SIGHTSOUND TECHNOLOGIES, LLC
`EXHIBIT 2177
`CBM2013-00020 (APPLE v. SIGHTSOUND)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
`____________
`
`Patent Owner’s Demonstrative Exhibits
`
`

`

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`5,966,440
`Oct. 12,1999
`
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`5,19I573
`OTHER PUBLICA'HONS
`“Tcluklivcry BMW Quantified: Would You Believe $20
`Billion?" VdeoPrinI. v4. n12. pl—4; Jun. 22. 1983: ISSN:
`0271-1351 (Abun‘l i: Almhed).
`Smll Mxe. “Elcclmnic Dick-sins in Your Living Room:
`Midi Could Makc Ibc Biggest Yen Vcl for Computer
`Musicilm" IntuWarld. Mn. 75, 1985.
`“Rock Imund the Dlh Bug" by Lydia D0110. III/bulimia!
`Technology. Sep. 1934.
`Jimmy Bowen: Music how‘s Pmphc'l of Clungc. (Thxppcll.
`Linduy, 1986.
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`The Hair Inventions
`
`2
`
`

`

`CompuSonics
`
`What was CompuSonics?
`
`CompuSonics sold “DSPs” (Digital Signal Processors).
`DSPs were “digital stereo recorders that were chiefly
`intended to replace audio tape recorders in home stereo
`systems,” and which recorded onto optical or floppy
`disks. Ex. 2121/2321 at ¶ 8.
`
`“Telerecording capability never existed on any DSP
`that was sold or commercially available by
`CompuSonics.” Ex. 2121/2321 at ¶ 15.
`
`Telerecording was a “concept” that CompuSonics
`tested internally and demonstrated on one occasion.
`“CompuSonics did not plan the use of telerecording in
`any specific or particular type of transaction
`methodology.” Ex. 2121/2321 at ¶ 20.
`
`“Similarly, CompuSonics never developed a system or
`method for selling digital audio or video signals over
`telecommunications lines.” Ex. 2121/2321 at ¶ 21.
`
`All quotes from the undisputed testimony of John
`Stautner (Ex. 2121/2321), CompuSonics’ second
`employee and President of CompuSonics Video
`Corporation.
`* Ex. 2122/2322
`
`3
`
`

`

`The Board Instituted Review Based Upon A
`“CompuSonics system” Unsupported By The Record
`
`Petitioner asserted:
`
`• “CompuSonics produced and sold a line of digital recording and playback devices . . . capable
`of . . . receiving and storing a digital recording from another computer over a communications
`interface. The DSP-1000 Home Digital Disk Recorder is shown in Figure 3.” Declaration of
`John Kelly (Ex. 4132/4334) at ¶ 33.
`
`Board relied upon:
`
`• “Petitioner contends that claims 1, 2, 4, and 5 are anticipated by a computer system developed
`by CompuSonics Corp. and CompuSonics Video Corp. (collectively, ‘CompuSonics’) in the
`1980s, which Petitioner refers to as the ‘CompuSonics system.’” Decision to Institute
`CBM2013-00020 (Paper 14) at 17-18; see also Decision to Institute CBM2013-00023 (Paper
`12) at 19.
`• “A DSP could ‘download digital data from a remote source to a local disk’ (a process
`CompuSonics called ‘[t]elerecording’) and playback the stored digital data.” Decision to
`Institute CBM 2013-00020 (Paper 14) at 19; see also Decision to Institute CBM2013-00023
`(Paper 12) at 20-21.
`
`In fact:
`
`• There was no single “CompuSonics system.”
`• Telerecording capability never existed on any commercially available DSP.
`
`4
`
`

`

`Exhibit 4131/4333 (“Figure 3”) Is Not A DSP 1000
`
`-- The Unrebutted Declaration Testimony of John Stautner (Ex. 2121/2321) at ¶ 26
`
`* Ex. 4131/4333
`
`5
`
`

`

`The CompuSonics DSP 1000 is the first digital audio recorder that makes permanent
`laser recordings on optical disks. Each disk stores one hour of high fidelity stereo or
`eight hours of monaural speech. Applications include home archiving of records
`and tapes, live recording, music editing, random access playback, and
`presen/ation of original master recordings.
`
`
`
`* EX. 2122/2322
`
`Exhibit 2122/2322 Is A DSP 1000
`
`* Ex. 2122/2322
`
`6
`
`

