Gregory F. Welch, Ph.D.
`12/17/2015
`Page 1
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 3 SONY COMPUTER ENTERTAINMENT AMERICA LLC
` Petitioner
` 4
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` v.
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`Page: 1
`Page 3
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` 1 I N D E X
` 2 TESTIMONY OF GREGORY WELCH
` 3 CROSS-EXAMINATION BY MR. GILBERTSON ......... 4
` 4 REDIRECT EXAMINATION BY MR. KEAN ............ 37
` 5 CERTIFICATE OF OATH ............................... 41
` 6 REPORTER'S DEPOSITION CERTIFICATE ................. 42
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` E X H I B I T S
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`PETITIONER'S EXHIBITS
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`Exhibit 1063 - Article ............................ 37
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` S T I P U L A T I O N S
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`15
` It is hereby stipulated and agreed by and
`16 between counsel present for the respective parties, and
`the deponent, that the reading and signing of the
`17 deposition are hereby RESERVED.
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` 1 P R O C E E D I N G S
` 2 THE COURT REPORTER: Do you solemnly swear or
` 3 affirm that the testimony you are about to give in
` 4 this cause will be the truth, the whole truth, and
` 5 nothing but the truth?
` 6 THE WITNESS: I do.
` 7 GREGORY WELCH,
` 8 a witness herein, having been first duly sworn, was
` 9 examined, and testified as follows:
`10 CROSS-EXAMINATION
`11 BY MR. GILBERTSON:
`12 Q. Good morning, Dr. Welch.
`13 A. Good morning.
`14 Q. We are here for deposition on supplemental
`15 declarations that you have submitted in IPR2015-00229
`16 relating to the '692 patent and IPR2015-00230 relating
`17 to the '245 patent. That's your understanding, right?
`18 A. That's correct.
`19 Q. I have some questions for you about those
`20 supplemental declarations, and I want to show them to
`21 you. Let me first ask, is there anything going on for
`22 you today, such that it would be hard for you to give
`23 accurate testimony?
`24 A. No.
`25 MR. GILBERTSON: Okay. Let's go off the record
`
` 5
` APLIX IP HOLDINGS CORPORATION
` 6 Patent Owner
` 7
` Case No. IPR2015-00229
` 8 Patent No. 7,667,692
` 9 Case No. IPR2015-00230
` Patent No. 7,463,245
`10
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` * * * * * * * * * * * * * * * * * *
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`DEPOSITION OF: GREGORY WELCH
`
`DATE: December 17, 2015
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`REPORTED BY: Mae Fisher, RMR, CRR
`
`13
`TIME: COMMENCED: 10:08 a.m.
`14 CONCLUDED: 11:16 a.m.
`15 TAKEN BY: Patent Owner
`16 PLACE: Hyatt Regency Orlando International
` Airport
`17 9300 Jeff Fuqua Blvd
` Orlando, Florida 32827
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`Page 2
` 1 A P P E A R A N C E S:
` 2 ABRAN J. KEAN, ESQUIRE
`Of: Erise IP, P.A.
` 3 5600 Greenwood Plaza Boulevard
` Suite 200
` 4 Greenwood Village, CO 80111
` (720) 689-5440
` 5 Abran.kean@eriseIP.com
` 6 Counsel for the PETITIONER
` 7 ROBERT J. GILBERTSON, ESQUIRE
`Of: Greene Espel, PLLP
` 8 222 South Ninth Street
` Suite 2200
` 9 Minneapolis, MN 55402
` (612) 373-0830
`10 Bgilbertson@greenespel.com
`11 Counsel for the PATENT OWNER
`12 ALSO PRESENT:
`13 CALLIE PENDERGRASS
`Senior Technical Advisor
`14 Erise, IP, P.A.
`6201 College Boulevard
`15 Suite 300
`Overland Park, KS 66211
`16 (913) 777-5602
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`Gregory F. Welch, Ph.D.
`12/17/2015
`Page 5
`
` 1 for a moment.
` 2 (A discussion off the record was held.)
` 3 BY MR. GILBERTSON:
` 4 Q. Let me show you what has been marked as
` 5 Exhibit 1042 in the '692 matter. Is this your
` 6 supplemental declaration in the '692 matter?
` 7 A. I think you said -- did you say 1042? 1042 is
` 8 for the '245, I think.
