CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`
`Page 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`v.
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`__________
`Case No. IPR2015-00229
`Patent 7,667,692
`Case No. IPR2015-00230
`Patent 7,463,245
`__________
`
`DEPOSITION OF DR. GREGORY F. WELCH
`VOLUME I, PAGES 1 - 230
`JULY 28 and 29, 2015
`
`(The following is the deposition of DR.
`GREGORY F. WELCH, taken pursuant to agreement of
`counsel, at the Hyatt Regency Orlando International
`Airport Hotel, Orlando, Florida, commencing at
`approximately 9:02 o'clock a.m., July 28, 2015)
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@sti
`
`

`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 2
`
`Page 4
`
`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
`
`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
`
`APPEARANCES:
`On Behalf of the Petitioner:
`Abran Kean
`ERISE IP
`5600 Greenwood Plaza Boulevard, Suite 200
`Greenwood Village, Colorado 80111
`
`On Behalf of the Patent Owner:
`
`Robert J. Gilbertson
`GREENE ESPEL PLLP
`Campbell Mithun Tower, Suite 2200
`222 South Ninth Street
`Minneapolis, Minnesota 55402-3362
`
`ALSO APPEARING:
`
`Callie Pendergrass, Senior Technical
`Advisor, Erise IP
`
`Page 3
`
`P R O C E E D I N G S
`(Witness sworn.)
`DR. GREGORY F. WELCH
`called as a witness, being first duly sworn,
`was examined and testified as follows:
`ADVERSE EXAMINATION
`BY MR. GILBERTSON:
`Q. What's your name?
`A. Gregory Francis Welch.
`Q. And where do you live?
`A. Longwood, Florida.
`Q. You've been retained as an expert witness by
`Sony Computer Entertainment America LLC?
`A. That sounds right, yeah.
`Q. And you represent Sony in connection with
`seven different interparties' review proceedings
`involving patents owned by applicants?
`A. That sounds right, yes.
`Q. Two of those, for the record, are IPR
`2015-00230, that's for the U.S. Patent No. 7,463,245;
`and the second one is IPR 2015-00229, that's for U.S.
`Patent No. 7,667,692.
`I take it, Dr. Welch, you're here to give
`your deposition in connection with those two IPR
`proceedings.
`
`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
`
`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. That's correct.
`Q. Have you heard patents referred to by their
`last three numbers, "the '245 patent," for example?
`A. Yes.
`Q. And will it work for you today if we refer
`to the '245 and the '692 patents?
`A. Yes.
`Q. All right. I don't necessarily intend to
`refer to the IPR number every time. I'll probably
`refer to the '245 petition and the '692 petition.
`Will we be communicating if I do that?
`A. Yes.
`MR. GILBERTSON: Okay. So just for the
`record, I'll note we will have one transcript for this
`deposition for these two IPR proceedings and that
`transcript can be submitted in connection, per our
`agreement, with any of the IPR proceedings.
`MR. KEAN: Yeah. Just to be clear, that
`works for me, and the only thing I'd ask is that we
`try to be clear about which declaration we're
`referring to just so the record's clear as we go
`through it.
`MR. GILBERTSON: Makes sense.
`BY MR. GILBERTSON:
`Q. Dr. Welch, when were you retained by SCEA,
`
`Page 5
`
`Sony Computer Entertainment America?
`A. I don't recall.
`Q. What's your best estimate?
`A. Probably three, four months prior to the
`submission of the IPR I would guess.
`Q.
`I believe you submitted your declarations in
`this matter -- these two matters on November 7th of
`2014. Does that sound right?
`A. I couldn't tell you without looking at them.
`I really don't remember.
`Q. Okay. We've got some exhibits here that are
`materials SCEA has submitted, including your
`declarations. Let me get those out for you.
`I'm handing you a copy of Exhibit 1010 from
`the '245 IPR proceeding. Is that a copy of your
`declaration in the '245 IPR?
`A. It appears so, yes.
`Q. And now I'm handing you a copy of Exhibit
`1008 in the '692 IPR proceeding. Is that a copy of
`your declaration from the '692 IPR?
`A. Yes.
`Q. And in both cases are your declarations
`dated November 7th, 2014?
