IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Covered Business LN-Iethod Patent Review
`
`United States Patent No. 8,794,516
`
`Attorney Docket No.:
`104677-5008-832
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz et al.
`
`United States Paterit No; 8,794,516
`Formerly Application No.: 13/438,754
`Issue Date: August: 5, 2014
`Filing Date: April 3, 2012
`Former Group Art Unit: 2887
`Former Examiner: Thien M. Le
`
`l._//"3E}Z'I-(Z/"3{§“.-tfltfi
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATHN"I‘ BOARD
`
`Patent Trial and Appeal Board
`Un.ited States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`DECLARATION OF MICHAEL P. DUFFEY IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,794,516
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`1, Michael P. Duffey, make
`
`the
`
`following Declaration pursuant
`
`to
`
`28 U.S.C. § 1746:
`
`l.
`
`I
`
`am a Litigation
`
`Paralegal
`
`Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes & Gray LL13‘.
`
`2.
`
`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
`
`Apple Exhibit 1021
`
`Page 00001
`
`
`Page 00001
`
`Apple Exhibit 1021
`
`
`
`Covered Business LN-Iethod Patent Review
`
`United States Patent No. 8,794,516
`
`Attorney Docket No.:
`104677-5008-832
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz et al.
`
`United States Paterit No; 8,794,516
`Formerly Application No.: 13/438,754
`Issue Date: August: 5, 2014
`Filing Date: April 3, 2012
`Former Group Art Unit: 2887
`Former Examiner: Thien M. Le
`
`l._//"3E}Z'I-(Z/"3{§“.-tfltfi
`
`For: Data Storage and Access Systems
`
`MAIL STOP PATHN"I‘ BOARD
`
`Patent Trial and Appeal Board
`Un.ited States Patent and Trademark Office
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`DECLARATION OF MICHAEL P. DUFFEY IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,794,516
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`1, Michael P. Duffey, make
`
`the
`
`following Declaration pursuant
`
`to
`
`28 U.S.C. § 1746:
`
`l.
`
`I
`
`am a Litigation
`
`Paralegal
`
`Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes & Gray LL13‘.
`
`2.
`
`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
`
`Apple Exhibit 1021
`
`Page 00001
`
`
`Page 00001
`
`Apple Exhibit 1021
`
`
`
`C.l*'.R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`on my personal knowledge.
`
`3.
`
`Exhibit 1001 hereto is a true and correct copy of United States Patent
`
`No. 8,794,516 to Patrick Sander Racz and Hermen-ard I-lulst, which I downloaded on
`
`April 27, 2015 from the United States Patent and Trademark Office (“USPTO”)
`
`Patent Application Information "Retrieval (“PAIR”) website and which is a record of
`
`the USPTO to which all parties have access. An exhibit label on the first page and
`
`page numbers on all pages have been added to the bottom of this document but no
`
`other alterations have been made.
`
`4.
`
`Exhibit 1002 hereto is a true and correct copy of Plaintiffs’ First
`
`Amended Complaint
`
`for Patent Infringement
`
`(“Amended Complaint”),
`
`filed in
`
`Saraariflas/9 LLC,
`
`92‘ ad 22. Apple Izza,
`
`.92‘
`
`.91, Civil Action No. 6:13—cv—447, before the
`
`District Court of the Eastern District of Texas, which I downloaded on February 24,
`
`2014 from the Public Access to Court I'_*'.lectronic Records (“PACER”) website and is
`
`a record of the aforementioned District Court (Dkt. No. 72) to which all parties have
`
`access. The Amended Complaint contains markings at the top of each page indicating
`
`the PACER filing information. An exhibit label on the first page and page numbers
`
`on all pages have been added to the bottom of this document but no other alterations
`
`have been made.
`
`Page 00002
`
`
`Page 00002
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`5.
