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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`1
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` _______________
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` GOOGLE INC.,
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` Petitioner,
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` V.
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` SMARTFLASH LLC,
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` Patent Owner
`
` _______________
`
` Case CBM2015-00129
`
` Patent 7,942,317 B2
`
` Case CBM2015-00126
`
` Patent 8,118,221 B2
`
` DEPOSITION OF JUSTIN DOUGLAS TYGAR, Ph.D.
`
` SAN FRANCISCO, CALIFORNIA
`
` TUESDAY, JANUARY 19, 2016,
`
` 9:02 A.M.
`
`Job No. 101438
`
`Pages 1 - 209
`
`Reported by: Anne M. Torreano, CSR, RPR, CCRR, CLR
`
`Smartflash - Exhibit 2105
`Apple v. Smartflash
`CBM2015-00123
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
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` _______________
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` GOOGLE INC.,
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` Petitioner,
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` V.
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` SMARTFLASH LLC,
`
` Patent Owner
`
` _______________
`
` Case CBM2015-00129
`
` Patent 7,942,317 B2
`
` Case CBM2015-00126
`
` Patent 8,118,221 B2
`
` DEPOSITION OF JUSTIN DOUGLAS TYGAR, Ph.D.
`
` SAN FRANCISCO, CALIFORNIA
`
` TUESDAY, JANUARY 19, 2016,
`
` 9:02 A.M.
`
`Job No. 101438
`
`Pages 1 - 209
`
`Reported by: Anne M. Torreano, CSR, RPR, CCRR, CLR
`
`Smartflash - Exhibit 2105
`Apple v. Smartflash
`CBM2015-00123
`
`1
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`
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`Deposition of Justin Douglas Tygar, Ph.D.
`Conducted on January 19, 2016
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` Deposition of JUSTIN DOUGLAS TYGAR, Ph.D.,
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`held at the offices of:
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` QUINN EMANUEL URQUHART & SULLIVAN LLP
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` 50 California Street, 22nd Floor
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` San Francisco, California 94111
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` (415)875-6600
`
` Pursuant to Notice, before Anne M. Torreano,
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`California Certified Shorthand Reporter #10520,
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`Registered Professional Reporter, California Certified
`
`Realtime Reporter, Certified LiveNote Reporter.
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`PLANET DEPOS
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` A P P E A R A N C E S
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`FOR THE PATENT OWNER:
`
` DAVIDSON BERQUIST JACKSON & GOWDEY
`
` BY: MICHAEL R. CASEY, Ph.D.
`
` 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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` QUINN EMANUEL URQUHART & SULLIVAN LLP
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` BY: KEVIN SMITH
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` 50 California Street, 22nd Floor
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` San Francisco, California 94111
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` (415) 875-6600
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` kevinsmith@quinnemanuel.com
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` QUINN EMANUEL URQUHART & SULLIVAN LLP
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` BY: ADAM BOTZENHART
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` 50 California Street, 22nd Floor
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` San Francisco, California 94111
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` (415) 875-6600
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` adambotzenhart@quinnemanuel.com
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`Deposition of Justin Douglas Tygar, Ph.D.
`Conducted on January 19, 2016
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` EXAMINATION INDEX
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`JUSTIN DOUGLAS TYGAR, Ph.D. PAGE
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` BY MR. CASEY 5
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` PREVIOUSLY MARKED EXHIBITS REFERRED TO
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`EXHIBIT 1001 ('221 patent)
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`EXHIBIT 1001 ('317 patent)
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`EXHIBIT 1002 ('221 patent)
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`EXHIBIT 1002 ('317 patent)
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`EXHIBIT 1004 ('221 patent)
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`EXHIBIT 1006 ('221 patent)
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`EXHIBIT 1007 ('221 patent)
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`EXHIBIT 1011 ('221 patent)
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`Deposition of Justin Douglas Tygar, Ph.D.
`Conducted on January 19, 2016
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` TUESDAY, JANUARY 19, 2016; 9:02 A.M.
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` JUSTIN DOUGLAS TYGAR, Ph.D.,
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` having been duly sworn to tell the truth,
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`testified as follows:
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` EXAMINATION
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`BY MR. CASEY:
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` Q. State your name for the record.
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` A. My name is Justin, J-u-s-t-i-n, Douglas,
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`D-o-u-g-l-a-s, Tygar, T-y-g-a-r.
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` Q. And your address?
