store, where the consumer would not have "possession and control." over the
`device, as requiredby the Hair lnventlon. (Tygar Rebuttal at 75-76)
`
`Defendants correctly point out that‘ in interactive Gift Express,
`
`inc. v. _
`
`»
`
`' Compuserve, lnc., 256 F.3d 1323, 1334 _ll=ed.icir. 2001), the court~cons_trued ‘point of
`
`T’ _p:,sale kiosk" to include a location in la" consumershome, contrary to"Dr. Tygar's
`conclusion that it was limited to a business location. However, the Courtin
`, Interactive Gift Express affirmed the lower courts constructioniof theterm
`"umaterial object”. In the Freeny Patent to be la) separate and distinct from the llvllvl,
`lb) removed from,-the IMM after purchase, and (cl intended for use away from the
`point-of—sale location.
`la_. at 1536. The Federal Circuit Court stated, “These three 4'
`
`conditions. .‘. are fundamental to" the meaning of a material object as clearlvand
`
`consistently specified in the patent description." I_(; at 1337. The Court explicitly
`. noted that the 1“material object" on, which the information is recorded “does not
`
`encompass the hard disk component ofa home personal computer’ and “the
`
`material object "must be offered for sale, and be purchasable, at lthel point of sale
`
`b‘locatlonl.l." I_cL at 1338.‘ Since one using the Hair invention purchases only the
`I 7 signals, not the material object on which they are stored, and since the sightsound
`
`Patents specifically reference the consumer's system as incorporating a hard disk,
`the Freeny‘ Patent, as construed by the Federal Circuit Court in Interactive Gift
`Express, arguably teaches away from the Hair invention in atileast twoways. (§e_e,
`
`.,e.g., Claims 13 and 14‘of the ‘.4110 Patent as discussed in the Magistrate's Report at 65.)
`
`'
`
`9. The Hellman Patent:
`
`Page 00426
`
`

`
`This patent was issued inApril 1987 and describes a "software distribution "
`
`system!" (Hayes Decl. Exh. 24, u.s. Patent No. 4,658,093, "the Hellman Patent") The"
`
`-
`
`.
`
`_ patent description concentrateson a mechanical means ofprevehtlng unauthorized
`copying,-That_ls, the digitalsighal downloaded to the customer is never encrypted,
`"per se;'ins'tead,, theconsumer must purchase a specially manufactured base unit
`which hasa built-In decoder key.
`(Hellman Patent, col. 4, lines 37-63.)‘ In order to
`_ playback the software,‘ music or ‘movie the consumer has purchased and
`downloaded, he initiates-another contactto the sellerwho sendsa signal to "unlock"
`% the playback mechanism. In this sense, the Hellman Patent envisions a system more
`like ‘pay per view" television in that the copyright holder controls playback, not the '
`consumer.
`lDefs.' Brief _at 12'.)
`_As Dr. Tygar points out, the need for a special base
`‘unit (as compared to a personal cornputerland the lack of control by the consumer
`
`'
`
`'
`
`-
`
`both teach away from the Hair invention. rrygar Rebuttal at 79.)
`
`lnsum, Dr. Tygar offers precise reasons why the prior art referenced by
`“Defendants both fails to disclose the elements of the Slghtsound Patents and fails
`
`- to render the Asserted ‘claims obvious. someprior art - for instance. the»lRD
`' Reports and the _Hellman Patent- actually teach away from the Sightsound Patents
`and would thus discourage one skilled in the art in 1988 from attempting to develop
`«a system or methodology comparable to the Hair invention.
`.
`I
`l
`' There is another question to be considered, however, and that ls whetherone
`
`skilled inthe art would be motivated to combine the teachings of Akashl, PAN,
`' Compusonics and/or other prior art toarrlve at the Hair l_nvention.j The Federal
`
`'54
`
`Page 00427
`
`

`
`‘
`
`_ circuit has stated: 5
`
`‘Evidence of a. suggestion’, teaching, or motivation to
`combine prior art references may flow, inter alia', from
`the references themselves, the ‘knowledge ofone of
`ordinary skill in the art, or from the nature of theproblem _
`to be solved. Although a reference need not expressly
`teach that the disclosure contained therein should be_
`combined with another, the showing of combinabllity, in
`whatever form, must nevertheless be clear and particular.
`
`‘
`
`'
`
`_ Winner ln_t'i, 2o2 i='._3a at 1348-48 (citations omitted);
`As noted above, the purpose of the "motivation to combine" requirement is -
`to prevent the use of hindsight based onthe invention to defeat its patentability.
`“in other words, the iparty opposing the patent] must show reasons that the skilled '.
`
`‘artisan, confronted with the sameproblems as the inventor and with no knowledge
`vof'th_e claimed invention, would select the elements from the cited prior art
`~ references for combination in themanner claimed." "In re Rouffet, 149 F.3d 1350, ‘
`
`.1357 (Fed. Cir. 1998).
`Dr. Tygar has offered his views as to why none of the’ prior art references,
`readin combination with other priorart, would rendertheAsserted Claims obvious.
`"Moreover, he has put forth several arguments to support the conclusion that some
`prior art references actually teach away from certain sightsound elements such as;
`copy protection or a single unit to control all aspects of the consumers use of the.
`invention. igge, e.g., Tygar Rebuttalat 5_tl-55' (Bowen Article); 64, 66, 67 (IRD Reports);
`75-76 (Freeny lfiatentl; 76-78 lAl<ashi Patent); 78 (PAN); 78 (compusonlcsl; and 79
`
`lHellman).l These reasons are sufficiently cogent and "well-reasoned that a
`
`I factflnder could conclude the sightsound Patents were notobvious. ’
`
`55
`
`Page 00428
`
`