`
`Exhibit 1005 hereto is a true and correct copy of the file history for
`
`United States Patent No. 7,334,720 to Patrick Racz and I--lermen-ard Hulst, which I
`
`downloaded on January 29, 2014 from the USPTO 1-”AIR website and which is a
`
`record of the USl3'l‘O to which all parties have access.
`
`I-='\n exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`6.
`
`Exhibit 1006 hereto is a true and correct copy of United States Patent
`
`No. 4,999,806 to Fred Chernow and Randy Peterson, which I downloaded on
`
`February 3, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`7.
`
`Exhibit 1007 hereto is a true and correct copy of United States Patent
`
`No. 5,675,734 to Arthur R. I-lair, which I downloaded on February 3, 2014 from the
`
`USPTO IJJXIR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`8.
`
`Exhibit 1008 hereto is a true and correct copy of United States Patent
`
`No. 4,878,245 to Graham C. Bradley, Alton O. Stretten,]ohn P. Stretten, and Rex B.
`
`Wentzel, which I downloaded on February 3, 2014 from the USPTO PAIR website
`
`Page 00003
`
`
`Page 00003
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`and which is a record of the USPTO to which all parties have access. An exhibit label
`
`on the first page and page numbers on all pages have been added to the bottom of
`
`this document but no other alterations have been made.
`
`9.
`
`Exhibit 1009 hereto is a true and correct copy of the tile history for
`
`United States Patent No. 8,794,516 to Patrick Sander Racz and Herrnen-ard I-lulst,
`
`which I downloaded on April 27, 2015 from the USPTO PAIR website and which is 21
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`10.
`
`Exhibit 1010 hereto is a true and correct copy of United States Patent
`
`No. 7,942,317 to Patrick Racz and l"Ierrnen—ard I--Iulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`11.
`
`Exhibit 1011 hereto is a true and correct copy of United States Patent
`
`No. 5,103,392 to Ryoiehi Mori, which I downloaded on March 10, 2014 from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`Page 00004
`
`
`Page 00004
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`12.
`
`Exhibit 1012 hereto is a true and correct copy of United States Patent
`
`No. 5,530,235 to Mark J. Stefik, Daniel G. Bobrow, Stuart K. Card, Michalene M.
`
`Casey, Richard Goldstein, Michael G. Larnming, jock D. Mackinlay, Roy Want,
`
`George G. Robertson, Mark D. Weiser, and Daniel M. Russell, which I downloaded
`
`on February 24, 2014 from the USPTO I’A.lR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`13.
`
`Exhibit 1013 hereto is a true and correct copy of United States Patent
`
`No. 5,629,980 to Mark Stefik and Michalene M. Casey, which I downloaded on
`
`February 24, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`14.
`
`Exhibit 1014 hereto is a true and correct copy of United States Patent
`
`No. 5,915,019 to Karl L. C-Einter, Victor I-I. Shear, Francis]. Spahn, and David M. Van
`
`\X/ie, which I downloaded on February 24, 2014 from the USPTO PAIR website and
`
`which is a record of the USPTO to which all parties have access. An exhibit label on
`
`the first page and page numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`Page 00005
`
`
`Page 00005
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`15.
`
`Exhibit 1015 hereto is a true and correct copy of European Patent
`
`Application E13 0 809 221 A2, Filed on May 6, 1997 by Sun Microsystems, Inc., and
`
`published on November 26, 1997, which I downloaded on February 24, 2014 from
`
`the European Patent Office’s Espacenet search page to which all parties have access.
`
`An exhibit label on the first page and page numbers on all pages have been added to
`
`the bottom of this document but no other alterations have been made.
`
`16.
`
`Exhibit 1016 hereto is a true and correct copy of the International
`
`"Publication No. WO 99/43136, filed on January 11, 1999 by Ericsson, Inc., and
`
`published on August 26, 1999, which I downloaded on February 24, 2014 from the
`
`European Patent Office’s Espacenet search page to which all parties have access. An
`
`exhibit label on the first page and page numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`17.