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` A. 1285 Alvarado, A-L-V-A-R-A-D-O, Road,
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`Berkeley, California 94705.
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` Q. Have you ever testified before?
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` A. Yes.
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` Q. When?
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` A. I've testified a number of times.
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` Q. Can you give me a -- have you ever testified
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`before the Patent Office, in a proceeding before the
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`Patent Office?
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` A. Yes, I have.
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` Q. And can you recall any of those proceedings?
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` A. I'm not sure I can remember all of them. I
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`think I've testified in between five to ten AIA
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`proceedings.
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` Q. Okay. Can you recall any of the other AIA
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`proceedings you testified in?
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` A. One was a proceeding involving Moneycat vs.
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`eBay and PayPal, I think were the defendants. Another
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`one in which I testified -- I'm trying to remember the
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`name of the parent company. It's the parent company
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`of RSA Corporation. Another involved a gaming
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`company. I'm sorry. I don't remember the specific
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`parties involved.
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` Q. That's fine. In the other proceedings, what
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`were the -- strike that.
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` Before we transition to the AIA cases, have
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`you ever testified before the Board of Patent Appeals
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`and Interferences back before it changed its name?
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` A. I'm not sure, because I don't know how the
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`Patent and Trademark Office organizes things. I know
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`that I, at various times, prepared declarations when a
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`patent was being challenged, and -- but I don't know
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`whether those were being heard by a patent examiner or
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`by a board within the Patent and Trademark Office. I
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`just don't remember.
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` Q. That's fine.
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` Have you ever testified -- do you recall if
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`you ever testified in a patent interference case,
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`where two parties were trying to determine who
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`invented first?
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` A. I don't remember that as I sit here, no.
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` Q. Okay. And you're not a lawyer; correct?
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` A. That is correct.
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` Q. Did you intend any of your opinions in either
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`of your declarations for CBM 2015-000126 and -0129 to
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`be considered legal opinions?
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` A. So absolutely not. And just to clarify, as I
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`understand it, those are the declarations for the '221
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`and the '317 patent.
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` Q. They are, and I will give you copies.
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` A. Great.
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` Q. I notice that you brought a folder with you.
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` Can you tell me what the folder is?
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` A. Sure.
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` Q. I don't want to worry about --
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` A. Absolutely.
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` Q. -- having extra exhibits we don't need to, so
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`I'll hand you things as I think we need them.
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` A. Sure.
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` I have a copy of the '221 patent. I have a
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`copy of my declaration regarding the '221 patent, and
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`I have a copy of the Board's institution decision for
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`the '221 patent. I have a copy of the '317 patent. I
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`have a copy of my declaration in the '317 patent, and
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`I have a copy of the Board's institution decision for
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`the '317 patent.
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` I have a copy of my c.v. as it was presented
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`as an exhibit to my declaration, and I have a copy of
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`the district court's claim construction order by
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`Judge -- excuse me, signed by Judge Nicole Mitchell.
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` Q. So is there a way that you would like me to
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`refer to the two separate proceedings? I can do it by
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`patent number or I can do it by CBM number. Is there
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`a way that's easier for you?
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` A. Patent number, if you don't mind, please.
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` Q. Okay. All right. Despite the fact that you
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`already have these, I'm going to -- you can use
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`whichever one you prefer, but this is Exhibit 1002 for
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`U.S. Patent No. 8,118,221, which is double-sided to be
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`very Californian.
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` Oh, actually, this one's not. Huh. I don't
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`know.
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` And so I think you already have a copy.
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`You're welcome to use either the copy that I've handed
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`you or your own copy. I assume that none of the
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`documents in front of you that you brought with you
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`have been marked?
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` A. That's a correct assumption.
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` Q. And then in addition, I'm going to hand you
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`Exhibit 1002 from -- which is your declaration for
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`Deposition of Justin Douglas Tygar, Ph.D.
`Conducted on January 19, 2016
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`U.S. Patent No. 7,942,317.
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` Give one to your counsel and make sure it's
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`okay to hand it to you.
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` A. Sure.
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` Q. Okay. When were you retained by counsel for
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`Google? Do you know?
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` A. I don't recall the exact date. I think I
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`signed the declarations in May, so it would have been
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`before then. My best recollection as I sit here now
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`is early in 2014. Sorry. No, I misspoke. Early in
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`2015. That's right.
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` Q. Okay. And what did counsel ask you to do
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`when you were retained?
