Apple Inc.v.SightSound Technologies LLC

Patent Trial and Appeal Board

Oct 7, 2014

07586391 (P.T.A.B. Oct. 7, 2014)

Trials@uspto.gov Paper 105
571-272-7822 Entered: October 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,

v.

SIGHTSOUND TECHNOLOGIES, LLC,
Patent Owner.
____________

Case CBM2013-00020
Patent 5,191,573

Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

ARBES, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
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I. BACKGROUND
Petitioner Apple Inc. (“Apple”) filed a Corrected Petition (Paper 6,
“Pet.”) seeking covered business method patent review of claims 1, 2, 4, and
5 of U.S. Patent No. 5,191,573 (“the ’573 patent”) pursuant to 35 U.S.C.
§§ 321–29. On October 8, 2013, we instituted a covered business method
patent review of claims 1, 2, 4, and 5 on two grounds of unpatentability
(Paper 14, “Dec. on Inst.”). Patent Owner SightSound Technologies, LLC
(“SightSound”) filed a Patent Owner Response (Paper 41, “PO Resp.”),
Apple filed a Reply (Paper 52, “Reply”), and SightSound filed a Sur-Reply
(Paper 104, “Sur-Reply”). See Paper 100 (authorizing a sur-reply).
Apple filed a Motion to Exclude (Paper 71, “Pet. Mot. to Exclude”)
certain testimony from one of SightSound’s declarants, John Snell.
SightSound filed an Opposition (Paper 79, “PO Exclude Opp.”), and Apple
filed a Reply (Paper 88, “Pet. Exclude Reply”). SightSound filed a Motion
to Exclude (Paper 68, “PO Mot. to Exclude”) certain testimony and evidence
submitted by Apple. Apple filed an Opposition (Paper 80, “Pet. Exclude
Opp.”), and SightSound filed a Reply (Paper 86, “PO Exclude Reply”).
SightSound also filed a Motion for Observation (Paper 76, “Obs.”) on
certain cross-examination testimony of Apple’s declarants, and Apple filed a
Response (Paper 81, “Obs. Resp.”).
The parties moved to seal certain materials in this proceeding, and we
conditionally granted the motions and entered the parties’ proposed
protective order, which was a copy of the Board’s default protective order.
Paper 92. The materials later were unsealed upon agreement of the parties.
Paper 100 at 3–4. Apple subsequently filed an additional Motion to Seal
(Paper 102, “Mot. to Seal”), which is addressed herein.
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A combined oral hearing in this proceeding and related Case
CBM2013-00023 was held on May 6, 2014, and a transcript of the hearing is
included in the record (Paper 101, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Apple has shown by a
preponderance of the evidence that claims 1, 2, 4, and 5 of the ’573 patent
are unpatentable.

A. The ’573 Patent
The ’573 patent1 relates to a “method for the electronic sales and
distribution of digital audio or video signals.” Ex. 4101, col. 1, ll. 9–14.2
The ’573 patent describes how three types of media used for storing music at

1 The ’573 patent issued on March 2, 1993, from U.S. Patent Application
No. 07/586,391 (“the ’391 application”), filed September 18, 1990, which is
a file wrapper continuation of U.S. Patent Application No. 07/206,497, filed
June 13, 1988. The ’573 patent has expired. U.S. Patent No. 5,966,440
(“the ’440 patent”) is a continuation-in-part of the ’573 patent, and is the
subject of related Case CBM2013-00023.

2 Apple’s original Exhibits 1101–1146 were not labeled properly. Paper 5 at
2. Apple filed corrected exhibits, but used the same numbers as the
originally filed exhibits. Paper 7. To avoid confusion, we renumbered the
originally filed copies as Exhibits 4101–4146. Rather than referring to the
replacement copies numbered Exhibits 1101–1146, however, the parties in
their subsequent papers continued to refer to the originally filed copies
numbered Exhibits 4101–4146. Apple also filed additional exhibits in the
4000 series. To ensure that the record is clear, we exercise our discretion
and waive the labelling requirements of 37 C.F.R. § 42.63(d), and refer to
Apple’s original exhibits filed as Exhibits 4101–4274. See 37 C.F.R.
§ 42.5(b). Accordingly, Exhibits 1101–1146 should no longer be cited in
this proceeding.
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the time of the patent—records, tapes, and compact discs (“CDs”)—did not
allow for music to be transferred easily and had various problems, such as
low capacity and susceptibility to damage during handling. Id. at col. 1,
l. 17–col. 2, l. 9. The ’573 patent discloses storing “Digital Audio Music”
(i.e., music encoded into binary code) on a computer hard disk and selling
and distributing such music electronically. Id. at col. 1, ll. 53–56; col. 2,
ll. 10–35.
Figure 1 of the ’573 patent is reproduced below.

As shown in Figure 1 above, an agent authorized to sell and distribute
“Digital Audio Music” has control unit 20 (control panel 20a, control
integrated circuit 20b, and sales random access memory chip 20c) and hard
disk 10, which stores the music to be distributed. Id. at col. 3, ll. 44–67. On
the other side of the Figure, a user has control unit 50 (control panel 50a,
control integrated circuit 50b, incoming random access memory chip 50c,
and playback random access memory chip 50d), hard disk 60, video display
unit 70, and speakers 80. Id. at col. 3, l. 67–col. 4, l. 10. The agent and user
are connected via telephone lines 30. Id. at col. 3, ll. 63–67. According to
the ’573 patent, control units 20 and 50 are “designed specifically to meet
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the teachings of this invention,” but all other components shown in Figure 1
were “already commercially available.” Id. at col. 4, ll. 16–23.
The ’573 patent describes a process by which a user transfers money
“via a telecommunications line” to purchase music from the agent and the
music is transferred electronically “via a telecommunications line” to the
user and stored on the user’s hard disk. Id. at col. 5, ll. 29–45. Control
integrated circuits 20b and 50b regulate the electronic transfer. Id. at col. 4,
ll. 29–47. The agent’s sales random access memory chip 20c stores music
temporarily so that it can be transferred to the user. Id. The user’s incoming
random access memory chip 50c stores music temporarily before storage in
hard disk 60, and playback random access memory chip 50d stores music
temporarily so that it can be played. Id. In addition to “Digital Audio
Music,” the ’573 patent contemplates “Digital Video” being sold and
distributed electronically via the disclosed methods. Id. at col. 5, l. 67–col.
6, l. 2.

B. Exemplary Claim
Claim 1 of the ’573 patent recites:
1. A method for transmitting a desired digital audio
signal stored on a first memory of a first party to a second
memory of a second party comprising the steps of:
transferring money electronically via a
telecommunication line to the first party, at a location remote
from the second memory and controlling use of the first
memory, from the second party financially distinct from the
first party, said second party controlling use and in possession
of the second memory;
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connecting electronically via a telecommunications line
the first memory with the second memory such that the desired
digital audio signal can pass therebetween;
transmitting the desired digital audio signal from the first
memory with a transmitter in control and possession of the first
party to a receiver having the second memory at a location
determined by the second party, said receiver in possession and
control of the second party; and
storing the digital signal in the second memory.

C. Prior Art
Apple relies on the following materials, which Apple contends are
evidence of a publicly disclosed prior art system referred to by Apple as the
“CompuSonics system”:
1. Declaration of David M. Schwartz, founder of
CompuSonics Corp. and CompuSonics Video Corp. (Ex. 4133);
2. Joint Telerecording Push: CompuSonics, AT&T Link,
BILLBOARD, Oct. 5, 1985 (Ex. 4106);
3. David Needle, From the News Desk: Audio/Digital
Interface for the IBM PC?, INFOWORLD, June 4, 1984, at 9
(Ex. 4107);
4. Larry Israelite, Home Computing: Scenarios for
Success, BILLBOARD, Dec. 15, 1984 (Ex. 4108);
5. Image titled “CompuSonics Digital Audio
Telecommunications System” (Ex. 4112);
6. Letter from David M. Schwartz to CompuSonics
shareholders, July 16, 1984 (Ex. 4113);
7. Hyun Heinz Sohn, A High Speed Telecommunications
Interface for Digital Audio Transmission and Reception,
presented at the 76th Audio Engineering Society (AES)
Convention, Oct. 8-11, 1984 (Ex. 4114);
8. Letter from David M. Schwartz to CompuSonics
shareholders, Oct. 10, 1985 (Ex. 4115);
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9. CompuSonics Video Application Notes: CSX Digital
Signal Processing (1986) (Ex. 4116);
10. Image titled “CompuSonics Digital Audio Software
Production/Distribution” (Ex. 4117);
11. U.S. Patent No. 4,682,248, issued July 21, 1987
(Ex. 4118);
12. Brian Dumaine, The Search for the Digital Recorder,
FORTUNE, Nov. 12, 1984 (Ex. 4119);
13. Video excerpts of a lecture given at Stanford
University by David M. Schwartz and John P. Stautner, Feb.
18, 1987 (Ex. 4120);
14. Photograph of CompuSonics equipment (Ex. 4131);
and
15. New Telerecording Method for Audio, BROADCAST
MANAGEMENT/ENGINEERING, Oct. 1985, at 14-15 (Ex. 4140).

D. Pending Grounds of Unpatentability
The instant covered business method patent review involves the
following grounds of unpatentability:
Reference(s) Basis Claims
CompuSonics system 35 U.S.C. § 102(a) 1, 2, 4, and 5
CompuSonics
publications (Exhibits
4106–4108, 4112–4119,
and 4140)
35 U.S.C. § 103(a) 1, 2, 4, and 5

II. ANALYSIS
A. Claim Interpretation
The Board interprets claims of unexpired patents using the “broadest
reasonable construction in light of the specification of the patent in which
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[they] appear[].” 37 C.F.R. § 42.300(b); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012) (“Trial Practice
Guide”). For claims of an expired patent, however, the Board’s claim
interpretation analysis is similar to that of a district court. See In re Rambus
Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Claim terms are given their plain and
ordinary meaning as would be understood by a person of ordinary skill in the
art at the time of the invention and in the context of the entire patent
disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc). “There are only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when
the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Computer Entm’t Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Prosecution disclaimer or
disavowal must be clear and unmistakable. Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003). We apply this standard to
the claims of the expired ’573 patent.

1. Previously Interpreted Terms
In the Decision on Institution, we interpreted various claim terms of
the ’573 patent as follows:
Term(s) Interpretation
“first party” a first entity, whether a corporation
or a real person
“second party” a second entity, whether a
corporation or a real person
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Term(s) Interpretation
“telecommunication line”
(claim 1)
“telecommunications line”
(claims 1 and 4)
an electronic medium for
communicating between computers
“electronically” through the flow of electrons
“connecting electronically” connecting through devices or
systems which depend on the flow
of electrons
“transferring money
electronically”
providing payment electronically
(i.e., through devices or systems
which depend on the flow of
electrons)
“digital audio signal” digital representation of sound
waves
See Dec. on Inst. 8–9. Neither party disputes these interpretations in the
Patent Owner Response, Reply, or Sur-Reply. We incorporate our previous
analysis for purposes of this decision. See id.

2. “Second Memory” (Claims 1 and 4)
SightSound argues that one additional term requires interpretation:
“second memory.” PO Resp. 24–27. Independent claims 1 and 4 recite
transferring money electronically from a “second party controlling use and
in possession of [a] second memory” to a first party having a first memory,
connecting the first memory with the second memory, transmitting the
second party’s desired digital signal, and “storing the digital signal in the
second memory.” In its Patent Owner Response, SightSound proposes two
interpretations for “second memory.” First, SightSound states that the “only
reasonable interpretation of ‘second memory’ . . . is that the claims require a
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hard disk for storage, not a removable medium.”3 Id. at 26–27 (citing
Ex. 2153 ¶ 28). Second, SightSound argues that “second memory” means
“a non-volatile form of memory that is not a tape, CD or other similar
removable media.” Id. at 13. Apple disagrees with both assertions, arguing
that “second memory” should not be interpreted as requiring a hard disk or
non-removable medium. Reply 2–3 (citing Ex. 4262 ¶¶ 4–13).

a. Ordinary Meaning
The parties do not dispute that the ordinary and customary meaning of
“memory” does not require a hard disk or that the device be non-removable.
One dictionary, for example, defines “memory” as “storage space in a
computer system or medium that is capable of retaining data or
instructions.” S.M.H. COLLIN, ED., DICTIONARY OF COMPUTING (2004)
(Ex. 3001); see also WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY
1409 (1986) (Ex. 3002) (defining “memory” as “a component in an
electronic computing machine (as a computer) in which information (as data
or program instructions) may be inserted and stored and from which it may
be extracted when wanted” or “a device external to a computer for the
insertion, storage, and extraction of information”). Thus, the ordinary
meaning of “second memory” is a second storage space in a computer
system or medium that is capable of retaining data or instructions.

