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
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`

`
`Case CBM2013-00023
`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. 11, 2012 SightSound
`Techs., LLC v. Apple Inc., No. 11-1292 (W.D. Pa.)
`Exhibit 4308 Deposition of Scott Sander, dated Dec. 18-19, 2012
`SightSound Techs., LLC v. Apple Inc., No. 11-1292 (W.D. Pa.)
`Exhibit 4309 “Joint Telerecording Push: CompuSonics, AT&T Link,” Billboard (Oct.
`5, 1985)
`Exhibit 4310 David Needle, “From the News Desk: Audio/digital interface for the
`IBM PC?,” InfoWorld, vol. 6, no. 23, p. 9, June 4, 1984
`Exhibit 4311 Larry Israelite, “Home Computing: Scenarios for Success,” Billboard,
`Dec. 15, 1984
`Exhibit 4312 International Patent Application WO85/02310, filed on November
`14,1984, and published on May 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
`
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`Case CBM2013-00023
`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 (1986)
`Exhibit 4320 Image titled, “CompuSonics Digital Audio Software Production/
`Distribution”
`Exhibit 4321 Excerpts of Lecture at Stanford by D. Schwartz and J. Stautner, 1987
`(video)
`Exhibit 4322 Bryan Bell, “Synth-Bank: The Ultimate Patch Library,” Electronic
`Musician (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,”Fortune, 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,” Keyboard Magazine (March 1987)
`
`Exhibit 4328 “Inside Macintosh,” Volumes I, II, and III, Addison-Wesley 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 May 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. J. Kelly In Support of Petition for Covered Business
`Method Patent Review
`Exhibit 4335 Declaration of David Schwartz In Support of Petition for Covered
`Business Method Patent Review
`
`iii
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`Case CBM2013-00023
`Patent 5,966,440
`
`EXHIBIT LIST
`Exhibit 4336 11/19/12 Special Master’s Report and Recommendation on Claim
`Construction (D.I. 142) SightSound Techs., LLC v. Apple Inc. No. 11-1292
`(W.D. Pa)
`Exhibit 4337 2/43/43 Order re Claim Construction (D.I. 175), SightSound Techs.,
`LLC v. Apple Inc., No. 11-1292 (W.D. Pa.)
`Exhibit 4338 United States Patent No. 5,675,734 File History
`
`Exhibit 4339 Excerpt from Chambers Science and Technology Dictionary (1988)
`
`Exhibit 4340 Excerpt from Webster’s II New Riverside University Dictionary (1988)
`
`Exhibit 4341 Declaration of Dr. John P.J. Kelly, dated Sept. 7, 2012
`
`Exhibit 4342 New Telerecording Method for Audio, Broadcast Management/Engineering,
`pp. 14-15, Oct. 1985
`Exhibit 4343 Excerpt of Plaintiff SightSound Techs., LLC’s Expert Report of Dr. J.
`Douglas Tygar Regarding Infringement, dated April 22, 2013
`Exhibit 4344 Declaration of Flora D. Elias-Mique In Support of Petition for
`Covered Business Method Patent Review
`Exhibit 4345 Declaration of Roberto J. Gonzalez In Support of Petition for Covered
`Business Method Patent Review
`Exhibit 4346 Declaration of Megan F. Raymond In Support of Petition for Covered
`Business Method Patent Review
`Exhibit 4347 Declaration of Ching-Lee Fukuda In Support of Petition for Covered
`Business Method Patent Review
`Exhibit 4348 Transcription of Audio, Excerpts of CompuSonics Lecture
`(Lecture at Stanford by D. Schwartz and J. Stautner, 1987
`Exhibit 4349 Expert Report of Dr. John P. J. 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 Music Service, Jan.13, 2007.