`
`llxhibit 1017 hereto is a true and correct copy of the Japanese Patent
`
`Application Publication No.
`
`I-I11—164058 filed on November 26, 1997 by Hitachi
`
`lsllectron Service Co., Ltd, and published on June 18, 1999, which I downloaded on
`
`March 11, 2014 from the L'uropean Patent Office’s Espacenet search page to which
`
`all parties have access, and which is accompanied by a true and correct copy of a
`
`translation of the text of that document and a declaration of accuracy regarding that
`
`translation provided by Multi_Ling Corporation. An exhibit label on the first page and
`
`Page 00006
`
`
`Page 00006
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,131 6
`
`page numbers on all pages have been added to the bottom of this document but no
`
`other alterations have been made.
`
`18.
`
`Exhibit 1020 hereto is a true and correct copy of United States Patent
`
`No. 8,033,458 to I--lermen-ard Hulst and Patrick Racz, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`19.
`
`Exhibit 1029 hereto is a true and correct copy of the file history for
`
`United States Patent No. 7,942,317 to Patrick Racz and I-l'ermen—ard I-lulst, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`20.
`
`Exhibit 1030 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,033,458 to I-lermen-ard I-lulst and Patrick Racz, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`Page 00007
`
`
`Page 00007
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`21.
`
`Exhibit 1031 hereto is a true and correct copy of United States Patent
`
`No. 8,061,598 to Patrick Racz and Hermen-ard Hulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alteratiorts have been made.
`
`22.
`
`Exhibit 1032 hereto is a true and correct copy of United States Patent
`
`No. 8,118,221 to Patrick Racz and I-Iermen-ard I-lulst, which I downloaded on
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`23.
`
`Hxhibit 1033 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,118,221 to Patrick Racz and I--'lermen—ard I-Iulst, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`24.
`
`Exhibit 1034 hereto is a true and correct copy of United States Patent
`
`No. 8,336,772 to Patrick Racz and Ilermen-ard I--Iulst, which I downloaded on
`
`Page 00008
`
`
`Page 00008
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`January 31, 2014 from the USPTO PAIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`25.
`
`Exhibit 1035 hereto is a true and correct copy of the tile history for
`
`United States Patent No. 8,336,772 to Patrick Racz and Hermen—ard Hulst, which I
`
`downloaded on January 29, 2014 from the USPTO PAIR website and which is a
`
`record of the USPTO to which all parties have access. An exhibit label on the first
`
`page and page numbers on all pages have been added to the bottom of this document
`
`but no other alterations have been made.
`
`26.
`
`Exhibit 1037 hereto is a true and correct copy of United States Patent
`
`No. 5,903,721 to Timothy Sixtus, which I downloaded on April 21, 2015 from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`27.
`
`Exhibit 1038 hereto is a true and correct copy of International
`
`Publication No. W0 99/ 13398, filed on June 14, 1995 by Peterson, llarold 1,. and
`
`\Williams,_]a1'nes B., and published on March 18, 1999, which I downloaded on April
`
`21, 2015 from the European Patent OfI:ice’s lilspacenct search page to which all
`
`parties have access. An exhibit label on the first page and pages numbers on all pages
`
`Page 00009
`
`
`Page 00009
`
`
`
`have been added to the bottom of this document but no other alterations have been
`
`Covered Business Method Patent Review
`
`United States Patient No. 8,794,516
`
`made.
`
`28.
`
`l"-Exhibit 1039 hereto is a true and correct copy of United States Patent
`
`No. 5,761,485 to Daniel _I_'*_‘.. Munyan, which I downloaded on April 21, 2015 from the
`
`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`29.
`
`I ixhibit 1040 hereto is a true and correct copy of an article by Rakesh
`
`Mohan, john R. Smith and Chung—S-heng Li entitled “Adapting Multimedia Internet
`
`Content for Universal Access”, published March 1999 by The Institute of lilectrical
`
`and
`
`Electronics
`
`Engineers,
`
`Inc,
`
`which
`
`I
`
`downloaded
`
`from
`
`http: / Xivizlabs fu.ca/ arya/ Papers / IEEE /’l‘ransactl\/I'M / CD / DATA / 00748175.PDP
`
`on April 21, 2015. Page numbers and an exhibit label have been added to the bottom
`
`of this document but no other alterations have been made.
