`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.
`
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00020
`Patent 5,191,573
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`PETITIONER APPLE INC.’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`By: Attorneys/Agents For Petitioner
`
`J. Steven Baughman, Lead Counsel
`Registration No. 47,414
`Ching-Lee Fukuda, Back-up Counsel
`Registration No. 44,334
`James R. Batchelder, Back-up Counsel
`Pro Hac Vice Granted
`
`
`
`
`
`ROPES & GRAY
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`(202) 508-4606 (Telephone)
`(617) 235-9492 (Fax)
`
`
`
`
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`Case CBM2013-00020
`Patent 5,191,573
`
`
`TABLE OF CONTENTS
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`
`The Board Should Not Exclude Exhibit 4255 ¶¶ 7 and 9 ...................................... 2
`I.
`The Board Should Not Exclude Exhibit 4258 .......................................................... 4
`II.
`III. The Board Should Not Exclude Exhibits 4209-4210 .............................................. 5
`IV. The Board Should Not Exclude Disputed Excerpts of Exhibit 4256 .................. 6
`V.
`The Board Should Not Exclude Exhibit 4262 ........................................................ 11
`VI. The Board Should Not Exclude Exhibits 4212-4250 ............................................ 15
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`
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`In response to Patent Owner’s Motion to Exclude (“Mot.”, Paper 68), Peti-
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`Case CBM2013-00020
`Patent 5,191,573
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`tioner1 respectfully submits that the Board, sitting as a non-jury tribunal with adminis-
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`trative expertise, is well-positioned to determine and assign appropriate weight to the
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`evidence presented in this trial, without resorting to formal exclusion that might later
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`be held reversible error. See, e.g., S.E.C. v. Guenthner, 395 F. Supp. 2d 835, 842 n. 3 (D.
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`Neb. 2005); Builders Steel Co. v. Comm’r of Internal Revenue, 179 F.2d 377, 379 (8th Cir.
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`1950) (vacating Tax Court decision for exclusion of competent, material evidence);
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`Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (finding NLRB’s re-
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`fusal to receive testimonial evidence was denial of due process). See also, e.g., Samuel H.
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`Moss, Inc. v. FTC, 148 F.2d 378, 380 (2d Cir. 1945), cert. denied, 326 U.S. 734 (1945)
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`(“Even in criminal trials to a jury it is better, nine times out of ten, to admit, than to
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`exclude, evidence and in such proceedings as these the only conceivable interest that
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`can suffer by admitting any evidence is the time lost, which is seldom as much as that
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`inevitably lost by idle bickering about irrelevancy or incompetence”). Even under the
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`strict application of the Rules of Evidence and arguments regarding the proper scope
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`of rebuttal that SightSound urges here, however, cf. 77 Fed. Reg. 48,612, 48,616 (Aug.
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`14, 2012, Rules of Practice) (“42.5(a) and (b) permit administrative patent judges wide
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`latitude in administering the proceedings to balance the ideal of precise rules against
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`1 All emphases added; abbreviations are as in the Reply (“Pet. Rep.”, Paper 52).
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`Patent 5,191,573
`the need for flexibility to achieve reasonably fast, inexpensive, and fair proceedings”),
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`Petitioner’s evidence is entirely proper (rebutting, e.g., Patent Owner’s attempts to as-
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`sert “secondary considerations” of non-obviousness in its Response (Paper 41), while
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`Patent Owner’s (“PO’s”) objections are baseless, and, indeed, appear in various in-
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`stances to be an unauthorized attempt to sur-reply. See, e.g., Mot. 7 (arguing allocation
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`of burdens); 77 Fed. Reg. 48756 (Aug. 14, 2012, Trial Practice Guide), 48767 (“A mo-
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`tion to exclude must explain why the evidence is not admissible (e.g., relevance or hear-
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`say) but may not be used to challenge the sufficiency of the evidence to prove a particular fact”).
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`I. The Board Should Not Exclude Exhibit 4255 ¶¶ 7 and 9
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`PO objects to two limited aspects of Jeffrey Robbin’s declaration: (1) the
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`phrase in Paragraph 9 referring to “the idea—prevalent in the industry since the mid-
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`1980s—that it would be desirable to sell music and video files over computer net-
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`works,” and (2) Paragraph 7 regarding the fact that iTunes and iTMS include many
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`technological features developed by Apple, and that Apple has been granted patents
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`on many inventions relating to iTMS. Mot. 2-3. PO is wrong on both counts.
