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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - - - - - - - - - - - - -x
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` MICROSOFT CORPORATION, :
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` Petitioner, : Inter Partes Review No.
`
` v. : IPR2014-00039/
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` B.E. TECHNOLOGY, LLC, : IPR2014-00040
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` Patent Owner. :
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`- - - - - - - - - - - - - - - - -x
`
` Deposition of HENRY H. HOUH, Ph.D.
`
` Washington, DC
`
` Thursday, June 12, 2014
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` 9:08 a.m.
`
`Job No.: 60541
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`Pages: 1 - 225
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`Reported By: Lee Bursten, RMR, CRR
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 1
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - - -x
`
` MICROSOFT CORPORATION, :
`
` Petitioner, : Inter Partes Review No.
`
` v. : IPR2014-00039/
`
` B.E. TECHNOLOGY, LLC, : IPR2014-00040
`
` Patent Owner. :
`
`- - - - - - - - - - - - - - - - -x
`
` Deposition of HENRY H. HOUH, Ph.D.
`
` Washington, DC
`
` Thursday, June 12, 2014
`
` 9:08 a.m.
`
`Job No.: 60541
`
`Pages: 1 - 225
`
`Reported By: Lee Bursten, RMR, CRR
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 1
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
` Deposition of HENRY H. HOUH, Ph.D., held at
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`the offices of:
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`2
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` SIDLEY AUSTIN LLP
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` 1501 K Street, NW
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` Washington, DC 20005
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` (202) 736-8000
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` Pursuant to agreement, before Lee Bursten,
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`Registered Merit Reporter, Certified Realtime
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`Reporter, and Notary Public in and for the District
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`of Columbia, who officiated in administering the oath
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`to the witness.
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 2
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` A P P E A R A N C E S
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` ON BEHALF OF PETITIONER:
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` SCOTT M. BORDER, ESQUIRE
`
` JEFFREY P. KUSHAN, ESQUIRE
`
` SIDLEY AUSTIN LLP
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` 1501 K Street, NW
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` Washington, DC 20005
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` (202) 736-8000
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` ON BEHALF OF PATENT OWNER:
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` DANIEL J. WEINBERG, ESQUIRE
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` FREITAS ANGELL & WEINBERG LLP
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` 350 Marine Parkway, Suite 200
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` Redwood Shores, California 94065
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` (650) 593-6300
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` ON BEHALF OF THIRD PARTY GOOGLE INC.:
`
` JOHN X. ZHU, ESQUIRE
`
` MAYER BROWN LLP
`
` 1999 K Street, NW
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` Washington, DC 20006
`
` (202) 263-3000
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 3
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
` C O N T E N T S
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`EXAMINATION OF HENRY H. HOUH, Ph.D. PAGE
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` By Mr. Weinberg 6
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`4
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` E X H I B I T S
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` (Attached to transcript.)
`
`PETITIONER MICROSOFT CORPORATION
`
`DEPOSITION EXHIBITS PAGE
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` Exhibit 1001 US Patent 6,628,314 171
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` Exhibit 1001 US Patent 6,771,290 103
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` Exhibit 1003 IPR for '314 patent 171
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` Exhibit 1003 IPR for '290 patent 63
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` Exhibit 1004 Curriculum vitae 9
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` Exhibit 1005 International Application WO 94
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` 97/09682 to Kikinis
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` Exhibit 1006 US Patent 6,119,098 171
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 4
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
`5
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` E X H I B I T S C O N T I N U E D
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`PATENT OWNER B.E. TECHNOLOGY LLC
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`DEPOSITION EXHIBITS PAGE
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` Exhibit 2001 Petition for inter partes 204
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` review filed by Facebook Inc.
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` against B.E. Technology LLC
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 5
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` P R O C E E D I N G S
`
` HENRY H. HOUH, Ph.D.
`
` having been duly sworn/affirmed, testified as
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` follows:
`
` EXAMINATION BY COUNSEL FOR PATENT OWNER
`
`BY MR. WEINBERG:
`
` Q Good morning, Dr. Houh.