`
`Furthermore, I findthat summary judgment must be denied because there.
`
`‘are underlying unresolved questions of fact with regardto evidence of secondary‘
`
`secondary considerations can "provide
`-considerations of non-obviousness.
`I objective evidence of how the. patented device is viewed ‘in the-marl<etpIace,'by
`
`i=_.von Langsdorff
`those directly interested in the product." 'Dem_ac_o corp. v.
`[Licensing Ltd., 3s1_i=.2d 1387,1391 (Fed. Cir; 1933).. Secondary considerations include"
`
`(1) long-felt but unsolved need; (2) commercial successof the invention; (3) failed
`
`~
`
`T
`
`_ efforts of others; (4) copying by others; (5)Apraise for the invention; (7) unexpected '
`results; (8) disbelief of experts; (9) general. skepticism of those in the art; (10)
`
`j,comm_ercial acquiescence; and (11) simultaneous development. _s_ee Nat‘! steel Car,
`
`Ltd. v. Canadian Pac. Ry.rCo.,'25l_1F. Supp.2d "527, 570 (ED. Pa. 2003), and cases cited
`therein. “Evidence of secondary considerations may often be the rnostprobative
`
`and cogent evidence in the record. It may often establish that an invention
`
`appearing to have been obvious in light of the prior art was not. it is to- be
`
`considered as part of all the evidence, no.t just when the decisionmaker remains in
`
`- doubtafter reviewing the art." Stratoflex, inc. v. Aeroguip Corg., 713 F.2d 530,1 538-.
`
`39 (Fed. Cir. 1983). However,- ‘there must be arnexus between the claimed invention
`' and the secondary considerationsbefore the evidence is relevant to the question _
`
`V
`
`« of obviousness." Nat'l steel car, 1;, citing SIBIA Neurosciences, 225 F.3d at 1358-59.
`
`Plaintiff has presented evidenceshowing. that not
`
`later. than 1987,-
`
`,‘ Compusonicshad abandoned its efforts to commercialize the music downloading
`
`Page 00429
`
`

`
`-industry" and, in fact, Dr, Tygar opined that none of-the systemsln"co‘rporatlng
`prior art survived as a_c'onsumer oriented mass market distribution system "for
`
`. digital music distribution.
`
`lTygar Rebuttal at 80.) AAS he also noted, the IRD Reports .
`
`‘
`
`V reflected a general skepticism in 1986 for the viability ofia teledeliverysystem for.
`
`digital audio signals.’ At the same time, numerous‘ articles d'at_in'g .fron"1the 19905.
`
`show an ongoing interest in such services, establishing the fact that therewas a
`
`long-felt need for the invention. iP|f.'S Exh. C, Rebuttal Report of Frederic’ R. Miller,
`
`“Miller Rebuttal," at‘5.l we also know from the history of this case that while.the"440
`
`Patent application was still pending, sightsound accused N2l( of illegally copying.
`
`7
`
`H technology covered by its earlier Patents.
`
`on the other hand‘, Defendants essentially omit any discussion of secondary
`
`_ considerations from their Brief in support of the'Motion for summary Judgment.
`
`"in their Reply 'Brief,'.their argument on this point is
`
`limited to a conciusory
`
`“sightsound hasgnot presented relevant evidence of secondary"
`statement:
`I considerations because it failed to establish a nexus between the merits of the
`
`V-ffciaimed invention and the evidence offered." iDefs.' Reply. Brief ates, citing Cable
`Electric Prods.
`inc. v. oenmark lnc., 77o r.2d 1015,1027 iFed. Cir. 1995);” siolund v
`' Musia'nd,‘8a7 F.2d 1573 (Fed, Cir. 19%); windsurfing lnt‘l Inc., supra.) I have reviewed
`
`"
`
`" A former principal in Compus_onlcs, David Schwartz, testified at his -deposition that -
`sometime in 1986‘or1987,'hls company "gave up on trying to commercialize‘ telerecording (which
`he defined 85 DUYIHQ, selling and databasing music libraries for sale on demand) (F|f.'S Exh. M,
`Deposition of David Schwartz. at 97.) He-explained that record companies in -the United States,
`. Europe and Japan “were not receptive to the concept in any way, shape, or form.‘ (LI; at 142.)
`
`7' Overruled on other grounds by Midwest lndus., inc. v. Karavan Trailers, inc.,- 175 F.3d 1356,
`y
`1358 (Fed. Cir. 1999).
`-
`A
`‘
`s
`
`57
`
`Page 00430
`
`

