Case CBM2013-00023
`Patent No. 5,966,440
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00023
`Patent 5,966,440
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`
`PETITIONER APPLE INC.’S FIRST SET OF OBJECTIONS TO PATENT
`OWNER SIGHTSOUND TECHNOLOGIES, LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting in
`
`a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits the
`
`following objections to Patent Owner SightSound Technologies, LLC’s (“Patent
`
`Owner”) Exhibits 2310, 2321, 2323, 2324, 2327, 2328, 2330, 2332, 2341, 2342, 2344-
`
`2347, 2350, 2351, and 2353 and any reference to/reliance on the foregoing, including,
`
`without limitation, citations thereto in Patent Owner’s Response Pursuant To 37
`
`C.F.R. § 42.220 (“Response”). Petitioner’s objections below apply the Federal Rules
`
`of Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
`1
`
`
`
`Apple Exhibit 4469
`Apple v. SightSound Technologies
`CBM2013-00020
`Page 00001
`
`
`Patent No. 5,966,440
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`______________
`
`Case CBM2013-00023
`Patent 5,966,440
`______________
`
`Before the Honorable MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`
`PETITIONER APPLE INC.’S FIRST SET OF OBJECTIONS TO PATENT
`OWNER SIGHTSOUND TECHNOLOGIES, LLC’S EXHIBITS
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), the undersigned, on behalf of and acting in
`
`a representative capacity for Petitioner Apple Inc. (“Petitioner”), hereby submits the
`
`following objections to Patent Owner SightSound Technologies, LLC’s (“Patent
`
`Owner”) Exhibits 2310, 2321, 2323, 2324, 2327, 2328, 2330, 2332, 2341, 2342, 2344-
`
`2347, 2350, 2351, and 2353 and any reference to/reliance on the foregoing, including,
`
`without limitation, citations thereto in Patent Owner’s Response Pursuant To 37
`
`C.F.R. § 42.220 (“Response”). Petitioner’s objections below apply the Federal Rules
`
`of Evidence (“F.R.E.”) as required by 37 C.F.R § 42.62.
`1
`
`
`
`Apple Exhibit 4469
`Apple v. SightSound Technologies
`CBM2013-00020
`Page 00001
`
`
`
`I. Objections to Portions of Exhibit 2310 and Any Reference to/Reliance
`Thereon, and Improper Incorporation Thereof into Response
`
`Evidence objected to: Exhibit 2310 of the Response, titled “Declaration of
`
`Scott Sander In Support Of Patent Owner SightSound Technologies, LLC’s Response
`
`Petition.”
`
`Grounds for objection: F.R.E. 403 (“Excluding Relevant Evidence for
`
`Prejudice, Confusion, Waste of Time, or Other Reasons”); F.R.E. 702 (“Testimony by
`
`Expert Witnesses”); F.R.E. 703-705 (Witness Not Qualified to Provide Expert
`
`Testimony); F.R.E. 701 (“Opinion Testimony by Lay Witnesses”); F.R.E. 801, 802
`
`(Impermissible Hearsay); F.R.E. 602 (“Need for Personal Knowledge”); 37 C.F.R.
`
`42.61 (“Admissibility”).
`
`To the extent that the witness, Scott Sander, providing the declaration attached
`
`as Exhibit 2310 purports to be providing expert opinions or testimony, the
`
`declaration provides no evidence that the declarant is an expert in the pertinent
`
`subject matter and is qualified to provide opinions contained in Exhibit 2310, or that
`
`he has the necessary “scientific, technical, or other specialized knowledge [to] help the
`
`trier of fact to understand the evidence or to determine a fact in issue” (F.R.E. 702).
`
`Thus, the declaration does not indicate that he is sufficiently knowledgeable in the art
`
`(F.R.E. 702) and he is thus unqualified to provide an expert opinion. Mr. Sander, in
`
`his declaration, also fails to provide sufficient underlying facts or data upon which any
`
`such statements contained therein could legitimately be based, in violation of F.R.E.
`
`
`
`2
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`Page 00002
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`
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`702 (see also F.R.E. 703-705).
`
`Even if the witness, Mr. Sander, were not testifying as expert in rendering
`
`opinions, his testimony is not “limited to one that is: (a) rationally based on the
`
`witness’s perception, (b) helpful to clearly understanding the witness’s testimony or to
`
`determining a fact in issue, and (c) not based on scientific, technical, or other
`
`specialized knowledge within the scope of Rule 702” because, inter alia, such opinions
`
`are not helpful to clearly understanding his testimony or to assess a fact in issue, in
`
`violation of F.R.E. 701.
