Case 2:11-cv-01292-DWA Document 109 Filed 09/28/12 Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`SIGHTSOUND TECHNOLOGIES, LLC,
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`APPLE INC.,
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`Plaintiff,
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`v.
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`Defendant.
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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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`SECOND DECLARATION OF DR. JOHN P.J. KELLY
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`Apple Exhibit 1043 Page 00001
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`Case 2:11-cv-01292-DWA Document 109 Filed 09/28/12 Page 2 of 18
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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 am the same John Kelly who previously submitted the September 7, 2012
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`Declaration of Dr. John P.J. Kelly (“Kelly Decl.”) in the above captioned matter. 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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`In addition to the materials identified in my September 7 Declaration, in preparing
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`my opinions, I have reviewed Plaintiff SightSound Technologies, LLC’s Opening Claim
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`Construction Brief (“SightSound Brief”), the September 7, 2012 Declaration of J.D. Tygar,
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`Ph.D. (“Tygar Decl.”), the exhibits to the September 6, 2012 Declaration of Sean M. Callagy
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`(“SightSound Exhibits”), and other materials referenced herein.
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`II. ADDITIONAL OPINIONS REGARDING THE MEANING OF PARTICULAR
`CLAIM TERMS
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`A.
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`“TELECOMMUNICATIONS LINES”; “TELEPHONE LINES”; “LINES”
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`3.
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`As I explained in my September 7 Declaration, it is my opinion that one of
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`ordinary skill in the art would understand the claim phrase “telecommunication[s] line[s],” as
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`used in the asserted patents, to mean “an electronic line for communicating between computers,
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`which requires end-to-end connectivity.” [See Kelly Decl. at ¶¶ 17-22]
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`4.
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`It is also my opinion that one of ordinary skill in the art would understand the
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`claim term “line,” as used in the asserted patents, to mean “wire.” [See Kelly Decl. at ¶¶ 23-28]
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`5.
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`It is further my opinion that one of ordinary skill in the art would understand the
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`claim phrase “telephone line,” as used in the asserted patents, to mean “electronic lines for
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`telephone calls.” [See, e.g., definition of “telephone line” in IEEE Standard Dictionary of
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`Electrical and Electronics Terms (4th ed. 1988) at p. 992; definition of “telephone” in Webster’s
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`Ninth New Collegiate Dictionary (1988) at p. 1212; definition of “line” in Microsoft Press
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`Computer Dictionary (1991) at p. 210] A telephone call need not be person-to-person but could
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`be between computer modems.
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`6.
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`While it is my opinion that the claim phrases “telecommunication[s] line[s]” and
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`“telephone line” exclude fiber optics and wireless communications, it is not my opinion that they
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`exclude all access through the Internet. One may, for example, access the Internet using modems
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`through “electronic lines” without the use of fiber optics or wireless communications.
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`7.
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`Also, while it is my opinion that the claim term “line,” meaning “wire,” excludes
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`wireless communications, it does not, by itself, exclude fiber optics or non-metal lines. For
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`example, it is possible to refer to “optical wiring.” [See U.S. Patent No. 6,516,104]
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`8.
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`I have reviewed the portions of the patents’ specifications, prosecution history,
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`and re-examination history on which SightSound relies. [See SightSound Brief at pp. 11-16]
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`Nothing in those portions alters my opinions or suggests to me that a person of ordinary skill in
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`the art in 1988 would understand the claim phrases differently.
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`9.
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`In addition to the reasons set forth in my September 7 Declaration, my opinions
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`are supported by the fact that, in the prosecution history, the named inventor described
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`“telephone lines” as “electrical lines.” [See ‘734 patent file history, 1/3/94 Hair Decl. at p. 5]
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`One of ordinary skill in the art would understand “electrical lines” to mean “wires.”
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`10. My opinions are also supported by the fact that, in the re-examination history, Dr.
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`Tygar stated that a “telephone call” could be made using “‘telephone lines, optical fibers, or
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`cable.” [See ‘573 patent re-examination history, 5/17/07 Tygar Decl. at ¶ 14] One of ordinary
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`skill in the art, then, would understand that “optical fibers” and “cable” were different from
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`“telephone lines.” Moreover, Dr. Tygar did not include wireless communications as an option
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`for a “telephone call.”
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`11.