` 9 Q. I did misspeak. Sorry. Thank you.
`10 A. That's okay.
`11 Q. So let's start with the '692. In the '692
`12 matter, is Exhibit 1041 your supplemental declaration?
`13 A. Yes. That's correct.
`14 Q. And on the last page of that declaration, is that
`15 your signature?
`16 A. Yes, it is.
`17 Q. And in the '245 matter, is Exhibit 1042 your
`18 supplemental declaration?
`19 A. Yes, it is.
`20 Q. And is that your signature on the last page of
`21 Exhibit 1042?
`22 A. It is, yes.
`23 Q. And I understand that you may have a
`24 clarification that we can get to in a bit relating to an
`25 exhibit that you referred to in your '245 declaration;
`Page 6
`
` 1 is that right?
` 2 A. That's correct.
` 3 Q. Is that Exhibit 2023?
` 4 A. That's correct.
` 5 Q. Okay. We will get to that one. Are there any
` 6 other errors or clarifications in either your '692
` 7 supplemental declaration or your '245 supplemental
` 8 declaration that you would like to tell me about?
` 9 A. Not that I'm aware of now, no, thank you.
`10 Q. If you could turn, please, in your '245
`11 declaration to paragraph 7.
`12 A. Okay.
`13 Q. This relates generally to delineated active
`14 areas, how they're configured or designated. Do you
`15 have paragraph 7 in front of you?
`16 A. I do, yes.
`17 Q. If you could turn -- it's a long paragraph -- if
`18 you could turn to the second page of it toward the end.
`19 A. Okay.
`20 Q. Just for the benefit of the record, could you
`21 read in live, or out loud, the last sentence of that
`22 paragraph.
`23 A. The last sentence of paragraph 7 of 1042,
`24 Exhibit 1042, is, Thus, Dr. MacLean's requirement that
`25 each application must redefine spatial boundaries of the
`
`Page: 2
`Page 7
` 1 delineated active areas is not supported by the '245
` 2 patent specification and would also be contrary to the
` 3 basic understanding of a skilled artisan at the time of
` 4 the '245 patent.
` 5 Q. Thank you. Is it your understanding that Dr.
` 6 MacLean's opinions include a requirement that each
` 7 application must redefine spatial boundaries of the
` 8 delineated active areas?
` 9 A. I don't recall her, you know, overall opinions,
`10 but that was in response to the statements she made in
`11 her declaration that I cited at the beginning of
`12 paragraph 2, so it's really just in response to those
`13 specific comments.
`14 Q. Part of your understanding of her view is that in
`15 her way of looking at it, there's a requirement that
`16 each application must redefine spatial boundaries of the
`17 delineated active areas?
`18 MR. KEAN: Objection. Form.
`19 THE WITNESS: So I'm -- it's in response to,
`20 for example, the statement at the top of page 3, which
`21 is in the middle of paragraph 2, where Dr. MacLean had
`22 said, quote, Disclosure of '245's Claim 1 clearly
`23 requires these delineations to be determined by the
`24 application and its specific requirements, not by the
`25 hardware or the operating system, close quote.
`Page 8
`
` 1 BY MR. GILBERTSON:
` 2 Q. In the sentence at the end of paragraph 0007 of
` 3 your '245 declaration, when you use the term -- or the
` 4 words Dr. MacLean's requirement, what are you speaking
` 5 of?
` 6 A. So, again, I'm referring back to just the
` 7 statements that she made, for example, as I outlined in
` 8 paragraph 2 of my declaration prior to that.
` 9 Q. And part of your understanding of her statements
`10 is that it would require that each application must
`11 redefine spatial boundaries of the delineated active
`12 areas?
`13 MR. KEAN: Objection. Form.
`14 THE WITNESS: I don't know about redefined. I
`15 mean, I'm referring back to the statements that I
`16 cited exactly as in paragraph 2, for example, so just
`17 to those statements and those words.
`18 BY MR. GILBERTSON:
`19 Q. So what did you mean when you used the word
`20 redefine in your last sentence of paragraph 0007 of your
`21 '245 declaration?
`22 A. I don't recall exactly what I was thinking, but
`23 looking back at paragraph 2, it could be that I was just
`24 collectively referring to where Dr. MacLean says that
`25 the application is required, quote, to specify the
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`Gregory F. Welch, Ph.D.