`

`The Board Instituted Review Based Upon A
`“CompuSonics system” Unsupported By The Record
`
`In reply, Petitioner changed course:
`
`• Petitioner now claims it is only relying upon “public disclosures” regarding CompuSonics and
`not “public use.” Petitioner’s Opposition to Patent Owner’s Motion to Exclude (Paper 80/76)
`at 15.
`
`Yet, none of the references anticipate the claims and many are deficient in other respects:
`
`• Exhibit 4131/4333 is not an accurate picture of a DSP 1000. The machine depicted in the
`image was “a mock-up” that featured a nonoperational “telerecord” button. Declaration of
`John Stautner (Ex. 2121/2321) at ¶ 26.
`• Exhibits 4112/4315 and 4117/4320 are not printed publications.
`• Exhibits 4116/4321 and 4318/4323 (Shareholder Letters) were not public at all.
`
`Further:
`
`• Prophetic statements in pop culture magazines (e.g., Billboard and Fortune) do not anticipate
`the patented claims or render them obvious.
`
`7
`
`

`

`Exhibit 4112/4315 Is Not A Printed Publication
`
`
`
`* Ex. 4112/4315
`
`8
`
`

`

`Exhibit 4117/4320 Is Not A Printed Publication
`
`* Ex. 4117/4320
`
`9
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`The Specification
`
`The specification consistently disparages
`removable media.
`
`* ‘573 patent at 1:16-37; see also ‘440 patent at 1:23-44.
`
`10
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`The Specification
`
`The specification consistently disparages
`removable media.
`
`
`
`* ‘573 patent at 2:26-35; see also ‘440 patent at 2:39-48.
`
`11
`
`

`

`
`
`
`
`
`
`
`Slide 12
`
`Currently Subject to an Objection
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`The Specification
`
`Every embodiment disclosed in the
`specification shows the “second
`memory” as a non-removable form
`of memory.
`
`
`* ‘573 patent at Figs. 1, 2; see also ‘440 patent at Figs. 1, 2.
`
`13
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`The Reexamination History
`
`During the prosecution and
`reexamination of the ‘573 and ‘440
`patents, Patentee consistently
`distinguished between removable
`media as taught by the prior art and
`non-removable media as taught by
`Patentee’s invention.
`
`
`* Patentee’s May 25, 2010 Response during the ‘573 Reexamination (Ex. 4103/4306) at 1532.
`
`14
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`The Reexamination History
`
`The Examiner interpreted the “ordinary and customary meaning of ‘second memories’ as not
`including cassette tapes, CDs and the like.”
`
`David Schwartz describing the likeness of
`floppy discs to records, tapes, and CDs:
`
`* Notice of Intent to Issue Ex Parte Reexamination Certificate in the ‘573 Reexamination
`(Ex. 4103/4306) at 1587; Deposition of David Schwartz (Ex. 2124/2324) at 41:18-23.
`
`15
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`Petitioner’s First Argument In Reply
`
`First, Petitioner argues that the “logical reading” of the claims is that they are not limited to non-
`removable media, which is a “newly-minted construction.”
`
`• Petitioner admitted that the Patentee argued during the ‘573 reexamination that “‘second
`memory’ had to be construed as excluding removable media such as CDs or cassette tapes,” and
`that the “Examiner accepted Patentee’s arguments.” CBM2013-00020 Petition (Paper 6) at 27;
`see also CBM2013-00023 Petition (Paper 5) at 30.
`• Further, Petitioner itself asserted that “[t]he originally filed claims were directed to
`electronically transferring binary ‘Digital Audio Music’ via telephone lines from a seller’s hard
`disk to the hard disk of a user in a software configuration allowing for repeated future
`playback.” CBM2013-00020 Petition (Paper 6) at 18-19; see also id. at 2 (identifying “second
`memory” as the “user’s Hard Disk”), 12 (same); CBM2013-00023 Petition at 3, 12, 17.
`• The Board shared Patent Owner’s and Petitioner’s construction: “The patent describes how
`three types of media used for storing music at the time of the invention—records, tapes, and
`compact discs—did not allow for music to be transferred easily and had various problems, such
`as low capacity and susceptibility to damage during handling. . . . The patent describes a
`process by which a user transfers money ‘via a telecommunications line’ to purchase music
`from the agent and the music is transferred electronically ‘via a telecommunications line’ to the
`user and stored on the user’s hard disk.” Decision to Institute CBM2013-00020 (Paper 14) at
`3-4; see also Decision to Institute CBM2013-00023 (Paper 12) at 3-4.
`
`16
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`Petitioner’s Second Argument In Reply
`
`Second, Petitioner argues that the “specification urges reducing inventory and delay associated
`with traditional distribution and sale of music . . . [and] the use of removable hard disks or floppy
`disks to store electronically purchased music would have provided those same benefits.”
`
`• Petitioner ignores the multitude of remarks found in the specification and file history that
`disparage removable media because of its removable nature.
`
`17
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`Petitioner’s Third Argument In Reply
`
`Third, Petitioner argues that Patent Owner’s “expert could not defend his stated position that the
`Claims require ‘non-removable’ media.”
`
`• In the very citation supplied by Petitioner, Mr. Snell did just that:
`
`* Declaration of John Snell (Ex. 4165/4366) at 226:5-227:23.
`
`18
`
`