`
`the cited cases, despite not having a_ clear idea of how 0efendants' sin_gie—se_nten_ce
`
`argument relates tothern, and find that all three. concentrate on. commercial,
`
`‘success, only one of many secondary considerations which may be offered ’by.a
`
`patentee. See Cable Electric,i_cLat1027, holding that for commercial success"to_have _
`
`“true relevance" to the question of nonobvlousness, that successmust be shown to
`be due to thenature of the patented subject matter, rather than to economic and A
`
`'
`
`a
`
`‘
`
`commercial factors unrelated .to the technical quality of the patented subject.
`
`% matter; sioiund, i_<; at 1582, concluding that evidence of commercial success was
`
`irrelevant because theaspect of the invention to which its success was attributed
`
`.' was notpart of the claimed invention. windsurfing lnt'i,'which also discusses
`A commercial success, focuses on the weighta district courtlmay p.roper_Iy give to
`secondary considerations, concluding thatthe yweightshouid co_r_relate to the
`
`, objective evidence provided ‘to support them.‘ 782 F.2d at 1000.
`
`Here‘! have noted Plaintiff's arguments that at the time the sightsound
`
`% Patents were issued, there were numerous examples of secondary considerations:
`
`_ copying, skepticism on the part of those skilled in the art as to the viability of such
`
`:a system, long-felt but'unsatisfied needs, and unsuccessful attempts by others to
`
`solve the problem underlying the claimed invention. Given nothing substantive
`
`4
`
`from Defendants in their Reply Brief to refute these claims, l accept" them as
`
`.present_edby Plaintiff fo_r purposes of deciding this summaryjudgment motion."
`
`5. conclusion
`
`Conflicts in the evidence on factualissues are not to be resolved on summary
`
`58
`
`Page 00431
`
`

`
`RECORDATION FORM COVER SHEET
`
`PATENTS ONLY
`
`1. Name of conveying party(ies)/Execution Date(s):
`
`2. Name and address of receiving party(ies)
`
`Sightsound Technologies, inc. (Delaware Corp)
`
`Name: DMT Licensing. LLC gflelaware LLC)
`Internal Address:
`
`Execution Date(s)
`10 November 2005
`Additional name(s) of conveying party(ies) attached?[j Yes I No
`
`3. Nature of conveyance:
`
`Street Address: One Independence Way
`
`Assignment
`
`[1 Merger
`
`City:
`
`Princeton
`
`Ci Change of Name
`[3 Security Agreement
`C] Government Interest Assignment
`C] Executive Order 9424, Confirmatory License
`
`State: New Jersey
`
`Country: US
`
`Zip: 08540
`
`E]Other Additional name s 8. address es attached? D Yes
`
`No
`
`4- APP"¢3ti°" 0' Patent "Umb9|'(S)3
`A. Patent Application No.(s)
`09/286.892
`1o/320395
`1o/532,155
`
`D This document is being filed together with a new application.
`B. Patent No.(s)
`
`5.191.573
`5,675,734
`5,966,440
`
`6.721.491
`6,615,349
`6.014.491
`
`5. Name and address to whom correspondence
`concerning document should be mailed:
`
`6. Total number of applications and patents
`involved: I]
`
`Additionalnumbers attached? |:]Yes No
`
`Name‘ a""””P" ""°"‘“"“”"S
`
`Internal Address: Drinker Biddle 8- Reath LLP
`
`Street Address: One Logan Sguare
`15th and Che
`streets
`
`City: Philadel ma
`
`State: Penns vania
`Phone Number: 215.988.3381
`
`ZipI19103-6996
`
`Fax Number: 215.988.2757
`_
`y
`.
`Email Address: matthewmcvvilliams
`
`dbr.com
`
`7. Total fee (37 CFR 1.21(h) & 3.41) $ 360.00
`D Authorized to be charged by credit card
`E] Authorized to be charged to deposit account
`Enclosed
`E] None required (government interest not affecting title)
`
`8. Payment Information
`a. Credit Card Last 4 Numbers
`Expiration Date
`
`b. Deposit Account Number
`
`Authorized User Name
`
`9' s'9"at""'°‘
`
`Signature
`
`December 26, 2005
`Date
`
`Matthew P. McWi||iams, Re .No. 46,922
`
`sheet, attachments, and documents:
`Name of person Si "in
`Documents to be recorded (Including cover sheet) should be faxed to (703) 306-5995. or mailed to:
`Mail Stop Assignment Recordatlon Services, Director of the USPTO, P.O.Box 1450, Alexandria, V.A. 22313-1450
`
`Total numberofpages including GOVNE
`
`Page 00432
`
`