`
` A Good morning, Mr. Weinberg.
`
` Q My name is Dan Weinberg. I'm with the law
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`firm Freitas Angell & Weinberg. We represent B.E.
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`Technology LLC, the patent owner in this proceeding.
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` You understand that you're being deposed
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`here today as an expert witness, is that right?
`
` A Yes. Yes, that's right.
`
` Q And you've been retained by Microsoft to
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`provide an opinion regarding the patentability of two
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`United States patents, correct?
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` A Yes.
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` Q Those patents are US Patent Number
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`6,628,314, and US Patent Number 6,771,290, correct?
`
` A That sounds right.
`
` Q And just for simplicity and ease of
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 6
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`reference, I'll refer to patent number 6,628,314 as
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`the '314 patent, and I'll refer to patent number
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`6,771,290 as the '290 patent, if that's okay with
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`7
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`you.
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` A Yes, that's fine.
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` Q You've had your deposition taken before,
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`correct?
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` A Yes.
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` Q And you've also testified in trial before,
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`correct?
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` A That's correct.
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` Q So I'll remind you of a few simple ground
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`rules we'll observe today. I'm sure they will be
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`very familiar to you. You understand that I will ask
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`you a series of questions, that you will provide
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`answers to those questions, and Microsoft's counsel
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`may from time to time state objections for the
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`record. Do you understand that?
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` A Yes.
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` Q The court reporter will transcribe what all
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`of us have to say today, and we will make a record of
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`your testimony today. Do you understand that?
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 7
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` A Yes.
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` Q To make the court reporter's job a little
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`easier, I'm going to ask that you wait until I
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`complete my answer before beginning -- I'm sorry,
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`strike that. I'll ask that you wait for me to
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`complete my question before you begin your answer,
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`and I will do my best to wait for you to complete
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`your answer before asking my next question.
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` Okay?
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` A Yes. I'll do my best.
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` Q Another important thing to remember is that
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`we're creating a written record today, and so you
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`must answer audibly. You cannot shake your head from
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`side to side or up and down or use a familiar
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`"uh-huh" or "uh-uh." Is that okay?
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` A Yes, I'll do my best.
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` Q There may be occasions for Microsoft's
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`counsel to state an objection on the record. That's
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`only for the purpose of creating the record, but in
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`just about all circumstances, you will be expected to
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`answer the question that is pending. Do you
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`understand that?
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`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 8
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` A Yes.
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` Q And do you understand that you're under
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`oath today as if you were in a court of law?
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` A Yes.
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` Q And is there any reason why you are unable
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`to provide your best and honest testimony today?
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` A No.
`
` Q So let me hand you what has been previously
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`marked as Exhibit 104.
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` (Petitioner Microsoft Corporation Exhibit
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`1004 was previously marked for identification and
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`attached to the deposition transcript.)
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` MR. KUSHAN: 1004.
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` MR. WEINBERG: Did I say 104? To clarify
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`the record, this is Exhibit 1004.
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`BY MR. WEINBERG:
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` Q Dr. Houh, do you recognize what has been
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`previously marked as Exhibit 1004?
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` A Yes, this looks like a copy of my CV.
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` Q Do you understand that this has been filed
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`in the proceedings, filed by Microsoft before the
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`United States Patent and Trademark Office?
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`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 9
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
` A Yes, I do.
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` Q Could you please turn to page 4 of 8.
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`10
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` A Okay. I'm here.
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` Q I meant 5 of 8.
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` A Okay.
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` Q So I would like to talk about your prior
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`experience with trials and depositions. Do you see
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`that, in the middle of the page?
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` A I do.
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` Q Now, you've mentioned that you were deposed
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`as an expert witness and testified at trial in
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`Verizon v. Vonage, United States District Court for
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`the Eastern District of Virginia. Do you see that?
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` A Yes, I do.
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` Q On behalf of which party were you retained
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`as an expert in that case?
