Filed on behalf of:
`
`Patent Owner Sightsound
`By: David R. Marsh, Ph.D.
`
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`
`
`
`
`
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`
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`APPLE, INC.,
`
`Petitioner,
`
`v.
`
`Patent of SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`_______________
`
`Case CBM2013-00020
`Patent 5,191,573
`
` _______________
`
`DECLARATION OF JOHN SNELL IN SUPPORT OF PATENT OWNER
`SIGHTSOUND TECHNOLOGIES, LLC’S RESPONSE TO PETITION
`
`1
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`
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`
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`SIGHTSOUND TECHNOLOGIES, LLC
`EXHIBIT 2153
`CBM2013-00020 (APPLE INC. v. SIGHTSOUND TECHS., LLC)
`PAGE 000001
`
`
`
`Patent Owner Sightsound
`By: David R. Marsh, Ph.D.
`
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`APPLE, INC.,
`
`Petitioner,
`
`v.
`
`Patent of SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`_______________
`
`Case CBM2013-00020
`Patent 5,191,573
`
` _______________
`
`DECLARATION OF JOHN SNELL IN SUPPORT OF PATENT OWNER
`SIGHTSOUND TECHNOLOGIES, LLC’S RESPONSE TO PETITION
`
`1
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`
`
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`SIGHTSOUND TECHNOLOGIES, LLC
`EXHIBIT 2153
`CBM2013-00020 (APPLE INC. v. SIGHTSOUND TECHS., LLC)
`PAGE 000001
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`
`
`Case CBM2013-00020
`Patent 5,191,573
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`I, John Snell, hereby declare as follows:
`
`1.
`
`I have been retained by the plaintiff Patent Owner SightSound
`
`Technologies, LLC (―Patent Owner‖ or ―SightSound‖), to provide assistance and
`
`expert testimony in the Covered Business Method Review (―CBM Review‖) taking
`
`place before the Patent Trials and Appeals Board (―PTAB‖ or ―Board‖) regarding
`
`U.S. Patent No. 5,191,573 (―the ‗573 Patent‖) and U.S. Patent No. 5,966,440 (―the
`
`‗440 Patent‖). I have personal knowledge of the facts and opinions set forth in this
`
`declaration, and if called upon to do so, I would testify competently thereto. My
`
`curriculum vitae describing my background and experience is attached hereto as
`
`Appendix A.
`
`2.
`
`This Declaration gives the opinions, and their underlying bases and
`
`reasons, about which I may testify further. This report further includes information
`
`regarding the validity of the patents in light of Petitioner Apple Inc.‘s (―Petitioner‖
`
`or ―Apple‖) assertions in this proceeding that the patents are anticipated under 35
`
`U.S.C. § 102 and obvious under 35 U.S.C. § 103(a). This report also includes
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`information regarding why one skilled in the art would not find the inventions
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`disclosed in the patents obvious at the relevant time and further information
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`relating to considerations of non-obviousness, as well as information regarding the
`
`advantages of the patented invention over the prior art.
`
`I.
`
`Background and Qualifications
`
`3.
`
`I am an engineer, and reside and work in San Geronimo, California. I
`
`specialize in the design and analysis of microelectronics, software, and systems for
`
`recording, playing, synthesis, processing and transferring of electronic media over
`
`electronic networks. I have over four decades of experience in electronics
`
`engineering, computer science, signal processing mathematics, and the engineering
`
`of audio, video and music. I have researched, designed, developed and analyzed
`
`the microelectronics and software of numerous digital music and video systems.
`
`4.
`
`I studied at Carnegie-Mellon University from 1967–74.
`
` My
`
`interdisciplinary graduate work through the electrical engineering department at
`
`Carnegie-Mellon University was performed with a grant from the National Science
`
`Foundation. I earned my Bachelor of Science degree in Electrical Engineering and
`
`my Bachelor of Arts degree in Cybernetics (an interdisciplinary program,
`
`combining coursework in computer science, signal processing mathematics,
`
`physics, music analysis and composition, psychology and physiology of perception
`
`as well as audio, video and electrical engineering) at Carnegie-Mellon University.