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`First, PO provides no support for its assertion that Mr. Robbin’s age in the
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`mid-1980s precludes him from offering personal knowledge about the idea of selling
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`music and videos over computer networks. The fact that Mr. Robbin can trace this
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`knowledge back to when he was in high school does not preclude him testifying to
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`this effect. EX4255 ¶ 1 (facts based on personal knowledge). Nor is this the slightest bit
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`surprising, as young people had good reason to be interested in and learn about the dif-
`2
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`Patent 5,191,573
`ferent ways of obtaining music and movies. Apparently recognizing this, PO—which
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`could easily have asked Mr. Robbin the basis for this statement during his deposi-
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`tion—chose not to. Instead, PO asked narrow questions directed to whether the speci-
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`fication of an Apple patent stated that this idea was prevalent since the mid-1980s, to
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`which Mr. Robbin responded that “the idea was around – certainly much older than
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`that….” EX2176 111:9-112:3. Not liking what it heard, PO attempted to “strike”
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`that answer and moved on. Id. 112:4-9.
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`As to Paragraph 7, Petitioner is not offering Mr. Robbin’s statements as expert
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`testimony, but rather as fact testimony based on (1) Mr. Robbin’s personal knowledge
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`of the technological features of the iTunes client and iTMS as one of the leaders of
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`the development team for iTunes and iTMS, and (2) his personal knowledge of some
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`of the patents granted to Apple for inventions relating to iTMS, for which he is a
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`named inventor. EX4255 ¶¶ 4, 6, 7. PO’s criticism that Mr. Robbin did not offer
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`claim charts to substantiate this paragraph is inapt. To rely on iTMS’s success as a
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`secondary consideration of non-obviousness, it was PO’s burden to show that iTMS is
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`covered by the challenged patent and to show the required nexus between the success
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`of iTMS and any supposedly novel claimed features. Kyocera Corp. v. Softview, LLC,
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`IPR2013-00007, Paper 51 at 32 (“to establish a proper nexus, the patent owner must
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`offer proof that the sales were a direct result of the unique characteristics of the
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`claimed invention”); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“nexus is
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`required between the sales and the merits of the claimed invention.”). Yet PO’s own
`3
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`Patent 5,191,573
`submissions are devoid of that basic evidence: they lack any claim chart, and PO does not
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`even attempt to identify any novel claimed features of its alleged invention, much less
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`prove the required nexus. In sum, PO’s motion to exclude this paragraph as improper
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`expert testimony is moot, and on the basis of lack of personal knowledge is unsupported.
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`II. The Board Should Not Exclude Exhibit 4258
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`Similarly without merit is PO’s argument to exclude the Declaration of Tom
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`Weyer (EX4258). Far from lacking personal knowledge, Mr. Weyer squarely refutes
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`PO’s fanciful allegation that iTMS was built by “copying” from SightSound.
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`The cornerstone of PO’s “copying” allegation is a February 1999 meeting be-
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`tween SightSound’s Mr. Sander and Mr. Hair, and Apple’s Mr. Weyer and Mr.
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`Gavini/Mazzoni.2 In paragraph 10 of EX2110, Sander says that, in that meeting, he
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`and Hair explained SightSound’s patents and a written schematic, and made several
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`requests of Apple, including that it “re-architect their [sic] operating system.” PO
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`then speculates, based on no evidence whatsoever, that when Weyer and Gavini/Mazzoni
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`returned to Apple they must have shared that information with the personnel who
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`built iTMS, and that in turn those people must have “copied” that information in
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`building iTMS. PO’s Response to the Petition (“Resp.”, Paper 41) 16-17, 78.
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`Mr. Weyer’s testimony refutes PO’s speculation. As Weyer explained both in
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`2 In 1999, Mark Gavini/Marco Mazzoni was named Mark Gavini. He has since
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`changed his name to Marco Mazzoni.