`A. Yes.
`Q. So your best recollection is that you were
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`2 (Pages 2 to 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
`
`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
`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 6
`retained somewhere around July or August of 2014?
`A. It's not a recollection, that would just be
`a guess. I really don't remember. So I know we
`worked on these for a few months, as I recall, so --
`I don't remember. You know, could have
`been -- I could have been retained a year before and
`only worked on them right before. I really don't
`remember.
`Q. You don't remember whether you were retained
`in 2014 as opposed to 2013?
`A. Again, I don't remember. I mean it seems
`reasonable that I would have been retained in 2014. I
`find it hard to imagine it would have been earlier.
`Q. How much time have you spent on this project
`of working on the declarations in the '245 and the
`'692 IPRs?
`A. So again, I don't remember precisely. Yeah,
`I don't remember precisely.
`Q. Okay. If you don't remember precisely,
`what's your best estimate of how much time you've
`spent?
`A. Again, I think it may have been a few months
`of work off and on, some numbers of hours per week, so
`it could be anywhere from, I don't know, 50 hours to a
`hundred to more or -- probably not less. But I really
`
`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
`
`Page 8
`
`A. I don't recall. I think --
`Is it stated in my declaration? I think
`it's -- I think it's 500, but I don't recall. Could
`be 450, could be 500 per hour.
`Q. Have you done expert witness work before?
`A. Yes.
`Q. How much of that have you done?
`A. Since 2008, it's hard to say. I've
`testified in probably seven or eight cases maybe --
`might be more, might be less, I don't recall -- and
`then done research for some clients on cases where I
`did not testify or submit any reports or declarations
`or anything.
`Q. What type of research?
`A. Research related to a variety of matters
`that are related to my areas of expertise.
`Q. The seven or eight matters in which you've
`testified, what kinds of cases were those?
`A. Let's see. The first was Nintendo versus
`Hillcrest. It was an International Trade Commission
`matter.
`Some were civil cases and some have been
`
`IPRs.
`Q. Have they all involved patents?
`A. They have all involved patents, yes. I'm
`
`Page 7
`don't recall. I don't recall it being an inordinate
`amount of work for me. I have another full-time job,
`so I do this on the side.
`Q. What's your other full-time job?
`A. A professor at the University of Central
`Florida.
`Q. And what are you a professor of?
`A. I have three appointments: I'm a professor
`in the College of Nursing, in Computer Science, and
`the Institute for Simulation and Training.
`Q. Do you have records somewhere that would
`show you how much time you've spent on the '245 and
`'692 proceedings?
`A. Certainly. At least certainly for the IPRs
`as a whole, and probably they are specific to the
`patents, yes.
`Q. And how have you been compensated for your
`work in this case?
`A. Pardon me?
`Q. How have you been compensated for your work?
`A. I don't understand. How I've been paid, on
`an hourly basis, is that what you're asking?
`Q. Sure.
`A. Yeah.
`Q. And what's the hourly rate?
`
`Page 9
`working on a case right now that does not involve a
`patent, but I have not yet testified in that matter.
`Q. The seven or eight patent-related cases in
`which you have testified, can you give me a sense of
`the technology involved in those cases?
`A. Sure. And to be clear, seven or eight is a
`guess. I could tell you, I do have records, but
`sitting here right now I don't remember.
`The technology would involve various
`handheld devices and everything from the user-
`interface aspects to motion-tracking aspects, so
`everything from mobile phones to game controllers
`to --
`
`I guess in testifying, that's probably it,
`actually.
`Q. Besides the matters involving APLIX and
`SCEA, what other cases have you testified in relating
`to game controllers?
`A. Again, I'm only going from memory here. As
`I mentioned, the first case, that I remember because
`it was really the first substantial case I had ever
`worked on, that was Hillcrest versus Nintendo, and
`that was, again, an ITC case. For Nintendo I've also
`testified on a case that was UltimatePointer versus
`Nintendo, ThinkOptics versus Nintendo, Motion Games
`
`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
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`3 (Pages 6 to 9)
`
`

`
`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
`
`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
`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 10
`versus Nintendo, and I think there were some IPRs
`probably in the same matters related to the same -- to
`those civil cases. Apple -- or I'm sorry, I guess it
`was HTC versus Apple, and one case at least with --
`also with Sony, a previous case, that was G -- GTC
`versus Sony.
