throbber
CERTIFIED COPY
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`REDLINE DETECTION, LLC.
`
`Petitioner
`
`
`V.
`
`
`
`
` STAR ENVIROTECH,Patent Owner
`INC.
`
`
`
`Case IPR2013-00106
`
`U.S. Patent 6,526,808
`
`
`
`
`
`
`
`DEPOSITION OF JIM SAFFIE
`
`December 17, 2013
`
`
`
`
`
`
`
`40 BARKLEY
`
`””5
`CourtReporters
`®Tami L. Le, CSR No. 8716
`barkley.com
`3 68 4 4 4
`(858) 455-5444 San Diego
`(949) 955—0400 Irvine
`(310) 207-8000 Los Angeles
`(415) 433-5777 San Francisco
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`(916) 922-5777 Sacramento
`(408) 885-0550 San Jose
`(518) 490-1910 Albany
`(347) 821-4611 Brooklyn
`(818) 702-0202 Woodland Hills
`(212) 808-8500 New York City
`
`
`(702) 366-0500 Las Vegas
`(312) 379-5566 Chicago
`(516) 277-9494 Garden City
`(914) 510-9110 White Plains
`
`+971 4 8137744 Dubai+33 1 70 72 65 26 Paris +852 3693 1522 Hong Kong
`
`
`
`
`
`
`REDLINE EXHIBIT 1053
`Redline v. Star
`Trial IPR2013-00106
`
`p. 1053-1
`
`REDLINE EXHIBIT 1053
`Redline v. Star
`Trial IPR2013-00106
`p. 1053-1
`
`

`

`JIM SAFFIE
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________________
` 2
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 3 ____________________________
`
` 4
` REDLINE DETECTION, LLC.
` 5 Petitioner
`
` 6 v.
`
` 7 STAR ENVIROTECH, INC.
` Patent Owner
` 8
`
` 9 ______________________
`
`10 Case IPR2013-00106
` U.S. Patent 6,526,808
`11 ______________________
`
`12
`
`13
`
`14 Videotaped Deposition of JIM
`
`15 SAFFIE, taken on behalf of the
`
`16 Petitioner, at 2040 Main Street,
`
`17 14th Floor, Irvine, California,
`
`18 commencing at 9:04 a.m., on Tuesday,
`
`19 December 17, 2013, before Tami L. Le,
`
`20 CSR No. 8716, RPR.
`
`21
`
`22
`
`23
`
`24
`
`25
`
`2
`
`1053-2
`
`

`

`JIM SAFFIE
`
` 1 APPEARANCES OF COUNSEL:
`
` 2
`
` 3 For the Petitioner Redline Detection, LLC:
`
` 4 STETINA BRUNDA GARRED & BRUCKER
` BY: MATTHEW A. NEWBOLES, ESQ.
` 5 LOWELL ANDERSON, ESQ.
` 75 Enterprise
` 6 Suite 250
` Aliso Viejo, California 92656
` 7 949.855.1246
` mnewboles@stetinalaw.com
` 8 landerson@stetinalaw.com
`
` 9
` For the Patent Owner STAR EnviroTech, Inc.:
`10
` KNOBBE MARTENS OLSON & BEAR LLP
`11 BY: JARED C. BUNKER, ESQ.
` 2040 Main Street
`12 14th Floor
` Irvine, California 92614
`13 949.760.0404
` jared.bunker@kmob.com
`14
`
`15 The Videographer:
`
`16 Kevin Wall
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`3
`
`1053-3
`
`

`

`JIM SAFFIE
`
` 1 I N D E X
`
` 2 Deponent Examined By Page
`
` 3 Jim Saffie Mr. Newboles 7
`
` 4
`
` 5
`
` 6 PETITIONER'S EXHIBITS FOR IDENTIFICATION:
`
` 7 1001 - United States Patent No. US 6,526,808 10
` B1 dated March 4, 2003, 16 pages
` 8
` 1047 - Excerpt from the Snap-On website, 23
` 9 January 10, 2011, 4 pages
`
`10 1048 - United States Patent No. US 6,477,890 90
` B1, 8 pages
`11
` 1049 - User Manual for MotorVac Cool Smoke 105
`12 EVAP Leak Detection System, Part No.
` 500-0100, 18 pages
`13
` 2007 - Declaration of Jim Saffie dated October 11
`14 15, 2013, 49 pages
`
`15 2008 - SPX Kent-Moore Essential Tool Shipment 38
` September 2001, 1 page
`16
` 2009 - Operation Manual for SPX Kent-Moore 44
`17 Evaporative Emissions System Tester,
` Part No. J41413-200, 56 pages
`18
` 2010 - Operator Manual Vehicle Evaporative 58
`19 Emissions Leak Detection System,
` Diagnostic Smoke Vapor Machine, Rotunda
`20 General Service Equipment, 23 pages
`
`21 2011 - Instruction manual for Evaporative 76
` Emissions Leak Detector Part No. 8404C
`22 SPX Diagnostic Smoke Vapor Machine with
` UltraTraceUV Dye Solution, 16 pages
`23
` 2012 - Global Leak Detection Corp. Evaporative 88
`24 Emissions Tester KL19210 Operation
` Manual, 46 pages
`25
`
`4
`
`1053-4
`
`

