LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 2
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 -------------
` 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 4
` LKQ CORPORATION
` 5 Petitioner
` 6 v.
` 7 CLEARLAMP, LLC
` Patent Owner
` 8
` 9 Case IPR2013-00020
` Patent 7,297,364
`10
`11 DEPOSITION OF IRVING RAPPAPORT
`12 Taken on behalf of Petitioner
`13 September 20, 2013
`14 (Starting time of the deposition: 9:01 a.m.)
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 3
` 1 I N D E X O F E X A M I N A T I O N
` 2
` 3 Page
` 4 Questions by Mr. Engel .......................... 6
` 5 Questions by Mr. Robinson ....................... 118
` 6 Further Questions by Mr. Engel .................. 121
` 7
` 8
` 9 I N D E X O F E X H I B I T S
`10Exhibit 1 No. 1 (File History) ..................... 106
`11
`12 (The original exhibit was retained by the
` court reporter, to be attached to Mr. Engel's
`13 transcript.)
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 4
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 -------------
` 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 4
` LKQ CORPORATION
` 5 Petitioner
` 6 v.
` 7 CLEARLAMP, LLC
` Patent Owner
` 8
` 9 Case IPR2013-00020
` Patent 7,297,364
`10
`11
`12 DEPOSITION OF WITNESS, IRVING RAPPAPORT,
`13 produced, sworn, and examined on the 20th day of
`14 September, 2013, between the hours of nine o'clock in
`15 the forenoon and six o'clock in the evening of that
`16 day, at the offices of Harness Dickey, 7700 Bonhomme,
`17 Suite 400, Clayton, Missouri 63105, before BRENDA
`18 ORSBORN, a Certified Court Reporter within and for the
`19 State of Missouri, in a certain cause now pending
`20 before the United States Patent and Trademark Office
`21 Before the Patent Trial and Appeal Board, wherein LKQ
`22 Corporation is the Petitioner and Clearlamp, LLC is
`23 the Patent Owner.
`24
`25
`
`Page 5
`
` 1 A P P E A R A N C E S
` 2 For the Petitioner:
` 3 Mr. Jason A. Engel
` Mr. Benjamin E. Weed
` 4 K&L Gates
` 70 West Madison Street, Suite 3100
` 5 Chicago, Illinois 60602
` (312) 372-1121
` 6 benjamin.weed@klgates.com
` jason.engel@klgates.com
` 7
` 8 For the Patent Owner:
` 9 Mr. Douglas A. Robinson
` Harness Dickey
`10 7700 Bonhomme, Suite 400
` St. Louis, Missouri 63105
`11 (314) 446-7683
` drobinson@hdp.com
`12
`13
` The Court Reporter:
`14
` Ms. Brenda Orsborn, RPR/CSR/CCR
`15 Missouri CCR No. 914
` Illinois CSR No. 084-003460
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`LKQ CORPORATION EX. 1019
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`

`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 2
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 -------------
` 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 4
` LKQ CORPORATION
` 5 Petitioner
` 6 v.
` 7 CLEARLAMP, LLC
` Patent Owner
` 8
` 9 Case IPR2013-00020
` Patent 7,297,364
`10
`11 DEPOSITION OF IRVING RAPPAPORT
`12 Taken on behalf of Petitioner
`13 September 20, 2013
`14 (Starting time of the deposition: 9:01 a.m.)
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 3
` 1 I N D E X O F E X A M I N A T I O N
` 2
` 3 Page
` 4 Questions by Mr. Engel .......................... 6
` 5 Questions by Mr. Robinson ....................... 118
` 6 Further Questions by Mr. Engel .................. 121
` 7
` 8
` 9 I N D E X O F E X H I B I T S
`10Exhibit 1 No. 1 (File History) ..................... 106
`11
`12 (The original exhibit was retained by the
` court reporter, to be attached to Mr. Engel's
`13 transcript.)
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 4
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 -------------
` 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 4
` LKQ CORPORATION
` 5 Petitioner
` 6 v.