3 SightSound argued at the hearing that “second memory” should be limited
further to require an “internal hard drive” and exclude “external hard
drives.” Tr. 42:3–16. Because we are not persuaded that “second memory”
requires a hard disk, for the reasons explained below, we need not determine
whether such a device must be internal rather than external.
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b. Specification of the ’573 Patent
SightSound contends that the ordinary meaning of “second memory”
is disclaimed expressly in the Specification of the ’573 patent. PO Resp.
25–28. SightSound argues that (1) the Specification describes various
disadvantages of records, tapes, and CDs, such as potential damage during
handling, limited capacity, and limited playback capability, and “[f]loppy
disks have the same limitations” according to SightSound, (2) the purpose of
the ’573 patent system was to overcome those disadvantages, and (3) every
embodiment in the Specification overcomes the identified disadvantages in
the prior art. Id. (citing Ex. 4101, col. 1, l. 16–col. 2, l. 9). In particular,
SightSound points to the statement in the Specification that Digital Audio
Music is “stored onto one piece of hardware, a hard disk, thus eliminating
the need to unnecessarily handle records, tapes, or compact discs on a
regular basis.” Ex. 4101, col. 2, ll. 31–35.
We are not persuaded that the Specification limits the recited “second
memory” to a hard disk. The Specification describes the use of a hard disk
in the context of describing a preferred embodiment, not defining the
“second memory” recited in the claims. See, e.g., id. at col. 3, ll. 42–57
(describing hard disk 60 of the user in a section titled “Description of the
Preferred Embodiment”); col. 5, ll. 61–67 (stating that the description and
drawings “shall be interpreted as illustrative, and not in a limiting sense”).
We do not see anything in the Specification indicating that the disclosed
method requires a hard disk, as opposed to merely treating it as a preferred
type of memory.
Nor are we persuaded that the Specification limits “second memory”
to only non-removable devices. The Specification does not use the term
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“removable” or state that any memory must be incapable of being removed.
Indeed, hard disks, which are the preferred embodiment disclosed in the
Specification, were available at the time of the ’573 patent as removable and
non-removable devices, as SightSound’s declarant, Mr. Snell,
acknowledges. See Ex. 4165 at 107:20–108:2. Further, the Specification’s
description of disadvantages of certain types of removable storage media
(i.e., records, tapes, and CDs) does not mean necessarily that the term
“second memory” excludes such devices. See Thorner, 669 F.3d at 1366
(“Mere criticism of a particular embodiment encompassed in the plain
meaning of a claim term is not sufficient to rise to the level of clear
disavowal.”). The Specification does not indicate that the identified
disadvantages extend to all removable media or that the disadvantages occur
specifically because the devices are removable. See Ex. 4101, col. 1,
l. 17–col. 2, l. 9. To the contrary, some of the identified disadvantages, like
limited capacity and playback capability, have nothing to do with whether
the device can be removed. See id. at col. 1, ll. 21–38. Thus, we do not see
any basis in the Specification for limiting “second memory” to only
non-removable devices.
We also note that the primary case relied upon by SightSound in
support of its proposed interpretation, In re Abbott Diabetes Care Inc., 696
F.3d 1142 (Fed. Cir. 2012), is distinguishable. In Abbott, the Federal Circuit
interpreted the claim term “electrochemical sensor” as excluding cables and
wires, noting that the “claims themselves suggest[ed]” that the sensor does
not include such devices. Id. at 1149. The challenged claims of the ’573
patent, by contrast, do not have anything suggesting that the “second
memory” must be non-removable. Also, the specification of the patent at
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issue in Abbott specifically referenced “cables and wires,” whereas the ’573
patent Specification does not discuss the removability of any memory. See
id. at 1150. Accordingly, we are not persuaded that the Specification shows
a clear disclaimer of the ordinary meaning of “second memory.”

c. Prosecution History
SightSound also argues that the prosecution history of an ex parte
reexamination of the ’573 patent, Reexamination Control No. 90/007,402
(“the ’402 reexamination”), shows that “second memory” means
“non-volatile storage that is not a tape, CD, or removable media.” PO Resp.
11–13. During the reexamination, the patentee amended claims 1 and 4 to
recite “storing the digital signal in a non-volatile storage portion of the
second memory, wherein the non-volatile storage portion is not a tape or a
CD.” Ex. 4103 at 716–17 (added language in emphasis). The ’573 patent
then expired, removing the pending amendments from consideration. Id. at
1504–05. The examiner entered a new rejection of the original claims based
on certain prior art that disclosed storing a digital audio signal on a tape or
CD. Id. at 1506–22. In response, the patentee argued that (1) “cassette tapes
and CDs are not ‘second memories’ according to the claims and
specification,” and (2) tapes, records, and CDs are “described in the
specification as containing drawbacks in light of their removable nature and
their physical distribution (when compared with a hard disk acting as an
internal, non-volatile storage device), and it is those drawbacks that the
patented invention seeks to overcome.” Id. at 1531–32.
The examiner then allowed the claims, stating that “[i]n view of [the]
patent expiration, the specification, and the repeated patent owner statements
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and actions [during the reexamination], the examiner interprets the ordinary
and customary meaning of ‘second memories’ as not including cassette
tapes, CDs and the like.” Id. at 1587. Thus, the examiner viewed the claims
as having “essentially the same scope” as the amended claims reciting a
second memory that is “not a cassette tape or a CD.” Id. (emphasis omitted).
SightSound reads the examiner’s statement of “and the like” as applying to
all removable media, and asserts that the examiner’s interpretation should
apply in this proceeding as well. PO Resp. 12–13.
We are not persuaded that the prosecution history demonstrates a clear
and unmistakable disclaimer of all removable media. Again, like the
portions of the Specification discussed above, the cited statements from the
prosecution history pertain to specific hardware devices—records, tapes, and
CDs—and are not tied explicitly to all removable media. Further, the prior
art the patentee was attempting to overcome in the reexamination used a tape
or CD for storage. See Ex. 4103 at 1506–22. The fact that tapes and CDs
have the common attribute of being removable (in addition to many other
attributes) does not mean that the patentee was disclaiming all removable
devices. At most, the patentee’s statements may be read as disclaiming
records, tapes, and CDs, but may not be read as disclaiming all removable
media as SightSound contends.
In addition, certain statements in the prosecution history contradict
SightSound’s proposed interpretation. During the original prosecution of the
’391 application, which issued as the ’573 patent, the named inventor,
Arthur R. Hair, stated that “[a]ny suitable recording apparatus controlled and
in possession of the second party can be used to record the incoming digital
signals.” Ex. 4102 at 140. SightSound characterizes the word “suitable” as
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indicative of Mr. Hair describing non-removable devices, but we see nothing
in the surrounding discussion indicating that he meant “suitable” to mean
non-removable. See Sur-Reply 8 n.6. In addition, the original claims of the
’391 application expressly recited a “hard disk,” but the language was
removed from the claims in favor of the broader term “second memory.”
See Ex. 4102 at 18 (reciting a “hard disk of the user”); see also Ex. 4103 at
717–18 (new claims submitted in the ’402 reexamination reciting “second
party hard disk”). This indicates a deliberate choice to use the broader
“second memory” language instead of a narrower term, such as “hard disk.”
After reviewing the full prosecution history of the ’573 patent and ’402
reexamination, we do not see clear evidence that “second memory” excludes
removable devices.

d. Conclusion
For the reasons explained above, we are not persuaded that the full
scope of “second memory” was disclaimed, either in the Specification or
during prosecution. Thus, we interpret the term according to its ordinary
meaning to mean a second storage space in a computer system or medium
that is capable of retaining data or instructions.

B. Overview of the CompuSonics Prior Art
In its Petition, Apple alleges that a computer system, referred to by
Apple as the “CompuSonics system,” was developed by CompuSonics Corp.
and CompuSonics Video Corp. (collectively, “CompuSonics”) in the 1980s.
Pet. 33–35. Apple provides as supporting evidence a declaration from the
founder of CompuSonics, David M. Schwartz (Ex. 4133), as well as various
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printed publications (Exs. 4106–4108, 4112–4119, 4140), a photograph
(Ex. 4131), and a videotaped lecture from February 18, 1987 (Ex. 4120),
allegedly describing the CompuSonics system. In response, SightSound
provides a declaration from another former CompuSonics employee, John
P. Stautner (Ex. 2121). Before turning to the substance of Apple’s
allegations of unpatentability, we provide a brief summary of the evidence
submitted by the parties.

1. Mr. Schwartz’s Testimony and the CompuSonics Publications
Mr. Schwartz, founder of CompuSonics and declarant for Apple,
testifies that the CompuSonics system comprised “digital recorder/players,
which CompuSonics referred to as DSPs [Digital Signal Processors].”
Ex. 4133 ¶ 4. According to Mr. Schwartz, a DSP could “download digital
data from a remote source to a local disk” (a process CompuSonics called
“[t]elerecording”) and play back the stored digital data. Id. Mr. Schwartz
provides the following photograph of “a CompuSonics digital
recorder/player” as Exhibit 4131. Ex. 4133 ¶ 18.

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Exhibit 4131 is a photograph depicting a “DSP-1000” device with a floppy
disk that can be inserted in the device.
Mr. Schwartz also provides two diagrams allegedly showing the
CompuSonics system. The first diagram is Exhibit 4112 shown below.

Exhibit 4112 depicts the transmission of digital audio from one “DSP-2002”
to another “DSP-2002” over an AT&T telephone line or T1 line.
Mr. Schwartz testifies that he created the diagram, which “illustrat[es]
CompuSonics’[s] telerecording technology, dated 1985,” and presented the
diagram to the public at various events. Ex. 4133 ¶ 9.
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The second diagram is Exhibit 4117 shown below.

