throbber
VAL DIEULIIS PH.D. 9/3/2015
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`SEGA OF AMERICA, INC., UBISOFT, INC.,
`
`KOFAX, INC.,CAMBIUM LEARNING GROUP, INC.
`
`AND PERFECT WORLD
`
`ENTERTAINMENT, INC.
`
` Petitioners
`
`v. Case No. IPR2014-01453
`
` Patent 5,490,216
`
`UNILOC USA, INC. And
`
`UNILOC LUXEMBOURG S.A.,
`
` Patent Owner
`
` ORAL DEPOSITION OF DR. VAL DIEULIIS
`
` ANSWERS AND DEPOSITION OF DR. VAL DIEULIIS,
`
`produced as a witness at the instance of the
`
`Petitioner, taken in the above-styled and -numbered
`
`cause on the 3rd day of September, 2015, A.D.,
`
`beginning at 11:24 a.m., before Terri Garcia, a
`
`Certified Shorthand Reporter in and for the State of
`
`Texas, in the offices of Warren Rhoades, located at
`
`1212 Corporate Drive, Suite 250, Irving, Texas, in
`
`accordance with the Federal Rules of Civil Procedure
`
`and the agreements hereinafter set forth.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 1
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
` A P P E A R A N C E S
`
`FOR THE PETITIONERS, SEGA OF AMERICA, INC., UBISOFT,
`INC., KOFAX, INC., AND CAMBIUM LEARNING GROUP, INC.:
`
`Page 2
`
` MR. MARK LANG
` ERISE IP, P.A.
` 6201 College Boulevard, Suite 300
` Overland Park, Kansas 66211
` (913) 777-5600
` (913) 777-5601 (Fax)
`
`FOR THE PETITIONER PERFECT WORLD ENTERTAINMENT, INC.:
`
` MR. JAMES MAUNE
` Orrick, Herrington & Sutcliffe, LLP
` 2050 Main Street, Suite 1100
` Irvine, California 92614-8255
` (949) 852-7721
` (949) 567-6710 (Fax)
`
`FOR THE PATENT OWNER:
`
` MR. RYAN LOVELESS
` Etheridge Law Group
` 2600 E. Southlake Boulevard, Suite 120-324
` Southlake, Texas 76092
` (972) 292-8303
` (817) 887-5950 (Fax)
` MR. SEAN D. BURDICK
` SEAN D. BURDICK, P.E.
` 7160 Dallas Parkway, Suite 380
` Dallas, Texas 75024-7139
` (972) 905-9580
`ALSO PRESENT:
` MS. KATHLEEN D. FITTERLING, ERISE IP, Technical
` Advisor
`
`WITNESS' ADDRESS:
`
` Electronics Consultants
` 1033 Fairmount Avenue
` St. Paul, Minnesota 55105
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`18
`
`19
`
`20
`21
`22
`23
`24
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 2
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 3
`
` I N D E X
`
`Examination by Mr. Lang . . . . . . . . . . . Page 4
`
`Examination by Mr. Maune . . . . . . . . . . Page 115
`
`Examination by Mr. Loveless . . . . . . . . . Page 124
`
`Further Examination by Mr. Lang . . . . . . . Page 134
`
`Further Examination by Mr. Loveless . . . . . Page 137
`
`Further Examination by Mr. Lang . . . . . . . Page 140
`
` E X H I B I T L I S T
`
` Page
`
`No. Description
`
`1032 Excerpt from jury 66
`
` trial transcript with
`
` Voir Dire Examination
`
` by Mr. Glitzenstein
`
`1033 Exhibit A - Declaration 74
`
` of William Rosenblatt
`
`1034 Memorandum Opinion and 95
`
` Order
`
`1 2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 3
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 4
`
` P R O C E E D I N G S
`
` DR. VAL DIEULIIS,
`
`having been first duly cautioned and sworn to testify
`
`the truth, the whole truth and nothing but the truth,
`
`testified on his oath as follows:
`
` EXAMINATION
`
`BY MR. LANG:
`
` Q. Good morning, Mr. -- Dr. DiEuliis.