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`4
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`Case CBM2013-00020
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`his Declaration and in his deposition: he was “underwhelmed” by the presentation;
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`“They didn’t tell us anything of value,” or discuss “any real technology” or anything
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`“actionable or useful,” “so there wasn’t any follow-up . . . either internally or external-
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`ly”; Weyer immediately told Gavini/Mazzoni that the presentation warranted no fol-
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`low-up, and he understood that Gavini/Mazzoni concurred. Other than that one
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`conversation, Weyer did not communicate about the meeting with anyone at Apple.
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`EX4258 ¶¶ 3-8; EX2173 33:11-34:3, 34:23-35:17, 41:20-42:7, 55:22-56:9.
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`The reliability of Weyer’s testimony is corroborated by the testimony of both
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`Mr. Gavini/Mazzoni and Mr. Robbin. Like Weyer, Gavini/Mazzoni recalls no com-
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`munication with anyone at Apple; and each believes he would remember such a
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`communication if it had taken place. EX4257 ¶¶ 2-3; EX2172 30:19-24; EX2173
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`58:8-23. Correspondingly, Mr. Robbin, who ran the iTMS development team, was
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`not aware of any SightSound-related information while iTMS was being developed,
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`and has no reason to think that anyone on his team knew such information or used it
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`in any way to build iTMS. EX4255 ¶ 8.
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`Accordingly, Mr. Weyer’s testimony is both well-founded and highly probative
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`in refuting PO’s imaginative tale that iTMS was built by “copying” from PO.
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`III.
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`The Board Should Not Exclude Exhibits 4209-4210
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`
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`PO suggests EXS4209-10 are inadmissible because Petitioner “offers no first-
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`hand knowledge to substantiate data” in those patents, ignoring the context in which
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`they were actually presented: Petitioner simply provided the Board with copies of the
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`two patents at issue in Lockwood v. Am. Airlines, Inc., 834 F. Supp. 1246 (S.D. Cal.
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`1993), as cited in Petitioner’s Reply. Pet. Rep. 9. The patents were not offered to
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`prove the truth of those patents’ data (the subject of § 42.61(c), on which PO exclu-
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`sively relies), but rather to indicate what they describe. See Pet. Rep. 9. This is clearly
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`admissible under § 42.61(c), and PO’s argument is meritless.
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`IV.
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`The Board Should Not Exclude Disputed Excerpts of Exhibit 4256
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`Petitioner relies on the declaration of Lawrence Kenswil for his opinions relat-
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`ing to factors relevant to the commercial success or failure of online music services
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`based on his expertise in the music industry. Mr. Kenswil never claimed to be a per-
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`son of ordinary technical skill in the art (though he has supervised such persons) qual-
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`ified to evaluate how the challenged patent claims compare with the prior art or with
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`iTMS, and he is not being offered for such testimony. EX4256 ¶ 10. Mr. Kenswil made clear
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`that he is relying, instead, on Dr. Kelly for such evidence. EX4256 ¶¶ 19, 31, 63, 94
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`n. 72. On the question of what makes an online music business a success or a failure,
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`however, Mr. Kenswil certainly has the requisite expertise to offer expert opinions,
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`and this is what he has properly done in Exhibit 4256. See, e.g., 4 Weinstein’s Federal
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`Evidence (“Weinstein”) § 702.04[1][b] (expertise must relate to issues in dispute);
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`Xpertuniverse, Inc. v. Cisco Sys., Inc., No. 09-cv-157, 2013 U.S. Dist. LEXIS 31327, *11
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`(D. Del. Mar. 7, 2013) (excluding secondary considerations opinions of technical ex-
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`pert on, e.g., commercial success, copying, praise, and industry acceptance due to lack
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`of proper qualifications). The case PO cites in arguing that Kenswil needs “scientific,
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`Patent 5,191,573
`technical, or other specialized knowledge,” (Mot. 6), Sundance, Inc. v. Demonte Fabricating
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`Ltd., 550 F.3d 1356 (Fed. Cir. 2008), has nothing to do with the qualifications for opin-
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`ing on secondary indicia. Rather, it is directed towards the qualifications to testify about
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`obviousness and non-infringement. Id. (expert offered [] testimony on several issues
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`which are exclusively determined from the perspective of ordinary skill”).