` 7 CLEARLAMP, LLC
` Patent Owner
` 8
` 9 Case IPR2013-00020
` Patent 7,297,364
`10
`11
`12 DEPOSITION OF WITNESS, IRVING RAPPAPORT,
`13 produced, sworn, and examined on the 20th day of
`14 September, 2013, between the hours of nine o'clock in
`15 the forenoon and six o'clock in the evening of that
`16 day, at the offices of Harness Dickey, 7700 Bonhomme,
`17 Suite 400, Clayton, Missouri 63105, before BRENDA
`18 ORSBORN, a Certified Court Reporter within and for the
`19 State of Missouri, in a certain cause now pending
`20 before the United States Patent and Trademark Office
`21 Before the Patent Trial and Appeal Board, wherein LKQ
`22 Corporation is the Petitioner and Clearlamp, LLC is
`23 the Patent Owner.
`24
`25
`
`Page 5
`
` 1 A P P E A R A N C E S
` 2 For the Petitioner:
` 3 Mr. Jason A. Engel
` Mr. Benjamin E. Weed
` 4 K&L Gates
` 70 West Madison Street, Suite 3100
` 5 Chicago, Illinois 60602
` (312) 372-1121
` 6 benjamin.weed@klgates.com
` jason.engel@klgates.com
` 7
` 8 For the Patent Owner:
` 9 Mr. Douglas A. Robinson
` Harness Dickey
`10 7700 Bonhomme, Suite 400
` St. Louis, Missouri 63105
`11 (314) 446-7683
` drobinson@hdp.com
`12
`13
` The Court Reporter:
`14
` Ms. Brenda Orsborn, RPR/CSR/CCR
`15 Missouri CCR No. 914
` Illinois CSR No. 084-003460
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 6
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 8
`
` 1 IT IS HEREBY STIPULATED AND AGREED, by and
` 2 between counsel for Petitioner and counsel for Patent
` 3 Owner, that the DEPOSITION of IRVING RAPPAPORT may be
` 4 taken in shorthand by Brenda Orsborn, a Certified
` 5 Shorthand Reporter, and afterwards transcribed into
` 6 typewriting; and the signature of the witness is
` 7 expressly not waived.
` 8 * * * * *
` 9 IRVING RAPPAPORT,
`10 of lawful age, being produced, sworn and examined on
`11 behalf of the Petitioner, deposes and says:
`12 EXAMINATION
`13 QUESTIONS BY MR. ENGEL:
`14 Q. Good morning, Mr. Rappaport.
`15 A. How are you?
`16 Q. Doing well. You've been deposed a number of
`17 times; is that correct?
`18 A. Yes.
`19 Q. At least 40 times, you would estimate?
`20 A. Roughly, yeah.
`21 Q. So I assume you know some of the ground
`22 rules. I just want you to know some of my
`23 expectations so we're on the same page.
`24 A. Sure.
`25 Q. The biggest is probably if I ask a question
`
` 1 A. Well, again, I'm not allowed to opine on the
` 2 law, but I opine on custom standards and practices
` 3 around a given issue, as I've done in this report in
` 4 my declaration in this case.
` 5 Q. And what do you mean when you say you're not
` 6 allowed to opine on the law?
` 7 A. Well, that's left for the -- the Court
` 8 decides what the law is, so I can't really give
` 9 opinions directly on what the law is. And that's also
`10 true in IPR proceedings as well.
`11 Q. I guess I'm just not sure what you mean by
`12 the law. Do you mean you would not give an opinion
`13 that something is obvious?
`14 A. I can give an opinion that is based on my
`15 study of the facts, based on my experience, based on
`16 the evidence of record that there is sufficient
`17 evidence to support a particular conclusion, but I
`18 can't actually draw that conclusion. That's not my
`19 province as an expert.
`20 Q. Have you ever testified as an expert in
`21 interparties review, other than this case?
`22 A. No.
`23 Q. Have you ever testified as an expert in a
`24 covered business method proceeding?
`25 A. No.
`
`Page 7
`
`Page 9
`
` 1 and you answer the question and don't ask me to
` 2 clarify it, I'm going to assume you understood the
` 3 question; is that fair?
