239
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
` APPLE INC.,
` Petitioner,
` v.
` SMARTFLASH LLC,
` Patent Owner.
` _____________________
` Case CBM2014-00102
` Patent 8,118,221 B2
` Case CBM2014-00106
` Patent 8,033,458 B2
` Case CBM2014-00108
` Patent 8,061,598 B2
` Case CBM2014-00112
` Patent 7,942,317 B2
`
` VIDEOTAPED DEPOSITION OF
` ANTHONY J. WECHSELBERGER
` DECEMBER 11, 2014
` 8:35 a.m.
`
`REPORTED BY:
`PAUL J. FREDERICKSON, CCR, CSR
`JOB NO. 36913
`
`Apple Exhibit 1030
`Apple Inc. v. Smartflash LLC
`CBM2014-00108
`Page 00001
`
`

`

`240
`
`242
`
`1
` I N D E X
`2 ANTHONY J. WECHSELBERGER
`3
` By Mr. Casey: 244, 374
`4
` By Ms. Robinson: 371
`
`Request for information: None
`Request for documents: None
`
` INDEX TO EXHIBITS
`10 All Exhibits premarked
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`243
`
`1
` WECHSELBERGER
`2
` DECEMBER 11, 2014
`3
` [8:34 a.m.]
`4
` THE VIDEOGRAPHER: On the record.
`5
` This begins the video deposition of Anthony
`6 Wechselberger in the matter of Apple Inc. versus
`7
`Smartflash LLC in the United States Patent and
`8
`Trademark Office before the Patent Trial and Appeal
`9
`Board.
`10
` This deposition is being held at Ropes &
`11
`Gray, 1900 University Avenue, 6th Floor, East Palo
`12
`Alto, California on December 11, 2014. The time is
`13
`8:35 a.m.
`14
` My name is Lou Meadows from the firm of David
`15
`Feldman Worldwide and I am the legal video
`16
`specialist. The court reporter is Paul
`17
`Frederickson.
`18
` Counsel, would you please introduce
`19
`yourselves for record?
`20
` MS. ROBINSON: I'm Lauren Robinson from
`21
`the firm of Ropes & Gray here on behalf of Apple.
`22
`Here with me is my colleague Brian Matty.
`23
` MR. CASEY: Michael Casey representing
`24
`patent owner Smartflash LLC.
`25
` THE VIDEOGRAPHER: Thank you.
`2 (Pages 240 to 243)
`
`56
`
`7
`
`89
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` A P P E A R A N C E S
`FOR THE PATENT OWNER:
` DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
` 4300 Wilson Blvd.
` 7th Floor
` Arlington, VA 22203
` BY: MICHAEL R. CASEY, Ph.D., ESQ.
` mcasey@dbjg.com
`
`FOR THE PATENT OWNER:
` CALDWELL CASSADY CURRY
` 2101 Cedar Springs Rd.
` Suite 1000
` Dallas, TX 75201
` BY: BRADLEY W. CALDWELL, ESQ.
` bcaldwell@caldwellcc.com
`
`FOR THE PETITIONER:
` ROPES & GRAY, LLP
` 1900 University Avenue
` 6th Floor
` East Palo Alto, CA 94303-2284
` BY: LAUREN N. ROBINSON, ESQ.
` Lauren.Robinson@ropesgray.com
`
`
`241
`
`1
`FOR THE PETITIONER:
`2
` ROPES & GRAY, LLP
`3
` 1211 Avenue of the Americas
`4
` New York, NY 10036-8704
`5
` 212.596.9000
`6
` BY: BRIAN D. MATTY, ESQ.
`7
` Patent Agent
`8
` brian.Matty@ropesgray.com
`9 ALSO PRESENT:
`10
` JEFREE ANDERSON
`11
` Videographer
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Page 00002
`
`

`

`332
`
`334
`
`1
` WECHSELBERGER
`2
`thought that there was a need for inexpensive
`3
`distribution of media content to users, would you
`4
`have said you thought there was?
`5
` MS. ROBINSON: Objection to form.
`6
` A. The question again, please?
`7
` Q. If I had asked you in 1999 if you
`8
`thought that there was a need for inexpensive
`9
`distribution of media content to users, would you
`10
`have said you thought there was?
`11
` A. Yes.