`
`30.
`
`Exhibit 1041 hereto is a true and correct copy of United States Patent
`
`No. 5,953,005 to James C. Liu, which I downloaded on April 21, 2015 from the
`
`USPTO 1%-XTR website and which is a record of the USPTO to which all parties have
`
`access. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`10
`
`Page 00010
`
`
`Page 00010
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`31.
`
`Exlubit 1042 hereto is a true and correct copy of Plaintiffs’ Complaint
`
`for Patent Infringement (“Complaint”), fled in Smargfhib LLC, ea.‘ ad. 9. Appie Ina, Civil
`
`Action No. 6:15~cv—145 before the District Court of the Eastern Disttict of Texas,
`
`which I downloaded on April 27, 2015 from the Public Access to Court Electronic
`
`Records (“PACER”) website and is a record of the aforementioned District Court
`
`(Dkt. No. 1) to which all parties have access. The Complaint contains markings at the
`
`top of each page indicating the PACER filing information. An exhibit label on the
`
`first page and page numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`32.
`
`Exhibit 1043 hereto is a true and correct copy of United States Patent
`
`No. 7,334,720 to Patrick Racz and I-Iermen-ard I-lulst, which I downloaded on
`
`January 31, 2014 from the USPTO "I-‘AIR website and which is a record of the
`
`USPTO to which all parties have access. An exhibit label on the first page and page
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`33.
`
`Exliibit 1044 hereto is a true and correct copy of the transcript of the
`
`April 8th & 9th, 2015 Deposition of Jonathan Katz, Ph.D., taken in connection with
`
`the above identified Covered Business Method Patent Review proceeding, which was
`
`transcribed and certified by Cappy I-lallock, RPR, CRR, CLR, Certified Shorthand
`
`Reporter,
`
`licensed in the District of Columbia, of Gregoryljdwatds LLC, and
`
`11
`
`Page 00011
`
`
`Page 00011
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`delivered to me on ..-*‘.tpt'il 14, 2015. An exhibit label on the first page and pages
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`34.
`
`Exhibit 1045 hereto is a true and correct copy of an article by Jim Taylor
`
`entitled “DVD~\/“ideo: Multimedia for the Masses”, publishedjuly-September 1999 by
`
`The Institute of Electrical and "Electronics Engineers, 'Inc., which I downloaded from
`
`http: / /ivizlab.sfu.ca/ arya/Papers / II.£l.il.i /Mul1:lmed.ia/ 1999/july/D'\/D—Video.pdf on
`
`April 29, 2015. Page numbers and an exhibit label have been added to the bottom of
`
`this document but no other alterations have been made.
`
`35.
`
`Exhibit 1046 hereto is an excerpt of a true and correct copy of the
`
`Transcript of Trial, Afternoon Session, February 16, 2015, filed in Smargyfiar/9 LLC, et
`
`ai 9.142016 Ina, Civil Action No. 6:13-cv-447 before the District Court of the Eastern
`
`District of Texas, which I received on February 16, 2015 from Shea Sloan, Court
`
`Reporter. An exhibit label on the first page and page numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`36.
`
`I have been informed that willfully false statements are punishable by
`
`fine or imprisonment, or both.
`
`I make this declaration of my own personal
`
`knowledge, and all statements are true.
`
`If called to testify as to the truth of the
`
`matters stated herein, I could and would testify competently.
`
`37.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`12
`
`Page 00012
`
`
`Page 00012
`
`
`
`Executed this 6"“ day of May, 2015, at East Palo Alto, CA.
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,794,516
`
`
`
`13
`
`Page 00013
`
`
`Page 00013
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