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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2014-009871
`Patent 7,365,871
`
`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION OF
`KENNETH PARULSKI
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`EXHIBIT LIST
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`Patent Owner
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` [EX. 2001] Expert Witness Declaration of Dr. Jose Melendez
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` (“Melendez Declaration”)
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`[EX. 2002] U.S. Patent 6,427,078 (“Wilska’s ‘078 Patent”)
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`[EX. 2003] Office Action Reply in Inter Partes Reexamination of U.S.
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` Patent 6,427,078 of Wilska et al. Under Control No.
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` 90/012,637 (“Wilska ‘634 IPX Office Action Reply”)
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`[EX. 2004] U.S. Patent 5,550,643 (“Hassan”)
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`[EX. 2012] Oxford Dictionary online definition of “signal”
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`[EX. 2013] Wikipedia entry related to “Fax”
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`[EX. 2014] Wikipedia entry related to “JPEG”
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`[EX. 2015] Merriam-Webster online definition of “JPEG”
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`[EX. 2016] HTC One Phone specifications
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`[EX. 2017] Merriam-Webster online definition of “Buffer”
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`[EX. 2019] Kenneth Parulski Deposition Transcript from 5/21/152
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`2There were additional exhibits introduced at Mr. Parulski’s deposition. However,
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`these additional exhibits are already papers or exhibits of record in IPR2014-
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`Petitioner
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` [EX. 1001] U.S. Patent No. 7,365,871 (“the ’871 Patent”)
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` [EX. 1002] United Kingdom (U.K.) Patent Application GB 2,289,555 A
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` to Wilska (“Wilska”)
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` [EX. 1003] Certified Translation of the Japanese Patent Application
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` Publication No. H06-176114 to Yamagishi (“Yamagishi”),
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` Certification of English Translation and the Original
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` Japanese Document
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` [EX. 1004] U.S. Patent No. 5,550,754 B2 to McNelley et al.
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` (“McNelley ”)
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` [EX. 1005] European Patent Application Publication No. 0594992 A1 to
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` Yamagishi (“Yamagishi-992”)
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` [EX. 1006] Declaration of Kenneth Parulski including Attachments A-D
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` (“Parulski Declaration”)
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` [EX. 1007] Select Portions of the 871 Prosecution File History (“‘871
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` Prosecution File History”)
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`00987/IPR2015-00541 or IPR2014-00989/IPR2015-00543. Pursuant to 37 CFR
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`42.6(d), Patent Owner is not submitting documents that are previously in the
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`record.
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`[EX. 1008] Rebuttal Declaration of Kenneth Parulski in Support of
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` Petitioner’s Reply to Patent Owner’s Response of February
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` 20, 2015 (“2015 Parulski Decl.”)
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`[EX. 1009] Select Sections of eWatch Preliminary Contentions in
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` Lawsuits Filed in the Eastern District of Texas Against
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` Petitioner HTC
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`[EX. 1010] Select Sections of eWatch Preliminary Contentions in
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` Lawsuits Filed in the Eastern District of Texas Against
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` Petitioner Samsung
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`[EX. 1011] Samsung Galaxy S5 User Manual
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` [EX. 1012] Select Sections of AT&T Wireless Picture/Video Messaging
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`e-Watch Corporation and e-Watch, Inc. (“Patent Owner”) submit this motion
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`for observation regarding cross-examination during the May 21, 2015 deposition of
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`Kenneth Parulski, a reply declarant of HTC Corporation and HTC America, Inc.
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`(“Petitioner”). Patent Owner submits the following observations based on Kenneth
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`Parulski’s testimony.
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`Observation Number 1
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`In Exhibit 2019, on page 10, lines 19-21, Mr. Parulski testified that “[g]enerally,
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`the ‘871 Patent has many claim limitations, but certainly that includes transmission of
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`images.” This testimony is relevant to Mr. Parulski’s statement in paragraph 18 of the
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`2015 Parulski Decl. (EX. 1008) that “[t]he ‘871 patent treats the cellular telephone 164
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`as a mere add-on device…” and the importance of image transmission capabilities of
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`the ‘871 Patent in general.
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`Observation Number 2
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`In Exhibit 2019, on page 12, lines 16-19, Mr. Parulski testified in relation to one
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`of the limitations of claim 12 of the ‘871 Patent that “generally, the limitation relates to
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`the wireless telephone being operable to transmit and receive non-audio digital
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`signals…” This testimony is relevant to Mr. Parulski’s statement in paragraph 18 of
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`the 2015 Parulski Decl. (EX. 1008) that “[t]he ‘871 patent treats the cellular telephone
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`164 as a mere add-on device…” and the importance of image transmission capabilities
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`of the ‘871 Patent in general.
