`Exhibit 1 3 4 5
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`§
`Inventor: Hair
`§
`United States Patent No.: 5,966,440
`Formerly Application No.: 08/471,964 §
`Issue Date: October 12, 1999
`§
`Filing Date: June 6, 1995
`§
`Former Group Art Unit: 380
`§
`Former Examiner: Hoa T. Nguyen
`§
`
`Attorney Docket No.:
`104677-5005—804
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`For: System and Method for Transmitting Desired Digital Video or Digital Audio
`Signals
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313—1450
`
`DECLARATION OF ROBERTO J. GONZALEZ IN SUPPORT OF
`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
`
`I, Roberto J. Gonzalez, make the following Declaration pursuant to 28 U.S.C. §
`
`1746:
`
`1.
`
`2.
`
`I am a paralegal at the law firm of Ropes & Gray LLP.
`
`I provide this Declaration in connection with the above—identified
`
`Covered Business Method Patent Review proceeding that is being requested at the
`
`United States Patent and Trademark Office by Apple, Inc. under 35 U.S.C. § 321, 37
`
`C.F.R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`on my personal knowledge.
`
`Page 00001
`
`Page 00001
`
`
`
`3.
`
`Exhibit 1301 hereto is a true and correct copy of United States Patent
`
`No. 5,966,440 to Arthur Hair, with its July 27, 2010 Ex Parte Reexamination
`
`Certificate, which are records of the United States Patent and Trademark Office ("the
`
`USPTO") to which all parties have access. Page numbers and an exhibit label have
`
`been added to the bottom of this document but no other alterations have been made.
`
`4.
`
`Exhibit 1302 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,966,440 to Arthur Hair, which was downloaded from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`5.
`
`Exhibit 1303 hereto is a true and correct copy of the reexamination file
`
`history for Application No. 90/007,407, which was downloaded from the USPTO
`
`PAIR website and which is a record of the USPTO to which all parties have access.
`
`Page numbers and an exhibit label have been added to the bottom of this document
`
`but no other alterations have been made.
`
`6.
`
`Exhibit 1304 hereto is a true and correct copy of United States Patent
`
`No. 5,191,573 to Arthur Hair, with its November 30, 2010 Ex Parte Reexamination
`
`Certificate, which are records of the USPTO to which all parties have access. Page
`
`numbers and an exhibit label have been added to the bottom of this document but no
`
`other alterations have been made.
`
`Page 00002
`
`Page 00002
`
`
`
`7.
`
`Exhibit 1305 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,191,573 to Arthur Hair, which was downloaded from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`8.
`
`Exhibit 1306 hereto is a true and correct copy of the reexamination file
`
`history for Application No. 90/007,402, which was downloaded from the USPTO
`
`PAIR website and which is a record of the USPTO to which all parties have access.
`
`Page numbers and an exhibit label have been added to the bottom of this document
`
`but no other alterations have been made.
`
`9.
`
`Exhibit 1307 hereto is a true and correct copy of the transcript of
`
`December 11, 2012 Deposition of Arthur Hair in Ségbtfoaad Tet/95., LLC a. App/e Ina,
`
`No. 11—01292, before the District Court of the Western District of Pennsylvania,
`
`which was received from the Merrill Corporation and certified by Rachel Ferrier, CSR
`
`No. 6948.
`
`10.
`
`Exhibit 1308 hereto are a true and correct copies of the transcripts of
`
`December 18, 2012 and December 19, 2012 Deposition of Scott Sander in Sig/affomd
`
`Tea/95., LLC 22. Apple Ina, No. 11—01292, before the District Court of the Western
`
`District of Pennsylvania, which was received from the Merrill Corporation and
`
`certified by Rachel Ferrier, CSR No. 6948.
`
`Page 00003
`
`Page 00003
`
`
`
`11.
`
`Exhibit 1312 hereto is a true and correct copy of the World Patent
`
`Application W085/02310, filed on November 14, 1984 by SoftNet Inc., and
`
`published on May 23, 1985, which was downloaded from the World Intellectual
`
`Property Organization’s PATENTSCOPE search page to which all parties have
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`12.
`
`Exhibit 1313 hereto is a true and correct copy of United States Patent
`
`No. 3,718,906 to Robert W. Lightner, which is a record of the USPTO to which all
`
`parties have access. Page numbers and an exhibit label have been added to the
`
`bottom of this document but no other alterations have been made.
`
`13.
`
`Exhibit 1314 hereto is a true and correct copy of United States Patent
`
`No. 3,990,710 to Robert M. Hughes, which was downloaded from the USPTO PAIR
`
`website and which is a record of the USPTO to which all parties have access. Page
`
`numbers and an exhibit label have been added to the bottom of this document but no
`
`other alterations have been made.
`
`14.
`
`Exhibit 1323 hereto is a true and correct copy of United States Patent
`
`No. 4,682,248 to David M. Schwartz, which is a record of the USPTO to which all
`
`parties have access. Page numbers and an exhibit label have been added to the
`
`bottom of this document but no other alterations have been made.
`
`Page 00004
`
`Page 00004
`
`
`
`15.
`
`Exhibit 1326 hereto is a true and correct copy of the Notice of
`
`Acceptance of the trademark “Synth—Bank,” registered on March 17, 1987 with
`
`Registration No. 1433349, which is a record of the USPTO to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`16.
`
`Exhibit 1336 hereto is a true and correct copy of Special Master’s Report
`
`and Recommendation on Claim Construction in Sig/affoufld Tet/95., LLC 0. Apple Ina,
`
`No. 11—01292, before the District Court of the Western District of Pennsylvania,
`
`signed by Claim Construction Special Master, Gregory L. Bradley and dated
`
`November 19, 2012, which was downloaded from the PACER website and is a record
`
`of the aforementioned District Court (Dkt. No. 142) to which all parties have access.
`
`Page numbers and an exhibit label have been added to the bottom of this document
`
`but no other alterations have been made.
`
`17.
`
`Exhibit 1337 hereto is a true and correct copy of an Order regarding
`
`Claim Construction in SightSound Techs., LLC v. Apple Inc., No. 11—01292, before
`
`the District Court of the Western District of Pennsylvania, signed by Senior Judge,
`
`Donetta W. Ambrose on February 13, 2013, which was downloaded from the
`
`Public Access to Court Electronic Records (“PACER”) website and is a record of
`
`the aforementioned District Court (Dkt. No. 175) to which all parties have access.
`
`Page 00005
`
`Page 00005
`
`
`
`Page numbers and an exhibit label have been added to the bottom of this document
`
`but no other alterations have been made.
`
`18.
`
`Exhibit 1338 hereto is a true and correct copy of the file history for
`
`United States Patent No. 5,675,734 to Arthur Hair, which was downloaded from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. Page numbers and an exhibit label have been added to the bottom of this
`
`document but no other alterations have been made.
`
`19.
`
`I make this declaration of my own personal knowledge.
`
`If called to
`
`testify as to the truth of the matters stated herein, 1 could and would testify
`
`competently.
`
`20.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed this 5th day of May, 2013, at New York, NY.
`
`/
`
`Roberto]. Gonzalez
`
`Page 00006
`
`Page 00006
`
`