Filed on behalf of:
`
`Patent Owner Sightsound
`By: David R. Marsh, PhD.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`
`555 12th Street, NW.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax:
`(202) 942-5999
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC,
`
`Petitioner,
`
`V.
`
`Patent 0f SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`Case CBM2013-00023
`
`Patent 5,966,440
`
`DECLARATION OF JOHN SNELL IN SUPPORT OF PATENT OWNER
`
`SIGHTSOUND TECHNOLOGIES, LLC’S RESPONSE TO PETITION
`
`SIGHTSOUND TECHNOLOGIES
`EXHIBIT 2353
`
`CBM2013-00023 (APPLE v. SIGHTSOUND)
`PAGE 000001
`
`
`
`Patent Owner Sightsound
`By: David R. Marsh, PhD.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`
`555 12th Street, NW.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax:
`(202) 942-5999
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC,
`
`Petitioner,
`
`V.
`
`Patent 0f SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`Case CBM2013-00023
`
`Patent 5,966,440
`
`DECLARATION OF JOHN SNELL IN SUPPORT OF PATENT OWNER
`
`SIGHTSOUND TECHNOLOGIES, LLC’S RESPONSE TO PETITION
`
`SIGHTSOUND TECHNOLOGIES
`EXHIBIT 2353
`
`CBM2013-00023 (APPLE v. SIGHTSOUND)
`PAGE 000001
`
`
`
`Case CBM2013-00023
`
`Patent 5,966,440
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US. Patent & Trademark Office
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`1, John Snell, hereby declare as follows:
`
`1.
`
`I have been retained by the plaintiff Patent Owner SightSound
`
`Technologies, LLC (“Patent Owner” or “SightSound”), to provide assistance and
`
`expert testimony in the Covered Business Method Review (“CBM Review”) taking
`
`place before the Patent Trials and Appeals Board (“PTAB” or “Board”) regarding
`
`US. Patent No. 5,191,573 (“the ‘573 Patent”) and US. Patent No. 5,966,440 (“the
`
`‘440 Patent”).
`
`1 have personal knowledge of the facts and opinions set forth in this
`
`declaration, and if called upon to do so, I would testify competently thereto. My
`
`curriculum vitae describing my background and experience is attached hereto as
`
`Appendix A.
`
`2.
`
`This Declaration gives the opinions, and their underlying bases and
`
`reasons, about which I may testify further. This report further includes information
`
`regarding the validity of the patents in light of Petitioner Apple Inc’s (“Petitioner”
`
`or “Apple”) assertions in this proceeding that the patents are anticipated under 35
`
`U.S.C. § 102 and obvious under 35 U.S.C. § 103(a). This report also includes
`
`information regarding why one skilled in the art would not find the inventions
`
`-2-
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`PAGE 000002
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`Case CBM2013-00023
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`Patent 5,966,440
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`disclosed in the patents obvious at the relevant time and further information
`
`relating to considerations of non-obviousness, as well as information regarding the
`
`advantages of the patented invention over the prior art.
`
`I.
`
`Background and Qualifications
`
`3.
`
`I am an engineer, and reside and work in San Geronimo, California.
`
`I
`
`specialize in the design and analysis of microelectronics, software, and systems for
`
`recording, playing, synthesis, processing and transferring of electronic media over
`
`electronic networks.
`
`I have over four decades of experience in electronics
`
`engineering, computer science, signal processing mathematics, and the engineering
`
`of audio, video and music.
`
`I have researched, designed, developed and analyzed
`
`the microelectronics and software of numerous digital music and video systems.
`
`4.
`
`I
`
`studied at Carnegie-Mellon University fiom 1967—74. My
`
`interdisciplinary graduate work through the electrical engineering department at
`
`Carnegie-Mellon University was performed with a grant from the National Science
`
`Foundation.
`
`I earned my Bachelor of Science degree in Electrical Engineering and
`
`my Bachelor of Arts degree in Cybernetics
`
`(an interdisciplinary program,
`
`combining coursework in computer science,
`
`signal processing mathematics,
`
`physics, music analysis and composition, psychology and physiology of perception
`
`as well as audio, video and electrical engineering) at Carnegie-Mellon University.
`
`I wrote my first computer program in 1968 on a mainframe computer at Carnegie-
`
`PAGE 000003
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`
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`Case CBM2013-00023
`
`Patent 5,966,440
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`Mellon University, where I took courses in programming, including data structures
`
`and software design for real-time systems.
