`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` __________________________
` :
` FACEBOOK, INC., LINKEDIN :
` CORP., and TWITTER, INC., :
` :
` Petitioners : Case
` : Nos. IPR2013-00478
` v. : IPR2013-00479
` : IPR2013-00480
` SOFTWARE RIGHTS ARCHIVE, : IPR2013-00481
` LLC, :
` Patent Owner :
` __________________________:
`
` Volume 1 of 2
`
` VIDEOTAPE DEPOSITION of PAUL S. JACOBS,
` Ph.D., taken before Ryan K. Black, RPR, CLR
` Notary Public, in and for the District of
` Columbia, at the offices of Rothwell, Figg,
` Ernst & Manbeck, P.C., 607 14th Street, N.W.,
` Washington, D.C., on Tuesday, August 5, 2014,
` commencing at 9:30 a.m.
`
` Veritext Legal Solutions
` Mid-Atlantic Region
` 1250 Eye Street, NW - Suite 1201
` Washington, D.C. 20005
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`Page 2
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` A P P E A R A N C E S:
`
` ROTHWELL, FIGG, ERNST & MANBECK, P.C.
` By: MARTIN ZOLTICK, ESQ.
` MICHAEL JONES, ESQ.
` SOUMYA PANDA, ESQ.
` 607 14th Street, N.W., Suite 800
` Washington, D.C. 20005
` 202.783.6040
` Representing - Software Rights Archive, LLC
`
` DINOVO PRICE ELLWANGER & HARDY LLP
` By: VICTOR G. HARDY, ESQ.
` MITCH YANG, ESQ.
` 7000 North MoPac Expressway, Suite 350
` Austin, Texas 78731
` 512.539.2626
` Representing - Software Rights Archive, LLC
`
` KEKER & VAN NEST
` By: DAVID J. SILBERT, ESQ.
` 633 Battery Street
` San Francisco, California 94111
` 415.676.2261
` Representing - LinkedIn Corp. & Twitter, Inc.
`
` COOLEY LLP
` By: LOWELL MEAD, ESQ.
` 3175 Hanover Street
` Palo Alto, California 94304
` 650.849.5734
` Representing - Facebook, Inc.
`
` ALSO PRESENT:
` Edward A. Fox, Ph.D
` Amy Langville, Ph.D.
` Jason Levin, Legal Videographer
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`Page 3
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` I N D E X
`
` TESTIMONY OF: PAUL S. JACOBS, Ph.D
`
` BY MR. SILBERT.................................6
`
` BY MR. MEAD...................................--
`
` BY MR. HARDY..................................--
`
` - - -
`
` E X H I B I T S
`
` - - -
`
` NUMBER DESCRIPTION MARKED
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` Ptnt Owner 2115 an errata sheet for Dr.
`
` Jacobs' declaration.........83
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` Petitioner 1035 a handwritten drawing......191
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` THE VIDEOGRAPHER: We are now on the
`
` record.
`
` Please note that the microphones are
`
` sensitive and may pick up whispering and private
`
` conversations, and please turn off all cell
`
` phones or place them away from the microphones,
`
` as they can interfere with the deposition audio.
`
` Recording will continue until all parties agree
`
` to go off the record.
`
` My name is Jason Levin, representing
`
` Veritext. The date today is August 5th, 2014,
`
` and the time is approximately 9:30 a.m.
`
` This deposition is being held at
`
` the offices of Rothwell, Figg, Ernst & Manbeck,
`
` located at 607 14th Street, Northwest, Suite
`
` 800, Washington, D.C. 20005, and is being taken
`
` by counsel for the petitioners.
`
` The caption of the case is Facebook,
`
` Inc., LinkedIn Corp., and Twitter, Inc., versus
`
` Software Rights Archives, LLC.
`
` The case is filed in the United States
`
` Patent and Trademark Office, before the Patent
`
` Trial and Appeal Board, IPR 2013-00478 and 479
`
` and 480 and 481.
`
` The name of the witness is Paul S.
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`Page 5
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` Jacobs.
`
` At this time, the attorneys present
`
` will please identify themselves and the parties
`
` they represent.
