Case CBM2013-00023
`Patent 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
`MOTION TO EXCLUDE UNDER 37 C.F.R. §§ 42.62 AND 42.64
`
`
`
`
`ROPES & GRAY
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`(202) 508-4606 (Telephone)
`(617) 235-9492 (Fax)
`
`
`
`
`
`
`
`By: Attorneys/Agents For Petitioner
`
`J. Steven Baughman, Lead Counsel
`Registration No. 47,414
`Ching-Lee Fukuda, Back-up Counsel
`Registration No. 44,334
`James R. Batchelder, Back-up Counsel
`Pro Hac Vice Granted
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`
`
`TABLE OF CONTENTS
`
`B. 
`
`I. 
`Legal Standard ................................................................................................................ 3 
`II.  Mr. Snell is Not Qualified to Opine Under F.R.E. 702 ........................................... 4 
`A.  No Basis for Opinion That User Interfaces Of SightSound’s Electronic
`Store and iTMS Are Only Insignificantly Different ..................................... 5 
`No Basis for Opinion That iTMS is “Co-Extensive” With The
`Challenged Patent Claims ................................................................................. 8 
`No Basis for Opinions About Commercial Success/Failure ...................... 9 
`C. 
`D.  No Basis for Opinions Based On Erroneous Construction of “Second
`Party” ................................................................................................................. 11 
`E.  No Basis For Opinions Based On Disagreement With The Inventor’s
`Statements, In Prosecution, Regarding The Meaning Of The Challenged
`Claims ................................................................................................................ 13 
`
`
`
`i
`
`

`
`Case CBl\»I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4301 United States Patent 5,966,440
`
`Exhibit 4302 United States Patent 5,966,440 File History
`
`Exhibit 4303 Application No. 90/007,407 (‘440 Patent Reexamination)
`
`Exhibit 4304 United States Patent No. 5,191,573
`
`Exhibit 4305 United States Patent No. 5,191,573 File History
`
`Exhibit 4306 Application No. 90/007,402 (‘573 Patent Reexamination)
`
`Exhibit 4307 Deposition Transcript of Arthur Hair, dated Dec. 1 1, 2012 Sigl1tSound
`Techs., LLC v. Apple Inc., No. 11-1292 (W/.D. Pa.)
`
`Exhibit 4308 Deposition of Scott Sander, dated Dec. 18-19, 2012
`
`Sigl1tSound Tecl1s., LLC v. Apple Inc., No. 1 1-1292 (W/.D. Pa.)
`
`Exhibit 4309 “Joint Telerecording Push: CompuSonics, AT&T Link,” Bi//board (Oct.
`5, 1985)
`
`Exhibit 4310 David Needle, “From the News Desk: Audio/digital interface for the
`IBl\~I PC?,” IIfoWor/d, vol. 6, no. 23, p. 9, June 4, 1984
`
`Exhibit 4311 Larry Israelite, “Home Computing Scenarios for Success,” Bi//board,
`Dec. 15, 1984
`
`Exhibit 4312 International Patent Application \7C'O85/02310, filed on November
`14,1984, and published on l\»Iay 23,1985 (“Softnet”)
`
`Exhibit 4313 United States Patent No. 3,718,906 filed on June 1, 1971, issued on
`February 27,1973 (“Lightner”)
`
`Exhibit 4314 United States Patent No. 3,990,710 filed on March 1, 1971, issued on
`
`November 9, 1976 (“Hughes”)
`
`Exhibit 4315 Image titled, “CompuSonics Digital Audio Telecommunication
`System”
`
`Exhibit 4316 7/ 16/ 84 CompuSonics Letter from David Schwartz to Shareholders
`
`Exhibit 4317 Hyun Heinz Sohn, “A High Speed Telecommunications Interface for
`Digital Audio Transmission and Reception,” presented at the 76th AES
`Convention, October 8-11, 1984
`
`

`
`Case CBl\»I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4318 10/10/85 CompuSonics Letter from David Schwartz to Shareholders
`
`Exhibit 4319 CompuSonics Video Application Notes — CSX Digital Signal
`Processing (1 986)
`
`Exhibit 4320 Image titled, “CompuSonics Digital Audio Software Production/
`Distribution”
`
`Exhibit 4321 Excerpts of Lecture at Stanford by D. Schwartz and]. Stautner, 1987
`(video)
`
`Exhibit 4322 Bryan Bell, “Synth—Bank: The Ultimate Patch library,” E/ecfronic
`M//Iicimz (Sept. 1986)
`
`Exhibit 4323 United States Patent No. 4,682,248 filed on September 17, 1985, issued
`on July 21, 1987 (“Schwartz Patent”)
`
`Exhibit 4324 “The Search for the Digital Recorder,”Forl1me, Nov. 12, 1984
`
`Exhibit 4325 2/22/ 1986 Agreement between Synth—Bank and Artist
`
`Exhibit 4326 3/17/1987 United States Patent & Trademark Office Notice of
`Acceptance and Renewal, Serial No. 73/568543
`
`Exhibit 4327 “SynthBank Bulletin Board,” Kgrboarrl Magazine (l\Iarch 1987)
`
`Exhibit 4328 “Inside 1\~Iacintosh,” Volumes I, II, and III, Addison—\Y/esley Publishing
`Company, Inc. (1985)
`
`Exhibit 4329 Craig Partridge, “The Technical Development of Internet Email,” BBN
`Technologies
`
`Exhibit 4330 United States Patent No. 4,124,773 filed on November 26, 1976, issued
`on November 7, 1978 (“Elkins”)
`
`Exhibit 4331 United States Patent No. 4,667,088 filed on November 1, 1982, issued
`on lvlay 19, 1987 (“Kramer et al.”)