`
`I have programmed computers and
`
`media processing digital systems at all
`
`levels, from high-level code down to
`
`assembly language and microcode (including binary, octal and hexadecimal for
`
`debugging systems).
`
`5.
`
`I worked on the development of a large multiprocessing system and a
`
`graphics display processor, as well as analog-to-digital and digital-to-analog audio
`
`converters in the Engineering Lab of the Artificial Intelligence Lab at Camegie-
`
`Mellon University in the early 1970s.
`
`I co-designed the microelectronics and
`
`software of a real-time microwave (wireless) signal analyzer in the mid-197 Os.
`
`6.
`
`I am the founder (1976) and original editor of the COMPUTER MUSIC
`
`JOURNAL,1 an academic publication of international research on the application of
`
`computer science, signal processing mathematics, electronics, software, physics,
`
`acoustics and psychology of perception to the composition, recording, editing, and
`
`processing of music. Publication of several books2 resulted fiom the articles I
`
`collected and edited.
`
`1 Computer Music Journal, MIT Press.
`
`2 Revised articles from the COMPUTER MUSIC JOURNAL with new articles edited by
`
`John Snell, John Strawn and Curtis Roads were published in 3 books:
`
`Footnote continued on next page
`
`PAGE 000004
`
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`Case CBM2013-00023
`
`Patent 5,966,440
`
`7.
`
`I also did research in digital audio and music processing at Stanford
`
`University fiom 1977—1980 at the Center for Computer Research in Music and
`
`Acoustics (CCRMA).
`
`I worked on the development of the third generation of the
`
`CCRMA mainframe computer for editing, signal processing, and playing digital
`
`music files, and our computer was connected to the ARPANET.
`
`8.
`
`I was a design engineer fiom 1980—86 at Lucasfilm Ltd., where we
`
`designed and developed the microelectronics and software of graphics-based
`
`multiprocessor supercomputers for recording, processing, synthesis, editing and
`
`transferring of digital music, voices, Foley, and sound effects.
`
`In addition to
`
`design of the programmable digital mixing console and solid state memory system
`
`of our Digital Audio Signal Processor (a.k.a. ASP and SoundDroid), I contributed
`
`to the architecture3 and use of higher-speed circuitry (change fiom noisy, slower
`
`Footnote continued from previous page
`
`FOUNDATIONS OF COMPUTER MUSIC (MIT PRESS 1985), DIGITAL AUDIO
`
`Engineering (Kaufinann 1985), and DIGITAL AUDIO SIGNAL PROCESSING
`
`(Kaufrnann 1985).
`
`3 Contributions to the architecture included replacement of the traditional single-
`
`bus with a dual-bus for faster processing (since most calculations involve dual-
`
`operands), touch-sensitive, interactive graphics screen technology for ease of
`
`Footnote continued on next page
`
`PAGE 000005
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`Patent 5,966,440
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`TTL to faster, less noise-prone, ECL supercomputer integrated circuitry4) for real-
`
`time operation. Our ASP/SoundDroid system included static and dynamic random
`
`access semiconductor memory (RAM) as well as disk drives for storing digital
`
`audio. This multiprocessor system was designed so that multiple channels of
`
`digital audio could be transmitted over a private Ethernet (ASPnet) between the
`
`Footnote continued from previous page
`
`editing, and use of a hinged paging design for easy troubleshooting access to
`
`signals.
`
`4 Emitter-coupled-logic (ECL) was a faster and cleaner method of electronics
`
`design than TTL. Electronic circuitry known as transistor-transistor technology
`
`(TTL) was commonly used for digital design in the 197 OS and 1980s. Schottky
`
`TTL sometimes failed due to its electrical noise and reflections over lines
`
`connecting TTL chips. From troubleshooting experience with the noise generated
`
`by, and line reflections of, Schottky TTL in developing large digital systems in the
`
`197 Os, I realized the need for a faster and more reliable supercomputer technology.
`
`Speed was an essential ingredient for real-time processing of media during this
`
`period. However, I designed portions of our less speed-critical user interface with
`
`more energy-efficient CMOS (complimentary metal-oxide-semiconductor)
`
`integrated circuitry, which became the dominant technology for microprocessors.
