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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`Attorney Docket No.:
`1046"/7—5008—831
`Customer No. 28120
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`Petitioner: Apple Inc.
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`§
`Inventor: Racz et a1.
`§
`United States Patent No.: 7,942,317
`liorrnerly Application No.: 12/ 014,558 §
`Issue Date: May 17, 2011
`§
`Filing Date: January 15, 2008
`§
`l*‘om1er Group Art Unit: 2887
`Former Examiner: Thien M. Le
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`§
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`For: Data Storage and Access Systems
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`MAIL STOP PATENT BOARD
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
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`Post Office Box 1450
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`Alexandria, Virginia 223134450
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`DECLARATION OF MICHAEL P. DUFFEY IN SUPPORT OF PETITION
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`FOR COVERED BUSINESS METHOD PATENT REVIEW OF
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`UNITED STATES PATENT NO. 7,942,317
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`I, Michael P. Duffey, make
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`the
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`following Declaration pursuant
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`to
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`28 U.S.C. § 1746:
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`1.
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`I
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`am a Litigation
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`Paralegal Specialist
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`at
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`the
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`law firm of
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`Ropes 8: Gray ILP.
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`2.
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`I provide this Declaration in connection with the above~identifiecl
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`Covered Business Method Patent Review proceeding that is being requested at the
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`United States Patent and Trademark Office by Apple Inc. under 35 U.S.C. § 321, 37
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`Apple Exhibit 1018
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`Page 00001
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`Page 00001
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`Apple Exhibit 1018
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`(3.1-*‘.R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`on my personal knowledge.
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`3.
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`Exhibit 1001 hereto is a true and correct copy of United States Patent
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`No. 7,942,317 to Patrick Racz and I-.Iermen—ard I-Iulst, which I downloaded on
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`january 31, 2014 from the United States Patent and Trademarl-; Office (“USPTO”)
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`Patent A.pp1.ica1:ion Information Retrieval (“PAIR”) website and which is a record of
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`the USIJTO to which all parties have access. An exhibit label on the first page and
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`pages numbers on all pages have been added to the bottom of this document but no
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`other alterations have been made.
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`4.
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`Exhibit 1002 hereto is a true and correct copy of Plaintiffs’ First
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`Amended Complaint
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`for Patent Infringement
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`(“Amended Complaint”),
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`filed in
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`5"mary‘.&zrf3 LLC, er a2 av. Apple Inc, at 521., Civil Action No. 6:13-cv—447, before the
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`District Court of the Eastern District of Texas, which I downloaded on February 24,
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`2014 from the Public Access to Court Electronic Records (“PACF.R.”) website and is
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`a record of the aforementioned District Court (Dkt. No. 72) to which all parties have
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`access. The Amended Complaint contains markings at the top of each page indicating
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`the PACELR filing information. An exhibit label on the first page and page numbers
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`on all pages have been added to the bottom of this document but no other alterations
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`have been made.
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`Page 00002
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`Page 00002
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`lflxhibit 1004 hereto is a true and correct copy of United States Patent
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`.—-
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`:>.
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`No. 4,999,806 to Fred Chernow and Randy
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`Peterson, which I downloaded on
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`February 3, 2014 from the USPTO PAIR website and which is a record of the
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`USPTO to which all parties have access. An exhibit label on the first page and page
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`numbers on all pages have been added to the bottom of this document but no other
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`alterations have been made.
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`6.
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`Exhibit 1005 hereto is a true and correct copy of United States Patent
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`No. 5,675,734 to Arthur R. Hair, which I downloaded on February 3, 2014 from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. An exhibit label on the first page and page numbers on all pages have been
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`added to the bottom of this document but no other alterations have been made.
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`7.
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`Exhibit 1007 hereto is a true and correct copy of the file history for
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`United States Patent No. 7,942,317 to Patrick Racz and I-lcrrnen—ard I-Iulst, which I
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`downloaded on January 29, 2014 from the USPTO '1-‘AIR website and which is a
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`record of the USPTO to which all parties have access. An exhibit label on the first
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`page and page numbers on all pages have been added to the bottom of this document
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`but no other alterations have been made.