`Q.
`In all of those cases that you just
`mentioned, were you representing a company accused of
`patent infringement?
`A. I believe the answer is yes. I am working
`on and have worked on cases where I've been on the
`plaintiff or complainant's side, but I don't think I
`have testified in any of those cases, at least not
`yet.
`Q. The exhibits that are in front of you, your
`declarations in the '245 and '692 matters, would I be
`right in assuming that they contain a true and
`complete recitation of your testimony and opinions --
`A. Yes.
`Q.
`-- in those matters?
`A. Yes.
`Q. Have you reviewed them in preparation for
`today's deposition?
`A. Yes.
`Q. Did you find any errors or changes that you
`
`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
`
`Page 12
`
`conversations, that the content is all mine
`intellectually. Aside from who actually typed the
`words in different places, it's -- it all is from my
`head, likely based on questions, I don't recall, from
`the Sony attorneys, I guess petitioner's attorneys,
`but would have been questions and answers, and I would
`have given my point of view. And I don't recall --
`You know, I wrote some. They may have
`drafted some if I had asked them to. As I said, I'm a
`busy, busy guy.
`Q. Did you write them?
`MR. KEAN: Same objection.
`A. If -- if this were an academic paper, I
`would put my name as the lead author on these. These
`are intellectually --
`Again, the content is all mine.
`Q. But you didn't necessarily write them.
`MR. KEAN: Same objection.
`A. I didn't say that.
`Q. Did you write them?
`MR. KEAN: Same objection, asked and
`answered.
`A. I mean I would say in --
`Yes, I wrote them. I mean there are pieces
`that were drafted, as I said, by someone else because
`
`Page 11
`
`want to point out?
`A. Nothing that comes to mind at the moment,
`no.
`Q. How were those declarations prepared?
`MR. KEAN: Objection to the extent it calls
`for privileged information.
`A. So that's a broad question. Do you mean --
`What do you mean, logistically,
`mechanically, intellectually?
`Q. Who wrote them?
`MR. KEAN: Objection, calls for privileged
`information.
`MR. GILBERTSON: Let's pause there. Are you
`asserting an attorney-client privilege over your work
`with Dr. Welch?
`MR. KEAN: I have a work-product privilege
`under Rule 26, and it's also captured by 27 CFR 4251.
`MR. GILBERTSON: Well we'll go back to the
`question.
`Q. Who wrote the declarations in the '245 and
`the '692 matters?
`MR. KEAN: Same objection, and instruct the
`witness not to answer to the extent it calls for
`privileged information.
`A. I think I can answer, without compromising
`
`Page 13
`I asked them to for a variety of reasons, but
`intellectually everything in there is mine. The
`background, the opinions, everything is based on my --
`my thoughts.
`Q. Which pieces were drafted by someone else?
`MR. KEAN: Same objection, and instruct the
`witness not to answer to the extent it calls for
`privileged information.
`A. I don't recall. Even if I -- even if I were
`allowed to answer, I -- I don't recall. As I said, I
`think I said, they may have been drafted and likely
`were, but I don't recall.
`MR. GILBERTSON: I'll note for the record
`that I don't think it's a proper objection or
`instruction, but we don't have to try to agree on that
`today.
`Q. With whom did you work in the preparation of
`your declarations in the '245 and '692 matters?
`A. Mostly with -- in fact probably exclusively
`with Callie Pendergrass, who is in this room.
`Q. How do you spell her name?
`A. Hope I get it right or she's going to be
`upset. C-a-l-l-i-e, P-e-n-d-e-r-g-r-a-s-s.
`Q. Does she work with you at the University of
`Central Florida?
`
`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
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`4 (Pages 10 to 13)
`
`

`
`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
`
`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
`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 14
`A. No. She works for Erise IP, the firm
`retained by the petitioner.
`Q. The law firm.
`A. I guess.
`Q.
`In connection with your work on the '245 and
`'692 matters, did you interact with any other
`consultants retained by Sony?
`A. No, I don't think so. Not that I recall.
