IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`Attorney Docket N0.:
`104677-5008-827
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz et a1.
`
`United States Patent No: 8,033,458
`Formerly Application No.: 12 / 943,847
`Issue Date: October 11, 2011
`Filing Date: November 10, 2010
`Former Group Art Unit: 2887
`Former Examiner: Thien M. Le
`
`Wammmmmm
`
`For: Data Storage and Access Systems
`
`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 MICHAEL P. DUFFEY IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,033,458
`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:
`
`1.
`
`I
`
`am a Litigation
`
`Paralegal Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes 8; Gray LLP.
`
`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 Method Patent Review
`
`United States Patent No. 8,033,458
`
`Attorney Docket N0.:
`104677-5008-827
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz et a1.
`
`United States Patent No: 8,033,458
`Formerly Application No.: 12 / 943,847
`Issue Date: October 11, 2011
`Filing Date: November 10, 2010
`Former Group Art Unit: 2887
`Former Examiner: Thien M. Le
`
`Wammmmmm
`
`For: Data Storage and Access Systems
`
`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 MICHAEL P. DUFFEY IN SUPPORT OF PETITION
`
`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`
`UNITED STATES PATENT NO. 8,033,458
`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:
`
`1.
`
`I
`
`am a Litigation
`
`Paralegal Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes 8; Gray LLP.
`
`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
`
`
`
`GER. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`on my personal knowledge.
`
`3.
`
`Exhibit 1001 hereto is a true and correct copy of United States Patent
`
`No. 8,033,458 to Hermen—ard Hulst and Patrick Racz, which I downloaded on
`
`january 31, 2014 from the United States Patent and Trademark Office (“USPTO”)
`
`Patent Application Information Retrieval (“PAIR”) website and which is a record of
`
`the U SPTO to which all parties have access. 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.
`
`4.
`
`Exhibit 1002 hereto is a true and correct copy of Plaintiffs’ First
`
`Amended Complaint
`
`for Patent Infringement
`
`(“Amended Complaint”),
`
`filed in
`
`Imam/Z95}: LLC,
`
`31," rd. a Appfe Inc,
`
`92 all, 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 Electronic 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 h-flethod Patent Review
`
`United States Patent No. 8,033,458
`
`5.
`
`Exhibit 1004 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,033,458 to Hermen-ard Hulst 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.
`
`6.
`
`Exhibit 1006 hereto is a true and correct copy of United States Patent
`
`No. 4,999,806 to Fred Chernow and Randy j 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. Hair, which I downloaded on February 3, 2014 from the
`
`USPTO PAIR website and which is a record of the USP’l‘O 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 1009 hereto is a true and correct copy of United States Patent
`
`No. 4,878,245 to Graham C. Bradley, Alton O. Stretten, John P. Stretten, and Rex B.
`
`Wentzel, which I downloaded on February 3, 2014 from the USPTO PAIR website
`
`Page 00003
`
`
`Page 00003
`
`
`
`chered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`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 1010 hereto is a true and correct copy of United States Patent
`
`No. 7,334,720 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
`
`alterations have been made.
`
`10.
`
`Exhibit 1012 hereto is a true and correct copy of United States Patent
`
`No. 5,103,392 to Ryoichi 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.
`
`11.
`
`Exhibit 1013 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 J Goldstein, Mchael G. Lamming, Jock D. Mackinlay, Roy Want,
`
`George G. Robertson, Mark D. \Veiser, and Daniel M. Russell, which I downloaded
`
`on February 24, 2014 from the USP’l'O 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
`
`Page 00004
`
`
`Page 00004
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`12.
`
`Exhibit 1014 hereto is a true and correct copy of United States Patent
`
`No. 5,629,980 to Mark J. Stefik and Michalene M. Casey, which I downloaded on
`
`February 24, 2014 from the USPTO PAIR website and which is a record of the
`
`USP’l‘O 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 1015 hereto is a true and correct copy of United States Patent
`
`No. 5,915,019 to Karl l}. Ginter, Victor H. Shear, Francis}. Spahn, and David M. Van
`
`Wie, which I downloaded on February 24, 2014 from the USP’l'O 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 1016 hereto is a true and correct copy of European Patent
`
`Application HP 0 809 221 AZ, 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.