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` A I was testifying on behalf of Verizon.
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` Q And did a law firm retain you for that
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`engagement?
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` A Yes.
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` Q Do you recall which firm that was?
`
` A I believe the retention agreement was with
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 10
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`the company I was working at at the time, which was
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`BBN. But it was the firm Winston & Strawn.
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` Q And do you recall the names of any of the
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`lawyers with whom you worked in that capacity?
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` A Yes.
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` Q What were they?
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` A It was Pete McCabe and Chip Molster.
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` Q Was that the first time you worked with
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`Winston & Strawn?
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` A Yes.
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` Q Was that the first time you worked with
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`Mr. McCabe or Mr. Molster?
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` A Yes.
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` Q What was your assignment in that case?
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` A I believe I wrote expert reports on both
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`infringement and validity/invalidity, the rebuttal
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`report on invalidity -- excuse me. That report. I
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`don't remember for which patents. I believe there
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`were five patents in the case at issue.
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` Q So that was my next question. So your
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`understanding was there were five patents in the
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`case?
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 11
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` A There were claims in I believe five
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`different patents in that case.
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` Q And were you asked to provide an opinion as
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`to each of the patents?
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` A I believe in the end I did not file reports
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`for all of those five myself. There were other
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`experts.
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` Q Do you recall about how many patents on
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`which you did file a report?
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` A I believe it was at least two, but I can't
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`remember if it was more.
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` Q And for those two or possibly more patents,
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`is it your recollection that you did both an
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`infringement and validity analysis?
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` A Yes, I believe that's correct.
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` Q And Verizon was the plaintiff, I take it --
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` A Yes.
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` Q -- that Verizon was arguing that the
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`patents were valid?
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` A Yes.
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` Q Was it your conclusion that the patents
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`were valid?
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 12
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
`13
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` A Yes.
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` Q What type of technology was covered by the
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`patents asserted in Verizon v. Vonage?
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` A It was generally directed to a Voice over
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`IP network, but it was with respect to some of the
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`call control signaling involved in setting up Voice
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`over IP calls.
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` Q Do you have any particular experience in
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`Voice over IP?
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` A Yes.
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` Q What is your experience in that regard?
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` A During college, for my Ph.D. thesis work, I
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`did a lot of streaming multimedia, which included
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`some audio. And my first job after -- actually while
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`I was finishing my Ph.D., was working for NBX, which
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`is a company building a packet-based business phone
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`system in which I wrote the first prototype IP stack
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`for the phones and made it work over IP.
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` Q It was MBX?
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` A NBX, as in Nancy Bravo X.
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` Q When did you work at NBX?
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` A I believe I started working there in around
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 13
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`the fall of '97. I was there for about a year and a
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`14
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`half.
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` Q What position did you hold at NBX?
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` A I was -- my title was the senior scientist
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`and engineer.
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` Q What were your responsibilities in that
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`role?
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` A I did a lot of the tasks that involved -- I
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`created some new protocols. I wrote some test tools.
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`I wrote -- I wrote prototype software. I actually
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`also traveled around for trade shows as well and
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`demonstrated some of our prototypes and our system.
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`I was an architect for the scaled-up system.
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` Q Did NBX wind up selling the packet-based
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`business phone system while you were working there?
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` A Yes. It was the first business
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`packet-based phone system to ship.
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` Q Do you recall the outcome of the Verizon v.
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`Vonage case where you were an expert witness for
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`Verizon?
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` A Yes.
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` Q What was the outcome?
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 14
`
`
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`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` A The outcome was that of the two patents
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`that I testified on, Vonage was found to infringe,
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`and they were valid. And through the appeals
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`process, the two patents I testified on, the verdict
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`was withheld, and there was ultimately a settlement.
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` Q What do you mean by "the verdict was
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`withheld"?
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` A Upheld, I'm sorry. I used the wrong word.
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` Q The next case on here is Verizon v. Cox.
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`Were you retained on Verizon's behalf again?
