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`ll45
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Inventor: Hair
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`United States Patent No.: 5,191,573
`Formerly Application No.: 586,391
`Issue Date: March 2, 1993
`Filing Date: September 18, 1990
`Former Group Art Unit: 369
`Former Examiner: Hoa Nguyen
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`:yz<&u<.yzL@'i3WHaz
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`Attorney Docket No.:
`104677—5005—802
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`Customer No. 28120
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`Petitioner: Apple Inc.
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`For: Method for Transmitting a Desired Digital Video or Audio Signal
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`MAIL STOP PATENT BOARD
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`Post Office Box 1450
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`Alexandria, Virginia 22313—1450
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`DECLARATION OF ROBERTO GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
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`UNITED STATES PATENT NO. 5,191,573
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`I, Roberto Gonzalez, make the following Declaration pursuant to 28 U.S.C. §
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`1746:
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`1.
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`2.
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`I am a paralegal at the law firm of Ropes & Gray LLP.
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`I provide this Declaration in connection with the aboVe—identif1ed
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`Covered Business Method Patent Review proceeding that is being requested at the
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`United States Patent and Trademark Office by Apple, Inc. under 35 U.S.C. § 321, 37
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`C.F.R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
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`on my personal knowledge.
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`Page 00001
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`Page 00001
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`3.
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`I Exhibit 1101 hereto is a true and correct copy of United States Patent
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`No. 5,191,573 to Arthur Hair, with its November 30, 2010 Ex Parte Reexamination
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`Certificate, which are records of the USPTO to which all parties have access. Page
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`numbers and an exhibit label have been added to the bottom of this document but no
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`other alterations have been made.
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`4.
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`Exhibit 1102 hereto is a true and correct copy of the file history for
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`United States Patent No. 5,191,573 to Arthur Hair, which was downloaded from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. Page numbers and an exhibit label have been added to the bottom of this
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`document but no other alterations have been made.
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`5.
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`Exhibit 1103 hereto is a true and correct copy of the reexamination file
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`history for Application No. 90/007,402, which was downloaded from the USPTO
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`PAIR website and which is a record of the USPTO to which all parties have access.
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`Page numbers and an exhibit label have been added to the bottom of this document
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`but no other alterations have been made.
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`6.
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`Exhibit 1104 hereto is a true and correct copy of the transcript of
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`December 11, 2012 Deposition of Arthur Hair in Szég/aifozmd T66/93., LLC 9. Apple Ina,
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`No. 11-01292, before the District Court of the Western District of Pennsylvania,
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`which was received from the Merrill Corporation and certified by Rachel Ferrier, CSR
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`No. 6948.
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`7.
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`Exhibit 1105 hereto are a true and correct copies of the transcripts of
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`December 18, 2012 and December 19, 2012 Deposition of Scott Sander in Szg/atfoz/nd
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`Tea/95., LLC 0. Apple Ina, No. 11-01292, before the District Court of the Western
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`District of Pennsylvania, which was received from the Merrill Corporation and
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`certified by Rachel Ferrier, CSR No. 6948.
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`8.
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`Exhibit 1109 hereto is a true and correct copy of the World Patent
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`Application WO85/02310,
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`filed on November 14, 1984 by SoftNet
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`Inc., and
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`published on May 23, 1985, which was downloaded from the World Intellectual
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`Property Organization’s PATENTSCOPE search page to which all parties have
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`access. Page numbers and an exhibit label have been added to the bottom of this
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`document but no other alterations have been made.
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`9.
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`Exhibit 1110 hereto is a true and correct copy of United States Patent
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`No. 3,718,906 to Robert W. Lightner, which is a record of the USPTO to which all
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`parties have access. Page numbers and an exhibit label have been added to the
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`bottom of this document but no other alterations have been made.
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`10.
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`Exhibit 1111 hereto is a true and correct copy of United States Patent
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`No. 3,990,710 to Robert M. Hughes, which was downloaded from the USPTO PAIR
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`website and which is a record of the USPTO to which all parties have access. Page
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`numbers and an exhibit label have been added to the bottom of this document but no
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`other alterations have been made.
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`Page 00003
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`Page 00003
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`11.
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`Exhibit 1118 hereto is a true and correct copy of United States Patent
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`No. 4,682,248 to David M. Schwartz, which is a record of the USPTO to which all
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`parties have access. Page numbers and an exhibit label have been added to the
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`bottom of this document but no other alterations have been made.
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`12.
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`Exhibit 1123 hereto is a true and correct copy of the Notice of
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`Acceptance of the trademark “Synth—Bank,” registered on March 17, 1987 with
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`Registration No. 1433349, which is a record of the USPTO to which all parties have
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`access. Page numbers and an exhibit label have been added to the bottom of this
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`document but no other alterations have been made.Exhibit 1134 hereto is a true and
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`correct copy of Special Master’s Report and Recommendation on Claim Construction
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`in SightSound Techs., LLC V. Apple lnc., No. 11-01292, before the District Court of
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`the Western District of Pennsylvania, signed by Claim Construction Special Master,
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`Gregory L. Bradley and dated November 19, 2012, which was downloaded from the
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`PACER website and is a record of the aforementioned District Court (Dkt. No. 142)
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`to which all parties have access. Page numbers and an exhibit label have been added
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`to the bottom of this document but no other alterations have been made.
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`13.
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`Exhibit 1135 hereto is a true and correct copy of an Order regarding
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`Claim Construction in SightSound Techs, LLC V. Apple Inc., No. 11-01292, before
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`the District Court of the Western District of Pennsylvania, signed by Senior Judge,
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`Donetta W. Ambrose on February 13, 2013, which was downloaded from the Public
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`Page 00004
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`Page 00004
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`Access to Court Electronic Records (“PACER”) website and is a record of the
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`aforementioned District Court (Dkt. No. 175) to which all parties have access. Page
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`numbers and an exhibit label have been added to the bottom of this document but no
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`other alterations have been made.
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`14.
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`Exhibit 1136 hereto is a true and correct copy of the fle history for
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`United States Patent No. 5,675,734 to Arthur Hair, which was downloaded from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. Page numbers and an exhibit label have been added to the bottom of this
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`document but no other alterations have been made.
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`15.
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`Exhibit 1141 hereto is a true and correct copy of the transcript of the
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`Markman Hearing held on Friday, April 20, 2001 in the District Court of the Western
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`District of Pennsylvania before Honorable Kenneth Senson, U.S. Magistrate Judge
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`in SightSound.Com Inc. V. NZK, Inc., No. 98-118, which was produced by counsel
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`for SightSound Techs., LLC, the law firm of Arnold & Porter LLC, to counsel for
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`Apple Inc., Ropes & Gray LLP, during discovery relating to SightSound Techs, LLC
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`V. Apple Inc., No. 11-01292, before the District Court of the Western District of
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`Pennsylvania. The document, as produced, bears identification numbers SST—029141
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`to SST—029293, and bears the certification of Virginia Pease, Official Reporter. Page
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`numbers and an exhibit label have been added to the bottom of this document but no
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`other alterations have been made.
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`Page 00005
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`16.
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`I make this declaration of my own personal knowledge.
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`If called to
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`testify as to the truth of the matters stated herein, I could and would testify
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`competently.
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`17.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed this 53‘ day of May, 2013, at New York, NY.
`/
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`Roberto Gonzalez
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