Exhibit 4117 depicts “Dial-Up Electronic Record Store” user access to a
music performance via a “Local Phone Company” and “AT&T Accunet.”
Mr. Schwartz testifies that he created the diagram and showed it to the
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public at various events, including the videotaped lecture he gave with
Mr. Stautner in 1987 (Ex. 4120). Ex. 4133 ¶ 14.
Mr. Schwartz describes the CompuSonics publications and attests that
they are “public disclosure[s] of features of the CompuSonics system.” Id.
¶¶ 5–14, 16, 17, 19. For example, various publications describe
downloading music electronically over a telephone line and storing it locally
on the user’s device. A June 1984 article in InfoWorld magazine discloses:
Among the new products to be previewed at the
Consumer Electronics Show this month will be a digital / audio
disk player that uses a new 3.3-megabyte floppy drive to store
music in digital form. The player will cost $1,000. The
company behind the product, CompuSonic[s], says it also has
developed a software interface for its new CompuSonic[s]
DS-1000 system that will allow the user to route music through
the IBM PC. The user will supposedly be able to edit the music
by using the computer’s keyboard as a mixer. The firm is also
looking at potential electronic distribution of music whereby
you would be able to download music onto your PC in the same
manner as other digital information. The CompuSonic[s]
system has a built-in communications device that receives
information via an existing phone line.
Ex. 4107 at 1 (emphasis added). A June 1984 letter to CompuSonics
shareholders states:
Testing of the Telerecording system with CMI Labs
began last week. . . . A successful test of the digital
transmission of high fidelity music over telephone lines will be
followed by a joint press conference of CompuSonics, CMI
Labs and AT&T, heralding the dawn of a new era in the music
industry in the not too distant future [when] consumers will be
able to purchase digital recordings of their favorite artists
directly from the production studio’s dial-up data base and
record them on blank SuperFloppies in a DSP-1000.
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Ex. 4113 at 1 (emphases added); see also Ex. 4106 at 3 (“record the
transmission onto a five-and-a-quarter-inch ‘super-floppy’ disk”).
Various publications also describe work that CompuSonics did with
AT&T in the 1980s, including one demonstration of transmitting digital
audio between DSPs in Chicago and New York. An October 1985 article in
Billboard magazine discloses that the two companies entered into an
agreement to jointly promote AT&T’s “Accunet Switched 56 data
transmission service and CompuSonics[’s] digital telerecording system.”
Ex. 4106 at 3. The article states:
At a recent press demonstration hosted by AT&T at its
headquarters here, CompuSonics made use of AT&T’s
land-based telephone data transmission system to digitally
transmit and receive music between Chicago and New York.
. . .
David Schwartz, president of CompuSonics, is a strong
proponent of the “electronic record store” concept, an idea that
has been bandied about for some time, but which Schwartz says
is now poised to “become a reality.” While that is open to
debate, such a system, as seen by Schwartz and CompuSonics,
would utilize the firm’s telerecording process and hard disk
equipment to allow music software dealers to receive an album
master via a digital transmission from the record company.
The retailers would then be able, in turn, to digitally
transmit the music to consumers who would use credit cards to
charge their purchases over the phone lines. The final step
would involve the CompuSonics consumer digital audio
recorder/player (which has yet to see production), which would
record the transmission onto a five-and-a-quarter-inch
“super-floppy” disk.
Id.; see also Ex. 4114 at 2 (describing the use of the AT&T Accunet service
for transmitting digital audio signals at 56,000 bits per second); Ex. 4140.
An October 1985 letter to CompuSonics shareholders describes a “series of
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successful telerecording tests and demonstrations which culminated in
August with New York City to Chicago and back digital audio
communications between two CompuSonics DSP-2002s with AT&T
ACCUNET Switched 56 service providing the channel.” Ex. 4115 at 1.
Finally, the CompuSonics publications discuss using the telerecording
process to sell music to consumers. One article, for instance, contemplates
retailers being able “to digitally transmit the music to consumers who would
use credit cards to charge their purchases over the phone lines.” Ex. 4106 at
3. Another discloses that:
Compusonics is talking to AT&T about setting up a service that
would enable record companies to sell direct to consumers over
the telephone. Symphonies, ordered by credit card, could travel
digitally over phone lines into homes to be recorded by
Compusonics’[s] machine. Movies, which can also be recorded
digitally, might be sent the same way.
Ex. 4119 at 2. Another publication states that:
AT&T’s commitment to telerecording may hasten the arrival of
that day, in the not too distant future, when the technology will
filter down to the consumer level, allowing all-electronic
purchases, transfers and digital recording of high fidelity audio
from any music dealer’s DSP-2000 to the DSP-1000 in your
living room.
Ex. 4115 at 1.

2. Mr. Stautner’s Testimony
Mr. Stautner, declarant for SightSound, testifies that he began
working for CompuSonics as its second employee in 1983 or 1984, became
President of CompuSonics Video Corp. in 1985, and remained with the
company until CompuSonics went out of business in 1989 or 1990.
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Ex. 2121 ¶¶ 3–4. Mr. Stautner describes two “series” of DSPs created by
CompuSonics, both of which could record audio in digital form. Id.
¶¶ 6–14. The “2000 series,” which included the DSP-2002 and DSP-2004,
was meant for professional recording studios and used a hard disk for storing
digital audio. Id. ¶¶ 6–7. The “1000 series” was meant for consumers and
“used a floppy disk storage system as well as cartridge floppy storage and
cartridge optical disk storage.” Id. ¶¶ 8–9. Later DSP-1000s used a
“write-once optical disk drive.” Id. ¶ 10. Mr. Stautner states that
CompuSonics “developed and tested software that enabled DSP’s to transmit
digital audio files locally and over distances,” including the software used in
the 1985 demonstration discussed above. Id. ¶¶ 12–14. However,
“[t]elerecording capability never existed on any DSP that was sold or
commercially available by CompuSonics” because of various “challenges
that stood in the way of the adoption of telerecording,” such as the limited
availability and large expense of high-capacity digital connections. Id. ¶ 15.
Mr. Stautner further testifies that “CompuSonics never developed a system
or method for selling digital audio or video signals over telecommunications
lines, nor did CompuSonics ever develop or write software that would
enable DSP’s to be used to transfer money electronically.” Id. ¶ 21.
According to Mr. Stautner, telerecording, and the idea of an “Electronic
Record Store,” were merely aspirational, and not actually put into practice
by CompuSonics. Id. ¶¶ 15–16.

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C. Anticipation Ground
Apple argues that claims 1, 2, 4, and 5 are anticipated by the
CompuSonics system under 35 U.S.C. § 102(a),4 which specifies that a
person shall be entitled to a patent unless “the invention was known . . . by
others in this country . . . before the invention thereof by the applicant for
patent.” See Pet. 33–34; Reply 5. We have reviewed the parties’
submissions and evidence discussed in those papers, and are not persuaded,
by a preponderance of the evidence, that claims 1, 2, 4, and 5 are anticipated.
The basis for Apple’s anticipation argument is its assertion that there
existed a single “CompuSonics system” that was known publicly prior to the
’573 patent. See Pet. 33–34. Apple asserts that “CompuSonics publicly
demonstrated its recorder/players, patented its underlying technology, and
promoted the use of its recorder/player system for facilitating the sale and
distribution of digital audio and video over telephone, T1, and cable lines.”
Id. Apple refers collectively to the “technology and concepts embodied in
CompuSonics’[s] publicly disclosed system,” as evidenced by
Mr. Schwartz’s testimony and the various CompuSonics materials submitted
in this proceeding, as the “CompuSonics system.” Id.
Although the materials contain very similar disclosures, we are not
persuaded that they disclose a single, publicly known system that anticipates
the challenged claims. Anticipation requires that every limitation of the
claim at issue be disclosed in a prior art disclosure and “arranged or
combined in the same way as recited in the claim.” Net MoneyIN, Inc. v.

4 Section 18(a)(1)(C) of the Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (“AIA”), provides that a covered business
method patent review may be based on “prior art that is described by section
102(a)” as in effect before March 16, 2013.
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VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[I]t is not enough
that the prior art reference . . . includes multiple, distinct teachings that the
artisan might somehow combine to achieve the claimed invention.” Id.; see
also Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1351–52 (Fed. Cir.
2008) (concluding that a set of eleven specifications pertaining to the same
telecommunication standard did not constitute a “single prior art reference”).
Apple does not argue that a single prior art reference discloses all
limitations of the challenged claims, instead relying on different materials as
allegedly disclosing different limitations. See Pet. 43–55. The cited
materials undoubtedly are similar, as they all describe technology developed
by CompuSonics and pertain generally to the recording of digital audio or
video. There are differences, however. For example, the materials describe
different models of DSPs with slightly different features and capabilities.
Certain materials discuss the recording of digital audio on DSP-1000 series
devices with floppy disks, e.g., Ex. 4113, whereas others disclose storage on
DSP-2000 series devices with a hard disk, e.g., Ex. 4119. Given that the
prior art teachings and suggestions are found in references describing a
family of device models, as opposed to a single device model, we find that
one skilled in the art would not have at once envisaged the claimed
arrangement of known components in a manner consistent with anticipation
under 35 U.S.C. § 102(a). Apple has not demonstrated, by a preponderance
of the evidence, that claims 1, 2, 4, and 5 of the ’573 patent are anticipated
by the CompuSonics system.

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D. Obviousness Ground
In the Decision on Institution, we found that Apple had shown, more
likely than not, that the printed publications it submitted regarding
CompuSonics (Exs. 4106–4108, 4112–4119, 4140) teach all of the
limitations of claims 1, 2, 4, and 5 of the ’573 patent. Dec. on Inst. 27–28.
We also determined that Apple’s analysis and supporting evidence
demonstrated, more likely than not, that the claims would have been obvious
to a person of ordinary skill in the art based on the CompuSonics
publications. Id. Upon review of all of the parties’ papers and supporting
evidence discussed in those papers, we are persuaded, by a preponderance of
the evidence, that claims 1, 2, 4, and 5 are unpatentable over the
CompuSonics publications under 35 U.S.C. § 103(a).

1. The Board Has Jurisdiction to Review Whether the Claims
Would Have Been Obvious
As an initial matter, SightSound argues that we exceeded the scope of
our jurisdiction in instituting a covered business method patent review of the
challenged claims based on obviousness over the CompuSonics publications.
PO Resp. 56–59. SightSound contends that Apple did not assert explicitly a
ground of obviousness based on the CompuSonics publications in its
Petition and, therefore, the Decision on Institution was improper under
37 C.F.R. § 42.208(c). Id. SightSound further contends that the Decision
violated its due process rights because it does not know what arguments
Apple would make regarding obviousness in reply to the Patent Owner
Response, and SightSound would not have “an opportunity to respond to
[Apple’s] arguments directly in writing.” Id. Apple responds that the
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Decision was proper because Apple’s Petition supported the ground of
obviousness and because Dr. John P. J. Kelly’s supporting declaration
explained his view that the claims are anticipated and would have been
obvious. Reply 8; see Ex. 4132 ¶ 47, App. C.
SightSound’s arguments are not persuasive. “Post-grant review shall
not be instituted for a ground of unpatentability, unless the Board decides
that the petition supporting the ground would, if unrebutted, demonstrate
that it is more likely than not that at least one of the claims challenged in the
petition is unpatentable.” 37 C.F.R. § 42.208(c) (emphasis added). As
stated in our Decision on Institution, Apple’s Petition supported a ground of
obviousness based on the CompuSonics publications. Dec. on Inst. 27–28.
Apple explained in detail in its Petition how the publications teach every
limitation of the claims, and how the publications describe similar features
and relate to each other. See Pet. 33–55. The allegations in the Petition
were supported by the declarations of Mr. Schwartz, who testified that the
CompuSonics publications were disclosed publicly, and Dr. Kelly, who
testified regarding how the CompuSonics publications teach every limitation
of the challenged claims. See Ex. 4132 ¶¶ 32–40, 47, App. C; Ex. 4133
¶¶ 5–14, 16, 17, 19. SightSound did not rebut Apple’s allegations in its
Preliminary Response, arguing only that the ’573 patent is not a covered
business method patent. See Dec. on Inst. 23–28. We are not persuaded that
the Decision on Institution was improper under 37 C.F.R. § 42.208(c).
SightSound further does not contend that we lacked jurisdiction to
institute a covered business method patent review on the ground of
anticipation. See PO Resp. 56–59. Once a covered business method patent
review is instituted, the Board’s mandate is to “issue a final written decision
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with respect to the patentability of any patent claim challenged by the
petitioner.” 35 U.S.C. § 328(a). We do so based on the instituted grounds
and full record before us. Thus, we proceed to determine the patentability of
the challenged claims based on the existing record, including a
determination of whether the claims would have been obvious based on the
CompuSonics publications.
Finally, we are not persuaded that instituting a covered business
method patent review on the ground of obviousness violated SightSound’s
due process rights. The Petition supported the ground of obviousness, as
explained above, and the Decision on Institution explained the basis for that
determination. See Dec. on Inst. 23–28. Further, SightSound was permitted
to file a Sur-Reply and new declaration testimony in response to Apple’s
Reply, and availed itself of that opportunity. See Paper 100 at 2–4;
Sur-Reply.5

2. Level of Ordinary Skill in the Art
The parties’ declarants apply similar definitions for the level of
ordinary skill in the art at the time of the ’573 patent (June 13, 1988, when
parent U.S. Patent Application No. 07/206,497 was filed), and neither party
contends that the minor differences between those definitions impact the
obviousness analysis. Apple’s declarant, Dr. Kelly, testifies that a person of