`12/17/2015
`Page 9
` 1 spatial demarcations of the delineations according to
` 2 the application's specific needs. And then she also
` 3 says -- and that's from paragraph 87 of Exhibit 2003.
` 4 And then in the same exhibit, paragraph 90, where she
` 5 says, Claim 1 requires these delineations to be
` 6 determined by the application.
` 7 So sitting here right now, what I'm reading, and
` 8 again, I don't remember what I was thinking, but she
` 9 says the application has to determine it, the
`10 demarcations, and has to specify them. And so I think
`11 that's probably what I was referring to when I say
`12 redefine.
`13 Q. Part of what you're doing in the '245 declaration
`14 is responding to opinions that Dr. MacLean has
`15 expressed; is that right?
`16 MR. KEAN: Objection to the form.
`17 THE WITNESS: Basically, the declaration is a
`18 response to only what the other experts had said, so
`19 MacLean and -- Dr. MacLean and Mr. Lim, also, as I
`20 recall.
`21 BY MR. GILBERTSON:
`22 Q. And as part of responding to opinions that they
`23 expressed, did you feel it was important to try to
`24 understand what their opinions were?
`25 A. I think it was important to understand what the
`Page 10
` 1 statements were implying or saying, literally or
` 2 implying that I refer to, for example, in paragraph 2 of
` 3 my declaration.
` 4 Q. Let me ask you about paragraph 8 of your '245
` 5 declaration. Can you turn to that, please.
` 6 A. Yes.
` 7 Q. The second sentence of that paragraph reads,
` 8 quote, However, the '245 patent does not include any
` 9 requirement that the spatial boundaries of the
`10 delineated active areas themselves must change from
`11 application to application, close quote. And the word
`12 must is in italics and underlined. Did I read that
`13 correctly?
`14 A. I believe so, yes.
`15 Q. And what significance does that point have, in
`16 your view?
`17 A. Well, again, it's, I think, referring back to the
`18 quotes, the specific statements made by Dr. MacLean
`19 that, for example, in the ones that I quote -- or cite
`20 in paragraph 2. And as I recall, and I believe this is
`21 simply -- what I'm saying here is that applications may;
`22 and I believe just from memory, the language of the
`23 patent for specifications is always might or may or
`24 allowing for it, but not stating that that has to
`25 happen, that that must happen.
`
`Page: 3
`Page 11
` 1 Q. Would you turn, please, to paragraph 10 of your
` 2 '245 declaration.
` 3 A. Okay.
` 4 Q. This paragraph, you address how the '245 patent
` 5 specification discusses configuring delineated active
` 6 areas among other things; is that right?
` 7 A. Roughly, yes, I'd say that's correct.
` 8 Q. And if you could turn to your '692 declaration,
` 9 paragraph 10. And could you just confirm for me that
`10 that's substantively the same paragraph as paragraph 10
`11 in your '245 supplemental declaration?
`12 A. From memory and from just looking at it briefly
`13 here, I believe they are the -- substantively the same.
`14 Q. In paragraph 10 of these supplemental
`15 declarations in the '245 and '692 matter, you note that
`16 the patent specification refers several times to
`17 software and other times to application software; is
`18 that right?
`19 A. That's correct.
`20 Q. Are you able to point to any reference in the
`21 specification explicitly saying that active areas are
`22 defined by system-level software?
`23 A. I don't recall whether I say that in my
`24 declaration or not; so just sitting here right now from
`25 memory, I don't recall. My recollection of the
`Page 12
` 1 specification is that it just uses the general term
` 2 software and enumerates some things in software that --
` 3 or some computational aspects that generally could not
` 4 be written by the application, among other things, as I
` 5 describe in paragraph 10. So my sense is that a person
` 6 of ordinary skill reading this would understand that
` 7 that's a very reasonable place for those delineations to
` 8 be specified or managed, either -- by anything running
` 9 on the system. So I think a person of ordinary skill
`10 would walk away realizing there's just great flexibility
`11 described there.
`12 Q. And I do understand your view of what a person of
`13 ordinary skill would have understood. My question for
`14 the moment is whether you are able to point to anything
`15 in the specification that explicitly says that the
`16 active areas are defined by system-level software.
`17 A. I'm sorry. As I was looking, I lost track of the
`18 exact question.