`
`Exhibit 4332 United States Patent No. 4,528,643 filed on January 10, 1983, issued on
`July 9, 1985 (“Freeny”)
`
`Exhibit 4333 Photo of CompuSonic equipment
`
`Exhibit 4334 Declaration of Dr. Kelly In Support of Petition for Covered Business
`lVIetl1od Patent Review
`
`Exhibit 4335 Declaration of David Schwartz In Support of Petition for Covered
`Business lVIethod Patent Review
`
`

`
`Case CBl\~I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4336 11 / 19/ 12 Special lVIaster’s Report and Recommendation on Claim
`Construction (D.I. 142) .5‘/Lg/3f.S'o11mz' Tee/9.5., LLC 12. Apple Inc. No. 11-1292
`(W.D. Pa)
`
`Exhibit 4337 2/43/43 Order re Claim Construction (D.I. 175), S{g/2115'oz/ml Tee/25.,
`LLC v. /lpp/e Ina, No. 11-1292 (W/.D. Pa.)
`
`Exhibit 4338 United States Patent No. 5,675,734 File History
`
`Exhibit 4339 Excerpt from C/mmber: Seietzee and Technology Diefionagi (1988)
`
`Exhibit 4340 Excerpt from Websferx HNe1r Riverside U/Iiverxigl Didionagi (1988)
`
`Exhibit 4341 Declaration of Dr. John R]. Kelly, dated Sept. 7, 2012
`
`Exhibit 4342 Net)’ Te/emeording Mei/9011'for/1//dio, Broadcast Management/Engineering,
`pp. 14-15, Oct. 1985
`
`Exhibit 4343 Excerpt of Plaintiff SightSound Techs., LLC’s Expert Report of Dr.
`Douglas Tygar Regarding Infringement, dated April 22, 2013
`
`Exhibit 4344 Declaration of Flora D. Elias—lVIique In Support of Petition for
`Covered Business Method Patent Review
`
`Exhibit 4345 Declaration of Roberto Gonzalez In Support of Petition for Covered
`Business lVIethod Patent Review
`
`Exhibit 4346 Declaration of Megan F. Raymond In Support of Petition for Covered
`Business lVIethod Patent Review
`
`Exhibit 4347 Declaration of Ching—Lee Fukuda In Support of Petition for Covered
`Business lVIethod Patent Review
`
`Exhibit 4348 Transcription of Audio, Excerpts of CompuSonics Lecture
`
`(Lecture at Stanford by D. Schwartz and]. Stautner, 1987
`
`Exhibit 4349 Expert Report of Dr. John P. Kelly Regarding Non—Infringement of
`United States Patent Nos. 5,191,573 and 5,966,440
`
`Exhibit 4350 Virgin Digital Shuts Down, Sept. 24, 2007
`
`Exhibit 4351 AOL, Now Focused on Free, Sells Its Paid l\»Iusic Service, Jan.13, 2007.