5 SightSound also argues that “[f]or the reasons previously stated, none of
the claims is a ‘covered business method,’” citing pages 23–39 of its
Preliminary Response. PO Resp. 10 n.2. Doing so was improper, and we do
not consider arguments SightSound attempts to incorporate by reference
from its previous filing. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not
be incorporated by reference from one document into another document.”).
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ordinary skill would have had “a bachelor’s degree or equivalent in
computer engineering or computer science and approximately two years of
experience in developing software and hardware that transmit and receive
files over a network.” Ex. 4132 ¶ 11. SightSound’s declarant, Mr. Snell,
testifies that a person of ordinary skill would have had “an undergraduate
degree in electrical engineering or computer science and/or approximately
2–4 years of industry experience in the design of systems and methods for
storing and transmitting digital information.” Ex. 2153 ¶ 30. The district
court in SightSound Techs., LLC v. Apple Inc., Case No. 2:11-cv-01292-
DWA (W.D. Pa.), applied the same level of ordinary skill as Mr. Snell.
See Ex. 4134 at 12 n.12; Ex. 4135.
Based on our review of the ’573 patent, the types of problems and
solutions described in the ’573 patent and cited prior art, and the testimony
of the parties’ declarants, we agree with Dr. Kelly’s assessment and
conclude that a person of ordinary skill in the art would have had a
bachelor’s degree or equivalent in computer engineering or computer
science and approximately two years of experience in developing software
and hardware that transmit and receive files over a network. See, e.g.,
Ex. 4101, col. 1, l. 9–col. 2, l. 9 (describing alleged problems in the prior art,
and stating that the ’573 patent describes “a method [by] which a user may
purchase and receive digital audio or video signal[s] from any location
which the user has access to a telecommunications line”); col. 4, ll. 16–22
(stating that certain components, such as hard disks 10 and 60, telephone
lines 30, compact disc player 40, video display unit 70, and stereo speakers
80, were “already commercially available”); Ex. 4132 ¶¶ 2–7 (describing the
background of Dr. Kelly); Ex. 2153 ¶¶ 3–13 (describing the background of
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Mr. Snell). In particular, Dr. Kelly’s definition is appropriate because it
requires some level of specific experience with transmitting and receiving
data over a network, consistent with the recitation in the claims of
connecting electronically and transmitting data over a telecommunication
line.

3. The CompuSonics Publications Are Prior Art
We are persuaded that all of the CompuSonics publications qualify as
prior art under 35 U.S.C. § 102. Exhibits 4106–4108, 4113–4116, 4119, and
4140 are publicly available printed publications that are prior art under
35 U.S.C. §§ 102(a) and 102(b), and Exhibit 4118 is a patent that is prior art
under 35 U.S.C. § 102(a). See Ex. 4133 ¶¶ 6–8, 10–13, 16, 17, 19
(testimony of Mr. Schwartz regarding the public availability of the
publications). SightSound does not dispute that these documents qualify as
prior art.
SightSound argues that the two diagrams shown above, Exhibits 4112
and 4117, do not qualify as prior art printed publications because they only
were displayed for a few seconds in slide show format at trade shows.
PO Resp. 35–37; see Ex. 2121 ¶¶ 23–24 (testimony from Mr. Stautner that
he believes the diagrams were not provided to the public, but shown briefly
during a slide show). We disagree. Mr. Schwartz testifies that the diagrams
were “shown to the public via presentation at businesses, conferences,
lectures, and industry events,” such as the 1987 lecture with Mr. Stautner.
See Ex. 4133 ¶¶ 9, 14; Ex. 2124 at 46:9–11. Mr. Schwartz further testifies
that he presented Exhibit 4112 at trade shows, including National
Association of Broadcasters trade shows and the Consumer Electronics
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Show. Ex. 2124 at 45:11–46:20. At those shows, a slide show would be
“running all the time” to accompany Mr. Schwartz’s “discussions with
people who visited the booth,” and the slide would be on the screen for 30
seconds at a time. Id. Similarly, Mr. Schwartz states that he displayed
Exhibit 4117 at trade shows and used it in pitches to various companies. Id.
at 64:19–68:8.
The determination of whether a document is a “printed publication”
under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and
circumstances surrounding its disclosure to members of the public. In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). To qualify, a document
must have been sufficiently accessible to the public interested in the art.
Kyocera, 545 F.3d at 1350–51 (a “reference is publicly accessible ‘upon a
satisfactory showing that such document has been disseminated or otherwise
made available to the extent that persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence, can locate it’”)
(citation omitted). The evidence of record indicates that the diagrams were
displayed, publicly and repeatedly, at trade shows, lectures, and similar
events, and that those events were of the type that would have been attended
by persons of ordinary skill in the art. The diagrams were displayed
multiple times at multiple events, unlike the situation where a slide is
displayed only one time at an oral presentation. See Klopfenstein, 380 F.3d
at 1349 n.4. Further, each diagram is a relatively simple display of
components on a single page, and there is no indication in the record that
attendees at the various events could not have copied the diagrams. See id.
at 1351 (“The more complex a display, the more difficult it will be for
members of the public to effectively capture its information. The simpler a
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display is, the more likely members of the public could learn it by rote or
take notes adequate enough for later reproduction.”). Apple has established
that Exhibits 4112 and 4117 qualify as prior art printed publications under
35 U.S.C. § 102(a).

4. Independent Claim 1
a. The CompuSonics Publications Teach Every Limitation of Claim 1
Apple explains in detail in its Petition how the CompuSonics
publications teach every limitation of claim 1, relying on the testimony of
Dr. Kelly in support. See Pet. 33–51; Ex. 4132 ¶¶ 17–40, App. C at 1–7.
For example, the two CompuSonics diagrams shown above depict an
arrangement of two DSPs connected via a telephone or T1
“telecommunication line,” and other publications describe how digital audio
could be downloaded from a “transmitter” of one user to a “receiver” of
another and stored locally on a floppy disk. See Pet. 43–51 (citing Exs.
4106–4108, 4112–4119, 4140); Ex. 4132, App. C at 5–7. Apple identifies as
a “first memory of a first party” a seller database of music, which Apple
contends is stored necessarily on a memory device, and identifies as a
“second memory of a second party” the floppy disk in the user’s device. See
id. at 44 (citing Exs. 4106, 4113); Ex. 4132, App. C at 1–3. Apple’s
analysis, supported by the testimony of Dr. Kelly, is persuasive.
In its Patent Owner Response, SightSound “does not dispute that the
components needed to practice the claims were available prior to 1988,”
when the parent application of the ’391 application, which issued as the ’573
patent, was filed. PO Resp. 31. Thus, there is no dispute that all of the
physical components recited in the claimed methods (i.e., first memory,
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second memory, telecommunication line, transmitter, receiver) were known
in the prior art. Rather, SightSound argues that the CompuSonics
publications fail to teach certain steps of the method of claim 1, as well as
the specific combination of steps recited in the claim.6 Id. at 22–35, 59–65.
First, SightSound argues that the CompuSonics publications do not
teach “storing the digital signal in the second memory” because they
describe storage on a floppy disk, not a hard disk. Id. at 24–30, 50–52.
SightSound’s argument is based on its proposed interpretation of “second
memory,” with which we disagree for the reasons explained above. See
supra Section II.A.2. We interpret the term to mean a second storage space
in a computer system or medium that is capable of retaining data or
instructions. Id. A floppy disk, as disclosed in the CompuSonics
publications, meets that definition. See Pet. 49–51; Ex. 4132, App. C at 7
(citing Exs. 4106, 4116, 4118, 4119); Ex. 4262 ¶¶ 4–13.

6 SightSound also argues that CompuSonics’s technology already was
considered by the Office during prosecution of the ’402 reexamination, and
that the 1985 demonstration was considered by the district court in denying a
motion for summary judgment of invalidity because the CompuSonics
system “‘was not configured to accept credit card information and transmit it
to the seller’s mainframe as a preliminary step to downloading the signals.’”
PO Resp. 13–14; see Ex. 4103 at 420–21, 424. The particular evidence and
arguments presented by Apple in this proceeding, however, were not
considered by the Office previously. Although some of the CompuSonics
publications were submitted during the ’402 reexamination, at least three
important disclosures—the two CompuSonics diagrams shown above (Exs.
4112, 4117) and the 1985 Billboard magazine article describing retailers
“digitally transmit[ting] the music to consumers who would use credit cards
to charge their purchases over the phone lines” (Ex. 4106 at 3)—were not.
See Ex. 4101 at 10–24; Reply 5 n.1. Nor is there any indication that the
CompuSonics publications, including those disclosing telephone payment,
ever were considered as a group.
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Second, SightSound argues that the CompuSonics publications do not
teach the step of “transferring money electronically via a telecommunication
line to the first party . . . from the second party financially distinct from the
first party,” as recited in claim 1. PO Resp. 6–7, 22–24, 33, 43–49, 62, 65.
SightSound asserts that no CompuSonics device ever was “programmed to
process payments,” relying on the testimony of Mr. Stautner. Id. at 6–7, 24,
33 (citing Ex. 2121 ¶¶ 20–21). For purposes of assessing whether the claim
would have been obvious based on the CompuSonics publications, however,
the issue is not whether CompuSonics created a product that transferred
money electronically, but rather what “the combined teachings of the
references would have suggested to those having ordinary skill in the art.”
See In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012).
We agree with Apple, and Dr. Kelly, that the CompuSonics
publications teach the “transferring money electronically” step of claim 1.
See Pet. 44–46; Ex. 4132, App. C at 3–5; Ex. 4262 ¶¶ 14–25. Exhibit 4106
describes retailers “digitally transmit[ing] . . . music to consumers who
would use credit cards to charge their purchases over the phone lines.”
Ex. 4106 at 3 (emphasis added). Exhibit 4119 discloses allowing “record
companies to sell direct to consumers over the telephone,” where
“[s]ymphonies, ordered by credit card, could travel digitally over phone
lines into homes to be recorded by Compusonics’[s] machine.” Ex. 4119 at
2 (emphasis added). Exhibit 4115 discloses “allowing all-electronic
purchases, transfers and digital recording of high fidelity audio from any
music dealer’s DSP-2000 to the DSP-1000 in your living room.” Ex. 4115
at 1 (emphasis added).
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SightSound does not dispute that the “transferring money
electronically” step encompasses a person charging a purchase over the
telephone. See Tr. 38:16–39:5 (acknowledging that the step could be
“a person picking up their phone, calling in a credit card number over the
phone”). Indeed, claim 3, which depends from claim 1, recites that “the
transferring step includes the steps of telephoning the first party” and
“providing a credit card number of the second party . . . so the second party
is charged money.” Further, during prosecution of the ’391 application, the
named inventor declared that “[o]ne skilled in the art would know that an
electronic sale inherently assumes a transferring of money by providing a
credit or debit card number (since this is the only way for electronic sales to
occur) coupled with a transferring of a service or product.” Ex. 4102 at 170.
The named inventor also acknowledged, during prosecution of U.S. Patent
Application No. 08/023,398 (a continuation of the ’573 patent), that
electronic sales include telephone purchases, and that such purchases were
well-known at the time:
One skilled in the art would know that an electronic sale
inherently assumes a transferring of money by providing an
account number or a credit or debit card number which then
allows for access to or a transferring of a service or product
through telecommunications lines.
One skilled in the art would know that an electronic sale
inherently assumes a charging of a fee to an account which then
allows for access to or a transferring of a product or service
through telecommunications lines.
The use of transferring money across telecommunication
connections, such as by telephoning over the phone lines the
agent who has a first party’s hard disk, or charging a fee to a
purchaser or “second party” preferably at a location remote
from a purchaser or “second party,” for obtaining data on the
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first party’s hard disk through telecommunications lines is well
known to one skilled in the art to be part of electronic sales.7
Ex. 4136 at 109–10; see also Ex. 4102 at 163 (citing the “well known
process of ‘providing a credit card number’ over a telephone line and
‘telephoning’ to make the connection”); Ex. 4165 at 59:13–61:22,
74:5–75:24 (SightSound’s declarant, Mr. Snell, acknowledging during his
deposition that telephone purchases were well-known). Thus, a person of
ordinary skill in the art would have understood the CompuSonics
publications that describe music purchases over the telephone (e.g., with a
credit card) to teach the “transferring money electronically” step of claim 1.
With respect to one of the CompuSonics publications, Exhibit 4119,
Mr. Snell contends that a person of ordinary skill in the art would have
understood the document’s reference to selling “over the telephone” to mean
“placing an order by telephone to be invoiced on a monthly bill,” and the
reference to symphonies “ordered by credit card” to mean that “a credit card
payment would be made in writing in advance of purchase, for instance by
writing down a code for a recording and a credit card number and mailing it
to the seller.” Ex. 2153 ¶ 55. We are not persuaded that a person of