`
` MR. SILBERT: David Silbert, Keker &
`
` Van Nest, on behalf of LinkedIn and Twitter.
`
` MR. MEAD: Lowell Mead, with Cooley,
`
` LLP, on behalf of Facebook.
`
` MR. HARDY: Victor Hardy, from DiNovo
`
` Price Ellwanger & Hardy, on behalf of SRA.
`
` MR. ZOLTICK: Marty Zoltick, from
`
` Rothwell, Figg, Ernst & Manbeck, on behalf of
`
` the patent owner, SRA.
`
` MR. YANG: Mitch Yang, on behalf of
`
` SRA, for DiNovo Price Ellwanger & Hardy.
`
` MR. JONES: Michael Jones, Rothwell,
`
` Figg, Ernst & Manbeck, on behalf of patent
`
` owner, SRA.
`
` MR. PANDA: Soumya Panda, on behalf of
`
` SRA, Rothwell, Figg, Ernst & Manbeck.
`
` THE VIDEOGRAPHER: Anybody else?
`
` MR. SILBERT: Also present is
`
` Dr. Edward Fox.
`
` THE VIDEOGRAPHER: And our court
`
` reporter is Ryan --
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` MR. HARDY: Also present is Amy
`
` Langville.
`
` THE VIDEOGRAPHER: Our court reporter,
`
` Ryan Black, representing Veritext, will swear in
`
` the witness, and we can proceed.
`
` - - - - -
`
` Whereupon --
`
` PAUL S. JACOBS, Ph.D.,
`
` called to testify, having been first duly sworn
`
` or affirmed, was examined and testified as
`
` follows:
`
` CROSS EXAMINATION
`
` BY MR. SILBERT:
`
` Q. Good morning, Dr. Jacobs.
`
` A. Good morning.
`
` Q. Do you understand that you're under
`
` oath?
`
` A. Yes.
`
` Q. And is there any reason that you can't
`
` give truthful and accurate testimony today?
`
` A. No.
`
` Q. Okay. I want to direct your attention
`
` to the Fox papers, and specifically to Fox
`
` Thesis, Fox SMART and Fox Collections.
`
` Now, your position is that those
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` papers do not teach or suggest analyzing objects
`
` in a database that cite one another; is that
`
` correct?
`
` A. May I refer to my declaration?
`
` Q. Please.
`
` A. Do you have a particular page in mind?
`
` Q. Of your declaration?
`
` A. Yes. And which patent are we
`
` discussing?
`
` Q. I'm not, at this point, discussing a
`
` particular patent, but I think this opinion
`
` relates to all of the patents. And I don't have
`
` a particular cite to your declaration in mind,
`
` but this is something that you discussed
`
` throughout your declaration.
`
` A. Okay. Well, I'm going to review my
`
` declaration, and I'm going to refer to it in my
`
` answer.
`
` Q. That's fine.
`
` Do you need me to repeat the question?
`
` A. Let -- I probably will, but may I find
`
` the reference in my declaration first?
`
` Q. Sure.
`
` A. Okay. So would you repeat the
`
` question, please?
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` Q. Yes.
`
` Is it true that your position is that
`
` Fox Thesis, Fox SMART and Fox Collections do not
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` teach or suggest analysis of objects in a
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` database that cite one another?
`
` A. So -- so in my declaration; for
`
` example, for the '352 patent, I have a section
`
` starting on Page 62, Paragraph 130. And that
`
` section -- the title of the section it says,
`
` cited reference, do not teach and would not have
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` suggested the database and object limitations of
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` the claims.
`
` So I believe that addresses the
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` question that you're asking.
`
` Q. So is your answer to my question, yes?
`
` A. Your question had a number of parts
`
` to it, so could you -- could you simplify the
`
` question?
`
` I believe this addresses your
`
` question, but would you like to simplify the
`
` question?
`
` Q. Why don't I break it down?
`
` A. Mm-hmm.
`
` Q. Do you agree that the Fox papers,
`
` and here I'm referring to Thesis, SMART and
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` Collections, disclose objects in a database, as
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` those terms are used in the patents?