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`Observation Number 3
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`In Exhibit 2019, on page 16, lines 1-2, Mr. Parulski testified that “three to five
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`years of experience in designing digital imaging devices” was the only thing he
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`expressly listed under the experience prong of his definition of a person of ordinary
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`skill in the art related to the patented technology. This testimony is relevant to
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`paragraph 19 of the 2015 Parulski Decl. (EX. 1008) wherein Mr. Parulski stated, “the
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`definition I provided assumed that the person would have had a sufficient level of
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`familiarity and knowledge with communications devices capable of transmitting
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`digital image data.”
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`Observation Number 4
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`In Exhibit 2019, on page 18, lines 8-10, Mr. Parulski testified, “I don’t know
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`that I would necessarily consider myself to be an expert in all cellular communication
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`technology.” This testimony is relevant to Mr. Parulski’s statements in, for example,
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`paragraphs 30-34 of the 2015 Parulski Decl. (EX 1008) because it shows his relative
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`lack of expertise in cellular communications transmission capabilities when compared
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`with Dr. Melendez’s extensive experience with cellular communications
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`transmissions, including his management of a wireless infrastructure business at Texas
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`Instruments as discussed in Dr. Melendez’s declaration in paragraph 15 (EX. 2001).
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`Observation Number 5
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`In Exhibit 2019, on page 21, lines 20-23, Mr. Parulski testified related to the
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`redundancy of Petitioner’s proposed construction of “non-audio digital signals” that
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`“I’m not a patent attorney, and I haven’t, frankly, analyzed the claim from the view
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`that you’re—that you’re now proposing.” This testimony is relevant to the proper
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`construction of “non-audio digital signals” and to Mr. Parulski’s criticisms of Patent
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`Owner’s proposed construction of this phrase in paragraph 23 of his 2015 Parulski
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`Decl. (EX. 1008).
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`Observation Number 6
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`In Exhibit 2019, on page 28, lines 3-7, Mr. Parulski testified, “[t]here’s a path B
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`that includes JPEG compression and a PC modem protocol. There’s a path C that
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`includes wavelet compression and a PC modem protocol and a path D that includes
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`any conversion and any compression in any protocol. So at least those last three, B, C,
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`and D, do not use Group-III fax.” This statement is relevant to Mr. Parulski’s
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`testimony related to the disclosure contained in the ‘871 Patent specification as
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`discussed in paragraph 24 of the 2015 Parulski Decl. (EX. 1008).
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`Observation Number 7
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`In Exhibit 2019, on page 32, lines 12-14, Mr. Parulski testified with respect to
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`the disclosure of the ‘871 Patent that “it does distinguish between a standard audio
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`mode or a future digital mode, if that was your question.” This statement is relevant to
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`Mr. Parulski’s criticisms of Patent Owner’s proposed definition of “non-audio digital
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`signals” and the alleged lack of support for Patent Owner’s proposed definition in the
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`‘871 Patent as discussed in paragraphs 23-24 of the 2015 Parulski Decl. (EX. 1008).
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`Observation Number 8
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`In Exhibit 2019, on page 52, lines 12-15, Mr. Parulski testified, “[b]ut I agree
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`that there was no explicit statement that path A in figure 4 of the ‘871 patent was
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`excluded from the purview of the claims in Dr. Melendez’s declaration.” This
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`testimony is relevant to Mr. Parulski’s assertion in paragraph 37 of the 2015 Parulski
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`Decl. (EX. 1008) that Patent Owner’s and Dr. Melendez’s interpretations of the claims
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`were unreasonable because they “exclude[s] the Group-III fax processing and
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`transmission path that is in each of Figures 1 to 5 of the ’87 patent, including the
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`admittedly representative embodiment of Figure 4.”
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`Observation Number 9
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`In Exhibit 2019, on page 61, line 23-page 62, line 2, Mr. Parulski, in discussing
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`the differences related to the sending of a visual image using a JPEG file versus the
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`sending of a facsimile of an image using a facsimile protocol, stated, “[s]o if you—in
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`the example I talked about earlier, a low resolution black and white image, there would
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`be potentially some differences as a result of a halftoning process [using facsimile],
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`depending on exactly how you implement halftoning.” This is relevant to the
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`distinction being made between sending a visual image versus a derivative of the
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`visual image as discussed in, for example, paragraph 38 of the 2015 Parulski Decl.
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`(EX. 1008).