7 SightSound argues that the statements made during prosecution are
irrelevant, citing our decision denying institution on Apple’s asserted ground
based on the Synth-Bank article. Sur-Reply 13 (citing Dec. on Inst. 30).
The Synth-Bank article, however, merely discloses an “on-line shopping
service” where users can “purchase” sound files, without describing how the
user provides payment. See Dec. on Inst. 29. By contrast, the CompuSonics
publications specifically describe a consumer making a credit card purchase
over the telephone. See, e.g., Ex. 4106 (consumers “would use credit cards
to charge their purchases over the phone lines”); Ex. 4119 (record
companies would “sell direct to consumers over the telephone,” with
symphonies “ordered by credit card”). The prosecution statements regarding
credit card purchases over the telephone, therefore, are relevant.
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ordinary skill in the art would have read the document in that manner, as the
publication does not discuss doing anything via mail and doing so would be
inconsistent with the full disclosure of the document. Exhibit 4119
discloses: “Compusonics is talking to AT&T about setting up a service that
would enable record companies to sell direct to consumers over the
telephone. Symphonies, ordered by credit card, could travel digitally over
phone lines into homes to be recorded by Compusonics’[s] machine.”
Ex. 4119 at 2 (emphasis added). Reading both sentences together, a skilled
artisan would have understood Exhibit 4119 to be referring to a consumer
telephoning a record company and providing a credit card number so that the
consumer could purchase music. See Ex. 4262 ¶¶ 18–19.
Finally, SightSound argues that the CompuSonics publications do not
teach the “transferring money electronically” step, because (1) CompuSonics
controlled the DSP on both ends of the communication, as shown in the
Exhibit 4112 diagram, and (2) “no DSP was ever configured to transmit
payment information.” PO Resp. 2, 6–7, 35, 48–50 (citing Ex. 2153 ¶ 48).
As explained above, the CompuSonics publications describe a consumer
purchasing music from a music seller (e.g., by charging a purchase over the
telephone), which amounts to the transfer of money electronically between
financially distinct parties. See Pet. 44–46; Ex. 4132, App. C at 3–5. We
interpret “first party” and “second party” to encompass both a corporation
and a real person. See supra Section II.A.1. The claims do not require that
either be any particular type of party (e.g., a consumer)—only that they be
“financially distinct.” See Reply 6. In addition, there is no requirement in
the claims that the device that stores the digital signal in a “second memory”
also be used to transmit payment information. See id. at 3–4; Ex. 4262 ¶ 25.
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Thus, we are persuaded that the CompuSonics publications teach
every limitation of claim 1.

b. A Person of Ordinary Skill in the Art Would Have Had Reason to
Combine the Teachings of the CompuSonics Publications
Having found that the CompuSonics publications teach all of the
limitations of claim 1, we turn to whether a person of ordinary skill in the art
would have had reason to combine the teachings of the references to achieve
the claimed method. We are guided by the Supreme Court’s decision in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). “Section 103(a) forbids
issuance of a patent when ‘the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.’” Id. at
405. “[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
Id. at 417 (citation omitted). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. . . . [A] court must
ask whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. A determination of
obviousness, though, requires identifying “‘some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.’”
Id. at 417–18 (citation omitted).
The evidence of record demonstrates that the CompuSonics
publications describe prior art elements operating according to their known
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functions and yielding predictable results. See supra II.B; Pet. 33–51;
Ex. 4132 ¶¶ 17–40, App. C at 1–7; PO Resp. 31 (acknowledging that “the
components needed to practice the claims were available prior to 1988”).
The disclosed DSPs would store digital signals and communicate digital
signals electronically over a telephone line in a known manner. A floppy
disk used by a DSP would function for its known purpose of storing digital
data. Allowing the user to telephone the music provider and provide a credit
card number for payment would have functioned just like other known
payment systems of the time. See Ex. 4132 ¶¶ 26–27; Ex. 4262 ¶¶ 14–25.
A person of ordinary skill in the art, having the educational background and
work experience described above, see supra Section II.D.2, would have
recognized that the predictable result of using these elements was a system
that allowed users to purchase and download music, as expressly
contemplated by the references themselves.
Importantly, SightSound admits that the CompuSonics publications
describe prior art elements working according to their established functions
in a predictable manner:
Despite the prior art elements working according to their
established functions and predictability, no ordinary skilled
artisan, and certainly not CompuSonics, saw the problem with
removable hardware units until the ’573 Patent specification
was published. CompuSonics taught the use of a hard disk for
an “electronic record store,” but specifically disclosed a floppy
disk for the consumer.
PO Resp. 64 (emphasis added). Mr. Snell similarly acknowledges “the prior
art elements working according to their established functions and
predictability.” Ex. 2153 ¶ 74. The fact that the disclosed elements would
operate in known ways to achieve predictable results supports a conclusion
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of obviousness. Additionally, based on the record presented, we do not see
sufficient reason why providing for the purchase of digital audio over the
telephone, and using CompuSonics DSPs to transmit digital audio and store
it on a floppy disk, would have achieved an unexpected result or would have
been uniquely challenging or otherwise beyond the level of skill of an
ordinarily skilled artisan. See KSR, 550 U.S. at 416, 421; Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007).
As to a particular reason why a person of ordinary skill in the art
would have combined the teachings of the CompuSonics publications, the
references expressly contemplate that it would be commercially desirable to
have a system that allowed users to buy music electronically. Exhibit 4119,
for instance, describes CompuSonics’s technology for storing digital audio
and video on a floppy disk or hard disk, and states that “future applications
could be dazzling,” noting the potential CompuSonics-AT&T “service that
would enable record companies to sell direct to consumers over the
telephone.” Ex. 4119 at 1–2. Exhibit 4116 states that “[d]igital music video
distribution offers customers two significant benefits: high fidelity digital
audio and video, and convenient purchasing via electronic distribution
directly to the home.” Ex. 4116 at 2. Other CompuSonics publications
include similar statements. See, e.g., Ex. 4113 at 1 (describing “a new era in
the music industry in the not too distant future [when] consumers will be
able to purchase digital recordings of their favorite artists directly from the
production studio’s dial-up data base and record them on blank
SuperFloppies in a DSP-1000”); Ex. 4115 at 1 (projecting that telerecording
“technology will filter down to the consumer level, allowing all-electronic
purchases, transfers and digital recording of high fidelity audio”); Ex. 4106
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at 3 (recounting Mr. Schwartz’s statement that the “‘electronic record store’
concept” is “poised to ‘become a reality’”); Ex. 4108 at 4 (“in the not-too-
distant future consumers will be able to buy music at home, over telephone
lines or through cable television hookups, and play it back through an audio
device resembling a microcomputer”); Ex. 4114 at 11 (contemplating “great
potential for expanding the music market through digital technology” where
“a large database of the latest music chart successes [could] exist only a
phone call away” and “[v]ideo music services which broadcast over cable
networks can simultaneously release [a] new album and have it ready for
immediate sale without first having filled the distribution pipeline”).
Thus, the references themselves demonstrate that a person of ordinary
skill in the art would have been led to create a system for users to purchase
and download music. See Brown & Williamson Tobacco Corp. v. Philip
Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000) (evidence of a motivation
to combine prior art references “may flow from the prior art references
themselves”).
SightSound makes two main arguments that the challenged claims
would not have been obvious. First, SightSound contends that the specific
combination of selling music (the “transferring money electronically” step)
and using a hard disk to store the music (the “storing the digital signal in the
second memory” step) would not have been obvious based on the
CompuSonics publications, which teach away from the use of a hard disk.
PO Resp. 24–25, 29, 59–65. Specifically, SightSound contends that
CompuSonics used floppy disks and optical disks, not hard disks, in the
DSP-1000 series devices meant for users, and did not recognize or address
the problems that the ’573 patent allegedly solved by using a hard disk. Id.
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at 28–29; see Sur-Reply 6–13. As explained above, however, the challenged
claims do not require the “second memory” to be a hard disk. See supra
Section II.A.2. Thus, SightSound’s purported distinctions based on the use
of a hard disk for storage are without merit.
Second, SightSound argues that the record does not show sufficiently
how or why the different CompuSonics publications would be combined by
a person of ordinary skill in the art. Sur-Reply 4–6. We disagree. Apple
explained in its Petition which publications teach which claim limitations,
and Dr. Kelly’s testimony supports that analysis. See Pet. 43–51; Ex. 4132,
App. C at 1–7. The references themselves also suggest combining their
teachings to create a system for allowing users to buy music electronically,
as explained above.
Further, as the Supreme Court held in KSR, to determine whether
there was an apparent reason to combine known elements in the manner
claimed, it often will be necessary to “look to interrelated teachings of
multiple patents,” as “in many cases a person of ordinary skill will be able to
fit the teachings of multiple patents together like pieces of a puzzle.” 550
U.S. at 418–20. “A person of ordinary skill is . . . a person of ordinary
creativity, not an automaton.” Id. at 421; see Randall Mfg. v. Rea, 733 F.3d
1355, 1362 (Fed. Cir. 2013) (holding that the Supreme Court in KSR
“[r]eject[ed] a blinkered focus on individual documents,” instead
“requir[ing] an analysis that reads the prior art in context, taking account of
‘demands known to the design community,’ ‘the background knowledge
possessed by a person having ordinary skill in the art,’ and ‘the inferences
and creative steps that a person of ordinary skill in the art would employ’”)
(quoting KSR, 550 U.S. at 418). Although we are not persuaded that the
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CompuSonics publications disclose a solitary, publicly known “system,” see
supra Section II.C, they certainly have interrelated teachings, as all of the
publications describe technology developed by the same company
(CompuSonics), use similar terminology, and pertain generally to the
recording of digital audio or video. Based on the evidence of record, we are
persuaded that a person of ordinary skill in the art would have considered the
publications collectively to achieve a system for selling music electronically,
as expressly contemplated by the references. See In re Hyon, 679 F.3d 1363,
1366 (Fed. Cir. 2012) (affirming an obviousness determination where two
“references both teach processes directed to making the same class of
products” and minor differences between the disclosures did not “negate the
motivation to combine”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1166 (Fed. Cir. 2006) (explaining that in an obviousness analysis, “the prior
art must be considered as a whole for what it teaches”).
Accordingly, we are persuaded that the CompuSonics publications
teach all of the limitations of claim 1, and that a person of ordinary skill in
the art would have had reason to combine those teachings to achieve the
method of claim 1.

c. Secondary Considerations of Non-Obviousness
As part of our obviousness analysis, we consider the evidence and
arguments submitted by SightSound regarding secondary considerations of
non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
In particular, SightSound argues that commercial success, copying, industry
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praise, and long-felt need demonstrate that the challenged claims would not
have been obvious to a person of ordinary skill in the art.8 PO Resp. 66–80.

i. Commercial Success
SightSound bases its commercial success argument on Apple’s iTunes
Music Store (“iTMS”), an “‘online music store that lets customers quickly
find, purchase and download the music they want for just 99 cents per song,
without subscription fees.’” PO Resp. 18 (citing Ex. 2137). SightSound
contends that the iTMS is “the most successful download music store of all
time,” embodies the methods recited in the challenged claims, and is
coextensive with the claims. Id. at 18–21, 68–77. Apple does not dispute
that the iTMS has been commercially successful; the only dispute is whether
SightSound has shown a nexus between the claimed methods and that
success, and if so, whether that showing has been rebutted. See Reply
10–14.
Evidence of commercial success “is only significant if there is a nexus
between the claimed invention and the commercial success.” Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To establish
a proper nexus between a claimed invention and the commercial success of a
product, a patent owner must offer “proof that the sales [of the allegedly
successful product] were a direct result of the unique characteristics of the
claimed invention—as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.” In re Huang, 100

