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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`SIGHTSOUND TECHNOLOGIES, LLC,
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`Plaintiff, Counter-Defendant
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`v.
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`APPLE INC.
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`Civil Action No. 2:11-cv-01292-DWA
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`Senior District Judge Donetta W. Ambrose
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`Defendant, Counter-Plaintiff.
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`PLAINTIFF SIGHTSOUND TECHNOLOGIES, LLC’S, EXPERT REPORT
`OF DR. J. DOUGLAS TYGAR REGARDING INFRINGEMENT
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`Confidential-----Outside Attorney Eyes Only
`Source Code
`Information Subject to Protective Order
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`April 22, 2012
`Date
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`Dr. Douglas J. Tygar
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`Apple Exhibit 1024 Page 00001
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`I.
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`Introduction
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`1.
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`This report gives the opinions, and their underlying bases and reasons, about
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`which I may testify at trial on behalf of SightSound Technologies, LLC (“SightSound”). This
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`report further includes information regarding my comparison of certain claims in the asserted
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`patents to certain methods that were constructed, operated, practiced or used by Defendant Apple
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`Inc. (“Apple”). I reserve the right to respond to assertions made by Defendant’s expert witnesses
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`or fact witnesses and to testify in rebuttal to evidence that Apple may present during trial.
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`2.
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`I have been retained by the plaintiff SightSound Technologies, LLC
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`(“SightSound”), to serve as an expert in this case. I expect to testify at trial regarding the matters
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`set forth in this report if asked about these matters by the Court or the parties’ attorneys.
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`3.
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`4.
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`I live in Berkeley, California.
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`I am a tenured, full Professor at the University of California, Berkeley (“UC
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`Berkeley”), with a joint appointment in the Department of Electrical Engineering and Computer
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`Science (Computer Science Division) and the School of Information. Prior to joining UC
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`Berkeley in 1998, I was a tenured faculty member in the Computer Science Department at
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`Carnegie Mellon University, where I was initially appointed as an assistant professor in 1986.
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`5.
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`I am an expert in software engineering, computer security, electronic commerce,
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`and cryptography. Since 1986, I have regularly taught courses in software engineering,
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`electronic commerce, and computer security, at the undergraduate, Master’s, and Ph.D. level at
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`both UC Berkeley and Carnegie Mellon University.
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`6.
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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 U.S. National Science
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`Foundation and the U.S. 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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`7.
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`I helped design the security standards for the U.S. Postal Service’s Information
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`Based Indicia Program (cryptographic postal indicia) which gives postage payment information
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`for physical mail. I also helped design the NetBill system at CMU which was an early electronic
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`payment system that was licensed by CyberCash, and was influential in setting standards for on
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`electronic payment.
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`8.
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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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`9.
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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. I am the UC Berkeley lead of the U.S. 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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`U.S. 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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`10.
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`I am also affiliated 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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`11. My complete and current curriculum vitae is attached to this report as Exhibit A.
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`The cases for which I have testified as an expert witness at trial or by deposition in the past four
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`years are listed and described in Exhibit B.
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`I am being compensated at my normal hourly rate of $500 per hour plus expenses
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`12.
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`for my work on this matter.
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`II.
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`Summary Of Opinions
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`13.
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`I understand that the patents in this case are U.S. Patent No. 5,191,573 and
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`5,191,573 C1 (collectively, “the ’573 patent”) and U.S. Patent No. 5,966,440 and 5,966,440 C1
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`(collectively, “the ’440 patent”). I refer to the ’573 and ’440 patents collectively in my report as
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`the asserted patents.
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`14.
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`I have been informed that SightSound contends that the asserted patents are
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`infringed by Apple’s iTunes Store and the methods Apple employs and are used by Apple and
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`Apple’s customers in the sale of songs, movies, television shows, music videos and albums to
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`iTunes customers.
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`15.
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`As discussed more fully below, it is my opinion that Apple directly infringes and
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`induces infringement of the following claims of the asserted patents
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` Claims 1, 2, 4 and 5 of the ’573 patent, and
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` Claims 1, 11, 64 and 95 of the ’440 patent.
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`16.
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`If called as an expert witness, I expect to provide testimony concerning the
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`infringement of these asserted claims.
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`17. My opinions are based on my general knowledge and experience, particularly my
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`expertise in the fields of Internet architecture, media delivery systems, eCommerce systems,
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`credit card processing technology, engineering development practices, software development and
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`software engineering. My opinions are further based on documents and information that I have
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`considered during the preparation of this report, such as the asserted patents and related
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`prosecution and reexamination histories, the iTunes Apple TV, desktop and mobile clients, the
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`iTunes Store (which is publicly available via the iTunes clients), transactions processed through
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`the iTunes Store (Exs. __–__), the claim construction orders in this litigation and in
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`SightSound.com, Inc. v. N2K, Inc., Case No. Civ. A. 98-CV-118 (“N2K”), reprinted at 185 F.
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`Supp. 2d 445 (W.D. Pa. 2002), Apple’s 30(b)(6) deposition transcripts; the transcript of Payam
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`Mirrashidi’s deposition; documents produced by Apple and portions of Apple’s source code for
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`the iTunes Store and the iTunes clients. A list of all the materials that I considered in forming
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`my opinions is included in Exhibit C.