`
`PATENT ASSIGNMENT AGREEMENT
`
`THIS PATENT ASSIGNMENT AGREEMENT (this “Agreemen ”), is made asof this.
`Iflflday of _Mj_em£fi, 2005 by and between Sightsound Technologies, Inc., a Delaware
`corporation (“Assignor”), and DMT Licensing, LLC, a Delaware limited liability company
`(“Assiggee”). Assignor and Assignee are sometimes referred to herein as a “P
`' or
`collectively as the “Parties.”
`
`!V.l1‘EE§§E.II_1=
`
`WHEREAS, Assignor is the owner ofthe entire right, title and interest in- and to an ofthe
`patents and patent applications (including any and all inventions and improvements disclosed
`and described therein‘) set forth on Exhibit A hereto (the “Patents”); and
`
`WHEREAS, Assignee desires to obtain all of Assignor’s right, title and interest in, to and
`under the Patents.
`'
`'
`
`. NOW THEREFORE, in consideration of the premises and mutual covenants contained in
`this Agreement and in the Asset Purchase Agreement between Assignor and Assignee, the
`receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
`
`its
`transfers and delivers to Assignee,
`l. Assignor hereby conveys, assigns, sells,
`_
`successors and assigns, all of its right, title and interest throughout the world in, to and under the
`Patents, including the underlying inventions described therein and any and all United States or
`foreign reissues, divisions, renewals, extensions, provisionals, continuations and continuations-
`in-part thereof and substitutes therefor, all letters patent of the United States which have been or
`may be granted thereof and all foreign counterparts thereof, including any reissues or extensions
`of letters patent granted thereon and any and all rights corresponding to any of the foregoing
`. throughout the world, all priority rights rthelntemaiional Convention for the Protection of
`Industrial Property for every member country (and any other international convention or treaty),
`any and all accounts, contract rights, warranties, litigation claims and rights, including the right
`to sue for and collect upon all claims for profits and damages as a result of future or past
`infringement, and other general intangibles of Assignor related to any of the. foregoing, in each
`case whether now existing or hereafter acquired or created, whether owned, leased or licensed
`beneficially or of record and whether owned,
`leased or licensed individually, jointly or
`otherwise, together with the products and proceeds thereof (including license royalties and the
`-proceeds of infringement suits from the date of this Agreement forward), all payments and other
`distributions with respect thereto fi'om the date of this Agreement forward, and the right to frilly
`and entirely stand in the place of Assignor in all matters related thereto.
`
`2. Assignor hereby conveys, assigns, transfers and delivers to Assignee, its successors
`and assigns, all of its right, title and interest throughout the world in and to any and all lab notes,
`prototypes, draft patent applications, correspondence with the United States Patent and
`Trademark Office or any foreign patent office, nondisclosure agreements, invention agreements
`and nonoompete agreements, to the extent such materials relate to the Patents.
`
`3. Assignor hereby requests the Commissioner for Patents (the “C.omrnissioner") to
`record this assignment of the Patents to Assignee. Assignor hereby further requests the
`
`Page 00433
`
`

`
`Commissioner to issue any and all letters patent of the United States resulting fiom applications
`among the Patents or derived therefrom to Assignee as assignee of the entire interest. Assignor
`hereby covenants that the Commissioner has full right to convey the entire interest herein
`assigned, and that Assignor has not executed, and will not execute, any agreements inconsistent
`herewith
`
`4. Assignor further agrees that it shall on the date hereof and from time to time
`thereafier, at the request of Assignee, perform‘ or cause to be performed such acts and execute,
`acknowledge and deliver at the request of Assignee, such documents as may reasonably be
`required to evidence or efi‘ectnate the sale, conveyance, assignment, transfer and delivery to
`Assignee of the Patents or for the performance by Assignor of any of its obligations hereunder.
`
`5. This Agreement will be binding upon and will inure to the benefit of the parties ‘
`hereto and their "successors and assigns, and no person other than Assignor, Assignee or their
`respective successors and assigns shall have any rights under this Agreement or the provisions
`contained herein.
`
`6. Anexecuted copy of this Agreement may -be filed with the proper governmental or
`regulatory authority or public body by Assignee at any time.
`
`7. This Agreement shall be governed by and construed in accordance with the laws of
`V
`the State of New York without regard for the conflicts of laws. principles thereof, except that if it
`is necessary in any other jurisdiction to have the law of such other jurisdiction govern this
`Agreement inorder for this Agreement to be efl‘ective in any respect, then the laws of such other
`jurisdiction shall govern this Agreement but only to such extent.
`
`[SIGNA TURE PA GE FOLLOWS]
`
`Page 00434
`
`

