UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`
`Petitioner,
`
`V.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`
`Cases CBM2017-00009, CBM2017-00016
`
`Patent RE43,529
`
`Cases CBM2017-00010, CBM2017-00015
`
`Patent RE43,528
`
`Cases CBM2017-00011, CBM2017-00014
`
`Patent RE43,500
`
`EXHIBIT 2002
`
`DECLARATION OF ERIC BENISEK IN SUPPORT OF PATENT OWNER’S
`
`PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`
`Petitioner,
`
`V.
`
`ALFONSO CIOFFI, MEGAN ELIZABETH ROZMAN,
`
`MELANIE ANN ROZMAN, AND MORGAN LEE ROZMAN,
`Patent Owners.
`
`Cases CBM2017-00009, CBM2017-00016
`
`Patent RE43,529
`
`Cases CBM2017-00010, CBM2017-00015
`
`Patent RE43,528
`
`Cases CBM2017-00011, CBM2017-00014
`
`Patent RE43,500
`
`EXHIBIT 2002
`
`DECLARATION OF ERIC BENISEK IN SUPPORT OF PATENT OWNER’S
`
`PRELIMINARY RESPONSE
`
`
`
`1, Eric Benisek, do hereby state as follows:
`
`1.
`
`I am an attorney and partner at the law firm Vasquez, Benisek, &
`
`Lindgren, LLP.
`
`2.
`
`I am lead counsel in Cioflz‘, et al. v. Google, Inc., No. 2:13-cv-00103
`
`(E.D. Tex.) (“the district court litigation”).
`
`3.
`
`I provide this declaration to summarize events of the district court
`
`litigation.
`
`4.
`
`U.S. Patent Nos. RE43,50O (“the ’500 Patent”), RE43,528 (“the ’528
`
`Patent”), and RE43,529 (“the ’529 Patent”) are the subject of claims of
`
`infringement against Google, Inc. ("Petitioner/Defendant”) in the district court
`
`litigation.
`
`5.
`
`I understand that the Petitioner/Defendant has filed petitions for
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`covered business method (“CBM”) review proceedings against the’500 Patent, the
`
`’528 Patent, and the ’529 Patent as follows:
`
`
`
`U.S. Patent No.
`
`The ’500 Patent
`
`CBM Proceedings
`
`CBM20l 7-0001 1
`
`CBM20 1 7-00014
`
`The ’528 Patent
`
`CBM20l7-00010 CBM201 7-0001 5
`
`|
`
`The ’529 Patent
`
`|
`
`CBM20l7-00009
`
`
`
`Ex. 2002 — Benisek Declaration
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`Page 1
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`
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`U.S. Patent No.
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`CBM Proceedings
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`CBM20l 7-00016
`
`6.
`
`A complaint for the district court litigation was filed by Cioffi et al.
`
`(“Patent Owner/Plaintiff”) on February 5, 2013, which named the
`
`Petitioner/Defendant as a defendant against claims of infringement of the ’500
`
`Patent, ’528 Patent, and ’529 Patent.
`
`7.
`
`8.
`
`The Petitioner/Defendant answered the complaint on April 1 1, 2013.
`
`Pursuant to Local Rule 3-1 of the Eastern District of Texas, the Patent
`
`Owner/Plaintiff served the Petitioner/Defendant infringement contentions on July
`
`25, 2013.
`
`9.
`
`Pursuant to Local Rule 3-2 of the Eastern District of Texas,
`
`production of relevant documents by the Patent Owner/Plaintiff occurred on July
`
`25, 2013 and continued thereafter.
`
`10.
`
`Pursuant to Local Rule 3-3 of the Eastern District of Texas, the
`
`Petitioner/Defendant served the Patent Owner/Plaintiff invalidity contentions on
`
`November 25, 2013
`
`1 1.
`
`Pursuant to Local Rule 3-4 of the Eastern District of Texas,
`
`production of relevant documents by the Petitioner/Defendant occurred on
`
`November 25, 2013, and continued thereafter.
