`
`Covered Business Method Patent Review
`
`United States Patent No. 8,118,221
`
`Attorney Docket No.:
`104677-5008-823
`
`Customer No. 28120
`
`Petitioner: Apple Inc.
`
`Inventor: Racz et al.
`
`United States Patent No.: 8,118,221
`Fortnerly Application No.: 12/ 943,872
`Issue Date: February 21, 2012
`Filing Date: November 10, 2010
`Former Group Art Unit: 2887
`Former Examiner: Thien M. Le
`
`35?’-/2'“.-if’?!/_7’lt§ilf‘.IfI
`
`I*'or: Data Storage and Access Systems
`
`lVLr'.\1L STOP PATENT BO.»:'\RD
`
`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. 8,118,221
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`I, Michael P. Duffey, make
`
`the
`
`following Declaration pursuant
`
`to
`
`28 u.s.c.§1740:
`
`1.
`
`I
`
`am a Litigation
`
`Paralegal
`
`Specialist
`
`at
`
`the
`
`law firm of
`
`Ropes & Gray ] J11’.
`
`2.
`
`I provide this Declaration in connection with the above-identified
`
`Covered Business Method Patent Review roceedin r that is bein re uested at the
`P
`8
`
`United States Patent and Trademark Office by Apple Inc. under 35 U.S.C. § 321, 37
`
`Apple Exhibit 1022
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`Page 00001
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`Page 00001
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`Apple Exhibit 1022
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`
`
`Coveted Business Method Patent Review
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`United States Patent No. 8,118,221
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`C.F.R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
`
`on my personal knowledge.
`
`3.
`
`lixhibit 1001 hereto is a true and correct copy of United States Patent
`
`No. 8,118,221 to Patrick Racz and I-lermen-ard I--Iulst, which I downloaded on
`
`January 31, 2014 from the United States Patent and Trademark Office (“USl_3‘TO”)
`
`Patent Application Information Retrieval (“1?.a‘\I13{”) website and which is a record of
`
`the USPTO 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
`
`Arnended Complaint
`
`for Patent Infringement
`
`(“Amended Complaint”),
`
`filed in
`
`fmargflarb LLC,
`
`ez‘ al v. Appie Im‘., at 521., 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 (“l3.-'-\Cli.R”) 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 infonnation. 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.
`
`Page 00002
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`Page 00002
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`
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`Covered Business Method Patent Review
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`United States Patent No. 8,118,221
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`5.
`
`Exhibit 1003 hereto is a true and correct copy of the tile history for
`
`United States Patent No. 8,061,598 to Patrick Racz and Hermon-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 par1:ies 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.
`
`6.
`
`Exhibit 1004 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,336,772 to Patrick Racz and I-ierrnen-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 pages numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`7.
`
`Exhibit 1005 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 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 numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`8.
`
`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
`
`Page 00003
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`
`Page 00003
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`
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`Covered Business Method Patent Review
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`United States Patent No. 8,118,221
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`USPTO 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.
`
`9.
`
`Exhibit 1007 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
`
`and which is a record of the USPTO 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.
`
`10.
`
`Exhibit 1008 hereto is a true and correct copy of United States Patent
`
`No. 7,334,720 to I-lermen—a.td I-iulst and Patrick Sander 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 pages
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`11.
`
`Exhibit 1009 hereto is a true and correct copy of United States Patent
`
`No. 7,942,317 to Patrick Racy. and I-Iermen—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 pages
`
`Page 00004
`
`
`Page 00004
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,118,221
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`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`12.
`
`Exhibit 1011 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,118,221 to Patrick Racz and 1-Iermen-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 pages numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`13.
`
`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 pages numbers on all pages have been
`
`added to the bottom of this document but no other alterations have been made.
`
`14.
`
`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, Miehalene M.
`
`Casey, Richard j. Goldstein, Michael G. Lamrning, 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 PAIR website and which is a record of the
`
`USP'I'O to which all parties have access. An exhibit label on the first page and pages
`
`Page 00005
`
`
`Page 00005
`
`
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,118,221
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`15.
`
`Exhibit 1014 hereto is a true and correct copy of United States Patent
`
`No. 5,629,980 to Mark Stefik and I\/[ichalene M. Casey, which I downloaded on
`
`I-*'eb.rua.r_j; 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
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`16.
`
`Exhibit 1015 hereto is a true and correct copy of United States Patent
`
`No. 5,915,019 to Karl L. Ginter, Victor I-I. Shear, Francis Spahn, and David M. Van
`
`Wie, 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 pages numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`17.
`
`Exhibit 1016 hereto is a true and correct copy of European Patent
`
`Application El’ 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 ljlspacenet 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 alte.rations have been made.
`
`Page 00006
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`Page 00006
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`
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`Covered Business Method Patent Review
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`United States Patent No. 8,118,221
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`18.
`
`Exhibit 1017 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 liebruarjg 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 pages numbers on all pages have been added to the
`
`bottom of this document but no other alterations have been made.
