Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 1 of 36 PageID #: 8668
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-1601-LPS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`C.A. No. 13-919-LPS
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`JURY TRIAL DEMANDED
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`)))))))))))
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`)))))))))
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY LLC F/K/A
`MOTOROLA MOBILITY, INC.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`DEFENDANTS’ SUPPLEMENTAL EXHIBIT TO LETTER TO THE HONORABLE
`LEONARD P. STARK FROM DAVID E. MOORE, ESQUIRE, REGARDING
`DEFENDANTS’ MOTION TO STRIKE PORTIONS OF DR. EARL SACERDOTI’S
`REPORT REGARDING VALIDITY
`
`OF COUNSEL:
`
`Robert W. Unikel
`Michelle Marek Figueiredo
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Tel: (312) 449-6000
`
`Robert R. Laurenzi
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc. and Google
`Inc.
`
`PUBLIC VERSION
`
`PUBLIC VERSION
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-1601-LPS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`C.A. No. 13-919-LPS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`)))))))))))
`
`)))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY LLC F/K/A
`MOTOROLA MOBILITY, INC.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`DEFENDANTS’ SUPPLEMENTAL EXHIBIT TO LETTER TO THE HONORABLE
`LEONARD P. STARK FROM DAVID E. MOORE, ESQUIRE, REGARDING
`DEFENDANTS’ MOTION TO STRIKE PORTIONS OF DR. EARL SACERDOTI’S
`REPORT REGARDING VALIDITY
`
`OF COUNSEL:
`
`Robert W. Unikel
`Michelle Marek Figueiredo
`John Cotiguala
`Matt Lind
`PAUL HASTINGS LLP
`71 South Wacker Drive, Suite 4500
`Chicago, IL 60606
`Tel: (312) 449-6000
`
`Robert R. Laurenzi
`Chad J. Peterman
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Tel: (212) 318-6000
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendants Motorola Mobility
`LLC f/k/a Motorola Mobility, Inc. and Google
`Inc.
`
`PUBLIC VERSION
`
`PUBLIC VERSION
`
`
`
`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 2 of 36 PageID #: 8669
`
`Ariell Bratton
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Tel: (858) 458-3000
`
`Dated: January 21, 2021
`7011226 / (39729/40549)
`
`2
`
`Public Version Dated: January 29, 2021
`
`
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 3 of 36 PageID #: 8670
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`Exhibit H
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`
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 4 of 36 PageID #: 8671
`
`EarlSacerdoti_Rough
`
` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 1
`
` 1 ROUGH DRAFT/REALTIME DISCLAIMER
`
` 2 THIS UNCERTIFIED ROUGH DRAFT/REALTIME
` TRANSCRIPT (HARD COPY OR ELECTRONIC)
` 3 CANNOT BE QUOTED IN ANY PLEADING OR
` FOR ANY OTHER PURPOSE AND MAY NOT BE
` 4 FILED WITH ANY COURT. THIS TRANSCRIPT
` HAS NOT BEEN CHECKED, PROOFREAD OR
` 5 CORRECTED.
`
` 6
`
` 7 Inasmuch as this deposition transcript is in rough
`
` 8 draft form, please be aware that there may be discrepancies
`
` 9 regarding page and line numbers when comparing it to the
`
` 10 final transcript.
`
` 11 Also please be aware that the realtime screen and
`
` 12 the unedited, uncertified rough draft transcript may contain
`
` 13 untranslated steno, an occasional reporter's note, a
`
` 14 misspelled proper name, and/or nonsensical English word
`
` 15 combinations. These are not "mistakes" made by the reporter
`
` 16 but are caused by the English language and the limitations
`
` 17 imposed by writing it phonetically. All such entries are
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` 18 corrected on the final certified transcript.
`
` 19 If the deposition has been videotaped, the rough
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` 20 draft transcript will be compared against the audio of the
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` 21 videotape in order to ensure complete accuracy on the final
`
` 22 transcript.
