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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` ___________
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ___________
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` APPLE, INC.,
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` Petitioner,
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` v.
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` SMARTFLASH LLC,
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` Patent Owner.
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` ___________
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` Case CBM2015-00121 (Patent 8,794,516)
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` Case CMB2015-00123 (Patent 8,033,458 B2)
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` Case CMB2015-00124 (Patent 7,942,317 B2)
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` Case CMB2015-00127 (Patent 7,334,720 B2)
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` Case CMB2015-00130 (Patent 8,118,221 B2)
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` Case CMB2015-00131 (Patent 8,061,598 B2)
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` Case CMB2015-00133 (Patent 8,336,772 B2)
`
` ___________
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` DEPOSITION OF JOHN P.J. KELLY, Ph.D.
`
` EAST PALO ALTO, California
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` WEDNESDAY, FEBRUARY 3, 2016
`
` 9:06 A.M.
`
`JOB NO. 10754
`
`PAGES 1 - 220
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`Reported by: Carrie Hewerdine, RDR, CSR, CCR
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`Smart(cid:71)lash - Exhibit 2108
`Apple v. Smartflash
`CBM2015-00121
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` ___________
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ___________
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` APPLE, INC.,
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` Petitioner,
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` v.
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` SMARTFLASH LLC,
`
` Patent Owner.
`
` ___________
`
` Case CBM2015-00121 (Patent 8,794,516)
`
` Case CMB2015-00123 (Patent 8,033,458 B2)
`
` Case CMB2015-00124 (Patent 7,942,317 B2)
`
` Case CMB2015-00127 (Patent 7,334,720 B2)
`
` Case CMB2015-00130 (Patent 8,118,221 B2)
`
` Case CMB2015-00131 (Patent 8,061,598 B2)
`
` Case CMB2015-00133 (Patent 8,336,772 B2)
`
` ___________
`
` DEPOSITION OF JOHN P.J. KELLY, Ph.D.
`
` EAST PALO ALTO, California
`
` WEDNESDAY, FEBRUARY 3, 2016
`
` 9:06 A.M.
`
`JOB NO. 10754
`
`PAGES 1 - 220
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`Reported by: Carrie Hewerdine, RDR, CSR, CCR
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`Smart(cid:71)lash - Exhibit 2108
`Apple v. Smartflash
`CBM2015-00121
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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` Deposition of JOHN P.J. KELLY, Ph.D., held
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`2
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`at the offices of:
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` ROPES & GRAY LLP
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` 1900 University Avenue, 6th Floor
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` East Palo Alto, California 94303
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` (650) 617-4000
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` Pursuant to Notice, before
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`Carrie Hewerdine, Registered Diplomate Reporter,
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`California Certified Shorthand Reporter #4579,
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`Nevada Certified Court Reporter #820, Arizona
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`Certified Shorthand Reporter, Certified LiveNote
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`Reporter.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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` A P P E A R A N C E S
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`FOR THE PATENT OWNER:
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`3
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` DAVIDSON BERQUIST JACKSON & GOWDEY
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` BY: MICHAEL R. CASEY, Ph.D.
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` 8300 Greensboro Drive, Suite 500
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` McLean, Virginia 22102
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` (571) 765-7700
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` mcasey@dbjg.com
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`FOR THE PETITIONER:
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` ROPES & GRAY LLP
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` BY: MEGAN F. RAYMOND
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` 1900 University Avenue, 6th Floor
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` East Palo Alto, California 94303
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` (650) 617-4000
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` meganraymond@ropesgray.com
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`ALSO PRESENT:
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`JOE MOURGOS, Videographer
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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` EXAMINATION INDEX
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`JOHN P.J. KELLY, Ph.D.
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` By Mr. Casey
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`4
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` PAGE
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` 6
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` PREVIOUSLY MARKED EXHIBITS REFERRED TO
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`EXHIBIT 1001 ('121 patent)
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`EXHIBIT 1020 ('123 patent)
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` Page 47
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` Page 195
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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` WEDNESDAY, FEBRUARY 3, 2016; 9:06 A.M.
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`5
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` THE VIDEOGRAPHER: Here begins
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`Video Number 1 in the video-taped deposition of
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`Dr. John P.J. Kelly in the matter of Apple,
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`Incorporated versus Smartflash LLC in the
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`U.S. Patent and Trademark Office before the Patent
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`Trial and Appeal Board. The Case Number is
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`CBM-2015-00131.