`
`Exhibit 4352 Walmart Closing Online Music Store, Aug. 10, 2011
`
`Exhibit 4353 ITunes’ Success Revolutionizes IVIIJSIC Business
`
`iv
`
`

`
`Case CBl\~I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4354 iTunes Music Store Sells Over One l\Iillion Songs in First Week, May 5,
`2003
`
`Exhibit 4355 April 26, 2013 Email S. Callagy to D. Cohen
`
`Exhibit 4356 Declaration of Arthur Rangel
`
`Exhibit 4357 Declaration of Megan F. Raymond
`
`Exhibit 4358 Private Placement Memorandum, April 27, 1999, SightSound.com
`
`Exhibit 4359 Two Year Expansion Plan for Virtual Records
`
`Exhibit 4360 SightSound Technologies Confidential Offering Memorandum, Allen
`& Company LLC
`
`Exhibit 4361
`
`April 12, 2000 l\Iemorandum from Alex Lepore to Files Re: Company
`Stock Valuation
`
`Exhibit 4362 Business Plan for Digital Sight/Sound, Inc-
`
`Exhibit 4363 November 30, 1993 Letter from Ansel l\I. Schwartz to Arthur Hair
`
`Exhibit 4364 Prospectus, Digital Sight/Sound (August 15, 1997)
`
`Exhibit 4365 Now showing at a computer near you, News Tribune (1\/Iay 28, 2000)
`
`Exhibit 4366 Deposition Transcript ofJohn Snell in Apple Inc. V. SightSound
`Technologies, LLC, Nos. CBl\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4367 Redacted Version of Plaintiff SightSound Technologies, LLC's Expert
`Report ofJohn Snell On Validity, 6/5/13
`
`Exhibit 4368 Exhibit 9 of the Deposition ofJohn Snell in Apple Inc. V. SightSound
`Technologies, LLC, Nos. CBl\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4369 Exhibit 10 of the Deposition ofJohn Snell in Apple Inc. V. Sigl1tSound
`Technologies, LLC, Nos. CBl\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4370 Exhibit 11 of the Deposition ofJohn Snell in Apple Inc. V. Sigl1tSound
`Technologies, LLC, Nos. CBl\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4371 Exhibit 12 of the Deposition ofJohn Snell in Apple Inc. V. Sigl1tSound
`Technologies, LLC, Nos. CBl\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4372 Exhibit 13 of the Deposition ofJohn Snell in Apple Inc. V. Sigl1tSound
`Technologies, LLC, Nos. CBl\~I 2013-00020, -0023, March 6, 2014
`
`

`
`Case CBl\~I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4373 Exhibit 14 of the Deposition of]ol1n Snell in Apple Inc. v. Sigl1tSound
`Technologies, LLC, Nos. CB1\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4374 Exhibit 15 of the Deposition of]ol1n Snell in Apple Inc. v. Sigl1tSound
`Technologies, LLC, Nos. CB1\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4375 Exhibit 16 of the Deposition of]ol1n Snell in Apple Inc. v. Sigl1tSound
`Technologies, LLC, Nos. CB1\~I 2013-00020, -0023, March 6, 2014
`
`Exhibit 4376 Robin Raskin, Telecomputing: Shopping in Electronic Stores: Sick of
`Crowds? Tied Up At VY/ork? \Want to Compare Prices? Go Online and
`Browse, Fa/nib! Co/I¢1/fing, Vol. 3, No. 1 1 (November 1985)
`
`Exhibit 4377 James Capparell, Three times as much Antic Software now on
`CompuServe, ANHC T/9e Afari Rexo//rte (April 1988)
`
`Exhibit 4378 Richard Mansfield, Editor’s Notes, Coiizpz/fe, Vol. 9, No. 3, Issue 82
`(lVIarcl1 1987)
`
`Exhibit 4379 Andrew Zipern, Technology Briefing - Software: Alliance W/ill Acquire
`Liquid Audio, NYTimes.com (june 14, 2002),
`http: / /www.nytimes.com/2002/06/ 14/business/technology—briefing-
`software-alliance-will-acquire—1iquid—audio.html
`
`Exhibit 4380 Florence Fabricant, How Telephone Orders Deliver The Goods, The
`New York Times (March 4, 1987)
`
`Exhibit 4381 Shiela Toomey, Like To Shop At Home? This Is For You All Need Is
`A TV, Phone And Credit Card Or Checks That Don’t Bounce,
`Anchorage Daily News (September 13, 1987)
`
`Exhibit 4382 Betsy Lammerding, Shopping By TV A Big Turn-On For 1\«Iany Buyers,
`Akron Beacon Journal Oanuary 25, 1987)
`
`Exhibit 4383 iTunes: You've never been so easily entertained, iTunes (March 17,