8 The parties refer to the challenged claims collectively in their arguments
regarding secondary considerations, and we do the same. See PO Resp.
66–80; Reply 10–15; Sur-Reply 14–15.
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F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is
due to an unclaimed feature of the device,” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir.
2011) (requiring a determination of “whether the commercial success of the
embodying product resulted from the merits of the claimed invention as
opposed to the prior art or other extrinsic factors”). If a patent owner is able
to show a sufficient nexus, “the burden shifts to the challenger to prove that
the commercial success is instead due to other factors extraneous to the
patented invention, such as advertising or superior workmanship.” J.T.
Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.
Cir. 1997).
Further, if a product both “embodies the claimed features” and is
“coextensive” with the claim at issue, “a nexus is presumed and the burden
shifts to the party asserting obviousness to present evidence to rebut the
presumed nexus.” Brown & Williamson, 229 F.3d at 1130. When a product
is not “coextensive with the patented invention,” however, such as when
“the patented invention is only a component of a commercially successful
machine or process, . . . the patentee must show prima facie a legally
sufficient relationship between that which is patented and that which is
sold.” Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
1392–93 (Fed. Cir. 1988).
SightSound argues that the challenged claims “cover a method for a
customer to purchase and download digital audio and/or digital video signals
over the internet for future playback as selected by the end user,” which is
“coextensive with both digital downloads generally to non-removable media
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and sales of audio and video content from the ITMS.” PO Resp. 72.
SightSound relies on the testimony of Mr. Snell in support of its position.
Id. (citing Ex. 2153 ¶¶ 98–102).
Even assuming (without deciding) that the iTMS embodies the
claimed methods, we are not persuaded that the iTMS is coextensive with
the claims. First, the issue is whether the claims are coextensive with the
specific iTMS product alleged to be successful, not whether the claims are
coextensive with digital downloads “generally” as SightSound suggests. See
id. The present facts differ significantly from cases where a discrete product
or composition was found to be coextensive with a claim directed to the
same product or composition. See, e.g., Teva Pharms. USA, Inc. v. Sandoz,
Inc., 723 F.3d 1363, 1367, 1372–73 (Fed. Cir. 2013) (claim and product
both were a drug); Brown & Williamson, 229 F.3d at 1123–24, 1130 (claim
and product both were a cigarette); Demaco, 851 F.2d at 1389, 1394 (claim
and product both were a paving stone).
As Apple points out, the iTMS is a complex computer system
embodying numerous inventions. See Reply 10–11. Jeffrey Robbin, an
Apple employee and “one of the leaders of the initial development team for
the [iTMS],” testifies that “[t]he iTunes client and [iTMS] include many
technological features developed by Apple” (other than the general
purchasing and downloading of music and video). Ex. 4255 ¶¶ 1, 6, 7.
For instance, Mr. Robbin cites the “Genius” feature that “provide[s]
recommendations based on past purchases,” as well as patented features
relating to “user interface technology, playlist management, presentation of
media on a device, secure access to content, and assigning ratings.” Id. ¶ 7
(citing nine specific Apple patents on which he is a named inventor).
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Dr. Kelly also identifies Apple patented technology pertaining to other
features of the iTMS. Ex. 4262 ¶¶ 66–81. The testimony of Mr. Robbin and
Dr. Kelly is persuasive, and demonstrates that the iTMS embodies numerous
inventions other than the general purchasing and downloading of music
relied upon by SightSound. See Therasense, Inc. v. Becton, Dickinson &
Co., 593 F.3d 1289, 1299 (Fed. Cir. 2010) (finding no presumption of nexus
where the success of the product at issue “embodied at least two patents,”
one of which was the asserted patent), vacated for en banc rehearing on
inequitable conduct, 374 F. App’x 35 (Fed. Cir. 2010); Demaco, 851 F.2d at
1392 (a product is not “coextensive” with a claim when the claimed
invention is “only a component of a commercially successful machine or
process”).
Second, Mr. Snell’s analysis is of limited probative value because,
although he explains why he believes that the iTMS practices the claimed
methods, he does not explain in any detail why they allegedly are
coextensive with each other. See Ex. 2153 ¶¶ 88–98. The two issues are not
the same. See Brown & Williamson, 229 F.3d at 1130; Demaco, 851 F.2d at
1392. SightSound, therefore, has not established that the iTMS is
coextensive with the claims, and we do not presume a nexus.
Nevertheless, even if the iTMS is not coextensive with the claims,
SightSound may still be able to demonstrate a prima facie nexus by showing
that the success of the iTMS is due specifically to novel features of the
challenged claims. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008)
(finding no nexus absent evidence that “the driving force behind [the
allegedly successful product’s sales] was the claimed combination”); Ormco,
463 F.3d at 1312. SightSound argues that “the decision by consumers to
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purchase digital downloads generally, and to purchase from the ITMS
specifically, rather than obtain digital content through other means (such as
buying removable media or subscribing to a streaming service) establishes a
nexus between the commercial success of the product and the unique
features” of the claims. PO Resp. 72–73. This circular reasoning is not
persuasive, however. The fact that customers decide to buy music and video
through the iTMS is the alleged commercial success itself, not a connection
between such success and any claimed features. If all that was necessary to
prove a nexus was to show that customers bought more of the identified
product than other products, a nexus would exist for every product that
exhibits success in the marketplace. Rather, a patent owner must show proof
that the success is “the direct result of the unique characteristics of the
claimed invention.” Huang, 100 F.3d at 140.
We also note that Apple presents persuasive evidence that the
commercial success of the iTMS is due to features other than those of the
claimed methods. See Reply 11–14. Specifically, we have reviewed the
testimony of Lawrence Kenswil, a former employee of the Universal Music
Group and board member of the Recording Industry Association of America
with over 25 years of experience in the music industry, and find it
persuasive. See Ex. 4256 ¶¶ 5–18. Mr. Kenswil explains in detail his
opinion that the iTMS’s success is due to factors not attributable to the
challenged claims. Id. ¶¶ 66–98. We note two factors in particular: content
selection and the iTMS user interface.
Mr. Kenswil states that an important reason for the iTMS’s success
was “Apple’s ability to secure licenses with the major record labels,” which
“was an attractive feature for consumers because it gave them a store with a
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full catalog of offerings to browse and from which to select.” Id. ¶ 69.
Citing to evidence in the record, Mr. Kenswil explains the history of how
Apple was able to alleviate record label concerns over piracy and copyright
protection, thereby ensuring that Apple would be able to offer a wide
selection of content on the iTMS. Id. ¶¶ 70–74, 80 (citing Exs. 4195, 4197,
4198, 4201, 4202, 4204–4207). Further, as Mr. Kenswil points out, even
SightSound in its own documentation recognized the importance of having
broad content available to users. Id. ¶¶ 75–80; see Ex. 4157 at 9–10 (stating
that the company’s success is “dependent” on its ability to obtain content);
Ex. 4160 at 5 (describing content as the “key missing ingredient”). We are
persuaded by Mr. Kenswil’s explanation attributing the success of the iTMS
to its content selection. We do not agree with SightSound that the mere
existence of a choice for users as to whether to purchase music on a CD or
via the iTMS by itself demonstrates the requisite link to the claimed
methods. See PO Resp. 74; Ex. 2153 ¶ 101.
With respect to the iTMS user interface, Mr. Kenswil opines that its
features, such as “the five-star rating system, lists of music videos by the
band being viewed, lists of movies and books about the band being viewed,
concert tour information for the band being viewed, the ‘genius’
recommendation feature, and the song-by-song ‘Popularity’ rating,” are
important factors in the iTMS’s success. Ex. 4256 ¶¶ 92–93; see Exs.
4169–4172 (showing various features of the user interface). Mr. Kenswil
also explains why, in his experience, “features related to popularity,
recommendations, and lists of what other content was often purchased by
people who bought the song/movie being viewed” would contribute to the
success of the iTMS. Ex. 4256 ¶ 94.
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Relying on the testimony of Mr. Snell, SightSound asserts that the
iTMS user interface cannot be a driver for sales, because (1) the iTMS user
interface is “substantially similar” to the SightSound.com user interface, and
(2) the cited features of the iTMS user interface are not specific to
purchasing music and video through the iTMS. PO Resp. 73–74. Mr. Snell,
however, only compared the SightSound.com website to the iTMS, and did
not account for any technical details of the SightSound.com website or
address the specific features cited by Mr. Kenswil. See Ex. 2153 ¶ 101
(citing Exs. 2112, 2113, 2119, 2150, 2151); Ex. 4165 at 127:20–128:11;
Reply 13. Mr. Snell also acknowledged during his deposition that his
“expertise is in the engineering and the computer side,” not in sales. Ex.
4165 at 213:24–214:14. Given Mr. Kenswil’s lengthy background in the
music industry and testimony regarding specific features of the iTMS user
interface, we find his testimony regarding the causes of the iTMS’s
commercial success to be more convincing.
Finally, SightSound argues that Apple’s alleged reasons for the
iTMS’s commercial success are immaterial because commercial success
may be shown even when the success is due to multiple factors. Sur-Reply
14–15. As explained above, though, SightSound has not met its burden to
establish a nexus between the claims and the alleged commercial success.
Even if it had, Apple has provided persuasive evidence in rebuttal
demonstrating that the success of the iTMS is due to other features, not
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features of the claimed methods. Consequently, the commercial success of
the iTMS does not support a conclusion of nonobviousness of the claims.9

ii. Copying
SightSound argues that Apple copied the claimed methods of the ’573
patent. PO Resp. 16–19, 77–78. SightSound points to a 1993 letter from
Arthur R. Hair, the named inventor of the ’573 patent, to John Sculley, the
Chairman and Chief Executive Officer (“CEO”) of Apple, informing Apple
of the issuance of the ’573 patent and stating that the patent “will
revolutionize the video rental industry and the prerecorded music industry.”
Ex. 2111; see PO Resp. 16 n.8. SightSound also provides a declaration from
Scott Sander, one of the founders of SightSound’s predecessor companies
along with Mr. Hair. Ex. 2110 ¶ 2. Mr. Sander testifies that on January 15,
1999, he sent a letter to Steve Jobs, the Chairman and CEO of Apple at the
time, stating that “we believe that the download sale of movies and music
will become the consumers’ method of choice,” and including a schematic
showing SightSound’s system. Id. ¶ 8 (citing Ex. 2117). According to
Mr. Sander, he and Mr. Hair met with two Apple employees, Mark Gavini
and Tom Weyer, in February 1999. Id. ¶ 10. During the meeting,
Mr. Sander and Mr. Hair discussed SightSound’s patents, “expressed [their]
belief in the superiority of [SightSound’s] download purchase model versus
streaming subscription services,” and “discussed in more detail the written
schematic previously provided to Steve Jobs.” Id. Mr. Sander recalls

