PENG LIM 12/1/2015
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`Page 1
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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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`
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`SONY COMPUTER, )
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`ENTERTAINMENT AMERICA, )
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`LLC, )
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` Petitioner, )
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` -vs- ) CASE NO.: IPR2015-00396
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`APLIX IP HOLDINGS, ) IPR2015-00476
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`CORPORATION, ) IPR2015-00533
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` Patent Owner. )
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` DEPOSITION OF PENG LIM
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` DECEMBER 1 & 2, 2015
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`
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`Reported by:
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`ANNE M. TORREANO, RPR, CCRR, CLR, CSR No. 10520
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 1
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`
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SONY COMPUTER, )
`
`ENTERTAINMENT AMERICA, )
`
`LLC, )
`
` Petitioner, )
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` -vs- ) CASE NO.: IPR2015-00396
`
`APLIX IP HOLDINGS, ) IPR2015-00476
`
`CORPORATION, ) IPR2015-00533
`
` Patent Owner. )
`
`
`
`
`
` DEPOSITION OF PENG LIM
`
` DECEMBER 1 & 2, 2015
`
`
`
`Reported by:
`
`ANNE M. TORREANO, RPR, CCRR, CLR, CSR No. 10520
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 1
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`PENG LIM 12/1/2015
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`Page 2
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` TUESDAY, DECEMBER 1, 2015 &
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` WEDNESDAY, DECEMBER 2, 2015,
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` Deposition of PENG LIM, held at the Marriott
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`Hotel, 1800 Bayshore Highway, Burlingame,
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`California, before Anne M. Torreano, a Certified
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`Shorthand Reporter, Registered Professional
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`Reporter, California Certified Realtime Reporter and
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`a Certified LiveNote Reporter.
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 2
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`PENG LIM 12/1/2015
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` INDEX
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`Page 3
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`PENG LIM PAGE
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` BY MR. KEAN (DECEMBER 1) 5
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` BY MR. KEAN (DECEMBER 2) 261
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` --oOo--
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`
`
` INDEX OF PREVIOUSLY MARKED EXHIBITS REFERRED TO
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`APLIX EXHIBIT 2009 (IPR2015-00476)
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`APLIX EXHIBIT 2009 (IPR2015-00396)
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`APLIX EXHIBIT 2009 (IPR2015-00533)
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`APLIX EXHIBIT 2046 (IPR2015-00396)
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`APLIX EXHIBIT 2045 (IPR2015-00396)
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`SCEA EXHIBIT 1011
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`SCEA EXHIBIT 1001
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`SCEA EXHIBIT 1006
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 3
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`PENG LIM 12/1/2015
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`Page 4
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`A P P E A R A N C E S:
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`FOR THE Petitioner:
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` ERISE IP
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` BY: ABRAN KEAN
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` 5600 Greenwood Plaza Boulevard, Suite 200
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` Greenwood Village, Colorado 80111
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` (720) 689-5440
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`FOR THE PATENT OWNER:
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` GREENE ESPEL, PLLP
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` BY: ROBERT J. GILBERTSON
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` 222 South Ninth Street, Suite 2200
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` Minneapolis, Minnesota 55402
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` (612) 378-8333
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`ALSO PRESENT:
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` CALLIE PENDERGRASS, ERISE IP
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` SENIOR TECHNICAL ADVISOR
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 4
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`PENG LIM 12/1/2015
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` TUESDAY, DECEMBER 1, 2015; 9:15 A.M.
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` PENG LIM,
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` having been duly sworn to tell the truth,
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`testified as follows:
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` EXAMINATION
`
`BY MR. KEAN:
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` Q. Good morning. Will you state your name for
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`the record, please?
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` A. Yes, my name is Peng Lim.
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` Q. And, Mr. Lim, is there any reason that
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`would prevent you from testifying accurately and
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`truthfully today?
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` A. No. I will testify accurately and
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`truthfully today.