`
` A. Good morning.
`
` Q. Is that okay if I refer to you as
`
`Dr. DiEuliis?
`
` A. Sure. Or however you like is fine with me.
`
` Q. Is it DiEuliis?
`
` A. DiEuliis.
`
` Q. Okay. All right. Good. Thanks again for
`
`coming today. I'm just going to hand this -- we're not
`
`going to mark it as an exhibit. I just want to give it
`
`to you. It's titled Petitioner's Notice of
`
`Deposition. Have you ever seen this document before?
`
` A. Yes.
`
` Q. And you understand that you're here today to
`
`talk about this proceeding that's listed on the cover
`
`page of this document?
`
` A. Correct.
`
` Q. How many times have you been deposed before,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 4
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Doctor?
`
` A. I've been deposed in approximately 15 cases.
`
` Q. And when you say cases, is that district
`
`court?
`
` A. District court and ITC.
`
` Q. Is that -- how many district court cases
`
`would you say, roughly, out of those 15?
`
` A. Well, there have been three -- let me think
`
`about the ITCs. I was involved in three ITC cases.
`
` Q. Okay.
`
` A. So the rest are -- and that's an approximate
`
`number.
`
` Q. Sure.
`
` A. We could look at my list if you'd like.
`
`Some -- many of the depositions were multiple days.
`
`I'm not counting that. Just...
`
` Q. Okay. And have you -- so you're fairly
`
`familiar with the rules, but I'll just go over a couple
`
`of them, just so that we're all on the same page here.
`
`I'm going to ask you some questions, and if you can
`
`just wait until I'm done asking my question before you
`
`answer, I would appreciate it, just so we're not
`
`talking over each other. It makes it very difficult
`
`for the court reporter. You understand that?
`
` A. Yes, I do.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 5
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 6
`
` Q. And if you don't understand one of my
`
`questions, please ask me. If you don't ask -- if you
`
`don't let me know you don't understand, I'm going to
`
`assume you do, and the record will show that you
`
`understand as well.
`
` A. I understand.
`
` Q. Is that okay?
`
` A. Yes.
`
` Q. And make sure you audibilize (phonetic) all
`
`your answers. No head nods, head shakes, anything like
`
`that, shoulder shrugs. Court reporter can't do that.
`
`We don't have a videographer here today, so if you
`
`could just make sure all your answer are audible, I'd
`
`appreciate it.
`
` A. I'll do my best.
`
` Q. All right. So you mentioned you'd been
`
`deposed 15 times. Is that all -- that's the
`
`depositions, correct?
`
` A. Correct.
`
` Q. And then how many -- have you testified at
`
`trial before?
`
` A. Yes.
`
` Q. And how many times have you testified at
`
`trial?
`
` A. I've testified at two ITC hearings, trials,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 6
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`and two jury trials.
`
` Q. And have you ever -- strike that.
`
` How many times have you submitted expert
`
`reports in actions?
`
` A. I would probably need to get through my list,
`
`but I would say out of those 15, multiple reports per
`
`case on the average. So --
`
` Q. So there -- I guess what I'm asking is, are
`
`there any cases in which you submitted reports that you
`
`didn't testify or weren't deposed?
`
` A. I'd have to look at my list. I don't
`
`remember.
`
` Q. Okay. And have you ever submitted a report
`
`in a -- before the patent office other than the one
`
`we're here for today?
`
` A. No, I have not.
`
` Q. So you've never testified in a patent office
`
`proceeding before?
`
` A. That's correct.
`
` Q. What did you do to prepare for your
`
`deposition today?
`
` A. I read the -- my Declaration, Dr. Madisetti's
`
`Declaration. Many. I can't necessarily say all
`
`documents of record in this matter. And I met with
`
`Uniloc yesterday.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 7
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
` Q. When you say Uniloc, is that Mr. Burdick and
`
`Mr. Loveless or is that just Mr. Burdick?