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`During Mr. Kenswil’s 25-year career at Universal Music Group (“UMG”), he
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`was an Associate Director for MCA Records, Senior Vice President for the MCA Mu-
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`sic Entertainment Group, Executive Vice President for Business and Legal Affairs,
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`Chief Legal Officer for UMG, President of UMG’s eLabs (an internal unit dedicated
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`to new technology strategies to expand the role of music in consumers’ lives), and
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`Executive Vice President for Business Strategy. EX4256 ¶¶ 7-14. His responsibilities
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`included managing MCA’s music-related businesses, supervising all deal-making activ-
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`ities, and developing and implementing new music products and digital distribution
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`initiatives across all emerging technology and convergence platforms, including Inter-
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`net and mobile systems. Id. During that time, he became familiar with some of the
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`technological issues with implementing a system for the electronic sale of digital au-
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`dio/video that existed even in the late 1990s and early 2000s, including the need for
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`more bandwidth and for a standard, robust compression technology. Id. ¶¶ 9-10. To
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`the extent Kenswil offers opinions regarding these technological issues, he is not
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`opining on technical details, but rather on the commercial effect these issues would have
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`on the success or failure of an online music service. Id. ¶¶ 51-80; see Xpertuniverse, Inc.,
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`2013 U.S. Dist. LEXIS 31327, at *11. Given his abundance of experience in the mu-
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`sic industry examining these issues, Kenswil is well qualified to offer that opinion. To
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`criticize Mr. Kenswil’s expertise, PO ignores his testimony that he is an expert in the
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`music industry, and has “a lot of experience” in the analysis of consumer behavior
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`with regard to music sales. EX2174 36:16-37:13. In fact, Kenswil, as an executive at
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`UMG in the 1990s and 2000s, had the unique opportunity to evaluate both PO’s and
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`Petitioner’s requests for access to UMG’s content for their respective online music business models.
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`Id. 93:15-95:12. For example, he testified that UMG preferred Petitioner’s encryption
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`technology over PO’s because Petitioner’s FairPlay DRM would work with the iPod
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`and thus consumers would consider it superior. Id.
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`PO’s complaint that Mr. Kenswil’s opinions should have provided support in
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`the form of specific survey data turns the burden on its head, and is contradicted even
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`by the law PO itself relies on. Crocs, Inc. v. USITC, 598 F.3d 1294, 1311 (Fed. Cir.
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`2010) makes clear that the patentee must demonstrate a prima facie nexus. Mot. 7. But
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`PO has failed to demonstrate any nexus, and certainly provided no “substantiated and
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`verifiable evidence such as survey data” to support any nexus argument. See Lutron
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`Elecs., Inc. v. Crestron Elecs., Inc., No. 2:09-CV-00707, 2013 WL 4881570, at *9 (D. Utah
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`Sept. 12, 2013) (striking patent owner’s experts’ opinion on prima facie nexus where
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`experts were not qualified and relied on unsubstantiated evidence).
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`Mr. Kenswil’s opinions regarding SightSound’s business operations and the
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`reasons for its failure are based, in part, on his personal interactions with PO when
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`PO approached UMG for a content deal, as well as his review of documents generated
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`and produced by PO in this proceeding admitting that its business was a failure. EX4256
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`¶¶ 34-50, 77-79, 82-83; see also EX2174 93:15-95:12; see also F.R.E. 801(d)(2). Regard-
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`ing the failure of other digital download companies, Mr. Kenswil’s expertise in the
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`music industry qualifies him to opine on whether those other companies had failed,
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`based on his personal knowledge as well as publicly available information and the un-
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`disputed fact that those companies had shut down after a relatively short number of
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`years on the market. EX4256 ¶ 32. PO’s argument that Mr. Kenswil could not rely
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`on this public information because it was hearsay misapprehends the applicable Rules.
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`Whether individually admissible or not (and they are all admissible (see, e.g., F.R.E.