`
`1N WITNESS WI IEREOF. the Pzuttics have caused this Agreement. to be duly executed,
`as of Lhe dale first above written.
`
`. ASSIGNEE
`
`B y:
`Nume: Peusf Mollcr
`Title: Vice President
`Date: Nnvemher_ 10. 2005
`
`ASSIGNOR
`
`C
`
`Tau : President and Chief Executive otrm
`.
`Om M on lo!-LIJ-la o{- Wnflibl v/.1 ,v_,, 4, Date; November 10, 2005
`SS3
`(‘Am
`at 1x us Mn
`
`0%‘ day of . 2005. before me personally came
`On LIE:
`.
`. Q
`. to me known (gr Halisfacltrrily pnwenk who being by
`SEO?‘
`-
`me duly sworn. did depose and say that he is the \ l'1hd5n+‘ and C6
`of
`Assignor, the corporation described in. and which executed the foregoing instrument. and that he
`was fully authorized to exeeute this Patent Assignment Agreement on behalf of said corporation.
`
`NOBIBISSZI
`
`otausbmmAfleorWC°m‘V
`. a¢mm.12.m8
`ennsylvania Association 01 Nolifies
`
`°'“°’l“fl
`
`-‘°“'3N=°J.
`
`B9EW_B£BIS
`
`WISNBDTI E=“’°-’.-I VHS! SBB2-BI—nDN
`
`Page 00435
`
`

`
`EXHIBIT A
`
`PATENTS AND PATENT APPLICATIONS
`
`. A/V eC'ammerce Patents:
`- Coung
`United States
`01]
`United States
`02]
`United States
`03]
`04 Ihnwdsmks
`
`I
`
`A/V Compression Patents:
`United States
`01]
`02]
`03}
`04]
`05]
`06]
`07]
`08]
`09]
`10]
`11]
`12]
`13]
`14]
`15]
`
`Singapore
`New Zealand
`Australia
`China '
`United States
`
`Hong Kong
`Australia
`Brazil
`Canada
`
`,China A
`European Patent Office
`Japan
`United States
`
`World Intellectual Property Organization
`I idppliedEncryption Patents:
`New Zealand
`01]
`United States
`02]
`03]
`04]
`05]
`06]
`07]
`O8]
`09]
`10]
`11]
`12]
`13]
`14]
`15]
`16]
`17]
`18]
`
`Taiwan
`Singapore
`Austmlia
`Austia
`
`Belgium
`Cypress
`Denmark
`Finland
`France
`
`Germany
`Greece
`Ireland
`
`Italy
`Lichtenstein
`
`Luxembourg
`Monaco
`
`Number
`
`5,191,573
`5,675,734
`5,966,440
`09/286,892
`
`¢014A91
`67158
`337344
`752057
`1252917
`
`6;72L491
`1025208
`6341198
`9811455
`2279853
`11211240
`0965128
`2002508850T
`2005038535
`
`9843405
`
`Issued
`Issued
`Issued
`Issued
`
`-
`
`Application In Process
`
`Issued
`Issued
`Issued
`Issued
`Issued
`Issued «
`Issued
`
`Application In Process .
`Application In Process
`Application In Process
`Application In Process
`Application In Process
`Application In Process
`Application In Process
`Application In Process
`
`50287]
`
`6515349
`574641
`93860
`776005
`EP2000300727
`EP2000300727
`EP2000300727
`EP2000300727
`EP2000300727
`EP2000300727
`EP2000300727
`EPZOO0300727
`EP2000300727
`EP2000300727
`EP2000300727
`EP2000300727
`EP2000300727
`
`Issued
`Issued
`Issued
`Issued
`Issued
`
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`
`A-l
`
`Page 00436
`
`

`
`19]
`20]
`21]
`22]
`23]
`24]
`25]
`26]
`27]
`28]
`29]
`30]
`31]
`
`Netherlands
`
`Portugal
`Sweden
`
`Spain
`,
`Switzerland
`United Kingdom
`China
`
`Hong Kong
`Australia
`Brazil
`Canada
`
`Japan
`United States
`
`EP2000300727
`1392000300727
`1=.1>20o0300727
`EP20003O0727 ‘
`
`EP2000300727
`EP2000300727
`CNl269549
`I-IK1028466
`1481000
`0000702
`
`2299056
`2000259478
`2004025037
`
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Pending
`Application In Process
`Application In Process
`Application In Process
`Application In Process
`Application In Process
`
`Peer-to-Peer Patents:
`01] European Patent ;Office
`02]
`Japan
`03] World Intellectual Property Organization
`
`’
`
`1332428
`IP20045 l 3453T
`239253
`
`Application In Process
`Application In Process
`Application In Process
`
`All Intellectual Property to be free of any liens or encumbrances.
`
`Page 00437
`
`