`
`PAGE 000006
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`Case CBM2013-00023
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`disk drives connected to the memory systems of the processors. Our Trio project
`
`was designed for editing digital audio and video with optical video disks.
`
`9.
`
`I designed several real-time multiprocessing systems for processing
`
`digital media signals over the last few decades
`
`5
`
`d 6
`
`a“
`
`-
`7
`and wrote a book, which
`
`detailed my design of numerous architectures for processing audio and video.
`
`In
`
`1989,
`
`I was invited to give an international presentation on real-time software
`
`design issues in programming multiprocessor systems,8 which was subsequently
`
`published by the Audio Engineering Society.
`
`In the 1990s, I worked on the design
`
`5 John M. Snell, Expandable Interactive Real-time Multiprocessor DSP,
`
`Proceedings of the IEEE AS SP Workshop on Applications of Signal Processing to
`
`Audio and Acoustics ( IEEE Press 1989).
`
`6 John Snell, Professional Real-time Signal Processorfor Synthesis, Sampling,
`
`Mixing & Recording, PROCEEDINGS OF THE 83RD CONVENTION OF THE AUDIO
`
`ENGINEERING SOCIETY (Audio Engineering Society 1987).
`
`7 John M. Snell, Multiprocessor Architectures & Design Techniques for Media
`
`Signal Processing & Synthesis 1991—1995 (Timbre Engineering 1995).
`
`8 John M. Snell, Multiprocessor DSP Architectures & Implicationsfor Software,
`
`AUDIO IN DIGITAL TIMES (Audio Engineering Society 1990).
`
`PAGE 000007
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`Case CBM2013-00023
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`Patent 5,966,440
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`of a supercomputer chip and software for personal home computers, which enabled
`
`simultaneous processing of multiple streams of media. This integrated circuit with
`
`its software was designed to receive, decode and process digital video, digital
`
`audio and graphics while implementing modem connection to the Internet. These
`
`systems were designed with static and dynamic RAM (Random Access Memory)
`
`as well as non-volatile digital storage.
`
`10.
`
`Over the last decade, I worked on the design of a multiprocessing
`
`supercomputer system which allowed customers to select their own movies and
`
`music over the Internet and have them transmitted fiom solid state memory to their
`
`home over the higher-fidelity cable TV and satellite dish (wireless) networks,
`
`including thousands of channels of high-fidelity digital audio and high-definition
`
`digital video.
`
`I also worked on the design/analysis of smartphone applications
`
`involving digital media.
`
`I have used the Internet and its predecessor,
`
`the
`
`ARPANET, since 19729 for my research and development work in digital media.
`
`I
`
`9 For example, my first transmission of digital files of music instrument designs
`
`with scores to play them was fiom Camegie-Mellon University to Stanford
`
`University in the early 197 Os over the ARPAnet. This was years ahead of the less
`
`expressive MIDI standard.
`
`PAGE 000008
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`Case CBM2013-00023
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`Patent 5,966,440
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`have given lectures and engineering presentations at international conferences,
`
`research centers and universities.10
`
`11. My experience with music is not limited to microelectronics and
`
`software engineering.
`
`I have been a musician since early childhood, and my
`
`compositions have been played in concerts and over the radio, as well as in live
`
`theater and film soundtracks.
`
`12.
`
`I
`
`served from 1992—95 on the Editorial Review Board of
`
`MICROPROCESSOR REPORT.
`
`I analyzed the internal design of state-of-the-art digital
`
`media processing chips and advanced memory technology for this highly-respected
`
`10
`
`I have given lectures and engineering presentations at Audio Engineering
`
`Society international conferences, International Computer Music Conferences,
`
`Institute of Electrical and Electronics Engineers (IEEE) International Conference
`
`on Signal Processing Applications and Technology, Stanford University, Institut de
`
`Recherche et Coordination Acoustique/Musique (IRCAM, Paris), University of
`
`California, Microprocessor Forum, Eastman School of Music, Northwestern
`
`University, DSPX (Digital Signal Processing Conference, San Jose, CA), IEEE
`
`Mini/Micro West (San Francisco), WCCF, Mills College and Camegie-Mellon
`
`University.
`
`PAGE 000009
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`Case CBM2013-00023
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`Patent 5,966,440
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`publication on integrated circuit design for electrical engineers and computer
`
`scientists.
`
`13.
