IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:
`104677—5005—802
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`§
`
`§ §
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`§ § § §
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`Inventor: Hair
`
`United States Patent No.: 5,191,573
`Formerly Application N 0.: 586,391
`Issue Date: March 2, 1993
`Filing Date: September 18, 1990
`Former Group Art Unit: 369
`Former Examiner: Hoa Nguyen
`
`For: Method for Transmitting a Desired Digital Video or Audio Signal
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313—1450
`
`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 5,191,573
`PURSUANT TO 35 U.S.C. § 321, 37 CPR. § 42.304
`
`I, Roberto J Gonzalez, make the following Declaration pursuant to 28 U.S.C. §
`
`1746:
`
`1.
`
`2.
`
`I am a paralegal at the law firm of Ropes & Gray LLP.
`
`I provide this Declaration in connection with the above—identified
`
`Covered Business Method Patent Review proceeding that is being requested at the
`
`United States Patent and Trademark Office by Apple, Inc. under 35 U.S.C. § 321, 37
`
`CFR. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`on my personal knowledge.
`
`Apple Exhibit 1145 Page 00001
`
`Apple Exhibit 1145 Page 00001
`
`
`
`Attorney Docket No.:
`104677—5005—802
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`§
`
`§ §
`
`§ § § §
`
`Inventor: Hair
`
`United States Patent No.: 5,191,573
`Formerly Application N 0.: 586,391
`Issue Date: March 2, 1993
`Filing Date: September 18, 1990
`Former Group Art Unit: 369
`Former Examiner: Hoa Nguyen
`
`For: Method for Transmitting a Desired Digital Video or Audio Signal
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313—1450
`
`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 5,191,573
`PURSUANT TO 35 U.S.C. § 321, 37 CPR. § 42.304
`
`I, Roberto J Gonzalez, make the following Declaration pursuant to 28 U.S.C. §
`
`1746:
`
`1.
`
`2.
`
`I am a paralegal at the law firm of Ropes & Gray LLP.
`
`I provide this Declaration in connection with the above—identified
`
`Covered Business Method Patent Review proceeding that is being requested at the
`
`United States Patent and Trademark Office by Apple, Inc. under 35 U.S.C. § 321, 37
`
`CFR. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`on my personal knowledge.
`
`Apple Exhibit 1145 Page 00001
`
`Apple Exhibit 1145 Page 00001
`
`
`
`3.
`
`' Exhibit 1101 hereto is a true and correct copy of United States Patent
`
`No. 5,191,573 to Arthur Hair, with its November 30, 2010 Ex Parte Reexamination
`
`Certificate, which are records of the USPTO to which all parties have access. Page
`
`numbers and an exhibit label have been added to the bottom of this document but no
`
`other alterations have been made.
`
`4.
`
`Exhibit 1102 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,191,573 to Arthur Hair, which was downloaded from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`5.
`
`Exhibit 1103 hereto is a true and correct copy of the reexamination file
`
`history for Application No. 90/007,402, which was downloaded from the USPTO
`
`PAIR website and which is a record of the USPTO to which all parties have access.
`
`Page numbers and an exhibit label have been added to the bottom of this document
`
`but no other alterations have been made.
`
`6.
`
`Exhibit 1104 hereto is a true and correct copy of the transcript of
`
`December 11, 2012 Deposition of Arthur Hair in Szg/fifomd Tet/95., LLC 0. Apple Ina,
`
`No. 11—01292, before the District Court of the Western District of Pennsylvania,
`
`which was received from the Merrill Corporation and certified by Rachel Ferrier, CSR
`
`No. 6948.
`
`Page 00002
`
`Page 00002
`
`
`
`7.
`
`Exhibit 1105 hereto are a true and correct copies of the transcripts of
`
`December 18, 2012 and December 19, 2012 Deposition of Scott Sander in SQbISound
`
`Tea/95., LLC 0. Apple Ina, No. 11—01292, before the District Court of the Western
`
`District of Pennsylvania, which was received from the Merrill Corporation and
`
`certified by Rachel Perrier, CSR No. 6948.