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` A. They asked me to -- broadly speaking, they
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`asked me to look at and analyze -- I can't recall
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`exactly how many patents I looked at. I think there
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`might have been five in total, to look at them and
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`analyze them and form an opinion as to issues of
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`validity.
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` Q. Okay. And so you were asked as part of that
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`to look at the issue of whether the claims of the '221
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`patent or certain claims of the '221 patent were
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`directed towards statutory matter; is that correct?
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` A. Yes, and also the '317 patent.
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` Q. And is it your understanding that statutory
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`subject matter is a technical question or legal
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`question?
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` A. Well, I think ultimately the question is a
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`legal one, but I think it's informed by technical
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`issues.
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` Q. Which portions of the analysis under 101 do
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`you consider to be legal issues versus technical
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`issues?
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` A. So there's a couple points that come up. If
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`you -- first of all, the first step in analyzing
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`claims I think is claim construction. And claim
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`construction is -- for patents that are rooted in
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`technology is a technical question. So I believe that
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`engineering expertise has a role to play in informing
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`claim construction.
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` Then my understanding is that in 2014 the
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`Supreme Court ruled on a decision called, by short,
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`Alice, and in that decision they made a two-step
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`analysis for analyzing eligible subject matter. The
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`first step is to determine whether or not a patent is
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`directed towards an abstract idea. And if it is
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`directed towards an abstract idea, then the second
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`test is -- the second part of the test is to determine
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`whether or not there is an inventive concept that's
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`significantly more than an abstract idea.
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`Deposition of Justin Douglas Tygar, Ph.D.
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` So I think that in some cases a technical
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`perspective can help inform the legal decision of
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`whether a concept is an abstract concept or not, and
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`furthermore, I think that a technical perspective can
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`help inform the question of whether or not a patent or
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`a patent claim discloses significantly more than an
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`abstract idea.
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` Q. Okay. And so is it fair to say that the
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`question of whether or not a claim is directed towards
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`an abstract idea is ultimately a legal conclusion? Is
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`that your understanding?
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` A. So when you say "ultimately," there's an
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`ambiguity because we could talk about whether it is
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`one ultimately in terms of an issue of jurisprudence
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`or ultimately in, you know, the judgment of history.
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`If we're talking in the context of jurisprudence, my
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`understanding is it is ultimately, in AIA proceedings,
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`the Board that makes the initial decision as to
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`whether or not a claim is an abstract idea or not, and
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`then that potentially can be appealed to the Federal
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`Circuit Appeals Court.
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` And in the case of court proceedings, that
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`would be a district court that makes that decision.
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`So ultimately that decision is made -- is made by a
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`legal body. So ultimately in terms of jurisprudence,
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`I would say it's a legal decision, but it's informed
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`by technology.
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` Q. In forming your opinions in this case, did
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`you look at any Supreme Court decisions?
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` A. Well, I've read, as just an interested
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`citizen over time, Supreme Court decisions. As you
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`know, they're easily available on the web.
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` At the time that Alice was decided, it
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`received a great deal of publicity in the general
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`media, and I remember going and reading -- I think
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`Justice Thomas wrote the majority opinion, and I think
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`there was a concurring opinion from Justice Sotomayor.
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`I remember reading those opinions.
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` But in the context of this particular one, I
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`did not go back and re-read those. And to be fair,
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`when I read those decisions, I read them as an
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`interested citizen, not in any sort of professional
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`capacity.
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` Q. In forming your opinion in this case, did you
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`look at any Federal Circuit Court of Appeals
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`decisions?
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` A. I did not.
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` Q. In doing your work in this case, did you
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`apply your methodology to any other patents as a test
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`of your methodology?
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`Deposition of Justin Douglas Tygar, Ph.D.
`Conducted on January 19, 2016
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` A. Do you mean other than the five patents that
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`I wrote declarations on?
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` Q. Correct.
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` A. No, in the course of doing this work, I only
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`looked at these five patents.
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` Q. Prior to preparing your declarations, how
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`many patents had you analyzed under 35 USC 101 to
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`determine if they were directed towards statutory
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`subject matter?
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` A. I don't remember. I have done it before. I
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`don't remember the number.
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` Q. More than five? Less than five?
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` A. I really don't remember. You know, the --
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`it's -- it's over a period of time. And moreover,
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`it's often the case that there are multiple issues
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`that arise. For example, sometimes there's issues --
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`I believe they're called 102 and 103, issues of
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`anticipation and obviousness. So I really can't give
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`you an estimate. I would not say it was a huge
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`number, but I have done it before.