`
`Exhibit 4352 Walmart Closing Online Music Store, Aug. 10, 2011
`
`Exhibit 4353 ITunes’ Success Revolutionizes Music Business
`
`iv
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`Case CBM2013-00023
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`EXHIBIT LIST
`Exhibit 4354 iTunes Music Store Sells Over One Million 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 Memorandum 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 M. Schwartz to Arthur Hair
`
`Exhibit 4364 Prospectus, Digital Sight/Sound (August 15, 1997)
`
`Exhibit 4365 Now showing at a computer near you, News Tribune (May 28, 2000)
`
`Exhibit 4366 Deposition Transcript of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4367 Redacted Version of Plaintiff SightSound Technologies, LLC's Expert
`Report of John Snell On Validity, 6/5/13
`Exhibit 4368 Exhibit 9 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4369 Exhibit 10 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4370 Exhibit 11 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4371 Exhibit 12 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4372 Exhibit 13 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`
`v
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`

`
`Case CBM2013-00023
`Patent 5,966,440
`
`EXHIBIT LIST
`Exhibit 4373 Exhibit 14 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4374 Exhibit 15 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4375 Exhibit 16 of the Deposition of John Snell in Apple Inc. v. SightSound
`Technologies, LLC, Nos. CBM 2013-00020, -0023, March 6, 2014
`Exhibit 4376 Robin Raskin, Telecomputing: Shopping in Electronic Stores: Sick of
`Crowds? Tied Up At Work? Want to Compare Prices? Go Online and
`Browse, Family Computing, Vol. 3, No. 11 (November 1985)
`Exhibit 4377 James Capparell, Three times as much Antic Software now on
`CompuServe, ANTIC The Atari Resource (April 1988)
`Exhibit 4378 Richard Mansfield, Editor’s Notes, Compute, Vol. 9, No. 3, Issue 82
`(March 1987)
`Exhibit 4379 Andrew Zipern, Technology Briefing - Software: Alliance Will Acquire
`Liquid Audio, NYTimes.com (June 14, 2002),
`http://www.nytimes.com/2002/06/14/business/technology-briefing-
`software-alliance-will-acquire-liquid-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 Many Buyers,
`Akron Beacon Journal (January 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 (March 17,
`2014), http://www.apple.com/itunes/features/
`Exhibit 4385 FAQs: For Podcast Fans, iTunes (March 17, 2014),
`http://www.apple.com/itunes/podcasts/fanfaq.html
`Exhibit 4386 iTunes: Give the gift of iTunes, iTunes (March 18, 2014),
`http://www.apple.com/itunes/gifts/
`Exhibit 4387 iTunes Store Allowance, iTunes Support (March 17, 2014),
`http://support.apple.com/kb/HT2105
`
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`Case CBM2013-00023
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`
`EXHIBIT LIST
`Exhibit 4388 Rush Jones, Aggregation and Aggravation – Micropayments 2013,
`PaymentsViews (August 16, 2013),
`http://paymentsviews.com/2013/08/16/aggregation-and-aggravation-
`micropayments-2013/
`Exhibit 4389 Marek Maurizio, Payment Systems, Winter 2011,
`http://www.dsi.unive.it/~marek/files/09.5%20-
`%20payment%20systems.pdf
`Exhibit 4390 Apple and Pepsi to Give Away 100 Million Free Songs, Apple Press
`Info (October 16, 2003),
`http://www.apple.com/pr/library/2003/10/16Apple-and-Pepsi-to-
`Give-Away-100-Million-Free-Songs.html
`Exhibit 4391 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), http://www.apple.com/pr/library/2004/12/10iTunes-
`Music-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 A Nation Online: 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
`Exhibit 4396 Amy Harmon, Music Industry in Global Fight on Web Copies,
`NYTimes.com, (October 7, 2002),
`http://www.nytimes.com/2002/10/07/us/music-industry-in-global-
`fight-on-web-copies.html?pagewanted=all&src=pm
`Exhibit 4397 Apple Computer, Inc. Form 10-K, Fiscal year ending September 24,
`2005, SEC.gov (March 18, 2014),
`http://www.sec.gov/Archives/edgar/data/320193/000110465905058
`421/a05-20674_110k.htm
`Exhibit 4398 Brad King, Napster's Assets Go for a Song, Wired (Nov. 28, 2002),
`http://www.wired.com/entertainment/music/news/2002/11/56633
`
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`Case CBM2013-00023
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`
`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.html
`Exhibit 4401 Federal Communications Commission, Making the Connections,
`Communications History (Nov. 21, 2005),
`http://transition.fcc.gov/omd/history/internet/making-
`connections.html
`Exhibit 4402 Marc Fisher, Download Uproar: Record Industry Goes After Personal
`Use, The Washington Post (Dec. 30, 2007),
`http://www.washingtonpost.com/wp-
`dyn/content/article/2007/12/28/AR2007122800693.html.