`2014), http://www.apple.com/itunes/
`
`Exhibit 4384 iTunes: iTunes looks and sounds better than ever., iTunes (l\«Iarch 17,
`2014) , http: / /www.apple.com/itunes/ features /
`
`Exhibit 4385 FAQS: For Podcast Fans, iTunes (1VIarch 17, 2014),
`http: / /www.apple.com/itunes/podcasts/ fanfaq.html
`
`Exhibit 4386 iTunes: Give the gift of iTunes, iTunes (l\~Iarch 18, 2014),
`http: / /www.apple.com/itunes/gifts/
`
`Exhibit 4387 iTunes Store Allowance, iTunes Support (1\Iarch 17, 2014),
`http:/ /support.apple.com/kb/HT2105
`
`vi
`
`

`
`Case CBl\I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4388
`
`Exhibit 4389
`
`Exhibit 4390
`
`Exhibit 439 1
`
`Rush Jones, Aggregation and Aggravation — l\~Iicropayments 2013,
`PaymentsVieWs (August 1 6, 2013),
`http: / /paymentsvieWs.com/201 3/08/ 1 6/aggregation—and—aggravation—
`rnicropayments—201 3 /
`
`l\/Iarek lVIaurizio, Payment Systems, Winter 201 1 ,
`http: / /www.dsi.unive.it/ ~marek/ files/09.5"/o20—
`"/o20payment°/o20systems.pdf
`
`Apple and Pepsi to Give Away 100 lVIi]]ion Free Songs, Apple Press
`Info (October 16, 2003),
`http: / /WWw.apple.com/pr/library/2003/ 1 0/ 16Apple—and—Pepsi—to—
`GiVe—AWa 7-1 00—l\/Iillio11—Free—So11gs.l1trnl
`
`Coca—Cola & Apple Team Up on Major Music Promotions in Europe,
`Apple Press Info (August 2, 2006),
`https: / /WwW.apple.com/pr/library/2006/08/02Coca—Cola—Apple—
`Team—Up—on—Major—Music—Promotions—in—Europe.html
`
`Exhibit 4392
`
`iTunes Music Store Now Accepts PayPal, Apple Press Info (December
`10, 2004), l1ttp: / /WWW.apple.com/pr/library/2004/ 12/ 1 0iTunes—
`1\rIusic—Store—NoW—Accepts—PayPal.html
`
`Exhibit 4393
`
`United States Patent No. 3,920,908
`
`Exhibit 4394
`
`United States Patent No. 4,759,060
`
`Exhibit 4395
`
`Exhibit 4396
`
`Exhibit 4397
`
`A Nation Onlinez Entering the Broadband Age, U.S. Dept. of
`Commerce (Sept. 2004),
`http: / /WWW.ntia.doc.goV/files/ntia/editor_uploads/NationOnlineBro
`adband04_files/NationOnlineBroadband04.pdf
`
`Amy Harmon, Music Industry in Global Fight on \Veb Copies,
`NYTimes.com, (October 7, 2002),
`http: / /www.nytimes.com/2002/ 10/07/us/music—industry—in-global-
`fight—on—Web—copies.htrnl?pageWanted=all&src=pm
`
`Apple Computer, Inc. Form 10-K, Fiscal year ending September 24,
`2005, SEC.goV (lVIarch 18, 2014),
`http: / /WWW. sec.gov/Archives/edgar/data/ 3201 93/0001 10465905058
`421 /a05—20674_1 10k.htm
`
`Exhibit 4398
`
`Brad King, Napster's Assets Go for a Song, W/ired (Nov. 28, 2002),
`http: / /wwW.Wired.com/entertainment/music/news/2002/ 1 1 / 56633
`
`vii
`
`

`
`Case CBl\I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4399 Jeff Leeds, Grokster Calls It Quits on Sharing Music Files,
`NYTimes.com (Nov. 8, 2005),
`http: / /www.nytimes.com/2005/ 11 /08/technology/08grokster.html?_r
`=0
`
`Exhibit 4400 Apple Launches the iTunes Music Store, Apple Press Info (April 28,
`2003), https: / /www.apple.com/pr/library/2003 /04/28Apple-
`Launches—the—iTunes—Music—Store.htrnl
`
`Exhibit 4401 Federal Communications Commission, Making the Connections,
`Communications History (Nov. 21, 2005),
`http: / /transition.fcc.gov/omd/l1istory/internet/making-
`connections.l1tml
`
`Exhibit 4402 Marc Fisher, Download Uproar: Record Industry Goes After Personal
`Use, The Washington Post (Dec. 30, 2007),
`l1ttp: / /www.washingtonpost.com/wp—
`dyn/content/article/2007/ 1 2/28/AR20071 22800693.html.
`
`Exhibit 4403 RIAA Threatens to Sue Hundreds for Illegal File—Shafing,
`FoxNews.com (]une 26, 2003), available at
`http: / /www.foxnews.com/ story/0,2933,90403,00.html;
`
`Exhibit 4404 Ruth Schubert, Tech—Savvy Getting Music for a Song; Industry
`Frustrated That Internet Makes Free Music Simple, Seattle Post-
`Intelligencer, Feb. 10, 1999
`
`Exhibit 4405 Sam Costello, Court Orders Napster to Stay ShutAppeals court rejects
`company's request to overturn shutdown order, PC\Vorld.com (Mar.