`

`JIM SAFFIE
`
` 1 I N D E X (Continued)
`
` 2 PETITIONER'S EXHIBITS FOR IDENTIFICATION: Page
` (Continued)
` 3
` 2013 - July 2, 2001 letter from Richard B. 108
` 4 Laimbeer and John Dypen to Jim Saffie,
` with attachment, 3 pages
` 5
` 2014 - Operation Manual for the LeakMaster 115
` 6 NE240, 20 pages
`
` 7
`
` 8
`
` 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
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`22
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`23
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`24
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`25
`
`5
`
`1053-5
`
`

`

`JIM SAFFIE
`
` 1 IRVINE, CALIFORNIA; TUESDAY, DECEMBER 17, 2013
`
` 2 9:04 A.M.
`
` 3 oOo
`
` 4 THE VIDEOGRAPHER: Good morning. My name is
`
`09:04 5 Kevin Wall. I am a videographer associated with Barkley
`
` 6 Court Reporters, located at 2040 Main Street, Irvine,
`
` 7 California 92614.
`
` 8 The date is December 17th, 2013. The time is
`
` 9 9:04 a.m.
`
`09:04 10 This deposition is taking place at 2040 Main
`
`11 Street, Irvine, California 92614, in the matter of
`
`12 Redline Detection, LLC, versus STAR Envirotech, Inc.,
`
`13 Case No. IPR2013-00106.
`
`14 This is the videotaped deposition of Jim
`
`09:05 15 Saffie, being taken on behalf of the petitioner.
`
`16 Will counsel for the parties please identify
`
`17 themselves.
`
`18 MR. NEWBOLES: Matt Newboles and Lowell
`
`19 Anderson for petitioner Redline Detection.
`
`09:05 20 MR. BUNKER: Jared Bunker from the law firm of
`
`21 Knobbe, Martens on behalf of the patent owner, STAR
`
`22 EnviroTech, and the witness, Mr. Saffie.
`
`23 THE VIDEOGRAPHER: Thank you.
`
`24 The court reporter may now swear in the
`
`09:05 25 witness.
`
`6
`
`1053-6
`
`

`

`JIM SAFFIE
`
`09:05 1 JIM SAFFIE,
`
` 2 having been first duly sworn, was
`
` 3 examined and testified as follows:
`
` 4
`
`09:05 5 EXAMINATION
`
` 6 BY MR. NEWBOLES:
`
` 7 Q Sir, can you please state your name.
`
` 8 A Jim Saffie.
`
` 9 Q Can you spell that, please?
`
`09:06 10 A J-I-M, S-A-F-F-I-E.
`
`11 Q Mr. Saffie, have you had your deposition taken
`
`12 before?
`
`13 A I have.
`
`14 Q Are you taking any medication or drugs that
`
`09:06 15 would affect your ability to understand or respond to
`
`16 questions today?
`
`17 A No.
`
`18 Q You're under oath to tell the truth today and
`
`19 your testimony is being video-recorded.
`
`09:06 20 Are you aware of that?
`
`21 A Yes.
`
`22 Q The deposition testimony that you're giving
`
`23 today is the same testimony and has the same force and
`
`24 effect as if you were testifying in a court of law.
`
`09:06 25 Do you understand that?
`
`7
`
`1053-7
`
`