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`Observation Number 10
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`In Exhibit 2019, page 74, lines 4-9, in discussing the two embodiments of the
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`Wilska reference, Mr. Parulski testified “I believe in Figure 1 with the integrated
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`camera and then in Figure 2 when, in fact, the camera unit is plugged in, you would
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`have what is shown in Figure 5, which includes a microprocessor 23—it—that
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`generally performs camera image processing. And, of course, you’d have the central
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`processor 4.” This is relevant to Mr. Parulski’s testimony in paragraph 44 of the 2015
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`Parulski Decl. (EX. 1008) indicating that the Wilska reference allegedly does not
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`require two processors and his specific statement in this paragraph that “[t]here is no
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`requirement in any of the claims that the device include a second processing element
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`(e.g. microprocessor 23).”
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`Observation Number 11
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`In Exhibit 2019, page 76, lines 18-22, Mr. Parulski testified that “I am aware of
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`some smartphones that have a single integrated circuit that have multiple processors,
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`multiple GPUs, and multiple CPUs all integrated on the same integrated circuit.” This
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`is relevant to Mr. Parulski’s statement in paragraph 46 of the 2015 Parulski Decl. (EX.
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`1008) that “a POSITA in 1998 would have known that a more powerful processor
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`could have been used to avoid the time delay issues that Wilska’s device may have
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`faced using processors available in 1994” because even today smartphones uses
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`multiple processors and are not generally constructed with a single processor.
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`Observation Number 12
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`In Exhibit 2019, page 78, lines 16-19, in discussing a particular attachment to
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`his 2015 Parulski Decl. that he selected and that discussed the use of speech links for
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`video transmission in GSM, Mr. Parulski testified, “the description of existing mobile
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`speech links, I think, is a general statement and frankly, somewhat of a
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`mischaracterization of GSM systems.” This is relevant to Mr. Parulski’s statements
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`regarding the way GSM systems sent images and video in the relevant time frame as
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`discussed in, for example, paragraph 56 of the 2015 Parulski Decl. (EX. 1008).
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`Observation Number 13
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`In Exhibit 2019, page 84, lines 15-16, in discussing the manner in which video
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`was transmitted in GSM networks in 1995 and one of the specific attachments to the
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`2015 Parulski Decl., Mr. Parulski testified “[e]xactly how the video over GSM
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`operated is not described here.” This is relevant to Mr. Parulski’s misunderstanding of
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`how GSM networks operated in 1995 as discussed in, for example, paragraph 56 of
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`the 2015 Parulski Decl. (EX. 1008) and Dr. Melendez’s assertions that GSM networks
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`in that timeframe used audio as opposed to non-audio signals to transmit images as
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`discussed in paragraphs 40-41 of the Melendez Declaration (EX. 2001).
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`May 26, 2015
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`Respectfully Submitted,
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`s/Gregory S. Donahue
`
`Gregory S. Donahue
`Reg. No. 47,531
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, TX 78731
`Telephone: (512) 539-2625
`Facsimile: (512) 539-2627
`Counsel for Patent Owner
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HTC CORPORATION; HTC AMERICA, INC.; SAMSUNG ELECTRONICS
`CO., LTD.; and SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2014-009873
`Patent 7,365,871
`
`CERTIFICATE OF SERVICE
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`A Certificate of Service in compliance with 37 CFR §42.205 is attached to
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`the Motion for Observation Regarding Cross-Examination of Kenneth Parulski,
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`certifying that a copy of the Motion for Observation Regarding Cross-Examination
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`of Kenneth Parulski in its entirety has been served on Petitioners as detailed below
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`as well as the deposition transcript of Kenneth Parulski and all exhibits thereto.
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`
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`Date of Service: May 26, 2015
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` Manner of Service: email with consent of Petitioners
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` Document(s) Served: Motion for Observation Regarding Cross-Examination of
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` Kenneth Parulski, Deposition Transcript of Kenneth
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` Parulski, All Exhibits to Deposition Transcript of
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` Kenneth Parulski
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`Person(s) Served: HTC-EWATCH-IPR-service@perkinscoie.com
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` Bing Ai (ai@perkinscoie.com)
`
` Perkins Coie LLP
`
`
`
`11988 El Camino Real, Suite 350
`
` San Diego, CA 92130
`
` Naveen Modi (naveenmodi@paulhastings.com)
`
` Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`
` Steven L. Park (stevenpark@paulhastings.com)
`
` Paul Hastings LLP
`
`
`
`1170 Peachtree Street, NE, Suite 100
`
` Atlanta, GA 30309
`
`
`
`
`
`
`
`s/Gregory S. Donahue
`Gregory S. Donahue
`Reg. No. 47,531
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, TX 78731
`Telephone: (512) 539-2625
`Facsimile: (512) 539-2627
`Counsel for Patent Owner
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