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` Q. And today's deposition is going to cover
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`opinions that you offered in three declarations
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`prepared for the 00396 proceeding, the 00476
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`proceeding, and the 0533 proceeding. And each of
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`those proceedings reference the '313 patent.
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` Would it be all right with you if I refer
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`to these today as the 00396 proceeding, the 00476
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`proceeding and the 0533 proceeding?
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` A. Yes.
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` Q. I'm going to hand you your declarations in
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`each of these.
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 5
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`PENG LIM 12/1/2015
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`Page 6
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` Here is Exhibit 2009, and this is your
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`declaration in the 00396 proceeding.
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` Mr. Lim, will you please turn to the last
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`page of that document and confirm that that's your
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`signature?
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` A. Yes, that's mine.
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` Q. And will you please turn in the document to
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`pages 9 through 11 and confirm that you've reviewed
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`the exhibits that are listed there?
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` A. Can I have a quick question? Can I use my
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`own copy, which is the same, for the benefit of
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`easier to flip through versus multiple copy? But
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`it's up to you whatever that -- you know.
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` Q. Yes, that's fine with me. Just for the
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`record, if you're referring to a document, I may ask
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`you what you're looking at, but that's fine with me.
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`You can look at that version.
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` A. So we're at 00396; right?
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` Q. Yes.
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` A. And page?
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` Q. 9 through 11.
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` A. Yes, I did read through all the exhibits.
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` Q. Are there any other exhibits you reviewed
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`in preparing your opinion for this proceeding? And
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`"this" being the 00396 proceeding.
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 6
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`PENG LIM 12/1/2015
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`Page 7
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` A. Any other exhibits?
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` Q. Yes.
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` A. No.
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` Q. Any other documents that you reviewed?
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` A. When I did the research, you know, I might
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`scan through some other documents. Those documents
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`that I thought wasn't the most relative -- relevant
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`to this case, I did not put it on.
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` Q. So is it fair to say that the list of
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`documents here are the documents that you thought
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`were most relevant to your opinion?
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` A. Based on what I've read, yes.
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` Q. And any documents that you reviewed that
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`you did not list here you thought were less relevant
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`or less important to your opinion; is that accurate?
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` A. That's correct. Either that or the
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`information are presented in this exhibit already.
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`So it will be either a repeat of the same point or
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`the exhibit here give a better explanation.
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` Q. Have any of your opinions in the 00396
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`proceeding changed since you prepared your
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`declaration?
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` A. Opinions? No.
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` Q. Do you have any additions or corrections to
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`make to the declaration itself?
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 7
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`PENG LIM 12/1/2015
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`Page 8
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` A. Yes, I do.
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` Q. Will you please walk me through those?
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` A. Sure.
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` Should I go through all three or just stay
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`with 00396, then we move on later?
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` Q. Let's do 00396, and then we'll do the same
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`thing for the other two.
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` A. Perfect. All right.
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` So on 00396, let's go to page 65.
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` Q. Okay.
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` A. All right. Okay. So on paragraph 156 I
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`listed claim 3, and there was a code of the claim 3
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`that came from patent '313. And in there it say
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`that, "the handheld electronic device of figure 1
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`wherein the processor receives signal generated by
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`the input elements of the first or second input
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`assemblies when manipulated by the human user."
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` You see that?
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` Q. Yes.
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` A. Okay. In paragraph 157, when I tried to
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`summarize or rephrase what it was saying there in
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`the second-to-last sentence, I say, "Claim 3 teaches
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`that the signals generated by the first and second
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`input assemblies."
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` And sorry there was a typo. It should be
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 8
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`PENG LIM 12/1/2015
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`Page 9
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`"or," and it was clearly shown at claim 3 say "or."
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`It was just my typo.
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` Q. Okay. So your change here is to change
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`paragraph 157, and you want to change the "and" in
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`the last sentence of that paragraph between "first
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`and second" to "or"; is that right?