`

`JIM SAFFIE
`
`09:06 1 A Yes.
`
` 2 Q Procedurally, I'll ask you a question and, in
`
` 3 turn, I will expect you to answer. In answering my
`
` 4 question, please try to state clearly "yes" or "no" to
`
`09:06 5 make it easier for the court reporter. Also, it's best
`
` 6 if you allow me to finish my question before answering.
`
` 7 If you don't understand a question, please let me know.
`
` 8 Okay?
`
` 9 A Okay.
`
`09:06 10 Q Because if you answer a question, I will assume
`
`11 that you understand it.
`
`12 Okay?
`
`13 A Sure.
`
`14 Q Also, are you aware this deposition is being
`
`09:07 15 taken in connection with an Inter Partes Review or IPR
`
`16 proceeding?
`
`17 A Yes.
`
`18 Q Because your deposition is being taken as part
`
`19 of an IPR proceeding, special rules apply. Those rules
`
`09:07 20 expressly state that once your cross-examination has
`
`21 commenced until your cross-examination has concluded,
`
`22 your counsel shall not consult or confer with you
`
`23 regarding the substance of your testimony already given
`
`24 or anticipated to be given -- or anticipate to be given.
`
`09:07 25 Excuse me.
`
`8
`
`1053-8
`
`

`

`JIM SAFFIE
`
`09:07 1 Do you know that?
`
` 2 A Yes.
`
` 3 Q Okay. The only exception is when your counsel
`
` 4 needs to confer with you as to whether or not to assert
`
`09:07 5 a privilege against you from testifying.
`
` 6 Are you aware of that?
`
` 7 A Okay. Yes.
`
` 8 Q And he can also confer with you if he needs to
`
` 9 figure out how to comply with the rule by the Patent
`
`09:07 10 Trial and Appeal Board.
`
`11 A Okay.
`
`12 Q Your counsel cannot suggest to you the manner
`
`13 in which any questions should be answered.
`
`14 Are you aware of that?
`
`09:07 15 A Yes.
`
`16 Q Thank you.
`
`17 If at any time during the deposition you need
`
`18 to take a break, please let me know.
`
`19 A Okay.
`
`09:07 20 Q However, we will not take a break if a question
`
`21 is pending. And, in particular, your attorney cannot
`
`22 initiate a private conference with you or call for a
`
`23 break in the proceedings while a question is pending
`
`24 except for the purpose of determining whether a
`
`09:08 25 privilege should be asserted.
`
`9
`
`1053-9
`
`

`

`JIM SAFFIE
`
`09:08 1 A Okay.
`
` 2 Q Do you understand those specific rules?
`
` 3 A Yes, I do.
`
` 4 MR. NEWBOLES: Actually, at this time I'd like
`
`09:08 5 to introduce Exhibit 1001, which is the '808 patent.
`
` 6 (Petitioner's Exhibit 1001 was marked for
`
` 7 identification.)
`
` 8 (Document handed to counsel and the deponent.)
`
` 9 Q BY MR. NEWBOLES: Mr. Saffie, are you familiar
`
`09:08 10 with this document?
`
`11 A I am.
`
`12 Q You are a named inventor on this patent, aren't
`
`13 you?
`
`14 A Yes.
`
`09:08 15 Q And you understand that Claims 9 and 10 are at
`
`16 issue in this Inter Partes Review proceeding?
`
`17 A Yes.
`
`18 Q Are you familiar with Claims 9 and 10 of the
`
`19 '808 patent?
`
`09:08 20 A Yes.
`
`21 Q And you know how those claims are performed;
`
`22 correct?
`
`23 A Yes.
`
`24 MR. NEWBOLES: I'll load you up with exhibits
`
`09:09 25 because now I'm going to introduce Exhibit 2007.
`
`10
`
`1053-10
`
`

`

`JIM SAFFIE
`
`09:09 1 (Petitioner's Exhibit 2007 was marked for
`
` 2 identification.)
`
` 3 (Document handed to counsel and the deponent.)
`
` 4 MR. NEWBOLES: We're keeping the exhibit
`
`09:09 5 numbers, as they are already been made of record in this
`
` 6 case.
`
` 7 Q Are you familiar with this Exhibit 2007,
`
` 8 Mr. Saffie?
`
` 9 A Yes.
`
`09:09 10 Q Is this your declaration that was submitted in
`
`11 connection with the present Inter Partes Review?
`
`12 A Yes.
`
`13 Q Could you please refer now to Page 48 of that
`
`14 document.
`
`09:09 15 A (Witness complies.)
`
`16 Q Do you see that signature at the bottom of the
`
`17 page?
`
`18 A Yes.
`
`19 Q Is that your signature?
`
`09:09 20 A Yes.
`
`21 Q Did you execute that document on October 15th,
`
`22 2013?
`
`23 A Yes.
`
`24 Q And you are the president and CEO of STAR
`
`09:10 25 Envirotech; correct?
`
`11
`
`1053-11
`
`