`12
` MS. ROBINSON: Just so the record is
`13
`clear. I know you reread the question. My
`14
`objection stood along with the rereading.
`15
`BY MR. CASEY:
`16
` Q. Are you aware of any commercial
`17
`implementations of the Stefik architecture?
`18
` A. It's my understanding that significant
`19
`portions or maybe complete portions of the Stefik
`20
`architecture are embodied in some commercial
`21
`initiatives that the current owner of that
`22
`technology, ContentGuard, is -- is a part of.
`23
` Reminding us of the questions you and I
`24
`discussed yesterday about initiatives, and I
`25 mentioned ContentGuard and InterTrust, that were
`333
`
`1
` WECHSELBERGER
`2
` Q. Are you aware of any commercial
`3
`implementations of the Ginter architecture, of the
`4 Ginter patent?
`5
` A. It's really the same answer as I -- as I
`6
`intimated a minute ago -- well, I didn't say that.
`7
`But ContentGuard and InterTrust are two of the 900
`8
`pound gorillas in this space, DRM space generally,
`9
`and they are -- and they have both been part of
`10
`industry initiatives to push DRM technologies
`11
`forward that revolve to some extent or another
`12
`around their respective technology architectures,
`13
`which are quite similar but -- and beyond that I
`14
`don't know any further commercial or participant
`15
`details.
`16
` Q. Are you aware of the Apple iTunes
`17
`system?
`18
` MS. ROBINSON: Objection to form and
`19
`outside the scope of the testimony that we agree
`20
`he's here to provide today.
`21
` MR. CASEY: It goes to whether or not
`22
`the -- the software embodied in the system is
`23
`commercially successful.
`24
` MS. ROBINSON: I stand by my objection.
`25
` MR. CASEY: Are you instructing him not
`335
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
`part of industry initiatives to develop or
`standardize around DRM infrastructures or processes.
`And that's what I'm thinking about in responding to
`the question just now.
` Q. So what commercial implementations of
`the Stefik architecture are you aware of?
` A. I am not aware of any specific
`implementations, only of the fact that there are
`initiatives, meaning industry consortia. So
`consortia of entities which have collaborated to
`work together to generate industry backing for doing
`certain DRM functions in certain ways.
` And I am -- and I am aware that ContentGuard
`as an entity has been part of one or more of those,
`as has InterTrust. And that's all I'm -- that's as
`good as I can do for you today without going and
`studying it.
` Q. Do you know who were part of the
`consortia that ContentGuard is a member of?
` A. Not off -- not without researching it.
`Not off-the-cuff.
` Q. You don't know any of the members?
` A. I think Time Warner is aligned with
`ContentGuard in one of those.
`
` WECHSELBERGER
`to answer?
` MS. ROBINSON: No, I'm objecting as to
`the scope of the question and the form.
` MR. CASEY: You can answer the question.
` A. The question was, am I aware of the
`iTunes system?
` Q. Yes.
` A. What do you mean by "aware"?
` Q. Do you know how it operates?
` MS. ROBINSON: The same objections.
` A. I -- I believe it's correct to say I
`have as a result of my work on this case, not the
`CBMs but the litigation between Smartflash and
`Apple, that I have become pretty well aware but not
`totally intimate with how the iTunes system
`functions. I'm aware enough about it to have
`provided in the litigation side opinions about
`infringement versus noninfringement.
` Q. Are you aware of how the App Store by
`Apple operates?
` MS. ROBINSON: Again, objection to form
`and the scope of this question being included.
` A. I am aware enough about how that store
`operates, again, to allow me to have been -- to have
`25 (Pages 332 to 335)
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 00003
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`336
`
`338
`
` WECHSELBERGER
`provided opinions on infringement in the litigation
`between Apple and Smartflash.
` Q. Are you aware of how in app purchases
`work for applications that utilize the App Store?
` MS. ROBINSON: The same objections.
` A. And I'll give you the same answer. I
`have learned enough about that function to have
`provided opinions about it in my work on the
`litigation side of the case.
` But I would also add for all three of the
`questions that in preparation for yesterday and
`today, and working with -- to defend my CBM
`declarations, which are not associated with any of
`those iTunes questions, or iTunes store's functions,
`I have spent months since I've opened the cover on
`that stuff, and I did not -- did not bone up on it
`in preparation for this deposition.