`

`“Second Memory” Limited To Non-Removable Media:
`Petitioner’s Fourth Argument In Reply
`
`Fourth, Petitioner argues that Patent Owner “urged its customers to store music purchased from its
`website on removable optical memory.”
`
`• Patent Owner urged its
`customers to use “[a]
`minimum of 700 Mb of
`available hard drive space,” as
`this was a “system
`requirement[].”
`• Optical memory was to be
`used as an optional archival
`memory.
`• Patent Owner is not
`obligated to tailor its business
`plan around its patented
`technology.
`
`* Ex. 4167/4368 at 10.
`
`19
`
`

`

`
`
`
`
`
`
`
`Slide 20
`
`Currently Subject to an Objection
`
`

`

`
`
`
`
`
`
`
`Slide 21
`
`Currently Subject to an Objection
`
`

`

`A Single “CompuSonics system” Does Not Exist:
`Deposition Testimony Of Petitioner’s Witnesses
`
`
`
`
`
`
`
`Deposition Testimony of David Schwartz
`
`
`
`
`
`
`
`Deposition Testimony of Dr. John Kelly
`
`* Deposition of David Schwartz (Ex. 2124/2324) at 28:3-12; Deposition of Dr. John Kelly (Ex. 2126/2326) at 85:7-12.
`
`22
`
`

`

`
`
`
`
`
`
`
`Slide 23
`
`Currently Subject to an Objection
`
`

`

`A Single “CompuSonics system” Does Not Exist:
`Declaration Testimony Of John Stautner
`
`-- The Unrebutted Declaration Testimony of John Stautner
`(Ex. 2121/2321) at ¶ 21
`
`
`24
`
`

`

`The Claims At Issue Are Not Invalidated
`By The CompuSonics Art
`
`All of the claims at issue are not invalidated by the CompuSonics art because:
`
`• The CompuSonics art does not teach an electronic payment from a “second party” to a “first
`party.”
`• The CompuSonics art does not teach the consumer using a non-removable memory.
`
`Additionally, claims 2 and 5 of the ‘573 patent are not invalidated by the CompuSonics art
`because:
`
`• The CompuSonics art does not teach the steps of “searching” and “selecting” after the
`“transferring” step, and such a method is not inherently disclosed.
`
`Additionally, claims 4 and 5 of the ‘573 patent are not invalidated by the CompuSonics art
`because:
`
`• The CompuSonics art does not teach transferring a “desired digital video signal” in the
`method described by the ‘573 patent.
`
`Additionally, claims 64 and 95 of the ‘440 patent are not invalidated by the CompuSonics art
`because:
`
`• The CompuSonics art does not teach the consumer using a hard disk.
`
`25
`
`

`

`Petitioner Does Not Apply The Correct
`Standard For Anticipation
`
`Patent Owner’s Response:
`
`* Patent Owner’s Response (Paper 41/38) at 21-22.
`
`26
`
`

`

`Petitioner Does Not Apply The Correct Standard For
`Obviousness Under KSR
`
`Petitioner’s Reply Brief:
`
`* CBM2013-00020 Reply (Paper 52) at 10; see also CBM2013-00023 Reply (Paper 49) at 9-10.
`
`27
`
`

`

`Petitioner Does Not Apply The Correct Standard For
`Obviousness Under KSR
`
`* KSR Int’l Co. v. Teleflex Inc., 550 U.S. 396, 418-19 (2007).
`
`28
`
`