`

`JIM SAFFIE
`
`09:10 1 A Correct.
`
` 2 Q And STAR Envirotech is the owner of the '808
`
` 3 patent at issue in this IPR proceeding?
`
` 4 A Yes.
`
`09:10 5 Q Can I please have you turn your attention to
`
` 6 Paragraph 7 on Page 2 of Exhibit 2007.
`
` 7 A I'm sorry. What page?
`
` 8 Q Page 2, Paragraph 7, of your declaration.
`
` 9 A Oh.
`
`09:10 10 Q And can you please review the first sentence of
`
`11 that paragraph?
`
`12 Let me know when you've had a chance to look at
`
`13 that.
`
`14 A (Reviewing document.)
`
`09:10 15 Okay.
`
`16 Q In the first sentence, it states that, quote:
`
`17 "STAR designs and sells leak
`
`18 detection equipment for performing the
`
`19 methods claimed in the '808 patent as
`
`09:11 20 well as STAR's other intellectual
`
`21 property."
`
`22 Do you see that?
`
`23 A Yes.
`
`24 Q When you refer to "other intellectual
`
`09:11 25 property," can you identify what that is, please?
`
`12
`
`1053-12
`
`

`

`JIM SAFFIE
`
`09:11 1 A Well, we own other patents, at least that.
`
` 2 Q Can you describe those other patents?
`
` 3 MR. BUNKER: Objection; outside the scope.
`
` 4 Q BY MR. NEWBOLES: You can --
`
`09:11 5 MR. BUNKER: You can answer, Mr. Saffie.
`
` 6 THE DEPONENT: I don't remember the names, the
`
` 7 numbers or, you know, I mean...
`
` 8 Q BY MR. NEWBOLES: The other intellectual
`
` 9 property that you referred to, though, includes patented
`
`09:11 10 technology, to the best of your knowledge?
`
`11 A Yes.
`
`12 Q Do you know anything about the subject matter
`
`13 of that patented technology?
`
`14 MR. BUNKER: Objection; outside the scope.
`
`09:11 15 THE DEPONENT: Sure, yes.
`
`16 Q BY MR. NEWBOLES: What can you tell me about
`
`17 the other patented technology that's owned by STAR other
`
`18 than the '808 patent?
`
`19 MR. BUNKER: Objection; outside scope.
`
`09:12 20 THE DEPONENT: What specifically do you want to
`
`21 know?
`
`22 Q BY MR. NEWBOLES: What knowledge you have
`
`23 regarding the other patents other than the '808 that's
`
`24 encompassed within the other intellectual property
`
`09:12 25 mentioned in Paragraph 7.
`
`13
`
`1053-13
`
`

`

`JIM SAFFIE
`
`09:12 1 MR. BUNKER: Same objection.
`
` 2 THE DEPONENT: How many hours are we going to
`
` 3 be here? Seriously --
`
` 4 (Simultaneous speaking.)
`
`09:12 5 Q BY MR. NEWBOLES: Can you summarize or --
`
` 6 A Well, several of them are on
`
` 7 leak-detection-related, some are not. We have other
`
` 8 patents pending. I don't really know where -- where you
`
` 9 want me to start and finish.
`
`09:12 10 Q Okay. Fair enough.
`
`11 Moving on, if I could have you refer back to
`
`12 the '808 patent, Exhibit 1001.
`
`13 A Sure.
`
`14 (Witness complies.)
`
`09:12 15 Q You are aware that the '808 patent teaches that
`
`16 the user can use air to run those smoke machines
`
`17 disclosed in the '808 patent; correct?
`
`18 A Yes.
`
`19 Q So the user does not have to use inert gas to
`
`09:13 20 practice the invention of the '808 -- I'm sorry. Strike
`
`21 that.
`
`22 The user doesn't have to use inert gas to run
`
`23 the smoke machines disclosed in the '808 patent;
`
`24 correct?
`
`09:13 25 MR. BUNKER: Objection; form.
`
`14
`
`1053-14
`
`

`

`JIM SAFFIE
`
`09:13 1 THE DEPONENT: Are we talking in the entire
`
` 2 body of the patent or --
`
` 3 Q BY MR. NEWBOLES: I'm talking about the '808
`
` 4 patent discloses you can use air; correct?
`
`09:13 5 A Yes.
`
` 6 Q And you don't have to use an inert gas;
`
` 7 correct?
`
` 8 MR. BUNKER: Objection; form.
`
` 9 THE DEPONENT: Correct.
`
`09:13 10 Q BY MR. NEWBOLES: Are the smoke machines
`
`11 described in the '808 patent capable of running on both
`
`12 air and nitrogen to make smoke?
`
`13 A Yes.
`
`14 Q Claim 9 of the '808 patent does not use air to
`
`09:13 15 perform that method; correct?
`
`16 A I believe that's correct. I'd have to maybe
`
`17 read it again to make sure.
`
`18 Q Would you like to review Claim 9?
`
`19 A Sure.
`
`09:14 20 (Reviewing document.)
`
`21 Is this a copy of the amended --
`
`22 Q Yes, that should include --
`
`23 A Okay.
`
`24 Q -- the patent and the two reexam certificates.
`
`09:15 25 A (Reviewing document.)
`
`15
`
`1053-15
`
`