` So when I said I am aware enough to have
`provided opinions for purposes of noninfringement,
`I'm not in a state of mental acuteness to defend
`those or provide those same opinions today because I
`just haven't done my homework yet or again.
` Q. Well, let's wait and see what the
`questions are.
`
`337
`
`1
` WECHSELBERGER
`2
`in addition to that.
`3
` If you intend to pass this document forward
`4
`and then ask him about his declarations and not this
`5
`document, let me know.
`6
` But if you intend to ask him about this
`7
`document that you just passed us, then I want to get
`8
`on the phone with the board.
`9
` MR. CASEY: Okay.
`10
` MS. ROBINSON: All right.
`11
` MR. CASEY: Do you have a speakerphone?
`12
` MS. ROBINSON: There should be one,
`13
`yeah, that way.
`14
` MR. CASEY: It's going to be hard for
`15
`the court reporter to hear.
`16
` MS. ROBINSON: Yeah, I think it actually
`17
`gets mic'd up through --
`18
` [Pause.]
`19
` MS. ROBINSON: Bear with me for one
`20 moment. We have accumulated quite an allotment of
`21
`paper over the last couple of days.
`22
` MR. CASEY: I'm just trying to see if I
`23
`can find that number for you.
`24
` MS. ROBINSON: So I think it's the --
`25
`the 571.272.7822. Is that the one you would say it
`339
`
` WECHSELBERGER
` I'm going to hand you what's been premarked
`as --
` MS. ROBINSON: So, counsel, before we
`get into this, you know, our position is that this
`is an inappropriate topic for the deposition today.
`I -- I'm willing to jump on the phone with the
`board.
` I understand that you all sought discovery
`into Apple's iTunes and were denied that. So, you
`know, if you -- if you want to -- I mean, it looks
`like what you handed me is, you know, an Apple
`technological document of some type. And if you
`want to persist in asking these questions, we're
`going to need to get on the phone with the board and
`get the board's permission to go forward, because
`our position is not this is appropriate to do this
`in the scope of this depo.
` MR. CASEY: Let's get on the phone.
` MS. ROBINSON: All right.
` MR. CASEY: You haven't heard a single
`question, and you're -- you're saying that you want
`to get on the phone.
` But your hanging. Go ahead.
` MS. ROBINSON: So here's what I'll say
`
` WECHSELBERGER
`is?
` MR. CASEY: That -- I'm still looking.
` MS. ROBINSON: Okay.
` MR. CASEY: That actually sounds right
`but --
` [Discussion off the record.]
` THE COURT REPORTER: Did you want to
`stay on the record or --
` MR. CASEY: I was going to say we can
`excuse the witness for the moment and --
` MS. ROBINSON: Yes. We can just go off
`while this gets straightened out.
` MR. CASEY: We can go off the video
`record, and then if you have no objection, we are
`going to need probably the -- the call with the
`judge to be transcribed.
` So --
` MS. ROBINSON: Yep. Agreed.
` THE VIDEOGRAPHER: Off the video record.
`The time is 1:51 p.m.
` [Phone ringing.]
` [Preliminary discussion answering phone.]
` MS. ROBINSON: I'm calling from the
`videoconference system. So I'm an attorney here
`26 (Pages 336 to 339)
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 00004
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`340
`
`342
`
` WECHSELBERGER
`with my opposing counsel, and we're counsel on some
`covered business method petitions in front of the
`PTAB, and we just had a -- we're in a deposition and
`had a dispute we wanted to raise to the board. I'm
`not sure the right protocol, but can you forward us
`to somewhere where we need to be?
` JUDGE McCULLOUGH: Okay. So you're in a
`deposition with the CBM number. Let me get that for
`the judge.
` MS. ROBINSON: Okay. So it's quite a
`few. It's CBM2014 102 and 103, 106, 107 --
` JUDGE McCULLOUGH: Wait a minute. I
`have to see who the judges are.
` MS. ROBINSON: Okay.
` JUDGE McCULLOUGH: Hold on for a second.
` [Pause.]
` JUDGE McCULLOUGH: Okay. The judge is
`actually gone for the day.
` MS. ROBINSON: Okay.
` JUDGE McCULLOUGH: The lead judge, she's
`not available.
` MS. ROBINSON: Okay.
` JUDGE McCULLOUGH: And could you send an
`email and maybe I could see? Or do you have to do
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
` MS. ROBINSON: Thanks so much.