`
` A. No.
`
` Q. So you think that none of those papers
`
` discloses a database, as the term database is
`
` used in the patents at issue, that contains
`
` objects?
`
` MR. HARDY: Objection; form.
`
` THE WITNESS: I do not believe that
`
` any of those papers discloses the database, as
`
` claimed.
`
` BY MR. SILBERT:
`
` Q. Okay. And I want to be clear about
`
` what I'm asking, because I'm trying to break
`
` down the question, at your request.
`
` So at this point, I'm not focusing
`
` on whether objects in a database cite to one
`
` another or not. The first part of my question
`
` is, do you agree that the Fox papers disclose
`
` objects in a database, period -- or question
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` mark?
`
` MR. HARDY: Objection; form.
`
` THE WITNESS: I thought the question
`
` was --
`
` MR. HARDY: Objection; scope.
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` THE WITNESS: I thought the question
`
` was -- I thought you said, in a database as
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` claimed.
`
` And my answer is that I do not believe
`
` those papers disclose objects in a database, as
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` used in any of the patents' claims.
`
` BY MR. SILBERT:
`
` Q. Okay. I referred to objects and
`
` database as the patents used those terms.
`
` So why don't we address that for a second?
`
` MR. HARDY: Objection.
`
` Sorry.
`
` BY MR. SILBERT:
`
` Q. What do you understand the patents to
`
` mean by database?
`
` A. Can we discuss a particular patent?
`
` Q. Well, do you think that the definition
`
` of database is different in the three patents?
`
` A. I'd like to refer to the patents,
`
` so ...
`
` Q. Do you -- absolutely.
`
` Do you want to look at the '352?
`
` A. Sure.
`
` MR. SILBERT: Do you mind?
`
` It's towards the back of that. Maybe
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` it's up front.
`
` BY MR. SILBERT:
`
` Q. Dr. Jacobs, for simplicity, just
`
` because -- oh, nevermind. I'm sorry. I have
`
` the '352. Okay.
`
` MR. SILBERT: Let the record reflect
`
` I'm handing the witness a copy of the '352
`
` patent.
`
` Counsel, would you like copies?
`
` MR. HARDY: Yes.
`
` Is this being marked as an exhibit
`
` or --
`
` MR. SILBERT: It's already an exhibit.
`
` I wasn't planning to mark it again.
`
` MR. HARDY: Okay. Do we know the
`
` exhibit number of it?
`
` MR. SILBERT: The '352 patent is
`
` Exhibit 1001 in the '478 case.
`
` MR. HARDY: Thank you.
`
` THE WITNESS: Can we repeat the
`
` question, or can the reporter read back the
`
` question, please?
`
` THE REPORTER: Sure.
`
` (Referred-to testimony read back.)
`
` THE WITNESS: Okay. So I'm referring
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` now to the '352 patent, and, in particular, to
`
` Claim 26 of the '352 patent, which is one of the
`
` base claims under review here.
`
` And Claim 26 recites non-semantic
`
` method for numerically representing objects in
`
` a computer database and computerized searching.
`
` And it goes on and it mentions database a number
`
` of times.
`
` And in the context of this claim,
`
` I understand a computer database to be an
`
` organized collection of electronic documents,
`
` with the additional stipulation that the
`
` database is referred to in many additional steps
`
` of the claim, which -- which might narrow the
`
` term as used in -- in that claim.
`
` BY MR. SILBERT:
`
` Q. Okay. Do you believe that the Fox
`
` papers, again, I'm specifically referring here
`
` to Thesis, SMART and Collections, disclose a
`
` database?
`
` And let me be clear, Dr. Jacobs.
`
` I'm not asking, do they disclose every claimed
`
` element of a database or a database with objects
`
` that cite one another, et cetera. I'm trying to
`
` break it down and go step-by-step, okay? Do you
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` understand that, my -- the approach I'm using
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` here?
`
` A. Yes. Yes. I understand.
`
` Q. Okay. So let me ask the question
`
` again.
`
` A. Uh-huh.
