UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
`
` ------------------------------------
` BROSE NORTH AMERICA, INC.
` and
` BROSE FAHRZEUGTEILE GMBH & CO.
` Petitioners
` v.
` UUSI, LLC
` Case Number: IPR2014-00417
` Patent No. 7,579,802
` Patent Owner
` And
` Patent Owner
` Case Number: IPR2014-00416
` Patent No. 8,217,612
` ------------------------------------
`
` ORAL AND VIDEOTAPED DEPOSITION OF
` DR. MARK EHSANI
` DECEMBER 16, 2014
`
`Reported By:
`KELLY BRYANT
`Job No: 36945K
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 1
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
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` ------------------------------------
` BROSE NORTH AMERICA, INC.
` and
` BROSE FAHRZEUGTEILE GMBH & CO.
` Petitioners
` v.
` UUSI, LLC
` Case Number: IPR2014-00417
` Patent No. 7,579,802
` Patent Owner
` And
` Patent Owner
` Case Number: IPR2014-00416
` Patent No. 8,217,612
` ------------------------------------
`
` ORAL AND VIDEOTAPED DEPOSITION OF
` DR. MARK EHSANI
` DECEMBER 16, 2014
`
`Reported By:
`KELLY BRYANT
`Job No: 36945K
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 1
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` ORAL AND VIDEOTAPED DEPOSITION OF DR. MARK EHSANI,
`produced as a witness at the instance of the Petitioner,
`and duly sworn, was taken in the above-styled and
`numbered cause on December 16, 2014, before Kelly
`Bryant, CSR in and for the State of Texas, reported by
`machine shorthand, at the Four Points by Sheraton,
`College Station, pursuant to the provisions stated on
`the record or attached hereto.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 2
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` A P P E A R A N C E S
`FOR THE PETITIONER:
` Kirkland & Ellis, LLP
` 300 North LaSalle
` Chicago, Illinois 60654
` BY: CRAIG D. LEAVELL, ESQ.
` craig.leavell@kirkland.com
` ALYSE WU, ESQ.
` alyse.wu@kirkland.com
`
`
`FOR THE RESPONDENT:
` Harness Dickey
` 5445 Corporate Drive
` Suite 200
` Troy, Michigan 48098
` BY: MICHAEL NYE, ESQ.
` mnye@hdp.com
`
`ALSO PRESENT:
` Mr. Issac Bruce, Videographer
` Mr. Art MacCarley
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`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 3
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`
` INDEX
` PAGE
`Appearances.......................................... 2
`Correction Page..................................... 237
`DR. MARK EHSANI
` DIRECT EXAMINATION BY MR. LEAVELL............... 5
`
`4
`
` EXHIBITS
`NO. DESCRIPTION PAGE
`Exhibit 1 Declaration In Support of Patent Owner
` Response - '802................................ 6
`Exhibit 2 Declaration In Support of Patent Owner
` Response - '612................................ 6
`Exhibit 3 United States Patent '802...................... 11
`Exhibit 4 United States Patent '612...................... 11
`Exhibit 5 United States Paten '876....................... 13
`Exhibit 6 April 6th, 2006, office action from the '802
` file history................................... 97
`Exhibit 7 Wang U.S. Patent Number 5982124,...............105
`Exhibit 8 United States Patent Application Publication
` Number 2002/ 0121872...........................143
`Exhibit 9 Copy of figures of '802 patent put together
` under one page.................................175
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`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 4
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` P R O C E E D I N G S
` December 16, 2014
` VIDEOGRAPHER: We're on the record for the
` deposition of Dr. Mark Ehsani.
` Will the court reporter please swear in the
` witness?
` DR. MARK EHSANI,
` having been first duly sworn, testified as follows:
` DIRECT EXAMINATION
` BY MR. LEAVELL:
` Q. Good afternoon, sir.
` A. Good afternoon.
` Q. My name is Craig Leavell, and I represent the
` Brose petitioners in this matter.
` You've been deposed before, correct?
` A. I have, yes.
` Q. Okay. If there's any -- any question that you
` don't hear or that you don't understand during the
` deposition today or tomorrow, will you let me know so
` that I can restate or clarify the question so you can
` provide a complete answer?