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` Today's date is February 3rd, 2016, and
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`the time on the video monitor is 9:06 a.m.
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` The videographer today is Joseph Mourgos
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`representing Planet Depos. This video deposition
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`is taking place at 1900 University Avenue,
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`Sixth floor, East Palo Alto, California.
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` Would counsel please voice identify
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`yourselves and state whom you represent.
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` MS. RAYMOND: Megan Raymond at Ropes &
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`Gray for Apple, Inc.
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` MR. CASEY: Michael Casey of Davidson,
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`Berquist, Jackson & Gowdey representing Patent
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`Owner Smartflash, LLC.
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` THE VIDEOGRAPHER: Thank you.
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` The court reporter today is
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`Carrie Hewerdine representing Planet Depos.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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` Would the reporter please administer the
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`oath.
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` THE REPORTER: Would you raise your right
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`hand, please.
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`6
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` DR. JOHN P.J. KELLY,
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` having first been duly sworn,
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` was examined and testified as follows:
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` THE WITNESS: I do.
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` THE VIDEOGRAPHER: Please begin.
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` MR. CASEY: So just for the record, the
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`deposition is actually a joint deposition for
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`CBM-2015-00121, -00123, -00124, -00127, -00130,
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`-00131, and -00133.
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` Is that right, Counsel?
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` MS. RAYMOND: That's correct.
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` EXAMINATION
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`BY MR. CASEY:
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` Q Dr. Kelly, have you been deposed before, I
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`assume?
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` A I have.
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` Q And so if I ask you anything that's
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`unclear, please stop me and ask me to rephrase the
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`question, and we'll try to make sure we're all on
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`the same page with what I'm trying to ask you.
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`Okay?
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` A Yes.
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` Q When were you retained by counsel to
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`participate in the CBM proceedings?
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` A Let me see. Some months before May
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`of 2015. I don't remember exactly when.
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` Q Is it close to one or two months, or six
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`or eight months?
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` A Several months. More than one or two
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`months. Several months. I -- I -- I don't really
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`recall any more specific date than that.
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` Q Is this the first time that you've been an
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`expert on behalf of Apple, Inc.?
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` A No, it's not.
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` Q About how times have you been an expert on
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`behalf of Apple?
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` A I'd say on the order of 10 times.
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` Q Over what period of time have you been an
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`expert for Apple, Inc.?
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` A Over the last approximately -- I'd say
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`seven to ten years.
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` Q And in that period of time, do you have an
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`estimate of how much money you have been paid for
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`your services?
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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` A I don't, no.
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` Q Is it more than a million dollars?
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` A Yes, I expect it is.
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` Q Is it more than $3 million?
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` A I -- I don't recall exactly how much it
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`is. It may well be.
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` Q Would it surprise you that it's more than
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`$6 million?
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` A That's possible. I have -- in terms of
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`how much money my firm has -- has been paid by
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`Apple for the various cases we have worked on. How
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`much that I've been paid would be considerably less
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`than that.
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` Q So let me ask the question again.
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` During the period in which you have
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`provided expert services for Apple, how much money
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`has your firm been paid for your services?
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` A I don't know.
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` Q More than $6 million, though?
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` A That wouldn't surprise me for the firm as
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`a whole with --
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` Q Would --
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` A -- all the people that have been involved
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`in -- in matters that -- that also involve Apple.
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` Q Are you a principal in the -- in the
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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`company?
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` A I am.
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` Q Are you the only principal in the company?
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` A No, I'm not.
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` Q Would it surprise you to know that your
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`company was paid more than $6 million for your
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`services before this set of CBMs even began?
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` A No. That's quite possible that the firm
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`as a whole for all the work that we've one on
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`behalf of Apple.
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` Q Do you have a sense of how much money your
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`deposed today?
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` A No, I don't.
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` Q Is it more than a million dollars?
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` A I don't know what the number is. I would
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`be very surprised if it is -- if it's that much.
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` Q What do you understand you were to do in
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`providing your opinions in the CBMs for which
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`you're being deposed today?
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` A I was asked to look at -- at the seven
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`Smartflash patents, certain claims of those
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`patents, and -- and then consider various legal
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`standards for what makes up a patentable or
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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`unpatentable subject matter.
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` I was asked to consider some
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`indefiniteness legal standard, and then I was asked
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`to opine on what the person of ordinary skill in
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`the art would have been at the alleged -- the claim
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`priority date for the Smartflash patents.
