flow chart (id. col. 3:45—53), a person of ordinary skill in the art would understand that a
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`connection should in fact be made from memory 20C through the control integrated circuit 20B
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`to control integrated circuit 50B, which includes a receiver. See ‘440 patent, Fig. 1. I have also
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`been informed that a flow chart, such as this, can sufficiently disclose to one of skill in the art a
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`specific methodology for performing the claimed function to satisfy the definiteness requirement
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`of a means-plus function limitation.
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`39.
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`On top of that, the control integrated circuits are described in the patent to control
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`and execute the commands of the agent and user, and regulate the electronic transfer of digital
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`signals throughout the system. “440 patent, col. 4:45-48. As explained in my opening
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`declaration, a person of ordinary skill in the art would understand that regulating the electronic
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`transfer of digital signals from a user to an agent necessarily involves the formation of an
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`electronic connection to facilitate that transfer.
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`40.
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`Accordingly, the patent sufficiently describes a methodology for implementing
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`the function of “connecting electronically” on a properly configured control integrated circuit.
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`41. With respect to the “means or mechanism for transmitting” and “transmitting
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`means or mechanism,” Dr. Kelly says these limitations fail to recite sufficient structure to rebut
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`the presumption the limitation should be analyzed as a means-plus—function limitation. Kelly
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`Decl. W84—87.
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`I understand Dr. Kelly’s contention in this regard to be based on his belief that a
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`person of ordinary skill in the art would not understand how the recited transmitter and receiver
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`operate and interact.
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`42.
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`I have been informed that the test is whether a person of ordinary skill in the art
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`would understand the claim to recite sufficient structure to rebut the presumption that it should
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`be treated as a means—plus function claim. That is the case here as the claims recite the
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`transmitter and receiver as structures linked to the claimed function.
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`43.
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`One of ordinary skill in the art in 1988 would have been aware of the available
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`Case 2:11-cv-01292-DWA Document 104-3 Filed 09/28/12 Page 14 of 16
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`means for connecting computer systems to telecommunications lines for the purpose of
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`transmitting or transferring digital signals. For instance, telephone—based modems could
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`accomplish this. Such means could be used at the originating computer (for transmitting) and at
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`the destination computer (for receiving), 2'. e. , the first party control unit and second party control
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`unit, respectively.
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`44.
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`Figure 1 and the related text in both the ‘440 and ‘734 patents, for instance, shows
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`that the first party control unit 20 (and its components 20A—C, 10)) and the second party control
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`unit 50 (and its components (SOA—D, 60)) are connected via telecommunications lines.
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`‘440
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`patent, col. 4:37-67; ‘734 patent, 001.4135-65. A person of ordinary skill in the art would
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`recognize that this involved means, such as a telephone-based modem, for connecting the two
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`systems, and would have no difficulty in recognizing the nature of a transmitter and receiver
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`required to connect and transmit digital signals in the claimed system. Accordingly, the claims
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`themselves, which recite such a transmitter and receiver, claim sufficient structure to rebut the
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`presumption that the limitation should be analyzed as means-plus—function claim.
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`45.
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`Indeed, within the claimed system, it is clear that both the receiver and transmitter
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`are connected to their respective control integrated circuit, and in turn each other through
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`telecommunications lines. For example, both patents explain that the second party control
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`integrated circuit 50B includes the receiver. See ‘734 patent, col. 6:61-63; ‘440 patent, col. 6:64-
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`66. They also explain that the digital signals are transmitted to that receiver from the first
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`memory with a transmitter. See ‘734 patent, col. 5:51-56; “440 patent, col. 5:53-57. And, this
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`first memory is connected to the first party control integrated circuit, which is connected to the
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`second party control integrated circuit via telecommunications lines. ‘734 patent, col. 7:17-23;
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`‘440 patent, col. 7:20~26. As these control integrated circuits regulate the transmission of digital
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`signals, a person of ordinary skill in the art would understand that the transmitters and receivers
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`are connected to them.
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`‘734 patent, col. 4:43-46; ‘440 patent, col. 4:45-48.
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`46.
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`I understand that Apple makes reference to “sales-related means” as including the
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`means or mechanism for electronic selling, charging a fee, receiving and charging a credit card,
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`and charging an account.
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`I also understand that this phrase should include the transferring of
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`money electronically as part of accomplishing the sale of desired digital signals.
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`47. With respect to these limitations, I understand Dr. Kelly fails to find a
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`methodology for carrying out the electronic sales of desired digital signals on an appropriately
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`configured integrated circuit in the claimed system. Kelly Decl. W674i, 99-127.
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`I disagree.
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`48.
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`Figure l of the ‘440 and ‘734 patents constitute a “pictoral flow chart which may
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`be used in carrying out the teachings of the invention for purposes of electronic sales” of digital
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`signals.
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`‘734 patent, col. 3:44-48; ‘440 patent, col. 3:45-49.
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`I have been informed that a flow
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`chart can be sufficient to describe an implementation or the steps to program a corresponding
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`structure clearly linked to a claimed function.
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`49.
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`A person of ordinary skill in the art would indeed find this flow chart to further
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`corroborate the specification passages related to how these sales—related means or mechanisms
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`are programmed on a control integrated circuit, as specifically highlighted in SightSound’s
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`opening brief (pp. 38-44) and responsive brief (pp. 28-29) for these sales-related limitations. See
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`also ‘734 patent, col. 8:15—31, 7:31-52, 4:43—50; ‘440 patent, col. 8:19-35, 7:34~55, 4:45-53.
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`50. With respect to the means or mechanism for playing digital signals, I understand
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`Dr. Kelly and Apple to conclude that there is no methodology for implementing the function or a
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`clear link to a structure to carry out the function. Kelly Decl. W128—134.
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`I disagree.
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`51.
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`In the specification passage Dr. Kelly cites, the user’s control integrated circuit,
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`which is described to execute and control the commands of the user, receives playback
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`commands from the control panel, retrieves the selected song from the hard disk, stores a replica
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`into memory at a high transfer rate, then sends the electronic output to speakers at a controlled
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`rate using that memory as a temporary staging area for playback.
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`‘734 patent, col. 52-16, 4:43—
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`46; ‘440 patent, 5:4-18, 4:45—48. In conjunction, Figures 1 and 2 of both the ‘734 and ‘440
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`patents, which is described as a “pictoral flow chart which may be used in carrying out the
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`teachings of this invention for purposes of’ playback of digital signals, indicates the interaction
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`and relationship between the various components for playback as described.
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`‘734 patent, col.
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`3:49-52; ‘440 patent, col. 3:50-53.
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`I have been informed that this type of disclosure has been
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`found sufficient to constitute disclosure of a specific methodology to perform a claimed function.
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`52.
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`A person of ordinary skill in the art would understand that these disclosures
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`describe a clear link to a control integrated circuit to perform the playback of desired digital
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`signals consistent with the described methodology or algorithm.
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`I declare under penalty of perjury of the laws of the Commonwealth of Pennsylvania and
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`the United States that the foregoing is true and correct. Executed on this 28th day of September,
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`2012 in Oakland, CA.
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`my
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`Justin Douglas Tygar, PhD.
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