`Q. Did you interview anyone?
`A. Not that I recall, no.
`Q. What did you do in order to come up with the
`substance that is in the declarations in the '245 and
`'692 matters?
`A. So I don't recall precisely, but it would
`have been -- and I do recall, of course, reading the
`patents at issue, in particular the two we're talking
`about today, the '245, the '692; I would have reviewed
`and considered lots of prior art; I typically also
`look at some of the documents that are cited on the
`cover page or cover pages of the patent to kind of
`refresh my memory with the sorts of -- at least
`certainly of the things that the patent owner was
`aware of, but also it's a good reminder of the sorts
`of things that were known at that time or in the air
`kind of at that time; I often go back, so I probably
`
`Page 16
`A. Specifically in that paragraph I believe I'm
`referring to the phrase or the field stated
`immediately prior to that, augmented reality,
`including the work used -- involving handheld devices
`in augmented reality.
`Q. And what, in general, is the field of
`augmented reality?
`A. Augmented reality is involved when presented
`as a dual to what some people would call or many
`people would call virtual reality. So virtual reality
`is a field where -- or an area of research and
`practice where people attempt to use interactive
`devices worn on the head or held in the hands or
`somehow on the body or as a part of the body to
`present them with a sense of being in some other
`place, and augmented reality is similar except that
`instead of completely replacing the user's sense of
`where they are within a virtual space, in augmented
`reality you're either mixing in virtual things with
`objects and things I can see in the real world or
`sometimes bringing things from the real world into the
`virtual space, but it's somehow merging the virtual
`and the real. So an example would be holding up a
`mobile phone and pointing it down the street, then
`having the mobile phone tell you where the Starbucks
`
`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
`
`Page 15
`did here, too, looked at my own publications around
`the timeframe of the patents at issue to try and
`refresh my memory of what was happening in this area
`at that time in my life and in this area that I'm
`aware of; I probably looked at a couple of textbooks
`on user interfaces, again, just to refresh my memory
`about what was known at that time; and looked at
`probably various things that I considered would be --
`would have demonstrated the claims in the patents at
`issue.
`Q. What was that last point?
`A. Looked at pieces of prior art, I guess you
`would call them, articles or other things that I
`thought probably practiced the claims at issue.
`Q.
`If you could turn, Dr. Welch, in your '245
`declaration to the first section. You've got a
`section in there called "BACKGROUND AND
`QUALIFICATIONS;" is that right?
`A. Yup, page one.
`Q. And in paragraph 13 you refer to being
`engaged in the research community. Do you see that in
`the second and third lines?
`A. Yes.
`Q. Which research community are you referring
`to there?
`
`Page 17
`is, for example, by showing you a view of the street
`as you would see it with the naked eye, so sort of
`like a camera viewfinder, and then labels with arrows,
`for example, pointing to the Starbucks.
`Q. Would Hedberg be an example of augmented
`reality?
`A. I would have to look at Hedberg again and
`think about that, but Hedberg, just from memory -- and
`if you really want a solid answer from me I would have
`to go back and look at Hedberg and think about it --
`but from memory, the techniques in Hedberg absolutely
`would be used and have been used in augmented reality.
`Q. And is paragraph 13 where you describe your
`experience in the field of handheld devices?
`A. It is certainly a place. I don't think it
`is the only place. I don't recall.
`Q. You authored a paper in 1995 serveying power
`management techniques for handheld devices?
`A. That's correct.
`Q. Serveying existing techniques, not proposing
`some new technique; is that right?
`A. I don't recall. I would have to go back and
`look at the paper.
`Q. There's a reference toward the bottom of --
`it spills over from the bottom of one page to the top
`
`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
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`5 (Pages 14 to 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
`
`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
`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 18
`of another within paragraph 13, to developing systems
`for remote medical consultation using handheld mobile
`revises. Do you see that?
`A. I do.
`Q. How many such systems have you been involved
`in developing?
`A. That specific one, it depends how you define
`the system, but there were probably two -- one or
`two -- two variations of mobile devices that we worked
`on as a part of that project that I led. Again, this
`is just, you know, focused --
`Paragraph 13 you're focusing on is just in
`the field of augmented reality. That's the context of
`that -- of that paragraph.