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`18.
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`I also worked with Dr. Sarah Harris to assist me in the review of Apple’s source
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`code. Dr. Harris performed an initial review of Apple’s source code, and I consulted with her on
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`her findings, and then personally reviewed relevant portions of the code when necessary. Based
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`on my own review after my conversations with Dr. Harris and the printouts, it is my opinion that
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`the Apple source code confirms the opinions provided in this report.
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`III. The Asserted Patents
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`19.
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`I expect to testify at trial regarding the background of the technology to which the
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`’573 and ’440 patents relate and the problems they solved. This testimony will be based on my
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`review of the asserted patents and their prosecution histories and my own specialized knowledge
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`of this field of technology, which I acquired through my education and professional experience.
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`20.
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`On March 2, 1993, the United States Patent and Trademark Office (“PTO”) issued
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`United States Patent No. 5,191,573 to Mr. Hair. The ’573 patent claims priority to an
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`application, Serial No. 206,497, that was filed on June 13, 1988. The ’573 patent underwent
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`reexamination, and the PTO confirmed the validity of all six claims of the ’573 patent by issuing
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`a reexamination certificate, U.S. Patent No 5,191,573 C1, on November 30, 2010. No claims
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`from the ’573 patent were amended or cancelled during reexamination.
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`The PTO further issued Mr. Hair the ’440 patent on October 12, 1999. The ’440
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`21.
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`patent is a continuation of the application that gave rise to the ’573 patent and also claims
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`priority to the same application, No. 07/206,497, that was filed on June 13, 1998. The ’440
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`patent also underwent reexamination. The PTO confirmed the validity of asserted claims 1 and
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`11, as amended, and the ’440 patent was amended to include new claims 64 and 95. The PTO
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`issued a reexamination certificate, U.S. Patent No. 5,966,440 C1, on June 27, 2010.
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`22.
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`The ’573 and ’440 patents generally relate to the field of electronic sale and
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`distribution of digital audio or digital video. More specifically, the patented technology pertains
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`to selling or purchasing digital audio or video via telecommunications lines.
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`A.
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`23.
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`The ’573 patent
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`The ’573 patent has priority to an application from 1988. The ’573 patent
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`discloses a complete method to sell songs and videos over telecommunications lines, such as the
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`Internet, allow the user to pay per song, album or video, download the corresponding file to his
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`or her own computer or device and play the media file.
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`B.
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`24.
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`The ’440 patent
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`The ’440 patent is based on the same application as the ’573 patent and shares the
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`same specification as the ’573 patent. The claims of the ’440 patent—while different from the
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`claims of the ’573 patent—are directed to the same general subject matter as the ’573 patent: the
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`sale and distribution of digital audio and video files.
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`IV.
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`Brief overview of the iTunes Store
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`25.
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`For clarity, this report only describes and opines on purchases from iTunes in the
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`United States. I use the term “iTunes Store” to mean the software authored by Apple that
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`executes on Apple’s servers. I use the term “iTunes Desktop Client” to refer to the software
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`Detailed analysis of asserted claims
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`F.
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`1.
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`’573 patent, claim 1
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`68.
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`Claim 1 of the ’573 patent claims
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`A method for transmitting a desired digital audio signal stored on a
`first memory of a first party to a second memory of a second party
`comprising the steps of:
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`[a] transferring money electronically via a telecommunication line
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`[a][1] to the first party at a location remote from the
`second party and controlling use of the first memory
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`[a][2] from the second party financially distinct from the
`first party,
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`[a][3] said second party controlling use and in possession
`of the second memory;
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`[b] connecting electronically via a telecommunications line the
`first memory with the second memory such that the desired digital
`audio signal can pass therebetween;
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`[c] transmitting the desired digital audio signal from the first
`memory
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`[c][1] with a transmitter in control and possession of the
`first party
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`[c][2] to a receiver having the second memory at a location
`determined by the second party,
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`[c][3] said receiver in possession and control of the second
`party; and
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`[d] storing the digital signal in the second memory.
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`69. My Understanding of the Claim
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`70.
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`Claim 1 of the ’573 patent is a method claim pertaining to the electronic sale and
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`transmission of digital audio signals—which are digital representations of sound waves.
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`71.
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`The steps of the method pertain specifically to the following:
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`said first party and said second party in
`[e]
`communication via said telecommunications lines,
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`e.
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`336. Condition [e] requires that the iTunes user and Apple be in communication via the
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`telecommunications line. As indicated before, the Court has construed “telecommunications
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`lines” to mean “an electronic medium for communicating between computers,” and it is my
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`opinion that this definition includes the Internet.
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`condition is satisfied when the iTunes Store requests payment.
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`Therefore, it is my opinion that this
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`f.
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`the step of charging a fee includes the step of
`[f]
`charging a fee via telecommunications lines by the first
`party to the second party at a location remote from the
`second party location,
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`337. Step [f] of claim 95 of the ’440 patent involves the charging of a fee via
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`telecommunications lines. The Court has construed “telecommunications lines” to include the
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`Internet. The Court has also construed charging a fee to mean “requesting payment
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`electronically.”
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`338. As discussed above in paragraphs 334–335, the steps of charging a fee are
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`performed by the iTunes Store and the iTunes Client over the Internet. As discussed above in
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