`

`JIM SAFFIE
`
`09:15 1 Okay. Could you repeat the question?
`
` 2 Q Claim 9 of the '808 patent does not use air to
`
` 3 perform that method; correct?
`
` 4 MR. BUNKER: Objection; form.
`
`09:15 5 THE DEPONENT: Correct.
`
` 6 Q BY MR. NEWBOLES: The word "air" doesn't appear
`
` 7 anywhere in Claim 9, does it?
`
` 8 A No.
`
` 9 Q So is it fair to say if someone uses STAR's
`
`09:15 10 smoke machines but uses air to generate the smoke, that
`
`11 the user is not, quote, performing the method, close
`
`12 quote, of Claim 9 of the '808 patent?
`
`13 MR. BUNKER: Objection; outside the scope.
`
`14 Objection; form.
`
`09:15 15 THE DEPONENT: I'm not sure that would be true.
`
`16 I'd have to see the -- the equipment to see how they're
`
`17 using it.
`
`18 Q BY MR. NEWBOLES: Does Claim 9 call for a
`
`19 noncombustible gas?
`
`09:16 20 A Yes.
`
`21 Q And what is your understanding of what a
`
`22 noncombustible gas is?
`
`23 A Gas that does not include oxygen, for one.
`
`24 Q Does air include oxygen?
`
`09:16 25 A Yes, it does.
`
`16
`
`1053-16
`
`

`

`JIM SAFFIE
`
`09:16 1 Q Would air be considered a noncombustible gas?
`
` 2 A No.
`
` 3 Q So if I'm using air, that would not be a
`
` 4 noncombustible gas within the meaning of Claim 9; is
`
`09:16 5 that fair?
`
` 6 A Air is not a combustible -- air is not inert.
`
` 7 Q And if I use air in the practice of the
`
` 8 invention of the '808 patent, I would not be practicing
`
` 9 Claim 9; is that correct?
`
`09:16 10 MR. BUNKER: Objection; form. Objection;
`
`11 outside the scope.
`
`12 THE DEPONENT: You know, I'm -- I'm not a
`
`13 patent lawyer. I -- but there's more to Claim 9 than
`
`14 just air, so I -- I --
`
`09:17 15 Q BY MR. NEWBOLES: Well, actually, air is not in
`
`16 Claim 9, is it?
`
`17 A Correct.
`
`18 Q You mention repeatedly in your declaration, in
`
`19 other parts of it, about various devices that perform
`
`09:17 20 the methods of Claim 9; is that correct? Is that a fair
`
`21 statement?
`
`22 A Say that again.
`
`23 Q You state, in several places in your
`
`24 declaration, about various devices that perform the
`
`09:17 25 method of Claim 9?
`
`17
`
`1053-17
`
`

`

`JIM SAFFIE
`
`09:17 1 A Yes.
`
` 2 Q And you're familiar with how Claim 9 is
`
` 3 performed?
`
` 4 A Yes.
`
`09:17 5 Q And my question is, if I use air as the gas to
`
` 6 make smoke and use that smoke for testing an EVAP system
`
` 7 of a fuel tank, is that performing Claim 9?
`
` 8 MR. BUNKER: Objection; form. Objection;
`
` 9 outside the scope.
`
`09:18 10 THE DEPONENT: Well, it's not in Claim 9. If
`
`11 that's your conclusion, then that's fine. But I --
`
`12 you're asking me to come up with some legal conclusion
`
`13 I -- that I can't give you. I'm -- I'm agreeing with
`
`14 you, there's no oxygen in -- I mean there's no air in
`
`09:18 15 Claim 9.
`
`16 Q BY MR. NEWBOLES: Okay. Can I have you refer
`
`17 to Paragraph 8 of your declaration, Exhibit 2007.
`
`18 A Okay.
`
`19 Q Can you let me know when you've had a chance to
`
`09:18 20 review that?
`
`21 A (Reviewing document.)
`
`22 Okay.
`
`23 Q Can you identify STAR's leak detection
`
`24 equipment that is sold to the non-OEM-authorized
`
`09:19 25 dealerships as referred to in that Paragraph 8?
`
`18
`
`1053-18
`
`