`
` A. With Mr. Burdick and Uniloc's counsel,
`
`Page 8
`
`Mr. Loveless, and Mr. Etheridge.
`
` Q. Okay. And that was yesterday?
`
` A. Yes.
`
` Q. And approximately how long did you meet with
`
`them for?
`
` A. I would say about four hours.
`
` Q. And your reading document -- the Declarations
`
`in this case and some other supporting documents, was
`
`that included in that four hours or did you do that
`
`prior to your meeting?
`
` A. I did that prior to the meeting.
`
` Q. How long would you say you spent on that?
`
` A. I am going to have to make a guess here. I
`
`would say 10 to 12 hours, maybe 15.
`
` Q. And when did you --
`
` A. And that is a guess, by the way.
`
` Q. Oh, yeah. I'm not going to hold you to it.
`
`Did you review -- when did you review those documents?
`
`Was that the day before or a couple days before or a
`
`week before?
`
` A. Well, first, let's -- one thing to make clear
`
`is, I -- many of these documents, I'm very familiar
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 8
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`with from other cases. So I'm only discussing now,
`
`Page 9
`
`today, my preparations for today --
`
` Q. Sure.
`
` A. -- and the most recent within the past week.
`
` Q. Understood. And so when you did that 10 to
`
`15 hours, that was in the past week?
`
` A. Yes.
`
` Q. Okay.
`
` A. I'm pretty sure, yes.
`
` Q. So you mentioned you're familiar with these
`
`documents from other proceedings. What proceedings are
`
`those?
`
` A. I was involved in, I believe, a series of --
`
`when I got involved in this case -- maybe 10 cases. I
`
`think there were 10 defendants, and that was Uniloc v.
`
`Activision was the name -- was the name of the
`
`consolidated case, the consolidated many cases.
`
` Q. And you were retained by Uniloc in those case
`
`as to all the cases or just a couple of them or...
`
` A. Initially, I was retained by the law firm of
`
`Nelson, Bumgardner and Casto. And that covered all the
`
`defendants that were still in the case as of that
`
`time. So there were possibly 10 to 12 cases -- I don't
`
`remember exactly -- that were active at that time and
`
`consolidated into one for discovery purposes.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 9
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
` Q. And you testified at trial in that -- in one
`
`Page 10
`
`of those cases; is that correct?
`
` A. That's correct.
`
` Q. Do you recall which defendant that was to?
`
` A. The defendant at trial was Electronic Arts.
`
` Q. You testified at trial there, correct?
`
` A. I did.
`
` Q. And was that on infringement or non- -- or
`
`validity?
`
` A. It was on infringement.
`
` Q. And I assume you were deposed prior to your
`
`testimony in that -- in that case?
`
` A. Yes. Well, there -- there was actually three
`
`depositions, but one was -- two were directly involving
`
`EA, Electronic Arts, that's EA.
`
` Q. So you had three depositions in that action,
`
`at least -- well, in that group of actions?
`
` A. Yes.
`
` Q. And two of them were with EA?
`
` A. Uh-huh, yes. One consolidated EA and
`
`Activision.
`
` Q. And was that deposition as to infringement as
`
`well?
`
` A. No, that was invalidity.
`
` Q. So do you have a -- I assume you submitted an
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 10
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`invalidity report in that case?
`
` A. Yes, I did.
`
` Q. Can you roughly estimate how much time you
`
`put in in those actions?
`
` A. For all actions -- and I don't have them
`
`broken out by defendants.
`
` Q. Okay.
`
` A. But for all the actions from the time I was
`
`initially engaged was 1,000 hours.
`
` Q. And that -- is that over the course of a
`
`couple of years or do you recall?
`
` A. That was primarily over the course of 2014,
`
`for the most part.
`
` Q. In one year?
`
` A. Yes.
`
` Q. Okay. So you submitted a substantial amount
`
`of time on that matter?