`Exhibit 4403 RIAA Threatens to Sue Hundreds for Illegal File-Sharing,
`FoxNews.com (June 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, PCWorld.com (Mar.
`25, 2002), http://www.pcworld.com/article/91144/article.html
`Exhibit 4406 Sarah McBride and Ethan Smith, Music Industry to Abandon Mass
`Suits, The Wall Street Journal (Dec. 19, 2008),
`http://online.wsj.com/article/SB122966038836021137.html
`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
`Magazine (May 12, 2002),
`http://www.businessweek.com/stories/2002-05-12/the-riaa-the-
`piracy-rate-is-growing
`Exhibit 4409 Larry Sarisky, "Will Removable Hard Disks Replace the Floppy?," Byte
`Magazine, Vol. 8, Number 3 (March 1983)
`
`viii
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`EXHIBIT LIST
`Exhibit 4410 United States Patent No. 4,567,359
`
`Exhibit 4411 United States Patent No. RE32,115
`
`Exhibit 4412 Barry Willis, AT&T's a2b music Joins the Online Stampede,
`Stereophile.com, http://www.stereophile.com/news/10133/ (March
`29, 1998)
`Exhibit 4413 Declaration of Jeff Robbin
`
`Exhibit 4414 Declaration of Lawrence Kenswil
`
`Exhibit 4415 Declaration of Marco Mazzoni
`
`Exhibit 4416 Declaration of Tom Weyer
`
`Exhibit 4417 Liquid audio, available at
`http://www.crunchbase.com/company/liquid-audio (last visited Mar.
`20, 2014)
`Exhibit 4418 Michael Stroud, Big Hopes for Hollywood Net Film, Wired.com,
`http://www.wired.com/culture/lifestyle/news/2000/03/35076
`(March 23, 2000)
`Exhibit 4419 Protective Order (Dkt. No. 56) entered in SightSound Technologies,
`LLC v. Apple Inc., Civil Action No. 2:11-cv-01292-DWA (Western
`District of Pennsylvania)
`Exhibit 4420 Second Declaration of Dr. John P. J. Kelly In Support Of Apple Inc.'s
`Petition For Covered Business Method Patent Review Of United States
`Patent No. 5,966,440 Pursuant To 35 U.S.C. § 321, 37 C.F.R. § 42.304
`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 4424 United States Patent No. 6,714,984
`
`Exhibit 4425 United States Patent No. 6,717,952
`
`Exhibit 4426 United States Patent No. 6,829,648
`
`Exhibit 4427 United States Patent No. 6,850,256
`
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`Case CBM2013-00023
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`EXHIBIT LIST
`Exhibit 4428 United States Patent No. 7,007,062
`
`Exhibit 4429 United States Patent No. 7,191,242
`
`Exhibit 4430 United States Patent No. 7,319,761
`
`Exhibit 4431 United States Patent No. 7,320,069
`
`Exhibit 4432 United States Patent No. 7,366,788
`
`Exhibit 4433 United States Patent No. 7,478,323
`
`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 4443 United States Patent No. 7,853,893
`
`Exhibit 4444 United States Patent No. 7,853,972
`
`Exhibit 4445 United States Patent No. 7,860,830
`
`Exhibit 4446 United States Patent No. 7,865,927
`
`Exhibit 4447 United States Patent No. 7,958,441
`
`Exhibit 4448 United States Patent No. 7,962,505
`
`Exhibit 4449 United States Patent No. 7,966,362
`
`x
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`Case CBM2013-00023
`Patent 5,966,440
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`EXHIBIT LIST
`Exhibit 4450 United States Patent No. 8,028,080
`
`Exhibit 4451 United States Patent No. 8,032,565
`
`Exhibit 4452 United States Patent No. 8,046,369
`
`Exhibit 4453 United States Patent No. 8,103,793
`
`Exhibit 4454 United States Patent No. 8,136,030
`
`Exhibit 4455 United States Patent No. 8,148,622
`
`Exhibit 4456 United States Patent No. 8,196,214
`
`Exhibit 4457 United States Patent No. 8,214,315
`
`Exhibit 4458 United States Patent No. 8,255,815
`
`Exhibit 4459 United States Patent No. 8,261,246
`
`Exhibit 4460 Apple Wins 2002 Technical GRAMMY Award, Apple Press Info
`(February 26, 2002),
`http://www.apple.com/pr/library/2002/02/26Apple-Wins-2002-
`Technical-GRAMMY-Award.html