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`8.
`
`Exhibit 1009 hereto is a true and correct copy of United States Patent
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`No. 5,103,392 to Ryoichi Mori, which I downloaded on March 10, 2014 from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`Page 00003
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`Page 00003
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`access. An exhibit label on the first page and pages numbers on all pages have been
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`added to the bottom of this document but no other alterations have been made.
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`9.
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`Exhibit 101.0 hereto is a true and correct copy of United States Patent
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`No. 5,530,235 to Mark J. Stefik, Daniel G. Bobrow, Stuart K. Card, Michalene M.
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`Casey, Richard ]. Goldstein, Michael G. Lamming, jock D.
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`l\«'lackinlay, Roy Want,
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`George G. Robertson, Mark D. \Weiser:, and Daniel M. Russell, which I downloaded
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`on February 24, 2014 from the USPTO PAIR website and which is a record of the
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`USPTO to which all parties have access. An exhibit label on the first page and pages
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`numbers on all pages have been added to the bottom of this document but no other
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`alterations have been made.
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`1.0.
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`Exhibit 1011 hereto is a true and correct copy of United States Patent
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`No. 5,629,980 to Mark _I. Stefik and Michalene M. Casey, which I downloaded on
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`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 pages
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`numbers on all pages have been added to the bottom of this document but no other
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`alterations have been made.
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`11.
`
`Exhibit 1012 hereto is a true and correct copy of United States Patent
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`No. 5,915,019 to Karl L. C-inter, Victor I-I. Shear, Francis _]. Spahn, and David M. Van
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`Wie, which I downloaded on l"ebruary 24, 2014 from the USPTO IJAIR website and
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`which is a record of the USPTO to which all parties have access. An exhibit label on
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`Page 00004
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`Page 00004
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`Covered Business Method "Patent Review
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`United States Patent No. 7,942,317
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`the first page and pages numbers on all pages have been added to the bottom of this
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`document but no other alterations have been made.
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`12.
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`Exhibit 1013 hereto is a true and correct copy of European Patent
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`Application El’ 0 809 221 A2, filed on May 6, 1997 by Sun Microsystems, "Inc, and
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`published on November 26, 1997, which I downloaded on February 24, 2014 from
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`the European Patent Office’s Espacenet search page to which all parties have access.
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`An exhibit label on the first page and pages numbers on all pages have been added to
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`the bottom of this document but no other alterations have been made.
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`13.
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`Exhibit 1014 hereto is a true and correct copy of the lnternational
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`Publication No. WO 99/43136, filed on January 11, 1999 by Ericsson,
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`lnc., and
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`published on August 26, 1999, which I downloaded on February 24, 2014 from the
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`European Patent Off1ce’s Espacenet search page to which all parties have access. An
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`exhibit label on the first page and pages numbers on all pages have been added to the
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`bottom of this document but no other alterations have been made.
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`14.
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`Exhibit 1015 hereto is a true and correct copy of the Japanese Patent
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`Application Publication No.
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`I-111-164058 filed on November 26, 1997 by Hitachi
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`Electron Service Co, Ltd, and published on june 18, 1999, which I downloaded on
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`March 11, 2014 from the liuropean Patent Office’s Hspacenet search page to which
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`all parties have access, and which is accompanied by a true and correct copy of a
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`translation of the text of that document and a declaration of accuracy regarding that
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`Page 00005
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`Page 00005
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`translation provided by Multiliing Corporation. An exhibit label on the first page and
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`pages numbers on all pages have been added to the bottom of this document but no
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`other alterations have been made.
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`15.
`
`Exhibit 1023 hereto is a true and correct copy of United States Patent
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`No. 5,903,721 to Timothy Sixtus, which I downloaded on April 21, 2015 from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. An exhibit label on the first page and page numbers on all pages have been
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`added to the bottom of this document but no other alterations have been made.
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`16.