` A. I will do that.
` Q. Thank you.
` When were you previously deposed; how many times?
` A. Oh, sometime in the past year.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 5
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` Q. Okay. Just one time that you have been deposed?
` A. In the past -- no. I don't remember how many
` times.
` Q. Okay.
` A. Maybe five or six times.
` Q. Okay. When -- the deposition you had within the
` last year, what was the nature of the case?
` A. Actually, I'm trying to remember now. I am not
` sure if it's privileged information. So I can very
` broadly tell you that it was about electric power.
` Q. Was it a patent infringement matter?
` A. Yes.
` Q. Were you testifying on behalf of the patentholder
` or the accused infringer?
` A. On behalf of the patentholder.
` Q. Okay. And do you know the name of -- can you
` identify the name of any of the parties that were
` involved in the case?
` A. I would have to clear that with folks. I'm not
` sure if I'm at liberty to -- to share with you any
` specifics.
` Q. Okay. I'll come back to that. Thank you.
` MR. NYE: Let's go ahead and mark these.
` (Petitioner's Exhibit 1 and Exhibit 2 marked.)
` Q. (BY MR. LEAVELL) The court reporter has handed
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 6
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` you what we've marked as Ehsani Exhibit 1 and Ehsani
` Exhibit 2.
` Do you have that before you?
` And Exhibit 1 is a copy of the Declaration that
` you prepared in connection with the '802 patent,
` correct?
` A. It appears so.
` Q. And Exhibit 2 is a copy of the Declaration that
` you prepared in connection of the '612 patent
` proceeding, correct?
` A. On the first appearance, it appears so.
` Q. Okay. If you could turn to paragraph 39 of -- of
` the Exhibit 1, the '802 patent Declaration.
` A. What page, again?
` Q. It's paragraph 39 on page 17. And there's a
` paragraph under the heading of Level of Ordinary Skill
` in the Art.
` Do you see that?
` A. I do.
` Q. And I believe you described the level of ordinary
` skill in the art using the exact same language for both
` of the Declaration.
` Do you remember that to be correct?
` If you need to confirm, I believe it's paragraph
` 36 of the '612 Declaration.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 7
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` A. That is correct.
` Q. Okay. Now, are you familiar with how
` Dr. MacCarley has described the level of ordinary skill
` in the art?
` A. I have reviewed that.
` Q. Okay. I'll read for you. Here, I can show you
` his Declaration, if you like, how -- but Dr. MacCarley
` describes skill of the art, It's a bachelor of science
` in engineering, most likely electrical, mechanical, or
` automotive, plus approximately two years of practical
` experience with control systems for automotive
` applications.
` Is there is any material difference between your
` description of a person ordinary skill in the art and
` Dr. MacCarley's description?
` A. Mine is exactly as it reads and it's not exactly
` identical with the one you read.
` It says, Bachelor of Science in Electrical and
` electronics -- or Electronics Engineering.
` Q. Right. So it's used different words.
` But in terms of considering patentability or the
` obviousness of the patent, is there any material
` difference between how Dr. MacCarley has described one
` of ordinary skill in the art and how you described
` ordinary skill in the art.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 8
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` Does it make any difference to you which level of
` the skill in the art we use to determine whether the
` patent is patentable or obvious?
` A. Yes.
` Q. Okay.
` A. It does matter.
` Q. Okay. And the -- between your definition
` description of one of ordinary skill in art and
` Dr. MacCarley's description of one of ordinary skill in
` the art, which one of those hypothetical persons would
` be more skilled, the person you described or the person
` Mr. -- Dr. MacCarley describes?
` A. I don't believe a person of ordinary skill is
` defined in terms of more or less skilled. It's about
` being appropriately skilled at the time of the patent --
` filing of the petition.
` And I have reported that it is my opinion that
` the person should have an electrical engineering
` bachelor's, plus some experience, or what I have
` described following that.
` Q. Okay. And what is -- what -- in your opinion,
` what is flawed about Dr. MacCarley's description of one
` of ordinary skill in the art?
` A. I don't believe I said such a thing.
` Q. Okay. What's -- what -- why is there a material
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 9
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` difference between your description and his description?
