bin
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`SIGHTSOUND TECHNOLOGIES LLC
`
`Plaintiff Counter-Defendant
`
`v.
`
`APPLE INC.
`
`Defendant Counter-Plaintiff.
`
`Civil Action No. 211-cv-01292-DWA
`
`Senior District Judge Donetta W. Ambrose
`
`PLAINTIFF SIGHTSOUND TECHNOLOGIES LLCS EXPERT REPORT
`OF JOHN SNELL ON VALIDITY
`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`June 5 2013
`Date
`
`John Snell
`
`EXHIBIT
`
`Apple Exhibit 4367
`Apple v Sightsound Technologies
`CBM2013-00023
`Page 00001
`
`

`
`Confidential
`
`Information
`
`Subject
`
`to Protective Order
`
`TABLE OF CONTENTS
`
`Table of Contents
`
`1.
`
`II.
`
`III.
`
`Introduction .........................................................................................................................
`
`Summary of opinions ..........................................................................................................
`
`The asserted patents ..........................................................................................................
`
`A.
`
`B.
`
`The 573 patent .............................................................................................................
`The 440 patent .............................................................................................................
`
`IV.
`
`Level of ordinary skill
`
`......................................................................................................
`
`V. Claim construction ..............................................................................................................
`
`The asserted claims of the 573 patent are not invalid for a lack of written description and
`VI.
`all asserted claims are entitled to a priority date of June 13 1988 .............................................
`13
`
`A.
`
`B.
`
`C.
`
`Disclosure of the 1988 application and prosecution history of the asserted patents ......1
`
`Legal Standard ............................................................................................................1
`
`Analysis ......................................................................................................................1
`
`1.
`
`The 391 application discloses a sufficient number of representative examples to
`convey possession of electronic mediums of communicating between computers...........19
`
`2.
`
`The 391 applications disclosure of telephone lines also conveys possession of
`telecommunications lines. ..............................................................................................2
`
`3.
`
`skill
`
`features that would allow those of
`The 391 application discloses sufficient structural
`in the art to visualize the types of telecommunications lines. ...................................2
`
`VII.
`
`The asserted patents are valid over the prior art ..............................................................2
`
`A.
`
`Legal Standard ............................................................................................................2
`
`B.
`
`C.
`
`At the time of the invention selling digital audio signals and digital video signals over
`lines for storage in user-controlled memory was neither obvious nor a
`telecommunications
`predictable variation over the prior art ...................................................................................3
`PAN network .............................................................................................................
`
`38
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`U.S. Patent No. 4999806 Chernow .........................................................................3
`JP S60-253082 Mabe ............................................................................................4
`The Ball system..............................................................................................................4
`
`The Ball U.S. application ............................................................................................4
`
`The Lakhani European application ..............................................................................4
`
`U.S. Patent No. 4506387 Walter in combination U.S. Patent No. 4878245 Bradley42
`
`- i -
`
`Page 00002
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`J.
`
`U. S. Patent No. 5132992 Yurt ....................................................................................4
`
`VIII.
`
`Double Patenting .........................................................................................................4
`
`A.
`
`B.
`
`C.
`
`Legal Standard ............................................................................................................4
`
`Prosecution History Related To Double Patenting .......................................................4
`
`Double Patenting Analysis ..........................................................................................5
`
`1.
`
`The steps of charging a fee and charging an account are patentable variations over
`claims 3 and 6 of the 573 patent and claim 3 of the 734 patent ........................................5
`The step of playing in claims 1 64 and 95 of the 440 patent is a patentable variation
`over claim 3 and 6 of the 573 patent .................................................................................5
`
`2.
`
`IX.
`
`Supplemental or amended opinion ..................................................................................6
`
`X. Exhibits .............................................................................................................................6
`
`-ii-
`
`Page 00003
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`1.
`
`Introduction
`
`1.
`
`This report gives the opinions and their underlying bases and reasons about
`
`which I may testify at trial on behalf of SightSound Technologies LLC SightSound.
`
`This
`
`report further includes information regarding the validity of the asserted patents. This report also
`
`includes information regarding the asserted patents being entitled to a priority date of June 13
`
`1988.