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`Exhibit 1025 hereto is a true and correct copy of United States Patent
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`No. 5,953,005 to James C. Liu, which I downloaded on April 21, 2015 from the
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
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`access. An exhibit label on the first page and page numbers on all pages have been
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`added to the bottom of this document but no other alterations have been made.
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`17.
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`Exhibit 1028 hereto is a true and correct copy of the transcript of the
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`April 8th & 9th, 2015 Deposition ofjonathan Katz, Ph.D., taken in connection with
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`the above identified Covered Business Method Patent Review proceeding, which was
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`transcribed and certified by Cappy Hallock, RPR, CRR, CLR, Certified Shorthand
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`Reporter,
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`licensed in the District of Columbia, of GregoryEdwards LLC, and
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`delivered to me on April 14, 2015. An exhibit label on the first page and pages
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`Page 00006
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`Page 00006
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`numbers on all pages have been added to the bottom of this document but no other
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`alterations have been made.
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`18.
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`Exhibit 1029 hereto is a true and correct copy of an article by Jim Taylor
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`entitled “DVD-Video: Multimedia for the Masses”, publishedjuly-September 1999 by
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`The Institute of Electrical and lgllectronics Engineers, Inc., which I downloaded from
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`http:X/ivizlab.sfu.CaXarya/Papers/IEEE/Multimediaf1999/July/DVD-Video.pdf on
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`April 29, 2015. Page numbers and an exhibit label have been added to the bottom of
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`this document but no other alterations have been made.
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`19.
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`lflxhibit 1031 hereto is a true and correct copy of an article by Rakcsh
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`Mohan, john R. Smith and Chung-Sheng Li entitled “Adapting Multimedia Internet
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`Content for Universal Access”, published March 1999 by The Institute of Electrical
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`and
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`lilectronics
`
`Engineers,
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`lnc.,
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`which
`
`I
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`downloaded
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`from
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`http: / /ivizlab.sfu.ca/ arya/Papers / IF.l3E/Transactl\/IM/ CD / "DATA / O0?48175.PDl'*'
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`on April 21, 2015. Page numbers and an exhibit label have been added to the bottom
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`of this document but no other alterations have been made.
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`20.
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`Exhibit 1032 hereto is a true and correct copy of United States Patent
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`No. 5,761,485 to Daniel ll. Munyan, which I downloaded on April 21, 2015 from the
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`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
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`added to the bottom of this document but no other alterations have been made.
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`Page 00007
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`Page 00007
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`21.
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`Exhibit 1033 hereto is
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`a
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`true and correct copy of International
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`Publication No. W0 99/ 13398, filed on june 14, 1995 by Peterson, Harold L. and
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`Williams, James B., and published on March 18, 1999, which 1 downloaded on April
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`21, 2015 from the European Patent Off1ce’s Espacenet search page to which all
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`parties have access. An exhibit label on the first page and pages numbers on all pages
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`have been added to the bottom of this document but no other alterations have been
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`made.
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`22.
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`Iixhibit 1034 hereto is an excerpt of a true and correct copy of the
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`Transcript of Trial, Afternoon Session, February 16, 2015, filed in Smarf[a.rb LLC, at
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`al. v. Apple Inc, Civil Action No. 6:13—cv—447 before the District Court of the I-_*',astern
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`District of Texas, which I received on February 16, 2015 from Shea Sloan, Court
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`Reporter. An exhibit label on the first page and page numbers on all pages have been
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`added to the bottom of this document but no other alteratioris have been made.
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`23.
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`I have been informed that willfully false statements are punishable by
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`fine or imprisonment, or both.
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`I make this declaration of my own personal
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`knowledge, and all statements are true.
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`If called to testify as to the truth of the
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`matters stated herein, 1 could and would testify competently.
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`Page 00008
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`Page 00008
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`Covered Business Method Patent Review
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`United States Patent No. 7,942,317
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`I declare under penalty of perjury that the foregoing is true and correct.
`1-in
`Executed thisfl day of May, 2015, at East "P2110 Alto, CA.
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`
`
`Michael P. Duffey
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`9
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`Page 00009
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