Paper 97
`Entered: May 23, 2014
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`RECORD OF ORAL HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`Oral Hearing Held: May 6, 2014
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`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and GEORGIANNA
`W. BRADEN, Administrative Patent Judges.
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`APPEARANCES:
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`ON BEHALF OF PETITIONER:
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`J. STEVEN BAUGHMAN, ESQUIRE
`Ropes & Gray, LLP
`One Metro Center,
`700 12th Street, NW, Suite 900
`Washington, DC 20005-3948
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`ON BEHALF OF PETITIONER (Cont.):
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`JAMES R. BATCHELDER, ESQUIRE
`Ropes & Gray, LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, California 94303-2284
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`CHING-LEE FUKUDA, ESQUIRE
`Ropes & Gray, LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
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`ON BEHALF OF PATENT OWNER:
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`DAVID R. MARSH, ESQUIRE
`Arnold & Porter, LLP
`555 Twelfth Street, NW
`Washington, DC 20004-1206
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`JENNIFER A. SKLENAR
`Arnold & Porter, LLP
`777 South Figueroa Street, 44th Floor
`Los Angeles, California 90017-5844
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`The above-entitled matter came on for hearing on Tuesday, May 6,
`2014, commencing at 10:10 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`P R O C E E D I N G S
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`JUDGE ARBES: Good morning, everyone. This is the oral hearing
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`in Case CBM2013-00020 involving Patent 5,191,573, and Case CBM2013-
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`00023 involving Patent 5,966,440.
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`Can counsel please state your names for the record?
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`MR. BAUGHMAN: Good morning, Your Honor. Steve Baughman
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`from Ropes & Gray for the Petitioner.
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`MR. BATCHELDER: James Batchelder from Ropes & Gray for the
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`Petitioner.
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`MS. FUKUDA: And Ching-Lee Fukuda from Ropes & Gray for the
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`Petitioner.
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`MR. MARSH: And David Marsh, Arnold & Porter, for the Patentee.
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`MS. SKLENAR: Jennifer Sklenar, Arnold & Porter, for the Patentee.
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`JUDGE ARBES: Thank you.
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`Per the Board's trial hearing order in these two cases, each party will
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`have 60 minutes of total time to present arguments. The order of the
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`presentations will be the Petitioner will go first and present its case as to the
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`challenged claims in both cases, the Patent Owner then will respond to the
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`Petitioner's presentation, and then the Petitioner may use any remaining time
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`that's reserved, if at all, to respond to the Patent Owner's presentation.
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`One reminder before we begin here today is, to ensure that the
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`transcript is clear and because we have one Judge in the Dallas office, please
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`try to remember to refer to your demonstratives by slide number.
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`And counsel, do you have copies of the demonstratives for the
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`court reporter today?
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`MR. BATCHELDER: I do, Your Honor.
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`Your Honor, would you like copies as well, hard copies?
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`JUDGE ARBES: If you have them, yes, please, sir.
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`Okay. Counsel for the Petitioner, you may proceed. And would you
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`like to reserve time for rebuttal?
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`MR. BAUGHMAN: Thank you, Your Honor. Yes, we actually
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`would like to reserve 25 minutes for rebuttal if we may.
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`May it please the Board. Again, my name is Steve Baughman for
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`Petitioner, Apple Inc. With me at counsel table are Mr. Batchelder and
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`Ms. Fukuda. We have Cindy Wheeler, Senior Counsel for Apple in the
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`courtroom with us as well.
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`And I would like to give the Board just a brief overview to begin with,
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`what we plan to address today. There are three topics we plan to address
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`along with, of course, any questions the Board may have. The first, the
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`background of the art and the copies on its disclosures. In addition, the
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`secondary considerations of non-obviousness and expert evidence. My
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`colleagues, Mr. Batchelder and Ms. Fukuda, will generally address
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`CompuSonics' disclosures and expert evidence, and as they arise, I will
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`address certain topics relating to secondary consideration. And with that, I
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`would like to turn the podium over to Mr. Batchelder if I may.
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`MR. BATCHELDER: Good morning again. Judge Braden, can you
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`see and hear me okay?
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`JUDGE BRADEN: Yes, I can. Thank you.