` 4 A. Yes.
` 5 Q. You know, obviously give your counsel time
` 6 to object. It may be -- but, you know, if you can
` 7 understand the question, I would ask that you answer
` 8 it; is that understood?
` 9 A. Yes.
`10 Q. As an expert witness, how many times have
`11 you opined about validity of a patent?
`12 A. I'd need to look at my CV to be able to go
`13 through that for you.
`14 Q. Okay. And --
`15 A. Off the top of my head, I couldn't give you
`16 a number of times.
`17 Q. Sure. And I'll mark your CV in a bit. Is
`18 there one area where you kind of consider yourself
`19 more of an expert; maybe you've testified more
`20 regarding certain subject matter?
`21 A. I really -- as you look at my CV, I've
`22 really covered a lot of different areas in the patent
`23 field.
`24 Q. As a witness for a patent owner, have you
`25 ever opined that the patent owner's patent is invalid?
`
` 1 Q. Have you ever testified as an expert in any
` 2 other type of post-grant proceeding at the patent
` 3 office?
` 4 A. No. This is all new. So there are not --
` 5 you know, not that many cases that have come before
` 6 them. In fact, I don't even know if they've ever
` 7 rendered a decision yet in any of these cases, so
` 8 we're all on uncharted waters here.
` 9 Q. Have you ever given a declaration in an
`10 interparties reexamination?
`11 A. Not that I recall.
`12 Q. Have you ever provided a declaration in an
`13 ex parte reexamination proceeding?
`14 A. I think I've -- I've rendered some reports
`15 in situations. It wasn't necessarily at the -- in
`16 court at that point, but no, so I don't -- your
`17 question again was in interparties?
`18 Q. The pending question was whether you
`19 provided a declaration in connection with an ex parte
`20 reexamination proceeding.
`21 A. No, I don't believe so.
`22 Q. Do you know any of the PTAV judges that are
`23 presiding over the current case?
`24 A. No.
`25 Q. Approximately when were you retained for
`
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`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 10
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 12
`
` 1 purposes of this case?
` 2 A. I mean, it's my best recollection sometime
` 3 in the spring, I had my first conversation.
` 4 Q. Spring of 2013?
` 5 A. Yes.
` 6 Q. And it would be sometime after that that you
` 7 started working on a report; is that correct?
` 8 A. Yes.
` 9 Q. Was this report that you wrote always
`10 intended to be used in the interparties review
`11 proceeding?
`12 A. I'm sorry, was it only or always? I
`13 didn't --
`14 Q. Always. I'm just trying to figure out if
`15 you were writing this for a different purpose and it
`16 ended up being used in the interparties review
`17 proceeding or if --
`18 A. No, no. As far as I know, this -- I wrote
`19 this for the interparties review proceeding.
`20 Q. All right. I'm going to hand you a copy of
`21 your declaration. It's been previously marked as
`22 Clearlamp Exhibit 2009. I see you have a copy there.
`23 A. Yes.
`24 Q. So feel free to refer to --
`25 A. Okay.
`
` 1 the middle of the paragraph at the end of one of the
` 2 lines, it says, "I am named as co-inventor on over
` 3 50." I think the actual number is 64.
` 4 Q. Anything else?
` 5 A. Yeah. In Paragraph 8, it says, "From 1987
` 6 through 1994, I was appointed for," and it should be
` 7 three consecutive two-year terms, so the word three
` 8 should before consecutive.
` 9 Q. Anything else?
`10 A. Yeah. On Page 5, right at the top, I've
`11 repeated the word "developing" twice. And the first,
`12 it should be "developed in developing countries."
`13 And then in Paragraph No. 10, on the first
`14 line, after the word "career," there should be a
`15 comma, and it should say, "except for the trademark
`16 consulting work I did for Intel," comma. I didn't do
`17 any patent prosecution work for Intel, so -- because
`18 it says "in all of the positions I've held during my
`19 career." So did you get the wording on that?
`20 Q. It's fine.
`21 A. Oh, okay. Thank you. Let's see. On Page
`22 10, the second line up from the bottom, the word "in,"
`23 I think, is unnecessary.