`
`-
`;:m'£,°‘“'
`oMeNo.oear-oon(axp._'
`
`.‘
`~
`
`V
`
`'
`
`..
`
`.
`
`10-20-1995
`H‘.
`3‘
`miiiimi
`133375359
`
`PARTMENTOFGOMMERC
`..
`"5 ‘*5 p.,.e....m.........mc.
`'\..
`«L:
`.
`ocuments or copy thereof.
`
`1_ Name of convaymg pmy(-.93)-'
`Arthur R. Hair
`
`(,1
`
`V
`
`Auumonnr namo(s)oroonveyingpany(iee) attached? 0 Yes di No
`
`2. Name and address of receiving pany(ies)
`Name-_ Parsec Sight./Sound, Inc.
`internal Address:
`
`3. Nature of conveyance:
`
`in Assignment
`
`D Merger
`
`Sireemddress:
`
`1518 Allison Drive
`
`D Secumy Agreemem
`
`0 Change omams
`
`D °‘hm_
`
`Cay: Upber St. Clairggate; PA
`
`z|p;lS2lsl
`
`E’‘°°““°" 93”‘
`
`Se tembe‘ 20’ 1995
`
`Auamonainamaxsu. addres.s(es)etiec.hed7 D Yes Ki No
`
`4. Application number(s) or patent number(s):
`
`if this document is being fried together with a new application. the execution date oi the application is:
`
`A. Patenmppiication No.(s)_
`
`B. Patent No.(s)
`5 , 191 , 573
`
`Ariditienalnunrbereairached? D Yes E9 No
`
`5. Name and address of pany to whom correspondence
`
`conceming document should be mailed:
`
`6. Total number of applications and patents involved:
`
`-
`
`'
`
`Name: Ansel M. Schwartz
`inzemai Address:
`
`7. Toiaifee (37 CF!-33.41)............,$
`qg Endosed
`
`40.00
`
`— D Authorized to be charged to deposit accoum
`
`Street Address: 425 N- Crai Street
`Suite 301
`_________________.______________j_.
`
`8. Deposit account number:
`
`Pittsburgh
`
`Slate:
`
`(Miach duplicate copy of me page if paying by deposit account)
`PA ZIP: 15 213
`oo N01’ use me srmc:
`
`City:
`_
`050 an 10/15/95 5;91nu3
`‘ N
`‘ I
`9. Sretementend signature.
`To the best of my knowledge and belief, the foregoing irwlorrnaiion ls_true and correct and any attached copy /5 a this copy at
`the original document.
`-
`,
`i
`T
`Ansel M. Schwartz
`"
`‘
`L/»~J‘.ZlJ\/f
`
`Name of Person Signing
`
`Tore! number of pages including cover sheet. attachments. and document:
`
`Men eocumenteloberecordodwmrrequirod covereheet lmomwflonrnz
`commlu|or\ero1Peterrtn&1’redermriu. Box
`Wuhlngton.D.C. 20231 PA'l‘l §N'l'
`RI-Z1.-Il..: 7656 l*'l{/\l\/11:‘: 0701
`
`Page 00438
`
`

`
`Attorney’: Docket No.
`
`H-AIR
`
`PATENT
`
`For. 3 U.S. and/or 2 Foreign Rights
`For. Ci U.S. Application or
`U U.S. Provisional Application
`For: X] U.S. Patent
`For. B PCT Appiication
`By: X3 Inventoris) or :1 Present Owner
`
`ASSIGNMENT OF INVENTION
`
`in consideration of the payment by ASSIGNEE to ASSIGNOR of the sum of One Doliar
`($1.00). the receipt of which is hereby acknowledged, and for other good and vaiuabie
`consideration,
`ASSIGNOR:
`
`('IrWBMOI'(B) or personts) or
`en(ity(ies) who own the
`invention)
`
`Arthur R’ Hair
`(type or print name(s) of ASSlGNOR(S))
`
`1518 Allison Drive
`Address
`
`Upper St. Clair, PA
`
`152b1
`
`Nationality
`
`(if assignment is by person or entity to whom invention was previously assigned and
`this was recorded in PTO, add the following)
`
`Recorded on
`
`Reel _________.____:______
`Frame
`
`hereby sells. assigns and transfers to
`
`‘SIGNEE:
`
`Inc .
`Parsec Sight/Sound,
`(type or print namo(s) of ASSIGNEE(S))
`
`1518 Allison Drive__
`Address
`
`Upger St. Clair, PA
`
`15241
`
`and the successors. assigns and legal representatives of the ASSIGNEE
`
`Nationality
`
`(Assignment of invention [18-.1]—page 1 at 3)
`
`P/\'l'l€N’l'
`
`Ri—:i~-21.: 7656 l‘-‘R/\l\/ll-Z: 070;
`
`Page 00439
`
`