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` A. That's correct, so that it match the claim
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`3 language.
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` Q. Okay.
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` MR. GILBERTSON: Just to clarify, it would
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`be the first instance of the word "and." It comes
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`up twice.
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` MR. KEAN: Very good.
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`BY MR. KEAN:
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` Q. Okay. Thank you.
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` Are there any other changes or additions
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`you have to your declaration in the 00396
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`proceeding?
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` A. I think that's it. That's all I can
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`remember right now.
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` Q. Okay. I'm going to hand you your
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`declaration in the 00476 proceeding, and we'll run
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`through the same set of questions.
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` Will you please confirm for me that that's
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`your signature on the last page of the document?
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 9
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`PENG LIM 12/1/2015
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`Page 10
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` A. Yes, that's mine.
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` Q. And will you please turn with me to pages 9
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`through 11 and confirm that you reviewed the
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`exhibits listed there in preparing your opinion?
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` A. Can I get a copy of Exhibit 1008?
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` Q. What document is that? Is that the Hedberg
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`reference?
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` A. Correct.
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` Can you clarify for me if you don't mind?
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` Q. Sure. I don't think we have a copy of
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`Hedberg. We hadn't planned to discuss that, but
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`this document you just handed me appears to be --
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`well, this one appears to be Exhibit 1012.
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` MR. GILBERTSON: Why don't we go off the
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`record for a minute and I can clarify.
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` MR. KEAN: Sure.
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` (DISCUSSION OFF THE RECORD.)
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` MR. GILBERTSON: I think we're ready to go
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`back on the record.
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`BY MR. KEAN:
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` Q. Okay. And I think the question that was
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`pending was: Did you review the exhibits listed on
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`pages 9 through 11 in the 00476 declaration in
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`preparing your opinion for that proceeding?
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` A. I have reviewed all the exhibits except
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 10
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`PENG LIM 12/1/2015
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`Page 11
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`Exhibit 1008, that I do not believe I have provided
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`any opinion on Exhibit 1008 in my declaration.
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` Q. And Exhibit 1008 in the 00476 proceeding is
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`the Hedberg reference; is that right?
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` A. Based on the document, yes.
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` Q. Okay. And so you're saying that you did
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`not review the Hedberg document in preparing your
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`opinion for the 00476 proceeding; is that accurate?
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` A. I might have scanned through it. I did not
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`provide opinion on the particular reference.
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` Q. Okay. Do you recall if you provided an
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`opinion on that particular reference for the 00376
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`proceeding or the 00533 proceeding?
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` A. 00396 you mean.
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` Q. 00396. Thank you.
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` A. I do not recall that, providing any
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`opinions on this.
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` Q. Apart from the Hedberg reference,
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`Exhibit 1008 in the 00476 proceeding, did you review
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`the rest of the exhibits listed there?
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` A. Yes, I did.
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` Q. Are there any other documents that you
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`reviewed in preparing your opinion in the 00476
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`proceeding?
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` A. Yes, I gone through -- as I say, a little
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 11
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`PENG LIM 12/1/2015
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`Page 12
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`bit earlier, I did go through some research, and I
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`have seen some other documents. And I chose those
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`documents that are most relevant to this case, and I
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`put it on the exhibits here.
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` Q. So your background review of other
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`documents for the 00476 proceeding would have been
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`similar to your discussion earlier as to the 00396
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`proceeding; is that right?
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` A. The research process, yes.
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` Q. I'm going to hand you your declaration in
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`the third proceeding we'll be discussing today.
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`It's the 000533 proceeding. And it's Exhibit --
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`your declaration is Exhibit 2009 in that proceeding
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`as well.
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` I'm sorry. Let me take a step back.
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` Did you have any changes or additions to
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`your declaration in the 00476 proceeding?
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` A. Yes, I do. Thanks for asking.