`
`I wrote my first computer program in 1968 on a mainframe computer at Carnegie-
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`PAGE 000003
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`Case CBM2013-00020
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`Mellon University, where I took courses in programming, including data structures
`
`and software design for real-time systems. I have programmed computers and
`
`media processing digital systems at all levels, from high-level code down to
`
`assembly language and microcode (including binary, octal and hexadecimal for
`
`debugging systems).
`
`5.
`
`I worked on the development of a large multiprocessing system and a
`
`graphics display processor, as well as analog-to-digital and digital-to-analog audio
`
`converters in the Engineering Lab of the Artificial Intelligence Lab at Carnegie-
`
`Mellon University in the early 1970s. I co-designed the microelectronics and
`
`software of a real-time microwave (wireless) signal analyzer in the mid-1970s.
`
`6.
`
`I am the founder (1976) and original editor of the COMPUTER MUSIC
`
`JOURNAL,1 an academic publication of international research on the application of
`
`computer science, signal processing mathematics, electronics, software, physics,
`
`acoustics and psychology of perception to the composition, recording, editing, and
`
`processing of music. Publication of several books2 resulted from the articles I
`
`collected and edited.
`
`
`1 Computer Music Journal, MIT Press.
`
`2 Revised articles from the COMPUTER MUSIC JOURNAL with new articles edited by
`
`John Snell, John Strawn and Curtis Roads were published in 3 books:
`
`Footnote continued on next page
`
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`7.
`
`I also did research in digital audio and music processing at Stanford
`
`University from 1977–1980 at the Center for Computer Research in Music and
`
`Acoustics (CCRMA). I worked on the development of the third generation of the
`
`CCRMA mainframe computer for editing, signal processing, and playing digital
`
`music files, and our computer was connected to the ARPANET.
`
`8.
`
`I was a design engineer from 1980–86 at Lucasfilm Ltd., where we
`
`designed and developed the microelectronics and software of graphics-based
`
`multiprocessor supercomputers for recording, processing, synthesis, editing and
`
`transferring of digital music, voices, Foley, and sound effects. In addition to
`
`design of the programmable digital mixing console and solid state memory system
`
`of our Digital Audio Signal Processor (a.k.a. ASP and SoundDroid), I contributed
`
`to the architecture3 and use of higher-speed circuitry (change from noisy, slower
`
`
`Footnote continued from previous page
`FOUNDATIONS OF COMPUTER MUSIC (MIT PRESS 1985), DIGITAL AUDIO
`
`Engineering (Kaufmann 1985), and DIGITAL AUDIO SIGNAL PROCESSING
`
`(Kaufmann 1985).
`
`3 Contributions to the architecture included replacement of the traditional single-
`
`bus with a dual-bus for faster processing (since most calculations involve dual-
`
`operands), touch-sensitive, interactive graphics screen technology for ease of
`
`Footnote continued on next page
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`TTL to faster, less noise-prone, ECL supercomputer integrated circuitry4) for real-
`
`time operation. Our ASP/SoundDroid system included static and dynamic random
`
`access semiconductor memory (RAM) as well as disk drives for storing digital
`
`audio. This multiprocessor system was designed so that multiple channels of
`
`digital audio could be transmitted over a private Ethernet (ASPnet) between the
`
`
`Footnote continued from previous page
`editing, and use of a hinged paging design for easy troubleshooting access to
`
`signals.
`
`4 Emitter-coupled-logic (ECL) was a faster and cleaner method of electronics
`
`design than TTL. Electronic circuitry known as transistor-transistor technology
`
`(TTL) was commonly used for digital design in the 1970s and 1980s. Schottky
`
`TTL sometimes failed due to its electrical noise and reflections over lines
`
`connecting TTL chips. From troubleshooting experience with the noise generated
`
`by, and line reflections of, Schottky TTL in developing large digital systems in the
`
`1970s, I realized the need for a faster and more reliable supercomputer technology.