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` I was asked to assume some claim
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`construction. I was asked to examine the -- the
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`background prior art, and then based on that,
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`determine whether or not I thought that the -- the
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`Smartflash claims were patent eligible, and I'm not
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`a legal expert. I'm not a lawyer, and so I'm
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`providing a technical analysis based on my
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`understanding of the legal standards.
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` Q So you did not intend any of your opinions
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`in your declarations to be considered legal
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`opinions?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: It seems to me that that is
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`a legal question in and of itself. I'm not here to
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`answer -- to provide legal testimony.
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` I do understand that what I did was I
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`applied my understanding of -- of the law as it
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`concerns on patentable subject matter, as I've laid
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`out in the -- in the declarations.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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` So I brought my background and experience
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`as a technical expert to those issues.
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`BY MR. CASEY:
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` Q Did you understand those issues to be
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`legal issues of whether or not claims are directed
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`to statutory subject matter?
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` A Yes. I understand that whether or not --
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`for example, the -- a patent claim is patentable or
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`unpatentable under 35 USC 101 is a legal issue.
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`And I'm bringing my technical understanding of --
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`of -- of the art and the background to the claims
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`that are at issue here and my understanding of
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`the -- of the legal standards to offer my opinion
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`as to whether or not the claims are patentable.
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` Q And so you applied your understanding of
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`the legal standards to the facts as you understood
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`them based on the claims you were asked to look at?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Well, I have provided -- I
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`used my expert background and opinion in -- in
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`answering those questions, and as -- as I've laid
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`out in -- in detail in these seven declarations.
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`BY MR. CASEY:
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` Q Do you have an expert background in
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`whether claims are directed to statutory subject
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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`matter?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I'm not sure what that
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`BY MR. CASEY:
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` Q What part of it are you unsure of?
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` A What -- what the question is asking.
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` Perhaps you can rephrase it, and I'll
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`figure out what --
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` Q Do you believe you have an expert
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`background in whether claims are directed to
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`statutory subject matter?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I -- I don't really
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`understand that question. If you're asking me if I
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`am a lawyer, the answer is no, I'm not a lawyer.
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` If you're asking me whether I can examine
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`the claims and -- in light of the prior art and in
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`light of my background and in light of my
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`understanding of the legal standards, then
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`absolutely, yes, I -- I believe I can do that. In
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`fact, I have done that.
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` THE WITNESS: Mr. Casey. I forgot to get
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`some water. I'm just going to go and get some.
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`I'll be --
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
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` MR. CASEY: Sure.
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` MS. RAYMOND: Maybe we can go off the
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`record for a minute because my realtime is not
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`working.
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` MR. CASEY: Mine is not either.
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` THE VIDEOGRAPHER: We're off the record
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`at 9:19 a.m.
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` (Proceedings recessed from 9:19 a.m.
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` until 9:20 a.m.)
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` THE VIDEOGRAPHER: We are back on the
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`record at 9:20 a.m.
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`BY MR. CASEY:
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` Q So, Dr. Kelly, if you need a break at any
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`time, just let me know. We'll do as we just did
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`and find a convenient place to stop.
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` A Thank you.
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` Q Before the break, we were talking about
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`what it was that you had done as part of preparing
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`your declaration, and you said that if I was asking
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`you whether you can examine the claims in light of
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`the prior art, in light of your background, and in
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`light of your understanding of the legal standards,
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`then, yes, you can do that.
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` So part of what you did was the
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`application of the legal standard of what makes a
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`14
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`claim statutory versus nonstatutory, correct?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Sorry. I thought I was
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`following you, and I lost it there.
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` Would you repeat your question, please.
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`BY MR. CASEY:
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` Q Sure.
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` Is part of what you did was apply the
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`legal standard of what makes a claim statutory
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`versus nonstatutory to the claims that you analyzed
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`for your declarations?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Well, I think it -- it's
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`fair to say I had an understanding of the legal
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`standards for what makes subject matter patentable
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`or unpatentable, and I applied -- and that would
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`include things like the -- the -- the two-step Mayo
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`test and the machine and transform test, and -- and
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`the examination of whether there was anything
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`inventive. And I did that analysis.
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` That analysis was done in light of my
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`understanding of -- of the legal standards.
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` Inasmuch as those tests that I applied
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`that I discuss in my declaration, I -- I did those
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`particular tests based on my understanding of the
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`legal standards.