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`I do not agree with Dr. Tygar’s opinion that “[i]n 1988, one of reasonable skill in
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`the art would have understood ‘telecommunications lines’ to include telephone lines, fiber-optic
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`cable, wireless networking, and several other mediums of electronic communication (such as
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`cellular telephones and microwave transmissions).” [See Tygar Decl. at ¶ 19] I note that Dr.
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`Tygar does not cite to any evidence in the patents, prosecution histories, or reexamination
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`prosecution histories to support his opinion. [See Tygar Decl. at ¶¶ 17-25] Nor does Dr. Tygar,
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`other than a single article described below, cite to any objective evidence in support of his
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`opinion. [See Tygar Decl. at ¶¶ 17-25]
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`12.
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`I understand Dr. Tygar’s reasoning to be, essentially, that because communication
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`media other than “telecommunications lines,” “telephone lines,” and “lines” existed, one of
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`ordinary skill in the art would understand such claim phrases to cover such media. I do not agree
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`with Dr. Tygar’s premise that the existence of other media automatically means that one of
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`ordinary skill in the art would consider them to be “telecommunications lines,” “telephone
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`lines,” or “lines.” In fact, I believe that the opposite is true.
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`13.
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`For example, Dr. Tygar cites a single article entitled “History of Wireless Local
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`Area Networks (WLANs) in the Unlicensed Bands” in support of his argument that “in 1988 one
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`skilled in the art would have been aware of local wireless networking protocols using radio
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`frequencies.” [See Tygar Decl. at ¶ 24; SightSound Ex. 4] According to that article, “the first
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`product to be certified that even remotely resembled a WLAN” was released “circa 1988.” [See
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`SightSound Ex. 4 at p. 3] Therefore, although a person of ordinary skill in the art would have
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`known that local wireless networks existed in 1988, the language used by the Patents-in-Suit –
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`“line” – excludes such technology.
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`14. With respect to fiber optics and types of wireless transmissions other than local
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`wireless networks, Dr. Tygar offers no supporting evidence at all that they were considered
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`“telecommunications lines” or “telephone lines” by a person of ordinary skill in the art. [See
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`Tygar Decl. at ¶¶ 22-23]
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`15.
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`Dr. Tygar further appears to believe that “end-to-end connectivity” excludes
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`instances where “[i]nformation may be transmitted and only partially received (or not received at
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`all).” [See Tygar Decl. at ¶ 25] I do not agree that this is the case, and Dr. Tygar does not
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`explain why he or one of ordinary skill in the art would interpret “end-to-end connectivity” in
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`such a fashion.
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`B.
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`“ELECTRONIC”
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`16.
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`As I explained in my September 7 Declaration, it is my opinion that one of
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`ordinary skill in the art would understand the claim term “electronic,” as used in the asserted
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`patents, to mean “through the flow of electrons.” [See Kelly Decl. at ¶¶ 29-33]
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`17.
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`I have reviewed the definitions on page 320 of the IEEE Standard Dictionary of
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`Electrical and Electronics Terms (4th ed. 1988), to which SightSound refers. [See SightSound
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`Brief at p. 21; SightSound Ex. 3 at p. 320] None of the definitions on that page, including the
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`definition for “electronic,” alters my opinion or in any way suggests to me that a person of
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`ordinary skill in the art in 1988 would understand the claim term “electronic” to mean something
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`different.
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`18.
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`In fact, “electronic” is defined there as “utilizing electron devices.” [See
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`SightSound Brief at p. 21; SightSound Ex. 3 at p. 320] “Electron device” is further defined as a
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`“device in which conduction is principally by electrons moving through a vacuum, gas, or
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`semiconductor.” [See SightSound Ex. 3 at p. 320 (emphasis added)] Therefore, the definition
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`supports the meaning of “electronic” as “through the flow of electrons.”
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`19.
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`I do not agree with Dr. Tygar’s opinion that “the flow of electrons … would
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`preclude use of virtually all telecommunications lines existing in 1988.” [See Tygar Decl. at
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`¶ 28] I note that Dr. Tygar cites to no objective evidence for his opinion. Moreover, as
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`explained in this Declaration and my September 7 Declaration, “telecommunication lines,” as
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`used in the asserted patents, are “electronic.” To the extent Dr. Tygar means that the flow of
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`electrons would preclude use of all forms of communications existing in 1988, I disagree.