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` Can we turn to page 36 on 00476, please?
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` Q. Okay. Go ahead.
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` A. On paragraph 82, line No. 3, when he say
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`"Pallakoff and Ishihara," I would like to take out
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`"and Ishihara." Again, that was a typo. It's not,
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`you know, relevant to this particular paragraph. It
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`says "Ishihara."
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 12
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`PENG LIM 12/1/2015
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`Page 13
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` Do you see that, "Pallakoff and Ishihara"?
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` Then the following sentence -- not
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`following sentence, following line you say
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`"Pallakoff," open bracket, "or Ishihara," closed
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`bracket, and then that "or Ishihara" and the whole
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`bracket, I would like to remove that as well.
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` Q. Okay. I may have a couple follow-ups for
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`you on that one.
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` You state here in paragraph 82 that you do
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`not believe it would be obvious to one skilled in
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`the art in 2003 to modify the combination of
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`Pallakoff and Ishihara in view of Liebenow.
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` Do you see that?
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` A. Yes, I do.
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` Q. If we changed the "and" to "or" as you just
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`described --
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` A. No. I mean cross that out, remove it.
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` Q. Okay. Then what combination are you
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`referring to there?
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` A. Pallakoff in view of Liebenow.
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` Q. I'm sorry. So you want to delete
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`"Ishihara" altogether from that paragraph? Is that
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`what you're saying?
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` A. That is correct. There are two instances
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`that Ishihara show up.
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 13
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` Q. Okay.
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` A. And one is "and Ishihara" on the top line.
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`On the bottom line say "or Ishihara." Both of them
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`I would like to remove.
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` Q. Why would you like to remove those?
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` A. The reason is -- if you don't mind, go to
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`page 34. On the top of the page 34, it say E,
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`"Pallakoff and Liebenow should not be combined for
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`purposes of adding an input controller to
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`Pallakoff."
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` Q. Okay.
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` A. So I was referring to Pallakoff and
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`Liebenow, and when I typed paragraph 2, that was my
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`mistake that I put Ishihara on it.
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` Q. I see. Okay.
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` A. Oversight.
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` Q. Including Ishihara in paragraph 82 was just
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`a typographical error?
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` A. It's just a typo. Yeah, it's just a typo.
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` Q. Okay. Any other changes to the declaration
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`Exhibit 2009 in the 00476 proceeding?
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` A. Yes, page 27. Page 27, please. Actually,
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`on page 27, it's true for 00396 as well. I forgot
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`to mention that. But let's start with this. Then
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`if you don't mind, I would like to correct the same
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 14
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`difference exactly the same on 397 as well.
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` Q. Sure. Go ahead.
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` A. All right. Paragraph 56, please. Line 6
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`start with, "In mechanical engineering, biomedical
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`engineering, or industrial engineering."
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` You see that?
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` Q. Yes.
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` A. I like to change the "biomedical" to
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`"biomechanical engineering." Again, that was a
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`typo.
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` Q. What's the difference between biomedical
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`engineering and biomechanical engineering?
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` A. It's a different discipline, I believe, in
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`engineering, and in this particular case, since we
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`talk a lot about the mechanical aspect of the device
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`as well as, you know, the hand interface and all
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`these thing, and -- actually, when I typed that, I
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`meant to say "biomedical." And again, there was a
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`typo on that.
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` And that actually stayed through throughout
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`the other proceeding as well, you know, before
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`'''245, I believe, the one before. And we have this
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`one. I believe I since corrected on '097, but I
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`will double-check it.
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` Q. Okay. Any other changes that you'd like to
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 15
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`make to Exhibit 2009 in the 00476 proceeding?
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` A. No, except I would like to make the same
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`change on 00396 as well on page 27. I believe it's
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`the same page, but let me double-check.
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` Yes, page 27.
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` Q. And you're referring to the change from
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`"biomedical engineering" to "biomechanical
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`engineering"; is that right?
