Filed on behalf of:
`
`Patent Owner SightSound Technologies, LLC
`
`By: David R. Marsh, Ph.D.
`
`Kristan L. Lansbery, Ph.D.
`
`ARNOLD & PORTER LLP
`
`555 12th Street, N.W.
`
`Washington, DC 20004
`
`Tel: (202) 942-5068
`
`Fax: (202) 942-5999
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`
`
`SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`_______________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`_______________
`
`PATENT OWNER SIGHTSOUND TECHNOLOGIES, LLC’S REPLY IN
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`Patent Owner SightSound Technologies, LLC
`
`By: David R. Marsh, Ph.D.
`
`Kristan L. Lansbery, Ph.D.
`
`ARNOLD & PORTER LLP
`
`555 12th Street, N.W.
`
`Washington, DC 20004
`
`Tel: (202) 942-5068
`
`Fax: (202) 942-5999
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`
`
`SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`_______________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`_______________
`
`PATENT OWNER SIGHTSOUND TECHNOLOGIES, LLC’S REPLY IN
`SUPPORT OF MOTION TO EXCLUDE EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`Exhibit 4413 (Declaration of Jeffrey Robbin) ................................................. 1
`
`II.
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`Exhibit 4416 (Declaration of Tom Weyer) ..................................................... 2
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`III. Exhibits 4410-4411 (U.S. Patent Nos. 4,567,359 and RE32,115) .................. 2
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`IV. Exhibit 4414 (Declaration of Lawrence Kenswil) .......................................... 3
`
`V.
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`Exhibit 4420 (Second Declaration of Dr. John P.J. Kelly) ............................. 4
`
`(a) Dr. Kelly's unsupported opinions concerning ITMS ............................ 4
`
`(b) Dr. Kelly ignores relevant materials concerning CompuSonics ........... 4
`
`VI. Exhibit 4421-4459 (Various U.S. Patents) ...................................................... 5
`
`
`
`-i-
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`
`
`
`
`
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`Patent Owner submits this reply in support of its Motion to Exclude
`
`Evidence Pursuant to 37 C.F.R. § 42.64(c) (“Mot.”).
`
`I.
`
`Exhibit 4413 (Declaration of Jeffrey Robbin)
`
`Petitioner does not dispute that Mr. Robbin was in high school in the mid-
`
`1980s, and thus cannot opine upon what was prevalent in the industry. Mot. at 1-3.
`
`The rejoinder that “young people” generally have interest in “different ways of
`
`obtaining music,” Opp. at 2-3, is woefully insufficient to show that Mr. Robbin had
`
`personal knowledge. Petitioner also says Mr. Robbin has personal knowledge of
`
`technological features of ITMS and Petitioner’s patents, but never addresses that
`
`“Mr. Robbin only lists the patents . . . without any discussion of their claims.”
`
`Mot. at 2-3. At deposition, Mr. Robbin did not recall when he last reviewed the
`
`patents, and did not know what it means to practice a patent or whether Petitioner
`
`was practicing any of the claims. Ex. 2377 (Robbin Dep.) at 41:18-42:8, 74:23-
`
`76:15.
`
`In an effort to deflect from its lack of admissible evidence, Petitioner seeks
`
`to improperly shift the burden to Patent Owner by mischaracterizing the relevant
`
`legal standard. Patent Owner has made a prima facie case of nexus by showing
`
`that the commercially successful product is coextensive with the claims, making it
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`Petitioner’s burden to rebut this presumption. See DeMaco Corp. v. F. Von
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`
`
`-1-
`
`
`
`
`
`Langsdorff Licensing Ltd., 851 F.2d 1387, 1392-93 (Fed. Cir. 1988); see also
`
`Paper 75 (Patent Owner’s Opp. to Motion to Exclude), pp. 3-5.1
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`II. Exhibit 4416 (Declaration of Tom Weyer)
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`Petitioner’s arguments do not refute allegations of copying, as the
`
`information obtained at Petitioner’s meeting with Patent Owner was conveyed
`
`directly to Steve Jobs, the architect of ITMS. Ex. 2317 (1/15/99 Letter from S.
`
`Sander to S. Jobs); Ex. 2377 (Robbin Dep.), 54:1-6. Further, Mr. Weyer cannot
`
`admit he does not recall the discussions at issue, yet speculate about what
`
`Petitioner “would have” done. Mot. at 3-4.
`
`III. Exhibits 4410-4411 (U.S. Patent Nos. 4,567,359 and RE32,115)
`
`Petitioner feebly defends its improper reference to patents to shore up new
`
`arguments first made on reply by suggesting that it “simply provided the Board
`
`with copies of the two patents at issue” in a cited case. Opp. at 6. Petitioner in fact
`
`“provided” the patents to support its untimely argument that “[i]n similar
`
`
`1 Petitioner improperly relies on decisions where the patent covered only a
`
`component. Opp. at 3 (citing Kyocera Corp. v. Softview, LLC, IPR2013-00007,
`
`Paper 51 at 32 (omitting sentence that “[w]here the patent is said to cover a feature
`
`or component of a product, the patent owner has the burden . . . .”)).
`
`
`
`-2-
`
`
`
`
`
`circumstances involving electronic payment, courts have found obviousness.”
`
`Reply, Paper No. 49, p. 9.