`Exhibit 4461 May Wong, Apple's iPod in Short Supply for Holidays, Associated
`Press Online, LexisNexis (Dec. 18, 2004)
`Exhibit 4462 Declaration of Roberto J. Gonzalez
`
`Exhibit 4463 Declaration of Flora D. Elias-Mique
`
`Exhibit 4464 Declaration of Lauren N. Robinson
`
`Exhibit 4465 Declaration of Ching-Lee Fukuda
`
`Exhibit 4466 Sandeep Junnarkar, a2b Music team leaves AT&T for Reciprocal, CNET,
`http://news.cnet.com/a2b-music-team-leaves-att-for-reciprocal/2100-
`1023_3-226006.html (May 18, 1999)
`Exhibit 4467 Declaration of Michael P. Duffey
`
`Exhibit 4468 Proposed Protective Order, Office Patent Trial Practice Guide at 77
`Fed. Reg. 48756, 48771 (Aug. 14, 2012)
`
`xi
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`
`EXHIBIT LIST
`Exhibit 4469 Petitioner Apple Inc’s First Set of Objections to Patent Owner
`SightSound Technologies LLC’s Exhibits, dated January 10, 2014
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`Case CBM2013-00023
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`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,
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`Case CBM2013-00023
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`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
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`admission of evidence, we cannot understand. Even in criminal trials to a jury it is
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`better, nine times out of ten, to admit, than exclude evidence . . . [W]e take this
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`occasion to point out the danger always involved in conducting such a proceeding in
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`such a spirit, and the absence of any advantage in depriving either the Commission or
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`ourselves of all evidence”).
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`At the same time, however, Petitioner recognizes that this trial is an early
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`example of a new set of proceedings. Thus, to the extent that the Board intends to
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`apply the Federal Rules of Evidence strictly in these proceedings, cf. 77 Fed. Reg.
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`48612, 48616 (Aug. 14, 2012) (“42.5(a) and (b) permit administrative patent judges
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`wide latitude in administering the proceedings to balance the ideal of precise rules
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`against the need for flexibility to achieve reasonably fast, inexpensive and fair
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`proceedings”), Petitioner respectfully submits that Patent Owner’s testimonial
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`submissions from its purported expert witness, John Snell—in particular, at least
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`Sections VII and IX of EX23531—do not meet these standards, and are so thoroughly
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`infected with basic violations of Federal Rule of Evidence 702 that they should be
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`excluded, together with any reference to or reliance on the foregoing in Patent
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`Owner’s Response (Dkt. 38). Petitioner’s objections to this Exhibit were previously
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`set forth in Petitioner’s First Set of Objections, served January 10, 2014 pursuant to
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`37 C.F.R. § 42.64(b)(1), see MX4469 § VII, and are further explained below pursuant
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`to 37 C.F.R. § 42.64(c).