`
`Speed was an essential ingredient for real-time processing of media during this
`
`period. However, I designed portions of our less speed-critical user interface with
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`more energy-efficient CMOS (complimentary metal-oxide-semiconductor)
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`integrated circuitry, which became the dominant technology for microprocessors.
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`disk drives connected to the memory systems of the processors. Our Trio project
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`was designed for editing digital audio and video with optical video disks.
`
`9.
`
`I designed several real-time multiprocessing systems for processing
`
`digital media signals over the last few decades5 and 6 and wrote a book,7 which
`
`detailed my design of numerous architectures for processing audio and video. In
`
`1989, I was invited to give an international presentation on real-time software
`
`design issues in programming multiprocessor systems,8 which was subsequently
`
`published by the Audio Engineering Society. In the 1990s, I worked on the design
`
`
`5 John M. Snell, Expandable Interactive Real-time Multiprocessor DSP,
`
`Proceedings of the IEEE ASSP Workshop on Applications of Signal Processing to
`
`Audio and Acoustics ( IEEE Press 1989).
`
`6 John Snell, Professional Real-time Signal Processor for Synthesis, Sampling,
`
`Mixing & Recording, PROCEEDINGS OF THE 83RD CONVENTION OF THE AUDIO
`
`ENGINEERING SOCIETY (Audio Engineering Society 1987).
`
`7 John M. Snell, Multiprocessor Architectures & Design Techniques for Media
`
`Signal Processing & Synthesis 1991–1995 (Timbre Engineering 1995).
`
`8 John M. Snell, Multiprocessor DSP Architectures & Implications for Software,
`
`AUDIO IN DIGITAL TIMES (Audio Engineering Society 1990).
`
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`of a supercomputer chip and software for personal home computers, which enabled
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`simultaneous processing of multiple streams of media. This integrated circuit with
`
`its software was designed to receive, decode and process digital video, digital
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`audio and graphics while implementing modem connection to the Internet. These
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`systems were designed with static and dynamic RAM (Random Access Memory)
`
`as well as non-volatile digital storage.
`
`10. Over the last decade, I worked on the design of a multiprocessing
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`supercomputer system which allowed customers to select their own movies and
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`music over the Internet and have them transmitted from solid state memory to their
`
`home over the higher-fidelity cable TV and satellite dish (wireless) networks,
`
`including thousands of channels of high-fidelity digital audio and high-definition
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`digital video. I also worked on the design/analysis of smartphone applications
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`involving digital media. I have used the Internet and its predecessor, the
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`ARPANET, since 19729 for my research and development work in digital media. I
`
`
`9 For example, my first transmission of digital files of music instrument designs
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`with scores to play them was from Carnegie-Mellon University to Stanford
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`University in the early 1970s over the ARPAnet. This was years ahead of the less
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`expressive MIDI standard.
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`have given lectures and engineering presentations at international conferences,
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`research centers and universities.10
`
`11. My experience with music is not limited to microelectronics and
`
`software engineering. I have been a musician since early childhood, and my
`
`compositions have been played in concerts and over the radio, as well as in live
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`theater and film soundtracks.
`
`12.
`
`I served from 1992–95 on
`
`the Editorial Review Board of
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`MICROPROCESSOR REPORT. I analyzed the internal design of state-of-the-art digital
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`media processing chips and advanced memory technology for this highly-respected
`
`
`10 I have given lectures and engineering presentations at Audio Engineering
`
`Society international conferences, International Computer Music Conferences,
`
`Institute of Electrical and Electronics Engineers (IEEE) International Conference
`
`on Signal Processing Applications and Technology, Stanford University, Institut de
`
`Recherche et Coordination Acoustique/Musique (IRCAM, Paris), University of
`
`California, Microprocessor Forum, Eastman School of Music, Northwestern
`
`University, DSPx (Digital Signal Processing Conference, San Jose, CA), IEEE
`
`Mini/Micro West (San Francisco), WCCF, Mills College and Carnegie-Mellon
`
`University.