`25, 2002), http: / /www.pcworld.com/article/91 144/article.html
`
`Exhibit 4406 Sarah McBride and Ethan Smith, l\Iusic Industry to Abandon lVIass
`Suits, The Wall Streetjournal (Dec. 19, 2008),
`http: / /online.wsj.com/article/SB1 22966038836021 1 37.l1trnl
`
`Exhibit 4407 Stan Liebowitz, File Sharing: Creative Destruction or Just Plain
`Destruction?, 49 Journal of Law & Economics 1, 13-17 (April 2006)
`
`Exhibit 4408 The RIAA: "The Piracy Rate Is Growing", Bloomberg Businessweek
`1\rIagazine (1\/Iay 12, 2002),
`http: / /www.businessweek. com/stories /2002-05-1 2/tl1e—riaa—tl1e—
`piracy—rate—is—growing
`
`Exhibit 4409 Larry Sarisky, "W/ill Removable Hard Disks Replace the Floppy?," Bjfe
`Magazine, Vol. 8, Number 3 (lvlarch 1983)
`
`viii
`
`

`
`Case CB1\~I2013—00023
`
`Patent 5,966,440
`
`EXHIBIT LIST
`
`Exhibit 4410 United States Patent No. 4,567,359
`
`Exhibit 4411 United States Patent No. RE32,115
`
`Exhibit 4412 Barry \Villis, AT&T's a2b music Joins the Online Stampede,
`Stereophile.com, l1ttp: / /www.stereophile.com/news / 1 01 33/ (March
`29, 1 99 8)
`
`Exhibit 4413 Declaration ofJeff Robbin
`
`Exhibit 4414 Declaration of Lawrence Kenswil
`
`Exhibit 441 5 Declaration of Marco l\/Iazzoni
`
`Exhibit 4416 Declaration of Tom W/eyer
`
`Exhibit 4417 Liquid audio, available at
`l1ttp: / /www.crunchbase.com/company/liq11id-audio (last visited l\Iar.
`20, 2014)
`
`Exhibit 4418 1\rIichael Stroud, Big Hopes for Hollywood Net Film, \Vired.com,
`http: / /www.wired. com/culture/lifestyle/news/2000/03 /35076
`(1\/[arch 23, 2000)
`
`Exhibit 4419 Protective Order (Dkt. No. 56) entered in SightSound Technologies,
`LLC v. Apple Inc., Civil Action No. 2:11—cv—01292—D\Y/A (VY/estern
`District of Pennsylvania)
`
`Exhibit 4420 Second Declaration of Dr. John P. Kelly In Support Of Apple Inc.'s
`Petition For Covered Business l\~Iethod Patent Review Of United States
`
`Patent No. 5,966,440 Pursuant To 35 U.S.C. § 321, 37 C.F.R § 42.304
`
`Exhibit 4421 United States Patent No. 5,561,670
`
`Exhibit 4422 United States Patent No. 6,453,355
`
`Exhibit 4423 United States Patent No. 6,538,665
`
`

`
`EXHIBIT LIST
`
`Case CB1\»I2013—00023
`
`Patent 5,966,440
`
`Exhibit 4434 United States Patent No 7 650 570
`
`Exhibit 4435 United States Patent No 7 653 685
`
`Exhibit 4436 United States Patent No. 7,672,464
`
`Exhibit 4437 United States Patent No 7 680 849
`
`Exhibit 4438 United States Patent No 7 685 163
`
`Exhibit 4439 United States Patent No 7 686 215
`
`Exhibit 4440 United States Patent No 7 747 765
`
`Exhibit 4441 United States Patent No. 7,797,446
`
`Exhibit 4442 United States Patent No. 7,827,259
`
`

`
`EXHIBIT LIST
`
`Case CB1\~I2013—00023
`
`Patent 5,966,440
`
`Exhibit 4460 Apple W/'ins 2002 Technical GRAl\Il\»IY Award, Apple Press Info
`(February 26, 2002),
`http: / /WWW.apple.com/pr/library/2002/02/26Apple—Wh1s—2002—
`Technical— GRAlV[MY—Award.html
`
`Exhibit 4461 l\Iay W/ong, Apple's iPod in Short Supply for Holidays, Associated
`Press Online, LexisNexis (Dec. 18, 2004)
`
`Exhibit 4466 Sandeep Junnarkar, 42b MllJi£ feam /eaves AT(")‘Tfor Reczpmm/, CNET,
`http: / /news.cnet.com/a2b—Inusic—tearn—leaVes—att—for—reciprocal/21 00-
`l023_3—226006.l1tInl (hiay 18, 1999)
`
`Exhibit 4467 Declaration of 1\1ichael P. Duffey
`
`Exhibit 4468 Proposed Protective Order, Office Patent Trial Practice Guide at 77
`Fed. Reg. 48756, 48771 (Aug. 14, 2012)
`
`

`
`EXHIBIT LIST Exhibit 4469 Petitioner Apple Inc’s First Set of Objections to Patent Owner
`
`Sightsound Technologies LLC’s Exhibits, dated January 10, 2014
`
`Case CB1\~I2013—00023
`
`Patent 5,966,440
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`
`Petitioner, Apple Inc. (“Petitioner”), respectfully submits this Motion to
`
`Exclude pursuant to 37 C.F.R. §§ 42.62 and 42.64, and Scheduling Order §4(b) (Dkt.