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`BY MR. CASEY:
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` Q Were you told what client counsel
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`represented before you were given the patents that
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`you opined on?
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` A I think I was, yes.
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` Q Were you told the nature of the dispute
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`between Apple and Smartflash before you were given
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`the patents?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I had seen -- I knew that
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`Smartflash had -- was suing Apple for patent
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`infringement of various patents. I mean, I knew
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`that much.
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`BY MR. CASEY:
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` Q How did you know that?
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` A I think from the news -- news reports, as
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`I recall.
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` Q Had you read any of the Smartflash patents
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`before you were retained by counsel in these
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`matters?
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` A I'm not sure, but I don't recall having
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`read them. I may have.
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` Q Maybe I can ask the question more
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`generally.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`16
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` Had you read any portion of the Smartflash
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`patents before you were retained by counsel in
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`these matters?
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` A By "any portion," you mean any one of the
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`seven or -- or some piece of one of the seven
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`or ...
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` Q I mean as broadly as any piece of any of
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`the seven.
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` A I -- I can't say for sure. I don't have a
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`recollection of -- of reading parts. I may well
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`have.
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` Q In preparing your declarations in these
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`cases, did you look at any Supreme Court decisions
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`on what constitutes patentable subject matter?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I don't believe so. I -- I
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`don't recall reading any Supreme Court decisions.
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`BY MR. CASEY:
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` Q In preparing your declaration in these
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`cases -- sorry. Strike that.
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` Prior to preparing your declarations in
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`these cases, did you look at any Supreme Court
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`decisions on what constitutes patentable subject
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`matter? And -- sorry. I should rephrase both
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`questions. Let me try that again.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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` Dr. Kelly, in preparing your declarations
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`in these cases, did you look at any Supreme Court
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`decisions on what constitutes statutory subject
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`matter?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I -- I don't recall looking
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`at any Supreme Court decisions with respect to
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`these specific declarations.
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`BY MR. CASEY:
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` Q Do you recall looking at any Supreme Court
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`decisions on what constitutes statutory subject
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`matter prior to preparing these declarations?
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` A Umm, yes. I am aware of -- of some
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`Supreme Court decisions and -- again, I'm -- I'm
`
`not a lawyer, and -- but -- but I have -- I have
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`seen the -- the Alice decision, and I'm aware of
`
`others.
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` Q Did you compare the claims in the Alice
`
`decision to the claims of any of the patents of the
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`Smartflash patents?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Are you asking me if I did
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`any kind of side-by-side analysis of the Alice
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`claims and the Smartflash claims?
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`///
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`18
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`BY MR. CASEY:
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` Q We can start there?
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` A I did not.
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` Q Did you do any analysis of the claims in
`
`the Mayo Supreme Court case and the claims of the
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`Smartflash patents at issue today?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Again, if you're asking me
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`if I did a side-by-side comparison of the Mayo
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`claims and the Smartflash claims, the answer is no,
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`I didn't.
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`BY MR. CASEY:
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` Q What type of analysis, if any, did you do
`
`to determine what made the claims in the Alice
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`decision statutory or nonstatutory?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I did not analyze the Alice
`
`claims in the -- the Alice claims in terms of -- of
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`looking at the words of the claim and
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`determining -- doing any analysis of -- of -- of
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`those words.
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`BY MR. CASEY:
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` Q Did you do any analysis of the claims in
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`the Supreme Court case known as Mayo?
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` A No. Same answer. I did not look at the
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
`
`19
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`words of the Mayo claims, and -- and -- an analyze
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`them.
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` Q In preparing your declaration in these
`
`cases, did you look at any federal circuit Court of
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`Appeal decision as they related to statutory
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`subject matter?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I did not look at a --
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`specifically any federal circuit decisions. I
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`didn't read any in preparation for these
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`declarations.
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` To the extent that -- that, you know,
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`they've informed the -- my -- my understanding of
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`the legal standards, then -- then that would be the
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`extent of it.
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`BY MR. CASEY:
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` Q How would you know if those cases informed
`
`your analysis of the claims of the Smartflash
`
`patents at issue today?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I would not necessarily
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`know, but -- for example, I'm -- I'm aware that
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`the -- that the Mayo two-step analysis is
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`incorporated in my understanding that I've laid out
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`in the declarations.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
`
`20
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` I've also laid out my understanding of the
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`machine and transformation test and the -- but I --
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`I can't point you to cases, Federal Circuit,
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`Supreme Court, District Court, or otherwise that --
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`that would -- would explain why these legal
`
`standards are set out the way they are.