` [Pause.]
` JUDGE McCULLOUGH: Hello, ma'am.
` MS. ROBINSON: Yes?
` JUDGE McCULLOUGH: Okay. I'm still
`checking.
` MS. ROBINSON: Thank you.
` JUDGE McCULLOUGH: No one is available,
`so I'm just sending an email and trying to get an
`email back. I will probably have to give you a dial
`in number. Okay? But I'm just waiting for someone
`to respond. Okay?
` MS. ROBINSON: Thank you for your help.
` JUDGE McCULLOUGH: You're welcome.
` [Pause.]
` JUDGE McCULLOUGH: Hello, ma'am.
` MS. ROBINSON: Yes.
` JUDGE McCULLOUGH: Okay. Let me
`transfer you to judge McCullough.
` MS. ROBINSON: Okay. Sorry, go ahead.
` JUDGE McCULLOUGH: And he'll help you
`out. I mean, he'll talk to you. Okay?
` MS. ROBINSON: Okay. Thank you very
`much.
`
`341
`
`343
`
` WECHSELBERGER
`this today right now?
` MS. ROBINSON: Yeah. The issue is that
`we're in the deposition with the witness, looking to
`get a resolution on whether, you know, certain
`topics can be covered in the deposition.
` Are any of the other judges available? I
`know there's Elluru, Powell, Plenzler and Clements.
` JUDGE McCULLOUGH: Right. I'm trying to
`see if Bisk is available.
` MS. ROBINSON: Thank you so much.
` JUDGE McCULLOUGH: Powell, Bisk.
` MS. ROBINSON: Yeah, Powell, Bisk,
`Elluru, Plenzler, and Clements.
` JUDGE McCULLOUGH: Right.
` Hold on, please.
` MS. ROBINSON: Yes.
` [Pause.]
` JUDGE McCULLOUGH: Okay. CBM 2014 102?
` MS. ROBINSON: Yep. 2014 102, 103, 106,
`107, 108, 109, and 111, 112 -- or, sorry, 112, 113.
` JUDGE McCULLOUGH: 112, 113.
` MS. ROBINSON: Yeah.
` JUDGE McCULLOUGH: Okay. Hold on,
`please.
`
`1
` WECHSELBERGER
`2
` JUDGE McCULLOUGH: That's the only judge
`3
`I could get in contact with.
`4
` MS. ROBINSON: Understand.
`5
` JUDGE McCULLOUGH: Let me transfer you.
`6
` MS. ROBINSON: Understood.
`7
` JUDGE McCULLOUGH: And if he doesn't
`8
`pick up, you call this number again. I'm waiting to
`9 make sure that the call goes through. Okay? So if
`10
`he doesn't pick up, call back the 7822 number. All
`11
`right?
`12
` MS. ROBINSON: Okay. If it's easier, I
`13
`can also give you a call back number for us.
`14
` JUDGE McCULLOUGH: Okay. What is your
`15
`call back number?
`16
` MS. ROBINSON: It's 605.617.4793.
`17
` JUDGE McCULLOUGH: 4793?
`18
` MS. ROBINSON: Yes.
`19
` JUDGE McCULLOUGH: Okay. I'll transfer
`20
`you now, ma'am. Okay?
`21
` MS. ROBINSON: Thanks so much.
`22
` JUDGE McCULLOUGH: This is Judge
`23 McCullough.
`24
` MS. ROBINSON: Your Honor, thanks for
`25
`getting on the phone with us.
`27 (Pages 340 to 343)
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Page 00005
`
`

`

`344
`
`346
`
`1
` WECHSELBERGER
`2
` This is Lauren Robinson from Ropes & Gray
`3
`representing Apple, and I'm here with --
`4
` MR. CASEY: Michael Casey, from
`5
`Davidson Berquist, representing the patent owner
`6
`Smartflash, your Honor.
`7
` MS. ROBINSON: And we're calling from
`8
`the deposition of Apple's expert, Anthony
`9 Wechselberger.
`10
` Do you have the CBM numbers or can I give
`11
`them to you?
`12
` JUDGE McCULLOUGH: These are 2014 cases?
`13
` MS. ROBINSON: Yes.
`14
` JUDGE McCULLOUGH: Yes, I have them.
`15
` MS. ROBINSON: Okay.