`

`The Board Lacks Jurisdiction To Review
`CompuSonics Under § 103
`
`The Petition fails to assert that the CompuSonics disclosures supported a § 103 finding of
`obviousness.
`
`37 C.F.R. § 42.208(c):
`
`* 37 C.F.R. § 42.300(a) incorporates 37 C.F.R. § 42.208(c) into covered business method patent reviews.
`
`29
`
`

`

`The Claims At Issue Are Not Invalidated
`By The CompuSonics Art
`
`Exhibit 4106/4309 (BILLBOARD Article, Oct. 5, 1985):
`Discloses a “five-and-a quarter-inch ‘supper-floppy’ disk” for the home user; does not disclose a non-removable
`form of memory
`Does not disclose the first party in terms of payment
`
`Does not disclose any “searching” or “selecting” steps (claims 2 and 5 of the ‘573 patent)
`
`Does not disclose any “video” applications (claims 4 and 5 of the ‘573 patent)
`
`* Ex. 4106/4309 at 3.
`
`30
`
`

`

`The Claims At Issue Are Not Invalidated
`By The CompuSonics Art
`
`Exhibit 4119/4324 (FORTUNE Article, Nov. 12, 1984):
`
`Discloses a “floppy disk” for the home user as part of CompuSonics’ fabricated “telerecording” process; does
`not disclose a non-removable form of memory
`
`Does not disclose first party or second party in vague references to “sell direct to consumers” and “ordered by
`credit card”
`
`Discloses CompuSonics’ business plan to “make floppy disks the standard”
`
`Does not disclose any “searching” or “selecting” steps (claims 2 and 5 of the ‘573 patent)
`
`* Ex. 4119/4324 at 1-2.
`
`31
`
`

`

`The Claims At Issue Are Not Invalidated
`By The CompuSonics Art
`
`Exhibits 4120/4321 (Stanford Lecture) and 2128/2328 (Full Transcript of Stanford Lecture):
`Discloses “write once optical disks” in the DSP 1000 for the home user; does not disclose a non-removable form
`of memory
`Does not disclose first party in vague references to “credit card number” (MTV, cable company, or third party)
`
`Does not disclose any form of electronic payment (“say I’ll buy it, add it to my bill”; “credit card number”)
`
`Does not disclose any “searching” or “selecting” steps (claims 2 and 5 of the ‘573 patent)
`
`Does not disclose any “video” applications (claims 4 and 5 of the ‘573 patent)
`
`* Ex. 2128/2328 at 3:18-19, 6:13-20, 33:3-13.
`
`32
`
`

`

`Dependent Claims 2 And 5 Of The ‘573 Patent Are Not
`Inherently Disclosed In The CompuSonics Art
`
`In its Petition, Petitioner ignores the “after the
`transferring” language in its flawed inherency analysis.
`
`* CBM2013-00020 Petition (Paper 6) at 51-52.
`
`33
`
`

`

`Dependent Claims 2 And 5 Of The ‘573 Patent Are Not
`Inherently Disclosed In The CompuSonics Art
`
`In Reply, Petitioner alleges only that “a POSITA would
`have understood that the ‘searching’ and ‘selecting’
`steps may take place either before or after the
`‘transferring money electronically’ step.” Thus,
`Petitioner admits such a step is not necessary and thus
`inherent.
`
`* CBM2013-00020 Reply (Paper 52) at 7.
`
`34
`
`

`

`Claims 4 And 5 Of The ‘573 Patent Are Not Invalidated
`By The CompuSonics Art
`
`Petitioner has cited Exhibits 4116, 4118, and 4119 as invalidating claims 4 and 5 of the ‘573 patent.
`
`Exhibit 4116 (CompuSonics
`Video Application Notes):
`
`* Ex. 4116 at 2-3.
`
`35
`
`

`

`Claims 4 And 5 Of The ‘573 Patent Are Not Invalidated
`By The CompuSonics Art
`
`Exhibit 4118 (U.S. Patent No. 4,682,248):
`
`Exhibit 4119 (FORTUNE Article, Nov. 12, 1984):
`
`* Ex. 4118 at Abstract, 5:52-58; Ex. 4119 at 2.
`
`36
`
`