`
`I reserve the right to respond to assertions made by Defendants expert witnesses or fact
`
`witnesses and to testify in rebuttal to evidence that Apple may present during trial.
`
`2.
`
`I have been retained by SightSound to serve as an expert
`
`in this case.
`
`I expect
`
`to
`
`testify at
`
`trial
`
`regarding the matters set
`
`forth in this report if asked about
`
`these matters by the
`
`Court or the parties attorneys.
`
`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 from 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
`
`-1-
`
`Page 00004
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`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-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 Carnegie-Mellon University in the early
`
`1970s.
`
`I co-designed the microelectronics and software of a real-time microwave wireless
`
`signal analyzer in the mid-1970s.
`
`6.
`
`I am the founder 1976 and original editor of the COMPUTER MUSIC JOURNAL 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 from the articles I collected and edited.
`
`7.
`
`I also did research in digital audio and music processing at Stanford University
`
`from 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.
`
`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 FOUNDATIONS OF COMPUTER MUSIC MIT PRESS 1985 DIGITAL AUDIO
`ENGINEERING Kaufinann 1985 and DIGITAL AUDIO SIGNAL PROCESSING Kaufmann 1985.
`
`-2-
`
`Page 00005
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`8.
`
`I was a design engineer
`
`from 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 from noisy slower
`
`TTL to faster less noise-prone ECL supercomputer
`
`integrated circuitry 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 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 decades5 and 6 and wrote a book7 which detailed my design of numerous
`
`architectures
`
`for processing audio and video.
`
`In 1989 I was invited to give an international
`
`faster
`
`3 Contributions to the architecture included replacement of the traditional single-bus with a dual-bus for
`processing since most calculations involve dual-operands touch-sensitive interactive graphics screen technology
`for ease of editing and use of a hinged paging design for easy troubleshooting access to signals.
`Emitter-coupled-logic ECL was a faster and cleaner method of electronics design than TTL. Electronic circuitry
`technology TTL was commonly used for digital design in the 1970s and 1980s.
`known as transistor-transistor
`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 1970s I realized the need for a faster and more reliable supercomputer technology. Speed was
`I designed portions of our
`for real-time processing of media during this period. However
`an essential
`interface with more energy-efficient CMOS complimentary metal -oxide-semiconductor
`less speed-critical user
`integrated circuitry which became the dominant technology for microprocessors.
`John M. Snell Expandable Interactive Real-time Multiprocessor DSP PROCEEDINGS
`OF THE IEEE ASSP
`IEEE Press 1989.
`WORKSHOP ON APPLICATIONS OF SIGNAL PROCESSING TO AUDIO AND ACOUSTICS
`Recording PROCEEDINGS
`6 John Snell Professional Real-time Signal Processor for Synthesis Sampling Mixing
`OF THE 83RD CONVENTION OF THE AUDIO ENGINEERING SOCIETY Audio Engineering Society 1987.
`FOR MEDIA SIGNAL PROCESSING
`ARCHITECTURES
`7 John M. Snell MULTIPROCESSOR
`DESIGN TECHNIQUES
`1991-1995 Timbre Engineering 1995.
`SYNTHESIS
`
`4
`
`s
`
`ingredient
`
`-3-
`
`Page 00006
`
`

`
`Confidential Information
`
`Subject to Protective Order
`
`presentation on real-time software design issues in programming multiprocessor systems8 which
`
`was subsequently published by the Audio Engineering Society.
`
`In the 1990s I worked on the
`
`design 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 from 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 have given
`
`lectures
`
`and engineering
`
`presentations
`
`at
`
`international
`
`conferences
`
`research centers and
`
`universities.
`
`10
`
`8
`
`10
`
`Implications for Software AUDIO IN DIGITAL TIMES Audio
`
`John M. Snell Multiprocessor DSP Architectures
`Engineering Society 1990.
`files of music instrument designs with scores to play them was from
`9 For example my first
`transmission of digital
`Carnegie-Mellon University to Stanford University in the early 1970s over the ARPAnet.
`This was years ahead of
`the less expressive MIDI standard.