`

`JIM SAFFIE
`
`09:19 1 A You mean you want to know our customers' names
`
` 2 or --
`
` 3 Q Just the -- the -- the leak detection
`
` 4 equipment, if you can identify what that is.
`
`09:19 5 A It's the smoke machines that we sell to
`
` 6 customers that are not part of the OEM market.
`
` 7 Q Are those smoke machines? Can you describe
`
` 8 what that equipment -- you used the word "equipment."
`
` 9 If you could describe what that equipment is, I'd
`
`09:19 10 appreciate it.
`
`11 A The -- where I say "leak detection equipment"?
`
`12 Q Uh-huh.
`
`13 A It's the leak detection, smoke machines for
`
`14 leak detection.
`
`09:19 15 Q Are they branded for any particular --
`
`16 (Simultaneous speaking.)
`
`17 Q I'm sorry. I didn't let you finish. I'm
`
`18 sorry.
`
`19 Are they private-labeled for any companies?
`
`09:19 20 A Some are. That's why I ask if you want me to
`
`21 mention customers.
`
`22 (Simultaneous speaking.)
`
`23 Q If you could, please.
`
`24 A We -- some are branded with Snap-On Tools, some
`
`09:20 25 have SPX, Mac, Matco --
`
`19
`
`1053-19
`
`

`

`JIM SAFFIE
`
`09:20 1 (Reporter seeks clarification.)
`
` 2 THE DEPONENT: Mac, M-A-C; Matco, M-A-T-C-O.
`
` 3 -- Cornwell, Bosch. There are others. At this
`
` 4 second, I can't think of...
`
`09:20 5 Q BY MR. NEWBOLES: With respect to those
`
` 6 products that you just identified, can those be run on
`
` 7 air as well as nitrogen to generate smoke?
`
` 8 MR. BUNKER: Objection; outside the scope.
`
` 9 THE DEPONENT: I think the ones I've mentioned
`
`09:20 10 can.
`
`11 Q BY MR. NEWBOLES: Are any of those products
`
`12 that you mentioned, are those covered by any patents
`
`13 held by STAR, other than the '808 patent?
`
`14 MR. BUNKER: Objection; outside the scope.
`
`09:21 15 THE DEPONENT: Yes.
`
`16 Q BY MR. NEWBOLES: Can you identify which
`
`17 patents those are?
`
`18 MR. BUNKER: Same objection.
`
`19 THE DEPONENT: You know, I -- I really would
`
`09:21 20 need to look -- look at our portfolio if you want to
`
`21 mention -- I mean, I can mention -- do you want numbers?
`
`22 I mean, I --
`
`23 Q BY MR. NEWBOLES: If any -- but it's -- there
`
`24 are other patents other than the '808 --
`
`09:21 25 A Yes.
`
`20
`
`1053-20
`
`

`

`JIM SAFFIE
`
`09:21 1 Q -- that applies to those products; is that a
`
` 2 fair statement?
`
` 3 A Yes.
`
` 4 Q And in Paragraph 9 of your declaration, you
`
`09:21 5 refer to the Snap-On Smart Smoke as an example of an
`
` 6 aftermarket leak detection machine; is that correct?
`
` 7 A Yes.
`
` 8 Q And is it your understanding that Snap-On Smart
`
` 9 Smoke is an example of an aftermarket leak detection
`
`09:21 10 machine that can perform the methods claimed in the '808
`
`11 patent?
`
`12 A Yes.
`
`13 Q Does the Smart Smoke machine, does that perform
`
`14 Claim 9 of the '808 patent?
`
`09:22 15 A Yes.
`
`16 Q And on Page 4 of your declaration, you show
`
`17 several pictures of that device; correct?
`
`18 A Yes.
`
`19 Q And included on Page 4 is a picture that
`
`09:22 20 depicts the heating element in the smoke-producing
`
`21 chamber.
`
`22 Do you see that?
`
`23 A Yes.
`
`24 Q Does the manufacturer of the smoke machine
`
`09:22 25 establish the position of the heating element within the
`
`21
`
`1053-21
`
`