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` A. That's correct. And I explained before
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`this paragraph or this line basically say that, you
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`know, for the person in -- for a person with the
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`ordinary skill of the art can have more degree -- or
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`not more degree. In addition to degrees that listed
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`here, electrical, computer or computer science, it
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`could come from other engineering background.
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` And I listed the three, and I explained to
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`you before, actually, on 254 it actually could be
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`more.
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` Q. Sure.
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` So when we discussed that a month or so ago
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`in the first -- in connection with the first two
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`proceedings, I believe that your testimony was that
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`you changed this because, in your opinion, various
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`degrees would be okay for a person of ordinary skill
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`in the art so long as they had a certain level of
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 16
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`capability within computers and things like that
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`that are included within Dr. Welch's definition; is
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`that right?
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` A. That is correct, and it's still true here.
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`The reason I changed was because that wasn't what I
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`thought of when type it. I changed my own typo. I
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`did not mean to change the meaning of the whole
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`paragraph. Meaning that, as I explained to you
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`before, it could include other disciplines that may
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`or may not list on this particular page.
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` Q. Okay. All right. Any other changes that
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`you have to Exhibit 2009 in the 00476 proceeding?
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` A. That's it.
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` Q. Okay. And I think I handed you
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`Exhibit 2009 in the 000533 proceeding as well, and
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`I'd like to ask you the same set of questions.
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` Please confirm, if you would, that that is
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`your signature on the last page of the document.
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` A. Yes, that's mine.
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` Q. And then please turn with me to pages 9
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`through 11 in that document and take a look at the
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`exhibits listed there and confirm that you reviewed
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`these exhibits in preparing your opinion.
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` A. Same issue as 00476. Right now it's called
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`Exhibit 1007, Hedberg. And as I flipped through
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 17
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`earlier, I do not believe I provide any opinion on
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`this particular exhibit.
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` Q. Okay. The remaining exhibits listed there,
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`you reviewed each of these in preparing for your
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`opinion on the 000533 proceeding; is that right?
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` A. That is correct. I may put more emphasis
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`on certain paragraph than the other, but I did go
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`through all this document.
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` Q. And is it true, like with the 00396 and the
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`00476 proceedings, that you may have reviewed other
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`documents, but the list here illustrates the
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`documents that you thought were most relevant to
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`your opinions?
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` A. That is correct, at the time I wrote this
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`report.
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` Q. Do you have any changes or additions to the
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`declaration in the 000533 proceeding?
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` A. Yes, I do. Page 27, again, the same page
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`as what we did earlier. I would like to change
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`"biomedical" to "biomechanical," just as we did in
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`00476 and 00396.
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` Q. Okay. Any other changes?
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` A. Yes, please.
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` Page 58. You there?
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` Q. Go ahead.
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 18
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` A. On paragraph 137 -- well, maybe before
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`that. Can I move up a little bit? Just right above
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`136 I say that, "Armstrong 802 game function mapped
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`to upper and backside surfaces rather than front and
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`back surfaces."
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` Do you see that?
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` On the last sentence of paragraph 137 --
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`I'll write the whole sentence. The sentence say,
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`"it is clear from the figure below that Armstrong
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`802 game controller only has buttons on the
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`top/upper surface." Full stop. I would like to add
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`"and backside surfaces." That would match
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`consistency-wise to the top -- the sentence I just
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`read earlier.
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` So I would like to add "and backside
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`surfaces" to the last sentence of paragraph 137.
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` Q. So your opinion here is that Armstrong 802
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`teaches game functions that are mapped to the upper
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`and the backside surfaces; is that right?
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` A. Yeah, you can say so, but that's not what
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`the sentence exactly say. But yeah, you can say so.
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`The sentence say -- the sentence I would like to
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`change, it's just adding that four words. It wasn't
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`try to change the meaning of that sentence.