9 Although based on a different evidentiary record, we note that
SightSound’s arguments regarding Apple’s commercial success were
rejected by the Examiner in the ’402 reexamination. See Ex. 4103 at
266–68.
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Mr. Gavini and Mr. Weyer indicating that “it would take an entire re-write
of the Mac operating system to adequately support the level of encryption
that would be needed to satisfy the media and entertainment industry.” Id.
Apple subsequently introduced its iTunes software in 2001 and the iTMS in
2003. See Exs. 2131, 2137.
Apple responds that it did not copy any of SightSound’s code or
specific details of SightSound’s commercial system, and provides testimony
from a number of individuals. Reply 14–15 (citing Exs. 4255, 4257, 4258,
4262). Mr. Weyer, one of the Apple employees who met with Mr. Sander,
testifies that (1) he did not take any documents from SightSound’s
representatives, (2) he does not remember taking any notes at the meeting,
(3) he does not recall “having any further interactions with [SightSound] or
discussing any details about [the meeting] with others at Apple,”
(4) “nothing from the early 1999 meeting was communicated to anyone who
was involved with the development of iTunes or the [iTMS],” and (5) he
was not involved personally in the development of iTunes or the iTMS.
Ex. 4258 ¶¶ 2–9. Marco Mazzoni (formerly known as Mark Gavini), the
other Apple employee at the meeting, similarly testifies that (1) he does not
remember receiving any documents from SightSound’s representatives,
(2) he does not recall “ever communicating about SightSound or anything
related to SightSound to anyone at Apple, including anyone who was
involved with the development of iTunes or the [iTMS],” and (3) he was not
involved personally in the development of iTunes or the iTMS. Ex. 4257
¶¶ 2–3. Mr. Robbin, one of the leaders of the iTMS development team,
testifies unequivocally that the iTMS was developed independently of any
information received from SightSound. Ex. 4255 ¶¶ 6, 8–9. He does not
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remember hearing of SightSound before 2003 or recall communicating with
Mr. Weyer or Mr. Mazzoni about SightSound, and is not aware of anyone on
the development team who knew anything about SightSound prior to 2003.
Id. ¶ 8. Mr. Robbin further states that based on his personal involvement
with the development of iTunes and the iTMS, he believes that “Apple
developed those technologies based on the predecessor product SoundJam
MP that it acquired in September 2000” and based on Apple’s own
development work. Id. ¶ 9.
The testimony submitted by Apple persuasively rebuts SightSound’s
assertions of copying. The statements of Mr. Weyer, Mr. Mazzoni, and
Mr. Robbin are unequivocal and we see no reason based on the record
before us to doubt their veracity. In its Motion for Observation, SightSound
points to deposition testimony from Mr. Weyer and Mr. Mazzoni allegedly
showing that they do not remember everything they may have learned or
been provided at the 1999 meeting. Obs. 14–15. Regardless, absent some
demonstrated connection between the specific details that were discussed at
the 1999 meeting and the actual development of the iTMS, we are not
persuaded that there is sufficient evidence of copying. Similarly, with
respect to Mr. Hair’s 1993 letter and Mr. Sander’s 1999 letter to Mr. Jobs,
although SightSound points to testimony from Mr. Robbin regarding
Mr. Jobs’s involvement in developing the iTMS, id. at 13–14, SightSound
does not cite evidence linking the letters to the actual development of the
iTMS years later. SightSound has not shown proof of copying that would
support a conclusion of nonobviousness as to the challenged claims.

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iii. Industry Praise
SightSound argues that it “received press and media coverage praising
the innovative new method for selling digital content,” citing three magazine
articles from 1998–2000. PO Resp. 78–79 (citing Exs. 2110 ¶ 7,
2114–2116). We have reviewed the materials and find that although they
describe various aspects of SightSound’s system for purchasing music and
videos online, they also express skepticism that the business would be
successful. See, e.g., Ex. 2114 at 1–2 (stating that it “may not be easy” to
market the service to record companies that are “against the online sale of
music,” consumers “may not be hip to the idea” that downloaded songs “can
only be played on the computers they’re downloaded to,” and selling the
existing songs in the service “has not been easy”); Ex. 2115 at 1 (stating that
“[s]ince movie files are so big, downloading is an option only for people on
high-speed connections”). Further, as Apple points out, SightSound’s
service did not end up being successful in the industry. See Reply 12, 15;
Ex. 4256 ¶¶ 32–50. Thus, the evidence of industry praise submitted by
SightSound is of limited probative value.10

iv. Long-Felt Need
SightSound contends that there was a long-felt need in the art to
“instantaneously cue and arrange music selections as a form of digital ‘mix

10 We also note that CompuSonics’s technology, in the prior art, likewise
received industry praise. See, e.g., Ex. 4119 at 1–2 (“If the technology does
take hold, future applications could be dazzling. . . . Enough speculators
have been taken with these prospects to push Compusonics’[s] stock up
525% to a recent price of 12 1/2 cents.”); Ex. 4140 at 2 (“CompuSonics
made audio history recently when the company sponsored a telerecording
demonstration along with AT&T, which provides the high-speed lines.”).
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tape.’” PO Resp. 79–80. As support, SightSound points to the
CompuSonics patent expressing a desire for an “efficient digital recording
and playback system,” and a CompuSonics publication stating that
CompuSonics’s video database computer permitted records (video/audio
segments) to be played back in any order. See Ex. 4118, col. 14, ll. 40–42;
Ex. 4116 at 1. The general statements in these references do not show that
there was a long-felt need for the ability to create digital “mix tapes” that the
’573 patent solved. Moreover, both were in the prior art, and to the extent
the references show any need at all, they suggest that the need would have
been met by CompuSonics’s devices. Thus, SightSound’s evidence of
long-felt need is not persuasive.

v. Conclusion
Based on all of the evidence of record, including evidence of
secondary considerations of nonobviousness submitted by SightSound, we
determine that claim 1 would have been obvious based on the CompuSonics
publications under 35 U.S.C. § 103(a).

5. Independent Claim 4
Independent claim 4 is nearly identical to independent claim 1, but
recites a “digital video signal” rather than a “digital audio signal.” Again,
Apple explains in its Petition how the CompuSonics publications teach the
limitations of claim 4 and relies on the testimony of Dr. Kelly in support.
See Pet. 53–54; Ex. 4132 ¶¶ 17–40, App. C at 10–11. For instance, a 1986
CompuSonics “Application Notes” document discloses that “CompuSonics
Video’s CSX [CompuSonics compression technology] digital signal
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processing can be applied to a wide variety of consumer, industrial, and
professional digital video products,” and describes “a few of the many new
or improved products which are possible using CSX.” Ex. 4116 at 1. One
such application was “Music Video Distribution.” Id. at 2. The document
provides:
A small but increasingly significant number of consumers are
also purchasing music videos in videotape format. Although
the video may be recorded off the air or cable using a VCR, the
resulting video and audio fidelity of the copy is poor. Digital
music video distribution offers customers two significant
benefits: high fidelity digital audio and video, and convenient
purchasing via electronic distribution directly to the home.
The proposed music video distribution chain has three
principle components that depend on CSX technology: a video
database computer, a broadcast digital encoder, and a home
disk-based digital video decoder/recorder. A consumer
enjoying music television who chooses to purchase his own
digital copy calls the distributor with his request. The
distributor enables the video database computer to access the
consumer’s selection and transfer the video/audio data to the
broadcast digital encoder. This encoder modulates the data
onto a cable television subcarrier or other transmission format.
The home decoder/recorder receives the digital video/audio
data over the cable link and copies it to disk.
. . . A home digital decoder/recorder using currently available
400 megabyte write-once optical disks would capture and store
about one hour of CSX format digital music video material
permanently.
Id. at 2–3 (emphases added). Another CompuSonics publication suggests
that the same method of selling music, discussed above in connection with
claim 1, also could be used for video:
Compusonics is talking to AT&T about setting up a service that
would enable record companies to sell direct to consumers over
the telephone. Symphonies, ordered by credit card, could travel
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digitally over phone lines into homes to be recorded by
Compusonics’[s] machine. Movies, which can also be recorded
digitally, might be sent the same way.
Ex. 4119 at 2 (emphasis added). CompuSonics’s patent also describes a
device for converting an analog audio or video signal into digital form and
transmitting the signal electronically. See Ex. 4118, Abstract; col. 3,
ll. 44–50; col. 5, ll. 52–58; col. 14, ll. 31–47; col. 15, ll. 11–41.
Similar to its previous argument regarding the digital audio signal of
claim 1, SightSound contends that the CompuSonics publications do not
teach storing a digital video signal in a “second memory” because they
describe storage on an optical disk, not a hard disk. PO Resp. 39–40. As
explained above, we do not agree that “second memory” requires a hard
disk. See supra Section II.A.2, II.D.4.a.
SightSound also argues that the CompuSonics publications do not
mention explicitly transmitting video and accepting electronic payment.
PO Resp. 40. Exhibit 4119, however, suggests that movies can be sent the
“same way” as audio that is sold “direct to customers over the telephone”
and “ordered by credit card.” Ex. 4119 at 2. Exhibit 4116 further discloses
that a “consumer enjoying music television who chooses to purchase his
own digital copy calls the distributor with his request,” and the distributor
“transfer[s] the video/audio data to the broadcast digital encoder,”
suggesting that video is transmitted in connection with a purchase. Ex. 4116
at 2. Exhibit 4114 discloses that “[v]ideo music services which broadcast
over cable networks can simultaneously release [a] new album and have it
ready for immediate sale without first having filled the distribution
pipeline.” Ex. 4114 at 11.
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We are persuaded by Apple’s analysis, supported by the testimony of
Dr. Kelly, that the CompuSonics publications teach every limitation of claim
4. We also are persuaded that the claimed method would have amounted to
arranging known elements with each performing their known function and
yielding predictable results, and would have been obvious to a person of
ordinary skill in the art considering the CompuSonics publications as a
whole, including the specific statements above that extend to video. See
supra Section II.D.4.b. Further, a person of ordinary skill in the art would
have had reason to create a system that allowed users to purchase and
download music and video, as expressly contemplated by the references, for
the reasons explained above. See id. With respect to secondary
considerations of non-obviousness, SightSound’s arguments are the same for
all of the challenged claims, and the parties do not make any separate
arguments regarding the sale of video through the iTMS. See PO Resp.
16–21, 68–80; Reply 10–15. The evidence and arguments submitted by
SightSound do not overcome the evidence of obviousness. See supra
Section II.D.4.c. Thus, based on the evidence of record, we determine that
claim 4 would have been obvious based on the CompuSonics publications
under 35 U.S.C. § 103(a).

6. Dependent Claims 2 and 5
Claim 2 depends from claim 1 and recites “after the transferring step,
the steps of searching the first memory for the desired digital audio signal;
and selecting the desired digital audio signal from the first memory.” Claim
5 depends from claim 4 and recites similar limitations with respect to a
“digital video signal.” Apple asserts in its Petition that the CompuSonics
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publications necessarily disclose searching a content provider’s memory for
the desired selection “in order to download it to the consumer’s digital
recorder/player.” Pet. 51–52, 54–55; see Ex. 4132, App. C at 9, 12.
SightSound argues that based on the disclosures of the CompuSonics
publications, the “searching” and “selecting” steps could be done before the
transferring step, and therefore, are not disclosed inherently. PO Resp.
40–42, 65–66.
We agree that the CompuSonics publications necessarily disclose the
“searching” and “selecting” steps of the claims, for the reasons stated by
Apple. Mr. Snell’s acknowledgement, in the context of the iTMS, that the
system always searches in memory for content because “the server has to
locate the data file in memory,” supports Apple’s position. See Ex. 4165 at
41:4–42:23. With respect to the particular ordering of the “searching” and
“selecting” steps after the “transferring money electronically” step, we agree
with Dr. Kelly that the ordering would have been obvious to one of ordinary
skill in the art. See Ex. 4262 ¶¶ 26–27. Exhibit 4116 further suggests the
order by stating: “A consumer enjoying music television who chooses to
purchase his own digital copy calls the distributor with his request. The
distributor enables the video database computer to access the consumer’s
selection and transfer the video/audio data to the broadcast digital encoder.”
Ex. 4116 at 2 (emphases added).
We also are persuaded that the claimed methods would have
amounted to arranging known elements with each performing their known
function and yielding predictable results, and would have been obvious to a
person of ordinary skill in the art considering the CompuSonics publications
as a whole. See supra Section II.D.4.b. Further, a person of ordinary skill in
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the art would have had reason to create a system that allowed users to
purchase and download music and video, as expressly contemplated by the
references, for the reasons explained above. See id. With respect to
secondary considerations of non-obviousness, SightSound’s arguments are
the same for all of the challenged claims, and the parties do not make any
separate arguments regarding the additional limitations of claims 2 and 5.
See PO Resp. 16–21, 68–80; Reply 10–15. The evidence and arguments
submitted by SightSound do not overcome the evidence of obviousness. See
supra Section II.D.4.c. Thus, based on the evidence of record, we determine
that claims 2 and 5 would have been obvious based on the CompuSonics
publications under 35 U.S.C. § 103(a).