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`Case CBM2013-00020
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`publication on integrated circuit design for electrical engineers and computer
`
`scientists.
`
`13.
`
`I was honored by the Audio Engineering Society in 2000 with a
`
`Fellowship Award for innovative digital audio engineering design and valuable
`
`contributions to the advancement of audio engineering.
`
`14.
`
`I have analyzed hundreds of patents since the early 1970s and have
`
`served as an expert witness in trial and deposition. I am being compensated at
`
`$350/hour for my work on this case. I have not testified at trial or deposition in the
`
`past four years.
`
`II. Materials Reviewed
`
`
`15. In preparing my opinions, I have considered the following materials:
`
` ‗573 Patent, its File History and Reexamination History [Exs.
`
`4101, 4102, 4103]
`
` ‗440 Patent, its File and Reexamination History [Ex. 4127]
`
` The Declaration of Scott Sander and exhibits [Ex. 2110-2120]
`
` The Declaration of John Stautner and exhibits [Ex. 2121-2122]
`
` The Deposition of David Michael Schwartz, December 9-10, 2013
`
`[Ex. 2124]
`
` The Deposition of David M. Schwartz, February 1, 2001[Ex. 2125]
`
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`Case CBM2013-00020
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` The Deposition of John P. J. Kelly, Ph.D., December 4, 2013 [Ex.
`
`2126]
`
` Recording Industry Association of America Year-End Shipment
`
`Statistics for 2008, 2009, 2010, 2011, and 2012 [Ex. 2127]
`
` Full Written Transcript from 1987 Stanford Lecture [Ex. 2128]
`
` Article entitled A Management/Preservation Scorecard, written by
`
`Bill Bolland, and published in the November, 6, 1999 edition of
`
`Billboard Newspaper [Ex. 2129]
`
` Excerpts of Petitioner‘s SEC filings [Exs. 2130, 2132, 2144 and
`
`2145]
`
` Apple Press Releases [Exs. 2131, 2133, 2134, 2135, 2136, 2137,
`
`2138, 2139, 2140 and 2148]
`
` Excerpts from Apple‘s Earning Call Transcripts [Exs. 2141, 2142
`
`and 2146]
`
` Article entitled Top Music Seller’s Store has no Door, dated April
`
`04, 2008, and published in the Los Angeles Times (available at
`
`http://articles.latimes.com/2008/apr/04/business/fi-itunes4) [Ex.
`
`2143]
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` Online article entitled How iTunes Works, written by Julie Layton
`
`and Jonathan Strickland (available at
`
`http://electronics.howstuffworks.com/itunes5.htm) [Ex. 2147]
`
` Screenshots obtained from Apple‘s website [Exs. 2150 &2151]
`
` Steven Dupler, Joint Telerecording Push: CompuSonics, AT&T
`
`Link, Billboard, vol. 97, no. 40, Oct. 5, 1985 (―Dupler article‖)
`
`[Ex. 4106]
`
` David Needle, From the News Desk: Audio/digital interface for
`
`the IBM PC?, InfoWorld, vol. 6, no. 23, p. 9, June 4, 1984
`
`(―Needle article‖) [ Ex. 4107]
`
` Larry Israelite, Home Computing: Scenarios for Success,
`
`Billboard, Dec. 15, 1984 (―Israelite article‖) [ Ex. 4108]
`
` ―Digital Audio Telecommunication System‖ diagram, © 1985 [Ex.