`24 Q. Okay.
`25 A. Okay. And on Page 15, in Paragraph 34, the
`
`Page 11
`
`Page 13
`
` 1 Q. -- either one you want, but I'm going to
` 2 give you an official copy for the record. Do you know
` 3 if you guys filed a corrected version of
` 4 Mr. Rappaport's declaration? The one we originally
` 5 received did not have an exhibit number on it and did
` 6 not have a signature on the back of it, but the
` 7 current one up there obviously did --
` 8 MR. ROBINSON: I don't recall specifically.
` 9 I can look into it if you'd like.
`10 MR. ENGEL: Yeah. I'm just trying to figure
`11 out -- we have different versions floating around,
`12 and --
`13 MR. ROBINSON: Okay.
`14 MR. ENGEL: -- I'm just trying to figure
`15 out --
`16 MR. ROBINSON: We can look into it.
`17 A. The copy I have has no signature on it.
`18 MR. ENGEL: The copy I have does not.
`19 A. Okay. As long as we're talking about that,
`20 I, in going through my declaration in preparation,
`21 there are a few typographical and grammatical errors
`22 that I want to correct, so if I could just go through
`23 those.
`24 Q. (By Mr. Engel) Sure.
`25 A. So -- okay. On Page 4 in Paragraph 7, about
`
` 1 third line down, the first word should be LKQ, not
` 2 Clearlamp.
` 3 On Page 18, in Paragraph 39, second line,
` 4 where it says, "There was an OEM quality headlamp that
` 5 was a recycled," so the word "A" is missing there. A
` 6 recycled component. And then the next line where it
` 7 says "that could," "that they could sell," so the word
` 8 "they" in the third line of Paragraph 39.
` 9 And then on Page 20, in the second line at
`10 the top, it says "on it own," and it should be "its,"
`11 I-T-S.
`12 And then on Page 21, Paragraph 45, the
`13 second line, it says, "Inventors of the '364 patent
`14 and" it should be "LKQ senior management." Those are
`15 all caps.
`16 And then on Page 22, in Paragraph 48, the
`17 fourth line down, it says, "Further, patented process
`18 is the only known," and the word "refurbishing
`19 process" should be added, so refurbishing. I think
`20 that's -- those are all the changes.
`21 Q. Okay. Let's start with that last one on
`22 Page 22.
`23 A. Okay.
`24 Q. And it says, "Further, the patented process
`25 is the only known refurbishing process" --
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`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 14
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 16
`
` 1 A. Yes.
` 2 Q. -- "that meets federal safety standards."
` 3 Do you see that?
` 4 A. Yes.
` 5 Q. You'd agree with me that changes the meaning
` 6 of that sentence, right?
` 7 A. Well, it -- I wanted to make clear, and
` 8 intended to make clear, that we're talking about
` 9 refurbishing processes.
`10 Q. Okay. But this change comes after LKQ had
`11 taken depositions of other declarants in the case,
`12 right?
`13 A. Okay.
`14 Q. You would agree with me, right?
`15 A. Yes.
`16 Q. Have you reviewed Mr. Katsamberis'
`17 deposition transcript?
`18 A. Yeah. We'll recall, they -- all those
`19 depositions were filed on the same day, so I've only
`20 seen those depositions and declarations relatively
`21 recently in preparation for my deposition. I never
`22 saw those before my deposition was -- my declaration
`23 was submitted.
`24 Q. You saw the declarations before your
`25 declaration was submitted?
`
` 1 A. No, I did not.
` 2 Q. You did not see it?
` 3 A. No.
` 4 Q. Then you have understandings of what
` 5 Mr. Bell opined to in this declaration, correct?
` 6 A. Now I do. And I -- but I also state on one
` 7 of the pages that I relied -- because they're the
` 8 technical experts. I'm not a technical expert in this
` 9 case. And so there's a sentence where -- somewhere
`10 where I say that I'm relying upon the technical
`11 conclusions drawn by Mr. Bell and Mr. Katsamberis.
`12 Q. We'll get to that in a second.
`13 A. Okay.