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` A Yes. It started when I was also still
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`working at BBN.
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` Q And was the law firm that retained you
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`Winston & Strawn?
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` A No.
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` Q What firm retained you?
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` A I know them by their initials. KHHTE. I
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`think it's Kellogg Huber Hansen -- I'm not sure about
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`the rest, but Todd, Elliott [sic] & Figel.
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` Q Todd Elliott was one of the lawyers' names?
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` A I don't know. This was part of the firm's
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`name, I think.
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`PLANET DEPOS
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 15
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
` Q Do you recall the names of the lawyers with
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`whom you worked?
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` A One of them was Evan Leo.
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` Q Do you recall anyone else?
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` A There was a woman named Courtney. I can't
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`remember her last name. I can't remember any other
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`names.
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` Q Could you tell me what BBN is?
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` A BBN is a company started by three
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`gentlemen; one named Bolt, one named Bearanek, one
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`named Newman, and was founded as kind of an acoustic
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`company in -- I don't remember, the mid-'60s,
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`perhaps. And it was primarily a research and
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`development company.
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` And it eventually got contracts to build
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`the first version of what became today's Internet, in
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`the US we call it the Arpanet. There were gentlemen
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`there at BBN who sent the first computer-to-computer
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`e-mail, and he picked the "at" symbol as the
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`delimiter. And it's generally known as a pioneer in
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`networking.
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` Q And you mentioned that you were working
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 16
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`there at the time you were engaged to serve as an
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`expert witness for Verizon in these two cases. Could
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`you tell me when you began working at BBN?
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` A I started working at BBN in around 2004.
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` Q How long did you work at BBN?
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` A I worked there almost five years.
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` Q What positions did you hold when you --
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`strike that. What position did you hold when you
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`started working at BBN in 2004?
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` A When I started working at BBN, I was
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`director of technology.
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` Q Did your title change during your five
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`years at BBN?
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` A Yes, it did.
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` Q And when did it change for the first time?
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` A I think around 2007.
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` Q And what was the change?
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` A I was promoted to vice president of
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`technology.
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` Q Did your position change at any other time
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`while you were at BBN?
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` A Well, I had the same title, but my roles
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 17
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`changed.
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` Q All right.
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` A Actually, if I may just add to that,
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`actually in 2006, we had created a standalone company
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`we were trying to spin out, and at that time, I was
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`also director of technology at BBN, but also the vice
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`president of operations and technology at this kind
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`of potential spinout company.
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` Q What was the name of the spinout or
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`potential spinout?
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` A We had called it EveryZing at the time. It
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`spun out to be called PodZinger Inc., after we raised
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`some money. And then today I believe it's called
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`Ramp Inc.
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` Q Is that Ramp, R-A-M-P?
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` A Yes.
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` Q What were your responsibilities as director
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`of technology back in 2004?
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` A One of my main roles was to figure out how
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`to take the technology that was developed under
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`various research grants that BBN had received and
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`figure out how to monetize them.
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 18
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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` Q Who issued the research grants, what
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`entity?
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` A BBN received a lot of research grants. The
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`probably primary one was DARPA. I believe it also
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`got money from various other government agencies as
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`well, and also private companies.
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` Q What sorts of methods were you pursuing in
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`order to monetize these technologies?
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` A The primary method was that we would look
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`at the technology done under various projects. For
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`example, BBN was also a leader in speech recognition.
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`And so what we did was we actually took the output,
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`the software, and the patents, and we set them up as
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`standalone companies and created products and sold
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`products around them.
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` Q Can you give me some examples of some of
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`the products that were created by these companies
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`that were created?
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` A Yes. So PodZinger, the product was --
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`first it was an audio search engine for podcasts.
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`And we downloaded lots and lots of podcasts, sent
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`them through the speech recognition unit, and made a
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 19
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`spoken word search engine for video and audio that we
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`were able to download off the web.