`Q. The last part of that last sentence of
`paragraph 13 refers to associated methods for novel
`tracking and interaction. Do you see that?
`A. I do.
`Q. Does that refer to methods that are
`associated with the systems that we just discussed?
`A. Yeah. I mean that's really --
`Tracking and interaction are core to a large
`part of my research focus over my entire life -- my
`professional life, I should say, as an academic, but
`also that includes, in the context of the sentences
`
`Page 20
`certainly, that I did rely on -- or that I looked at,
`I should say, as a part of forming my opinions.
`Q. And why didn't those items make the list in
`paragraph 14?
`A. I couldn't tell you. I mean many of them I
`just looked at briefly and --
`I mean I can tell you right now. As I said,
`I looked at several things that were on the face of
`the patents, the '245 and the '692 patents, pulled
`those up to refresh my memory. You know, a lot of
`times I look at things just sort of in a fleeting way
`just to remind myself who did what. Lot of times I
`look at something and I say, oh, I remember that so
`and so did something like that, so I might pull up
`that paper and go look at it and -- and see exactly
`what was stated in that paper to see if it was
`interesting or useful. And if I'm not including it
`here, then I didn't rely on that in any way
`explicitly, but it's a part of forming my sense of --
`at least forming my sense of what a person of ordinary
`skill would have known or had access to at that time.
`Q. We're going to have a number of exhibits.
`It would be helpful if you could keep your copies of
`your declarations close at hand.
`A. Okay.
`
`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
`
`Page 19
`there in that paragraph, the handheld and mobile
`devices.
`Q. And do you claim to be an expert in handheld
`mobile devices?
`A. I claim to be certainly enough of an expert
`to opine on all the matters in this case, and I would
`say that in the field I would be considered someone
`who would be asked to review papers, and I have been,
`and serving on review committees for venues that
`receive submissions related to research using handheld
`devices or developing handheld devices, so I think
`that would qualify me as an expert.
`Q. Moving to paragraph 14 of your declaration
`in the '245 IPR, does that paragraph contain a list of
`all the things that you analyzed in connection with
`your work on that IPR?
`A. It is very likely that I looked at other
`things beyond this, as I indicated earlier in response
`to one of your other questions, and so, for example,
`in forming a judgment about what a person of ordinary
`skill in the art would have known or had at their
`disposal at the timeframe at issue, I would have
`looked at and did look at other things also, so I
`didn't rely on and am not relying on those things
`explicitly, so there are things beyond this list,
`
`Page 21
`
`Q. We'll refer to those --
`A. Okay.
`Q.
`-- throughout the whole deposition. But I
`have some others to show you. Maybe you can come up
`with a place to put those that are not too -- not too
`confusing.
`Let me hand you, first, a copy of Exhibit
`1001 in the '245 IPR proceedings. That's a copy of
`the '245 patent. And I'll also go ahead and hand you
`a copy of Exhibit 1001 in the '692 proceeding, and
`that's a copy of the '692 patent. Do you have those
`in front of you?
`A. I do.
`Q. And are you able to testify that you read
`each of those patents word for word?
`A. Yes.
`Q. Had you seen them before being engaged by
`Sony?
`A. I don't think so.
`Q. Are you familiar personally with any of the
`inventors named on those patents?
`A. Not that I know of, no.
`Q. The next item in paragraph 14 of your '245
`declaration is, after the patent itself, is the file
`history for that patent, which is Exhibit 1002. I
`
`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
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`6 (Pages 18 to 21)
`
`

`
`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
`
`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
`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 22
`don't have that on the table here in front of us, but
`my question is: To what extent did you review the
`file history for the '245 patent?
`A. I know I read it, and sitting here at this
`moment I don't recall how deeply I read different
`places, but I did review it. If I refer to it
`somewhere else in my declaration, then I would have
`reviewed it more carefully in that area, in that
`relevant section, but sitting here right now I don't
`remember beyond just saying that I did read it.
`Q. And do you refer to the file history in the
`'245 patent in your direct testimony, your declaration
`in the '245 matter?
`A. I don't recall.
`Q. Did you refer -- excuse me.