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`Communications could, in 1988 as now, be conducted solely through the flow of electrons. For
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`example, in the prosecution history, the named inventor equated “telephone lines” with
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`“electrical lines.” [See ‘734 patent file history, 1/3/94 Hair Decl. at p. 5]
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`20.
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`It is my opinion that one of ordinary skill in the art would not consider
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`transmission via electromagnetic radiation, as with fiber optics or wireless communication, to be
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`“electronic.” As Dr. Tygar states, electromagnetic radiation uses photons, not electrons. [See
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`Tygar Decl. at ¶ 22, footnote 2] Photons exhibit properties of both waves and particles,
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`constitute the basic unit of light and other electromagnetic radiation, and have no electric charge.
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`Electrons are subatomic particles with an electric charge. Therefore, electromagnetic radiation
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`cannot be “electronic.”
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`21.
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`I do not agree that, as SightSound appears to contend, the mere use of electron
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`devices somewhere in a connection or transfer is sufficient to transform it into an “electronic”
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`connection or transfer. For example, SightSound states that “physical delivery of a CD” is not
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`“electronic.” [See SightSound Brief at p. 19, footnote 12] However, the delivery of a CD could
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`involve the use of an electronic sorting or processing machine, and under SightSound’s
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`reasoning, would make the delivery “electronic.” One of ordinary skill in the art would not
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`understand this to be the case.
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`C.
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`“DIGITAL AUDIO SIGNAL”
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`22.
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`As I explained in my September 7 Declaration, it is my opinion that one of
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`ordinary skill in the art would understand the claim phrase “digital audio signal,” as used in the
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`asserted patents, to mean “digital data playable as an audible sound wave.” [See Kelly Decl. at
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`¶¶ 34-40]
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`23.
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`I understand that SightSound proposes “digital audio signals” to mean “digital
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`representations of sound waves” and, furthermore, that “digital audio signals” are limited to
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`“sound recordings.” [See SightSound Brief at pp. 8-9; Tygar Decl. at ¶ 12] I do not agree.
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`24.
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`I do not agree with SightSound’s proposition that “music was typically captured
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`in an analog medium.” [See SightSound Brief at p. 8] I understand that the specification states
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`that “Digital Audio Music is simply music converted into a very basic computer language known
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`as binary.” [See, e.g., ‘573 patent at 1:53-55] As an initial matter, this passage discusses only
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`“Digital Audio Music,” not “digital audio signals.” Even so, in my opinion, one of ordinary skill
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`in the art would not interpret this statement to mean that the music was “captured in an analog
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`medium,” as it says nothing about the origin of such music. In fact, Dr. Tygar says that the
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`“process for digitizing audio signals (i.e., music) was well known in 1988” and then describes
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`converting the audio to digital form without any intermediate analog storage:
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`Digitization begins with the use of a microphone to convert the
`original sound waves from a performance (such as a song) into an
`analog electrical signal. This analog electrical signal is then
`"sampled" or measured very frequently (for example, in CD-
`quality digital audio, at 44,100 Hz (i.e., 44,100 samples per
`second). The measured values of the amplitude (height) of the
`sound wave and audio frequencies present in the sample are
`converted to l's and 0's. [See Tygar Decl. at ¶ 13, footnote 1]
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`Audio recording devices for directly converting audio to a digital representation and storing the
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`digital data were known in the art in 1988. [See, e.g., ‘573 patent at 2:4-8] Moreover, the
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`specification explains that analog media may be lower quality and hence suggests the use of
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`alternatives. [See ’573 patent at 1:61-63] The specification also acknowledges that music may
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`be captured on CDs, a digital medium. [See ’573 patent at 1:50-53].
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`25.