`
`12; 26; 28). As an initial matter, Petitioner respectfully submits that the Board, sitting
`
`as a non-jury tribunal with administrative expertise, is well-positioned to determine
`
`and assign the appropriate weight to be accorded to the evidence presented by both
`
`Petitioner and Patent Owner SightSound Technologies LLC (“Patent Owner”) in this
`
`patentability trial without the need for formal exclusion. See, e.g., S.E.C. v. Guenthner,
`
`395 F. Supp. 2d 835, 842 n.3 (D. Neb. 2005) (admitting expert testimony over
`
`objections; “Trial courts should be more reluctant to exclude evidence in a bench trial
`
`than a jury trial. . . . [E]vidence should be admitted and then sifted [and] the trial court
`
`is presumed to consider only the competent evidence and to disregard all evidence
`
`that is incompetent”; “‘the better course’ is to ‘hear the testimony, and continue to
`
`sustain objections when appropriate’”; “[T]he court has admitted the testimony . . .
`
`and has accorded it appropriate weight.” (citations omitted)); Builders Steel Co. v.
`
`Comm’r of Internal Revenue, 179 F.2d 377, 379 (8th Cir. 1950) (vacating Tax Court
`
`decision for exclusion of competent and material evidence; “In the trial of a nonjury
`
`case, it is virtually impossible for a trial judge to commit reversible error by receiving
`
`incompetent evidence . . . . On the other hand, a trial judge who, in the trial of a
`
`nonjury case, attempts to make strict rulings on the admissibility of evidence, can
`
`easily get his decision reversed by excluding evidence which is objected to, but which,
`
`1
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`on review, the appellate court believes should have been admitted.”). Petitioner
`
`accordingly submits that it is, as a general matter, better for the Board to have before
`
`it a complete record of the evidence submitted by the parties than to exclude
`
`particular pieces of it and thereby risk improper exclusion that could later be assigned
`
`as error. See, e.g., Builders Steel, 379; Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224
`
`(8th Cir. 1942) (finding NLRB’s refusal to receive testimonial evidence amounted to a
`
`denial of due process; “One who is capable of ruling accurately upon the admissibility
`
`of evidence is equally capable of sifting it accurately after it has been received, and,
`
`since he will base his findings upon the evidence which he regards as competent,
`
`material and convincing, he cannot be injured by the presence in the record of
`
`testimony which he does not consider competent or material. . . . [I]f evidence was
`
`excluded which [the reviewing] court regards as having been admissible, a new trial or
`
`rehearing cannot be avoided.”). See also, e.g., Samuel H. Moss, Inc. v. FTC, 148 F.2d 378,
`
`380 (2d Cir.), cert. denied, 326 U.S. 734 (1945) (observing that, “if the case was to be
`
`tried with strictness, the examiner was right [but w]hy [the examiner] or the
`
`Commission’s attorney should have thought it desirable to be so formal about the
`
`admission of evidence, we cannot understand. Even in criminal trials to a jury it is
`
`better, nine times out of ten, to admit, than exclude evidence . . . [W]e take this
`
`occasion to point out the danger always involved in conducting such a proceeding in
`
`such a spirit, and the absence of any advantage in depriving either the Commission or
`
`ourselves of all evidence”).
`
`2
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`At the same time, however, Petitioner recognizes that this trial is an early
`
`example of a new set of proceedings. Thus, to the extent that the Board intends to
`
`apply the Federal Rules of Evidence strictly in these proceedings, cf. 77 Fed. Reg.
`
`48612, 48616 (Aug. 14, 2012) (“42.5(a) and (b) permit administrative patent judges
`
`wide latitude in administering the proceedings to balance the ideal of precise rules
`
`against the need for flexibility to achieve reasonably fast, inexpensive and fair
`
`proceedings”), Petitioner respectfully submits that Patent Owner’s testimonial
`
`submissions from its purported expert witness, John Snell—in particular, at least
`
`Sections VII and IX of EX23531—do not meet these standards, and are so thoroughly
`
`infected with basic violations of Federal Rule of Evidence 702 that they should be
`
`excluded, together with any reference to or reliance on the foregoing in Patent
`
`Owner’s Response (Dkt. 38). Petitioner’s objections to this Exhibit were previously
`
`set forth in Petitioner’s First Set of Objections, served January 10, 2014 pursuant to
`
`37 C.F.R. § 42.64(b)(1), see MX4469 § VII, and are further explained below pursuant
`
`to 37 C.F.R. § 42.64(c).