`
`Page 1
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 5 of 36 PageID #: 8672
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`EarlSacerdoti_Rough
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` 23 WITNESS LOCATION: ALAMO, CALIFORNIA
`
` 24 WEDNESDAY, JANUARY 20, 2021
`
` 25 9:03 A.M.
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 2
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` 1 ‐‐000‐‐
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` 2
`
` 3 (This deposition is being taken via
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` 4 videoconference and all parties, the
`
` 5 witness, the videographer and the court
`
` 6 reporter are appearing remotely.)
`
` 7
`
` 8 THE VIDEOGRAPHER: We are going on the record
`
` 9 at 9:03 a.m. on January 20th, 2021. Audio and video
`
` 10 recording will continue to take place unless all parties
`
` 11 agree to go off the record.
`
` 12 This is Media Unit 1 of the video‐recorded
`
` 13 deposition of Earl Sacerdoti taken by counsel for the
`
` 14 defendant in the matter of Arendi S.A.R.L. versus
`
` 15 Motorola Mobility LLC and Google LLC, filed in the
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` 16 United States District Court for the District of
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` 17 Delaware, Case No. 13‐919‐LPS.
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`Page 2
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 6 of 36 PageID #: 8673
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`EarlSacerdoti_Rough
` 21 MR. DeWITT: Objection to form.
`
` 22 A. Again, I would want to refresh my memory by ‐‐
`
` 23 by reviewing those codes, but I think I just expressed
`
` 24 it in my answer to one of the previous questions. And,
`
` 25 again, that's ‐‐ that's unaided recall. That's not...
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 93
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` 1 Q. (BY MR. UNIKEL) Understood.
`
` 2 A. Okay.
`
` 3 Q. In paragraph 46 of your report, the next
`
` 4 paragraph, you state, quote, During our conversation,
`
` 5 Mr. Hedloy stated that he conceived of the idea no later
`
` 6 than July 6, 1997 which is consistent with his prior
`
` 7 testimony, unquote.
`
` 8 Do you see that?
`
` 9 A. Yes, I do.
`
` 10 Q. First of all, what conversation are you
`
` 11 referring to between you and Mr. Hedloy?
`
` 12 A. Oh, okay. Sorry. I was looking ‐‐ looking
`
` 13 earlier in my report for a reference to that and it
`
` 14 appears to be in the prior sentence at the end of
`
` 15 paragraph 45, which states the opinions that I express
`
` 16 is supported by my conversation with Mr. Hedloy.
`Page 110
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 7 of 36 PageID #: 8674
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`EarlSacerdoti_Rough
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` 17 And that references a conversation that I had
`
` 18 with him, I don't recall when, at some point, that ‐‐ in
`
` 19 which he presented some relevant information to me.
`
` 20 Q. What relevant information did he present to
`
` 21 you in this conversation?
`
` 22 A. As I recall, he discussed the overall process
`
` 23 by which he ‐‐ he developed the invention. He talked me
`
` 24 through some computer files that he had ‐‐ that he had
`
` 25 found, and related to me communications that he had had
`
` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 94
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` 1 with ‐‐ I forget the individual's titles, more or less
`
` 2 equivalent to a patent agent in this country. I don't
`
` 3 recall the details or the individual's name, as I'm
`
` 4 sitting here. Oh, it's here in the following paragraph,
`
` 5 Mr. Sverre Stuedahl. It's referenced in paragraph 46.
`
` 6 So he discussed all of those things and
`
` 7 presented to me via, I believe it was sharing documents
`
` 8 within a Zoom meeting, copies of source code that
`
` 9 related to some of those ‐‐ some of those files that we
`
` 10 discussed.
`
` 11 Q. When did this conversation with Mr. Hedloy
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`Page 111
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 8 of 36 PageID #: 8675
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` 12 occur?