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`I also do not agree with Dr. Tygar’s opinion that the quality of MIDI audio
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`compared to digital recordings disqualifies it from being a “digital audio signal.” One of
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`ordinary skill in the art would not consider quality as a relevant factor. Nor do I agree that MIDI
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`audio is necessarily inferior to digital recordings. Dr. Tygar states that digital recordings, as
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`opposed to MIDI, produce “sound waves … mathematically and perceptually similar to the
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`human ear to the sound waves generated at the original performance.” [See Tygar Decl. at ¶ 13,
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`footnote 1] A digital recording is not always as similar to the original audio as Dr. Tygar would
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`have us believe. For example, as admitted by Dr. Tygar, digital recordings may be, and often
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`are, compressed to save space, but such compression degrades quality. [See Tygar Decl. at ¶ 32]
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`For example, using the popular MP3 format, digital recordings may be compressed to 32 kbps,
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`which is only equivalent in quality to AM radio. [See Thom Holmes, Electronic and
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`Experimental Music (3rd ed. 2008) at p. 313] However, SightSound’s proposed construction
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`would still cover such poor-quality audio. Moreover, as Dr. Tygar states, “the quality of MIDI
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`generated sound depends on the quality of the synthesizer that MIDI directs.” [See Tygar Decl.
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`at ¶ 13] First, a high quality MIDI synthesizer will produce a high quality sound. Second, the
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`quality of the sound generated from CDs, MP3s, etc. also depends on the quality of other
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`components such as audio ICs, amplifiers and speakers.
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`26.
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`I do not agree with Dr. Tygar’s opinion that any digital data is “playable as an
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`audible sound wave.” [See Tygar Decl. at ¶ 14] One of ordinary skill in the art would not
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`consider treating arbitrary (non-audio) data as if it were audio data to be “playing.”
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`27.
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`Finally, SightSound’s proposed construction would exclude any computer-
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`synthesized sound unless it is first played through speakers and then re-recorded and re-
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`converted into digital form. However, the specification acknowledges that it is possible to
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`“accept direct input of Digital Audio Music from the digital output of a Compact Disc.” [See,
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`e.g., ‘573 patent at 2:51-58] As I explained in my September 7 Declaration, the compact disc
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`specification explicitly includes a mode for MIDI that allows MIDI files to be stored on compact
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`discs. [See, e.g., CD-MIDI logo; Soren G. Stan, Compact Disc Standards and Formats, Origins
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`and Successors of the Compact Disc (2009) at p. 141]. As a result, it is my opinion that one of
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`ordinary skill in the art would not have required an intermediate step of playing and recording
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`computer-synthesized sound (that is, an intermediate conversion to analog) for it to be a “digital
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`audio signal.”
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`D.
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`“HARD DISK” AND “HARD DRIVE”
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`28.
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`As I explained in my September 7 Declaration, the terms “hard disk” and “hard
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`drive” had, and continue to have, well-understood meanings in the art. Specifically, it is my
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`opinion that one of ordinary skill in the art would understand “hard disk” to mean “a rigid,
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`magnetically coated platter for computer storage” and “hard drive” to mean “a magnetic
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`computer storage medium comprising a rotating disk platter with a read-write head and
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`extensible arm.” [See Kelly Decl. at ¶¶ 41-49]
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`29.
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`I have reviewed the specifications of the asserted patents and see no reason to
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`believe that the patents use the terms “hard disk” and “hard drive” in any way other than their
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`ordinary meanings or that the context of the patents would suggest any deviation from the terms’
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`ordinary meanings. The distinctions drawn in the patents between a “hard disk” and other forms
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`of storage are, in my opinion, consistent with the ordinary usage of “hard disk.”
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`30.
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`I note that Dr. Tygar, without citation, opines that “[a] person of skill in the art in
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`1988 would at least recognize the term hard drive to cover non-volatile storage devices utilizing
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`rotating magnetic disks, like hard disks, as well as solid state drives.” I disagree with Dr.
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`Tygar’s opinion that “solid state drives” would have been understood as “hard drives” in 1988.
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`As I explained in my September 7 Declaration, solid state memory and solid state drives are very
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`different from hard disks and hard drives.
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`31.
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`I have reviewed the various definitions on page 914 of the IEEE Standard
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`Dictionary of Electrical and Electronics Terms (4th ed. 1988), to which SightSound refers.
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`None of the definitions on that page, including the definitions for “solid-state component” and
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`“solid-state device (control equipment),” alters my opinion or in any way suggests to me that a
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`person of ordinary skill in the art in 1988 would understand a solid state drive to be a “hard
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`drive.”
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`32.
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`I have reviewed the paper F. Masuoka et al., New Ultra High Density EPROM
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`and Flash EEPROM with NAND Structure Cell, Int’l Electron Device Mtg. (IEEE 1987) at pp.