`
`4112]
`
` David Schwartz, July 16, 1984 Letter to CompuSonics‘
`
`Shareholders, July 16, 1984 (―Schwartz 1984 Letter‖) [Ex. 4113]
`
` Hyun Heinz Sohn, A High Speed Telecommunications Interface for
`
`Digital Audio Transmission and Reception, 76th AES Convention,
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`Oct. 1984 (―Sohn article‖) [Ex. 4114]
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` David Schwartz, October 10, 1985 Letter to CompuSonics‖
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`Shareholders, Oct. 10, 1985 (―Schwartz 1985 Letter‖) [Ex. 4115]
`
` CompuSonics Video, Application Notes: CSX Digital Signal
`
`Processing 1986 (―Application Note‖) [Ex. 4116]
`
` ―Digital Audio Software Production/Distribution‖ diagram [Ex.
`
`4117]
`
` U.S. Patent No. 4,682,248 (―Schwartz patent‖) [Ex. 4118]
`
` Brian Dumaine, The Search for the Digital Recorder, Fortune, p.
`
`116, Nov. 12, 1984 (Dumaine article‖) [Ex. 4119]
`
` 1987 Stanford lecture (―Stanford lecture‖) [Ex. 4120]
`
` International Patent Application W085/02310 (―Softnet patent‖)
`
`[Ex. 4109]
`
` United States Patent No. 3, 718,906 (―Lightner patent‖) [Ex. 4110]
`
` United States Patent No. 3,990,710 (―Hughes patent‖) [Ex. 4111]
`
` U.S. Patent No. 4,124,773 (―Elkins patent‖) [Ex. 4128]
`
` U.S. Patent No. 4,667,008 (―Kramer patent‖) [Ex. 4129]
`
` U.S. Patent No. 4,528,643 (―Freeny patent‖) [Ex. 4130]
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` Photograph of CompuSonics equipment [Exc. 4131]
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` Declaration of John P. J. Kelly [Ex. 4132]
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` Declaration of David Schwartz [Ex. 4133]
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` Special Master‘s Report and Recommendation On Claim
`
`Construction dated Nov. 19, 2012 in the matter of SightSound
`
`Technologies, LLC v. Apple, Inc. (―Claim Construction
`
`Recommendation‖) [Ex. 4134]
`
` Order re Claim Construction dated 2/13/13 in the matter of
`
`SightSound Techs., LLC v. Apple Inc. [Ex. 4135]
`
` New Telerecording Method for Audio, Broadcast
`
`Management/Engineering, (Oct. 10, 1985) [Ex. 4140]
`
`III. The Hair Patents
`
`16.
`
`I am very familiar with the background of the technology to which the
`
`‗573 and ‗440 patents (collectively the ―Patents‖) relate and the problems they
`
`solved. My testimony on this issue is based on my review of the Patents and their
`
`prosecution and reexamination histories, as well as my own specialized knowledge
`
`of this field of technology, acquired through my education and decades of
`
`professional experience.
`
`17. On March 2, 1993, the United States Patent and Trademark Office
`
`(―PTO‖) issued United States Patent No. 5,191,573. The ‗573 Patent claims
`
`priority to an application, Serial No. 206,497, that was filed on June 13, 1988. The
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`‗573 Patent underwent reexamination, and the PTO confirmed the validity of all
`
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`six claims of the ‗573 Patent by issuing a reexamination certificate, U.S. Patent No
`
`5,191,573 C1, on November 30, 2010. No claims from the ‗573 Patent were
`
`amended or cancelled during reexamination.
`
`18. The PTO further issued U.S. Patent No. 5,966,440 (―the ‗440 Patent‖)
`
`on October 12, 1999. The ‘440 Patent is a continuation of the application that gave
`
`rise to the ‗573 Patent and also claims priority to the same application, No.
`
`07/206,497, that was filed on June 13, 1998. The ‗440 Patent also underwent
`
`reexamination. Among other things, the PTO confirmed the validity of claim 1, as
`
`amended, and the ‗440 Patent was amended to include new claims 64 and 95. The
`
`PTO issued a reexamination certificate, U.S. Patent No. 5,966,440 C1, on June 27,
`
`2010.