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`EarlSacerdoti_Rough
`
` 13 A. I don't recall the date. It was clearly prior
`
` 14 to producing this report, but I ‐‐ and after I was
`
` 15 engaged on the project, but I don't recall when during
`
` 16 the ‐‐ during the preparation of this report that
`
` 17 conversation occurred.
`
` 18 Q. Well, you said you were retained, you believe,
`
` 19 in August of 2020; correct?
`
` 20 A. Correct.
`
` 21 Q. And this report was signed October 20th, 2020;
`
` 22 correct?
`
` 23 A. Correct.
`
` 24 Q. Do you have any idea when in the time line
`
` 25 between August, when you were retained, and
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 95
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` 1 October 20th, when you signed the report, you would have
`
` 2 spoken with Mr. Hedloy?
`
` 3 A. I'm sorry. I may have misspoken. I'm not
`
` 4 sure that I was retained in August. I think that's when
`
` 5 I had my initial conversation with the attorneys for
`
` 6 Arendi. I'm not sure that the actual retention
`
` 7 happened ‐‐ happened in August or whether that happened
`Page 112
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 9 of 36 PageID #: 8676
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`EarlSacerdoti_Rough
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` 8 in early September. I just don't recall.
`
` 9 But in any case, I do not recall when within
`
` 10 the span from when I was retained to when I produced
`
` 11 this report the conversation occurred.
`
` 12 Q. Was it weeks before you signed your report or
`
` 13 days before you signed your report, do you believe?
`
` 14 A. I, frankly, don't recall, but my belief is it
`
` 15 would have been ‐‐ it would not have been days before I
`
` 16 signed my report.
`
` 17 As I recall, I was quite busy doing document
`
` 18 preparation in those final days. I don't believe I had
`
` 19 a ‐‐ had this conversation during those last few days,
`
` 20 no.
`
` 21 Q. Do you have a sense of how many weeks before
`
` 22 you signed your report this conversation would have
`
` 23 been?
`
` 24 A. I would say ‐‐ this is a complete ‐‐ complete
`
` 25 guess, but it would be sometime between one week before
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 96
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` 1 and eight or nine weeks before.
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` 2 Q. But within that, you're not sure when you
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`Page 113
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 10 of 36 PageID #: 8677
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`EarlSacerdoti_Rough
` 3 spoke with Mr. Hedloy?
`
` 4 A. Yeah, I believe I've said that, yes.
`
` 5 Q. And in paragraph 46, you refer to three files.
`
` 6 Do you see that in the second sentence of paragraph 46?
`
` 7 A. Yes.
`
` 8 Q. The first, you state is a note that Mr. Hedloy
`
` 9 drafted on July 8th, 1997, you believe; is that correct?
`
` 10 A. Yes, it is.
`
` 11 Q. And then later in that same paragraph, you
`
` 12 refer to and cite to two source code files.
`
` 13 Do you see that?
`
` 14 MR. DeWITT: Objection to form.
`
` 15 A. I see two files. Without reading the entire
`
` 16 file string, the first one ends with the actual file
`
` 17 name, which is TESTDOC.doc and the other is
`
` 18 TESTDOC1.doc. Those are not source code files.
`
` 19 Q. (BY MR. UNIKEL) What kinds of files are
`
` 20 those?
`
` 21 A. Those are Word documents.
`
` 22 Q. And are these ‐‐ are the three files that you
`
` 23 refer to in this paragraph, the note Mr. Hedloy drafted
`
` 24 and these two test doc files, are these materials that
`
` 25 Mr. Hedloy shared with you in your conversation?
`
` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
`Page 114
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 11 of 36 PageID #: 8678
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`EarlSacerdoti_Rough
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 97
`
` 1 A. I believe ‐‐ I can't recall all the details of
`
` 2 the conversation. I believe he identified this file of
`
` 3 the ‐‐ the first file that we're talking about, the
`
` 4 notes that he had prepared for his discussion with the
`
` 5 patent agent, and he may have shown it to me. I don't
`
` 6 recall.