`
`Ex. 2002 — Benisek Declaration
`
`Page 2
`
`
`
`12.
`
`In June 2014, the Petitionerfl3efendant sought discovery on the Patent
`
`Owner/Plaintiff related to the Markman briefing including noticing and taking the
`
`depositions of the Patent Owner/Plaintiff’ s technical expert, Dr. H.E. (“Buster”)
`
`Dunsmore, and co—inventor, Alfonso Cioffi.
`
`13.
`
`The Markman briefing commenced by the Patent Owner/Plaintiff
`
`filing its Markman brief on July 14, 2014 to which the Petitioner/Defendant
`
`responded by filing its Markman brief on July 31, 2014.
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`14. A Markman hearing was conducted on August 14, 2014 with an order
`
`construing claim terms issuing on August 28, 2014.
`
`15.
`
`Thereafter, in September, October and November of 2014, substantial
`
`document and deposition discovery was undertaken including nine depositions and
`
`the production of tens of thousands of documents.
`
`16.
`
`Subsequent to and based on the order construing claim terms of the
`
`’500 Patent, ’528 Patent and ’529 Patent, the Patent Owner/Plaintiff and
`
`Petitioner/Defendant stipulated to non-infringement, and a notice of appeal to the
`
`Court of Appeals for the Federal Circuit was filed on December 9, 2014.
`
`17.
`
`The Patent Owner/Plaintiff filed an appeal brief with the Federal
`
`Circuit on April 11, 2015, to which the Petitioner/Defendant responded by filing a
`
`brief on May 20, 2015.
`
`Ex. 2002 — Benisek Declaration
`
`Page 3
`
`
`
`18. An oral hearing was conducted before a panel of the Federal Circuit
`
`on October 7, 2015.
`
`19.
`
`The Federal Circuit issued its decision in Cioflz‘ v. Google, Inc., 632 F.
`
`App’x 1013 (Fed. Cir. 2015) on November 17, 2015.
`
`20.
`
`On January 19, 2016, the Petitioner/Defendant sought en banc review
`
`of the Federal Circuit’s November 17, 2015 decision.
`
`21.
`
`On April 17, 2016, the Federal Circuit denied the
`
`Petitioner/Defendant’s request for en banc review.
`
`22.
`
`On April 18, 2016, the Federal Circuit issued mandamus remanding
`
`the case back to the district court.
`
`23.
`
`On August 12, 2016, the parties exchanged opening expert reports.
`
`The Patent Owner/Plaintiff served (i) the expert report of Dr. Aveil Rubin on
`
`infringement of the patents-in-suit, and (ii) the expert report of Walter Bratic on
`
`damages. The Petitioner/Defendant served two invalidity reports: (i) one from Dr.
`
`Michael Kogan based on various violations of 35 U.S.C. §§ 112 and 251, and (ii)
`
`one from Dr. William Arbaugh based on 35 U.S.C. §§ 102 and 103.
`
`24.
`
`On August 16, 2016, the Petitioner/Defendant petitioned the U.S.
`
`Supreme Court for a writ of Certiorari to overturn the Federal Circuit’s November
`
`17, 2015 decision, and on November 14, 2016, the Patent Owner/Plaintiff opposed
`
`Petitioner/Defendant’s petition for writ of Certiorari. The U.S. Supreme Court
`
`Ex. 2002 — Benisek Declaration
`
`Page 4
`
`
`
`subsequently denied the Petitioner/Defendant’s petition for writ of Certiorari on
`
`January 9, 2017.
`
`25.
`
`On September 12, 2016, the parties exchanged rebuttal reports to all
`
`the opening reports. The Patent Owner/Plaintiff served the expert report of Dr.
`
`Buster Dunsmore on validity of the patents-in-suit. The Petitioner/Defendant
`
`served (i) the expert report of Dr. Michael Kogan on non-infringement, and (ii) the
`
`expert report of Christopher Bakewell on damages.
`
`26.