`19 THE WITNESS: Could you read the question back
`20 to me.
`21 (The record was read back as requested by the
`22 court reporter.)
`23 THE WITNESS: I'm not aware of a place that
`24 says that they are. Again, as I stated in my
`25 declaration, they could be, and I don't think I cite
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`Gregory F. Welch, Ph.D.
`12/17/2015
`Page 13
` 1 this passage in my declaration, but I'll -- I'm
` 2 looking at column 14 around -- starting at maybe
` 3 around 48 down through 54, where it says, Where
` 4 appropriate, aspects of these systems and techniques
` 5 can be implemented in a computer program product
` 6 tangibly embodied in a machine readable storage device
` 7 for execution by a programmable processor, and method
` 8 steps can be performed by programmable processor
` 9 executing a program of instructions to perform
`10 functions by operating on input data and generating
`11 output.
`12 So that and the preceding statements that I cite
`13 in 1445 through 48 to me leave open very generally
`14 where any of the computational aspects that are
`15 described in the specifications, because these
`16 statements are at the very end, could; so I'm not
`17 aware of a place that says, either way, must be done
`18 by the application or must be done by the system. As
`19 I say in my declaration, I think it could be either.
`20 BY MR. GILBERTSON:
`21 Q. You have your declaration -- your supplemental
`22 declarations and the '245 and '692 patents in front of
`23 you; is that right?
`24 A. That's correct.
`25 Q. And in answering my questions about this, you've
`Page 14
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` 1 had an opportunity to refer to all of those?
` 2 A. I have not referred to the entirety of the '245
` 3 or the '692 patent. I don't have them memorized. So
` 4 what I'm saying here is, based on my -- what I said in
` 5 my declaration, and then I went and looked at that same
` 6 area, so that's really all I've looked at here. So
` 7 sitting here right now, just from memory, I couldn't
` 8 tell you beyond that.
` 9 Q. And you don't see anything in your declaration
`10 identifying some part of the '245 or '692 patents
`11 specification that says that the active areas are
`12 defined by system-level software, specifically?
`13 A. I do not recall, and I do not see any place where
`14 I say that the -- those operations must be done by the
`15 system software. Again, I think, as I stated in here,
`16 they could be done by the system or by an application or
`17 by the system on behalf of the application, any variety
`18 of those. There's no specification that I recall either
`19 way, and I don't see anything in my declaration here in
`20 front of me that makes that sort of a statement.
`21 Q. And the material you quoted a little earlier from
`22 column 14, starting at around line 48, you're not
`23 suggesting that that passage is specific to system-level
`24 software, as opposed to application-level, are you?
`25 MR. KEAN: Objection. Form.
`
`Page: 4
`Page 15
` 1 THE WITNESS: I haven't given that passage
` 2 great consideration, so, you know, I don't -- I'm not
` 3 sure. But I think my intent, when I was reciting that
` 4 a moment ago, was simply to say -- or to provide some
` 5 other evidence that the patent is very nonspecific
` 6 about who or what exactly does anything described in
` 7 the patent. It's just very general. It says, you
` 8 know, on a -- in a computer program product tangibly
` 9 embodied and so forth and so on, execution by a
`10 programmable processor. So that's very general. That
`11 describes any software running on such a device.
`12 BY MR. GILBERTSON:
`13 Q. And would you agree that the '245 and '692
`14 specification does, on at least one occasion,
`15 specifically refer to areas being definable by an
`16 application developer?
`17 A. I don't recall that offhand, sitting here. If I
`18 said that and you want to point me to it in my
`19 declaration, I'd be happy to refresh my memory, but I
`20 just don't remember.
`21 Q. Could you take a look at the '245 patent in front
`22 of you and turn to column 12, starting at line 26. Let
`23 me know when you're there.
`24 A. Okay. I'm there.
`25 Q. And that last sentence, starting at line 26
`Page 16
` 1 reads, quote, For example, a game developer could set up
` 2 control configurations for novice users differently than
` 3 for advanced users such as mapping different numbers or
` 4 sizes of delineated active areas in order to reduce the
` 5 learning time to be proficient and make game control
` 6 easier for first-time players, close quote.
` 7 Did I read that correctly?
` 8 A. I believe you did, yes.
` 9 Q. And that's a specific reference to
`10 application-level configuration; would you agree?