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` Today that has become a kind of a hosted
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`search site for video and audio, sometimes using the
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`spoken language words, but that's one of the key
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`elements, for all the major media companies, ABC,
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`CBS, NBC, Reuters, Fox, ESPN, for example.
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` Another product which I helped specify and
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`build the prototype for was one that used the speech
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`recognition to record calls and index calls that are
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`made to call centers. And that product is still
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`being sold today by BBN's successor company as a
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`service. And its customers have included Apple,
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`Dell, the Center for Medicare and Medicaid Services,
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`for example.
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` Another product that I was director of
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`engineering for was a product known as Boomerang.
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`And that was a product that was able to detect
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`gunshots and give directions and range of the
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`gunshot. And that was used primarily in Iraq and
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`Afghanistan to protect troops in the field.
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` Q Do you recall the name of the product that
`
`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 20
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`was the spoken word search engine for call centers?
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` A That one is called Avoke. I think that's a
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`the name they're using today.
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` Q Is it the name of the product?
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` A Yes, it's set up as an entity inside
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`Raytheon, so it never got spun out. But I believe
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`that's the name of the product they sell, A-V-O-K-E,
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`Avoke.
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` Q Did you have any marketing responsibilities
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`during your time at BBN or in connection with any of
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`these spinout companies?
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` A Yes. I mean, that was part of my duties,
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`although not my main role. For example, I would go
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`out to talk to potential customers for some of these
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`products. I wouldn't say that's a big -- you know,
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`it wasn't an official marketing role. It was because
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`we were basically little startups, everyone did
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`pretty much most of the different functions.
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` Q Your primary role was on the technology
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`development; is that fair?
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` A Also in creation of the business plan
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`itself, and also putting together the budgets and
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 21
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`getting them approved by the board to launch the
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`product and whatnot; so I think it was beyond just
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`the technology aspect.
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` Q Now, when your position title changed in
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`2007 to VP of technology, did your responsibilities
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`change in any way?
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` A No. I don't believe it did.
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` Q So it was a promotion, but you continued to
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`do the primary functions that you just described?
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` A Yes.
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` Q And the three spinouts that we were talking
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`about, PodZinger, Avoke, and Boomerang, were those
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`while you were director of technology, or did those
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`span your experience at BBN?
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` A I think Avoke was on the early side. I
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`think PodZinger which became Ramp was on the
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`transition side, around the transition time, and
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`Boomerang was on the later side.
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` Q So by "later side," you mean it was after
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`you became VP of technology?
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` A I believe that's correct.
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` Q So back to the Verizon v. Cox case that we
`
`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 22
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
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`were talking about, do you recall what your
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`assignment was in that particular matter?
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` A Yes.
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` Q What was it?
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` A I believe it was also working on the
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`infringement and validity sides, writing reports for
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`both.
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` Q How many patents were at issue that you
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`were asked to offer an opinion on validity and
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`infringement?
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` A I don't recall exactly. I think it was at
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`least two, but I don't -- I don't remember how many
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`there were overall in the case.
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` Q Were they the same patents that were
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`asserted in the Vonage case?
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` A I believe there were some of the same
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`patents.
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` Q I'm sorry?
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` A They were the same patents, but they were
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`all actually different claims.
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` Q Is it fair to say that the technology was
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`the same as the technology that was at issue in the
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`PLANET DEPOS
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`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 23
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
`24
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`Vonage case even though the claims might have been
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`different?
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` A I think at a high level, that's true.
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` Q At a slightly lower level, what were the
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`differences, if you can recall?
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` A There were differences in the actual
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`implementations of the systems, of the accused
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`parties.
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` Q Do you recall the outcome of the Verizon v.
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`Cox case?
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` A Yes.
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` Q What was the outcome?
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` A I believe the outcome was that many of or
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`all of the claims that were asserted were found to be
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`invalid.
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` Q And that was inconsistent with your opinion
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`that they were valid?
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` A That's correct.
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` Q Next you identified Two-Way Media v. AT&T.
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`I would like to know on behalf of which party were
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`you retained.