`
`19. The Patents generally relate to the field of electronic sale and
`
`distribution of digital audio or digital video. More specifically, the patented
`
`technology pertains to business methods associated with the transmission of digital
`
`audio or digital video via telecommunications lines to non-removable memory
`
`storage owned by a customer.
`
`A. The ‘573 patent and Claims at Issue
`
`20.
`
` The ‗573 Patent discloses a method to sell digital music and digital
`
`video files over telecommunication lines, allowing the purchaser/user to pay per
`
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`file and download the file to his or her non-removable memory storage such as a
`
`hard disk, which allows for playback.
`
`21.
`
` The ‗573 Patent is directed to ―a system and associated method for
`
`the electronic sales and distribution of digital audio or video signals, and more
`
`particularly, to a system and method which a user may purchase and receive digital
`
`audio or video signals from any location which the user has access to
`
`telecommunication lines.‖ ‗573 patent at 1:15–21.
`
`22.
`
`In describing the sales, distribution and transferability of music at or
`
`prior to the filing date, the ‗573 Patent discusses a number of drawbacks to then-
`
`current music media: records, tapes and compact discs (collectively, ―the prior art
`
`hardware units‖). ‗573 patent at cols. 1–2. From a capacity standpoint, the ‗573
`
`patent discloses that the prior art hardware units were limited in the amount of
`
`music that can be stored on each unit. Id. at 1:27–29. The prior art hardware units
`
`also limited a user‘s ability to play, in a user-selected sequence, songs from
`
`different albums. Id. at 1:39–44. In contrast, the ‗573 Patent disclosed the
`
`methods that permitted the download of individual songs rather than albums. From
`
`a sales and distribution standpoint, the ‗573 Patent describes the need to physically
`
`transfer prior art hardware units such as compact discs, cassettes or records from
`
`the manufacturing facility to the wholesale warehouse to the retail warehouse to
`
`the retail outlet prior to final purchase, resulting in lag time between music creation
`
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`and marketing as well as the resulting transfer and handling costs. Id. at 1:38–45.
`
`Before the ‗573 Patent, customers were required to physically go to retail locations
`
`to get selected songs. See id. at 1:55–63.
`
`23. At the time of the invention, there were numerous ways for consumers
`
`to purchase audio and video content. The primary method for consumers to
`
`purchase music was to make a purchase of records, tapes and CDs at a retail store
`
`with cash, check or credit card. Consumers could also order music on hardware
`
`units from catalogues and pay with a check or credit card. Consumers could
`
`subscribe to cable channels and watch video movies (e.g. Showtime, HBO)
`
`broadcasted at certain times of the day. Rather than allowing consumers to
`
`download and store digital video recordings, pay per view allowed access to
`
`content (a code to unscramble content) broadcasted at certain times of the day.
`
`Consumers could also rent video cassettes from video rental stores (e.g.
`
`Blockbuster).
`
`24. The specification of the patent both envisioned and provided for an
`
`improved methodology to electronically sell, distribute, store, manipulate, retrieve,
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`play and protect distortion-free digital audio and video files. Id. at 2:23–44. The
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`benefits taught by the specification include easy recall of stored music for playback
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`as selected or programmed by the user, changing the playback order of stored
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`music based on different criteria, such as music category, artist, or user‘s favorite
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`Case CBM2013-00020
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`songs, and the random playback of music based on the user‘s selection. Id. at
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`2:44–61. The patented method envisioned both a break from and how to break
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`from the distribution of prior art hardware units sold as albums.
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`25. For protection from piracy, the ‗573 Patent discloses that digital audio
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`and video files can be transferred from a source authorized by the copyright holder
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`to sell and distribute the digital files. Id. at Fig. 1 & 2:55–58. In short the claimed
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`invention provides a new method of selling and distributing music over
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`telecommunications lines, that reduces the time between music creation, music
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`marketing and music sale that broke with the dependence of hardware units and
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`―album only‖ sales and play back. Id. at 2:65–3:2.