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`552-55, to which SightSound refers. Nothing in the paper alters my opinion or in any way
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`suggests to me that a person of ordinary skill in the art in 1988 would understand a solid state
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`drive to be a “hard drive.” The paper makes no mention of “hard disk” or “hard drive.” To the
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`contrary, the paper merely describes the physical structure and electrical characteristics of the
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`base 4-bit cell for a type of nonvolatile memory.
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`33.
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`I have reviewed the Seagate Technology OEM Manual for the ST 506/412, to
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`which SightSound refers. Nothing in the manual alters my opinion or in any way suggests to me
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`that a person of ordinary skill in the art in 1988 would understand a solid state drive to be a “hard
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`drive.” The ST-506 was the first 5.25 inch hard disk drive, introduced in 1980 by Seagate
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`Technology. The ST-506 was a very well known example of a hard drive. According to an
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`April 22, 2008 article from the IDG News Service, as published at
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`http://www.computerworld.com/s/article/9079718/Seagate_ships_one_billionth_hard_drive,
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`Seagate had, as of that time, “shipped 1 billion hard drives since pioneering an industry that
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`shows no signs of slowing down 29 years later.” The article continues: “Hard drives are here to
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`stay despite the emergence of SSDs (solid-state drives) for iPods, other consumer electronics and
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`now laptops ….”
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`34.
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`Finally, I understand that SightSound criticizes Apple’s proposed construction of
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`the term “hard disk,” because it “only covers the rigid storage platter itself.” SightSound
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`suggests that, if Apple’s construction is adopted, the asserted claims would be rendered
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`inoperable because additional components (e.g., read/write heads and motors) are required to
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`store and read data from a hard disk. [See SightSound Brief at p. 29] I disagree.
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`35.
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`Just as a person of ordinary skill in the art in 1988 understood what a “hard disk”
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`was (and is), a person of ordinary skill in the art understood that there were a variety of common
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`ways in which a hard disk could be integrated into a computer system. A hard disk could, for
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`example, be permanently housed within a hard drive, which could be either internal or external
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`to the physical housing of a computer. Alternatively, a hard disk could be removable (e.g., the
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`“disk packs” for the IBM 3330 and DEC RP06 disk drives). Disk controllers and related
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`hardware and software were well-known.
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`36.
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`Also, the asserted patents identify both similarities and differences among “hard
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`disks” and, for example, records, tapes and compact discs. Notably, each of these types of
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`storage media (including a “hard disk”) is dependent on another hardware device for recording
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`and/or playback.
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`E.
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`“REPLICA”
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`37.
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`As I explained in my September 7 Declaration, a person of ordinary skill in the art
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`in 1988 would understand “replica” to mean “a complete copy.” [See Kelly Decl. at ¶¶ 50-55]
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`38.
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`I note that Dr. Tygar, without citation, states the conclusion that “[i]n the context
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`of transmitting data among computers via telecommunications lines, one skilled in the art would
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`have understood a ‘replica’ to include portions of a file and not a complete file only.” [See Tygar
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`Declaration at ¶ 30] He further states that “playback of a digital audio or video file would not
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`require a complete copy of a song or file be stored in RAM.” [See Tygar Declaration at ¶ 31] I
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`disagree with Dr. Tygar’s opinion that “replica” would have been understood “to include
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`portions of a file.” Storing “portions” of something is not the same as storing a “replica” of that
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`thing. For example, storing “portions” of a painting is not the same as storing a “replica” of the
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`painting. The same is true of signals. A person of ordinary skill would understand that it would
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`be possible to store in memory either portions, or the entirety, of digital signals. Given that the
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`claim language at issue requires storing not “portions,” but a “replica,” of the digital signals that
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`are later transferred or played and given that one of ordinary skill would understand the word
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`“replica” to refer to a complete copy of those signals and not mere portions of them, in my
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`opinion one of ordinary skill would understand the claim language to require storing a complete
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`copy of the digital signals before transfer or playback.
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`39.
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`The specification describes that “[t]he Control Integrated Circuit 50b stores the
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`replica onto the Play Back Random Access Memory Chip 50d at a high transfer rate. The
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`Control Integrated Circuit 50b then sends the electronic output to the Stereo Speakers 80 at a
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`controlled rate using the Play Back Random Access Memory Chip 50d as a temporary staging
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`point for the Digital Audio Music.” [See ‘734 patent at 5:6-16]
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`40.