`
`I was honored by the Audio Engineering Society in 2000 with a
`
`Fellowship Award for innovative digital audio engineering design and valuable
`
`contributions to the advancement of audio engineering.
`
`14.
`
`I have analyzed hundreds of patents since the early 1970s and have
`
`served as an expert witness in trial and deposition.
`
`1 am being compensated at
`
`$3 50/hour for my work on this case.
`
`I have not testified at trial or deposition in the
`
`past four years.
`
`11. Materials Reviewed
`
`15.
`
`In preparing my opinions, I have considered the following materials:
`
`0
`
`‘440 Patent,
`
`its File History and Reexamination History
`
`[Exs.
`
`1301,1302,1303]
`
`o
`
`‘57 3 Patent,
`
`its File History and Reexamination History [Exs.
`
`1304, 1305, 1306]
`
`0 The Declaration of Scott Sanders [Ex 2310]
`
`0 The Declaration of John Stautner [Ex 2321]
`
`0 The Deposition of David Michael Schwartz, December 9-10, 2013
`
`[Ex. 2324]
`
`-10-
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`PAGE 000010
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`Case CBM2013-00023
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`Patent 5,966,440
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`The Deposition of David M. Schartz, February 1, 2001[EX. 2325]
`
`The Deposition of John R]. Kelly, Ph.D., December 4, 2013 [EX.
`
`2326]
`
`Recording Industry Association of America Year-End Shipment
`
`Statistics for 2008, 2009, 2010, 2011, and 2012 [EX. 2327]
`
`Full Written Transcript fiom 1987 Stanford Lecture [EX. 2328]
`
`Article entitled A Management/Preservation Scorecard, written by
`
`Bill Bolland, and published in the November, 6, 1999 edition of
`
`Billboard Newspaper [EX. 2329]
`
`Excerpts of Petitioner’s SEC filings [Exs. 2330, 2332, 2344 and
`
`2345]
`
`Apple Press Releases [Exs. 2331, 2333, 2334, 2335, 2336, 2337,
`
`2338, 2339, 2340 and 2348]
`
`Excerpts from Apple’s Earning Call Transcripts [Exs. 2341, 2342
`
`and 2346]
`
`Article entitled Top Music Seller’s Store has no Door, dated April
`
`04, 2008, and published in the Los Angeles Times (available at
`
`htt
`
`://articles.latimes.com/2008/a r/04/business/fi-itunes4)
`
`[EX.
`
`2343]
`
`-11-
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`PAGE 00001 1
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`0 Online article entitled How i Tunes Works, written by Julie Layton
`
`and Jonathan Strickland (available at
`
`
`http://electronics.howstuffworks.com/itunesS.htm) [EX. 2347]
`
`0 Screenshots obtained fiom Apple’s website [Exs 2350 &2351]
`
`0 Steven Dupler, Joint Telerecora’ing Push: CompuSonics, AT&T
`
`Link, Billboard, vol. 97, no. 40, Oct. 5, 1985 (“Dupler article”)
`
`[EX. 4309]
`
`0 David Needle, From the News Desk: Audio/digital interface for
`
`the IBMPC?, InfoWorld, vol. 6, no. 23, p. 9, June 4, 1984
`
`(“Needle article”) [EX. 4310]
`
`0 Larry Israelite, Home Computing: Scenariosfor Success,
`
`Billboard, Dec. 15, 1984 (“Israelite article”) [EX. 4311]
`
`0
`
`“Digital Audio Telecommunication System” diagram, © 1985 [EX.
`
`4315]
`
`0 David Schwartz, July 16, 1984 Letter to CompuSonics’
`
`Shmehokkus;hfly16,1984(“Sdnvm1z1984Lefief3[EX.4316]
`
`0 Hyun Heinz Sohn, A High Speed Telecommunications Interface for
`
`Digital Audio Transmission and Reception, 76th AES Convention,
`
`Oct. 1984 (“Sohn article”) [EX. 4317]
`
`-12-
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`PAGE 000012
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`0 David Schwartz, October 10, 1985 Letter to CompuSonics”
`
`Shareholders, Oct. 10, 1985 (“Schwartz 1985 Letter”) [EX. 4318]
`
`0 CompuSonics Video, Application Notes: CSX Digital Signal
`
`Processing 1986 (“Application Note”) [EX. 4319]
`
`0
`
`“Digital Audio Software Production/Distribution” diagram [EX.