` A. Would you repeat his again?
` Q. Sure.
` It's a Bachelor of Science in Engineering, most
` likely electrical, mechanical or automotive, plus two
` years of practical experience with control systems for
` automotive applications.
` A. I am not familiar with what a Bachelor's Degree
` in automotive engineering is. Such a degree is not
` distinct from electrical or mechanical engineering, to
` your knowledge, at least not with the schools that I
` have been associated with it.
` Q. Okay. Is it fair to say you did no analysis in
` your work on either the '802 or '612 patents under
` Dr. MacCarley's definition of one of ordinary skill in
` the art?
` Instead, you used your description, correct?
` A. My report is based on itself, not on things that
` other people have opined or written. I have defined
` what a person of ordinary skill is.
` And that it is the standard that I've used --
` that hypothetical person is the standard I've used for
` my opinions.
` Q. Okay. And you did not study the patents and the
` obviousness of the challenged claims of the patents
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 10
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` using Dr. MacCarley's description, correct?
` A. I believe it was not my duty to write two
` reports; one based on my definition of a person of
` ordinary skill and one on the basis of anybody else's.
` Q. Okay. So is that a -- am I correct that you did
` not take into account Dr. MacCarley's description of one
` of ordinary skill in the art when formulating the
` witness in your report, declarations?
` A. I do not remember not having taken into account.
` What I do remember is I set the standard and I
` used my standard, and I have read his report, as well.
` Q. Okay. What was the date of invention for the
` challenged claims of the '802 patent?
` MR. NYE: Objection, lack of foundation.
` MR. LEAVELL: Let me rephrase that.
` Q. (BY MR. LEAVELL) What date did you use when
` formulating the opinions in your declarations for the
` date of invention of the challenged claim of the
` patents?
` A. Well, I believe the standard practice would be to
` use the date of the filing of the patent.
` Q. And what date did you use?
` A. If you provide the patent, I can read that to
` you.
` (Petitioner's Exhibit 3 and Exhibit 4 marked)
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 11
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` Q. (BY MR. LEAVELL) And, sir, you have in front of
` you what the court reporter has marked Exhibits 3 and 4,
` correct?
` A. That is correct.
` Q. Okay. What date of invention did you use when
` determining whether the challenged claims of the '802
` and '612 patents would have been obvious at the time of
` the invention?
` A. These have a priority date of a previous patent,
` which you have not provided me. So I can only tell you
` the dates of filing of these patents.
` But the inventions are based on priority dates of
` another patent or two.
` Q. I believe on the face of the patent, it list solo
` applications of Claim Priority 2. There's an
` April 22nd, 1992, date.
` Do you see that?
` MR. NYE: Craig, can I ask which one is
` Exhibit 3?
` MR. LEAVELL: '802.
` A. Yes. Here, it states that the patent '876 was
` filed on April 22nd, 1992.
` Q. (BY MR. LEAVELL) Okay. So is it correct to say
` that when -- when determining whether the challenged
` claims of the '802 and '612 patents would have been
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 12
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` obvious at the time of the invention, that you used
` April 22, 1992, as the date of the invention?
` A. Would you repeat the question again.
` Q. Sure.
` When -- when determining whether the challenged
` claims of the '802 and '612 patents would have been
` obvious at the time of the invention, did you use
` April 22nd, 1992, as the date of invention?
` A. To the extent that they were not new claims, I
` would have to use the date of the priority patent.
` Q. Okay. What date did you use for Claim 1 of the
` '802 patent?
` A. Well, I have to review the Claim 1 and you have
` to provide me, if you would, the '876 patent.
` (Petitioner's Exhibit 5 marked)
` Q. (BY MR. LEAVELL) The court reporter has handed
` you Exhibit No 5, which is the '876 patent.
` Let me -- let me ask: Do you remember -- or did
` you -- did you set forth anywhere in your Declaration
` what you understood to be the date of the invention for
` Claim 1 of the '802 patent?
` A. I have to refresh my memory with my report. I
` cannot --
` Q. Okay.
` A. -- tell you from memory what the dates are.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 13
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` Q. I'll see if you can help you.