`
`For example, in paragraphs 5, 12, and 13 of Exhibit 2310, Mr. Sander purports
`
`to offer his “understanding” and beliefs regarding, inter alia, the attitudes of “music
`
`labels,” “record labels,” and “content holders.” However, Mr. Sander fails to provide
`
`sufficient underlying facts or data upon which his statements could be legitimately
`
`based, in violation of F.R.E. 702 (see also F.R.E. 602, 703-705). Moreover, his
`
`statements are not “rationally based” on his perception because there is no indication
`
`of whether Mr. Sander had any observation or first-hand knowledge of information to
`
`support such understandings or beliefs, in violation of F.R.E. 701 (see also F.R.E. 602).
`
`Further, the report contains out of court statements offered for the truth of the
`
`matters asserted therein (see, e.g., Ex. 2310 ¶¶ 2, 4, 5, 9, 10), and which constitute
`
`impermissible hearsay to which no exception or exclusion has been demonstrated
`
`(F.R.E. 801, 802).
`
`Accordingly, permitting reliance on this testimony in the Response or other
`3
`
`
`
`Page 00003
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`
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`submissions of Patent Owner would be misleading and unfairly prejudicial to
`
`Petitioner (F.R.E. 403).
`
`II. Objections to Exhibit 2321 and Any Reference to/Reliance Thereon, and
`Improper Incorporation Thereof into Response
`
`Evidence objected to: Exhibit 2321 of the Response, titled “Declaration of
`
`John P. Stautner Concerning CompuSonics Corp. and CompuSonics Video Corp.”
`
`Grounds for objection: F.R.E. 402 (“General Admissibility of Relevant
`
`Evidence”); F.R.E. 403 (“Excluding Relevant Evidence for Prejudice, Confusion,
`
`Waste of Time, or Other Reasons”); 37 C.F.R. 42.61 (“Admissibility”); F.R.E. 601
`
`(“Competency to Testify in General”); F.R.E. 602 (“Need for Personal Knowledge”);
`
`F.R.E. 701 (“Opinion Testimony by Lay Witness”); F.R.E. 702 (“Testimony by
`
`Expert Witnesses”); F.R.E. 703-705 (Witness Not Qualified to Provide Expert
`
`Testimony); F.R.E. 801, 802 (Impermissible Hearsay).
`
`The statements by the witness, John P. Stautner, that purport to declare what
`
`any person associated with “CompuSonics” planned, conceived, intended, anticipated,
`
`developed, or heard are unsupported by the personal knowledge of the declarant and
`
`thus improper under at least F.R.E. 601 and 602, and irrelevant under F.R.E. 402,
`
`and, to the extent it is argued they have any relevance, their admission would be
`
`improper, misleading and prejudicial under F.R.E. 403 (see also F.R.E. 701). Moreover,
`
`these statements and others are out of court statements offered for the truth of the
`
`matter asserted therein and constitute impermissible hearsay (F.R.E. 801, 802) (see, e.g.,
`
`
`
`4
`
`Page 00004
`
`
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`Ex. 2321 ¶¶ 7, 8, 12, 14-18, 20, 22-24). There has been no showing that a hearsay
`
`exception or exclusion applies to the statements (F.R.E. 801, 802).
`
`Further, there is no showing that Mr. Stautner is qualified to provide any expert
`
`opinion or other opinion about claim construction or the application of claim terms
`
`from the ‘440 patent, in violation of F.R.E. 702. Further, Exhibit 2321 fails to
`
`provide sufficient underlying facts or data upon which the statements contained
`
`therein could legitimately be based, in violation of F.R.E. 702 (see also F.R.E. 703-705).
`
`Accordingly, Mr. Stautner’s expert opinions about claim construction (see Ex. 2321¶
`
`21) violate F.R.E. 702-705.
`
`Accordingly, permitting any reliance on this purported testimony in the
`
`Response or other submissions of Patent Owner would be misleading and unfairly
`
`prejudicial to Petitioner (F.R.E. 403).
`
`III. Objections to Paragraphs 2, 5, 6, 10, 20, 24, 25, 28, and 29 of Exhibit 2323
`
`and Any Reference to/Reliance Thereon
`
`Evidence objected to: Paragraphs 2, 5, 6, 10, 20, 24, 25, 28, and 29 of Exhibit
`
`2323 of the Response, titled “Declaration of David R. Marsh In Support of Patent
`
`Owner SightSound Technologies, LLC’s Responses Petition.” (The declarant, David
`
`R. Marsh, is an attorney in the office of Patent Owner’s counsel, Arnold & Porter,
`
`LLP.)
`
`Grounds for objection: 37 C.F.R. § 42.61 (“Admissibility”); F.R.E. 402
`
`(“General Admissibility of Relevant Evidence”); F.R.E. 403 (“Excluding Relevant
`5
`
`
`
`Page 00005
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`
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`Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons”); F.R.E. 901
`
`(“Authenticating or Identifying Evidence”); F.R.E. 602 (“Need for Personal
`
`Knowledge”); F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003
`
`(“Admissibility of Duplicates”); F.R.E. 601 (“Competency to Testify in General”).
`
`Exhibit 2323 is not cited in Patent Owner’s Response. This exhibit appears to
`
`be an attempt to verify the authenticity of numerous exhibits, but fails to provide a
`
`basis for doing so. For example, as to Exhibits 2327, 2328, 2341, 2342, and 2346,
`
`Exhibit 2323 contains only a conclusory assertion that they are “true and correct”
`
`copies of particular documents, with no indication of their source or other bases for
`
`these statements. (See Ex. 2323 ¶¶ 5, 6, 10, 20, 24.) In addition, as to Exhibits 2347,
`
`2350, and 2351, Exhibit 2323 merely asserts that these are “true and correct” copies
`
`of materials available online, with no indication of a date on which they purport to
`
`have been “true and correct” copies, or other information to suggest a basis for these
`
`statements. (See Ex. 2323 ¶¶ 25, 28, 29.) Mr. Marsh fails to provide any relevant
`
`statement or personal knowledge regarding these matters (F.R.E. 602; 37 C.F.R. §
`
`42.61), and fails to establish any proper basis for concluding that the aforementioned
`
`documents are true and accurate copies of what they purport to be (or as of what
`
`date, in the case of Exhibits 2347, 2350, and 2351) (F.R.E. 901). (See Ex. 2323 ¶¶ 25,
`
`28, 29.) Further, Mr. Marsh fails to provide any explanation or basis for the clearly
`
`visible modifications to the first page of Exhibit 2324 thus failing to demonstrate such
`
`documents should be admissible to the same extent as the original (e.g., F.R.E. 901,
`6
`
`
`
`Page 00006
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`
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`1002, 1003) (see ¶ 2). Because these statements in paragraphs 2, 5, 6, 10, 20, 24, 25, 28,
`
`29 of Exhibit 2323 are unsupported by the personal knowledge of the declarant, they
`
`are improper under at least F.R.E. 601; and because they fail to provide the purported
`
`authentication of other exhibits, they are irrelevant under F.R.E. 402, and in any
`
`event, even if argued to be relevant, their admission would be improper, misleading,
`
`and prejudicial under F.R.E. 403.
`
`IV. Objections to Exhibit 2324 and Any Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit 2324 of the Response, titled “Deposition of
`
`David Michael Schwartz.”
`
`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`F.R.E. 1002 (“Requirement of the Original”); F.R.E. 1003 (“Admissibility of
`
`Duplicates”); 37 C.F.R. 42.61 (“Admissibility”).1
`
`As discussed above, Exhibit 2323 asserts, in paragraph 2, that Exhibit 2324 is a
`
`“true and correct” copy of a deposition transcript in this matter. However, Mr. Marsh
`
`fails to provide any explanation or basis for the modifications to the first page (F.R.E.
`
`901) thus failing to demonstrate such documents should be admissible to the same
`
`extent as the original (F.R.E. 1002, 1003).
`
`Patent Owner fails to provide for Exhibit 2324 the authentication required by
`
`
`1 Apple further maintains the objections made during the deposition and reflected in
`
`the deposition transcript.
`
`
`
`7
`
`Page 00007
`
`
`
`F.R.E. 901. Although the witness providing the declaration that purports to
`
`authenticate this exhibit asserts that it is a “true and accurate” copy, there is no
`
`suggestion or explanation of the modifications made to the document.
`
`V. Objections to Exhibits 2330, 2332, 2344, 2345 and Any Reference
`to/Reliance Thereon
`
`Evidence objected to: Exhibits 2330, 2332, 2344, and 2345 of the Response,
`
`titled “United States Securities and Exchange Commission, Form 10-K, Apple Inc.,”
`
`“United States Securities and Exchange Commission, Form 10-K, Apple Computer,
`
`Inc.,” “United States Securities and Exchange Commission, Form 10-K, Apple Inc.,”
`
`and “United States Securities and Exchange Commission, Form 10-K, Apple Inc.,”
`
`respectively.
`
`Grounds for objection: F.R.E. 403 (“Excluding Relevant Evidence for
`
`Prejudice, Confusion, Waste of Time, or Other Reasons”); F.R.E. 106 (“Remainder of
`
`or Related Writings or Recorded Statements”); 37 C.F.R. § 42.61 (“Admissibility”).
`
`Exhibits 2320, 2332, 2344 and 2345 are incomplete excerpts of documents. To
`
`the extent the Response or any other submission of Patent Owner purports to refer to
`
`or rely on these exhibits, Petitioner objects to such reference to/reliance on isolated
`
`portions as incomplete, misleading, and unfairly prejudicial to Petitioner (F.R.E. 403,
`
`106).
`
`VI. Objections to Exhibits 2347, 2350, and 2351 and Any Reference
`to/Reliance Thereon
`
`Evidence objected to: Exhibits 2347, 2350, and 2351 of the Response, titled
`8
`
`
`
`Page 00008
`
`
`
`“How iTunes Works,” “Music Tab,” and “Artist Page,” respectively.
`
`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`37 C.F.R. § 42.61 (“Admissibility”).
`
`As discussed above, Exhibit 2323 asserts, in paragraphs 25, 28 and 29, that
`
`Exhibits 2347, 2350 and 2351 are “true and correct” copies of materials from the
`
`Internet. However, there is no indication, among other things, of the date on which
`
`any of these exhibits are purported to be “true and correct” copies and no evidence
`
`has been provided to authenticate these materials, in violation of, inter alia, F.R.E. 901
`
`(see also objections, supra, to related paragraphs of Exhibit 2323).
`
`VII. Objections to Exhibits 2327, 2328, 2341, 2342, and 2346 and Any
`Reference to/Reliance Thereon
`
`Evidence objected to: Exhibit 2327 of the Response, multipage document,
`
`with the first page titled “2008 Year-End Shipment Statistics”; Exhibit 2328 of the
`
`Response, titled “Seminar, Transcribed from Video Recording For: Kenyon &
`
`Kenyon”; Exhibits 2341, 2342, and 2346 of the Response, titled “Apple Computer
`
`F4Q05 Conference Call Transcript Prepared Remarks (AAPL),” “Apple F2Q08 (Qtr
`
`End 3/29/08) Earnings Call Transcript,” and “Apple F1Q08 (Qtr End 12/29/07)
`
`Earnings Call Transcript,” respectively.
`
`Grounds for objection: F.R.E. 901 (“Authenticating or Identifying Evidence”);
`
`37 C.F.R. § 42.61 (“Admissibility”).
`
`As discussed above, Exhibit 2323 asserts, in paragraphs 5, 6, 19, 20, and 24 that
`
`
`
`9
`
`Page 00009
`
`
`
`Exhibits 2327, 2328, 2341, 2342 and 2346 are “true and correct” copies of certain
`
`documents, but with no evidence of a basis for this assertion and no evidence to
`
`authenticate these materials, in violation of, inter alia, F.R.E. 901 (see also objections,
`
`supra, to related paragraphs of Exhibit 2323).
`
`VIII. Objections to Sections VII-IX and Paragraphs 2, 65, 77-87, 97 of Exhibit
`2353 and Any Reference to/Reliance Thereon, and Improper
`Incorporation Thereof into Response
`
`Evidence objected to: Exhibit 2353 of the Response, titled “Declaration of
`
`John Snell In Support of Patent Owner SightSound Technologies, LLC’s Response to
`
`Petition.”
`
`Grounds for objection: F.R.E. 702 (“Testimony by Expert Witnesses”); F.R.E.
`
`703-705 (Witness Not Qualified to Provide Expert Testimony); F.R.E. 801, 802
`
`(Impermissible Hearsay); F.R.E. 403 (“Excluding Relevant Evidence for Prejudice,
`
`Confusion, Waste of Time, or Other Reasons”); 37 C.F.R. § 42.61 (“Admissibility”).
