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`Covered Business Method Patent Review
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`United States Patent No. 8,061,598
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`Attorney Docket No;
`104677—5008—829
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`Customer No. 28120
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`Petitioner: Apple Inc.
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`"Inventor: Racz et al.
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`United States Patent No; 8,061,598
`Formerly Application No.: 13 / 01 2,541
`Issue Date: November 22, 2011
`
`Filing Date: January 24, 2011
`Fonner Group Art Unit: 2887
`Former Examiner: Thien M. Le
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`V._//":E.§Jl§i{§I<§)!§I{._.//".~
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`For: Data Storage and Access Systems
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`l\»1A.1L STOP P;"\TF,N’1‘ 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 22313-1450
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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. 8,061,598
`PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
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`3
`I Michael
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`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.
`
`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 & Gray l.,l..P.
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`2.
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`I provide this "Declaration in connection with the above—identified
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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.
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`321, 37
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`Apple Exhibit 1021
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`Page 00001
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`Page 00001
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`Apple Exhibit 1021
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`Covered Business Method Patent Review
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`United States Patent No. 8,061,598
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`C.l'+".R. § 42.304. Unless otherwise stated, the facts stated in this Declaration are based
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`on my personal knowledge.
`
`3.
`
`Exhibit 1001 hereto is a true and correct copy of United States Patent
`
`No. 8,061,598 to Patrick Racz and Hermen-ard I-lulst, which I downloaded on
`
`January 31, 2014 from the United States Patent and Trademark Office (“USPTO”)
`
`Patent Application Information Retrieval (“l3‘AlR”) website and which is a record of
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`the USPTO 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.
`
`Exhibit 1002 hereto is
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`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”),
`
`filed in
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`fmargflax/9 LLC, et af. y. Appk Inc, 6? ai, Civil Action No. 6:13-cv—4-47, before the
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`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
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`the PAC.l1‘.R filing inforrnation. An exhibit label on the first page and pages 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. 8,061,598
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`5.
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`Exhibit 1006 hereto is a true and correct copy of United States Patent
`
`No. 4,999,806 to lired Chernow and Randy Peterson, which I downloaded on
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`February 3, 2014 from the USPTO l’.»*\lR 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
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`6.
`
`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
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`USPIO 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
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`added to the bottom of this document but no other alterations have been made.
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`7.
`
`Exhibit 1008 hereto is a true and correct copy of United States Patent
`
`No. 4,878,245 to Graham C. Bradley, Alton O. Stretten,_l0hr1 P. Stretten, and Rex B.
`
`W/entzel, which I downloaded on February 3, 2014 from the USPTO l3.i'\.lR website
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`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
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`this document but no other alterations have been made.
`
`8.
`
`Exhibit 1009 hereto is a true and correct copy of United States Patent
`
`No. 7,334,720 to I-lern‘1er1—ard I-Iulst and Patrick Sander Racz, which I downloaded on
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`January 31, 2014 from the USPTO PAIR website and which is a record of the
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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. 8,061,598
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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‘. 1010 hereto is a true and correct copy of United States Patent
`
`No. 7,942,317 to Patrick Racz and Ilermen-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 pages
`
`numbers on all pages have been added to the bottom of this document but no other
`
`alterations have been made.
`
`10.
`
`Exhibit 1011 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
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`USPTO 1-‘AIR 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 1012 hereto is a true and correct copy of United States Patent
`
`No. 5,530,235 to Mark Stefik, Daniel G. Bobrow, Stuart K. Card, Michalene M.
`
`Casey, Richard]. Goldstein, Michael G. Lamming, Joek D. Mackinlay, Roy Want,
`
`George C}. Robertson, Mark D. Weiser, and Daniel M. Russell, which I downloaded
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`on February 24, 2014 from the USPTO P‘.A'_[R 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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`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. 8,061,598
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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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`12.
`
`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 pages
`
`numbers on all pages have been added to the bottom of this document but no other
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`alterations have been made.
`
`13.
`
`Exhibit 1014 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
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`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
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`document but no other alterations have been made.
`
`14.
`
`Exhibit 1015 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 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
`
`the bottom of this document but no other alterations have been made.
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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. 8,061,598
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`15.
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`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
`
`liluropean 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.
`
`16.
`
`Exhibit 1017 hereto is a true and correct copy of the Japanese Patent
`
`Application Publication No. H11464058 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 European Patent Off1ce’s Espacenet 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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`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.
`
`17.
`
`Exhibit 1020 hereto is a true and correct copy of United States Patent
`
`No. 8,033,458 to Hermen-ard I--Iulst and "Patrick Racz, which I downloaded on
`
`January 31, 2014 from the US'P'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 pages
`
`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. 8,061,598
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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.
`
`18.
`
`Exhibit 1028 hereto is a true and correct copy of United States Patent
`
`No. 5,970,479 to Patrick Racz and I—Iermen—ard Hulst, which I downloaded on April
`
`29, 2015 from the USPTO PAIR website and which is a record of the USPTO to
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`which all parties have access. An exhibit label on the first page and page numbers on
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`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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`19.
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`Exhibit 1030 hereto is a true and correct copy of the transcript of the
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`April 8th 8: 9th, 2015 Deposition of Jonathan 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 Shorthanel
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`Reporter,
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`licensed in the District of Columbia, of Gregorylidwards 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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`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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`20.
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`Exhibit 1031 hereto is a true and correct copy of an article byjim Taylor
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`entitled “DVI-)—Video: Multimedia for the Masses”, publishedjuly-September 1999 by
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`The "Institute of Electrical and Electronics Engineers, Inc, which I downloaded from
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`http: X X ivizlab.sfu.ea / arya/ Papers / IEEE XMultimedia / 1999/july/DV/D—Video.pdf on
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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. 8,061,598
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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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`21.
`
`Exhibit 1032 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
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`added to the bottom of this document but no other alterations have been made.
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`22.
`
`Exhibit 1033 hereto is a true and correct copy of an article by Rakesh
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`i\/1ohan,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
`
`and
`
`Electronics
`
`Engineers,
`
`Inc.,
`
`which
`
`1
`
`downloaded
`
`from
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`http: / /ivizlab.sfu.ca / aryaXPapers /IEEE /TransactMM/ CD / DATA / 007481 75.PDF
`
`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.
`
`23.
`
`lixhibit 1035 hereto is a true and correct copy of United States Patent
`
`No. 5,761,485 to Daniel
`
`l\/lunyan, 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
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`Page 00008
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`Covered Business l\-tlethod Patent Review
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`United States Patent No. 8,061,598
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`24.
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`Exhibit 1036 hereto is a true and correct copy of International
`
`Publication No. W/'() 99/13398, filed on September 11, 1998 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 Espacenet search page to which all
`
`parties have access.
`
`r'\n 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 1037 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
`
`access. An exhibit label on the first page and page ntunbers 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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`26.
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`Exhibit 1038 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 Smarflarb LLC, at
`
`al 3’. /lppie Imz, Civil Action No. 6:13—cv—4-47 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
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`added to the bottom of this document but no other alterations have been made.
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`27.
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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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`Page 00009
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`Page 00009
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`Covered Business Method Patent Review
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`United States Patent No. 8,061,598
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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, I could and would testify competently.
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`28.
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`I declare under penalty of perjury that the foregoing is true and correct.
`..§\rs
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`Executed this _<§__ day of May, 2015, at East Palo Alto, CA.
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`Michael l3‘. Duf-fey
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`10
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`Page 00010
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