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`803(17), 803(18),3 803(8) (public records of U.S. Department of Commerce (EX4194)
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`and FCC (EX4200); see also F.R.E. 807) the documents of which PO complains
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`(EXS4253, 4194-4195, 4197-4207, 4254, 4259-4260, and 4267, including, e.g., com-
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`mercial publications cited in ¶ 32 of Kenswil’s declaration confirming dates upon
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`which other companies failed) are those that experts in the pertinent field would rea-
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`3 These sources are established as, e.g., “reliable authority” for purposes of Rule 803
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`not only by Kenswil’s reliance, but by the admissions of PO, whose own expert, Mr.
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`Snell, relied on similar sources in forming his opinions (see e.g., EX2153 ¶ 15, citing
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`EXS 2129, 2143 (newspapers, etc.), 2131, 2133-40, 2148 (press releases), 2147 (web
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`pages)).
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`sonably rely on in forming opinions—a use expressly permitted in the Rules. Interwo-
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`ven, Inc. v. Vertical Computer Sys., No. CV 10-04645 RS, 2013 WL 3786633, at *7 (N.D.
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`Cal. Jul. 18, 2013) (“Experts are [] permitted to rely on hearsay evidence . . . so long as
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`an expert in the field would reasonably rely on that information.”).
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`Mr. Kenswil’s references to PO’s expert’s testimony in ¶¶ 90-92 and 95-96 of
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`his declaration provides context to his own rebuttal opinions, and in particular appro-
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`priately identifies which of John Snell’s opinions he is rebutting. See Liberty Mut. Ins.
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`Co. v. Progressive Cas. Ins. Co., CBM2012-00002, Paper 66 at 64 (noting with approval
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`the citation of evidence being rebutted; motion to exclude denied). As such, it is en-
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`tirely appropriate. Tellingly, PO does not object to the two paragraphs in between
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`containing Mr. Kenswil’s rebuttal opinions. EX4256 ¶¶ 93-94.
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`Finally, there also is no basis for excluding Mr. Kenswil’s reliance on EX4103.
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`It was PO that brought up and relied on EX4103 in its Response to the Petition. Resp. 62-
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`63. PO’s Mr. Snell reviewed and relied on it as well. EX2153 ¶15. And Mr. Kenswil
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`quite properly responded to it in his declaration. EX4256 ¶52 n. 28. Contrary to
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`PO’s assertion, Kenswil identified the quotation from Exhibit 4103 as from the mid-
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`1980s and by Jimmy Bowen, who was the President of MCA National and someone
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`with whom Mr. Kenswil had worked closely at the time. EX2174 163:4-164:16. In
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`addition, Kenswil testified that Mr. Bowen had been working with digital files during
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`the 1980s as an executive and a record producer. Id. As the digital transfer of files
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`between studios was already being developed at that time, Bowen recognized its ap-
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`plicability to the consumer market. Id. And even if EX 4103, the reexamination file
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`for the challenged patent, were hearsay (it is not—see F.R.E. 801(d)(2)(B)), it would be
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`entirely appropriate for Kenswil, as an expert, to rely on it. See F.R.E. 703.
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`V. The Board Should Not Exclude Exhibit 4262
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`Dr. Kelly’s Apple and iTMS Opinions. PO’s attempts to exclude Dr. Kelly’s
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`opinions about iTMS simply highlight the shortcomings of PO’s own arguments. As
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`explained in Petitioner’s Reply (Pet. Rep. 10-11), the burden of proving nexus is on
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`PO, and PO chose to rely on an argument that iTMS is “co-extensive” with the chal-
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`lenged claims—while ignoring features of iTMS that are not accused of practicing the
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`challenged claims, and while not even considering, inter alia, Apple patents related to
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`such features of iTMS. Instead, PO argues that Dr. Kelly has somehow not done
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`enough analysis of additional features of iTMS or of Apple’s patents, despite that PO,
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`who bears the burden to show nexus, did no such analysis.