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` Q. In doing your work in this case, did you
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`apply your methodology to determine statutory subject
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`matter under 101 to any other patents for which there
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`was a federal circuit decision on the issue?
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` A. I don't understand the question.
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` Q. Did you apply your methodology on what was an
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`abstract idea to a patent where the federal circuit
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`also performed an analysis to determine whether or not
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`the federal circuit thought something was an abstract
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`idea?
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` A. Well, I know that some cases that I've been
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`involved with have been reviewed by the federal
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`circuit, but I believe that was -- I believe in the --
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`I believe the decisions I've seen were pre Alice, and
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`as I sit here now post Alice, I am not aware of -- I
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`mean, there may have been, but I'm not aware of any
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`review of a 101 analysis by -- by the appeals court or
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`of -- that analyzed -- that reviewed my analysis.
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` No, I'm not aware of that.
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` Q. So you didn't, for example, to test your
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`methodology, read a patent that had a decision without
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`reading the decision, determine for yourself whether
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`or not you thought that the patent in front of you was
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`an abstract idea or was statutory subject matter for
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`some other reason, and then cross-checked it with what
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`the federal circuit said about the same case?
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` A. I did not.
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` Q. So did you apply -- so then it's safe to say
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`you didn't apply your methodology to the patent at
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`issue in the case of DDR Holdings?
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` A. That's right. I saw that in the institution
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`decisions that -- that they discuss DDR Holdings,
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`and -- but I did not apply my method at the time that
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`I -- or afterwards, frankly, to DDR Holdings.
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` Q. So you don't know, for example, what your
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`false-positive rate would be for analyzing patents
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`under 101, given the methodology that you've used?
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` MR. SMITH: Objection. Ambiguous, vague.
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` THE WITNESS: Well, to measure
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`false-positive, one has to have ground truth, and I am
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`not aware of any generally accepted ground truth of --
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`or these sorts of questions. Courts can differ in
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`their opinion.
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`BY MR. CASEY:
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` Q. Similarly, you don't know what your
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`false-negative rate would be for analyzing patents
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`under 101, given the methodology that you've used?
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` MR. SMITH: Objection. Ambiguous.
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` MR. CASEY: Just so you know, Counsel --
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`maybe you haven't done PTAB depositions -- you're
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`allowed to say "objection." One of the things that
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`the Patent Office rules will not let you say is
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`"ambiguous."
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` MR. SMITH: Is that right?
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` MR. CASEY: Yeah. Just so you know.
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` MR. SMITH: Can you check that for me under
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`the PTAB --
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` When I think the objection is that it's
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`ambiguous, what would you like me to say? "Form"?
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` MR. CASEY: That's the problem, is that the
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`Patent Office rule is that you cannot state an
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`objection which hints at an answer. So you can say
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`"objection" and that's it.
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` MR. SMITH: Well, I don't think that's
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`actually the rule, but I'll check it on the break.
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`But until then I will say "objection," and can we just
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`agree that that preserves any objection to form?
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` MR. CASEY: Yes.
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` MR. SMITH: Okay. Then that's what I will
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`do.
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` THE WITNESS: Would you repeat the question,
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`please?
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`BY MR. CASEY:
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` Q. Sure.
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` You don't know what your false-negative rate
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`would be for analyzing patents under 101 given the
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`methodology that you've used; correct?
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` A. Once again, to define false-negative as to
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`define false-positive, one needs ground truth, and I'm
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`not aware of any generally accepted ground truth for
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`101 questions.
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` Q. So is it fair to say that the opinions in
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`your declarations for the '221 patent and the '317
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`patent are based not on a scientific method but on
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`your belief in how the claims would be held as to
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`validity under 101?
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` A. No, that's not fair.
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` Q. If your opinions are not based on ground
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`truth, how are they the subject of scientific
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`certainty?
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` A. My opinions are based on many decades of
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`having worked in the field of being aware -- closely
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`aware of what was being done, what was generally
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`known, what people of ordinary skill in the art knew
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`at the time of the patents. It is -- it is based on
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`understanding the technology described.
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` You seem to assume that scientific method is
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`equivalent to absolute certainty of truth, but in
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`fact, that's not the way that science works. Many
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`examples can be given, but for example, the switch
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`from the ptolemaic model of the universe to the
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`Copernican model of the universe or from Newtonian
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`physics to Einsteinian physics are both examples of
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`how scientific method is constantly improving.