`

`JIM SAFFIE
`
`09:22 1 smoke-producing chamber as shown on Page 4?
`
` 2 MR. BUNKER: Objection; form.
`
` 3 THE DEPONENT: How are you defining
`
` 4 "establish"? I mean --
`
`09:22 5 Q BY MR. NEWBOLES: Who puts it in position?
`
` 6 A The manufacturer.
`
` 7 Q And once that heating element is placed in
`
` 8 position within the smoke-producing chamber by the
`
` 9 manufacturer, is the chamber glued or welded shut at
`
`09:22 10 that point?
`
`11 A It's secured, so it's not designed to be
`
`12 reopened.
`
`13 Q So it cannot be easily opened, it's closed;
`
`14 right?
`
`09:23 15 A Right.
`
`16 Q Okay. Can the Snap-On machine operate on air
`
`17 as well as nitrogen to perform leak tests?
`
`18 A Yes.
`
`19 Q And that's -- the Snap-On smoke machine is
`
`09:23 20 covered by other patents held by STAR, other than the
`
`21 '808 patent, to the best of your knowledge?
`
`22 A Yes.
`
`23 Q Okay. Mr. Saffie, at this time I'm going to
`
`24 provide you with a new exhibit. This is Petitioner's
`
`09:23 25 Exhibit 1047, which I will represent to you was taken
`
`22
`
`1053-22
`
`

`

`JIM SAFFIE
`
`09:23 1 from Snap-On's website.
`
` 2 (Petitioner's Exhibit 1047 was marked for
`
` 3 identification.)
`
` 4 (Document handed to counsel and the deponent.)
`
`09:23 5 Q BY MR. NEWBOLES: This is a brochure for the
`
` 6 Smart Smoke machine that you reference in Paragraph 9 of
`
` 7 your declaration. You -- can you review that and let me
`
` 8 know once you've had a chance to do so?
`
` 9 MR. BUNKER: Object to this exhibit as lacks
`
`09:24 10 authenticity.
`
`11 Can I have a standing objection to outside the
`
`12 scope so I don't have to keep stepping on your
`
`13 questions, Counselor?
`
`14 MR. NEWBOLES: Yes.
`
`09:24 15 THE DEPONENT: (Reviewing document.)
`
`16 Okay.
`
`17 Q BY MR. NEWBOLES: Can you confirm that this is
`
`18 a brochure for the Smart Smoke machine that you
`
`19 reference in Paragraph 9 of your declaration?
`
`09:26 20 A Yes.
`
`21 Q Does it accurately describe Snap-On's Smart
`
`22 Smoke machine?
`
`23 A Yes.
`
`24 Q Does it identify the '808 patent?
`
`09:26 25 A It does.
`
`23
`
`1053-23
`
`

`

`JIM SAFFIE
`
`09:26 1 Q Does it identify other patents held by STAR?
`
` 2 A Yes.
`
` 3 Q And specifically there is a patent number
`
` 4 reference, 6,439,031. That's a patent held by STAR?
`
`09:26 5 A Yes.
`
` 6 Q And the Patent No. 6,392,227, that is a patent
`
` 7 that's owned by STAR EnviroTech?
`
` 8 A Yes.
`
` 9 Q If you could turn to the second page of that
`
`09:26 10 document.
`
`11 A (Witness complies.)
`
`12 Q On the left-hand side, you'll see a number of
`
`13 bullet points.
`
`14 A Yes.
`
`09:26 15 Q And if you look at the fifth bullet point down
`
`16 on the left, it says the machine functions with shop
`
`17 air, correct, among other things?
`
`18 A Yes.
`
`19 Q Okay. And the use of shop air is not covered
`
`09:27 20 by the claims of the '808 patent; is that a fair
`
`21 statement?
`
`22 MR. BUNKER: Add an objection to form in
`
`23 addition to my standing objection.
`
`24 THE DEPONENT: It's not covered by the Claim 9
`
`09:27 25 that we were talking about, right.
`
`24
`
`1053-24
`
`

`

`JIM SAFFIE
`
`09:27 1 Q BY MR. NEWBOLES: And below that, the patented
`
` 2 UltraTraceUV dye solution, do you see that?
`
` 3 A Yes.
`
` 4 Q Are you familiar with that product?
`
`09:27 5 A Yes.
`
` 6 Q That dye is not required to perform any claims
`
` 7 of the '808 patent; is that correct?
`
` 8 A Correct.
`
` 9 Q And that's a proprietary product to STAR;
`
`09:27 10 correct?
`
`11 A The UltraTraceUV?
`
`12 Q Yes.
`
`13 A Yes.
`
`14 Q Is the UltraTraceUV dye, is that used to
`
`09:28 15 promote the sale of STAR EnviroTech's smoke machines?
`
`16 A I suppose you could -- yes, it's one of the
`
`17 features that we offer.
`
`18 Q And you promote that in your advertising?
`
`19 A Yes.
`
`09:28 20 Q Okay. And on the right-hand side, you'll see a
`
`21 list of applications.
`
`22 Do you see that?
`
`23 A Yes.
`
`24 Q And can you confirm that only one of those
`
`09:28 25 applications is for EVAP?
`
`25
`
`1053-25
`
`