`Did you review the file history for the '692
`patent in connection with your work on the '692
`matter?
`A. I recall that I did. And I just now checked
`my '692 declaration and I do have it listed there
`also, so the file history for the '692 patent is
`Exhibit 1002 for the '692 patent also.
`Q. And do you refer to the file history for the
`'692 patent in your direct testimony, your declaration
`in the '692 matter?
`
`Page 24
`like the right ones, yes. I recall that these, from
`memory sitting right here, they are, but that doesn't
`mean that there aren't additional things that were in
`the petition. So this may, I would assume --
`These are in the petition. There might be
`more things, for example.
`Q. How did the prior-art references listed in
`paragraph 14 of your '245 declaration at Exhibits 1003
`through 1009 come to your attention?
`MR. KEAN: Objection to the extent it calls
`for privileged information.
`A. I don't recall exactly, but I can tell you,
`for example, sitting here right now, that I'm very
`familiar with Jun Rekimoto's work, not even so much
`necessarily his patents but his academic work. As --
`as someone in academia I don't closely follow or look
`at patents per se all the time, but I'm often aware of
`academic work that is related to things that are
`patented.
`I do recall that, though, I think from
`another case and from memory here, I think there were
`one or two other references here that may have been
`familiar to me, but I don't recall. Even if I were
`allowed to tell you, I don't recall exactly how these
`came about.
`
`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
`
`Page 23
`A. Sitting here right now, I don't recall.
`Q.
`Is there anything about the file history for
`either of the two patents, the '245 or the '692, that
`you consider important to the opinions you've
`expressed in these IPRs?
`A. If there was, I would have stated that in my
`declaration. So if there is something in my
`declaration that refers to that, then I think the
`answer would be yes. But again, sitting here right
`now, I don't recall.
`Q. Going back to your declaration in the '245
`matter, Exhibits 1003 through 1009 are seven pieces of
`prior art that Sony asserted against the '245 patent
`in the IPR petition; is that correct?
`MR. KEAN: Object to form on that one.
`A. They certainly are familiar to me. The ones
`that I can only testify to explicitly sitting here
`right now are the references that are cited in my
`declaration. I wasn't involved deeply in the petition
`process, so I can't testify as to what or what was
`not -- was or was not in the petition.
`Q. Well those seven references are all
`discussed in your declaration; aren't they?
`A. Again, I don't recall. I would have to go
`look at it, look through it. But they certainly seem
`
`Page 25
`Q. Did you do a prior-art search of any type in
`connection with the '245 or '692 matters?
`A. I'm sure I did. Again, I don't recall
`precisely, but I would have done that.
`Q. Did your search yield any of the seven
`prior-art references listed in paragraph 14 of your
`'245 declaration at Exhibits 1003 through 1009?
`A. Again, from memory -- I'm only going from
`memory here, which is faulty -- what I recall was
`finding lots of things that I thought were --
`demonstrated the -- or taught things that were in the
`claims at issue. As often happens with me, I
`understand the process is an attempt to find as close
`as possible a single reference that covers as many
`claims as possible, whereas usually what happens for
`me, and might have happened here, is I can find pieces
`of prior art that -- that I'm aware of that may cover
`different pieces but not in an ideal way. So it may
`have happened, I don't recall, that someone else would
`say, well, what do you think about this one as opposed
`to those, and it may include -- it may cover three of
`the pieces of prior art that I had found, and so I
`would say, sure, that seems just fine. You know,
`there's a lot out there and I'm certainly not aware
`of, as I said, patents as much as I am the academic
`
`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
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`7 (Pages 22 to 25)
`
`

`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`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
`
`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
`
`work.
`Q. As to the Liebenow reference, Exhibit 1003
`in the '245 IPR, is that a reference that you found or
`did someone bring that to your attention?
`A. I don't recall, but I -- I would assume it's
`likely that someone brought it to my attention.
`Q. Same question for Andrews, Exhibit 1004.
`A. Again, I don't recall, but I think it's
`likely that it was brought to my attention.
`Q. Same question for Hedberg, Exhibit 1005.