`
`4320]
`
`. US. Patent No. 4,682,248 (“Schwartz patent”) [EX. 4323]
`
`0 Brian Dumaine, The Search for the Digital Recorder, Fortune, p.
`
`116, Nov. 12, 1984 (Dumaine article”) [EX. 4324]
`
`o Excerpts fiom 1987 Stanford lecture (“Stanford lecture”) [EX.
`
`4321]
`
`0
`
`International Patent Application W085/02310 (“Softnet patent”)
`
`[Ex. 4312]
`
`0 United States Patent No. 3, 718,906 (“Lightner patent”) [EX. 4313]
`
`0 United States Patent No. 3,990,710 (“Hughes patent”) [EX. 4314]
`
`0 US. Patent No. 4,124,773 (“Elkins patent”) [EX. 4330]
`
`
`
`0 US. Patent No. 4,667,008 (“Kramer patent”) [EX. 4331]
`
`0 US. Patent No. 4,528,643 (“Freeny patent”) [EX. 4332]
`
`0 Photograph of CompuSonics equipment [EX. 4333]
`
`-13-
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`PAGE 000013
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`0 Declaration of John P. J. Kelly [EX. 4334]
`
`0 Declaration of David Schwartz [EX. 4335]
`
`0 Special Master’s Report and Recommendation On Claim
`
`Construction dated Nov. 19, 2012 in the matter of SightSound
`
`Technologies, LLC V. Apple, Inc. (“Claim Construction
`
`Recommendation”) [EX. 4336]
`
`0 Order re Claim Construction dated 2/13/13 in the matter of
`
`SightSound Techs, LLC V. Apple Inc. [EX. 4337]
`
`0 New TelerecordmgMethodfor Audio, Broadcast
`
`Management/Engineering, (Oct. 10, 1985) [EX. 4342]
`
`III.
`
`The Hair Patents
`
`16.
`
`I am very familiar with the background of the technology to which the
`
`‘573 and ‘440 patents (collectively the “Patents”) relate and the problems they
`
`solved. My testimony on this issue is based on my review of the Patents and their
`
`prosecution and reexamination histories, as well as my own specialized knowledge
`
`of this field of technology, acquired through my education and decades of
`
`professional experience.
`
`17.
`
`On March 2, 1993, the United States Patent and Trademark Office
`
`(“PTO”) issued United States Patent No. 5,191,573. The ‘573 Patent claims
`
`priority to an application, Serial No. 206,497, that was filed on June 13, 1988. The
`
`-14-
`
`PAGE 000014
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`‘57 3 Patent underwent reexamination, and the PTO confirmed the validity of all
`
`six claims of the ‘57 3 Patent by issuing a reexamination certificate, US. Patent No
`
`5,191,573 C1, on November 30, 2010. No claims fiom the ‘573 Patent were
`
`amended or cancelled during reexamination.
`
`18.
`
`The PTO further issued US. Patent No. 5,966,440 (“the ‘440 Patent”)
`
`on October 12, 1999. The ‘440 Patent is a continuation of the application that gave
`
`rise to the ‘573 Patent and also claims priority to the same application, No.
`
`07/206,497, that was filed on June 13, 1998. The ‘440 Patent also underwent
`
`reexamination. Among other things, the PTO confirmed the validity of claim 1, as
`
`amended, and the ‘440 Patent was amended to include new claims 64 and 95. The
`
`PTO issued a reexamination certificate, US. Patent No. 5,966,440 C1, on June 27,
`
`2010.
`
`19.
`
`The Patents generally relate to the field of electronic sale and
`
`distribution of digital audio or digital video. More specifically,
`
`the patented
`
`technology pertains to business methods associated with the transmission of digital
`
`audio or digital video via telecommunications lines to non-removable memory
`
`storage owned by a customer.
`
`A.
`
`The ‘440 Patent and Claims at Issue
`
`20.
`
`The ‘440 Patent discloses a method to sell digital music and digital
`
`video files over telecommunication lines, allowing the purchaser/user to pay per
`
`-15-
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`file and download the file to his or her non-removable memory storage such as a
`
`hard disk, which allows for playback.
`
`21.
`
`The ‘440 Patent is directed to “a system and associated method for the
`
`electronic sales and distribution of digital audio or video signals, and more
`
`particularly, to a system and method which a user may purchase and receive digital
`
`audio or video signal
`
`fiom any location which the user has access
`
`to
`
`telecommunications lines.” ‘440 patent at 1:16-21.