`and engineering presentations at Audio Engineering Society international conferences
`I have given lectures
`International Computer Music Conferences Institute of Electrical and Electronics Engineers IEEE International
`and Technology Stanford University Institut de Recherche
`Conference
`on Signal Processing Applications
`IRCAM Paris University of California Microprocessor Forum Eastman
`Coordination Acoustique/Musique
`School of Music Northwestern University DSPx Digital Signal Processing Conference San Jose CA IEEE
`Mini/Micro West San Francisco WCCF Mills College and Carnegie-Mellon University.
`
`et
`
`-4-
`
`Page 00007
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`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 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.
`
`I am being compensated at $350/hour
`
`for my work on this
`
`case. My curriculum vitae is included in Exhibit A.
`
`I have not testified at trial or deposition in
`
`the past four years.
`
`II.
`
`Summary of opinions
`
`15.
`
`I understand that
`
`the patents in this case are U.S. Patent No. 5191573 and
`
`5191573 C1 collectively the 573 patent and U.S. Patent No. 5966440 and 5966440 Cl
`
`collectively the 440 patent.
`
`I refer to the 573 and 440 patents collectively in my report as
`
`the asserted patents.
`
`16.
`
`SightSound
`
`contends that Defendant Apple Inc. Apple has
`
`infringed the
`
`patents.
`
`It
`
`is my understanding that Apple contends that the asserted patents are invalid.
`
`Since Exhibit B is not
`Exhibit C.
`
`included because of the lack of testimony over the past
`
`four years the next exhibit
`
`is
`
`-5-
`
`Page 00008
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`17.
`
`If called as an expert witness I expect
`
`to provide testimony concerning
`
`the
`
`validity and priority date of the asserted patents.
`
`I may also provide testimony regarding the
`
`prosecution history and reexamination history of the asserted patents.
`
`18.
`
`Based on my analysis I conclude that the asserted patents are entitled to a priority
`
`date of June 13 1988.
`
`19.
`
`I conclude that
`
`the patents are valid and none of the prior art discussed in the
`
`Kelly report invalidates any of the asserted claims of the asserted patents.
`
`20.
`
`It
`
`is my opinion that even if any of the cited prior art were found to render
`
`the
`
`asserted patents obvious the asserted patents are nevertheless valid because of the commercial
`
`success of the patented invention in the marketplace.
`
`21.
`
`My opinions are based on my general knowledge
`
`and over 4 decades
`
`of
`
`experience particularly my expertise in the field of electrical engineering including recording
`
`processing transmission/reception
`
`and storing digital audio and digital video. My opinions are
`
`further based on documents and information that
`
`I have considered during the preparation of this
`
`report such as the asserted patents and related prosecution and reexamination histories the claim
`
`construction order in this case as well as from SightSound.com Inc. v. N2K Inc. Case No. Civ.
`A. 98-CV-118 N2K reprinted at 185 F. Supp. 2d 445 W.D. Pa. 2002 and documents
`produced by Apple. A list of all
`I considered in forming my opinions is
`
`the materials that
`
`included in Exhibit C.
`
`III.
`
`The asserted patents
`
`22.
`
`I expect
`
`to testify at trial regarding the background of the technology to which the
`
`573 and 440 patents relate and the problems they solved. This testimony will be based on my
`
`-6-
`
`Page 00009
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`review of these patents and their prosecution histories and my own specialized knowledge of this
`
`field of technology acquired through my education and professional experience.
`On March 2 1993 the United States Patent and Trademark Office PTO issued
`
`23.
`
`United States Patent No. 5191573.
`
`The 573 patent claims priority to an application Serial No.
`
`206497 that was filed on June 13 1988.
`
`The 573 patent underwent
`
`reexamination and the
`
`PTO confirmed
`
`the validity of all six claims of the 573 patent by issuing a reexamination
`
`certificate U.S. Patent No 5191573 Cl on November 30 2010. No claims from the 573
`
`patent were amended or cancelled during reexamination.
`
`24.
`
`The PTO further issued U.S. Patent No. 5966440 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. 07/206497 that was filed on June 13 1998.
`
`The 440
`
`patent also underwent
`
`reexamination. The PTO confirmed the validity of asserted claim 1 as
`
`amended and the 440 patent was amended to include new claims 64 and 95. The PTO issued a
`
`reexamination certificate U.S. Patent No. 5966440 Cl on June 27 2010.
`
`25.
`
`According to the CDNow opinion in 1995 Mr. Hairs company called Parsec
`
`became the first entity to sell a digital audio song for download over the Internet and in April
`
`1999 sold its first digital movie via the Internet.12
`
`26.
`
`The 573 and 440 patents generally relate to the field of electronic
`
`sale and
`
`distribution of digital audio or digital video. More specifically the patented technology pertains
`
`to selling or purchasing and transmission of digital audio or digital video via telecommunications
`
`lines to memory storage owned by a customer.
`
`12
`
`SightSound.com Inc. v. CDNow Inc. Case No. Civ. A. 98-CV-118 CDNo
`
`-7-
`
`Page 00010
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`A.
`
`27.
`
`The 573 patent
`
`The 573 patent discloses a method to sell digital music and digital video files
`
`over a telecommunication line allow the user to pay per
`
`file download the file to his or her
`
`memory storage and play the file.
`
`28.
`
`The asserted patents are 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 signals from
`
`any location which the user has access to telecommunication lines. 573 patent at 115-21.
`
`29.
`
`In describing the sales distribution and transferability of music at or prior to the
`
`critical date the 573 patent discusses a number of drawbacks
`
`to then-current music media
`
`records tapes and compact discs collectively the prior art media. 573 patent at cols. 1-2.
`
`From a capacity standpoint
`
`the 573 patent discloses that the prior art media was limited in the
`
`amount of music that can be stored on each unit.
`
`Id. at 127-29. The prior art media also limited
`
`a users ability to play in a user-selected sequence songs from different albums.
`
`Id. at 139-44.
`
`From a sales and distribution standpoint
`
`the 573 patent describes the need to physically transfer
`
`compact discs cassettes or records from 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 and marketing as well as the resulting transfer and handling costs.
`
`Id. at 138-45.
`
`Before the 573 patent customers were required to physically go to retail
`
`locations
`
`to get
`
`selected songs. See Id. at 155-63.
`
`30.
`
`The claimed invention of the asserted patents provides an improved methodology
`
`to electronically sell distribute store manipulate retrieve play and protect distortion-free
`
`digital audio and video files.
`
`Id. at 223-44.
`
`The benefits of this invention include the high
`
`-8-
`
`Page 00011
`
`

`
`Confidential Information
`
`Subject to Protective Order
`
`speed
`
`transfer of digital audio and video files for storage easy recall of stored music for
`
`playback as selected or programmed by the user changing the playback order of stored music
`
`based on different criteria such as music category artist or users favorite songs and the
`
`random playback of music based on the users selection.
`
`Id. at 244-61.
`
`31.
`
`For protection from piracy the 573 patent discloses that digital audio and video
`
`files can be transferred from a source authorized by the copyright holder to sell and distribute the
`
`digital
`
`files.
`
`Id. at Fig. 1
`
`255-58.
`
`In short the claimed invention provides a new method of
`
`selling and distributing music over
`
`telecommunications lines that
`
`reduces the time between
`
`music creation music marketing and music sale.
`
`Id. at 265-32.
`
`B.
`
`32.
`
`The 440 patent
`
`The 440 patent
`
`is based on the same application as the 573 patent and shares the
`
`same specification
`
`as the 573 patent. The claims of the 440 patent-while different from the
`
`patent-the
`
`claims of the 573 patent-are directed to the same general subject matter as the 573
`
`sale and distribution of digital audio and digital video files.
`
`IV.
`
`Level of ordinary skill
`
`33.
`
`I am informed that
`
`this Court has ruled that
`
`the level of ordinary skill
`
`is 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.
`
`3
`
`I consider myself to be a person of at least ordinary skill
`
`in the art under
`
`this definition and I believe my credentials qualify me to opine as an expert on the perspective
`
`of a person of ordinary skill
`
`in the art as defined by this Court at the time of the invention.
`
`V.
`
`Claim construction
`
`34.
`
`I understand that this Court construed the claims of the asserted patents.
`
`13
`
`Special Masters Rept.
`
`Recommendation on Claim Construction at 12 n.12.
`
`-9-
`
`Page 00012
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`35.
`
`This Courts constructions are reproduced in the table below
`
`Term
`
`Construction
`
`first party
`
`second party
`
`first party control unit
`
`A first entity whether a
`
`corporation or a real person.
`A second entity whether a
`corporation or a real person.
`
`Control unit of the first party.
`
`second party control unit
`
`Control unit of the second
`
`party.
`An electronic medium for
`communicating between
`computers.
`An electronic medium for
`
`telephonic communication.
`
`Pertaining to devices or systems
`which depend on the flow of
`electrons.
`
`Connecting through devices or
`systems which depend on the
`flow of electrons.
`
`Transferring through devices or
`systems which depend on the
`
`of electrons.
`Providing payment
`
`electronically i.e. through
`devices or systems which
`depend on the flow of
`electrons.
`
`Requesting payment
`
`electronically.
`
`Providing a product or service
`electronically in exchange for
`
`providing payment
`
`electronically.
`
`telecommunications
`
`lines
`
`telephone lines
`
`electronic terms
`
`i____.
`
`---- --
`_a-- ---
`connecting electronically
`
`terms
`
`_ t
`
`ransferring electronically
`
`terms
`
`transferring money
`electronically terms
`
`charging a fee terms
`
`electronically selling terms
`
`digital audio signal
`
`Digital representations of sound
`
`hard disk / hard drive
`
`terms
`
`waves.
`A permanent
`storage device.
`
`rigid magnetic
`
`-10-
`
`Page 00013
`
`

`
`replica
`
`second party hard disk
`
`desired signals and desired
`selections
`
`transferring means or
`mechanism
`means or mechanism for
`storing the signals
`
`Confidential Information
`
`Subject to Protective Order
`
`A copy not requiring a
`complete copy to be stored at
`
`one time.
`
`_
`
`Non-volatile storage portion of
`the second memory.
`Chosen signals and chosen
`
`selections.
`
`Means or a mechanism for the
`
`first party to charge a fee.
`
`The control
`
`integrated circuit
`which has been configured to
`the storing of digital
`signals into the memory.
`
`effect
`
`j
`
`36.
`
`I understand that many claim terms from the asserted patents were also construed
`
`by the N2K court.
`
`I have considered and relied on the N2K claim constructions to the extent
`
`that
`
`the N2K courts reasoning has been adopted in the claim construction order in this case. For
`
`example in construing the transferring money electronically terms I am informed from the
`
`Special Masters Report and Recommendation
`
`that there was no new evidence or arguments that
`
`affected the viability of the N2K claim construction.
`
`Thus in applying the transferring money
`
`electronically
`
`terms I
`
`relied on the N2K claim construction
`
`order which held that
`
`the
`
`construction of transferring money electronically included but was not
`
`limited to providing
`
`authorization to charge a credit card account.
`
`14
`
`37.
`
`I have applied any additional claim limitations that were not
`
`included in this
`
`Courts claim construction order as a person of ordinary skill
`
`in the art would have understood
`
`them at the time of the invention in June 13 1988.
`
`185 F. Supp. 2d at 473.
`
`-11-
`
`Page 00014
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`38.
`
`The claim terms construed in the N2K litigation but not
`
`in this Courts claim
`
`construction order are reproduced in the table below. While I did not strictly apply the N2K
`
`constructions
`
`I considered the N2K constructions
`
`in analyzing how a person of ordinary skill
`
`in
`
`the art would have understood the claim terms at the time of the invention.
`
`control
`
`Authority to direct.
`
`possession
`
`Holding as property.
`
`providing a credit card
`number .. so the second party
`is charged money
`sales random access memory
`incoming random
`chip /
`access memory chip /
`playback random access
`memory chip
`before the forming step.
`commanding the second
`integrated circuit .. to initiate
`the purchase
`
`control integrated circuit
`
`regulate the transfer
`
`_
`_
`electrical communication
`
`Transferring money
`
`electronically.
`
`Any RAM in a system which is
`configured to perform the
`function specified whether or
`not that is the only function it
`
`is
`
`configured to perform.
`
`No limitation requiring that a
`request be formulated or that
`the command be personally
`entered by the second party.
`A microelectronics device which
`is capable of performing the
`functions identified in the
`
`patents.
`The first party and second party
`integrated circuits control the
`transfer of the digital signals
`
`i.e. control the transmitting and
`
`receiving of such signals.
`Requiring a hard-wired
`path as to elements
`conduction
`at the same site.
`
`individual songs
`
`A subset of digital audio
`
`temporary staging areas
`
`signals.
`The random access memory
`chip being used for that
`
`purpose.
`
`-12-
`
`Page 00015
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`Term
`
`Constru
`
`A transmitter connected to a
`
`properly programmed control
`
`integrated circuit.
`
`means or a mechanism for
`transmitting the digital audio
`signals from the first memory
`to the second memory
`telephoning the first party ..
`the second party
`
`person-to-by
`
`Not requiring a
`person restriction and not
`excluding the use of machines
`on either or both ends of the
`
`telephone communications.
`
`VI.
`
`The asserted claims of the 573 patent are not invalid for a lack of written
`description and all asserted claims are entitled to a priority date of June 13
`1988.
`
`39.
`
`The Kelly report argues that the asserted claims of the 573 patent are invalid for
`
`failing to meet the written description requirement because the disclosure of the 391 application
`
`purportedly does not support
`
`the claimed telecommunications line.15 The Kelly report further
`
`argues that the claims of the 440 patent are not entitled to a priority date of June 13 1988 for
`
`the same reason.
`
`I disagree with the Kelly reports conclusions because the Kelly report ignores
`
`the disclosure of the 391 application and suffers from hindsight bias-even relying on several
`
`materials that post-date June 13 1988-to arrive at an incorrect understanding of the state of the
`
`art in June 13 1988. The written description of the 391 application fully supports the asserted
`
`patents claiming a telecommunications line.
`
`40.
`
`The
`
`391
`
`application
`
`discloses
`
`several
`
`representative
`
`examples
`
`of
`
`telecommunication lines including transferring data over
`
`telephone lines and well-known
`
`computer network
`
`architectures. Well-known computer
`
`network
`
`architectures
`
`at
`
`the time
`
`ring-15
`
`included
`
`store-and-forward packet-switched
`
`networks
`
`peer-to-peer
`
`networks
`
`and
`
`It
`
`report the only issue raised is whether
`is my understanding that between the Kelly report and the Sofocleous
`the disclosure of the 391 application is sufficient
`lines.
`to support the claiming of telecommunications
`
`-13-
`
`Page 00016
`
`

`
`Confidential Information
`
`Subject
`
`to Protective Order
`
`structured networks.
`
`The representative
`
`examples of telecommunication
`
`lines sufficiently
`
`convey that Mr. Hairs invention was directed to the entire group of telecommunication lines in
`
`June 13 1988.
`
`41.
`
`The
`
`391
`
`application
`
`discloses
`
`structural
`
`features
`
`common
`
`to
`
`all
`
`telecommunications
`
`lines such that
`
`those of skill
`
`in the art would recognize that any type of
`
`telecommunications
`
`line would be suitable for use with the claimed invention.
`
`A.
`
`Disclosure of
`
`the 1988 application
`asserted patents
`
`and prosecution history of the
`
`42.
`
`As the Kelly reports argument
`
`related to the priority of the asserted patents is
`
`only directed to the written description requirement based on a comparison of telephone lines
`
`and telecommunications lines I will only discuss those facts pertinent
`
`to that comparison.
`
`43.
`
`Arthur Hair the named inventor of the asserted patents filed a patent application
`
`on June 13 1988.16
`
`The Patent Office assigned the patent application Serial No. 206497.17
`
`While that application was still pending Mr. Hair filed another patent application on September
`
`18 1990
`
`and the patent office assigned the application Serial No.
`
`586391
`
`the 391
`
`application.18
`
`44.
`
`Mr. Hair was the only named inventor on both applications.19
`
`45.
`
`During the prosecution
`
`of
`
`the 391
`
`application Mr. Hair
`
`amended
`
`the
`
`specifica