`

`Secondary Considerations of Non-Obviousness
`
`

`

`Importance of Secondary Considerations
`
`Legal Framework
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.,
`520 F.3d 1358, 1365 (Fed. Cir. 2008)
`
`Alco Standard Corp. v. Tenn. Valley Auth., 808
`F.2d 1490, 1499 (Fed. Cir. 1986)
`
`Rambus Inc. v. Rea, 731 F.3d 1248, 1256 (Fed.
`Cir. 2013)
`
`Secondary considerations are “not just a
`cumulative or confirmatory part of the
`obviousness calculus but constitute[]
`independent evidence of nonobviousness.”
`Secondary considerations “can compel a
`finding of nonobviousness even where
`“standing alone, the prior art provides
`significant support for the [] contention that the
`[] patent would have been obvious.”
`“Such objective evidence . . . helps turn back
`the clock and place the claims in the context
`that led to their invention.”
`
`38
`
`

`

`
`
`The Hair Inventions
`
`
`
`WI9HTM
` flllllllllllllllllllllflllllillfllfllllli
`m] PM Number:
`5,191,573
`
`rus—D-LLnLEIml-Mu‘lm
`
`
`
`United States Pltent {m
`Hair
`[54] mon m mnsmmm Amo
`menu “no on 1mm: SIGNAL
`m]
`Invenlnr: mammmmm.
`h m
`[‘11] WNW ”I
`a. n, In
`[27.] Pild:
`M ”3‘W 1"“
`[5!] uni-unnum- 19- min. in u. Imam
`[n]
`._... Gunman: mo.
`mm mm
`
`. 1mm 2mm.
`[:2]
`.3991”; mm
`was. 34. u. 15.
`[3:]
`
`
`. 37!; 3W"! 41°
`”5““ "1 I'll! EI'I
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`The Hair Inventions
`
`39
`
`

`

`Praise For The Invention
`
`* Exs. 2114/2314, 2115/2315, 2116/2316.
`
`40
`
`

`

`
`Copying: Patent Owner Disclosed Its Patented
`Technology To Petitioner
`
`
`* Ex. 2117/2317 at 1.
`
`41
`
`

`

`Copying: Patent Owner Disclosed Its Patented
`Technology To Petitioner
`
`* Ex. 2117/2317 at 2.
`
`42
`
`

`

`
`Petitioner’s Denial Of Copying Is
`Not Supported By Its Declarants
`
`
`Petitioner’s Reply:
`
`Page 54:2-12
`
`Page 32:1-8
`
`Deposition Testimony of Jeffrey Robbin (Ex. 2176/2377)
`
`Mr. Jobs was involved in the decision to develop a music purchase service
`within Petitioner and that “we had lots of conversations that included
`Steve just around doing a music store.”
`
`Mr. Jobs “would be involved in how we decided to build iTunes, so he
`would work on user interface and feature definition, and just generally
`coming up with ideas of how it should all work.”
`
`* CBM2013-00020 Reply (Paper 52) at 2; see also CBM2013-00023 Reply (Paper 49) at 2.
`
`43
`
`

`

`Commercial Success: The Nexus Presumption
`
`Legal Framework
`
`DeMaco Corp. v. F. Von Langsdorff Licensing
`Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 723 F.3d
`1363, 1372 (Fed. Cir. 2013)
`
`“A prima facie case of nexus is generally made
`out when the patentee shows both that there is
`commercial success, and that the thing (product
`or method) that is commercially successful is
`the invention disclosed and claimed in the
`patent.”
`When the commercially successful product is
`coextensive with the asserted claims, this
`“trigger[s] a presumption of a nexus between
`the [product’s] commercial success and the
`claimed invention.”
`
`44
`
`

`

`Commercial Success: iTMS Is
`Co-Extensive With The Claims
`
`Declaration Testimony of Patent Owner’s Expert John Snell:
`
`* Declaration of John Snell (Ex. 2153/2353) at ¶ 98.
`
`45
`
`

`

`Commercial Success: iTMS
`Practices The Claims
`
`Deposition Testimony of Petitioner’s Expert Dr. John Kelly:
`
`* Deposition of Dr. John Kelly (Ex. 2126/2326) at 55:16-23.
`
`46
`
`