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`Further, PO’s arguments about Dr. Kelly’s opinions concerning the operation
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`of iTMS, and that iTMS does not practice the challenged claims, ignores his testimony
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`about that analysis. PO claims Dr. Kelly did not have support for the role of Akamai,
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`but Dr. Kelly actually testified that his own experience with iTMS and iTunes supported
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`those paragraphs and that Apple confidential information was not needed to under-
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`stand this role. See EX2175 120:18-123:6. Nor do any of Dr. Kelly’s opinions about
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`why iTMS does not practice the challenged claims rely on information about Akamai’s
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`role. Similarly, Dr. Kelly testified that it was not necessary to rely on Apple confiden-
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`tial information or source code for his descriptions of and opinions about iTMS’s op-
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`eration. See, e.g., EX2175 13:15-23, 65:23-68:11. Specifically as to ¶¶ 56-58 of
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`EX4262, which PO claims are unsupported, Dr. Kelly testified that he relied on his
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`own experience using iTMS and the public information cited in ¶ 42. See, e.g., EX2175
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`113:5-115:2; see also, e.g., id. at 116:8-12 (“it wasn’t necessary to rely on Apple internal
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`information. It’s publically disclosed in these documents and can be observed by anyone who cares to
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`-- cares to see this, in actual use of the iTunes Store.”). In criticizing Kelly for relying on pub-
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`lic information related to payment with iTMS, PO similarly ignores that Kelly relied
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`upon his own experience using iTMS (see, e.g., EX2175 13:15-23, 116:2-12) and that, in
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`contrast, PO’s Mr. Snell—while opining that iTMS payments somehow meet the chal-
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`lenged claims (see, e.g., EX2153 ¶ 93)—did not even investigate how payments are made with
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`iTMS, whether via public information or his own use (see, e.g., EX4165 46:18-48:1).
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`In contrast to Mr. Snell’s total lack of investigation, Dr. Kelly testified that he
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`relied not only on publicly available information, but also on his own use of and expe-
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`rience with iTMS, iTunes, and iPods in arriving at his opinions. See, e.g., EX2175
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`13:15-23 (testifying that he relied on information listed in ¶ 2 of EX4262 and “my
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`own knowledge and experience gained through years of examining iTunes and using
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`and analyzing iPods and that type of thing. Being an owner of many generations of
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`iPods, having used probably every iTunes client and so on, I would include that as
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`what I relied on.”); see also EX4262 ¶ 29. Further, the description of the operation of
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`iTMS in Dr. Tygar’s litigation report cited by PO is consistent with Dr. Kelly’s de-
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`scription of how iTMS operates, further undermining SightSound’s attempts to paint
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`Dr. Kelly’s descriptions as unreliable. Compare, e.g., EX2175 Depo Ex. 1 ¶¶ 26-29, (p.
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`135-136, 139) with EX4262 at ¶¶ 34-41.
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`As to PO’s complaint that Dr. Kelly relies on undated screenshots, Petitioner
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`has, pursuant to 37 C.F.R. § 42.64(b)(2) in response to PO’s March 28 objection,
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`submitted a supplementary declaration providing detailed information regarding the
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`screenshots in EX4271. Notably, although these screenshots were the subject of Dr.
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`Kelly’s April 3 deposition, PO never asked about their origin. See, e.g., EX2175
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`110:23-111:5 (“[T]his is the list that Figure 5 shows, payment type and the payment
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`methods associated with the user's Apple ID, and that is something that I captured
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`from a screen shot of [] an actual iTunes client. . . .”).
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`Finally, although PO complains Dr. Kelly did not re-review Dr. Tygar’s litiga-
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`tion report in preparing EX4262, PO identifies no inconsistent information in Dr.
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`Tygar’s report, but points only to Dr. Tygar’s conclusion. As Dr. Kelly noted, Dr.
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`Tygar opined that iTMS practices the challenged claims, while Dr. Kelly has opined
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`that iTMS does not practice the challenged claims. This difference in expert opin-
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`ion—which PO itself identifies as a “conclusion,” not a fact about iTMS’s operation (see
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`Mot. 13)—is not inconsistent information. Because PO identified no inconsistent in-
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`formation within Dr. Tygar’s litigation report, Dr. Tygar’s assertion that iTMS prac-
`
`ticed the challenged claims is no different than Dr. Snell’s identical conclusion, which
`
`is already a part of these CBM proceedings and which PO does not dispute was con-
`13
`
`
`
`
`Case CBM2013-00020
`Patent 5,191,573
`
`sidered here by Dr. Kelly.