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` I'm not -- I'm not a lawyer.
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`BY MR. CASEY:
`
` Q In preparing your declarations in these
`
`cases, did you apply your methodology to any other
`
`patents as a test of your methodology?
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` MS. RAYMOND: Objection to form.
`
` THE WITNESS: Would you repeat that
`
`question, please?
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`BY MR. CASEY:
`
` Q Sure.
`
` In preparing your declarations in these
`
`cases, did you apply your methodology to any other
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`patents as a test of your methodology?
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` MS. RAYMOND: Same objection.
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` THE WITNESS: Umm, yeah. I'm not entirely
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`sure what you're asking me.
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` Have I applied this methodology before?
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`The answer is yes.
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` Did I apply it to -- by the time I got to
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
`
`21
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`the seventh declaration here, I had applied this to
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`six other patents in this proceedings.
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` But I have considered in -- in the past,
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`whether or not the claims -- patent claims were
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`unpatentable or patentable under a 101 analysis.
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`BY MR. CASEY:
`
` Q When did you do that previously?
`
` A Over the last few years.
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` Q Can you give me examples?
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` A I'd say probably in -- in the -- a year
`
`ago, probably two years ago. Those are examples
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`that come to mind.
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` Q Can you give me specifics?
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` MS. RAYMOND: Objection. Just to the
`
`extent that any of this information isn't yet
`
`public or you haven't been deposed in the case
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`or ...
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` THE WITNESS: No, I can't.
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`BY MR. CASEY:
`
` Q In your previous reviews of whether or not
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`claims were patentable prior to the declarations
`
`we're talking about today, was a decision on
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`whether the claims were statutory ultimately
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`determined by a court or the patent office?
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` A And by "ultimately determined," you mean
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
`
`some court or the patent office has made the
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`22
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`ruling?
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` Q Correct.
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` A I don't know as I sit here.
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` Q So having given those earlier opinions,
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`you don't have a way to test whether or not the
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`previous opinions on whether claims were statutory,
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`was correct by verifying it against, for example, a
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`written decision by the tribunal or patent office?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Well, I -- I -- I -- that's
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`not the way that I would characterize my work to
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`date, including the seven declarations that -- that
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`we're here to talk about today.
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` In all of these cases, I have correctly
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`applied my understanding of the law as laid out,
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`and I have examined the claims in light of my
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`background and experience and in light of the prior
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`art and what one of ordinary skill in the art would
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`know, and -- and so on.
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` And I believe that that has been a correct
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`analysis in -- in all cases, whether or not a -- a
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`court might -- might agree or -- or disagree with
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`my analysis or might have other facts that -- that
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`23
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`would persuade them to -- that say the subject
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`matter was patentable when I thought it wasn't
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`or -- or the other way around.
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`BY MR. CASEY:
`
` Q So let's try to break that down.
`
` Is there a public decision opining on
`
`whether a claim was statutory or nonstatutory,
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`where you provided an opinion on that claim?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: Now, you're using the -- the
`
`word "statutory," and what I have been talking
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`about and -- and -- and what I've been
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`understanding in my mind was whether or not the
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`subject matter was patentable under 101.
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` So I don't know if we have the same
`
`understanding or not.
`
` Maybe you could help me clarify that.
`
`BY MR. CASEY:
`
` Q Sure.
`
` So if -- if I talk about determining
`
`whether a claim is statutory subject matter, I am
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`attempting to talk about whether or not the subject
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`matter was patentable under 101.
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` So I will try to use your terminology if
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`that's something you're more comfortable with.
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`24
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` So is there a public decision opining on
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`whether a claim -- sorry. Strike that.
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` Is there a public decision opining on
`
`whether the subject matter of a claim was
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`patentable under 101, where you provided an opinion
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`on that claim?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I -- I don't know. If -- if
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`you're asking me whether there -- I offered a
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`101 opinion and -- and a court or the patent office
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`made a ruling as to 101, I -- I -- I don't know the
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`answer to that.
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`BY MR. CASEY:
`
` Q Okay. Were you ever given a claim for
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`which a court or the patent office made a ruling as
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`to statutory subject matter, analyzed the claim
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`yourself without knowing the answer in advance, and
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`then checked your answer against the court or the
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`patent office's ruling on whether or not that claim
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`was statutory -- I'm sorry -- was patentable
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`subject matter under 101?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: You're asking me if I took
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`the -- some claim or claims of a published
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`101 decision and, without looking at the ruling,
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`25
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`determine -- do my -- my own analysis and to see if
`
`I would agree with the published decision or not.