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` Q. Okay. Would you just recite the sentence
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 19
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`as you'd like it to be?
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` A. Yeah, we can.
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` "It is clear from the figure below that
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`Armstrong 802 game controller only has buttons on
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`the top/upper surface."
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` And I would like to add "and backside
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`surfaces." And that's the meaning of the sentence.
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`The reason that -- you know, because you rephrase it
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`with different word, that's why I would like to come
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`back to this sentence basically.
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` Q. Sure. Okay.
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` And what's the reason for that change?
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` A. Simply because that, as I said before, if
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`you go up to that point 1, it say "rather than front
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`and back surfaces." And that's what I meant to say.
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`And when I typed the last sentence, again, that was
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`left out at the time that I wrote the report.
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` Q. Okay. Do you have any other changes or
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`additions to your declaration in the 000533
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`proceeding?
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` A. Yes, I do. Page 47, please.
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` And this is the -- I'll wait.
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` Q. Go ahead.
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` A. This is the format items I believe I
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`pointed out in '''245 as well. It's just a
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 20
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`formatting.
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` Do you see on page 47 there's -- just right
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`above paragraph 107 it say "2," then followed by
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`"Opinion of Nonobvious Based on Market Needs." I
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`would like to remove the 2. That was a format
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`issue, format problems basically.
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` And then --
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` Q. Let me ask you about that.
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` Are you sure that's a formatting problem?
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`It seems like there's a 1 on paragraph 45.
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` A. That is correct. And more than that
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`change, but that change, basically this is more or
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`less opinion of the point 1 rather than a brand-new
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`bullet point 2.
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` Q. Okay.
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` A. So because we removed the 2 there, please
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`flip to page 48. When it say, "A," you see on top
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`of the page it say, "A, Incorporating game
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`application into the Liebenow device would not
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`increase the desirability of the system"? Do you
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`see that?
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` That "A" should be a 2. So that should be
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`a brand-new bullet point 2 right there, and A should
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`be removed.
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` Q. Okay.
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 21
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` A. And then, of course, going down, when it
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`say B, it should be A in that sentence. To make
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`sure the format is consistent and correct, I would
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`like to change that. You know, it doesn't change
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`the meanings of the document itself, but it does
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`change the format. And, of course, there's a C on
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`49 that should be a B right now.
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` Q. Okay.
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` A. Other than that, that's it. Let me check.
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` Page 27. I think I say that earlier;
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`right? I believe I say that we would like to change
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`"biomedical" to "biomechanical" earlier on 000533 as
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`well. If I did not, I would like to bring that up
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`now.
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` Q. Okay. Any other changes or additions to
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`your declaration in the 000533 proceeding?
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` A. Not that I can -- not that I see right now.
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` Q. Before we get started in discussing your
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`specific opinions today, I'd like to discuss a
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`couple general topics with you.
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` A. Yes.
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` Q. Do you know Dr. Karon Maclean?
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` A. I do not know her. I heard of her through
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`this proceeding. I never met her, never talked to
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`her.
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`Fax: 314.644.1334
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`SCEA Ex. 1038 Page 22
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` Q. Okay. One quick just ground rule for
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`today. Like we talked about last time, I'll do my
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`best not to interrupt you, and if you'd extend the
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`same courtesy to me, I think that will make the
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`court reporter's job much easier.
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` So I'll do my best to wait until I think
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`you're finished before I ask a follow-up question,
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`and if you try not to interrupt me, it will make for
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`a cleaner record.
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` Okay?
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` A. Okay. I will. Thanks for reminding me.
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` Q. You're welcome.
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` So have you ever discussed any of your
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`opinions with Dr. Maclean?
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` A. I haven't talked to her, so by definition,
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`I did not.
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` Q. Okay. Are there any claims in the '313
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`patent that you think are not patentable?