`
`IV. Exhibit 4414 (Declaration of Lawrence Kenswil)
`
`Petitioner concedes Mr. Kenswil is not a person of ordinary skill, but now
`
`contends Mr. Kenswil relied solely on Dr. Kelly for his opinions on how the patent
`
`claims compare with the prior art and ITMS. Opp. at 6. In fact, Mr. Kenswil
`
`repeatedly opined on what persons of ordinary skill “often discussed and
`
`recognized,” Ex. 4414 ¶¶ 51-65, and what features are covered by the patent, id.
`
`¶ 33.2 Petitioner then shifts to claiming for the first time that Mr. Kenswil is an
`
`expert on “what makes an online music business a success or a failure.” Opp. at 6.
`
`But Petitioner hasn’t shown that Mr. Kenswil has experience with online
`
`businesses, either. Ex. 4414 ¶¶ 6-18. Thus, the witness has no basis to offer wide-
`
`ranging opinions on issues such as bandwidth constraints, storage of digital data,
`
`compression and encryption, the prevalence of personal computers and
`
`telecommunications lines, and technical problems. Mot. at 5-6.
`
`
`
` Petitioner again deflects its lack of evidence that non-patented features
`
`drove commercial success by ignoring its burden and ignoring the fact that Mr.
`
`
`2 To the extent that Mr. Kenswil is doing nothing more than repeating Dr. Kelly’s
`
`opinions, his declaration is not proper evidence.
`
`
`
`-3-
`
`
`
`
`
`Kenswil failed to consider the best source of evidence on why customers choose to
`
`purchase content from ITMS, because he did not ask for internal surveys or
`
`customer information. Mot. at 8.
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`V. Exhibit 4420 (Second Declaration of Dr. John P.J. Kelly)
`
`(a) Dr. Kelly’s unsupported opinions concerning ITMS: Petitioner again
`
`attempts to deflect its own expert’s failure by trying to reverse the burden of proof.
`
`Moreover, Petitioner’s assertion that Dr. Kelly “testified that he relied on his own
`
`experience using iTMS and . . . public information,” Opp. at 12, misses the point.
`
`Petitioner never explains, for example, how Dr. Kelly can testify regarding the role
`
`played by Akamai Technologies based on his own experience unless his
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`experience was with Petitioner’s confidential information which should have been
`
`cited and disclosed. Petitioner concedes Dr. Kelly did not consider information in
`
`Dr. Tygar’s report, which reached the opposite conclusion about whether ITMS
`
`practices the challenged claims, but suggests Patent Owner did not identify any
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`“inconsistent information.” Opp. at 13. But it is Petitioner that has withheld the
`
`inconsistent information incorporated into Dr. Tygar’s report.
`
`(b) Dr. Kelly ignores relevant materials concerning CompuSonics:
`
`Petitioner seeks to re-write history and excuse Dr. Kelly’s failure to consider the
`
`Declaration of John Stautner (who testified that (1) “telerecording capability never
`
`existed on any DSP that was sold or commercially available by CompuSonics,”
`
`
`
`-4-
`
`
`
`
`
`Ex. 2321 ¶ 15, (2) that the slide reflecting CompuSonics’ experimental
`
`transmission of data (Ex. 4315) was never provided to the public, id. ¶ 23, and (3)
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`that the image of a device supposedly demonstrating the “CompuSonics System”
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`presented by Apple to the Board (Ex. 4333) was a “mock up” for “promotional
`
`purposes only,” id. ¶ 26), by suggesting that Dr. Kelly only relied upon
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`CompuSonics’ “public disclosures.” This is false. Dr. Kelly’s testimony is
`
`predicated on the fallacy that “CompuSonics produced and sold a line of digital
`
`recording and playback devices . . . capable of . . . receiving and storing a digital
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`recording from another computer over a communications interface,” Ex. 4334 ¶ 33,
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`and that the diagram of the (empty) box presented to the Board as Figure 4
`
`“illustrates CompuSonics system’s ‘telerecording.’” Id. ¶ 37. Dr. Kelly’s opinions
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`are premised on facts revealed by Mr. Stautner to be false (testimony which Apple
`
`never refuted) and should be excluded.
`
`VI. Exhibits 4421-4459 (Various U.S. Patents)
`
`Petitioner provides no evidence that the inventions are or were utilized by
`
`ITMS, apart from conclusory statements that “various features and various aspects
`
`of [I]TMS . . . are covered by the various patents.” Ex. 2376 at 70:6-7. That is
`
`insufficient to establish that the patents are admissible under F.R.E. 402 and 37
`
`C.F.R. § 42.61(c).
`
`
`
`
`
`-5-
`
`
`
` By:
`
`Respectfully submitted,
`
`/David R. Marsh/
`David R. Marsh, Ph.D.
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`Attorneys for Patent Owner
`SightSound Technologies, LLC
`
`-6-
`
`
`
`Dated: April 25, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER
`
`SIGHTSOUND TECHNOLOGIES, LLC’S REPLY IN SUPPORT OF
`
`MOTION TO EXCLUDE EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`was served on April 25, 2014 to the following Counsel for Petitioner via e-mail,
`
`pursuant to the parties’ agreement concerning service:
`
`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
`ApplePTABServiceSightSound@ropesgray.com
`
`Attorneys for Petitioner Apple Inc.
`
`/David R. Marsh/
`David R. Marsh (Atty. Reg. No. 41,408)
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, D.C. 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`-7-
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