`
`22.
`
`In describing the sales, distribution and transferability of music at or
`
`prior to the filing date, the ‘440 Patent discusses a number of drawbacks to then-
`
`current music media:
`
`records, tapes and compact discs (collectively, “the prior art
`
`hardware units”).
`
`Id at 1:24-2:13. From a capacity standpoint, the ‘440 patent
`
`discloses that the prior art hardware units were limited in the amount of music that
`
`can be stored on each unit.
`
`Id at 1:27-29. The prior art hardware units also
`
`limited a user’s ability to play, in a user-selected sequence, songs fiom different
`
`albums.
`
`Id at 1:38-43.
`
`In contrast, the ‘440 Patent disclosed the methods that
`
`permitted the download of individual songs rather than albums. From a sales and
`
`distribution standpoint, the ‘440 Patent describes the need to physically transfer the
`
`prior art hardware units such as compact discs, cassettes or records fiom the
`
`manufacturing facility to the wholesale warehouse to the retail warehouse to the
`
`retail outlet prior to final purchase, resulting in lag time between music creation
`
`-l6-
`
`PAGE 000016
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`
`and marketing as well as the resulting transfer and handling costs.
`
`Id. at 1:45—51.
`
`Before the ‘440 Patent, customers were required to physically go to retail locations
`
`to get selected songs. See id.
`
`23.
`
`At the time of the invention, there were numerous ways for consumers
`
`to purchase audio and video content. The primary method for consumers to
`
`purchase music was to make a purchase of records, tapes and CDs at a retail store
`
`with cash, check or credit card. Consumers could also order music on hardware
`
`units fiom catalogues and pay with a check or credit card. Consumers could
`
`subscribe to cable channels and watch video movies (6. g. Showtime, HBO)
`
`broadcasted at certain times of the day. Rather than allowing consumers to
`
`download and store digital video recordings, pay per view allowed access to
`
`content (a code to unscramble content) broadcasted at certain times of the day.
`
`Consumers could also rent video cassettes
`
`from video rental
`
`stores
`
`(6. g.
`
`Blockbuster).
`
`24.
`
`The specification of the patent both envisioned and provided for an
`
`improved methodology to electronically sell, distribute, store, manipulate, retrieve,
`
`play and protect distortion-free digital audio and video files.
`
`Id. at 2:40-44. The
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`benefits taught by the specification include easy recall of stored music for playback
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`as selected or programmed by the user, changing the playback order of stored
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`music based on different criteria, such as music category, artist, or user’s favorite
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`-17-
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`Case CBM20l3-OOO23
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`Patent 5,966,440
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`songs, and the random playback of music based on the user’s selection.
`
`Id. at
`
`2:44—61. The patented method envisioned both a break from and how to break
`
`from the distribution of prior art hardware units sold as albums.
`
`25.
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`For protection from piracy, the ‘440 patent discloses that digital audio
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`and video files can be transferred from a source authorized by the copyright holder
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`to sell and distribute the digital files.
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`Id. at Figure l & 2:62-3:6.
`
`In short, the
`
`claimed invention provides a new method of selling and distributing music over
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`telecommunications lines, that reduces the time between music creation, music
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`marketing and music sale that broke with the dependence of hardware units and
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`“album only” sales and play back.. Id. at 3:6-13.
`
`26.
`
`I understand that claims 1, 64 and 95 of the ‘440 Patent are at issue in
`
`this proceeding. Decision, Apple Inc. v. SightSound Techs., LLC, Paper No. 12,
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`CBM20l3-OOO23, at 32 (Oct. 8, 2013). Claim 1 of the ‘440 Patent is directed to
`
`the electronic sale of digital video or digital audio signals. The electronic sale and
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`distribution
`
`is
`
`accomplished
`
`by:
`
`(l)
`
`forming
`
`a
`
`connection,
`
`through
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`telecommunications lines, between a first party’s first memory and a second
`
`party’s second memory; (2) selling the desired digital video or digital audio signals
`
`to the second party by charging a fee through the established connection; (3)
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`transferring the desired digital video or digital audio signals fiom the first memory
`
`to the second memory via the established connection, all while the second memory
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`-18-
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`Case CBM2013-00023
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`Patent 5,966,440
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`is in the possession and control of the second party; (4) storing the transferred
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`digital Video or digital audio signals in a non-volatile storage portion of the second
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`memory, wherein the non-volatile storage portion is not a tape or compact disc;
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`and (5) playing the stored digital Video or digital audio signal.