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` A. When I went through 313, I do not believe
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`that that occurred in my mind. If that is the thing
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`that you would like me to put opinion on, I think I
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`need, you know, time to go through the patents again
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`and with a -- you know, with that question in mind.
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` But I do not believe that when I read all
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`these documents through '313, I do not believe that
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
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`was true. I believe that, you know, the patent
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`itself was valid.
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` Q. I'm going to hand you what's been marked
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`Exhibit 1001. It's the '313 patent. It's
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`Exhibit 1001 in all three proceedings. And that way
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`you'll have it. We'll probably refer to that from
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`time to time today, but it looks like you have a
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`copy as well.
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` A. Yeah.
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` Q. Are there any claims in the '313 patent
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`that you think are obvious?
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` A. Again, same answer. When I read through
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`that patent and when I wrote the report, no, I do
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`not believe that any of those listed there was
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`obvious. But I did not study every single claim in
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`great detail. As you know, in this particular
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`proceeding, that there's another expert that's
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`involved in this particular proceeding, and some of
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`the claims were assigned to her. Dr. Maclean,
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`that's what I mean. So it was assigned to her, and
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`in that sense, I was not asked to provide any
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`opinions on those claims.
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` So with that in mind, I did not go into
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`great studies of whether those claims are obvious or
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`not. But the claims that I studied and the one I
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
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`Fax: 314.644.1334
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`provide opinions on, I do not believe those are
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`obvious.
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` Q. And what claims did you study?
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` A. The claims that I provide in my opinion, I
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`assure you that I studied that.
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` Q. And in your study of those claims, you did
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`not think that any of those claims are unpatentable;
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`is that right?
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` A. Those that I studied as relevant to mine,
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`yes.
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` Q. Did you review the Institution decision
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`from the Board in the 00396, the 00476 and the
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`000533 proceedings?
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` A. I scanned through them, yes. I did not
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`kind of study word by word in that sense, but I did
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`scan through them, yes.
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` Q. Are there any instituted grounds in the
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`00396 proceeding that you agree with the Board's
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`analysis on?
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` A. That is something that I don't recall. As
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`I said a little bit earlier, that I -- I read it.
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`If you want me to provide opinion of what the Board
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`say, again, I do need time to study them again.
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` I just cannot give you opinion kind of on
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`the spot without reviewing. I would like to give
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
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`Fax: 314.644.1334
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`you the most thoughtful opinion I could, and I do
`
`not believe I can give you opinions just like that.
`
` Q. Do you recall, during your review of the
`
`00396 proceeding and the Institution decision in
`
`that proceeding, that you agreed with any of the
`
`grounds instituted by the Board?
`
` A. Same answer, I guess. I couldn't tell you
`
`with that specificity, I think. I will be happy to
`
`scan through it, I mean to read it again if you have
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`a copy that you would like me to do that. I just
`
`need time to do it so I can give you a better
`
`answer.
`
` Q. Do you recall in the 00476 proceeding
`
`whether or not you agreed with any of the grounds
`
`instituted by the Board?
`
` A. Again, I think that's the same answer as
`
`before. If you'd like me to provide opinion, I can.
`
`I need to read that, too.
`
` Q. Is it the same answer for the 000533
`
`proceeding?
`
` A. I believe so, yes.
`
` Q. Do you recall, in performing your analysis,
`
`any claim that you reviewed that you decided
`
`probably was unpatentable?
`
` A. I cannot recall right now.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`SCEA Ex. 1038 Page 26
`
`
`
`PENG LIM 12/1/2015
`
`Page 27
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` Q. Do you recall any combination that you
`
`reviewed in performing your analysis that you
`
`thought rendered claims in the '313 patent obvious?
`
` A. The one that I provide opinions on, again,
`
`like I say, I cannot speak for every single
`
`combination that was listed in this proceeding.
`
`Some of them I studied, some of them I did not. The
`
`one that I studied and I put in my declaration here
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`that specifically related to the area that I provide
`
`an opinion, I
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