`
` 7 But as I recall, the actual file was in
`
` 8 Norwegian. And at some point subsequent to that initial
`
` 9 conversation, I ran it through Google Translate to
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` 10 understand its contents.
`
` 11 Q. And so did ‐‐
`
` 12 A. I forget the rest ‐‐ I forget the question
`
` 13 that I'm responding to. I don't think I've answered it
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` 14 fully.
`
` 15 Q. So my question is: Are the three files that
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` 16 you have referred to in paragraph 46 files that
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` 17 Mr. Hedloy shared with you during your conversation with
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` 18 him?
`
` 19 A. So I guess the direct answer is no.
`
` 20 Q. Are they ‐‐ how did you acquire knowledge of
`
` 21 the three files that you cite to in paragraph 46?
`
` 22 A. As I mentioned, Mr. Hedloy identified those
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 12 of 36 PageID #: 8679
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`EarlSacerdoti_Rough
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` 23 files to me and I believe we shared images of them, or
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` 24 images of the source code ‐‐ images of the ‐‐ of the
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` 25 first file we have been discussing, and images of the
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 98
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` 1 source code contained within those other two Word
`
` 2 documents during that conversation.
`
` 3 And as I recall, more or less immediately
`
` 4 following that conversation, I was provided access to
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` 5 the files themselves.
`
` 6 Q. If I can ask you to look at the Shared Exhibit
`
` 7 folder at what I've marked Exhibit S5, please, which has
`
` 8 Arendi Bates numbers.
`
` 9 Let me know when that's open on your screen,
`
` 10 please.
`
` 11 (Exhibit No. S5 marked for identification.)
`
` 12 A. I have that document open.
`
` 13 Q. (BY MR. UNIKEL) Do you see that this is a
`
` 14 two‐page document that includes the Bates number
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` 15 Arendi563479 through Arendi563480?
`
` 16 Do you see that?
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` 17 A. Yes, I do.
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 13 of 36 PageID #: 8680
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`EarlSacerdoti_Rough
` 18 Q. And I'm going to represent to you that
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` 19 Arendi's counsel has told us there's a typo in your
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` 20 report, and that while your report in paragraph 46 cites
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` 21 to the note as being Arendi563779, that it actually is
`
` 22 supposed to be Arendi563479.
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` 23 Do you have any reason to disagree with
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` 24 Arendi's representation on that?
`
` 25 A. No, I don't.
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 99
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` 1 Q. The document we are looking at as Exhibit S5,
`
` 2 is this in fact the note that you are citing to as one
`
` 3 of the three files to corroborate a July 6th, 1997
`
` 4 conception date?
`
` 5 A. It appears to be. I'm ‐‐ I'm not a reader of
`
` 6 Norwegian, and to ‐‐ to be fully confident of my answer,
`
` 7 I would want to translate it.
`
` 8 Q. Anywhere on this document, do you see a date
`
` 9 of July 8th, 1997?
`
` 10 A. I do not.
`
` 11 Q. In the translation that you had performed of
`
` 12 this document when you were review it ‐‐ reviewing it,
`
` 13 do you recall seeing a date of July 8th, 1997 anywhere
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 14 of 36 PageID #: 8681
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`EarlSacerdoti_Rough
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` 14 on the translated version of this document?
`
` 15 A. I do not.
`
` 16 Q. How did you come to the conclusion that this
`
` 17 note was drafted on July 8th, 1997, which you state in
`
` 18 paragraph 46 of your report?
`
` 19 MR. DeWITT: Objection to form.
`
` 20 A. I ‐‐ as I'm sitting here today, I don't recall
`
` 21 whether the file itself had a ‐‐ had a date. It's ‐‐
`
` 22 it's generally referred to as a, quote, last modified
`
` 23 date, unquote, which is provided by the operating system
`
` 24 when reading the metadata associated with the file that
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` 25 was within the ‐‐ within the collection of files that I
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 100
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` 1 was given access to, as ‐‐ that I alluded to earlier
`
` 2 after the conversation with Mr. Hedloy that we had
`
` 3 discussed earlier.