`
`(complete one of the following)
`the entire right. title and interest
`
`ix:
`
`percent (.;_.___%) interest
`D an undivided
`for the United States and its territorial possessions
`
`(check the following box, If foreign rights are also to be assigned)
`
`and in all toreign countries, including all rights to claim priority,
`[3
`in and to any and all improvements which are disclosed in the invention entitled:
`METHOD FOR TRANSMITTING A DESIRED DIGITAL VIDEO OR AUDIO SIGNAL
`
`Name of inventorlsi ___._________._'“'”“’1'3- H31’ __________.__________j_
`
`______.__.._.____..____..__.._________j_..___._._.___
`
`(check and complete (8).
`and which is found in
`
`(D). (c).
`
`id).
`
`(9).
`
`if) or (9))
`
`(a) D U.S. patent application executed on even date herewith
`(b) D U.S. patent application executed on
`
`(C)
`
`III U.S. provisional application naming the above inventor(s) for the above-entitled
`invention.
`
`D Express
`
`mail
`
`label
`
`no.:
`
`Mailed:
`
`To comply with 37 CFR 3.21 tor recordal of this assignment, I, an ASSIGNOR
`signing below, hereby authorize and request my attorney to Insert below the filing
`date and application number when they become known.
`U.S. application no.
`I
`tiled on
`
`/__:______
`lntemational appliciation no. PCT]
`U.S. patent no. _§_t.l;9_1_a.2l3__.___ issued £Q___
`i_.-’ A change of address to which correspondence is to be sent regarding patent
`maintenance fees is being sent separately.
`
`(also check (9). if foreign applicationls) is also being assigned)
`(9) D and any legal equivalent thereof in a toreign country, including the right to claim
`priority.
`
`and. in and to. all Letters Patent to be obtained for said invention by the above application
`or any continuation. division, renewal. or substitute thereof, and as to letters patent any
`reissue or re-examination thereof
`
`ASSIGNOR hereby covenants that no assignment, sale, agreement or encumbrance has
`been or will be made or entered into which would conflict with this assignment;
`
`(Assignment ol invention [16-3]-page 2 or 3)
`
`P/\‘l‘l'.-lN‘l‘
`
`RI‘.-Zl-21.: 7656 I"-‘RAIVII-1; 0703
`
`Page 00440
`
`

`
`ASSIGNOR further covenants that ASSIGNEE will. upon its request, be provided promptly
`with all pertinent facts and documents relating to said Invention and said Letters Patent
`and legal equivalents as may be known and accessible to ASSIGNOH and will testify as
`to the same in any interference, litigation or proceeding related thereto and will promptly
`execute and deliver to ASSIGNEE or its legal representatives any and all papers. instruments
`or alfidavits required to apply for, obtain. maintain. issue and enforce said application. said
`invention and said Letters Patent and said equivalents thereol which may be necessary
`or desirable to carry out the purposes thereo.
`lN WITNESS WHEREOF. Wile have hereunto set hand and seal this
`
`2 L‘
`
`day of [me of signing).
`
`(If ASSIGNOR is a legal entity, complete the following lnfomrallon)
` _____:
`(typeorpnhrtnenarneallheaboveperson
`authorized to sign on behalf of ASSIGNOR)
`
`essay. I! the asslgnment ls nomrized or legalized. then
`. 35 use 261. Use next page I! nolarlzation is desired.
`D Notarization or Legalization Page Added.
`
`(Asslzrnment of invention [18-3)——oego 3 cl 3)
`
`RJ:IC1()RJ')E5l'): 10/U2/1995
`
`l’A’l“}f'-2N'Zl'
`I.{)‘€F-2].: 7656 l:<'R/~\!\/H55: 0704
`
`Page 00441
`
`