` Do you recall thinking about the issue when
` preparing your declaration and rendering your opinions
` on the obviousness of the challenged claims -- do you
` remember actually sitting down and thinking about what
` the date of invention was for the purposes of
` obviousness?
` A. If I understand your question correctly, in order
` to analyze the priority -- prior art and -- and the
` obviousness of patent, you would have to consider the
` date of the filing of the patent and the associated
` claim.
` Q. Okay. Did you understand that you were not only
` to consider the filing, but also the actual date of the
` invention?
` Do you understand the difference?
` A. I was aware of the date of the filing of the
` patent, and the material that I consulted in order to --
` to write my report.
` Q. Okay. Do you recall whether there was any
` difference between -- well, do you remember whether all
` of the challenge claims had the same date of invention,
` or whether the date of invention was buried among the
` claims?
` A. My understanding is that the date of the claims
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 14
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` are tied to the date of the filing of the patent and the
` priority date of the prior patents.
` Q. Okay. But my -- I apologize if my question was
` unclear.
` There are approximately 10 or 12 challenged
` claims, right? I don't know the exact number, but work
` with me here. 10 or 12 claims, right?
` A. Okay.
` Q. And for each of those claims, you rendered an
` opinion whether those claims would have been obvious or
` not obvious, right?
` A. Well, my report is about comparing the claims
` with the prior art, exactly as I have done it in my
` patent.
` Q. Okay.
` A. You have to point me to the specific theme in my
` report, so I know where the discussion of obviousness
` that we're talking about is.
` Q. Okay. We'll -- we'll go one by one.
` But do you recall -- sitting here today, do you
` recall while preparing your declarations, making any
` determination that any of the challenged claims were
` entitled to different invention dates or were all of
` them entitled to the same invention date?
` Do you -- do you recall, sitting here today? If
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 15
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` you don't recall, we will to go through your report.
` A. We would have to go through my report.
` Q. Okay.
` A. I do not work reliably from memory because the
` answer may not be valuable.
` Q. Okay. Let's turn to that, your Exhibit 1, your
` '802 Declaration.
` And let's start with the discussion Claim 1 of
` the '802 patent. And I believe you have a section
` entitled, Claim 1 that starts paragraph 53 on page 25 of
` your Declaration for the '802 patent.
` Are you there, sir?
` A. Yes.
` Q. Okay. And in paragraph 53 of your Declaration,
` you say that your understanding of this limitation of
` Claim 1, the limitation being a sensor for measuring
` parameter of a motor that varies in response to a
` resistance to motion.
` Your understanding of that limitation of Claim 1
` is that parameter must vary in response to a resistance
` to motion, not simply to a change speed in the motor,
` and your analysis below is based on this assumption.
` Do you see that paragraph?
` A. I see the paragraph. I'm not sure about your
` interpretation of it, but I see the paragraph and it
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
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` reads the way it reads.
` Q. What -- what are you not -- not sure about in my
` interpretation?
` A. Well, you read some things into this paragraph
` that are not in there.
` Q. Okay. The -- the next paragraph says, This
` interpretation is consistent with and supported by the
` details description of the '802 patent.
` But I don't see anywhere here in the next few
` paragraphs where you identify what the time of the
` invention was for Claim 1.
` Do you see that anywhere in your section for
` Claim 1?
` A. We would have to go through it. If you give me
` time, I will search through and see if I have stated
` that otherwise.
` Q. Sure.
` Well, first of all, let's look at the section on
` Claim 1, and confirm whether you said anything in
` connection with Claim 1. That's paragraphs 53 through
` 60, and then we'll look at the rest of the report.
` But can you confirm for me that nowhere in
` paragraph 53 through 60 do you explain what you
` understood to be the date of invention of Claim 1.
` A. What was your question again?
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 17
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` Q. Do you, in your declaration of the '802 patent,
` anywhere within the section entitled Claim 1, paragraphs
` 53 through 60, do you identify what you used as the date
` of invention?
` A. Yes. If you look at paragraph 59, says, I'm not
` aware of any evidence other than that -- other than what
` is contained in '801 patent and its priority
` applications.
` That clearly extends it not -- beyond the
` specific date of '801 because it talks about its
` priority applications.