`
`Dr. Kelly’s CompuSonics Opinions. PO’s own description of the Stautner
`
`Declaration (EX2121) undercuts its position that the exhibit impacts Dr. Kelly’s opin-
`
`ions regarding the CompuSonics system, since PO makes clear that the Stautner Dec-
`
`laration is relevant only to “public use” of the CompuSonics system, not the public dis-
`
`closures relied upon by Dr. Kelly. As explained in Petitioner’s Reply (Pet. Rep. 5-6),
`
`the CompuSonics disclosures were “‘known … by others,’” under § 102(a), and PO’s
`
`argument that only “public use” of the CompuSonics system could invalidate the chal-
`
`lenged claims is in conflict with §102(a) and Federal Circuit caselaw.
`
`Yet PO’s focus on the Stautner Declaration falls squarely within that incorrect
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`legal construct. PO argues in its Motion to Exclude that Mr. Stautner’s declaration
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`“contains detailed testimony . . . describing the shortcomings of that company’s prod-
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`ucts and business plans.” Mot. 13. And PO similarly complains that Dr. Kelly did
`
`not dispute the configuration of CompuSonics’ devices. Id. PO’s attempts to shift
`
`focus from the invalidating public disclosures relied upon by Dr. Kelly to a “public
`
`use” theory PO prefers—based not on the CompuSonics public disclosures but in-
`
`stead focused on CompuSonics’ business—do not and cannot undercut the reliability
`
`of Dr. Kelly’s opinions. Dr. Kelly’s opinions that the CompuSonics disclosures pub-
`
`licly disclosed the challenged claims were not limited to a theory that CompuSonics
`
`itself practiced the challenged claims. And unsurprisingly, Dr. Kelly confirmed during
`
`deposition that the Stautner Declaration did not change any of his opinions—testimony PO
`14
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`
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`Case CBM2013-00020
`Patent 5,191,573
`conspicuously ignores in its Motion to Exclude. EX2175 144:18-145:5. PO’s Motion
`
`thus attempts to change Petitioner’s arguments and Dr. Kelly’s opinions by ignoring
`
`the public disclosures upon which Dr. Kelly relies, in favor of a former employee’s
`
`testimony about CompuSonics’ business. But Mr. Stautner’s testimony about Com-
`
`puSonics’ business does not and cannot eliminate the CompuSonics public disclo-
`
`sures, nor does it undercut Dr. Kelly’s opinions about those public disclosures.
`
`VI.
`
`The Board Should Not Exclude Exhibits 4212-4250
`
`Finally, PO seeks to exclude Apple patents that relate to iTunes or iTMS, argu-
`
`ing Petitioner has failed to provide an affidavit “by an individual having first-hand
`
`knowledge of how the data was generated.” As explained above, no such declaration
`
`is necessary, as the patents are offered not for the truth of their data but to show what
`
`they describe. § 42.61(c). See Pet. Rep. at 10. PO further argues Petitioner has provid-
`
`ed no testimony establishing that the inventions described in EXS4212-4250 are uti-
`
`lized by iTMS. To the contrary, Petitioner’s expert stated those patents disclose vari-
`
`ous features and aspects of iTMS and iTunes. EX2175 64:6-65:13; 69:11-70:15. And
`
`as PO has the burden of proving nexus, such patents are additionally evidence of what PO
`
`failed to consider in attempting to establish nexus between the ’573 patent and iTMS’
`
`success, and in erroneously concluding that iTMS and the ’573 patent are coextensive.
`
`April 18, 2014
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`
`15
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`
`APPLE INC.
`
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00020
`Patent 5,191,573
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing PETITIONER APPLE INC.’S OP-
`
`POSITION TO PATENT OWNER’S MOTION TO EXCLUDE UNDER 37
`
`C.F.R. § 42.64(c) in connection with Covered Business Method Review Case
`
`CBM2013-00020 was served on this 18th day of April, 2014, by electronic mail upon
`
`Arnold & Porter LLP, counsel for Patent Owner, at david.marsh@aporter.com and
`
`kristan.lansbery@aporter.com.
`
`Dated: April 18, 2014
`
`
`
`
`
`
`
`
`
`By / Megan F. Raymond/
`Megan F. Raymond
`
`
`
`
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