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`Regarding the above passage, it is my opinion that one of ordinary skill in the art
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`would understand that the playback “controlled rate” is substantially slower than any transfer
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`rate from hard disk to RAM. If only portions of a song were stored at a time, a “high transfer
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`rate” from hard disk to RAM would not be required to keep up with the controlled rate of
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`playback from RAM. However, if a complete copy must be stored in RAM before playback,
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`having a “high transfer rate” would be crucial to minimize delay before playback can begin. The
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`natural understanding of this passage is that a complete copy of a song would be stored before
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`playback can begin.
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`41.
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`I understand that SightSound (and Dr. Tygar) criticize Apple’s proposed
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`construction of “replica,” because a digital signal is never a perfectly complete copy of “an audio
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`sound wave.” [See SightSound Brief at pp. 24-25; Tygar Declaration at ¶¶ 32-33] But the
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`asserted patents never use the term “replica” to refer to a copy of an audio sound wave. Instead,
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`the patents refer to replicas of digital signals, signals that can be perfectly replicated on a bit-by-
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`bit basis.
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`III. OPINIONS REGARDING MEANS-PLUS-FUNCTION CLAIM LIMITATIONS
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`A.
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`“MEANS OR A MECHANISM FOR CONNECTING ELECTRONICALLY”
`AND “CONNECTING MEANS OR MECHANISM”
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`42.
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`As I explained in my September 7 Declaration, it is my opinion that the asserted
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`patents do not disclose sufficient structure clearly linked to the function of “connecting
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`electronically.” [See Kelly Decl. at ¶¶ 72-79]
`
`43.
`
`I have reviewed the portions of the patents’ specifications on which SightSound
`
`relies. [See SightSound Brief at pp. 31-33] Nothing in those portions of the specifications alters
`
`my opinions or suggests to me that a person of ordinary skill in the art in 1988 would understand
`
`the patents to disclose a clear link between a single control integrated circuit and the function of
`
`“connecting electronically,” much less a specific algorithm for performing that function.
`
`44.
`
`SightSound (and Dr. Tygar) suggest that a person of ordinary skill in the art
`
`would understand that the asserted patents imply that the parties’ control units are responsible for
`
`performing the function of “connecting.” I disagree. The specifications of the ‘573, ‘734 and
`
`‘440 patents contain no such disclosure. Furthermore, a person of ordinary skill in the art in
`
`1988 would, in my opinion, understand that there were (and are) a variety of ways in which
`
`“connecting” could be accomplished using a variety of hardware and software components.
`
`45.
`
`The Ethernet specification, on which Dr. Tygar relies [see Tygar Declaration at
`
`¶ 39], provides a somewhat detailed explanation for one technology for connecting computers.
`
`Another technology for connecting computers – employing different hardware and software –
`
`that was known to persons of ordinary skill in the art in 1988 involved the use of a modem.
`
`Persons of ordinary skill in the art would have been aware of several generations of modem
`
`standards, as well as competing non-standard methodologies that were in widespread use. [See,
`
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`e.g., ITU Recommendations V.22 (1200 bps1), V.22bis (2400 bps) and V.32 (9600 bps)] Neither
`
`the Ethernet specification nor the modem specifications discuss connecting a first memory (such
`
`as a hard disk) at a first location with a second memory (such as a hard disk) at a second
`
`location. Additional software / hardware – not discussed in these specifications – would be
`
`required to transfer data between the two computers.
`
`46.
`
`As these examples demonstrate, however, “connecting” in 1988 was not a simple,
`
`straightforward function performed by a single, well-known hardware component. The function
`
`could be performed in different ways by different configurations of hardware and software—the
`
`asserted patents do not specify or clearly link any particular structure.
`
`B.
`
`“MEANS OR MECHANISM FOR TRANSMITTING THE … SIGNALS”,
`“TRANSMITTING MEANS OR MECHANISM” AND “MEANS OR
`MECHANISM FOR TRANSMITTING”
`
`47.
`
`As I explained in my September 7 Declaration, it is my opinion that the asserted
`
`patents do not disclose sufficient structure clearly linked to the function of “transmitting [the …
`
`signals].” [See Kelly Decl. at ¶¶ 80-87]
`
`48.