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`‘440 C1 Patent at
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`1:33-64. Three amendments were made to claim 1 of the ‘440 Patent because of
`
`the ‘440 reexamination.
`
`See id
`
`Two of those amendments focused on the
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`attributes of the second memory: (1) “storing the desired digital Video or digital
`
`audio signals in a non-volatile storage portion the second memory” (Id at 1:55-
`
`57); and (2) “wherein the non-volatile storage portion is not a tape or CD” (Id at
`
`1:63-64). The third and final amendment pertained to the location of the parties
`
`and the method for selling the digital Video and digital audio signals: “the second
`
`party is at a second party location and the step of selling electronically includes the
`
`step of charging a fee Via telecommunications lines by the first party to the second
`
`party at a first party location remote fiom the second party location, the second
`
`party has an account and the step of charging a fee includes the step of charging
`
`the account of the second party.” Id at 1:42-49.
`
`27.
`
`Claims 64 and 95 were both added during the ‘440 reexamination.
`
`EX. 4303 at 594 (adding claim 64), 924-25 (adding claim 111, which issued as
`
`claim 95). Claims 1, 64 and 95 all include “charging a fee Via telecommunications
`
`lines by the first party” which includes “charging the account of the second party.”
`
`-19-
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`Case CBM2013-00023
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`Id. at 1:43-49, 8:26-31, 13:28-34.
`
`In comparison to claim 1, claims 64 and 95
`
`describe additional attributes of the second memory and the second party’s
`
`location. See ‘440 C1 Patent at 8:14-44, 13:15-51. Claim 64 adds the requirement
`
`that the second memory include a “second party hard disk.” Id at 8: 19-20, 39, 41-
`
`42. Claim 95 adds two additional requirements: (1) that the second memory
`
`include a “second party hard disk” (Id at 13:23, 49, 50-51); and (2) that the second
`
`party control unit, which houses the second memory, be placed at a “desired
`
`second party location determined by the second party” (Id at 13:20-21).
`
`28.
`
`The specification makes abundantly clear that the invention precluded
`
`removable physical storage media as a second memory. See Figure 1 (“hard disk”
`
`as second memory).
`
`It discussed the host of inefficiencies associated with
`
`removable media which was a problem solved by the invention, including that the
`
`removable physical media were prone to limited storage capacity, damage and
`
`deterioration,
`
`low sound quality, and copyright infringement; and the sale and
`
`distribution of physical media was time consuming, costly, and wasteful. See id at
`
`1:16-2:13.
`
`The ‘440 Patent’s novel method of electronically selling and
`
`distributing digital video and digital audio signals directly to a non-removable
`
`storage medium rendered these problems moot and rendered unnecessary the time
`
`and costs associated with manufacturing, packaging, shipping, and finally shelving
`
`the removable physical media at a brick-and-mortar location. See id at 1:45-54,
`
`-20-
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`PAGE 000020
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`Case CBM2013-00023
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`Patent 5,966,440
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`2:40-48. At the time of the invention, the non-removable second memory storage
`
`primarily contemplated was a hard disk as pictured in Figure l (indeed claims 64
`
`and 95 specifically require that the second memory include a hard disk). This is in
`
`contrast to the primary mobile prior art hardware of tapes used in connection with
`
`portable tape recorders like the “Walkman.” Additionally claim 1 requires that the
`
`“second memory” include a non-volatile storage portion that is not a tape or CD.
`
`One of ordinary skill in the art would understand that these ‘440 Patent “second
`
`memories” exclude removable storage mediums, such as records,
`
`tapes, CDs,
`
`cassettes, cartridges, optical disks and floppy disks and are limited to non-
`
`removable memory such as a hard disk.
`
`B.
`
`Claim Construction
`
`29.
`
`I understand that the Board has adopted the following interpretations
`
`of terms in the ‘440 Patent.
`
`Interpretation
`
`a real person.
`
`”first party"
`
`A first entity, whether a corporation or
`
`”second party"
`
`A second entity, whether a corporation
`
`or a real person.
`
`
`
`”second party control unit"
`
`Control unit of the second party.