`
` Q. Do you agree that the Fox papers, and,
`
` specifically, Thesis, SMART and Collections,
`
` disclose a database?
`
` A. And, as I said, my opinion was
`
` directed to this claim, as an example, in this
`
` patent. And the -- the Fox papers do not
`
` disclose a database, as it's used in this claim.
`
` Q. Okay. Do you believe that the Fox
`
` papers disclose objects in a database?
`
` A. Could you refer me to a specific
`
` portion of the Fox papers that you'd like me to
`
` discuss, in particular, --
`
` Q. Well, --
`
` A. -- or is that the question, in my
`
` opinion --
`
` Q. -- I'd rather not take the time to do
`
` that because, as you've already said, they don't
`
` disclose a database, and I think I know what
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` you'll say about objects in a database. So why
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` don't we -- why don't we move to a slightly
`
` different subject?
`
` I'd like you to consider, please, a
`
` hypothetical situation. So please assume that
`
` Dr. Fox did all the same things that he did, but
`
` that the CACM collection was different in the
`
` following way: That instead of including only
`
` the abstract title, author, et cetera, relating
`
` to each article in the collection, it contained
`
` the full text of each of those articles,
`
` including the bibliographies.
`
` Do you understand that assumption?
`
` A. Are we talking about a hypothetical
`
` case? I understand that you're talking about a
`
` hypothetical case, not one that's discussed in
`
` the papers and not with a -- with respect to a
`
` particular claim or step in the claims.
`
` Q. Without agreeing to your complete
`
` characterization, I am asking you to consider a
`
` hypothetical case.
`
` MR. HARDY: Objection; foundation.
`
` Objection; form.
`
` BY MR. SILBERT:
`
` Q. Okay. So do you -- do you understand
`
` the first part of the hypothetical I've given
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` you, which is that the CACM collection contained
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` the full text of each article in the collection,
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` including bibliographies, as opposed to
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` including only the abstract author, title or
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` other information?
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` Do you understand that?
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` A. I understand, and I disagree with that
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` statement.
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` Q. Okay. It's a hypothetical.
`
` A. Okay.
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` Q. And please assume, also, that
`
` Dr. Fox's thesis helpers, in this hypothetical
`
` situation, obtained citation information -- the
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` citation information that Dr. Fox used in his
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` analysis by reviewing these electronic full-text
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` versions of each article in the CACM collection
`
` -- do you understand that assumption -- instead
`
` of referring to paper copies?
`
` MR. HARDY: Objection; form.
`
` Objection; foundation. Objection; scope.
`
` BY MR. SILBERT:
`
` Q. Do you under -- my question now is, do
`
` you understand the hypothetical situation that
`
` I've given you?
`
` A. I understand the hypothetical
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` situation.
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` Q. Do you agree that, in this
`
` hypothetical situation where Dr. Fox did all the
`
` same things that he did, but the CACM collection
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` included the full text of each article in the
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` collection, including the bibliographies,
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` Dr. Fox would have analyzed objects in a
`
` database that cite one another?
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` MR. HARDY: Objection; form.
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` Objection; foundation. Objection; scope.
`
` THE WITNESS: No. I completely
`
` disagree that that would teach the analysis of
`
` objects in the database, as claimed.
`
` First of all, you said -- let me --
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` let me go on and explain the many reasons why I
`
` disagree that that would meet --
`
` BY MR. SILBERT:
`
` Q. Please.
`
` A. -- the requirement under the claims.
`
` First of all, you said that Dr. Fox
`
` was doing it. Whereas, in your hypothetical,
`
` you said that it was his thesis helpers. Second
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` of all, the claim refers, in many, many
`
` instances, to a computer database, and you
`
` didn't specify that there was any analysis of
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` relationships in a computer database.