`
`Thereafter, in September and October 2016, six more depositions
`
`were conducted of the experts, plus one additional fact witness for the
`
`Petitioner/Defendant.
`
`27.
`
`On November 14, 2016, the parties cross-moved for summary
`
`judgment on various issues.
`
`28.
`
`The Patent Ownerfl3laintiffs moved for summary judgment that the
`
`asserted prior art references Joshi and Ioannidis do not anticipate the patents—in—
`
`suit.
`
`29.
`
`The Petitioner/Defendant moved for summary judgment that (i) the
`
`patents-in-suit are not subject matter eligible under 35 U.S-.C. § 101, (ii) certain
`
`claims were invalid for violating the rule against recapture under 35 U.S.C. § 251,
`
`and (iii) certain claims were not infringed.
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`Ex. 2002 — Benisek Declaration
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`Page 5
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`
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`30.
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`In December 2016, the Petitioner/Defendant sought further discovery
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`of the Patent Owner/Plaintiff including deposing co-inventor, Alfonso Cioffi,
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`again, and deposing Michael Kaufman, the estate attorney responsible for
`
`representing the estate of the co-inventor, Allen Rozman. In all, the co-inventor,
`
`Alfonso Cioffi has been deposed three times.
`
`31.
`
`On December 15, 2016, the parties filed dueling motions in—Zz'mz'ne to
`
`exclude certain evidence from being presented at trial.
`
`32.
`
`On December 22, 2016, following several conferences, the parties
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`completed submission of their pre—trial materials to the district court in advance of
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`the scheduled February 2017 trial. These materials include the parties’ jury
`
`instructions, joint pre—trial order, deposition designations, trial exhibit list and
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`actual trial exhibits, and proposed verdict form.
`
`33.
`
`On January 11, 2017, the district court conducted a pre—trial hearing
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`and ruled on all the various motions for summary judgment and motions in—Zimz'ne.
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`The district court denied Petitioner/Defendant’s motions for summary judgment on
`
`(i) subject matter eligibility under 35 U.S.C. § 101, (ii) recapture under 35 U.S.C. §
`
`251, and (iii) non-infringement, and denied Patent Owner/Plaintiff’ s motion for
`
`summary judgment that the Joshi and Iaonnidis prior art references do not
`
`anticipate certain claims of the patents-in- suit.
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`Ex. 2002 — Benisek Declaration
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`Page 6
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`
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`34. On January 26, 2017, the district court conducted a fiirther pre-trial
`
`hearing and ruled on the admissibility of Various proposed trial exhibits. The trial
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`began with voir dire on February 6, 2017, and through a five day trial, concluded
`
`on February 10, 2017.
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`35.
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`The jury returned a Verdict of infringement of the asserted claims —
`
`claim 43 of the ’500 Patent, claims 5 and 67 of the ’528 Patent, and claim 49 of the
`
`’529 Patent, and that the asserted claims were not invalid.
`
`36. Attached as Exhibit 2003 is a true and correct copy of a graph entitled
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`“United States Court of Appeals for the Federal Circuit: Median Disposition Time
`
`for Cases Decided by Merits Panels” available through the website for the Court of
`
`Appeals for the Federal Circuit at
`
`http://www_cal‘c. LIscc.>LI1't3.gm-'/si {es/clci"aul1/ii Ies/1hc-
`
`cou rt/s tati sti cs/FY] 6_M ediar1_FDi spositi 0n_Ti In e_fo_r_Cas_es_Te.r.rI1i_n ated__a:fte.r_.i;Ie
`
`2-z1'i'ng_or_Submi::;sioI1__Cl1a1'1__2.pdI‘and last accessed on January 25, 2017.
`
`Ex. 2002 — Benisek Declaration
`
`Page 7
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`
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`*>l<***
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`I declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1101 of Title 18 of the United States Code.
`
`Respectfully submitted,
`
`Dated: February /3* , 2017
`
`.
`
`Eric Benisek
`
`Ex. 2002 — Benisek Declaration
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`Page 8
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