`16
` And the court reporter is also -- also on and
`17
`transcribing the call.
`18
` JUDGE McCULLOUGH: Very good.
`19
` MS. ROBINSON: So we're calling because
`20
`Apple's objecting to the scope of -- the scope of
`21
`questions being asked.
`22
` Mr. Wechselberger has opined on invalidity
`23
`using prior art, and the questions are directed now
`24
`to the workings of Apple's products, which
`25 Mr. Wechselberger has not opined on in these
`
`1
` WECHSELBERGER
`2
` MS. ROBINSON: Your Honor, may I respond
`3
`very briefly?
`4
` JUDGE McCULLOUGH: Go ahead.
`5
` MS. ROBINSON: So I guess I would add
`6
`that, you know, Mr. Casey mentioned the question has
`7
`arisen whether Apple practices these claims. That
`8
`question has not arisen in connection with
`9 Mr. Wechselberger's declarations that he's being
`10
`deposed about here today.
`11
` Obviously, there's a related litigation going
`12
`forward. But Smartflash has already sought
`13
`discovery into Apple's accused products earlier in
`14
`these proceedings, and the judge has ruled that that
`15
`was not going to be allowed at that time.
`16
` And so our position is that the question has
`17
`not arisen in connection with this deposition such
`18
`as to make this line of questioning appropriate.
`19
` JUDGE McCULLOUGH: Okay.
`20
` Mr. Casey, anything further to say?
`21
` MR. CASEY: Just to make sure, your
`22
`Honor, the request that patent owner previously made
`23
`was a request for additional documents, and we do
`24
`understand that that was denied pending proof that
`25
`there is additional information.
`
`345
`
`347
`
`1
` WECHSELBERGER
`2
`proceedings, nor has he opined on secondary
`3
`considerations in the declarations that are being
`4
`asked about today, such that that could be used as a
`5
`hook as -- as I understand. I won't speak for
`6 Mr. Casey, but that's what I understand Smartflash's
`7
`position to be right now.
`8
` And so we wanted to raise this with the board
`9
`to -- to stop this testimony from occurring at this
`10
`time.
`11
` JUDGE McCULLOUGH: Okay.
`12
` And Mr. Casey.
`13
` MR. CASEY: Your Honor, the question has
`14
`arisen as to whether or not the Apple products are
`15
`embodiments of the -- of the claimed invention.
`16
` The witness has already said that he has
`17
`provided expert reports in the corresponding
`18
`litigation. And, frankly, I haven't been allowed to
`19
`ask even a single question about a public document.
`20
`I think it's improper. It's an attempt to block
`21
`the -- the analysis, even the receipt of relevant
`22
`information related to commercial success.
`23
` The fact that the expert hasn't opined on it
`24
`doesn't make it not relevant. It's still relevant
`25
`to the question of commercial success.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
` And right now we're only asking not about
`documents that -- that we've asked for but documents
`that were already in our possession that were not
`the subject of the previous request for additional
`documents.
` So I think that to the extent that this is
`relevant information or even -- even is intended to
`find other relevant information, it's relevant to
`the case and should be allowed.
` As I said, I haven't been allowed to ask a
`single question. So I don't know how counsel can
`know that the questions are objectionable yet.
` JUDGE McCULLOUGH: Well, I assume
`there's no dispute about whether the questions are
`going to be directed to whether Apple -- the Apple
`product embodied the claims in the patent.
` Are those the kind of questions you intend to
`ask?
` MR. CASEY: I intend to ask whether or
`not the Apple products operate in a particular way,
`yes, your Honor, but consistent with the documents
`that describe how they're -- how they're
`described -- documents that describe how the Apple
`system works.
`
`28 (Pages 344 to 347)
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Page 00006
`
`

`

`348
`
`350
`
`1
` WECHSELBERGER
`2
` JUDGE McCULLOUGH: Okay.
`3
` And forgive me because I don't have the
`4
`docket in front of me at the moment. But we haven't
`5
`yet -- we haven't yet gotten to the stage of a
`6
`patent owner response yet. Correct? So you're I
`7
`think gathering evidence for what may become a
`8
`commercial success argument in your patent owner
`9
`response?
`10
` MR. CASEY: Yes, your Honor.
`11
` JUDGE McCULLOUGH: Okay.