`14 Q. Have you since had an opportunity to review
`15 Mr. Bell's deposition transcript in this case?
`16 A. Yes.
`17 Q. Have you had an opportunity to review
`18 Mr. Katsamberis' deposition transcript in this case?
`19 A. Yes.
`20 Q. And after reviewing those, you did decide to
`21 make this change to add "refurbishing" before
`22 "process" in Paragraph 48, correct?
`23 A. Well, their depositions had nothing to do
`24 with my making this change, but this was something
`25 that I intended to include here.
`
` 1 Q. Okay. But it wasn't included in your report
` 2 as you signed it?
` 3 A. That's correct. That's why I went through
` 4 these changes today, to make clear what my actual
` 5 report should state.
` 6 Q. Okay. We went through a number of, you
` 7 know, changes and some typographical errors. You
` 8 know, why didn't you catch that when you first
` 9 submitted your declaration in this case?
`10 A. I'm not perfect.
`11 Q. So in Paragraph 48, the sentence that you've
`12 changed to add "refurbishing," is it your testimony
`13 that the original statement there is not correct?
`14 A. Well, it's not as complete. It's not as
`15 clear. The patent relates to refurbishing headlamps
`16 as opposed to originally manufactured headlamps.
`17 Q. And there were many processes for
`18 manufacturing original equipment headlamps other than
`19 this refurbishing process, right?
`20 MR. ROBINSON: Objection to the scope.
`21 A. Again, it's not part of the evidence I've
`22 had in this case to review.
`23 Q. (By Mr. Engel) You reviewed Mr. Katsamberis'
`24 deposition transcript, right?
`25 A. Yes.
`
`Page 15
`
`Page 17
`
` 1 Q. And he worked to create OEM headlamps,
` 2 correct?
` 3 A. Right. But, remember, I only reviewed those
` 4 declarations and depositions after this declaration
` 5 was submitted by me.
` 6 Q. Oh, I agree with you. You made this change
` 7 after your declaration was submitted, too, right?
` 8 You're making it today during your deposition?
` 9 A. Yes.
`10 Q. Okay.
`11 A. But -- but I'm just -- I wanted to clarify,
`12 because the patent is about a refurbishing process,
`13 not about original manufacturer.
`14 Q. I agree, but refurbishing was not in your
`15 declaration as submitted?
`16 A. That's correct.
`17 Q. You changed the scope of the sentence in
`18 Paragraph 48?
`19 A. Well, I'm not going to make a conclusion
`20 about whether it changes the scope or the meaning.
`21 You can draw that conclusion. I'm just saying this --
`22 it was my intention to refer to it as a refurbishing
`23 process.
`24 Q. But you didn't do that originally?
`25 A. The original copy didn't have it, no.
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`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 18
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 20
`
` 1 Q. You're getting paid $500 an hour for your
` 2 work on this case; is that correct?
` 3 A. That's correct.
` 4 Q. How much have you been paid to date for your
` 5 work on this case?
` 6 A. To the best of my recollection, somewhere
` 7 about $25,000.
` 8 Q. And how much have you invoiced on this case?
` 9 A. $25,000.
`10 Q. What did you do to prepare for your
`11 deposition today?
`12 A. I reviewed all the materials that I've had
`13 in the -- presented to me for review. I also met with
`14 Mr. Robinson.
`15 Q. And when did you meet with Mr. Robinson?
`16 A. Yesterday.
`17 Q. Was anyone else present?
`18 A. No.
`19 Q. How long did you meet with Mr. Robinson for?
`20 A. About three hours.
`21 Q. Since writing your -- strike that.
`22 Since submitting this declaration that's
`23 Exhibit 2009, have you had any conversations with
`24 Mr. Maurice Paperi?
`25 A. No, I've never had any conversations with
`
` 1 Mr. Paperi.
` 2 Q. Did you ever ask to have any conversations
` 3 with Mr. Paperi?
` 4 A. No.
` 5 Q. Have you ever had any conversations with
` 6 Mr. Michael Asselta?
` 7 A. Who?
` 8 Q. Michael Asselta?
` 9 A. No.