`
`
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`-21-
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`Patent 5,966,440
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`
`”second party hard disk"
`
`A permanent, rigid, magnetic storage
`
`device of the second party.
`
`“telecommunications lines"
`
`An electronic medium for
`
`communicating between computers
`
`”electronically”
`
`through the flow of electrons
`
`”connecting electronically”
`
`Connecting through devices or systems
`
`which depend on the flow of electrons
`
`”transferring electronically"
`
`Transferring through devices or
`
`electrons.
`
`
`systems which depend on the flow of
`
`Requesting payment electronically.
`”charging a fee"
`
`
`
`
`“selling electronically"
`
`Providing a product or service
`
`electronically in exchange for providing
`
`payment electronically (i.e., through
`
`devices or systems which depend on
`
`the flow of electrons).
`
`”digital audio signal"
`
`Digital representations of sound waves.
`
`IV.
`
`Level of Ordinagy Skill
`
`30.
`
`I believe the level of ordinary skill relevant to the ‘440 Patent would
`
`be an individual with an undergraduate degree in electrical engineering or
`
`computer science and/or approximately 2—4 years of industry experience in the
`
`design of systems and methods for storing and transmitting digital information.
`
`-22-
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`V.
`
`Advantages of Patented Methods over prior modes of distributing
`
`music.
`
`31.
`
`I believe the patented methods had several advantages over the prior
`
`modes of distributing and selling music. In my opinion, there were several benefits
`
`to selling music electronically as claimed and described in the Patents, over the
`
`prior art methods of sale which required the sale of removable physical media—
`
`such as records, cassette tapes, cartridges, VHS tapes, optical disks and CDs.
`
`Moreover,
`
`the cost, warehousing, management of physical
`
`inventory,
`
`and
`
`distribution of such removable physical media made the delivery of single songs
`
`impractical. Floppy disks had the same limitations as cassettes, VHS tapes and
`
`CDs, and I was unable to determine any indication flom the materials I reviewed
`
`that a floppy disk with music or audio content was ever sold. Further, based on my
`
`experience, I do not believe that a floppy disk was ever a commercial medium for
`
`music, audio or video content.
`
`32.
`
`The patented methods have several advantages over the prior modes
`
`of distributing digital music and digital video,
`
`including the combination of
`
`deterioration and damage, greatly increased flexibility of retrieval, easier sales and
`
`improved distribution, improved audio fidelity and copyright protection, as noted
`
`in the first 3 columns of the ‘440 Patent.
`
`-23-
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`PAGE 000023
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`Patent 5,966,440
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`33.
`
`The fidelity of audio and video in removable media is typically
`
`inferior to audio and video in internal computer storage, where the media is
`
`protected. For example, compact discs and DVDs skip or get stuck and have to be
`
`restarted, due to oil left fiom fingers touching the playing surface or to leaving
`
`them out of their protective shells, where they may be scratched or collect dust.
`
`Even a new disk has errors which the player masks or conceals, resulting in a loss
`
`in fidelity.
`
`34.
`
`The signal to noise ratio and distortion of even a new audio cassette
`
`tape is inferior to that of digital audio recorded with well-designed equipment. An
`
`audio signal
`
`is recorded in a magnetic coating on a tape. Magnetization is
`
`transferred between adjacent windings of the tape on a reel if it is not played for
`
`long periods of time. Eventually one can hear the previous or next loud section of
`
`music during a quiet moment of music. With each playing, the delicate magnetic
`
`tape is pressed against a hard playback head, which slowly wears the coating and
`
`degrades the magnetized audio signal over time. When the tape becomes tangled
`
`in the playback mechanism,
`
`it is often stretched or wrinkled. Tape stretching
`
`introduces wow and flutter, and wrinkling of the tape causes distortion in the
`
`music.
`
`35.
`
`The signal to noise ratio and distortion of even a new record is inferior
`
`to that of digital audio recorded with well-designed equipment. An audio signal is
`
`-24-
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`PAGE 000024
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`Case CBM2013-00023
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`Patent 5,966,440
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`recorded in deformations fiom the spiral groove in a plastic record. The previous
`
`or next loud section of music is sometimes audible in an adjacent groove of quiet
`
`music. With each playing, the record player needle degrades the audio signal, as it
`
`scrapes, effectively filing or smoothing, the deformations in the shape of the plastic
`
`groove in the record.
`
`Scratches caused by human handling—or placing and
`
`bou
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