`
` 4 I don't recall whether I obtained that
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` 5 information from looking at that, quote, last modified
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` 6 date, unquote, or whether I received that information
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` 7 from Mr. Hedloy.
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` 8 Q. (BY MR. UNIKEL) Sitting here today, do you
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 15 of 36 PageID #: 8682
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`EarlSacerdoti_Rough
` 9 recall seeing any metadata that was produced in
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` 10 connection with this particular document that you cite?
`
` 11 A. I just said I don't recall which of those ‐‐
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` 12 which of those two means of being informed about the
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` 13 July 8th, 1997 date associated with that document,
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` 14 whether I merely was ‐‐ whether it was merely Mr. Hedloy
`
` 15 telling me that that was the date or whether ‐‐ whether
`
` 16 I found that date when I looked at the ‐‐ at the file.
`
` 17 Q. With respect to the two test docs that you
`
` 18 then cite in this paragraph 46, do you recall what they
`
` 19 were test docs of?
`
` 20 MR. DeWITT: Objection to form.
`
` 21 A. I don't understand that question.
`
` 22 Q. (BY MR. UNIKEL) Are you familiar with the
`
` 23 name of a product at one time produced by Arendi called
`
` 24 "Postnummer"?
`
` 25 A. I'm familiar with the name. I'm familiar with
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` UNEDITED, UNPROOFREAD, UNCERTIFIED ROUGH DRAFT
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` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 101
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` 1 the fact that Arendi ‐‐ not the ‐‐ not the current
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` 2 Arendi, but some predecessor Arendi to the current
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` 3 business entity that we've generally, so far, been
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` 4 referring to as Arendi, developed as a ‐‐ as a product
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`Case 1:13-cv-00919-LPS Document 260 Filed 01/29/21 Page 16 of 36 PageID #: 8683
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` 5 for sale.
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`EarlSacerdoti_Rough
`
` 6 Q. In the file path names for the test docs that
`
` 7 you have cited in paragraph 46, do you see that ‐‐ the
`
` 8 word "POST," p‐o‐s‐t, appears in the file path names?
`
` 9 A. Yes, I do.
`
` 10 Q. Do you know whether or not the documents you
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` 11 were looking at and citing here were from Postnummer?
`
` 12 A. I'm not sure what you mean by from Postnummer.
`
` 13 Q. Were they as a result of the use of the
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` 14 Postnummer prototype?
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` 15 MR. DeWITT: Objection to form.
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` 16 A. As I've stated here in the report, these were
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` 17 prototypes of the invention disclosed in the
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` 18 specification of the '843 patent. I have no idea
`
` 19 whether, as of the dates of these files, that Mr. Hedloy
`
` 20 had conceived of a specific product with a specific set
`
` 21 of features with a specific name called Postnummer.
`
` 22 Q. (BY MR. UNIKEL) What sorts of ‐‐ did you
`
` 23 recall what was in these test docs that you cite here?
`
` 24 A. Broadly speaking, there was ‐‐ there was ‐‐
`
` 25 there were one or more macros that implemented some of
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`EarlSacerdoti_Rough
` UNCERTIFIED ROUGH DRAFT ‐‐ CONFIDENTIAL 102
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` 1 the functionality that's disclosed in the specification
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` 2 of the '843 patent. I do not recall, as I'm sitting
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` 3 here, what ‐‐ what that might have been.
`
` 4 Q. When you say "some of the functionality,"
`
` 5 what ‐‐ which of the functionality described in the '843
`
` 6 claims did you conclude were disclosed in these test
`
` 7 docs?
`
` 8 A. I'd have to look at those ‐‐ those documents
`
` 9 to answer that question. I just don't recall.
`
` 10 Q. Do you recall what sorts of information were
`
` 11 identified as first information in these prototypes that
`
` 12 you reviewed?
`
` 13 MR. DeWITT: Objection to form.