E. Motions to Exclude
The party moving to exclude evidence bears the burden of proof to
establish that it is entitled to the relief requested—namely, that the material
sought to be excluded is inadmissible under the Federal Rules of Evidence.
See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below,
Apple’s Motion to Exclude is denied, and SightSound’s Motion to Exclude
is denied-in-part and dismissed-in-part.

1. Apple’s Motion to Exclude
Apple moves to exclude Mr. Snell’s declaration (Ex. 2153) under
Federal Rule of Evidence 702. Pet. Mot. to Exclude 3. Federal Rule of
Evidence 702 provides:
A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify in the form
of an opinion or otherwise if:
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(a) the expert’s scientific, technical, or other specialized
knowledge will help the trier of fact to understand the evidence
or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and
methods; and
(d) the expert has reliably applied the principles and
methods to the facts of the case.
Apple argues that Mr. Snell is not qualified to offer opinions on the alleged
commercial success of the iTMS, and does not provide a sufficient factual
“basis” for his opinions. Pet. Mot. to Exclude 3–5. For instance, Apple
contends that Mr. Snell applied an erroneous interpretation of “second
memory” in the claims, and gave opinions that contradict the prosecution
history of the ’573 patent. Id. at 11–15. We have reviewed the cited
portions of Mr. Snell’s testimony and see no basis on which they would
warrant the extreme remedy of exclusion. Apple’s arguments indicate a
mere disagreement with Mr. Snell’s testimony and pertain to the weight to
be given to that testimony, which we are able to assess without excluding it,
as explained above. Apple’s Motion to Exclude is denied.

2. SightSound’s Motion to Exclude
Mr. Robbin’s Declaration (Ex. 4255): SightSound argues that two
statements in the declaration should be excluded because Mr. Robbin lacks
sufficient personal knowledge to make them: (1) Mr. Robbin’s statement in
paragraph 9 that the idea of selling music and video files over computer
networks was “prevalent in the industry since the mid-1980s,” and
(2) Mr. Robbin’s statement in paragraph 7 that the iTMS embodies
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numerous inventions, many the subject of Apple’s own patents. PO Mot. to
Exclude 1–3.
With respect to the first statement, although we rely on other
statements by Mr. Robbin in paragraph 9 pertaining to his knowledge of the
development of the iTMS, we do not rely on his statement regarding what
allegedly was prevalent in the industry. SightSound’s request to exclude
that statement, therefore, is dismissed as moot.
With respect to the second statement, SightSound argues that the
material should be excluded under Federal Rules of Evidence 602, 701, 702,
703, 704, or 705, but does not provide specific analysis directed to any of
those rules or case law support explaining why the material is inadmissible.
See id. Moreover, we are not persuaded that Mr. Robbin, as an Apple
employee, one of the leaders of the iTMS development team, and a named
inventor on the identified patents, lacks sufficient personal knowledge to
testify regarding the matters in paragraph 7. See Ex. 4255 ¶¶ 1, 6; Pet.
Exclude Opp. 2–4. SightSound’s request to exclude Mr. Robbin’s statement
in paragraph 7, therefore, is denied.
Mr. Weyer’s Declaration (Ex. 4258): SightSound argues that
Mr. Weyer’s statement that “[i]f we had been impressed with the technology
offered by [SightSound], Apple would have followed up with additional
meetings,” should be excluded under Federal Rules of Evidence 402, 403,
601, or 602 as speculative and not based on sufficient personal knowledge.
PO Mot. to Exclude 3–4. Mr. Weyer was an Apple employee and explains
in his declaration what he did in connection with the 1999 meeting and what
he did at the company in general; we are not persuaded that he lacks
sufficient personal knowledge to testify on the matter. See Ex. 4258 ¶¶ 1–9;
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Pet. Exclude Opp. 4–5. Further, his testimony is corroborated by the
testimony of Mr. Robbin and Mr. Mazzoni. See Ex. 4255 ¶ 8; Ex. 4257
¶¶ 2–3; Pet. Exclude Opp. 5. SightSound’s request is denied.
Two Patents (Exs. 4209, 4210): SightSound moves to exclude two
patents cited by Apple in its Reply. PO Mot. to Exclude 4. As we do not
rely on the materials for our decision, SightSound’s request to exclude them
is dismissed as moot.
Mr. Kenswil’s Declaration (Ex. 4256) and Dr. Kelly’s Declaration
(Ex. 4262): SightSound argues that Mr. Kenswil’s opinions on technology
in the 1980s/1990s, alleged reasons for commercial success of the iTMS,
SightSound’s business operations, and other issues should be excluded
because Mr. Kenswil “lacks the requisite expertise for his testimony and his
declaration lacks ‘sufficient facts or data’ to support his opinions.” PO Mot.
to Exclude 5–11. Similarly, SightSound contends that Dr. Kelly’s opinions
regarding the iTMS and CompuSonics are conclusory and unsupported, and
ignore contrary evidence, such as an expert report on infringement from the
related litigation between the parties and Mr. Stautner’s declaration. Id. at
11–15. SightSound cites numerous bases for excluding the declarations,
including Federal Rules of Evidence 402, 403, 602, 603, 701, 702, 703, 704,
705, 801, 802, and 901. Id. at 5–15.
We have reviewed SightSound’s arguments and Apple’s responses,
and are not persuaded that the declarations should be excluded. See id.; Pet.
Exclude Opp. 6–15; PO Exclude Reply 3–5. SightSound does not explain
sufficiently why the declarations would be inadmissible under any of the
cited rules—as opposed to being merely incorrect or insufficiently supported
in SightSound’s view. SightSound’s arguments pertain more to the merits of
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the parties’ arguments and the weight to be given to the opposing declarants
than to any issue of admissibility. Just as we are able to assess Mr. Snell’s
testimony and assign it the appropriate weight, we are able to do so for the
testimony of Mr. Kenswil and Dr. Kelly. Also, with respect to SightSound’s
argument that numerous documents cited by Mr. Kenswil and Dr. Kelly are
hearsay, SightSound does not identify specifically the textual portions of the
documents that allegedly are being offered for the truth of the matter
asserted, or provide sufficient explanation for why the material would be
inadmissible. PO Mot. to Exclude 9–12, 14. We also are not persuaded by
SightSound’s assertion that the documents “are not the types of facts or data
typically relied upon by experts” in forming their opinions under Federal
Rule of Evidence 703, particularly when Mr. Snell relied on similar
materials for his opinions. See id. at 9; Pet. Exclude Opp. 9–11 & n.3.
SightSound’s request is denied.
Other Patents (Exs. 4212–4250): SightSound argues that various
patents submitted by Apple as allegedly embodied by the iTMS are
inadmissible under 37 C.F.R. § 42.61(c). PO Mot. to Exclude 15. We
disagree, as Apple offers the patents only to prove what the patents
“describe[],” not for the “truth of the data” under 37 C.F.R. § 42.61(c).
SightSound also asserts that the patents should be excluded under Federal
Rules of Evidence 402 or 403 because Apple does not provide sufficient
evidence establishing that the patents are embodied by the iTMS. Id. We
disagree, and are able to assign all of the materials and testimony of record
on commercial success the appropriate weight, as explained above. See
supra Section II.D.4.c.i. SightSound’s request is denied.

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F. Motion for Observation
SightSound’s observations are directed to the cross-examination
testimony of Mr. Mazzoni (Ex. 2172), Mr. Weyer (Ex. 2173), Mr. Kenswil
(Ex. 2174), Dr. Kelly (Ex. 2175), and Mr. Robbin (Ex. 2176), who were
cross-examined after Apple filed its Reply. We have considered
SightSound’s observations and Apple’s responses in rendering our decision,
and have accorded the testimony the appropriate weight as explained above.
See Obs. 1–15; Obs. Resp. 1–15.

G. Motion to Seal
On November 22, 2013, Apple filed an opposition (Paper 38) to
SightSound’s motion for additional discovery in this proceeding, and filed
with the opposition a declaration from an Apple employee, Arthur Rangel
(Ex. 4155). Apple filed the declaration in the Patent Review Processing
System (PRPS) as “Parties and Board Only,” but did not file a motion to seal
or otherwise alert the Board that it requested the material to be sealed. After
being contacted by Board administrative staff regarding the error, Apple
filed a Motion to Seal and a redacted, public version of the declaration
(Ex. 4274). In its Motion, Apple argues that the redacted material contains
confidential “information regarding the type and nature of customer
information and feedback gathered by Apple relating to Apple products and
services in the course of its competitive business operations,” and
“additional analysis of customer information and feedback, such as
marketing studies conducted with gathered data and the design of Apple
surveys,” the disclosure of which “would be beneficial to Apple’s
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competitors and harmful to Apple.” Mot. to Seal 2–3. SightSound did not
file an opposition to Apple’s Motion to Seal.
There is a strong public policy in favor of making information filed in
a covered business method patent review open to the public, especially
because the proceeding determines the patentability of claims in an issued
patent and, therefore, affects the rights of the public. Under 35 U.S.C.
§ 326(a)(1) and 37 C.F.R. § 42.14, the default rule is that all papers filed in a
covered business method patent review are open and available for access by
the public; a party, however, may file a concurrent motion to seal and the
information at issue is sealed pending the outcome of the motion. It is,
however, only “confidential information” that is protected from disclosure.
35 U.S.C. § 326(a)(7); see Trial Practice Guide, 77 Fed. Reg. at 48,760. The
standard for granting a motion to seal is “for good cause.” 37 C.F.R.
§ 42.54(a). The party moving to seal bears the burden of proof in showing
entitlement to the requested relief, and must explain why the information
sought to be sealed constitutes confidential information. 37 C.F.R.
§ 42.20(c).
We have reviewed the redacted material in Mr. Rangel’s declaration,
and are persuaded that good cause exists to have it remain under seal. The
redacted portions contain confidential information pertaining to Apple’s
business, and are narrowly tailored to redact only confidential information.
We also note that the decision on SightSound’s motion for additional
discovery cited material from the declaration that is not redacted, and we do
not rely on the declaration in this decision. See Paper 40 at 8; Ex. 4274 ¶ 9.
The declaration will be maintained under seal under the terms of the
protective order entered in this proceeding. See Ex. 4269; Paper 92 at 8.
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III. ORDER
Apple has not demonstrated, by a preponderance of the evidence, that
claims 1, 2, 4, and 5 of the ’573 patent are anticipated by the CompuSonics
system under 35 U.S.C. § 102(a), but has demonstrated, by a preponderance
of the evidence, that the claims are unpatentable over the CompuSonics
publications under 35 U.S.C. § 103(a).
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 4, and 5 of the ’573 patent have been
shown to be unpatentable;
FURTHER ORDERED that Apple’s Motion to Exclude (Paper 71) is
denied;
FURTHER ORDERED that SightSound’s Motion to Exclude (Paper
68) is denied-in-part and dismissed-in-part; and
FURTHER ORDERED that Apple’s Motion to Seal (Paper 102) is
granted, and the declaration of Arthur Rangel (Ex. 4274, redacted; Ex. 4155,
unredacted) will be kept under seal under the terms of the protective order
entered in this proceeding (Ex. 4269).
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.
Certain material has been sealed in this proceeding, but has not been
relied upon in this final written decision. See supra Section II.G. The
record will be maintained undisturbed pending the outcome of any appeal
taken from this decision. At the conclusion of any appeal proceeding, or if
no appeal is taken, the materials will be made public. See Trial Practice
Guide, 77 Fed. Reg. at 48,760–61. Further, either party may file a motion to
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expunge the sealed materials from the record pursuant to 37 C.F.R. § 42.56.
Any such motion will be decided after the conclusion of any appeal
proceeding or the expiration of the time period for appealing.
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PETITIONER:

J. Steven Baughman
Ching-Lee Fukuda
James R. Batchelder
ROPES & GRAY LLP
steven.baughman@ropesgray.com
ching-lee.fukuda@ropesgray.com
james.batchelder@ropesgray.com

PATENT OWNER:

David R. Marsh
Kristan L. Lansbery
Jennifer A. Sklenar
ARNOLD & PORTER LLP
david.marsh@aporter.com
kristan.lansbery@aporter.com
jennifer.sklenar@aporter.com