UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`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,
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`v.
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`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
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`Case IPR2014-009891
`Patent 7,643,168
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`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION OF
`KENNETH PARULSKI
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`1Case IPR2015-00543 has been joined with this proceeding.
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`_______________
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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,
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`v.
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`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2014-009891
`Patent 7,643,168
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`MOTION FOR OBSERVATION REGARDING CROSS-EXAMINATION OF
`KENNETH PARULSKI
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`1Case IPR2015-00543 has been joined with this proceeding.
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`EXHIBIT LIST
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`Patent Owner
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` [EX. 2001] U.S. Patent Application No. 11/617,509 of David A. Monroe
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` (“‘509 Application”)
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` [EX. 2002] U.S. Patent Application No. 10/336,470 of David A. Monroe
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` (“’470 Application”)
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` [EX. 2003] U.S. Patent Application Serial No. 09/006,073 of David A.
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` Monroe (“’073 Application”)
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` [EX. 2004] PTAB Decision to Institute for IPR2014-00439 (“’439
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` Decision”)
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` [EX. 2005] U.S. Patent No. 6,122,526 (“Parulski ‘526 Patent”)
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` [EX. 2006] U.S. Patent No. 5,943,603 (“Parulski ‘603 Patent”)
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`[EX. 2007] U.S. Patent No. 5,666,159 (“Parulski ‘159 Patent”)
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`[EX. 2008] Expert Witness Declaration of Dr. Jose Melendez
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` (“Melendez Declaration”)
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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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`2
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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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`Petitioner
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` [EX. 1001] U.S. Patent No. 7,643,168 (“the ’168 Patent”)
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` [EX. 1002] Certified Translation of the Japanese Patent Application
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` Publication No. H06-133081 to Morita (“Morita”)
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` and the corresponding Japanese language patent application
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` [EX. 1003] U.S. Patent No. 5,477,264 to Sarbadhikari et al.
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` (“Sarbadhikari”)
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`[EX. 1004] PCT Application Publication No. WO 95/23485 to Longginou
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` (“Longginou”)
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`[EX. 1005] U.K. Patent Application GB 2,289,555 A to Wilska et al.
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` (“Wilska”)
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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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`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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`3
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`[EX. 1006] European Patent Application Publication No. 0594992 A1 to
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` Yamagishi (“Yamagishi-992”)
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`[EX. 1007] U.S. Patent No. 5,550,754 B2 to McNelley et al. (“
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` McNelley”)
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`[EX. 1008] Declaration of Kenneth Parulski including Attachments A-D
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` (“Parulski”)
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`[EX. 1009] Rebuttal Declaration of Kenneth Parulski in Support of
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` Petitioner’s Reply to Patent Owner’s Response of February 20,
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` 2015 (“2015 Parulski Decl.)
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`[EX. 1010] Select Sections of e-Watch Preliminary Infringement
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` Contentions
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`4
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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 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. 1009) 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 2
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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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`5
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`technology.” This statement is relevant to Mr. Parulski’s testimony in, for example,
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`paragraph 46 of the 2015 Parulski Decl. (EX 1009) related to the alleged existence of a
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`“transmission protocol algorithm” capable of providing visual image data in a
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`compatible format in the cited references because it shows his relative lack of expertise
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`in cellular communications transmission capabilities when compared with Dr.
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`Melendez’s extensive experience with cellular communications transmission systems,
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`including his management of a wireless infrastructure business at Texas Instruments as
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`discussed in Dr. Melendez’s declaration in paragraph 21 (EX. 2008).
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`Observation Number 3
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`In Exhibit 2019, on page 94, line 15, Mr. Parulski testified, “Yes, I think that’s
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`fair” when asked whether the digital memory 46 of FIG. 4 of the ‘168 Patent can store
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`images for later recall. This is relevant to the discussion in paragraph 24 of the 2015
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`Parulski Decl. (EX. 1009) discussing whether “retained visual image data” as claimed
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`in the ‘168 Patent needs to be capable of being recalled from memory.
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`Observation Number 4
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`In Exhibit 2019, on page 100, lines 14-15, in discussing paragraphs 35 and 36
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`of the 2015 Parulski Decl. (EX. 1009) related to the alleged disclosure in Sarbadhikari
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`of “retained visual image data” under Patent Owner’s interpretation of the phrase, Mr.
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`Parulski testified, [b]ut these specific passages were not part of my original
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`declaration.” This is relevant to whether the arguments in paragraphs 35 and 36 of the
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`2015 Parulski Decl. (EX. 1009) are beyond the proper scope of a reply brief.
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`Observation Number 5
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`In Exhibit 2019, on page 102, line 1, Mr. Parulski testified, in responding to a
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`question indicating that the JPEG transmission path of FIG. 4 of the ‘168 Patent
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`showed an image being transmitted after JPEG compression without being put back
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`into digital memory, “Yes. I think that’s fair.” This is relevant to the arguments in
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`paragraph 39 of the 2015 Parulski Decl. (EX. 1009) wherein Mr. Parulski indicates
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`that the claims as properly construed in view of the specification do not require that the
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`“compressed image data” be transmitted without being subsequently retained in
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`memory after being generated by the at least one compression algorithm.
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`Observation No. 6
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`In Exhibit 2019, on page 109, lines 1-5, Mr. Parulski testified, “I guess, in my
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`opinion, the material in Rappaport is more than sufficient to describe GSM and
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`describe the GSM protocol and that it was not necessary to dive down into the minute
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`detail in the GSM standards.” This is relevant to Mr. Parulski’s opinion stated in
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`paragraph 46 of the 2015 Parulski Decl. (EX. 1009) that Longginou discloses the
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`GSM standard and the GSM standard discloses “transmission protocol algorithms”
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`capable of providing visual image data in a compatible format despite his failure to
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`review the actual GSM standards.
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`Observation Number 7
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`In Exhibit 2019, on page 114, lines 17-18, Mr. Parulski testified, “I have not
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`reviewed the full GSM standard.” This is relevant to Mr. Parulski’s opinion stated in
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`paragraphs 46 and 53-56 of the 2015 Parulski Decl. (EX. 1009) that Longginou
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`discloses the GSM standard and the GSM standard discloses “transmission protocol
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`algorithms” capable of providing visual image data in a compatible format despite his
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`failure to review the actual GSM standards.
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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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`8
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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.
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`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2014-009893
`Patent 7,643,168
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`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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`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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`3Case IPR2015-00543 has been joined with this proceeding.
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`9
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`Person(s) Served: HTC-EWATCH-IPR-service@perkinscoie.com
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` Bing Ai (ai@perkinscoie.com)
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` Perkins Coie LLP
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`
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`11988 El Camino Real, Suite 350
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` San Diego, CA 92130
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` Naveen Modi (naveenmodi@paulhastings.com)
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` Elizabeth L. Brann (elizabethbrann@paulhastings.com)
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` Steven L. Park (stevenpark@paulhastings.com)
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` Paul Hastings LLP
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`
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`1170 Peachtree Street, NE, Suite 100
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` Atlanta, GA 30309
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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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