IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No.:
`104677—5005—803
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`§
`
`§ §
`
`§ § § §
`
`Inventor: Hair
`
`United States Patent No.: 5,966,440
`Formerly Application No.: 08/471,964
`Issue Date: October 12, 1999
`Filing Date: June 6, 1995
`Former Group Art Unit: 380
`Former Examiner: Hoa T. Nguyen
`
`For: System and Method for Transmitting Desired Digital Video or Digital Audio
`Signals
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 223134450
`
`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 5,966,440
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 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
`
`CPR. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`on my personal knowledge.
`
`Apple Exhibit 1241 Page 00001
`
`Apple Exhibit 1241 Page 00001
`
`
`
`Attorney Docket No.:
`104677—5005—803
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`§
`
`§ §
`
`§ § § §
`
`Inventor: Hair
`
`United States Patent No.: 5,966,440
`Formerly Application No.: 08/471,964
`Issue Date: October 12, 1999
`Filing Date: June 6, 1995
`Former Group Art Unit: 380
`Former Examiner: Hoa T. Nguyen
`
`For: System and Method for Transmitting Desired Digital Video or Digital Audio
`Signals
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 223134450
`
`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`UNITED STATES PATENT NO. 5,966,440
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 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
`
`CPR. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`on my personal knowledge.
`
`Apple Exhibit 1241 Page 00001
`
`Apple Exhibit 1241 Page 00001
`
`
`
`3.
`
`Exhibit 1201 hereto is a true and correct copy of United States Patent
`
`No. 5,966,440 to Arthur Hair, with its July 27, 2010 Ex Parte ReexaminatiOn
`
`Certificate, which are records of the United States Patent and Trademark Office ("the
`
`USPTO") to which all parties have access. Page numbers have been added to the
`
`bottom of this document and an exhibit label has been added to the top of this
`
`document but no other alterations have been made.
`
`4.
`
`Exhibit 1202 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,966,440 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 have been added to the bottom of this document and an
`
`exhibit label has been added to the top of this document but no other alterations have
`
`been made.
`
`5.
`
`Exhibit 1203 hereto is a true and correct copy of the reexamination file
`
`history for Application No. 90/007,407, which was downloaded from the USPTO
`
`PAIR website and which is a record of the USPTO to which all parties have access.
`
`Page numbers have been added to the bottom of this document and an exhibit label
`
`has been added to the top of this document but no other alterations have been made.
`
`6.
`
`Exhibit 1204 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
`
`Page 00002
`
`Page 00002
`
`
`
`numbers have been added to the bottom of this document and an exhibit label has
`
`been added to the top of this document but no other alterations have been made.
`
`7.
`
`Exhibit 1205 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 have been added to the bottom of this document and an
`
`exhibit label has been added to the top of this document but no other alterations have
`
`been made.
`
`8.
`
`Exhibit 1206 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 have been added to the bottom of this document and an exhibit label
`
`has been added to the top of this document but no other alterations have been made.
`
`9.
`
`Exhibit 1207 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 have been added to the bottom of this document and an
`
`exhibit label has been added to the top of this document but no other alterations have
`
`been made.
`
`Page 00003
`
`Page 00003
`
`
`
`10.
`
`Exhibit 1208 hereto is a true and correct copy of the reexamination file
`
`history for Application No. 90/007,403, which was downloaded from the USPTO
`
`PAIR website and which is a record of the USPTO to which all parties have access.
`
`Page numbers have been added to the bottom of this document and an exhibit label
`
`has been added to the top of this document but no other alterations have been made.
`
`11.
`
`Exhibit 1209 hereto is a true and correct copy of United States Patent
`
`No. 5,675,734 to Arthur Hair, with its December 14, 2010 Ex Parte Reexamination
`
`Certificate, which are records of the USPTO to which all parties have access. Page
`
`numbers have been added to the bottom of this document and an exhibit label has
`
`been added to the top of this document but no other alterations have been made.
`
`12.
`
`Exhibit 1211 hereto is a true and correct copy of the World Patent
`
`Application W085/02310,
`
`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 have been added to the bottom of this document and an
`
`exhibit label has been added to the top of this document but no other alterations have
`
`been made.
`
`13.
`
`Exhibit 1212 hereto is a true and correct copy of United States Patent
`
`No. 4,506,387 to Howard F. Walter, which is a record of the USPTO to which all
`
`parties have access. Page numbers have been added to the bottom of this document
`
`Page 00004
`
`Page 00004
`
`
`
`and an exhibit label has been added to the top of this document but no other
`
`alterations have been made.
`
`14.
`
`Exhibit 1213 hereto is a true and correct copy of United States Patent
`
`No. 4,124,773 to Robin Elkins, which is a record of the USPTO to which all parties
`
`have access. Page numbers have been added to the bottom of this document and an
`
`exhibit label has been added to the top of this document but no other alterations have
`
`been made.
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`15.
`
`Exhibit 1214 hereto is a true and correct copy of an Order regarding
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`Claim Construction in Sig/az‘Somd Tet/7L, LLC 0. Apple Ina, No. 11—01292, before 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
`
`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 have been added to the bottom of this document and an exhibit label has
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`been added to the top of this document but no other alterations have been made.
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`16.
`
`Exhibit 1215 hereto is a true and correct copy of Special Master’s Report
`
`and Recommendation on Claim Construction in Sig/affomd Term, LLC a Apple 1726.,
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`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
`
`Page 00005
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`Page 00005
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`
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`of the aforementioned District Court (Dkt. No. 142) to which all parties have access.
`
`Page numbers have been added to the bottom of this document and an exhibit label
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`has been added to the top of this document but no other alterations have been made.
`
`17.
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`Exhibit 1219 hereto is a true and correct copy of the transcript of
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`December 11, 2012 Deposition of Arthur Hair in Szég/fifomd Tea/95., LLC a 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.
`
`18.
`
`Exhibit 1220 hereto is a true and correct copy of the transcript of
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`December 18, 2012 Deposition of Scott Sander in Sig/9215'omd Tet/95., LLC v. App/e 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.
`
`19.
`
`Exhibit 1221 hereto is a true and correct copy of United States Patent
`
`' No. 4,682,248 to Daniel M. Schwartz, which is a record of the USPTO to which all
`
`parties have access. Page numbers have been added to the bottom of this document
`
`and an exhibit label has been added to the top of this document but no other
`
`alterations have been made.
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`20.
`
`Exhibit 1229 hereto is a true and correct copy of United States Patent
`
`No. 4,528,643 to Charles C. Freeny, Jr, which is a record of the USPTO to which all
`
`Page 00006
`
`Page 00006
`
`
`
`parties have access. Page numbers have been added to the bottom of this document
`
`and an exhibit label has been added to the top of this document but no other
`
`alterations have been made.
`
`21.
`
`Exhibit 1230 hereto is a true and correct copy of United States Patent
`
`No. 4,789,863 to Thomas A. Bush, which is a record of the USPTO to which all
`
`parties have access. Page numbers have been added to the bottom of this document
`
`and an exhibit label has been added to the top of this document but no other
`
`alterations have been made.
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`22.
`
`I make this declaration of my own personal knowledge.
`
`If called to
`
`testify as
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`to the truth of the matters stated herein,
`
`I could and would testify
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`competently.
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`23.
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`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.
`
`/
`
`oberto J. Gonzalez
`
`Page 00007
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`Page 00007
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