`
`I have reviewed the portions of the patents’ specifications on which SightSound
`
`relies. [See SightSound Brief at pp. 34-35] Nothing in those portions of the specifications alters
`
`my opinions or suggests to me that a person of ordinary skill in the art in 1988 would understand
`
`the patents to disclose a clear link between a “transmitter connected to a properly programmed
`
`control integrated circuit” and the function of “transmitting,” much less a specific algorithm for
`
`performing that function.
`
`                                                        
`
`1 “bps” means bits per second.
`
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`C.
`
`“MEANS OR A MECHANISM FOR STORING THE … SIGNALS” AND
`“STORING MEANS OR MECHANISM”
`
`49.
`
`As I explained in my September 7 Declaration, it is my opinion that the asserted
`
`patents do not disclose sufficient structure clearly linked to the function of “storing [the
`
`…signals].” [See Kelly Decl. at ¶¶ 88-98]
`
`50.
`
`I have reviewed the portions of the patents’ specifications on which SightSound
`
`relies. [See SightSound Brief at pp. 35-38] Nothing in those portions of the specifications alters
`
`my opinions or suggests to me that a person of ordinary skill in the art in 1988 would understand
`
`the patents to disclose a clear link between the control integrated circuit and the recited “storing”
`
`function.
`
`51.
`
`I note that SightSound now relies on the following passage from the asserted
`
`patents: “The Control Integrated Circuit 50b stores the replica onto the Play Back Random
`
`Access Memory Chip 50d at a high transfer rate.” ’734 at 5:9-12; ’440 at 5:11-14. In my
`
`opinion, a person of ordinary skill in the art would understand that this passage refers to a
`
`different storage function—the storage of “the replica,” not “the . . . signals” (as claimed), in “the
`
`Play Back Random Access Memory Chip 50d,” not “the second memory” (as claimed).
`
`D.
`
`SALES-RELATED “MEANS”
`
`52.
`
`As I explained in my September 7 Declaration, it is my opinion that the asserted
`
`patents do not disclose sufficient structures clearly linked to the various sales-related functions
`
`recited in the asserted claims. [See Kelly Decl. at ¶¶ 99-127]
`
`53.
`
`I have reviewed the portions of the patents’ specifications on which SightSound
`
`relies. [See SightSound Brief at pp. 38-44] Nothing in those portions of the specifications alters
`
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`my opinions or suggests to me that a person of ordinary skill in the art in 1988 would understand
`
`the patents to disclose a clear link between the control integrated circuit and the various sales-
`
`related functions, much less specific algorithms for performing those functions.
`
`E.
`
`“MEANS FOR PLAYING THE … SIGNALS”, “MEANS FOR PLAYING”,
`“PLAYING MEANS”, “A MECHANISM FOR PLAYING THE …
`SIGNALS”, “PLAYING MECHANISM”, “MEANS OR A MECHANISM
`FOR PLAYING THE SIGNALS”, AND “PLAYING MEANS OR
`MECHANISM”
`
`54.
`
`As I explained in my September 7 Declaration, it is my opinion that the asserted
`
`patents do not disclose sufficient structures clearly linked to the function of “playing [the …
`
`signals].” [See Kelly Decl. at ¶¶ 128-134]
`
`55.
`
`I have reviewed the portions of the patents’ specifications on which SightSound
`
`relies. [See SightSound Brief at pp. 44-45] Nothing in those portions of the specifications alters
`
`my opinions or suggests to me that a person of ordinary skill in the art in 1988 would understand
`
`the patents to disclose a clear link between the control integrated circuit and the function of
`
`“playing,” much less specific algorithms for performing that function.
`
`  
`
`
`
`
`
`
`
`I declare under penalty of perjury that the foregoing
`is true and correct. Sworn to this 28th Day of September,
`2012.
`
`_______________________________________
`John P.J. Kelly, PhD.
`
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`Case 2:11-cv-01292-DWA Document 109 Filed 09/28/12 Page 18 of 18
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 28, 2012 the foregoing was served upon all counsel of record via
`the CM/ECF Electronic filing system of the United States District Court for the Western District of
`Pennsylvania.
`
`
`______/s/ Eric T. Syu_________
`
`
`
`Page 00018
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