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`I. Legal Standard
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`Rule 702 of the Federal Rules of Evidence, which applies to this proceeding (37
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`C.F.R. § 42.62), governs the admissibility of expert testimony and states: “A witness
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`1 Exhibits are referenced “EX” or, for motion exhibits, “MX”; abbreviations are
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`defined in the Petition (“Pet.,” Dkt. __), and emphases are added.
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`who is qualified as an expert by knowledge, skill, experience, training, or education
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`may testify in the form of an opinion or otherwise if: (a) the expert’s scientific,
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`technical, or other specialized knowledge will help the trier of fact to understand the
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`evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts
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`or data; (c) the testimony is the product of reliable principles and methods; and (d) the
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`expert has reliably applied the principles and methods to the facts of the case.” F.R.E.
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`702. The proponent of expert testimony must demonstrate admissibility by a
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`preponderance of the evidence, see Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S.
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`579, 592 n.10 (1993), and Patent Owner has failed to meet this burden.
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`II. Mr. Snell is Not Qualified to Opine Under F.R.E. 702
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`The declaration of SightSound’s witness John Snell (EX2353) contains
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`numerous opinions that should be excluded as failing the basic requirements of Rule
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`702. To begin with, Mr. Snell is not an expert in the pertinent subject matter qualified
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`to provide certain of the opinions contained in Exhibit 2353 and lacks the necessary
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`“scientific, technical, or other specialized knowledge [to] help the trier of fact to
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`understand the evidence or to determine a fact in issue” because he is not sufficiently
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`knowledgeable in the topics addressed in Sections VII and IX, which generally
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`concern, inter alia, the alleged commercial success of the patented invention at issue
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`and the variables that help explain why SightSound’s electronic store failed while the
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`iTunes Music Store (“iTMS”) succeeded.2 F.R.E. 702. Exhibit 2353 also fails to
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`provide sufficient underlying facts or data upon which the statements contained
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`therein could legitimately be based, in violation of F.R.E. 702 (see also F.R.E. 703-705).
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`For example, there is no rationale or basis for Mr. Snell’s assertion that the “[t]he
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`ITMS [sic] . . . is Co-Extensive with the Claims of the Patents [sic]” (see EX2353,
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`§IX(C) & ¶ 98) as required by Rule 702 (see also F.R.E. 703-705). Indeed, on this topic,
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`as on many others, Mr. Snell admitted at deposition that he had not considered, and
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`was not even aware of, the basic pertinent facts. Mr. Snell’s opinions applying unstated,
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`unsupported and unsupportable claim construction positions, as well as his opinions
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`contradicting statements made by the named inventor to the Patent Office regarding
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`pertinent terms, are equally baseless and must also be excluded.3
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`A. No Basis for Opinion That User Interfaces Of SightSound’s
`Electronic Store and iTMS Are Only Insignificantly Different
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`The Board should exclude, as lacking adequate basis under Rule 702, Mr.
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`Snell’s opinion that the user interfaces of SightSound.com and iTMS are only
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`2 Mr. Snell is additionally not qualified to provide opinions regarding the beliefs of
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`“content producers,” “content holders,” or the market for digital music. EX2353 ¶¶
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`59, 62, 63, 71; see F.R.E. 702.
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`3 Petitioner does not undertake to catalog here all of the errors in Mr. Snell’s opinions
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`(see generally Dkt. 49 (Petitioner’s Reply)), but rather those failings that are so
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`fundamental under Rule 702 as to warrant outright exclusion.
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`insignificantly different. See EX2353 ¶ 101. During deposition, Snell admitted that
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`he had no basis for that opinion. See F.R.E. 702 (requiring that “(b) the testimony is
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`based on sufficient facts or data; … and (d) the expert has reliably applied the principles and
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`methods to the facts of the case”).