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`MR. BATCHELDER: Thank you. What I would like to do is begin
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`by talking about the claims and then move from there to a couple of high
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`level questions: Is there anything novel or inventive about the components
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`of the patent, the teaching that can be used to practice the claims? And then
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`is there anything novel or inventive or unpredictable about what the patent
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`says is to be done with those components as to how they are to be used?
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`So if we could start with slide 2 in Petitioner's deck. Now, we've got
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`here the Claim 1 from the 573 patent on the left and Claim 1 from the 441 on
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`the right, and we have done some color coding to show some commonalities.
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`But as you can see on the left, the 573 Claim 1 is pretty simple. Transferring
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`money electronically is highlighted in the green at the top, and then in the
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`blue you need to connect two memories with a telecommunication line,
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`transmit a signal across those lines, and then at the bottom in yellow you
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`need to store the transmitted signal. That is what SightSound says the
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`claims require. Again, that is pretty simple stuff.
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`And again, we've used color coding on the right to show the
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`commonality. The forming a connection is really the same; that is in light
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`blue. The green, again, we have transferred money electronically on the left.
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`On the right it's just looking at the other side of that, charging a fee and
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`charging an account with the same general idea. And then again, there is
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`storing. And the only twist on the 440 storing is that it is not a tape or CD.
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`And then the one thing added there on the right is, in red, the playing, but of
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`course that was done all over the arch.
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`So those are the elements of the claims. They are simple, very high
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`level concepts.
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`Can we now look at slide 3? Now, looking at the components that the
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`patent says maybe used to carry out the teachings in the invention, figure 1
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`at the top there -- and first of all, the patent speaks permissibly about the use
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`of these features. It says, "Figure 1 is a pictorial flow chart which may be
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`used in carrying it out." And so, these features are exemplary; they're not
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`limiting.
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`And it says at the bottom there in figure 1 and figure 2, "The
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`following components are already commercially available." And it lists most
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`of the components in figure 1. So that is already established.
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`The next slide, please. Slide 4 in Petitioner's deck, importantly, given
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`the focus of the patent owner's response brief, during prosecution the patent
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`owner said that, "Any suitable recording apparatus that's controlled and in
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`possession of the second party can be used to record the incoming digital
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`signals," and the second party is not limited in any way.
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`JUDGE ARBES: But, counsel, doesn't the specification speak to
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`certain advantages of using a hard drive?
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`MR. BATCHELDER: What the specification does, Your Honor, is it
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`criticizes certain hard media. This is down in column 1. This is down in
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`column 1, and it specifically calls out records, tapes and CDs. And so, really
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`less than -- talking about advantages of hard drives, it talks about
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`disadvantages of those hard media. And it does that really right at the
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`beginning of the background of the invention section in column 1, starting
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`line 16 through about line 49. So it talks about capacity, material size,
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`retrieval.
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`So for capacity, you know, all memory has limited capacity and the
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`patent over here is not seeking to limit the claims based on the capacity of
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`the second memory. It does criticize material that's subject to damage and
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`deterioration when handled, like records, tapes and CDs. It talks about
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`physical size, but again, lots of memories occupy size. And it talks about the
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`ability to retrieve in the sequence selected by the user, and more than just
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`hard drives offer that advantage. So, I do think it's fair to say that the patent
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`criticized records, tapes and CDs, but it certainly didn't limit itself to hard
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`drives.
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`And to add too that the patent owner here, it has been inconsistent in
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`its briefing, and you will see from the argument side as well, whether it is
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`claiming a limitation based on hard disk on the one hand or on memory
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`being nonremovable on the other, it seems to be pivoting more toward the
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`nonremovable theory, which is a bit of a change from its papers.
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`I would add that there is an admission by Mr. Snell, their expert, and
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`our expert Dr. Kelly was in full agreement, that in the art there were
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`removable hard drives. And so that distinction between nonremovable and
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`removable really makes no sense at all because a removable hard disk had
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`exactly the same advantages or disadvantages vis-à-vis these characteristics
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`described in this deck as a nonremovable.
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`JUDGE ARBES: Counsel, is anything removable then if that theory
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`holds? I'm sorry, is anything nonremovable in that scenario?
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`MR. BATCHELDER: Well, you know, taken literally, I suppose,
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`anything is removable because you can take it apart. But there were hard
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`disk in the prior art, there were designs in the removable. You didn't have to
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`take apart the device, you could, you know, plug them in and plug them out.
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`So they were removable and they existed, and one ordinary skill in the art
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`knew about them and the patent owner has admitted that.
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`So I just also want to point out that, at the very bottom, Patent Owner
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`in its response brief makes what we see as a critical admission. "Patent
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`Owner does not dispute that the components needed to practice the claims
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`were available prior to 1988."
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`So the first question that I asked, was there anything novel about the
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`components that the patent says could be used to practice the invention?
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`And they admitted that the answer to that is absolutely not.
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`So then the second question is, is there anything novel or inventive or
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`unpredictable about how the patent says these features should be used? And
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`I think probably the best slide to get to that question is slide number 8 in
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`Petitioner's deck.
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`So these are examples of -- I'm sorry, let's see, slide 6, sorry. So slide
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`6 is -- we entitled it Baseline Knowledge of Person of Ordinary Skill in the
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`Art. I just wanted to step through these because you will see so much of
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`what is in the claims and using the very components we've been talking
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`about again and again and again.
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`So at the top, storing data, including audio and video data, at a remote
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`server and on various types of memory, including hard disks, Winchester
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`disk cartridges, and again, removable and nonremovable. That was in the
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`art. Transmission of digital signals over networks, that was in the art.
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`Transmission of digital audio signals over telecommunication lines, that was
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`in the art. Electronic sales were in the art. Electronic sale of digital music
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`was in the art. Devices for playing audio and video, digital audio and video,
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`including portable players, that was in the art.
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`And generally the idea of use of improved technologies; that is, as
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`bandwidth increases, one with ordinary skill would know that you'd use that
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`increased bandwidth on a consumer electronic device. And the same with
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`increased storage, as memories improve you'd use those.
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`And at the bottom we have Applicant's Statement -- again, this is in
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`the file history of the 573. "Electronic sales over telephone lines are terms
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`which encompass the well-known process of providing a credit card number
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`over a telephone line and telephoning to make the connection." And this
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`statement and several others like it were made during prosecution to
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`overcome 112 rejections. And they say, well, this is all well known. You do
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`credit card sales -- everybody knew what an electronic sale was and it was
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`well known in the art.
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`So with that, I would like to turn to slide 8 which we had up briefly a
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`moment ago. And these are examples of prior art statements about
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`electronic sale of downloaded music and video. Just, again, it provides some
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`frame of reference as to how one of ordinary skill in the art would have read
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`these CompuSonics disclosures.
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`So at the top we have a statement from Jimmy Bowen, who is famous
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`in the record industry. He was an executive at UMG and he actually was a
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`colleague of Larry Kenswil, who is Petitioner's Declarant on the commercial
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`success issue. And they were colleagues together at UMG.
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`So in 1986 Larry Bowen said publicly, "I see the time down the road,
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`probably 10 years, when you'll be able to dial a series of numbers on your
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`telephone, get a digital album over the phone line into your encoder in your
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`home. In five minutes, you can have a new album. It's on telephone bill or
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`it's on your credit card or whatever." So the very idea of an electronic record
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`store was being talked about years before the priority date here, something
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`that patent owner invented. This was talked about for a longtime.
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`And then just one example, it was a teaser example from
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`CompuSonics itself, and we will get into some more of those documents
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`with the Court's permission. But here CompuSonics says -- CompuSonics is
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`talking to AT&T about setting up a service that would enable record
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`companies to sell direct to consumers over the telephone. "Symphonies,
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`ordered by credit card, could travel digitally over phone lines into homes to
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`be recorded by CompuSonics' machine. Movies, which can also be recorded
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`digitally, might be sent the same way."
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`So, you see, that was even earlier. That was in 1984, many years
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`before the priority here. Mr. Bowen is talking about it from the record
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`industry perspective; CompuSonics is talking about it from the music
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`industry perspective. And one thing that I think was interesting about that
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`last sentence in the CompuSonics' disclosure is it just recognizes that, look,
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`if something can be recorded digitally, it can be transmitted digitally and you
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`can play back on the other end without degradation. And so having
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`recognized that, there was just nothing inventive about this idea. You send it
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`over the wires and you play it back on the other end.
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`JUDGE TIERNEY: For just a moment, I just want it to be clear for
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`the record. In claim 1 of the ’573 patent, where it says transmitting money
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`electronically via telecommunication line, could you please give us a claim
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`interpretation for that?
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`MR. BATCHELDER: Yes. The transfer money electronically, I
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`believe electronically has been construed as through devices which depend
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`upon the flow of electronics. And so transferring money electronically is
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`transferring money through some such means.
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`And then you will see in the prosecution history and actually in the
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`statement that Mr. Hair -- we just saw from him during prosecution that
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`again and again there was discussion about electronic sales referring to the
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`use of a credit card in connection with the publications.
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`JUDGE TIERNEY: So is it your position that if I were to pick up a
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`phone and call and give my credit card information over the phone that that
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`would meet that limitation?
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`MR. BATCHELDER: Absolutely. And it is also the case, as has
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`been acknowledged by the patent owner and also attested to by Dr. Kelly on
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`our side, that one of ordinary skill in the art would have known how to do
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`more than that. Dr. Kelly, for example -- this is in Exhibit 4262, in his reply
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`declaration, paragraphs 21 through 22. He makes it clear that by the mid-
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`1980s the use of credit cards for phone purchases was common. And he also
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`points out that Mr. Snell himself acknowledges that in a time period prior to
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`the priority date one of ordinary skill in the art would have known that
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`providing a credit card number over the telephone or by voice or by entering
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`it via the key pad of the telephone were both mechanisms by which money
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`could be transferred. So even by voice or you could type it into the key pad.
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`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`And then Dr. Kelly also has another example of using a computer
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`keyboard. If you type in a credit card on your keyboard, that was well
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`known in the art and it was done in the art with credit cards.
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`JUDGE TIERNEY: Could you direct me to what in the
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`specification -- what in the specification supports such a definition?
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`MR. BATCHELDER: The definition of transferring money
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`electronically? There is actually precious little in the specification on that
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`question. I will see if Ms. Fukuda can look that up as I continue in the
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`interest of time. But I think the specification only says one thing on that.
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`MS. FUKUDA: Your Honor, the specification refers to just
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`transferring money electronically; it does not define it. But there is
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`information --
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`JUDGE BRADEN: Could she come to the microphone? I can't hear
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`you.
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`MS. FUKUDA: Is that okay, Judge Braden?
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`JUDGE BRADEN: Oh, yes. Perfect. Thank you.
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`MS. FUKUDA: So the only reference in the specification to
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`transferring money electronically is just transferring money electronically.
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`But there is some information in the prosecution and reexamination history
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`about what that means. And that is, as Mr. Batchelder had referenced,
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`Mr. Hair, the inventor, had made some statements to the patent office about
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`what electronic sale means. And it covers both the transferring money
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`electronically component for the 573 and the electronically selling
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`component of the 440 patent.
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`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`JUDGE TIERNEY: And if I may, I would like for the record today,
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`the ’573 patent, the last indication, storing the digital signal in the second
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`memory, is that limited to the hard disk or does that include removable
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`media?
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`MR. BATCHELDER: It is certainly not limited to a hard disk. And
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`again, there were removable hard disks at the time, so it's not limited to
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`nonremovable media. Hard disks were disclosed as exemplary. There is an
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`argument from the prosecution history that it would exclude perhaps records,
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`tapes and CDs, but to the extent that there is any disclaimer, it wouldn't go
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`any further that than.
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`JUDGE TIERNEY: And can you show where in the specification
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`they have -- can you identify where in the specification the limitations that
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`would support or discussions that would support your interpretation?
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`MR. BATCHELDER: Yes. As we have just been through, the only
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`thing that they're pointing to is a hard disk in figure 1 and figure 2. But hard
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`disk is disclosed to be something that may be used. And this is -- it is laid
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`out in our slide 3 that we just looked, that "Figure 1 is a pictorial flow chart
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`which may be used in carrying out the teachings of this invention."
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`And, in fact, the term hard disk in the original ’573 claims during
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`prosecution, the hard disk was a limitation of the claims somebody filed and
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`that term was taken out for the ’573 claims during the prosecution, which
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`strongly suggests that the inventor meant to take them out and leave them
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`out. And that alone I think is quite telling.
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`But anyway, all of -- the only disclosures in the specification are
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`exempted disclosures and there's criticism they said of records, tapes and
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`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`CDs in column 1 along the various criteria that we've talked about. But
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`there is nothing that would limit second memory in the specification to hard
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`disk. And I should add that the Patent Owner, again, is trying to impose a
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`limitation of nonremovability, and those terms don't even appear in the
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`specification. Removable, nonremovable, they don't even exist in the spec.
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`JUDGE TIERNEY: How should we refer to the disclosure in column
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`3 where it says description of the preferred embodiment, and then it goes on
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`to say referring now to the figure 1?
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`MR. BATCHELDER: Let me just turn to it, Your Honor, so I'm on
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`the same page.
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`JUDGE TIERNEY: Column 3, lines 41 to about 45.
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`MR. BATCHELDER: Yes. "So referring now to figure 1, the
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`invention is comprised of the following." And yes, I certainly see that
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`language, but then we also have the language saying that figure 1 above it, in
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`line 32, that this is a flow charter which may be used in carrying out the
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`teachings of this invention.
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`And then again, in column 5 towards the bottom, lines 61, "Since
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`numerous changes may be made in the above-described process and
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`apparatus and different embodiments in the invention may be made without
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`departing from the spirit thereof, it is intended that all matter contained in
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`the foregoing description or shown in the company drawings shall be
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`interpreted as illustrative, not in a delimiting sense."
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`JUDGE TIERNEY: Well, if I may direct you back to column 3 where
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`it says, "descriptions of the preferred embodiment," do we read the word
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`preferred as delimiting in any way?
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`15
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`
`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
`
`MR. BATCHELDER: Preferred embodiments are not limiting. I
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`mean, that is, that is a black letter law under Folks (ph.).
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`JUDGE TIERNEY: So should we interpret that as identifying that the
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`limitations expressed after that column 3, line 40 and further discussion is
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`actually just preferred embodiments, should not be read into the claim?
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`MR. BATCHELDER: That is exactly right, yes. And again, the
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`Phillips case said that even -- well, it is black letter law. It is error to import
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`limitations from the specification in the claim, and that is even true where
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`there is only one embodiment in typical cases.
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`JUDGE TIERNEY: Now, you were going through and showing us
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`how different elements within the prior art -- I'm looking at the Patent
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`Owner response, page 64. And on that page they make a statement that I
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`would like to have you put into context for me if you could.
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`MR. BATCHELDER: Sure. Okay. I'm with you.
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`JUDGE TIERNEY: The paragraph that begins with the statement,
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`"Despite the prior art elements working according to their established
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`functions and predictability, no ordinary skilled artisan and certainly not
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`CompuSonics saw the problem with removable hardware data until the 573
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`patent specifications were published." Does this acknowledge that all of the
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`elements were known, being used within a function and the production was
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`achieved?
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`MR. BATCHELDER: Your Honor, I circled that very passage in my
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`version of their brief. Yes, they say, "The prior art element is working
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`according to their established functions and predictability." And I would say
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`that that ties very well into what the Board has already noted about, in an
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`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
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`obvious determination, what the KSR case explains is that critical inquiry.
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`And that is, the operative question under KSR, as the Board quoted from
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`KSR, is, "Whether the improvement is more than a predictable use of prior
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`art elements according to their established functions." And here we have a
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`patent owner acknowledging that all of these components were simply used
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`in a predictable way according to their established functions.
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`JUDGE TIERNEY: So how should we interpret that statement that
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`represents that in this case?
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`MR. BATCHELDER: I would say that it is rock solid evidence of
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`obviousness and it is also I think useful for the 102 inquiry. But they've
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`admitted that the deponents were all in the art and they were all used in a
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`predictable way according to their established functions. KSR really
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`requires no more.
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`If I can take just a few minutes to step through some of the
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`CompuSonics documents. I do think they are, you know, they're the meat of
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`this inquiry and I think they're illustrative. So if we can look to ’536, please.
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`So here, because pictures tell a thousand words, I just wanted to start
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`with the picture. But this is a very simple diagram. You see music on both
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`sides, we see a DSP 2002 on both sides, and those are the digital signal
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`processes of CompuSonics. They're connected by a telecommunication line.
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`So you have music, it is digitized, it's sent over, it's recorded and it's played.
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`Very simple stuff, but that's exactly what Claim 1 is describing.
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`And then CompuSonics, through a variety of these disclosures that
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`we've presented, it talks about how this can be used, and that talks about
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`how it can be used in connection with electronic sales.
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`17
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`
`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
`
`So if we can look at slide 35. So here we have -- they are describing
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`at the top the relationship with AT&T, which provided the ACCUNET
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`telecommunications line we saw in the prior slide. And it says, "We have
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`signed the Memorandum of Understanding for co-marketing with AT&T
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`Communications. This is the direct results of a series of successful
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`telerecording tests and demonstrations which culminated in August with
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`New York City to Chicago and back digital audio communications between
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`two CompuSonics DSP-2002s."
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`JUDGE ARBES: And so, that test, the communication from --
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`between New York City and Chicago, that used the DSP-2002; is that right?
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`MR. BATCHELDER: On both ends.
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`JUDGE ARBES: Okay. And what was the storage mechanism for
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`that DSP-2002?
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`MR. BATCHELDER: There was an internal hard disk.
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`JUDGE ARBES: Okay. So that specific device that was used in that
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`test had a hard disk and it transmitted the digital music and it was stored on a
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`hard disk on the other end; is that correct?
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`MR. BATCHELDER: That is exactly right.
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`JUDGE ARBES: All right.
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`MR. BATCHELDER: That's exactly right.
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`And you'll see at the bottom it talks about all-electronic purchases, so
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`that the stuff can show up in your living room. And it can show up in your
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`living room if you have a DSP-1000 as it mentions here, and of course it can
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`show up in your living room if you had the DSP-2000 too. And these things
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`18
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`
`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
`
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`were swappable. I mean, you could use either device for any purpose once
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`you have it.
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`JUDGE ARBES: I'm sorry, are you saying the DSP-1000 series and
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`DSP-2000 series both had that, I believe what they called telerecording
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`capabilities?
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`MR. BATCHELDER: In the DSP-2000, the demonstration that we
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`just looked at, that was telerecording. It was transmitting the signal on one
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`end, recording on the other, and playing it back. And in the DSP-1000s, the
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`Stanford lecture that Mr. Schwartz presented which is also in the record, he
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`talks about the software supporting the functionality in the DSP-1000. And I
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`should add that there were DSP-1000 series flavors; the DSP-1800 was a
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`kind of DSP-1000 and that was sold with an internal hard disk.
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`Mr. Schwartz testified to that and he did so -- and that testimony is
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`unrebutted. And Mr. Stautner from CompuSonics submitted a declaration
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`on behalf of the patent owner -- Mr. Stautner submitted a declaration after
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`Mr. Schwartz testified that theDSP-1800 was sold with an internal hard
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`drive, and Mr. Stautner didn't contest that testimony. That stands
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`18
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`unrebutted.
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`JUDGE ARBES: Counsel, did any of those devices that you just
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`mentioned have the capability to transfer money electronically?
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`MR. BATCHELDER: The devices themselves were not configured to
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`do that, but again, that's not the point. Our point here is that this was
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`publicly known and you don't need a machine at all to satisfy the publicly
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`known requirement; you can just write it down. Here, CompuSonics did
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`more than that. They developed these devices and they taught the world
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`19
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`
`

`
`Cases CBM2013-00020 and CBM2013-00023
`Patents 5,191,573 and 5,966,440
`
`
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`1
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`2
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`3
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`4
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`how they could be used in connection with a system where there was an
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`electronic sale. But again, there's no magic to that, all you do is pick up a
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`telephone and provide your credit card number either through your voice or
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`on a keypad or hook it up to a computer keyboard.
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`
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`JUDGE ARBES: Okay. But you would acknowledge that none of
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`these specific devices had that capability and there was no test that was done
`
`of using one of these devices for that capability?
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`
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`MR. BATCHELDER: That's exactly right. But we would say, again,
`
`it was well known in the art how to do it, the patent owner has
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`10
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`acknowledged that, and there was no mystery. And again, as Judge Tierney
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`11
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`just pointed out, the Patent Owner even acknowledged in its brief that all of
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`these things were done according to their predictable uses