`
` MR. LOVELESS: Objection, form.
`
` A. Did I -- could you say that again?
`
` Q. (BY MR. LANG) That was a -- that's a
`
`substantial amount of time, correct?
`
` A. Well, I -- everything is -- is relative.
`
`There were 10 defendants. As far as cases go, probably
`
`per defendant, not so much. I mean, not anything
`
`unusual. But since they were all the same patents and
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 11
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`many of the same issues, I had a lot of time --
`
`substantial amount of time on this patent and various
`
`issues regarding it.
`
` Q. And what was your billing rate in that
`
`action?
`
` A. $350 per hour for all work.
`
` Q. So with those numbers, is it safe to say you
`
`billed about $350,000 in this case in 2014?
`
` A. For --
`
` Q. In those cases. Sorry.
`
` A. Yes, excluding expense -- some expenses and
`
`travel expenses and things, yes.
`
` Q. And were you -- have you been paid on all
`
`that?
`
` A. Yes.
`
` Q. So during the course of preparing your
`
`validity report in that action -- or your invalidity
`
`report, I assume it was; is that right?
`
` A. It was a rebuttal report for validity, yes.
`
` Q. Sure. And also in preparing your
`
`infringement reports, I assume that you are pretty
`
`familiar with the preceding litigations and patent
`
`office actions?
`
` MR. LOVELESS: Objection, form.
`
` A. Yeah, which -- what litigations are you
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 12
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`referring to and actions?
`
` Q. (BY MR. LANG) So are you aware that -- I'm
`
`going to call it the '216 patent. You understand what
`
`Page 13
`
`that is, I...
`
` A. Yes, I do.
`
` Q. You're aware that that was subject to
`
`litigation in Rhode Island? Are you aware of that?
`
` A. Yes, I am.
`
` Q. And I assume you've reviewed documents from
`
`that case at some point?
`
` A. Early, yes, I did in the other cases,
`
`especially, yes.
`
` Q. Did you limit your inquiries there to just
`
`like the Court decisions, or did you look at underlying
`
`briefs and such?
`
` A. In the Microsoft case, are you referring to?
`
` Q. Yeah, just that one right -- yeah, as far as
`
`preparing your inval- -- or your rebuttal invalidity
`
`report and your infringement report, did you look to
`
`things other than the final decisions from the
`
`Microsoft case?
`
` A. You know --
`
` MR. LOVELESS: Objection, form.
`
` THE WITNESS: Excuse me for -- I'll need
`
`to wait a little bit.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 13
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A. I think I need to take a look at those
`
`reports to see for sure what I had in there for
`
`documents I relied on. I don't remember specifically
`
`what I relied on or didn't rely on from those cases.
`
` Q. (BY MR. LANG) Do you know if those reports
`
`are consistent with everything you're saying in your
`
`Declaration in this case?
`
` A. Yes. I can't think of anything that would be
`
`inconsistent, yes.
`
` Q. Do you think you would have relied on
`
`something other than the final district court decision
`
`in Rhode Island in preparing your report?
`
` MR. LOVELESS: Objection, form.
`
` A. Which report?
`
` Q. (BY MR. LANG) Your infringement report, for
`
`example.
`
` A. I relied on many things.
`
` Q. Yeah. So it wasn't just a -- the final
`
`decision or just the Claim Construction Order was it?
`
` A. I relied on --
`
` MR. LOVELESS: Objection, form.
`
` THE WITNESS: Excuse me.
`
` A. I relied on the source code and, I mean,
`
`there was just many, many issues, many documents,
`
`deposition transcripts. There are many -- much
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 14
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`information that I used -- I considered in forming my
`
`opinions and writing my reports.
`
` Q. (BY MR. LANG) And as to the -- your
`
`invalidity rebuttal report, would there have been
`
`something other than the Claim Construction Order or
`
`the Court's final order that you would have considered
`
`in preparing that?
`
` MR. LOVELESS: Objection, form.