`
`The witness, John Snell, providing the declaration attached as Exhibit 2353 is
`
`not an expert in the pertinent subject matter qualified to provide certain of the
`
`opinions contained in Exhibit 2353 and lacks the necessary “scientific, technical, or
`
`other specialized knowledge [to] help the trier of fact to understand the evidence or to
`
`determine a fact in issue” because he is not sufficiently knowledgeable in the topics
`
`addressed in Sections VII – IX, which generally concern, inter alia, CompuSonics,
`
`Apple, iTunes, the iTunes Music Store, and the alleged commercial success of the
`
`patented invention at issue (F.R.E. 702). Mr. Snell is additionally not qualified to
`10
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`
`
`Page 00010
`
`
`
`provide opinions regarding the beliefs of “content producers,” “content holders,” or
`
`the market for digital music (F.R.E. 702). Exhibit 2353 also fails to provide sufficient
`
`underlying facts or data upon which the statements contained therein could
`
`legitimately be based, in violation of F.R.E. 702 (see also F.R.E. 703-705). For
`
`example, there are no rationales or basis for asserting that the “[t]he ITMS [sic] . . . is
`
`Co-Extensive with the Claims of the Patents [sic]” (see Declaration of John Snell In
`
`Support of Patent Owner SightSound Technologies, LLC’s Response to Petition,
`
`Section IX(C)) as required by F.R.E. 702 (see also F.R.E. 703-705; see, e.g., Ex. 2353 ¶¶
`
`88-97).
`
`Further, Mr. Snell purports to make use of statements in the exhibits he cites
`
`for the truth of the matter contained therein but without demonstrating that any
`
`hearsay exception applies, in violation of Rules 801, 802, 703, 403. (See, e.g., Ex. 2353
`
`¶¶ 77-87 93.)
`
`Also, Mr. Snell relies on a document in footnote 26 of its Response that is not
`
`an exhibit of record in this proceeding and not properly submitted pursuant to 37
`
`C.F.R. §§ 42.6(c), 42.51(b)(1), 42.63, and 42.64(b)(2) (see also 37 C.F.R. § 42.223).
`
`Further, footnote 27 appears to be an attempt to verify the authenticity of
`
`Exhibit 2327, but fails to provide a basis for doing so. As to Exhibit 2327, footnote
`
`27 of Exhibit 2353 contains only a conclusory assertion that it is a “true and correct”
`
`copy of that document, with no indication of the source or other bases for the
`
`statement. (See Ex. 2353 n.27.)
`
`
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`11
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`Page 00011
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`
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`Additionally, the witness, Mr. Snell, states that Exhibit 2353 “gives the
`
`opinions, and their underlying bases and reasons, about which [he] may testify
`
`further.” (Declaration of John Snell In Support of Patent Owner SightSound
`
`Technologies, LLC’s Response to Petition at ¶ 2.) To the extent Patent Owner
`
`purports to refer to or rely on any testimony by Mr. Snell that is not contained in
`
`Exhibit 2353, Petitioner objects to any such reference or reliance as unfairly
`
`prejudicial, irrelevant, and outside of scope of the Patent Owner’s Response (F.R.E.
`
`403) and in violation of the applicable rules of the Board, and reserves its right to
`
`assert any additional objections as appropriate.
`
`Respectfully submitted,
`
`By: /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`Steven.baughman@ropesgray.com
`Ching-Lee.fukuda@ropesgray.com
`
`Attorneys for Petitioner Apple Inc.
`
`
`
`Dated: January 10, 2014
`
`
`
`12
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`Page 00012
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONER APPLE
`
`INC.’S FIRST SET OF OBJECTIONS TO PATENT OWNER SIGHTSOUND
`
`TECHNOLOGIES, LLC’S EXHIBITS was served on January 10, 2014 to the
`
`following Counsel for Patent Owner via e-mail, pursuant to the parties’ agreement
`
` /s/ Megan F. Raymond
`Megan F. Raymond
`
`ROPES & GRAY LLP
`
`
`
`
`
`concerning service:
`
`David R. Marsh, Lead Counsel
`Kristan L. Lansbery
`Arnold & Porter LLP
`555 12th St., NW
`Washington, DC 20004
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`
`Attorneys for Patent Owner
`SightSound Technologies, LLC
`
`
`
`
`
`13
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`Page 00013
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