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`I -- I didn't do that.
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` What my -- my purpose here is to analyze
`
`these claims as -- as an expert, and offer my
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`opinion, and -- and what the -- what a court or the
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`patent office ultimately rules is -- is, of course,
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`up to them.
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`BY MR. CASEY:
`
` Q Did you look at the patent office
`
`guidelines on subject matter eligibility under 101
`
`when you prepared your declarations in these cases?
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` MS. RAYMOND: Objection. Form.
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` THE WITNESS: I have looked at -- at the
`
`patent office guidelines in the past. I -- I don't
`
`believe that I looked at them specifically while I
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`was preparing these declarations.
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`BY MR. CASEY:
`
` Q Did you look at them post the Alice
`
`decision by the Supreme Court?
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` A I don't -- as I sit here, I don't recall
`
`when I last looked at them.
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` Q Do you know if the patent office
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`guidelines on subject matter eligibility under 101
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`had been updated since the Alice decision?
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: You mean updated as a result
`
`26
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`of the Alice decision?
`
`BY MR. CASEY:
`
` Q Correct.
`
` A I don't know.
`
` Q Using your methodology for determining
`
`subject matter eligibility under 101, what is your
`
`false positive rate finding a claim to be not
`
`eligible when it was?
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` MS. RAYMOND: Objection to form.
`
` THE WITNESS: I have analyzed close to
`
`150 claims in these seven declarations, and in my
`
`opinion there is -- these are so clearly
`
`unpatentable that I think that -- that every one of
`
`these claims is going to be -- is going to be
`
`rendered unpatentable by the patent office.
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` But that's a prediction. I don't have --
`
`I don't have a -- a number for you today.
`
`BY MR. CASEY:
`
` Q Using your methodology for determining
`
`subject matter eligibility under 101, what is your
`
`false negative rate?
`
` MS. RAYMOND: Objection to form.
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` THE WITNESS: Well, I'd give you the same
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`Videotaped Deposition of John P. J. Kelly, Ph.D.
`Conducted on February 3, 2016
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`answer.
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` By "false negative," I assume you mean I
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`believe that the subject matter is patentable
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`but -- but the -- a court or the board rules that
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`its unpatentable.
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` Is that what you had in mind?
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`BY MR. CASEY:
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` Q Correct.
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` A Well, that wouldn't apply to any of the
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`150 or so -- 142 claims that are at issue in these
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`seven declarations, so I don't have a number for
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`you.
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` Q In preparing your declaration in these
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`cases, did you apply your methodology to the patent
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`at issue in DDR Holdings?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I did not analyze the claims
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`in -- in DDR Holdings. That was not my assignment.
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`BY MR. CASEY:
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` Q In preparing your declaration in these
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`cases, did you apply your methodology to the patent
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`at issue in Ultramercial?
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` A No, I didn't apply it to the claims of
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`Ultramercial. I -- I had enough claims with
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`142 Smartflash claims.
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` Q What's the difference between causation
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`and correlation?
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` MS. RAYMOND: Objection. Form.
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` THE WITNESS: You're going to have to help
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`me out there with -- what is the context.
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`BY MR. CASEY:
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` Q In scientific methodology, what's the
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`difference between correlation and causation?
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` MS. RAYMOND: Same objection.
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` THE WITNESS: What -- what specific
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`scientific technology?
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`BY MR. CASEY:
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` Q How about computer science?
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` A So -- and what specifically did you have
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`in mind?
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` Q Do you not have a general understanding as
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`to the difference between causation and
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`correlation?
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` MS. RAYMOND: Objection to form.
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` THE WITNESS: I would like to make sure
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`that we're -- we have a -- a similar understanding
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`of the terms.
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`BY MR. CASEY:
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` Q So please tell me what your definition of
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`causation is?
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` A I'm not sure I have a definition for you.
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`It would depend on the context.
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` You're saying as -- in computer science.
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` Can -- can you help me out little built?
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` Q Do you have a general definition for
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`correlation?
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` A I mean, I'm not sure I can give you a
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`definition. It depends on the context. I mean,
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`there -- there are -- as -- as I'm sure you're
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`aware, there are ma
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