`
` 14 A. I think I just mentioned that I don't recall
`
` 15 what specific functionality was ‐‐ was in those files.
`
` 16 Q. (BY MR. UNIKEL) Now, in ‐‐ can you look at
`
` 17 paragraph 24 of your report, please.
`
` 18 Let me know when you have that on your screen,
`
` 19 please.
`
` 20 A. I have that before me.
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` 21 Q. In paragraph 24, do you see that the second
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` 22 full sentence says, quote, I understand that the legal
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` 23 definition of conception is a definite and permanent
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`EarlSacerdoti_Rough
` 24 idea of a complete and operative invention, unquote.
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` 25 Do you see that?
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` 1 A. Yes, I do.
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` 2 Q. What does it mean to say "a complete and
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` 3 operative invention"?
`
` 4 A. I believe that ‐‐ answering that question is
`
` 5 a ‐‐ reflects a legal understanding, not a technical
`
` 6 understanding.
`
` 7 Q. What did you do ‐‐ does this still reflect
`
` 8 your understanding, this statement in paragraph 24, by
`
` 9 the way?
`
` 10 A. Yes, it does.
`
` 11 Q. What did you do when evaluating the three
`
` 12 files that you cited in paragraph 46 of your report to
`
` 13 assure that they evidenced a, quote, definite and
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` 14 permanent idea of a complete and operative invention as
`
` 15 its claimed in the '843 patent?
`
` 16 A. I'm trying to ‐‐ I'm trying to look at the
`
` 17 paragraphs around paragraph 46 in the context of this
`
` 18 current one, and in the process of doing that I've
`
` 19 forgotten your question, so please ‐‐
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`EarlSacerdoti_Rough
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` 20 Q. Yes.
`
` 21 A. I apologize, but please repeat your question.
`
` 22 Q. What did you do to determine whether or not
`
` 23 the three files that you cite in paragraph 46
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` 24 demonstrated a definite and permanent idea of the
`
` 25 complete and operative invention claimed in the '843
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` 1 patent when you reviewed those files?
`
` 2 A. I ‐‐ I'll answer that in the context of the
`
` 3 totality of paragraph 24, where I ‐‐ I express further
`
` 4 understandings. Namely, the next sentence says, quote,
`
` 5 I understand an idea is sufficiently definite for
`
` 6 conception when the inventor has a specific settled
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` 7 idea, a particular solution to the problem at hand, and
`
` 8 not just a general goal or research plan he hopes to
`
` 9 pursue. And the following sentence says, quote, I also
`
` 10 under that conception does not require perfection and
`
` 11 that conception is complete when the idea is so clearly
`
` 12 defined in the inventor's mind that only ordinary skill
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` 13 would be necessary to reduce the invention to practice,
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` 14 without extensive research or experimentation.
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`EarlSacerdoti_Rough
` 15 So with ‐‐ with that in mind, I will say that
`
` 16 the ‐‐ the notes ‐‐ the first file that we discussed,
`
` 17 the ‐‐ the note that Mr. Hedloy drafted that essentially
`
` 18 describes the invention that he thought might be
`
` 19 patentable, which he discussed with Mr. Stuedahl, did in
`
` 20 fact look to me like a ‐‐ like Mr. Hedloy had the idea
`
` 21 clearly defined in his mind in such a way that only
`
` 22 ordinary skill would be required to reduce it to
`
` 23 practice, and that it was certainly more than a general
`
` 24 goal and research plan.
`
` 25 The other two files in and of themselves
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` 1 only ‐‐ of themselves only demonstrate initial steps
`
` 2 toward a full reduction to practice.
`
` 3 And as I believe I describe elsewhere in
`
` 4 paragraphs 47 through 49 of my report, there were
`
` 5 further files with later, quote, last modified dates,
`
` 6 unquote, that in my view as a ‐‐ as an expert clearly
`
` 7 built upon the code that I viewed that was embedded
`
` 8 within the two other word documents to show progression
`
` 9 toward the full implementation of the ideas as expressed
`
` 10 in that initial set of notes of ‐‐ that were with the
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`EarlSacerdoti_Rough
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` 11 content of the first file.