`

`Petitioner’s Expert Confirms The Nexus
`
`Page 59:8-18
`
`Page 86:7-12
`
`Pages 124:14-
`125:20, 143:1-7
`
`Deposition Testimony of Lawrence Kenswil (Ex. 2174/2375)
`
`The claims of Patent Owner’s patent “were certainly necessary for digital
`sales.”
`“[T]here are people who value buying music online” and some iTMS
`consumers make a choice to acquire music in a particular format.
`
`“[T]he number one reason” that digital downloads began replacing
`physical medial sales “was disaggregation. . . . [T]he consumer now had
`the choice to buy one or two tracks for a dollar each rather than having to
`pay 12 to $16 for an entire CD. That was a huge incentive to switch to
`buying that way. . . . [Consumers] enjoyed the flexibility of listening to
`music by their own play lists so they could re-order the songs which --
`having basically a track-by-track jukebox facilitated as opposed to having
`to put CDs in and out of a CD player . . . . [T]hose are the main reasons
`why it took off as it did as industry format.”
`
`47
`
`

`

`Benefits Of The Patented Features
`
`Declaration Testimony of Patent Owner’s
`Expert John Snell:
`
`* Declaration of John Snell (Ex. 2153/2353) at ¶¶ 22, 24.
`
`48
`
`

`

`
`The Patent Owner Was Not Required To Disprove That
`iTMS Embodies Other Inventions
`
`
`Petitioner’s Reply:
`
`DeMaco Corp. v. F. Von Langsdorff
`Licensing Ltd., 851 F.2d 1387, 1394
`(Fed. Cir. 1988):
`
`* CBM2013-00020 Reply (Paper 52) at 10; see also CBM2013-00023 Reply (Paper 49) at 10.
`
`49
`
`

`

`Petitioner’s Argument That The Success Of iTMS Is
`Due To Its Own Patents Is Unsupported
`
`Declaration Testimony of Jeffrey Robbin:
`
`Deposition Testimony of Jeffrey Robbin (Ex. 2176/2377)
`
`Page 41:18-42:9
`
` “Q. Okay. So for the nine patents, you are not certain whether you reviewed them after
`the application stage prior to signing your declaration; correct?
` MS. FUKUDA: Objection to form.
` THE WITNESS: I don’t remember when I last reviewed any one or each of these
`patents. I just don’t remember.”
`
`Page 74:23-75:6
`
` “Q. Did you go back for any of the patents listed in this paragraph 7 and look at the
`claims that were ultimately issued before signing your declaration?
` A. I don’t remember.”
`
`* Declaration of Jeffrey Robbin (Ex. 4255/4413) at ¶ 7.
`
`50
`
`

`

`Petitioner’s Argument That The Success Of iTMS Is
`Due To Its Own Patents Is Unsupported
`
`Declaration Testimony of Petitioner’s Expert Dr. John Kelly:
`
`Page 69:10-18
`
`Deposition Testimony of Dr. John Kelly (Ex. 2175/2376)
`
` “Q. Let’s go back to paragraph 67.
` Did you, for any of the patents mentioned in paragraph 67, which are
`U.S. Patent 7,650,570, U.S. Patent 7,865,927, U.S. Patent 8,136,030, U.S. Patent
`7,853,893, U.S. Patent 7,685,163, and U.S. Patent 8,032,565, generate any claim
`charts to establish that iTunes or iTMS were practicing the claimed invention?
` A. I did not.”
`
`* Declaration of Dr. John Kelly (Ex. 4262/4420) at ¶ 67.
`
`51
`
`

`

`Petitioner’s Expert Opinion On Commercial Success Is
`Unreliable And Unsupported
`
`Not an expert in advertising, marketing, sales, or patent law
`
`Petitioner’s Expert Lawrence Kenswil:
`
`Consumer behavior “not [his] specialty” and “[g]enerally when he needed knowledge about that,
`[he] would refer to others in [his record company] to answer [his] questions”
`No discussions with Apple personnel; did not ask for any internal surveys or sales information
`
`Flawed standard of what is “important to commercial success”
`
`Did not know when many features that he relied upon were released or what impact on sales may
`have been
`
`52
`
`

`

`Petitioner’s Argument That The Success Of iTMS Is
`Due To Later-Added Features Is Self-Contradictory
`
`Deposition Testimony of Lawrence Kenswil:
`
`Declaration Testimony of
`Lawrence Kenswil:
`
`Declaration Testimony of
`Jeffrey Robbin:
`
`* Declaration of Lawrence Kenswil (Ex. 4256/4414) at ¶ 25; Deposition of Lawrence
`Kenswil (Ex. 2174/2375) at 60:11-61:10; Declaration of Jeffrey Robbin (Ex. 4255/4413) at ¶ 9.
`
`53
`
`