`
`I. Legal Standard
`
`Rule 702 of the Federal Rules of Evidence, which applies to this proceeding (37
`
`C.F.R. § 42.62), governs the admissibility of expert testimony and states: “A witness
`
`
`1 Exhibits are referenced “EX” or, for motion exhibits, “MX”; abbreviations are
`
`defined in the Petition (“Pet.,” Dkt. __), and emphases are added.
`
`3
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`who is qualified as an expert by knowledge, skill, experience, training, or education
`
`may testify in the form of an opinion or otherwise if: (a) the expert’s scientific,
`
`technical, or other specialized knowledge will help the trier of fact to understand the
`
`evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts
`
`or data; (c) the testimony is the product of reliable principles and methods; and (d) the
`
`expert has reliably applied the principles and methods to the facts of the case.” F.R.E.
`
`702. The proponent of expert testimony must demonstrate admissibility by a
`
`preponderance of the evidence, see Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S.
`
`579, 592 n.10 (1993), and Patent Owner has failed to meet this burden.
`
`II. Mr. Snell is Not Qualified to Opine Under F.R.E. 702
`
`The declaration of SightSound’s witness John Snell (EX2353) contains
`
`numerous opinions that should be excluded as failing the basic requirements of Rule
`
`702. To begin with, Mr. Snell 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 and IX, which generally
`
`concern, inter alia, the alleged commercial success of the patented invention at issue
`
`and the variables that help explain why SightSound’s electronic store failed while the
`
`4
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`iTunes Music Store (“iTMS”) succeeded.2 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 is no rationale or basis for Mr. Snell’s assertion that the “[t]he
`
`ITMS [sic] . . . is Co-Extensive with the Claims of the Patents [sic]” (see EX2353,
`
`§IX(C) & ¶ 98) as required by Rule 702 (see also F.R.E. 703-705). Indeed, on this topic,
`
`as on many others, Mr. Snell admitted at deposition that he had not considered, and
`
`was not even aware of, the basic pertinent facts. Mr. Snell’s opinions applying unstated,
`
`unsupported and unsupportable claim construction positions, as well as his opinions
`
`contradicting statements made by the named inventor to the Patent Office regarding
`
`pertinent terms, are equally baseless and must also be excluded.3
`
`A. No Basis for Opinion That User Interfaces Of SightSound’s
`Electronic Store and iTMS Are Only Insignificantly Different
`
`
`
`The Board should exclude, as lacking adequate basis under Rule 702, Mr.
`
`Snell’s opinion that the user interfaces of SightSound.com and iTMS are only
`
`2 Mr. Snell is additionally not qualified to provide opinions regarding the beliefs of
`
`“content producers,” “content holders,” or the market for digital music. EX2353 ¶¶
`
`59, 62, 63, 71; see F.R.E. 702.
`
`3 Petitioner does not undertake to catalog here all of the errors in Mr. Snell’s opinions
`
`(see generally Dkt. 49 (Petitioner’s Reply)), but rather those failings that are so
`
`fundamental under Rule 702 as to warrant outright exclusion.
`
`5
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`insignificantly different. See EX2353 ¶ 101. During deposition, Snell admitted that
`
`he had no basis for that opinion. See F.R.E. 702 (requiring that “(b) the testimony is
`
`based on sufficient facts or data; … and (d) the expert has reliably applied the principles and
`
`methods to the facts of the case”).
`
`For example, Mr. Snell had done nothing to investigate the features of the
`
`SightSound.com electronic store user interface other than look at old screen shots.
`
`EX4366 (Snell Tr.) 127:20-128:11; EX4368-69 (Depo. Ex. 9-10). Even as to those old
`
`screen shots, Snell did not believe he had looked at them in connection with these
`
`CBM proceedings. EX4366 126:9-127:19; EX4368-69. And he could not discern
`
`from those screen shots what happened when a user clicked on the displayed buttons.
`
`Id.; EX4366 177:4-178:24. Nor did he do anything to find out: he did not know whether
`
`the system used for SightSound’s electronic store still existed; he did not know that
`
`SightSound had destroyed it; he never asked what happened to it; he did not ask
`
`SightSound’s Mr. Hair or Mr. Sander what user interfaces that system deployed; and
`
`in fact had neither spoken to Hair or Sander on any subject, nor sought to do so.