`
` 12 Q. Just so I understand, in the note that you
`
` 13 cite in paragraph 46, did it make clear that the input
`
` 14 device needed to be configured by the first computer
`
` 15 program?
`
` 16 A. As I mentioned, I do not ‐‐ do not read
`
` 17 Norwegian. I can't directly answer your question based
`
` 18 on the ‐‐ based on the exhibit you've presented to me,
`
` 19 the ‐‐ I forget which exhibit number it is, but it's one
`
` 20 that's in Norwegian. So I can't answer that question as
`
` 21 I'm sitting here today.
`
` 22 Q. Do you recall analyzing ‐‐
`
` 23 A. Excuse me, let me interrupt and just ask
`
` 24 that ‐‐ note that it's about ten minutes to 1:00 my time
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` 25 and at some time fairly soon ‐‐ I'm happy to go to the
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` 1 end of this particular conversation, but at some point
`
` 2 soon, I'd like to take a longer break and have some
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` 3 lunch.
`
` 4 Q. That's fine. As soon as we are done with this
`
` 5 line, I'll be happy to do that.
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`EarlSacerdoti_Rough
` 6 A. Thank you.
`
` 7 Q. So do you recall analyzing the note to
`
` 8 determine ‐‐ when you were reviewing it for purposes of
`
` 9 your report, to determine whether or not it disclosed
`
` 10 any input device that was configured by the first
`
` 11 computer program?
`
` 12 A. I recall assessing that note to ‐‐ to
`
` 13 determine if it met the criteria that I had described
`
` 14 previously that I mentioned in that paragraph 24 that we
`
` 15 discussed a number of minutes ago.
`
` 16 I did not attempt to do an element by element
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` 17 claims analysis of the information in that note.
`
` 18 Q. So just to be clear, as just one example, you
`
` 19 did not do an analysis to determine whether or not the
`
` 20 note in fact disclosed providing an input device
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` 21 configured by the first computer program; is that
`
` 22 correct?
`
` 23 A. As I've ‐‐ yes, as I just stated I did not
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` 24 perform a claims analysis. I ‐‐ I performed an analysis
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` 25 to determine that the idea of the invention was clearly
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` 1 in Mr. Hedloy's mind, at least as laid out generally in
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`EarlSacerdoti_Rough
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` 2 that note, which, again, is ‐‐ not again. It's ‐‐
`
` 3 that's a language of description of the ‐‐ of the idea
`
` 4 that he had and doesn't reflect his actual
`
` 5 implementation which had only begun as of, I believe,
`
` 6 the beginning date ‐‐ the earliest date that we ‐‐ that
`
` 7 I saw any latest modified date was July 6, 1997.
`
` 8 Q. But, sir, you told me earlier that every
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` 9 element that is set forth in the patent claim is
`
` 10 important to the idea of the invention; is that correct?
`
` 11 MR. DeWITT: Objection to form.
`
` 12 A. My understanding is that for the invention to
`
` 13 be practiced, every claim ‐‐ every element of that
`
` 14 claim ‐‐ the claim in its totality must be practiced.
`
` 15 Q. (BY MR. UNIKEL) And so for the idea of the
`
` 16 invention, not just a random idea, but the idea of the
`
` 17 invention to be formed, that idea must have the elements
`
` 18 that are set forth in the eventual claim. Don't you
`
` 19 agree?
`
` 20 A. This is ‐‐ this is verging if not over the
`
` 21 line into a legal analysis, but as a nonlegal
`
` 22 professional, I would agree in general, yes.
`
` 23 Q. And so ‐‐ sorry, please, I didn't mean to
`
` 24 interrupt.
`
` 25 A. No, go ahead, please ask your question.
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` 1 Q. And I was going to say
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