`

`JIM SAFFIE
`
`09:28 1 A Yes.
`
` 2 Q In fact, there are -- I'll have you count
`
` 3 them -- there are 22 other applications other than EVAP
`
` 4 listed; is that correct?
`
`09:28 5 A I'll take your word for the count.
`
` 6 Q I'll represent to you that it is.
`
` 7 A Okay.
`
` 8 Q And can the Smart Smoke perform each of those
`
` 9 22 applications, other than EVAP?
`
`09:29 10 A Yes.
`
`11 Q And do any of those 22 non-EVAP applications
`
`12 perform the method of Claim 9 of the '808 patent?
`
`13 MR. BUNKER: Add an objection to form.
`
`14 THE DEPONENT: I'm sorry. Say that again.
`
`09:29 15 Q BY MR. NEWBOLES: Okay. There are 23
`
`16 applications, one's for EVAP; correct?
`
`17 A Yes.
`
`18 Q And there's 22 non-EVAP applications?
`
`19 A Okay.
`
`09:29 20 Q And the Smart Smoke can perform all of those
`
`21 applications; correct?
`
`22 A Yes.
`
`23 Q If I use the Smart Smoke machine to perform
`
`24 those 22 non-EVAP applications, am I performing Claim 9
`
`09:29 25 of the '808 patent?
`
`26
`
`1053-26
`
`

`

`JIM SAFFIE
`
`09:29 1 A No.
`
` 2 Q Can I please have you refer back to
`
` 3 Paragraph 11 of your declaration, Exhibit 2007.
`
` 4 A (Witness complies.)
`
`09:30 5 Q Let me know once you've had a chance to review
`
` 6 that.
`
` 7 A (Reviewing document.)
`
` 8 Okay.
`
` 9 Q Have you had a chance to review that,
`
`09:30 10 Mr. Saffie?
`
`11 A Yes.
`
`12 Q The company referred to in the first sentence,
`
`13 K-Line Industries, Inc., was that company acquired by
`
`14 STAR EnviroTech?
`
`09:31 15 A Not the company, just one of their product
`
`16 brands.
`
`17 Q And that is the agreement that you're referring
`
`18 to in the first sentence?
`
`19 A Yes.
`
`09:31 20 Q And that was in late 2005?
`
`21 A Sometime in 2005.
`
`22 Q And the '808 -- when did the '808 patent issue?
`
`23 That's Exhibit 1001.
`
`24 A March 4th, 2003.
`
`09:31 25 Q And that was about two years before late 2005
`
`27
`
`1053-27
`
`

`

`JIM SAFFIE
`
`09:31 1 that you referred to in Paragraph 11?
`
` 2 A Yes.
`
` 3 Q Are the K-Line smoke-based leak detection
`
` 4 systems referred to in Paragraph 11 of Exhibit 2007, are
`
`09:32 5 those capable of running on air as well as nitrogen?
`
` 6 A No.
`
` 7 Q They run only on nitrogen?
`
` 8 A Correct. Well, let me clarify that, they run
`
` 9 only on inert gas. They can use other than nitrogen,
`
`09:32 10 but only inert gas.
`
`11 Q But they do not use air?
`
`12 A Correct.
`
`13 Q Okay. Are the K-Line smoke-based leak
`
`14 detection systems referred to in Paragraph 11 covered by
`
`09:32 15 any intellectual property other than the '808 patent?
`
`16 MR. BUNKER: Objection; outside the scope.
`
`17 THE DEPONENT: Yes, I believe so.
`
`18 Q BY MR. NEWBOLES: Would those be the other
`
`19 patents that we referenced earlier with respect to the
`
`09:32 20 Snap-On Smart Smoke?
`
`21 A I don't think so. The '031 and '227?
`
`22 Q Uh-huh.
`
`23 A I don't think so.
`
`24 Q Okay. But they are covered by other
`
`09:33 25 intellectual property --
`
`28
`
`1053-28
`
`

`

`JIM SAFFIE
`
`09:33 1 A Yes.
`
` 2 Q -- to the best of your knowledge?
`
` 3 You mention in Paragraph 11 that STAR purchased
`
` 4 the intellectual prope

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