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` A It would have been on behalf of AT&T.
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 24
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
` Q Do you recall what law firm retained you to
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`25
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`work in that matter?
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` A Yes.
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` Q What firm was that?
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` A It was Sidley Austin.
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` Q Do you recall the names of the lawyers with
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`whom you worked at Sidley Austin on that case?
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` A Yes, some of them.
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` Q Could you give me some? Could you tell me
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`some?
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` A It was Doug Lewis, it was Ben Frey, it was
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`Joe Micallef, and Scott Border.
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` Q Was it the first time you worked with the
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`Sidley Austin firm?
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` A Yes, it was.
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` Q When was this engagement, what year?
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` A It spans several years. I believe it
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`started around 2009, in 2009, and then the trial was
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`last year.
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` Q Is your work over on that matter?
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` A As far as I know.
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` Q And what was your assignment in the Two-Way
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 25
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`Media v. AT&T case?
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` A I testified for noninfringement and
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`invalidity.
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` Q And you write that you filed an expert
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`report and provided trial testimony. Were you
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`deposed in that matter?
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` A No. I don't believe so.
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` Q Do you have any understanding why you were
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`not deposed in that matter?
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` A I don't know why.
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` Q How many patents were at issue where you
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`were asked to provide an opinion?
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` A I believe there were three.
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` Q What type of technology was covered by
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`those three patents?
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` A I believe those covered kind of the
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`recordkeeping aspects of video system or -- yes,
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`video -- video or video advertisements.
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` Q What do you mean by "recordkeeping
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`aspects"?
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` A In terms of who was watching and when they
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`were watching.
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 26
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
`27
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` Q You mentioned there were advertisements.
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`What type of advertisements were these?
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` A They could have been audio or video.
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` Q And do you mean the medium or the media
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`upon which those advertisements were presented?
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` A It was accusing recordkeeping aspects of
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`AT&T's U-verse video system.
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` Q And are those ads shown on televisions or
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`computers?
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` A On televisions.
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` Q What was your opinion that you rendered as
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`to those three patents?
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` A My opinion was that the patents were
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`invalid and that there was no infringement.
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` Q Do you recall the outcome of that case?
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` A I think generally, yes.
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` Q What was it?
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` A The patents were found valid. There was no
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`infringement at all found on one of the patents. On
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`two of the patents, there was no direct literal
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`infringement found; but there was a finding of
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`infringement under the doctrine of equivalence.
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 27
`
`
`
`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
`
`28
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` Q Do you know whether that case was appealed?
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` A I think it was. I'm not sure.
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` Q And you mentioned that your work is done.
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`Do you know the current status of the case?
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` A I don't.
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` Q Do you expect to do any more work on that
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`matter?
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` A No.
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` Q The next case you have listed is
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`ActiveVideo Networks v. Verizon?
`
` A Mm-hmm.
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` Q Were you retained for Verizon in that case?
`
` A Yes.
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` Q What firm retained you?
`
` A I think it was through Kellogg Huber Hansen
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`and -- KHHTE.
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` Q Was it the same lawyers with whom you had
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`previously worked?
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` A Yes.
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` Q What was your assignment in that case?
`
` A I think I was asked to write -- I filed a
`
`report on -- I think it was invalidity. Yes, that's
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`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2014-00040
`Microsoft Corp. v. B.E. Tech.
`Petitioner Microsoft Corporation - Ex. 1017, p. 28
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`
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`DEPOSITION OF HENRY H. HOUH, Ph.D.
`CONDUCTED ON THURSDAY, JUNE 12, 2014
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`29
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`right.
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` Q Only on invalidity?
`
` A Yes.
`
` Q How many patents were asserted in that
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`case?
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` A I believe it was just one, or at least
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`that's what I believe I did my work on.
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` Q Do you know whether there were any other
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`experts on Verizon's behalf in that case, for
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`validity purposes only?
`
` A Yes.
`
` Q There were?
`
` A Yes.
`
` Q Who wer
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