`10 Q. Have you ever had any conversations with
`11 Mr. Bell, Harvey Bell?
`12 A. No.
`13 Q. Have you ever had any conversations with
`14 Mr. Katsamberis?
`15 A. No.
`16 Q. Now, earlier there was some testimony that
`17 you reviewed the declaration of Mr. Bell; is that
`18 correct?
`19 A. Correct.
`20 Q. And the first time you reviewed that
`21 declaration was after you submitted your declaration?
`22 A. Absolutely.
`23 Q. And you also reviewed the declaration of
`24 Mr. Katsamberis; is that correct?
`25 A. Yes.
`
` 1 Q. And you reviewed that the first time after
` 2 submitting your declaration, correct?
` 3 A. Correct.
` 4 Q. Are you aware that LKQ has objected to the
` 5 vast majority of the information in your declaration?
` 6 A. No, I'm not aware of that.
` 7 Q. Were you ever asked to prepare a
` 8 supplemental declaration as part of this proceeding?
` 9 A. No.
`10 Q. Has any testimony, expert testimony, you've
`11 given before been the subject of a Daubert challenge?
`12 A. Oh, I think many cases.
`13 Q. Have any of those Daubert challenges been
`14 successful at having your testimony not considered?
`15 A. I'd have to look at my CV to answer that
`16 one.
`17 Q. So it's a yes-or-no question. As you sit
`18 here today, do you recall?
`19 A. I don't recall. I'd need -- I could tell
`20 you, though, by looking at -- there's a lot of cases.
`21 I have over 60 cases.
`22 Q. Why don't we mark a copy of your CV, then.
`23 It's previously been marked as Exhibit 2010.
`24 MR. ROBINSON: Is there a question pending?
`25 MR. ENGEL: Yeah. I believe that
`
`Page 19
`
`Page 21
`
` 1 Mr. Rappaport was going to look at his CV and see if
` 2 he could recall whether any of his testimony was not
` 3 considered because of a Daubert challenge.
` 4 A. I believe there's one case. Item No. 30 in
` 5 2006, where I was not allowed to testify. That case
` 6 was settled before trial.
` 7 Q. (By Mr. Engel) Do you know why you weren't
` 8 allowed to testify in that case?
` 9 A. Sometime after the case, I was sent a copy
`10 of the judge's order, and for unknown reasons to me,
`11 he wasn't going to let me testify on the damages in a
`12 trade secret misappropriation suit where I was
`13 representing General Electric, a division of General
`14 Electric.
`15 And -- I'm sorry. I was representing a
`16 company, J.T. Packard. I did testify at trial in a
`17 companion case, MGE versus General Electric, No. 31.
`18 And I think you see all of the conclusions
`19 regarding -- that case did go to trial, and on appeal
`20 GE prevailed and had no liability. As far as I'm
`21 aware, that's the only case that I've ever been
`22 excluded from.
`23 Q. And earlier, I had asked you how many times
`24 you opined on the validity of a patent, and you said
`25 you would have to look at your --
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`(5) Pages 18 - 21
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`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 22
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 24
`
` 1 A. Yes.
` 2 Q. -- CV. Now that you have your CV in front
` 3 of you, can you answer that question?
` 4 A. Oh, okay. Let me go through these. It may
` 5 take a while. In Item. 10, there are issues relating
` 6 to validity.
` 7 Q. Okay. And when you say "issues relating to
` 8 validity" for No. 10, what do you mean?
` 9 A. Well, again, you know, the -- all of my work
`10 on that case is confidential, so I'm not really
`11 allowed to talk about the details of that case, but my
`12 work has involved dealing with issues of validity of
`13 claims. I can't really say more than that.
`14 Q. Okay. In that case, you say that you
`15 testified -- or provided an opinion regarding
`16 "customs, standards and practices involved in the
`17 preparation, filing and prosecution of patent
`18 applications before the United States Patent and
`19 Trademark Office." Do you see that?
`20 A. Yes.
`21 Q. Is that the part of the report that you're
`22 saying deals with validity?