`
`Page 00005
`
`
`Page 00005
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`15.
`
`Exhibit 1017 hereto is a true and correct copy of the International
`
`Publication No.
`
`\WO 99/431136, 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.
`
`16.
`
`Exhibit 1018 hereto is a true and correct copy of the japanese Patent
`
`Application Publication No. Fifi—164058 filed on November 26, 1997 by Hitachi
`
`Electron Service Co, Ltd, and published on june 18, 1999, which I downloaded on
`
`March 11, 2014 from the European 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 Multilqing Corporation. 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.
`
`l..ixhibit 1023 hereto is a true and correct copy of United States Patent
`
`No. 8,118,221 to Patrick Racz and Hermen—ard l-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
`
`6
`
`Page 00006
`
`
`Page 00006
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`18.
`
`Exhibit 1029 hereto is a true and correct cop}r 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 USP’l‘O 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 1030 hereto is a true and correct copy of an article by Rakesh
`
`Mohan, john R. Smith and Chung-Sheng Li entitled “Adapting Multimedia Internet
`
`Content for Universal Access”, published March 1999 by The Institute of Electrical
`
`and
`
`Electronics
`
`Engineers,
`
`Inc,
`
`which
`
`I
`
`downloaded
`
`from
`
`http: / /ivizlab.sfu.caX aran Papers / IEIEE /'l‘ransactMM X CD XDA’l'A / 00748175.PDl-*'
`
`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.
`
`20.
`
`Exhibit 1032 hereto is a true and correct copy of United States Patent
`
`No. 5,761,485 to Daniel E. Munyan, which 'I' downloaded on April 21, 2015 from the
`
`USP'l‘O PAIR website and which is a record of the USP’l‘O 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. 8,033,458
`
`21.
`
`lixhibit 1033 hereto is a true and correct cop};r of the transcript of the
`
`April 8th 8: 9th, 2015 Deposition of Jonathan Katz, Phil, taken in connection with
`
`the above identified Covered Business Method Patent Review proceeding, which was
`
`transcribed and certified by Cappy Hallock, RPR, CRR, CLR, Certified Shorthand
`
`Reporter,
`
`licensed in the District of Columbia, of Gregorylidwards LLC, and
`
`delivered to me on April 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.
`
`22.
`
`Exhibit 1034 hereto is a true and correct copy of
`
`International
`
`Publication No. W0 99/ 13398, filed on june 14, 1995 by Peterson, Harold L. and
`
`Williams, james B., and published on March 18, 1999, which I downloaded on April
`
`21, 2015 from the European Patent Office’s Espacenet search page to which all
`
`parties have access. 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.
`
`23.
`
`Exhibit 1035 hereto is a true and correct cop}t of United States Patent
`
`No. 5,953,005 to James C. Liu, 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.
`
`Page 00008
`
`
`Page 00008
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,033,458
`
`24.
`
`Exhibit 1036 hereto is a true and correct copy of an article by jim Taylor
`
`entitled “DVD—Video: 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 / Ilililli/ MultimediaX 1 999 /july / DVD-Videopdf 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.
`
`25.
`
`Exhibit 1037 hereto is an excerpt of a true and correct copy of the
`
`Transcript of Trial, Afternoon Session, February 16, 2015, filed in Smarflarfa LLC, et-
`
`af. 2). Apple Ina, Civil Action No. 6:13~CV—447 before the District Court of the .lEastern
`
`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.
`
`26.
`
`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.
`
`27.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed this 6th day of May, 2015, at East Palo Alto, CA.
`
`AMUQNQJ ~l
`Michaetiaf " "
`
`Page 00009
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`Page 00009
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