` Q. Okay. So according to 59, what date of invention
` did you use for Claim 1 of the '802 patent?
` A. The -- I'm sorry. Repeat the question again.
` Q. Okay. So what date of invention did you use for
` Claim 1 of the '802 patent when determining whether
` Claim 1 was obvious?
` A. The context of paragraph 59 sets the date of
` invention based on '802 and its priority applications.
` And priority applications are the patents that we
` discussed just a few minutes ago.
` Q. Okay. So did you use April 1992 as the date of
` invention for Claim 1 of the '802 patent?
` A. The context of my report implies that this claim
` is -- is analyzed in -- in -- in the time frame of '802
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 18
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` and its priority applications, one of which is the one
` that goes to April of 1992.
` Q. Okay. In paragraph 60 of your Declaration, you
` say, Based on my understanding of Claim 1, and for at
` least the above reasons, it is my opinion that Claim 1
` would not have been obvious to one of ordinary skill in
` the art in view of Itoh and Kinzl, either alone or in
` combination.
` Do you see that?
` A. I do.
` Q. And is that an opinion that you reached in
` connection with your work in this case?
` A. It's in my report. I -- that's the opinion that
` I have expressed.
` Q. Okay. When you say, "Claim 1 would not have been
` obvious to one of skill in the art," did you mean it
` would have been not obvious to one of skill in the art
` in April of 1992 or some other date?
` A. The person of ordinary skill, by definition, is
` supposed to be assumed at the time of the filing of the
` patent, as I understand it.
` Q. Okay. And as I -- as you understand that, what
` date did you use in reaching the conclusion expressed in
` paragraph 60 of your Declaration?
` A. The priority applications of patent '802.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 19
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` Q. All of them? So you used five different dates of
` invention?
` A. No. It would be based on the earliest one of the
` dates.
` Q. April of 1992 is the date that you used to
` determine whether Claim 1 was obvious or not?
` A. If that is the earliest priority date, then that
` would be the -- the date -- the earliest date.
` Q. Okay. I will represent to you that based on the
` '802, earliest claim priority date is April 22nd, 1992.
` Do you see that there?
` A. I do.
` Q. And the '876 patent that you were asked to
` review, I have given that to you, it was filed on
` April 22nd, 1992.
` Do you see that?
` A. I do.
` Q. Okay. So after looking at those documents, can
` you confirm for me that when you reached the conclusion
` that Claim 1 would not have been obvious to one of
` ordinary skill in the art, your conclusion was that it
` would not have been obvious to one of skill in the art
` as of April of 1992; is that correct?
` A. The obviousness relates to '802 and its priority
` applications.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 20
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` The priority patents, the earliest one that I can
` identify right now is, in fact, the '876 patent, which
` was filed on April of 1992.
` Q. Okay. Can you take --
` A. In that time frame, it would not have been
` obvious to a person of ordinary -- person of ordinary
` skill up to that date.
` Q. Okay. Go ahead and look at the rest of your
` Declaration of the '802 patent.
` And my question for you is: What date did you
` use as the date of invention for Claim 1 of the '802
` patent when -- when you signed your Declaration?
` A. Well, I believe we just reviewed it, and I told
` you that the obviousness -- the conclusion is that the
` obviousness is in the context of priority applications,
` which refers us to April 22nd of 1992.
` Q. Okay. So is that a yes, you used April 1992 as
` the date of invention for Claim 1 of the '802 patent
` when preparing your Declaration in this case?
` A. It's the priority date of the filing of the
` patent.
` Q. Which patent?
` A. The priority application.
` Q. Which priority application?
` A. My understanding is that would be '876 patent.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 21
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` Q. Okay. So in concluding that Claim 1 was not
` obvious when you signed your Declaration, you were using
` as the date of invention for Claim 1 of the '802 patent,
` April of 1992; is that correct?
` A. Again, I would have to refer you to my report.
` Q. I believe --
` A. I am not aware of any evidence other than what is
` contained in '802 and its priority applications that one
` of ordinary skill in the art would have been motivated
` to modify these prior arts --
` Q. Sir, I'm going to ask you --
` A. -- to arrive at Claim 1.
` Q. I'm going to ask you --
` A. In what way is that ambiguous that I can
` illuminate?