`
`FORM PTO-1595
`(Has. 6-93)
`om No. 0651-0011 (exp.
`
`-
`
`-«
`
`Tab settin o c: I: -\_.
`'
`vi,
`To the Honorabl ~-
`
`3
`
`.-
`
`3
`
`1_ Name 0f conveying partyfles);
`Parse‘: Sight/Sound’ Inc'
`
`Additional name(s) of conveying party(ies) attached? D Yes H No
`
`3. Nature of conveyance:
`
`'
`
`.
`
`U.S. DEPARTM NT OF COMMERCE
`_
`_ Patent and Trademark Otfice
`
`V
`
`V
`
`2. Name and address of receiving party(ies)
`Name:
`Sight:Sound.com Incorporated
`
`Internal Address:
`
`D Assignment
`
`D Merger
`
`5"-ea‘ Address;
`
`733 Washington Road,
`
`0 Security Agreement
`0 other
`
`I3 Change of Name
`
`Suite (‘O0
`Mt. Lebanon
`
`sate: PA
`
`Execution Date: ———-?e—-?——-—--
`
`~
`
`Additionainamets) 8 _address(es) attached? El Yes 5 No
`
`4. Application number(s) or patent number(s):
`
`If this document is being filed together with a new application. the execution date oi the application is:
`
`A. Patent Application No.(s)
`08/023,398
`09/469,802
`09/286,892
`09/256,432
`
`8. Patent No.(s)
`5,191,573
`5,675,734
`
`5,966,440
`6.014.491
`
`Additional numbers attached? El Yes X: No
`
`5. Name and address of party to whom correspondence
`concerning document should be mailed:
`
`6. Total numberof applications and patents involved:
`
`Name: Ansel it Schwartz
`
`_._____
`
`7. Totalfee(37CFFi3.4‘i).............$
`
`320-00
`
`V
`
`"“9ma'Add'9$3
`
`Q Enciosed
`
`D Authorized to be charged to deposit account
`
`StreetAddrws:
`
`8. Deposit account number:
`
`201 N. Craig Street, Suite 304
`
`Ciw: State:
`‘lb: Ill.
`-. "N
`.
`i...I.
`:.
`
`PA
`
`ZlP:fl._3_
`
`(Attach duplicate copy oi this page it paying by deposit account)
`
`DO NOT USE THIS SPACE
`
`9. Statement and signature.
`To the best 0! my knowledge and belief, the foregoing infomta tion I
`the original document.
`'
`
`Ansel M. Schwartz
`
`Name of Person Signing
`
`Signature
`Total number or pages including cover sheet. attachmenftf
`
`Malldocumentstoborecorded with requlredcovereheet Informatlonto:
`commlssionerorPatentstttTrademarks,BoxAsslgnments PATENT
`‘”""""°‘°"'°’°"°”' REEL: o1o77s FRAME: 0703
`
`Page 00442
`
`

`
`Practitioner’s Docket No. _._._j__j__
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CHANGE OF NAME IN RECORDED ASSIGNMENTS
`
`. Particulars of assignments
`
`A_ list of assignments recorded against patent applications and/or patents is set forth on
`the attached page.
`
`2. Old name of assignee
`
`The old name for the assignee as shown for the assignments on the attached page is:
`
`Inc .
`Parsec Sight/Sound ,
`(type or print old name of Assignee)
`
`3. New name of assignee
`
`The new name of the assignee is
`
`SightSound.co1n Incorporated
`(type or print new name of Assignee)
`
`4. Proof of name change
`
`Proof of assignee’s change of name is established by the attached
`. K]
`certificate of the Secretary of Stateof .
`showing the name change.
`(type "3"" °' SW9)
`D certificate of name change from:
`
`(type or print name of authority)
`
`(check,
`
`if applicable)
`
`D Because the certificate or the certified copy of the name change is not
`in the English language, it is accompanied by a verified translation
`signed by the translator.
`‘
`
`5. change of address for patent maintenance fees
`
`(complete, if applicable)
`
`[I A change of address to which correspondence_ is to be sent regarding patent
`maintenance fees_for each patent listed is being sent separately.
`
`(Change of Name in Recorded Assignments [16-12]—page 1 of 3)
`
`PATENT
`
`REEL: 010776 FRAME: 0704
`
`Page 00443
`
`

`
`C 0 H H 0 N U E A L T H
`
`0 F
`
`P E N N S Y L V A N I A
`
`D E P A R T N E N T
`
`0 F
`
`S T A T E
`
`APRIL BB1 EUDD
`
`TO ALL UHOH THESE PRESENTS SHALL COME: GREETING=
`
`SIGHTSOUND-CON INCORPORATED
`
`In Kim Pizzingrilliu Secretary of the Commonwealth of
`
`Pennsylvania do hereby certify that the foregoing and annexed is a true
`
`and correct photocopy of Articles of Incorporation and all Amendments
`
`which appear of record in this department
`
`IN TESTIMONY wHEREOF» I have
`hereunto set my hand and caused
`the Seal of
`the Secretary's
`Office to be affixed:
`the day
`and year above written.
`
`Secretary of
`
`th_
`
`nwealth
`
`JSOw
`
`PATENT
`
`REEL: 010776 FRAME: 0705 --
`
`Page 00444
`
`

`
`Page 00445
`
`Page 00445
`
`

`
`Page 00446
`
`Page 00446
`
`

`
`Page 00447
`
`Page 00447
`
`

`
`Page 00448
`
`Page 00448
`
`

`
`Page 00449
`
`Page 00449
`
`

`
`Page 00450
`
`Page 00450
`
`

`
`Page 00451
`
`Page 00451
`
`

`
`Page 00452
`
`Page 00452
`
`

`
`Page 00453
`
`Page 00453
`
`

`
`PTDOCSJ; E18356
`
`Upon said merger becoming ettective. each share of common
`4.
`capital stock of Digital shall be convened into one share of common capital steel: of
`the Surv’ving Corporation. A Cerfiflcate for the npprvpfiate number of shares of the
`common capital stock of the Surviving Corporation shall be delivered by the Surviving
`Cor-pox-.tu‘on to each shareholder of Digital on or after the Effective Date. upon such
`shareholder's delivery to the Surviving Corp