`A. Hedberg I'm less sure about, but I think
`probably it was brought to my attention. I'm aware
`of --
`
`For whatever reason, Hedberg stands out in
`my mind as something that is very related to a lot of
`other work I know in that area, and I think I had
`found some other things, but for some reason Hedberg
`looked better so I stuck with Hedberg.
`Q. Better in what sense?
`A. Just the specificity of language, for
`example, I don't remember exactly, but oftentimes in
`academic papers things are maybe not spelled out in as
`much detail because in academia that would not be
`often appreciated by reviewers, they don't like to see
`a lot of the low-level detail spelled out, and it's
`
`Page 27
`
`usually left up to the educated reader.
`Q. How about for Martin, Exhibit 1006, is that
`a reference that you found in your search, or did
`someone bring that to your attention?
`A. I don't recall.
`Q. Would your answer be similar to your answer
`on Liebenow and Andrews, that someone probably brought
`it to your attention?
`A. I think so.
`MR. KEAN: Object to form.
`MR. GILBERTSON: What's wrong with the form?
`MR. KEAN: Calls for speculation.
`A. I am speculating because I don't remember,
`I'll say that again, but I think it's likely that --
`it's certainly possible and I think it's likely that
`was brought to my attention.
`Q. Same question for Griffin, Exhibit 1007.
`A. Same in that I don't recall, but it's
`certainly possible that someone brought it to my
`attention, perhaps likely.
`Q. Same question for Pallakov, Exhibit 1008.
`A. Pallakov I'm pretty sure I had never seen
`before. That one stands out in my mind as something
`that was new to me.
`Q. That someone else brought to your attention.
`
`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
`
`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
`
`Page 28
`A. I think that's correct. Again, I can't
`remember for sure, but I -- while I'm speculating, I
`would speculate more -- more likely that that was
`brought to my attention than some of the others that I
`can remember.
`Q. Same question for Rekimoto, Exhibit 1009.
`A. Rekimoto, as I mentioned earlier, I'm less
`sure about. It's very possible that either I
`specifically brought that patent to the attention of
`others, or Rekimoto's work in that area, and again, it
`often happens that there are pairs of academic papers
`and then patents associated with those papers, and I
`believe that is also the case in this -- in this case
`for the patent, I can't say for sure, but oftentimes
`the patents -- certainly I could imagine that being
`the case here -- are more attractive than the academic
`papers because they spell things out typically in more
`detail than the academic papers do.
`Q.
`If you could turn to the same -- or the
`equivalent paragraph 14 in your '692 declaration,
`please. Do you have that in front of you?
`A. I do. I'm there.
`Q.
`I believe that the only prior-art reference
`that's added in the '692 to what was -- what we
`already went through just now for the '245 is the
`
`Page 29
`Armstrong reference, Exhibit 1004, in the '692 IPR.
`Do you think I have that right?
`A. Sitting here just glancing over this now and
`going on my memory, I think you're correct. I think
`Armstrong is -- Armstrong is certainly a difference.
`I don't know if it's the only thing. I believe it is.
`Q. Did you find Armstrong or did someone bring
`it to your attention?
`A. I really don't remember.
`Q. You don't remember finding it.
`A. I don't remember one way or the other.
`Q. Do you remember finding it yourself?
`A. I do not.
`Q. How did you go about performing the search
`that you did perform for prior art relevant to the
`'245 or '692 patents?
`A. I don't recall exactly, but I typically use
`Google, Google Scholar, IEEE Explorer, ACM digital
`library, SPIE digital libraries, I often use -- the
`university has a library service that searches
`multiple vendors simultaneously, and I will sometimes
`look at the Google patent database. So it's entirely
`possible that I had found some of these patents, but I
`just don't recall, through that -- through that venue.
`I don't typically go look at the USPTO database very
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`8 (Pages 26 to 29)
`
`

`
`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
`
`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
`
`CONFIDENTIAL - SUBJECT TO PROTECTIVE ORDER
`Page 30
`much, I tend to use the Google one. That's at least
`the places. And again, I also go just from memory,
`from knowing related work, and I'll seek that work out
`specifically, and then I often follow a trail of --
`sort of genealogy trail of papers, so I look at the
`papers that they cited and then I find some of those
`papers and I'll look at them, and if they seem
`relevant I'll go look at the things that were cited by
`that second pape