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`For example, Mr. Snell had done nothing to investigate the features of the
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`SightSound.com electronic store user interface other than look at old screen shots.
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`EX4366 (Snell Tr.) 127:20-128:11; EX4368-69 (Depo. Ex. 9-10). Even as to those old
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`screen shots, Snell did not believe he had looked at them in connection with these
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`CBM proceedings. EX4366 126:9-127:19; EX4368-69. And he could not discern
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`from those screen shots what happened when a user clicked on the displayed buttons.
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`Id.; EX4366 177:4-178:24. Nor did he do anything to find out: he did not know whether
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`the system used for SightSound’s electronic store still existed; he did not know that
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`SightSound had destroyed it; he never asked what happened to it; he did not ask
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`SightSound’s Mr. Hair or Mr. Sander what user interfaces that system deployed; and
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`in fact had neither spoken to Hair or Sander on any subject, nor sought to do so.
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`EX4366 177:4-178:24, 182:13-19, 220:3-16; EX4368-69.
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`In deposition, Snell also was shown a variety of iTMS features, and asked
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`whether the SightSound.com system had comparable features—but he did not know.
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`Specifically, using iTMS screen shots, Snell was shown the following features: the
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`five-star rating system, plot summaries, multiple trailers for a given movie, cast and
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`crew lists (for movies), editor’s notes, “viewers also bought” lists, “more from these
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`actors” lists, movie bundles (groups of movies at a volume discount), pre-ordering,
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`lists of music videos by the band being viewed, lists of movies and books about the
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`band being viewed, concert tour information for the band being viewed, the “genius”
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`recommendation feature, the song-by-song “Popularity” rating, “iTunes Match,”
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`“Mastered For iTunes” (which connotes that the music has been optimized, quality-
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`wise, for playback on the iTMS— EX4366 200:6-201:12), “artist info” (which
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`provides a several paragraph biography of the band), and reviews from “Rotten
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`Tomatoes.” Snell did not know whether SightSound’s electronic store had any of these
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`features, but admitted that none of them was evident from the screen shots that he
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`had viewed. EX4366 163:11-186:3; 196:5-207:22; 208:19-212:17; EX4370-72 (Depo.
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`Ex.12-13).
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`Mr. Snell also admitted he had no basis for opining as to whether any of these features was
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`important to consumers, and therefore to commercial success. In contrast to Apple’s
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`commercial success expert, Mr. Kenswil, who spent his career on the transactional
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`side of the music business (EX4414 ¶¶ 5-18), Mr. Snell is an engineer who focuses on
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`technology, but is neither informed nor interested in commercial issues. As Snell put
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`it, when answering whether these differences help to explain why SightSound’s
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`electronic store failed and iTMS succeeded, “I’m not a businessperson. I’m not a financial
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`analyst. So I think these are questions you want to ask someone who is a financial analyst here. I’m
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`not a salesman. My expertise is in the engineering and the computer side. I understand a lot about
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`the music industry, but, again, I’m not a financial analyst. I’m not a sales expert.” EX4366
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`213:14-214:14. See F.R.E. 702 (requiring that “(a) the expert’s scientific, technical, or
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`other specialized knowledge will help the trier of fact to understand the evidence or to
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`determine a fact in issue”).
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`Because it not only lacks factual basis, but affirmatively flies in the face of the
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`facts, and because Mr. Snell lacks the commercial expertise needed to opine on issues
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`of commercial success, the Board should exclude Mr. Snell’s opinion that the user
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`interfaces of SightSound.com and the iTunes Music Store are only insignificantly
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`different, including in particular EX2353 ¶ 101.
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`B. No Basis for Opinion That iTMS is “Co-Extensive” With The
`Challenged Patent Claims
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`
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`Although Mr. Snell’s declaration states the opinion that ITMS is “co-extensive”
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`with the challenged patent cl