`
` If -- in your hypothetical situation,
`
` you're assuming facts that aren't taught or
`
` suggested by the papers that I've reviewed, but
`
` you did say one thing that was correct. You
`
` said that -- that the -- that in the Fox papers,
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` the -- the -- the --the articles that were used,
`
` for example, in the CACM collections were
`
` actually just the abstracts of the articles, and
`
` your assumption was that, in the Fox papers, the
`
` discussion is of Dr. Fox and his thesis helpers
`
` examining printed copies of the bibliographies
`
` of those papers in order to obtain the citation
`
` information, so that assumption is correct in
`
` terms of what's discussed in the papers. And,
`
` in your hypothetical, you made the assumption
`
` that those -- that Dr. Fox, or his thesis
`
` helpers, would -- instead of examining those
`
` printed copies of the bibliographies, would have
`
` examined some electronic text.
`
` So, first of all, this is not taught
`
` or suggested, in any way, by these papers that
`
` I've reviewed. And it would not have been
`
` obvious, given the disclosures of the Fox
`
` papers, to do so. And it wouldn't have been
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` obvious for -- for many reasons; for example,
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` Dr. Fox and his thesis helpers printed out some
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` information. They had access to some of this
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` information, and they chose to enter the
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` abstracts of the articles and not the
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` bibliographies into the electronic format of the
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` collections that they used.
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` They -- they chose to do so, probably
`
` for reasons that would teach the non-obviousness
`
` of doing so; for example, if they had had a lot
`
` more text and a lot more content, Dr. Fox's
`
` vectors would have been much longer for the --
`
` the terms in those documents, and would have
`
` dramatically changed and affected the results
`
` and -- and, perhaps, harmed his experiments.
`
` If he had had the electronic
`
` contents of the -- of the bibliographies of
`
` those articles, and -- and indexed them using
`
` SMART, it could have added a lot of the terms
`
` from the bibliographies themselves. And that,
`
` in my opinion, would have, invariably, had a
`
` dramatic effect on the results.
`
` So those things attest the
`
` non-obviousness of the assumptions that -- that
`
` you've -- that you've made in terms of -- of
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` just the hypothetical that you've -- that you've
`
` given.
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` Now, then, in addition, even if all
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` that -- that content were available in an
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` electronic format, it -- it -- it still wouldn't
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` -- and had been in the CACM collection in that
`
` format, it still wouldn't have rendered the
`
` steps; for example, of Claim 26, obvious.
`
` Because there would, likely, have been many,
`
` many differences between what those thesis
`
` helpers did using the printed copies, and what
`
` any method would do using the electronic copies
`
` of those documents.
`
` And, therefore, even in your
`
` hypothetical, it -- it does not, in my opinion,
`
` have any relevance to the teachings -- the --
`
` the particular claim steps that I've reviewed,
`
` and so it doesn't have any bearing on my opinion
`
` that those steps are non-obvious.
`
` MR. MEAD: I'm going to object and
`
` move to strike as non-responsive.
`
` BY MR. SILBERT:
`
` Q. That -- that was a long answer,
`
` but one of the things you focused on in the
`
` beginning was the idea of analyzing the
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` relationships. And so I want to remove that,
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` for the second, from the equation. And, again,
`
` I'm asking you questions piece by piece. I'm
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` not asking you, would this satisfy the whole
`
` claim or all of the claims of the patent or
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` anything like that. I'm asking you, does it --
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` about particular elements, okay?
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` Do you -- did you understand that
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` approach that I'm taking? Because I -- I --
`
` just -- I was about to ask another question,
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` but I want to be sure you understand. I'm not
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` asking you, would this -- would XYZ satisfy the
`
` entire claim. I'm just asking you something
`
` very specific, like, would XYZ disclose a
`
` database or something like that.
`
` Do you understand that?
`
` A. Yes.
`
` Q. Okay. So I want to take the analysis
`
` step out of it, because you raised an issue with
`
` that.
`
` If the CACM collection included the
`
` full text of each article in the collection,
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` including the bibliographies, and the CACM
`
` collection was stored as a collection in a
`
` computer, do you agree that the CACM collection
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` would comprise objects in a database that cite
`
` one another?
`
` MR. HARDY: Objection; form.
`
` Objection; foundation. Objection; scope.
`
` THE WITNESS: Could you read the
`
` question back to me, please?
`
` THE REPORTER: Sure.
`
` (Referred-to testimony read back.)