`23 A. Well, it's a very complicated case. I've
`24 submitted three reports and been deposed three times
`25 in that case. And in those reports, I've had to deal
`
` 1 Q. And when you say "write claims," I guess I'm
` 2 just not sure I understand. Are you a prosecuting
` 3 attorney involved in this case?
` 4 A. No.
` 5 Q. What do you mean when you say you had to
` 6 write claims not at issue in the case when it was
` 7 first filed?
` 8 A. Well, the -- the law, as it changed during
` 9 the time of this case, required that a new set of
`10 claims had to be submitted.
`11 Q. Because it's a malpractice case?
`12 A. Yes.
`13 Q. All right. Are there any other cases in
`14 your CV that deal with validity issues?
`15 A. There were -- there were issues involving
`16 validity in Item 21.
`17 Q. Okay. And before we talk about 21, I do
`18 have one follow-up question on Item 10.
`19 A. Okay.
`20 Q. And I'm trying to understand more your role.
`21 You represented the plaintiffs in that case?
`22 A. Yes.
`23 Q. And they were asserting there was legal
`24 malpractice --
`25 A. Yes.
`
`Page 23
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`Page 25
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` 1 with questions of validity of claims.
` 2 Q. Now, I don't want to know the specific facts
` 3 of this case, because I understand it's confidential,
` 4 but when you say you've had to deal with questions of
` 5 validity, I'm trying to understand what you mean by
` 6 that. And I'm trying to understand whether you're
` 7 offering an opinion that claims are valid or you're
` 8 offering an opinion as to patent procedure with
` 9 respect to whether claims are valid?
`10 A. No, it's more the substantive issue of
`11 whether the claims would -- could be considered valid.
`12 Q. Can you disclose the general subject matter
`13 of that case?
`14 A. The -- the patent involved advertising used
`15 in video games.
`16 Q. Are you a subject matter expert for
`17 advertising used in video games?
`18 A. No.
`19 Q. So how are you able to offer a substantive
`20 opinion on the validity of claims in a patent related
`21 to advertising in video games?
`22 A. Because I had to write claims that were not
`23 at issue when the case was first filed. The case law
`24 had changed such that it became necessary to actually
`25 write claims, which I did.
`
` 1 Q. -- that occurred? And were you writing
` 2 claims to show that valid claims could have been
` 3 written, and, therefore, there was malpractice?
` 4 A. That was part of it, yes, what occurred
` 5 there. The law had changed in the middle of the case.
` 6 Q. Did you render an opinion that the claims
` 7 you wrote were valid over the prior art?
` 8 A. Yes.
` 9 Q. All right. And No. 20, what was the nature
`10 of your opinion on validity in that case?
`11 A. Twenty-one.
`12 Q. Sure. Sorry. On 21?
`13 A. Yes. The -- the claims in that case raised
`14 issues as to whether the -- whether the subject matter
`15 of those claims were -- were valid and were
`16 supportable.
`17 Q. And you represented which party in this
`18 case?
`19 A. Armstrong Teasdale.
`20 Q. And in what context did you represent them?
`21 A. This was a case brought by an individual
`22 inventor against Armstrong Teasdale regarding the
`23 manner in which the representation was being handled
`24 with respect to patents that were filed on his behalf
`25 by Armstrong.
`
`Min-U-Script®
`
`Barkley Court Reporters
`(cid:19)(cid:19)(cid:25)
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`(6) Pages 22 - 25
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`

`LKQ CORPORATION v.
`CLEARLAMP, LLC
`
`Page 26
`
`IRVING RAPPAPORT
`September 20, 2013
`Page 28
`
` 1 Q. And was your opinion in that case that --
` 2 strike that.
` 3 Your opinion regarding validity in that
` 4 case, did you opine that the claims were invalid or
` 5 valid?
` 6 A. That there was no way that the claims could
` 7 be valid in that case.
` 8 Q. And did you do an analysis of the claims in
` 9 view of the prior art?
`10 A. Yes.
`11 Q. Did you rely on any technical experts to
`12 support your opinion?
`13 A. Yes.
`14 Q. For Case 10, did you rely on any technical
`15 experts to support your opini