`
`8.
`
`Exhibit 1109 hereto is a true and correct copy of the World Patent
`
`Application WO85/02310,
`
`filed on November 14, 1984 by SoftNet Inc, and
`
`published on May 23, 1985, which was downloaded from the World Intellectual
`
`Property Organization’s PATENTSCOPE search page to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`9.
`
`Exhibit 1110 hereto is a true and correct copy of United States Patent
`
`No. 3,718,906 to Robert W. Lightner, which is a record of the USPTO to which all
`
`parties have access. Page numbers and an exhibit label have been added to the
`
`bottom of this document but no other alterations have been made.
`
`10.
`
`Exhibit 1111 hereto is a true and correct copy of United States Patent
`
`No. 3,990,710 to Robert M. Hughes, which was downloaded from the USPTO PAIR
`
`website and which is a record of the USPTO to which all parties have access. Page
`
`numbers and an exhibit label have been added to the bottom of this document but no
`
`other alterations have been made.
`
`Page 00003
`
`Page 00003
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`
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`11.
`
`Exhibit 1118 hereto is a true and correct copy of United States Patent
`
`No. 4,682,248 to David M. Schwartz, which is a record of the USPTO to which all
`
`parties have access. Page numbers and an exhibit label have been added to the
`
`bottom of this document but no other alterations have been made.
`
`12.
`
`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
`
`Registration No. 1433349, which is a record of the USPTO to which all parties have
`
`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
`
`correct copy of Special Master’s Report and Recommendation on Claim Construction
`
`in SightSound Techs, LLC V. Apple Inc, No. 11—01292, before the District Court of
`
`the Western District of Pennsylvania, signed by Claim Construction Special Master,
`
`Gregory L. Bradley and dated November 19, 2012, which was downloaded from the
`
`PACER website and is a record of the aforementioned District Court (Dkt. No. 142)
`
`to which all parties have access. Page numbers and an exhibit label have been added
`
`to the bottom of this document but no other alterations have been made.
`
`13.
`
`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,
`
`Donetta W. Ambrose on February 13, 2013, which was downloaded from the Public
`
`Page 00004
`
`Page 00004
`
`
`
`Access to Court Electronic Records (“PACER”) website and is a record of the
`
`aforementioned District Court (Dkt. No. 175) to which all parties have access. Page
`
`numbers and an exhibit label have been added to the bottom of this document but no
`
`other alterations have been made.
`
`14.
`
`Exhibit 1136 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,675,734 to Arthur Hair, which was downloaded from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`15.
`
`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
`
`District of Pennsylvania before Honorable Kenneth J. Senson, U.S. Magistrate Judge
`
`in SightSoundCom Inc. v. NZK, Inc., No. 98—118, which was produced by counsel
`
`for SightSound Techs, LLC, the law firm of Arnold & Porter LLC, to counsel for
`
`Apple Inc., Ropes & Gray LLP, during discovery relating to SightSound Techs, LLC
`
`V. Apple Inc., No. 11—01292, before the District Court of the Western District of
`
`Pennsylvania. The document, as produced, bears identification numbers SST—029141
`
`to SST—029293, and bears the certification of Virginia Pease, Official Reporter. Page
`
`numbers and an exhibit label have been added to the bottom of this document but no
`
`other alterations have been made.
`
`Page 00005
`
`Page 00005
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`
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`16.
`
`I make this declaration of my own personal knowledge.
`
`If called to
`
`testify as to the truth of the matters stated herein, I could and would testify
`
`competently.
`
`17.
`
`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed this 5th day of May, 2013, at New York, NY.
`/
`
`
`
`Roberto]. Gonzalez
`
`Page 00006
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`Page 00006
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`
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