`
` A. In preparing that report?
`
` Q. (BY MR. LANG) Yeah.
`
` A. Yes, I considered many things.
`
` Q. Would you have considered, like, the
`
`prosecution history?
`
` A. Yes.
`
` Q. Would you have considered, I guess, the
`
`briefs submitted on claim construction?
`
` A. I may have, but I don't remember. I'd have
`
`to see my report to refresh my memory.
`
` Q. Is that something that you would typically
`
`look at?
`
` A. I generally do, especially if I'm involved in
`
`consulting on claim construction. And the -- the claim
`
`construction -- are you referring only to the Mic- --
`
`are we only talking about the Microsoft case?
`
` Q. Yeah, we're only talking about the Microsoft
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 15
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`case.
`
` A. I don't think I read the briefs in the
`
`Microsoft case. I don't remember doing that.
`
` Q. And so your -- from your work in the
`
`Activision series of cases, I assume you're also
`
`familiar with the prosecution history?
`
` A. Of the --
`
` Q. '216 patent.
`
` A. -- '216 patent, of its initial prosecution
`
`history, yes.
`
` Q. Are you familiar with the reexam?
`
` A. Yes.
`
` Q. The first one?
`
` A. Yes.
`
` Q. And the second one?
`
` A. Yes.
`
` Q. And did you consider those in rendering any
`
`of your opinions in -- as to infringement or
`
`invalidity?
`
` A. Yes, I'm sure I did. Yes.
`
` Q. Are you aware of any other litigation that
`
`Uniloc has had that you may have considered documents
`
`from?
`
` MR. LOVELESS: Objection, form.
`
` Q. (BY MR. LANG) I'm sorry. In preparing your
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 16
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`infringement and invalidity reports in Activision
`
`series cases, are there any other documents you would
`
`have -- or any other actions Uniloc brought that you
`
`would have considered documents from?
`
` A. Nothing outside the scope of the -- of the
`
`cases that were involved and, you know, lumped into the
`
`consolidated case.
`
` Q. Okay.
`
` A. That I can think of. I don't believe so.
`
` Q. Okay. I believe we clari- -- or set this out
`
`already, but you're here today to testify about a
`
`Declaration you submitted in this inter partes review
`
`proceeding, correct?
`
` A. Correct.
`
` Q. What was the scope of your engagement with
`
`Uniloc?
`
` MR. LOVELESS: Objection, form.
`
` Q. (BY MR. LANG) What were you asked to provide
`
`opinions on?
`
` A. I was asked to -- to review Dr. Madisetti's
`
`Declaration and provide opinions about -- my opinions
`
`about that Declaration and his opinions. I was asked
`
`to look into, overall, the petition and the issues that
`
`were in the -- in the IPR.
`
` Q. Were you asked to look at anything that is
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 17
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`not reflected in your Declaration?
`
` A. I don't believe so, no.
`
` Q. And preparing your Declaration, did you
`
`consider, I guess, the totality of your knowledge about
`
`the '216 patent and its history that you gained from
`
`serving as an invalidity to infringement expert in the
`
`Activision series of cases?
`
` MR. LOVELESS: Objection, form.
`
` A. Yeah. I don't really understand the question
`
`in the sense that -- how can I not? Right? I mean, I
`
`didn't try to say, okay, let me try to forget all this
`
`information now. So in that sense, certainly.
`
` Q. (BY MR. LANG) Do you have any opinions about
`
`the '216 patent that are not reflected in your
`
`Declaration?
`
` MR. LOVELESS: Objection, form.
`
` A. I have many opinions about the '216 patent
`
`that are not within the scope of my Declaration.
`
` Q. (BY MR. LANG) Why are those not included?
`
` A. Well, there was --
`
` MR. LOVELESS: Objection, form.
`
` THE WITNESS: Excuse me.
`
` A. I have infringement opinions that I -- was
`
`expressed in other cases, and I have validity issues
`
`that were not brought up in this particular case that
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 18
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`were -- that showed up in the other -- my other case.