`
`26.
`
`I understand that claims 1, 2, 4, and 5 of the ‗573 Patent are at issue in
`
`this proceeding. Claim 1 of the ‗573 Patent is directed to the electronic sale and
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`distribution, and storage of digital audio signals. The electronic sale and
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`distribution is accomplished by: (1) transferring money electronically from a
`
`second party to a first party via a telecommunications line; (2) forming a
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`connection, through a telecommunications line, between the first party‘s first
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`memory and the second party‘s second memory; (3) transmitting the desired digital
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`audio signal from the first memory to the second memory via the established
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`connection, all while the second memory is in the possession and control of the
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`second party and at a location determined by the second party; and (4) storing the
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`transmitted digital audio signal in the second memory. ‗573 Patent at 6:4-25.
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`Claim 2 is dependent upon claim 1 and adds that the second party searches and
`
`selects the desired digital audio signal from the first memory after the transferring
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`step. Id. at 6:26-30. Finally, claims 4 and 5 duplicate claims 1 and 2 respectively,
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`but pertain to digital video signals rather than digital audio signals. See id. at 6:38-
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`62.
`
`27. The specification makes abundantly clear that the invention precluded
`
`removable physical storage media as a second memory. See Figure 1 (―hard disk‖
`
`as second memory). It discussed the host of inefficiencies associated with
`
`removable media which was a problem solved by the invention, including that the
`
`removable physical media were prone to limited storage capacity, damage and
`
`deterioration, low sound quality, and copyright infringement; and the sale and
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`distribution of physical media was time consuming, costly, and wasteful. See id. at
`
`1:16-2:9. The ‗573 Patent‘s novel method of electronically selling and distributing
`
`digital video and digital audio signals directly to a non-removable storage medium
`
`rendered these problems moot and rendered unnecessary the time and costs
`
`associated with manufacturing, packaging, shipping, and finally shelving the
`
`removable physical media at a brick-and-mortar location. See id. at 1:38-48, 2:27-
`
`35. At the time of the invention, the non-removable second memory storage
`
`primarily contemplated was a hard disk. This is in contrast to the primary mobile
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`prior art hardware of tapes used in connection with portable tape recorders like the
`
`―Walkman.‖
`
`28. During
`
`the prosecution of
`
`the patent and
`
`the subsequent
`
`reexamination proceedings, none of the claims of the ‗573 Patent were amended,
`
`however, the reexamination helped define the term ―second memory‖ to include a
`
`non-volatile storage portion that is not a tape or CD, or other removable media.
`
`Specifically, the Board of Patent Appeals and Interferences found that the ―‗573
`
`patent describes storing the digital signal in a non-volatile storage portion of the
`
`second memory, where the non-volatile storage portion is not a tape or CD.‖ Id. at
`
`1450. See id. at 1274-76. In the Notice of Intent to Issue Ex Parte Reexamination
`
`Certificate, the Examiner concluded that the ―ordinary and customary meaning of
`
`‗second memories‘ [does not include] cassette tapes, CDs and the like. . . .‖ Id. at
`
`1587. One of ordinary skill in the art would understand that these ‗573 Patent
`
`―second memories‖ exclude removable storage mediums, such as records, tapes,
`
`CDs, cassettes, cartridges, optical disks and floppy disks and are limited to non-
`
`removable memory such as a hard disk.
`
`B. Claim Construction
`
`29.
`
`I understand that the Board has adopted the following interpretations
`
`of terms in the ‗573 Patent.
`
`
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`Case CBM2013-00020
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`
`Term
`
`“first party”
`
`“second party”
`
`“telecommunications lines”
`
`Interpretation
`
`A first entity, whether a corporation or
`a real person.
`
`A second entity, whether a corporation
`or a real person.
`
`An electronic medium for
`communicating between computers
`
`“electronically”
`
`through the flow of electrons
`
`“connecting electronically”
`
`“transferring money
`electronically”
`
`Connecting through devices or systems
`which depend on the flow of electrons
`
`providing payment electronically (i.e.,
`through devices or systems which
`depend on the flow of electrons)
`
`“digital audio signal”
`
`Digital representations of sound waves.
`
`
`
`IV. Level of Ordinary Skill
`
`30.
`
`I believe the level of ordinary skill relevant to the ‗573 Patent would
`
`be an individual with an undergraduate degree in electrical engineering or
`
`computer science and/or approximately 2–4 years of industry experience in the
`
`design of systems and methods for storing and transmitting digital information.
`
`V. Advantages of Patented Methods over prior modes of distributing
`music.
`
`31.
`
`I believe the patented methods had several advantages over the prior
`
`modes of distributing and selling music. In my opinion, there were several benefits
`
`to selling music electronically as claimed and described in the Patents, over the
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`Case CBM2013-00020
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`prior art methods of sale which required the sale of removable physical media—
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`such as records, cassette tapes, cartridges, VHS tapes, optical disks and CDs.
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`Moreover, the cost, warehousing, management of physical inventory, and
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`distribution of such removable physical media made the delivery of single songs
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`impractical. Floppy disks had the same limitations as cassettes, VHS tapes and
`
`CDs, and I was unable to determine any indication from the materials I reviewed
`
`that a floppy disk with music or audio content was ever sold. Further, based on my
`
`experience, I do not believe that a floppy disk was ever a commercial medium for
`
`music, audio or video content.
`
`32. The patented methods have several advantages over the prior modes
`
`of distributing digital music and digital video, including the combination of
`
`deterioration and damage, greatly increased flexibility of retrieval, easier sales and
`
`improved distribution, improved audio fidelity and copyright protection, as noted
`
`in the first 3 columns of the ‗573 Patent.
`
`33. The fidelity of audio and video in removable media is typically
`
`inferior to audio and video in internal computer storage, where the media is
`
`protected. For example, compact discs and DVDs skip or get stuck and have to be
`
`restarted, due to oil left from fingers touching the playing surface or to leaving
`
`them out of their protective shells, where they may be scratched or collect dust.
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`Even a new disk has errors which the player masks or conceals, resulting in a loss
`
`in fidelity.
`
`34. The signal to noise ratio and distortion of even a new audio cassette
`
`tape is inferior to that of digital audio recorded with well-designed equipment. An
`
`audio signal is recorded in a magnetic coating on a tape. Magnetization is
`
`transferred between adjacent windings of the tape on a reel if it is not played for
`
`long periods of time. Eventually one can hear the previous or next loud section of
`
`music during a quiet moment of music. With each playing, the delicate magnetic
`
`tape is pressed against a hard playback head, which slowly wears the coating and
`
`degrades the magnetized audio signal over time. When the tape becomes tangled
`
`in the playback mechanism, it is often stretched or wrinkled. Tape stretching
`
`introduces wow and flutter, and wrinkling of the tape causes distortion in the
`
`music.
`
`35. The signal to noise ratio and distortion of even a new record is inferior
`
`to that of digital audio recorded with well-designed equipment. An audio signal is
`
`recorded in deformations from the spiral groove in a plastic record. The previous
`
`or next loud section of music is sometimes audible in an adjacent groove of quiet
`
`music. With each playing, the record player needle degrades the audio signal, as it
`
`scrapes, effectively filing or smoothing, the deformations in the shape of the plastic
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`groove in the record. Scratches caused by human handling—or placing and
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`bouncing the needle in the groove—produce objectionable clicks and pops. A
`
`record sometimes becomes stuck in a groove, repeating the last few seconds until
`
`someone comes to move the needle to the next groove, interrupting the musical
`
`experience. Audible distortion may result from oil, food, and other residue on
`
`finger tips which touch the surface of the record, or from leaving them out where
`
`they collect dust and may be scratched.
`
`36. The quality of digital audio copied into the Patents‘ interna
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