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` I know of no scientist who would say credibly
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`that he or she was certain that his or her scientific
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`theories were absolutely true. It seems to me that
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`that sort of certainty is reserved for theology rather
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`than science.
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` It's also the case that, you know, I remember
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`when -- I believe when Chief Justice Roberts was
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`having his nomination hearings before the Senate, he
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`analogized role of a judge to a baseball umpire. And
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`I think we can say that some umpire decisions are
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`fairly close, we're not sure that was a ball or a
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`strike, but many of them are quite clear. In this
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`case, I have to say that it wasn't a close call.
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` Q. So what, in your decades of experience in the
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`computer field, enables you to opine with certainty as
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`to the judicial question of what is an abstract idea?
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` What factors did you look at that helped you
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`to ascertain that the claims in the '221 patent were
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`directed towards an abstract idea?
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` A. So I summarize -- I summarize that in the
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`paragraphs 56 through 66 of my '221 declaration, and I
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`can find the corresponding sections, if you wish, in
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`my '317 declaration.
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` First of all, I notice -- I noted that the
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`computer hardware that was recited was all generic and
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`conventional. My experience in the field enables me
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`to say with certainty that the computer -- the
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`computer hardware recited in claim 3 is generic and
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`conventional.
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` I then referred to a well-known paper in --
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`by Alan Turing which describes the notion of an
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`abstract computer processor. I pointed out that the
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`data carrier, which is discussed, which is mentioned
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`as being, for example, a standard smart card, is a
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`generic hardware device that was known in the prior
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`art. I have been on scientific conference committees
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`and written papers about smart cards, so I feel
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`qualified to say that.
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` Then I pointed out that the processor and the
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`interfaces that were recited in the '221 patent
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`specification are also generic hardware components
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`that were well known in the prior art. So I work in
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`the field, and so I feel I'm qualified to make that
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`statement.
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` I then pointed out that the functions pointed
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`out by the code -- right now I'm talking about '221,
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`so we're talking about claim 3 of '221. So the
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`functions recited as reading, forwarding, receiving
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`retrieving, writing and outputting, that they can be
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`performed without a computer. I pointed out that
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`performing these functions with a computer is routine
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`and conventional, that reading data from a data
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`carrier, a standard smart card, forwarding data,
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`receiving data, retrieving data, writing data, and
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`outputting data are all generic, conventional, routine
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`computer functions that were well known in the prior
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`art.
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` And I refer to, you know, work at the dawn of
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`computer science that was done by Charles Babbage, but
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`certainly the notion that arose in the '60s during the
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`ARPANET project, which later became the Internet. And
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`then I point out that claim 3 is -- does not recite
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`the use of generic computer hardware and functions to
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`override some routine or conventional sequence of
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`events. So having worked in the field, I feel
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`qualified to opine on routine and conventional
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`sequence events.
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` So that is how I applied my expertise to
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`reach the conclusions that I did.
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` Q. So, Dr. Tygar, as I understood your
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`testimony, you essentially talked about two different
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`things: One is the abstract idea, and the other is
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`whether or not there were other features that were
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`part of the claim that even if the claim was directed
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`to an abstract idea may or may not have affected
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`whether or not the claim was directed towards
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`statutory subject matter.
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` Is that a fair summary of that long answer
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`you just gave me?
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` MR. SMITH: Objection to form.
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` THE WITNESS: Could you repeat the question,
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`please?
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` RECORD READ AS FOLLOWS:
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` "Q. So, Dr. Tygar, as I understood your
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` testimony, you essentially talked about two
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` different things: One is the abstract idea,
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` and the other is whether or not there were
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` other features that were part of the claim
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` that even if the claim was directed to an
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` abstract idea may or may not have affected
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` whether or not the claim was directed towards
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` statutory subject matter.
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` "Is that a fair summary of that long
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` answer you just gave me?"
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` THE WITNESS: Can I ask you to break down
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`that question, please?
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`BY MR. CASEY:
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` Q. Sure. There's a distinction between whether
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`or not something is an abstract idea -- strike that.
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` There's a distinction between whether a claim
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`is directed to an abstract idea and whether a claim,
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`if directed to an abstract idea, may nonetheless be
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`statutory subject matter because of other factors;
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`right?
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` MR. SMITH: Objection to form.
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` THE WITNESS: Well, I'm not a lawyer, but
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`that's my understanding.