`
`So that -- that's what I mean there.
`
` Q. (BY MR. LANG) Okay. And how did you go
`
`about preparing this Declaration?
`
` A. I read the -- the documents, I read -- went
`
`through Dr. Madisetti's Declaration, and I started
`
`typing.
`
` Q. When you say you went through the documents,
`
`what documents are you referring to?
`
` A. The -- at the time, I think -- well,
`
`certainly the patent and the -- I have the Declaration
`
`here. I can just go through and show you what --
`
` Q. I'll give it to you here in a second.
`
` A. Uh-huh.
`
` Q. Would that help you realize what you --
`
` A. Well, you want --
`
` Q. -- what you did --
`
` A. -- you're trying to ask me what I based
`
`everything on. I mean, I looked at -- excuse me. Did
`
`I misunderstand your question?
`
` Q. Yeah. No, I'm not asking what your opinions
`
`are based on. I'm just asking what you -- like the
`
`process of preparing it. Did you prepare the whole
`
`thing by yourself?
`
` A. Yes, I did.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 19
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q. Okay.
`
` A. Although I do get the -- Mr. Burdick provided
`
`me with the legal standard section, which I just --
`
` Q. Sure.
`
` A. -- pasted in. I mean, that's outside of my
`
`area. Other than that, I prepared everything.
`
` Q. And then you prepared everything else and
`
`then you just submitted it to Mr. Burdick or
`
`Mr. Loveless, one of the two of them; is that how it
`
`went?
`
` A. Yes.
`
` Q. Did you review the patent owner response
`
`before you submitted your Declaration, your final
`
`Declaration?
`
` A. The patent owner response was submitted, I
`
`believe, currently. I didn't see -- see that. I
`
`didn't see that before.
`
` Q. You never saw the patent owner response?
`
` A. Not the response, no. Well, I -- not before
`
`I submitted my Declaration.
`
` Q. Understood. How -- how much time would you
`
`say you spent preparing your Declaration between
`
`reviewing documents and writing and...
`
` A. 88 hours is what I've billed so far on this
`
`since I've been engaged.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 20
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
` Q. And that's at your rate of $350 an hour?
`
` A. Correct.
`
` Q. Do you have any interest in the '216 patent,
`
`Page 21
`
`financial interest?
`
` A. No.
`
` Q. Do you have any financial interest in the --
`
`in the outcome of any litigation?
`
` A. No, I don't.
`
` Q. Did you have any interest in the outcome of
`
`any litigation at any point relating to the '216
`
`patent?
`
` A. No.
`
` Q. Do you have any financial interest in the
`
`outcome of this proceeding?
`
` A. No, I don't.
`
` Q. Do you have any interest in the outcome of
`
`any of the -- are you aware that there are other patent
`
`office proceedings?
`
` A. I didn't hear your question.
`
` Q. Are you aware that there are other patent
`
`office proceedings relating to the '216 patent?
`
` A. Yes.
`
` Q. And do you have any interest in the outcome
`
`of those?
`
` A. No.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 21
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q. I'll give you the Declaration. Would you
`
`prefer to look at your version?
`
` A. It'd be easier because it's in a binder, so
`
`it's easier for me to deal with, but I can...
`
` Q. Fine. I'm assuming it doesn't have anything
`
`else in there.
`
` A. Well, you -- you're, first of all, free to
`
`look at it.
`
` Q. No.
`
` A. Just has my Declaration -- this binder has my
`
`Declaration, has the exhibits and I believe it has
`
`Dr. Madisetti's Declaration also in the back attached,
`
`which is not part of my Declaration.
`
` Q. So would those be documents you looked at in
`
`preparing for today?
`
` A. Yes.
`
` Q. Those wouldn't be the only documents you
`
`looked at, though?
`
` A. No.
`
` Q. So now we're going to go back to where I
`
`think you thought I was going before, which is what you
`
`based your conclusions -- or your opinion on. So if
`
`you could just turn to Paragraph 12 of your
`
`Declaration. Are you -- you're already there?