`12
` Well, I'll tell you, the board when it comes
`13
`to commercial success arguments that depend on
`14
`competitors -- not even a competitor but an opposing
`15
`party's product embodying the claim, our issue with
`16
`that is that it essentially requires us to have a
`17 mini trial on infringement within what is supposed
`18
`to be a streamlined proceeding dealing only with
`19
`invalidity.
`20
` So if you look at, you know, past board
`21
`decisions on this issue, you'll find that we -- we
`22
`typically don't allow discovery into these types of
`23
`infringement issues, because there's just no way to
`24
`-- you know, once you open the door to this, it's
`25
`just -- there's no way to keep the proceedings
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
`proceeding?
` JUDGE McCULLOUGH: Not the entire
`proceeding.
` I'm talking about -- let's see.
` There's another judge that's available to
`join with me. Let me give her the opportunity to do
`that.
` Before we proceed any further, let me just
`conference her in real quickly. Hold on one second.
` [Pause.]
` JUDGE McCULLOUGH: Okay. Do I still
`have counsel for petitioner?
` MS. ROBINSON: Yes.
` JUDGE McCULLOUGH: Okay. Counsel for
`patent owner?
` MR. CASEY: Yes.
` JUDGE McCULLOUGH: Okay.
` And with me on the line is Judge Bisk.
` So as I was saying, I won't tell you not to
`ask questions. But I'm going to authorize
`petitioner to file a motion. If the panel is
`persuaded that the line of questioning is outside
`the scope of the proceeding, then we will impose --
`we will hold patent owner responsible for the fees
`
`349
`
`351
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
`streamlined, focused on the issues at hand.
` So I guess the question is: How do we
`proceed in the deposition here?
` I don't have any other panel members here on
`the phone to confer with, but my inclination is
`that, rather than make the call for you, I might
`allow you to -- to ask the questions you want to ask
`with the understanding that petitioner is going to
`have an opportunity to essentially move for -- move
`for attorney costs and fees associated with this
`deposition, if they persuade us that this line of
`questioning was beyond the scope of the petition and
`really beyond the scope of the proceedings.
` So I'm not telling you what to do but I'm
`telling you that if you proceed down this path and
`petitioner files a motion for costs, and the panel
`hears that and is persuaded, you may have to pay the
`attorney's fees and all the other costs associated
`with the deposition today.
` MR. CASEY: Your Honor, this is the
`second day of two days of depositions, and we're
`just arriving at this subject.
` Are you saying that patent owner is going to
`be responsible for costs of the -- the entire
`
` WECHSELBERGER
`associated with the deposition. Not the entire
`proceeding but the deposition.
` In addition, if we're persuaded that the line
`of questioning is outside the scope of the
`proceeding, we will strike all the questions and
`answers that weren't relevant from the transcript so
`that they don't remain in the proceeding.
` Are there any questions from either party
`about that?
` MR. CASEY: Yes, your Honor. This is
`patent owner.
` I don't understand how you're defining what
`the relevant issue is, if we haven't even yet gotten
`to the -- to the issue of whether or not they're --
`they're practicing this -- this method. I guess I'm
`having a hard time understanding what it is you're
`saying I can and cannot ask questions on. Or -- or
`what kinds of questions I can ask only at my own
`peril.
` JUDGE McCULLOUGH: The issue is that
`when you make a commercial success argument that's
`predicated on the operation of petitioner's product,
`any sort of findings with respect to that argument
`is going to require you us to get into infringement.
`29 (Pages 348 to 351)
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 00007
`
`

`

`352
`
`354
`
`1
` WECHSELBERGER
`2
`It's going to require us to have a mini trial on
`3
`infringement within what is supposed to be a
`4
`streamlined proceeding focused on invalidity.
`5
` MR. CASEY: It is a factor. It is a
`6
`secondary consideration of non-obviousness, your
`7
`honor.
`8
` JUDGE McCULLOUGH: Commercial success
`9
`is, yes. Commercial success of your -- of the other
`10
`party's product, not necessarily.
`11
` I mean, if you have commercial success
`12
`evidence related to your own products, certainly
`13
`that is evidence that can come in and that's
`14
`evidence that the board would certainly hear.
`15
` MR. CASEY: Okay, your Honor.