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`BY MR. CASEY:
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` Q. Okay. And right now I'm -- my original
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`question before you gave me the long answer was how do
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`you know that claim 3 is directed to the abstract idea
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`of controlling access based on payment?
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` Just focusing on how do we know it's an
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`abstract idea, what were the factors that you looked
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`at in determining -- not the second part of the test,
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`the Alice test, which is if it is an abstract idea,
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`then do all these other things, but how did -- what
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`factors did you look at in coming to the conclusion
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`that claim 3 of the '221 patent is directed to the
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`abstract idea of controlling access based on payment?
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` A. So if we use the broadest reasonable
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`interpretation, claim 3, which is dependent on claim
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`1, so I'm also including the text of claim 1 in there,
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`it recites code to read payment data, forward payment
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`data to a payment validation system, receive payment
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`validation from the payment validation system --
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`sorry, I misspoke. Receive payment validation data
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`from the payment validation system, and retrieve data
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`once validation of payment for that data has been
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`received.
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` So that's the abstract idea of controlling
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`access based on payment. That's a -- that's -- that
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`idea of getting payment information, checking whether
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`the payment is valid, and then retrieving that payment
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`information and providing access, that's -- that's --
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`it's actually an ancient idea, and it's an abstract
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`idea.
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` We can see that it's abstract. There's no --
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`there's nothing in that claim that is reciting
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`something concrete.
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` Q. I'm going to hand you what's previously been
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`marked as Exhibit 101. This is the '221 patent. I
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`know you already have a copy.
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` A. Thank you.
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` Q. And so if I could ask you to turn to claim 3.
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` A. Excuse me. Oh, right. The patent itself. I
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`understand. Thank you.
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` Q. Okay. Actually, before we turn to the
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`patent, let me ask you what structures are required
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`for the abstract idea of controlling access based on
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`payment?
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` A. I don't recall that being an area -- a
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`question that I considered in my analysis.
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` Q. Okay. What steps are required for the
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`abstract idea of controlling access based on payment?
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` A. Well, to be fair, there are -- there's more
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`than one way to do it.
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` Q. Okay. So if there's more than one way to do
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`it, how do you know -- strike that.
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` In preparing your declaration, what steps did
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`you consider to be required for the abstract idea of
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`controlling access based on payment?
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` A. I don't recall that being part of the
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`analysis that I performed.
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` Q. If you look at claim 3 for me, the '221
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`patent, claim 3, as you mentioned, depends on claim 1,
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`claim 1 recites a data access terminal.
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` Do you see that?
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` A. I do.
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` Q. So among the elements in the data access
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`terminal are program, store, storing code
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`implementable by a processor.
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` Do you see that?
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` A. I do.
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` Q. And a processor coupled to the first
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`interface, to the data carrier interface, and to the
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`program store for implementing the stored code.
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` Do you see that?
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` A. I do.
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` Q. Okay. So is a program store and a processor
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`necessary structure required to implement the abstract
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`idea of controlling access based on payment?
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` A. Well, if you're doing it by computer, most
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`certainly. If you're not doing it by computer -- or
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`rather I should say if you're doing it by computer, as
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`I sit here now, I can't imagine any other way of doing
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`it without a processor and a program store.
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` If you're doing it by another method that
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`doesn't involve a computer, you still have some agent
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`that's making the decision about whether to allow
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`access or not, and that agent has some set of rules
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`which are analogous.
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` So as I sit here now, I can't imagine another
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`way of doing it without a processor or, if not a
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`machine, an agent, and without a program to control
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`the processor or if, again, it's not running on a
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`machine, a set of rules.
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` Q. Okay. So is it fair to say that a data
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`access terminal with at least a processor and a
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`program store is a physical thing that you could
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`build?
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` A. Yes.
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` Q. So when you say claim 3 is directed to the
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`abstract idea of controlling access based on payment,
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`you don't mean that claim 3 describes a mental
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`process, do you?
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` A. Well, mental implies that it's -- that it's
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`conceived by a sentient being. There can be a set of
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`rules that are executed by a machine. The actual
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`components that are listed here, while they are
`
`physical components, they're just routine,
`
`conventional, generic components. There's -- so to
`
`the extent that an inventive concept exists here, it
`
`would be in the process that was performed or perhaps
`
`in something more that would have to appear in the
`
`claim.
`
` Q. Okay. You've jumped to step 2 again, and I'm
`
`trying to stick, if we can, with step 1 of trying to
`
`figure out how you know that claim 3 is directed to an
`
`abstract idea.
`
` And so are you sayin
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