` Q. Okay. If you could turn your report,
` paragraph -- Declaration of the '802 patent for -- in
` paragraph 32 -- actually, paragraph 31, I apologize.
` Do you see paragraph 31 in your Declaration for
` the '802 patent?
` A. I do.
` Q. And there's a paragraph that explains -- it's one
` of the few paragraphs. But paragraph 31 is part of your
` explanation of the -- of your understanding of the
` standard to be applied when determining obviousness,
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 22
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` correct?
` A. This is my understanding of the interpretation of
` the obviousness and nonobviousness.
` Q. Okay. And this is the standard that you applied
` when doing work and when you signed your Declaration,
` correct?
` A. This is the standard that I was given to use for
` my report.
` Q. Okay. And in this block paragraph, in paragraph
` 31 of your Declaration, starting at three lines from the
` bottom of page 14 there, do you see "such that the
` subject matter"?
` Do you see that?
` A. Yes.
` Q. It says, Such that the subject matter, as a
` whole, would have been obvious at the time the invention
` was made to a person having ordinary skill in the art.
` Do you see that?
` A. I do.
` Q. Okay. For Claim 1 of the '802 patent, what was
` the time the invention was made, in your opinion?
` A. Well, the -- the invention was made over a period
` of time starting from the priority date, and then
` continued into '802.
` Q. Okay. So the invention date for the '802 patent
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 23
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` of Claim 1 is not until the filing date of the '802
` patent itself?
` Is that what you're saying, sometime in 2000?
` A. I did not say that.
` Q. Okay. I'm sorry if I misunderstood.
` What -- when you -- when you signed this
` Declaration and you rendered your opinions that the
` subject matter, as a whole, would have been obvious at
` the time invention was made, when did you think the
` invention of Claim 1 of the '802 had been made? What
` date?
` A. I believe I answered that. It has to do with the
` '802 and its priority applications.
` Q. Okay. And that's -- that's the understanding you
` applied when analyzing the obviousness of Claim 1 in the
` '802 patent, correct?
` A. '802 is a continuation, and, therefore, its
` invention takes priority in the earliest filing, and
` the -- and the earliest filing, to my knowledge, is the
` '876 patent, filed on April 22nd, 1992.
` Q. Okay. I -- what I understand you to have just
` told me, and correct me if I'm wrong.
` What I understand is you just told me, Claim 1 of
` the '802 patent, your understanding is the date of
` invention is April of 1992. Is that -- is that what you
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 24
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` were just saying, yes or no? You can explain in a
` moment.
` If that's what -- if that's not what you were
` saying, just tell me.
` A. Well, I -- I cannot agree with you when you
` paraphrase me.
` Q. Okay.
` A. I can only state what I said.
` Q. Okay. And what date of invention did you use
` when construing Claim 1 of the '802 patent?
` A. I'm not aware of any evidence other than what is
` contained in '802 patent and its priority applications
` that one of ordinary skill in the art would have been
` motivated to modify Itoh and Kinzl to arrive at Claim 1.
` Q. Okay.
` A. So this pretty much says exactly the answer to
` your question.
` Q. I apologize. I switched my question. Maybe you
` didn't -- maybe you didn't hear me or maybe I misstated
` it, but I'm not talking about obviousness anymore. I'm
` talking about claim construction and what Claim 1 means
` to one of ordinary skill in the art.
` What date of invention did you use when you were
` trying to figure out how one of ordinary skill in the
` are would interpret Claim 1 of the '802 patent?
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`BNA/Brose Exhibit 1032
`IPR2014-00416
`Page 25
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` A. Let's see, claim construction is something that I
` would have to be guided by. It's a legal matter.
` So the idea of what it would mean to a person of
` ordinary skill would be at the time of the invention, in
` my understanding.
` Q. Right.
` And what was the time of the invention of Claim 1
` of the '802 patent?
` A. Again, I do not think that different claims in --
` in a patent, which are continuation, have different
` dates, as I understand it. And so the priority date for
` the continuation inventions are the priority
` application.
` Q. And what date did you use as the date of
` invention for Claim 1 of the '802 patent when
` interpreting the claim?
` A. In analyzing '801
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