`
` THE WITNESS: In your hypothetical
`
` example, that might include objects or cite
`
` one another, or might not, but would not still
`
` disclose a database, as discussed in these
`
` claims, for the reasons that I've given.
`
` BY MR. SILBERT:
`
` Q. Why do you say might or might not?
`
` What does it depend on?
`
` A. Could you -- could you give me an
`
` example from your hypothetical database?
`
` Because you made a lot of assumptions, and
`
` it's -- it's hard for me to -- can we refer to
`
` the CACM collection?
`
` Q. I am referring to it.
`
` A. Would you like to refer to some
`
` particular examples of the collection so that
`
` we'll have something specific to discuss?
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` Q. No.
`
` My question is, and there really
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` aren't a lot of assumptions. It's -- really,
`
` the only assumption is that the collection
`
` includes the full text, including bibliographies
`
` of each article, instead of excerpts, such as
`
` the abstract, author, et cetera. And I also
`
` asked you to assume that it was stored as a
`
` collection on a computer. That's pretty basic.
`
` Given only those assumptions, don't
`
` you agree that, in that situation, the CACM
`
` collection would comprise objects in a database
`
` that cite one another?
`
` A. Not necessarily.
`
` Would you explain what you mean by
`
` stored as a collection on a computer?
`
` Q. Sure.
`
` Stored as a group of documents in a
`
` folder or in some other organized way.
`
` A. Okay. So this time you added the term
`
` organized, which makes a difference. But the
`
` way you've posed the question, it's very hard
`
` to determine whether you would meet all the
`
` criteria that I've given, in terms of what would
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` comprise a database of objects with citations.
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` Q. Okay. Do you --
`
` A. And, as I've said, the computer
`
` database and objects are used in many ways in
`
` these claims steps. And my opinion is about
`
` these claims and about Dr. Fox's papers. And
`
` your hypothetical is asking me to step far
`
` beyond the boundaries of my opinion, which --
`
` and these papers, which is difficult for me to
`
` do.
`
` Q. Okay. I want to break it down piece
`
` by piece, element by element, to see where the
`
` problem is.
`
` A. Which element are we referring to,
`
` then?
`
` Q. I'm about to ask you that.
`
` A. Okay.
`
` Q. Do you agree, in the hypothetical I've
`
` given you, where the CACM collection contains
`
` the full text of each article, including the
`
` bibliographies, and is stored in an organized
`
` way in a computer, that the CACM collection
`
` comprises objects in a database?
`
` I'm not asking you about citations
`
` now. I'm just asking, would it comprise objects
`
` in a database?
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` MR. HARDY: Objection; form.
`
` Objection; scope. Objection; foundation.
`
` THE WITNESS: Okay. So as I've
`
` explained, the CACM collection does not, in
`
` fact, contain that information; does not, in
`
` fact, comprise objects in a database, with
`
` citations; and it does not teach -- meet that
`
` limitation. You say you're going element by
`
` element, but you didn't identify any element.
`
` BY MR. SILBERT:
`
` Q. I did. The words are objects in a
`
` database. Do -- do -- the question is, do
`
` you --
`
` A. Objects in a computer database as used
`
` in Claim 26; is that correct?
`
` Q. Just those words. Not everything
`
` else in the rest of the claim. I don't want you
`
` to say it doesn't satisfy every other element of
`
` the claim. I'm just asking, does it disclose
`
` -- would it comprise objects in a database?
`
` That's all.
`
` A. It would not comprise objects in a
`
` database as an element of Claim 26 of the '352
`
` patent.
`
` Q. And why not?
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` A. Because objects in a computer database
`
` is used in specific ways in the claim, and
`
` -- and I can't interpret objects in -- in a
`
` computer database independent of the way that
`
` it's used in the claim.
`
` Q. What is the requirement for something
`
` to be an object in a database that's not met in
`
` the example that I've given you?
`
` A. First of all, as I've explained, the
`
` CACM and the question that you asked, you asked
`
` does the CACM collection meet the limitation?
`
` And the CACM collection, as I understand it,
`
` does not meet this limitation. So the CACM
`
` collection does not contain citation
`
` informations that