`
` A. Yes.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 22
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
` Q. So you reviewed the Madisetti Declaration; is
`
`Page 23
`
`that correct?
`
` A. Yes, I did.
`
` Q. And all of the references he cited in his
`
`Declaration; is that correct?
`
` A. I believe so. I believe so. I certainly
`
`considered them, yes.
`
` Q. And you considered these additional materials
`
`that are listed as -- as bullet points on Pages 9 and
`
`10?
`
` A. Yes, that's correct, to the extent they are
`
`additional. There may be some overlap.
`
` Q. Is there anything else you would have
`
`considered other than what's included here?
`
` A. In this list, specific list?
`
` Q. Yeah.
`
` A. Well, certainly, I've considered my
`
`experience as a person of ordinary skill in the art and
`
`as a -- as an engineer who's worked in these fields for
`
`a long time. I've -- I can't not consider all the
`
`things I already knew about the patent in various
`
`issues. And one thing I don't say specifically in here
`
`is that -- in this particular list is that I did review
`
`like prosection histories of the '216 patent, although
`
`I believe that's one of the ones that Madise- --
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 23
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Dr. Madisetti discusses also.
`
` Q. So would there be -- I guess my question was
`
`a little more -- should have been a little more on
`
`point. Are there any other documents relating to the
`
`'216 patent that you considered in preparing your
`
`Declaration that aren't listed here?
`
` A. I don't believe so. Do I have both -- yeah,
`
`especially when I consider the list of Dr. Madisetti's
`
`list. For example, the 2011 Federal Circuit opinion is
`
`not in my list.
`
` Q. Sure.
`
` A. But, you know, I did review that and that's
`
`also in Dr. Madisetti's list covered here. And I do
`
`discuss it later in my report, in my Declaration.
`
` Q. And would you have considered any documents
`
`submitted by Uniloc in district court -- any district
`
`court litigation that is not in this list?
`
` MR. LOVELESS: Objection, form.
`
` A. I don't specific -- although I think
`
`Dr. Madisetti has it in his list, I don't know that I
`
`have the Rhode Island Markman order in this list, but I
`
`did -- I did take a look at that because that's
`
`pertinent to the patent if you have some decision
`
`concerning claim construction. So I would have
`
`reviewed at least part of that.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 24
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q. (BY MR. LANG) Did you review any, like, I
`
`don't know, like, claim construction briefs submitted
`
`by Uniloc in that Rhode Island district court
`
`litigation?
`
` A. No, not for this. Not for this. And I'm not
`
`sure that I ever did, but...
`
` Q. Do you think those would be relevant at all
`
`to any of your opinions?
`
` MR. LOVELESS: Objection, form.
`
` A. I couldn't say that they are or they're not.
`
`I haven't looked at them. But they -- in terms of how
`
`they would -- I haven't based my opinions directly on
`
`them, on any specific information that might be in
`
`those briefs.
`
` Q. (BY MR. LANG) Have you ever looked at claim
`
`construction briefs submitted by Uniloc in your
`
`experience with the '216 patent?
`
` A. I'm not -- I'm not sure. I may have.
`
` Q. Do you --
`
` A. I don't think the briefs were -- in other --
`
`I've looked at them, I mean, for other cases like
`
`Microsoft. I don't -- I don't know that I did ever
`
`look at their briefs.
`
` Q. Do you know if you ever looked at briefs that
`
`were submitted to the Federal Circuit by Uniloc?
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`Petitioner Ex. 1041 Page 25
`
`

`
`VAL DIEULIIS PH.D. 9/3/2015
`
`Page 26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` MR. LOVELESS: Objection, form.
`
` A. Could you say that again? What is it again?
`
` Q. (BY MR. LANG) Have you ever looked at any
`
`briefs submitted to the Federal Circuit by Uniloc?
`
` MR. LOVELES

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket