`
`Patent Owner Sightsound
`
`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
`
`Paper No. ___________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE, INC.,
`
`Petitioner,
`
`v.
`
`Patent of SIGHTSOUND TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`_______________
`
`Case CBM2013-00023
`Patent 5,966,440
`
`_______________
`
`PATENT OWNER’S LIST OF PROPOSED MOTIONS
`
`– 1 –
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PATENT OWNER’S LIST OF PROPOSED MOTIONS
`
`In view of the Board’s decision to institute covered business review of U.S.
`
`Patent No. 5,966,440 (“the ‘440 Patent”) and the initial conference to be held on
`
`October 30, 2013, SightSound Technologies, LLC (“Patent Owner”) hereby files
`
`and serves the following list of proposed motions:
`
`I.
`
`Motion Under 37 C.F.R. § 42.51(b)(2) to Conduct Additional
`Discovery as May be Required.
`
`In addition to Patent Owner’s right to depose and receive documents from
`
`declarants whose affidavits or other testimonial evidence is proffered by Petitioner,
`
`including third parties, Patent Owner seeks authorization to file one or more
`
`motions under 37 C.F.R. § 42.51(b)(2) for additional discovery related to
`
`secondary considerations of nonobviousness. Specifically, Patent Owner seeks
`
`authorization to conduct discovery regarding the commercial success of
`
`Petitioner’s iTunes Music Store (“ITMS”) which Patent Owner contends practices
`
`the ‘440 Patent.
`
`Patent Owner is open to a stipulation that the ITMS practices the ‘440 patent
`
`solely for purposes of evaluating secondary considerations of nonobviousness for
`
`– 2 –
`
`
`
`this proceeding.
`
`In the event Petitioner disputes that the ITMS practices the ‘440
`
`Patent, Patent Owner seeks authorization to conduct discovery of Petitioner’s
`
`technical documentation demonstrating the operation of the ITMS as well as an
`
`identification of and deposition of the appropriate witness on this topic.
`
`To the extent that Petitioner disputes that there is a nexus between the
`
`patented invention and the commercial success of the ITMS, Patent Owner seeks
`
`authorization to conduct discovery of materials showing such a nexus, including
`
`but not limited to any consumer surveys Petitioners has conducted or
`
`commissioned, as well as internal analysis, concerning the ITMS and consumers’
`
`preferences for purchasing digital video and audio signals, as well as an
`
`identification of and deposition of the appropriate witness on this topic.
`
`II. Motion for Tracy Tosh Lane and Sean M. Callagy to be Permitted
`to Observe CBM Proceedings.
`
`Patent Owner may move to permit Tracy Tosh Lane and Sean M. Callagy,
`
`who are outside counsel for Patent Owner in litigation involving Petitioner but not
`
`admitted to practice before the USPTO, to observe all proceedings in the trial of
`
`this matter. Ms. Lane and Mr. Callagy will not participate directly in the CBM
`
`review, including by appearing, arguing, or submitting documents in any capacity.
`
`III. Contingent Motion to Amend under 37 C.F.R. § 42.221.
`
`Patent Owner may move to amend one or more of the involved claims of the
`
`‘440 patent. Any such claim amendments will be made to respond to one or more
`
`– 3 –
`
`
`
`of the grounds of unpatentability involved in the trial and will not enlarge the
`
`scope of the claims of the ‘440 patent.
`
`IV. Motions for Pro Hac Vice Admission pursuant to Rule 42.10(c).
`
`Patent Owner may make motions for Pro Hac Vice admission pursuant to
`
`Rule 42.10(c).
`
`V.
`
`Additional Motions.
`
`Patent Owner may also seek authorization, as necessary, to file additional
`
`motions not identified on the above list. See Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756 at 48765 (“Submission of a list would not preclude the filing of
`
`additional motions not contained in the list.”).
`
`Dated: October 28, 2013
`
`Respectfully submitted,
`
`/David R. Marsh/
`
`David R. Marsh, Ph.D. (Reg. No. 41,408)
`Kristan Lansbery, Ph.D. (Reg. No. 53,183)
`
`ARNOLD & PORTER LLP
`Attn: IP Docketing
`555 12th Street, N.W.
`Washington, DC 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`– 4 –
`
`
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