`
`19.
`
`Exhibit 1018 hereto is a true and correct copy of the Japanese Patent
`
`Application Publication No. I-I11-164058 filed on November 26, 1997 by Hitachi
`
`Electron Service Co., l;td., 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 MultiLing Corporation. 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.
`
`20.
`
`Exhibit 1023 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 Off1ce’s lrlspacenet search page to which all
`
`parties have access. An exhibit label on the first page and pages numbers on all pages
`
`Page 00007
`
`
`Page 00007
`
`
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`have been added to the bottom of this document but no other alterations have been
`
`Covered Business Method Patent Review
`
`United States Patent No. 8,118,221
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`made.
`
`21..
`
`lixhibit 1024 hereto is a true and correct copy of United States Patent
`
`No. 8,033,458 to Hermen—ard I-lulst and Patrick Racz, which I downloaded on
`
`January 31, 2014 from the USPTO IJAIR website and which is a record of the
`
`USPTO 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.
`
`22.
`
`Exhibit 1025 hereto is a true and correct copy of United States Patent
`
`No. 8,061,598 to Patrick Racz and Herr-nen—ard Huist, 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 pages
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`23.
`
`Exhibit 1026 hereto is a true and correct copy of United States Patent
`
`No. 8,336,772 to Patrick Racz and I-Iermen—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 pages
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`Page 00008
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`Page 00008
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`
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`Covered Business Method Patent Review
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`United States "Patent No. 8,118,221
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`24.
`
`Exhibit 1027 hereto is a true and correct copy of the file history for
`
`United States Patent No. 7,334,720 to I-Iermen~ard I-Iulst and Patrick Sander 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 pages numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`25.
`
`Exhibit 1028 hereto is a true and correct copy of the file history for
`
`United States Patent No. 7,942,317 to Patrick Racz and Hermen—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 pages numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`26.
`
`Exhibit 1029 hereto is a true and correct copy of the file history for
`
`United States Patent No. 8,033,458 to I-Iennen—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 pages numbers on all pages have been added to the bottom of this
`
`document but no other alterations have been made.
`
`27.
`
`l-ixhibit 1035 hereto is a true and correct copy of United States Patent
`
`No. 5,953,005 to James C. Liu, which 1 downloaded on April 21, 2015 from the
`
`Page 00009
`
`
`Page 00009
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`
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`Covered Business Method Patent Review
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`United States Patent No. 8,118,221
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`USPTO PAIR website and which is a record of the USPTO to which all parties have
`
`access. An exhib_it 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.
`
`28.
`
`Exhibit 1037 hereto is a true and correct copy of the transcript of the
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`April 8th 8: 9th, 2015 Deposition ofjonathan Katz, Ph.D., taken in connection with
`
`the above identified Covered Business Method Patent Review proceeding, which was
`
`transcribed and certified by Cappy Hallocla, RPR, CRR, CLR, Certified Shorthand
`
`Reporter,
`
`licensed in the District of Columbia, of Gregoryfidwards LLC, and
`
`delivered to me on April 14, 2015. 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
`
`alterations have been made.
`
`29.
`
`Exhibit 1038 hereto is a true and correct copy of an article by jim Taylor
`
`entitled “DVD—Video: Multimedia for the Masses”, published ]uly—September 1999 by
`
`The lnstitute of Electrical and Electronics Engineers, Inc., which I downloaded from
`
`http: X /ivizlab. sfu.cafaryafl3apers/Multimedia/ 1999/July/DVD~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.
`
`30.
`
`Exhibit 1040 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
`
`10
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`Page 00010
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`Page 00010
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`Covered Business Method Patent Review
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`United States "Patent No. 8,118,221
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`and
`
`Electronics
`
`Engineeits,
`
`Inc,
`
`which
`
`"I
`
`downloaded
`
`from
`
`http: / Xivizlab. sfu.ca/ arya/ Papers /IEEE X’1'ransactMi\/I/ CD /Dr-Yl‘A / 007481 75.'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.
`
`31.
`
`Exhibit 1041 hereto is a true and correct copy of United States Patent
`
`No. 5,761,485 to Daniel lj. 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.
`
`32.
`
`Exhibit 1042 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.
`
`33.
`
`Exhibit 1043 hereto is an excerpt of a true and correct copy of the
`
`Transcript of Trial, Afternoon Session, February 16, 2015, filed in Smargffarb LLC, e2‘
`
`62!. 9../’~1ppZe 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.
`
`11
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`Page 00011
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`Page 00011
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`Covered Business Method Paterlt Review
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`United States Patent No. 8,118,221
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`34.
`
`I have been informed that willfully false statements are punishable by
`
`fine or ixnptisomnent, 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.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`irh
`day of May, 2015, at East Palo Alto, CA.
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`Executed this
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`ux/\‘-Jw/«Q bfig
`
`Michael P. Duffey
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`12
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`Page 00012
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`Page 00012