`16
` I guess I'm going to have to move forward at
`17 my peril, I think. I don't -- I don't think that
`18
`there is any case law that says that commercial
`19
`success can't be of the accused product. That would
`20
`essentially vitiate the ability for -- for patentees
`21
`who are not manufacturers to prove commercial
`22
`success.
`23
` JUDGE McCULLOUGH: And to be clear, I'm
`24
`not saying that the case law precludes a finding of
`25
`commercial success based on other parties' products
`353
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
` MS. ROBINSON: I do have sort of a
`logistical question, if I may, and you can refuse to
`answer if it's not appropriate at this time.
` But, you know, we're dealing here with a
`witness who has been obviously working on litigation
`and has provided noninfringement opinions there, and
`as a result has been exposed to Apple confidential
`information.
` I understand the board's preference is
`generally not to mark sections of a transcript
`confidential. But nonetheless, I was hoping to seek
`some guidance from you all as to whether you would
`consider it appropriate for me to seek to have any
`portions of the transcript dealing with the
`operation of Apple's products marked Confidential or
`otherwise sealed in this matter.
` JUDGE McCULLOUGH: Yes.
` So if the questioning elicits Apple
`confidential information, then any public version of
`the transcript should be marked as redacted and the
`confidential version of the transcript should be
`uploaded to parties only. And you can file a motion
`to seal.
` And I don't know whether there's been a
`
`355
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
`in all cases.
` What I'm saying is that in these proceedings,
`in order to expedite them, keep them streamlined and
`cost effective, the board does not like to get into
`the issue of whether petitioner's product infringes
`the claims and thereby supports a claim for
`commercial success.
` MR. CASEY: Wouldn't the board have to
`do the same type of analysis if it was patent
`owner's own product?
` JUDGE McCULLOUGH: If patent -- if
`patent owner presents evidence about its own
`product, that's evidence that the board does
`typically hear and will consider. That's also
`evidence over which patent owner has control and
`doesn't need to seek additional discovery.
` MR. CASEY: Okay, your Honor. I -- I
`guess I hear you. But I -- I don't know that I have
`any additional guidance as to the scope of what I --
`what I should or shouldn't do. But patent owner
`will have to move forward at its own peril at this
`point, I guess.
` JUDGE McCULLOUGH: Ms. Robinson, any
`questions on your end?
`
` WECHSELBERGER
`protective order entered in this case or not. But
`if not, you can file a protective order.
` MS. ROBINSON: Thank you, your honor.
` JUDGE McCULLOUGH: Mr. Casey, just to
`follow up on one thing.
` If there had been a previous finding of
`infringement, that's something that the board always
`takes into consideration. What we don't like to do
`is to get into the issue all within the 12 month
`time frame of our proceeding here.
` MR. CASEY: Yes, your Honor, I
`understand.
` But as I said, I don't see the difference
`between a patent owner being able to present
`evidence of commercial success of its own product in
`that 12 month time period versus it being able to
`present evidence of a competitor's product or the
`petitioner's product in that same time period.
` So therein lies my confusion as to the
`rationale for preventing this evidence to be taken
`or even the chilling effect of threatening counsel
`with sanctions if they seek information which may be
`relevant to an issue in the case.
` JUDGE McCULLOUGH: Well, I hear your
`30 (Pages 352 to 355)
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 00008
`
`

`

`356
`
`358
`
` WECHSELBERGER
`pursuant to the foregoing discussion was redacted
`from this transcript and is contained in a separate
`transcript, per agreement of counsel.]
`
`379
`
`1
`2
`3
`4
`
`56789
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` WECHSELBERGER
`point. I think I have answered it. I think we're
`retreading old ground again.
` Are there any additional issues that the
`parties want to discuss before we adjourn?
` MS. ROBINSON: There are none from the
`petitioner.
` MR. CASEY: None from patent owner, your
`Honor.
` JUDGE McCULLOUGH: Okay. Very good.
`Thank you all.
` MS. ROBINSON: Thank you.
` MR. CASEY: Okay.
` [Discussion off the record.]
` [Recess.]
` [Resuming at 2:33 p.m.]
` THE VIDEOGRAPHER: On the record. This
`marks the beginning of volume 2, DVD 4 in the
`deposition of Anthony Wechselberger on December 11,
`2014. The time is 2:34 p.m.
` Please continue.
` MR. CASEY:
` So we just had a conference call with the
`Patent Trial and Appeal Board, and the Patent Trial
`and Appeal Board