`
`EX4366 177:4-178:24, 182:13-19, 220:3-16; EX4368-69.
`
`In deposition, Snell also was shown a variety of iTMS features, and asked
`
`whether the SightSound.com system had comparable features—but he did not know.
`
`Specifically, using iTMS screen shots, Snell was shown the following features: the
`
`five-star rating system, plot summaries, multiple trailers for a given movie, cast and
`
`crew lists (for movies), editor’s notes, “viewers also bought” lists, “more from these
`
`6
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`actors” lists, movie bundles (groups of movies at a volume discount), pre-ordering,
`
`lists of music videos by the band being viewed, lists of movies and books about the
`
`band being viewed, concert tour information for the band being viewed, the “genius”
`
`recommendation feature, the song-by-song “Popularity” rating, “iTunes Match,”
`
`“Mastered For iTunes” (which connotes that the music has been optimized, quality-
`
`wise, for playback on the iTMS— EX4366 200:6-201:12), “artist info” (which
`
`provides a several paragraph biography of the band), and reviews from “Rotten
`
`Tomatoes.” Snell did not know whether SightSound’s electronic store had any of these
`
`features, but admitted that none of them was evident from the screen shots that he
`
`had viewed. EX4366 163:11-186:3; 196:5-207:22; 208:19-212:17; EX4370-72 (Depo.
`
`Ex.12-13).
`
`Mr. Snell also admitted he had no basis for opining as to whether any of these features was
`
`important to consumers, and therefore to commercial success. In contrast to Apple’s
`
`commercial success expert, Mr. Kenswil, who spent his career on the transactional
`
`side of the music business (EX4414 ¶¶ 5-18), Mr. Snell is an engineer who focuses on
`
`technology, but is neither informed nor interested in commercial issues. As Snell put
`
`it, when answering whether these differences help to explain why SightSound’s
`
`electronic store failed and iTMS succeeded, “I’m not a businessperson. I’m not a financial
`
`analyst. So I think these are questions you want to ask someone who is a financial analyst here. I’m
`
`not a salesman. My expertise is in the engineering and the computer side. I understand a lot about
`
`the music industry, but, again, I’m not a financial analyst. I’m not a sales expert.” EX4366
`
`7
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`213:14-214:14. See F.R.E. 702 (requiring that “(a) the expert’s scientific, technical, or
`
`other specialized knowledge will help the trier of fact to understand the evidence or to
`
`determine a fact in issue”).
`
`Because it not only lacks factual basis, but affirmatively flies in the face of the
`
`facts, and because Mr. Snell lacks the commercial expertise needed to opine on issues
`
`of commercial success, the Board should exclude Mr. Snell’s opinion that the user
`
`interfaces of SightSound.com and the iTunes Music Store are only insignificantly
`
`different, including in particular EX2353 ¶ 101.
`
`B. No Basis for Opinion That iTMS is “Co-Extensive” With The
`Challenged Patent Claims
`
`
`
`Although Mr. Snell’s declaration states the opinion that ITMS is “co-extensive”
`
`with the challenged patent claims, e.g., EX2353 § IX.C, ¶¶ 89, 97, 98, that opinion
`
`must be excluded because, in deposition, Mr. Snell admitted he did not know the meaning of
`
`“co-extensive.” To show co-extensiveness, Patent Owner must show that iTMS does
`
`not embody inventions other than the invention of the Claims. See Demaco Corp. v. F.
`
`Von Langsdorff Licensing, Ltd., 851 F.2d 1387, 1392-93 (Fed. Cir. 1988); Rambus Inc. v.
`
`Hynix Semiconductor, Inc., 254 F.R.D. 597, 601-03 (N.D. Cal. 2008). In deposition,
`
`when asked whether a given product would be “co-extensive” with a patent claim if
`
`that product infringed that claim, but contained a variety of additional unclaimed
`
`features, Mr. Snell either could not or would not answer that question—even though
`
`asked repeatedly. EX4366 35:5-39:11. That may explain why Mr. Snell’s declaration
`
`8
`
`

`
`Case CBM2013-00023
`Patent 5,966,440
`provides no basis for his opinion, and in particular why Mr. Snell’s declaration never
`
`addresses any of the panoply of unclaimed iTMS features, including features not only
`
`patented by Apple, but patented by Apple over the Hair patents. E.g., EX4420 ¶¶ 67-
`
`82.
`
`The Board should exclude Mr. Snell’s opinion that iTMS is “co-extensive” with
`
`the challenged patent claims. Mr. Snell does not know the meaning of “co-extensive,”
`
`and his opinion neither addresses nor is reconcilable with the many unclaimed
`
`innovations of iTMS.