`11 MR. KEAN: Objection. Form.
`12 THE WITNESS: It clearly is describing how a
`13 game developer could set up control. So it doesn't
`14 say, you know, the game developer must; but I think
`15 that comports with everything I've said in my
`16 declaration, which is that certainly applications
`17 running could, if they desire -- so desired set up
`18 control configurations for anything, for example,
`19 novice users, it says here. So I think -- you read it
`20 correctly; I read this as could, not must.
`21 BY MR. GILBERTSON:
`22 Q. And that passage at column 12, lines 26 through
`23 30, you'd agree is specific to application-level
`24 configuration, as opposed to system level configuration;
`25 is that right?
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`Gregory F. Welch, Ph.D.
`12/17/2015
`Page 17
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`Page: 5
`Page 19
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` 1 MR. KEAN: Objection. Form.
` 2 THE WITNESS: I think I would agree a game
` 3 developer would be developing a game, which would be
` 4 considered an application. And again, it's -- the
` 5 word here is could set up; could, not must, but could.
` 6 BY MR. GILBERTSON:
` 7 Q. If you could turn, please, in your '245
` 8 supplemental declaration to paragraph 11.
` 9 A. Okay.
`10 Q. And in this paragraph in general, you address
`11 Mr. Lim's opinions or some of them relating to tablet
`12 devices; is that right?
`13 A. That's generally -- generally correct, yes.
`14 Q. I'm not going to do this too often, but I would
`15 like to show you one of your supplemental declarations
`16 from the '313 patent.
`17 MR. GILBERTSON: Off the record for a second.
`18 (A discussion off the record was held.)
`19 BY MR. GILBERTSON:
`20 Q. I'm handing you what has been marked as
`21 Exhibit 1042 in IPR2015-00533. Is this your
`22 supplemental declaration in the 00533 matter?
`23 A. It is, I believe, one of three for the '313, and
`24 yes, it would be the 00533 matter.
`25 Q. And is that your signature on the last page of
`Page 18
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` 1 Exhibit 1042 of the 00533 matter?
` 2 A. Yes, it is.
` 3 Q. If you could turn in that declaration to
` 4 paragraph 35.
` 5 A. Okay.
` 6 Q. Thank you. And just for the benefit of those
` 7 reading the transcript, the point here is to -- well,
` 8 let's start with, am I right that your paragraph 11 in
` 9 your supplemental declaration in the '245 matter is
`10 substantively the same as your paragraph 35 in your
`11 supplemental declaration in the 00533 matter; do you
`12 agree with that?
`13 A. I believe that is correct, both from memory and
`14 from looking at the two documents right now in front of
`15 me.
`16 Q. And those paragraphs refer in part to an exhibit
`17 discussed by Mr. Lim, which is Exhibit 1023 -- excuse
`18 me, 2023 in the '245 matter and Exhibit 2036 in the
`19 00533 matter; is that right?
`20 A. I believe that is correct, yes.
`21 Q. And I'm handing you those two exhibits, 2023 from
`22 the '245 matter and 2036 from the 00533 matter.
`23 MR. GILBERTSON: Off the record.
`24 (A discussion off the record was held.)
`25 BY MR. GILBERTSON:
`
` 1 Q. Do you have those in front of you?
` 2 A. I do.
` 3 Q. Back to your supplemental declaration, let's use
` 4 the '245 one, paragraph 11, on the -- paragraph 11 has
` 5 three lines and then spills over to another page. And
` 6 seven lines down from that, your supplemental
` 7 declaration says, quote, Indeed, the section titled A
` 8 Taxonomy of Tablets in Exhibit 2023 cited by Mr. Lim
` 9 states, unquote. And then you go on and quote
`10 something, right?
`11 A. Correct.
`12 Q. The material that you're quoting is not in
`13 Exhibit 2023; is that correct?
`14 A. That's correct.
`15 Q. And it's not in Exhibit 2036 from the 00533
`16 matter?
`17 A. Right. Correct. That's one of the
`18 clarifications we meant -- that is the clarification
`19 that I wanted to make, as we discussed early on.
`20 Q. The material you're quoting relating to A
`21 Taxonomy of Tablets is from an article online that
`22 linked to the exhibit Mr. Lim referred to; is that
`23 right?
`24 A. It's from the article that -- from which the 2023
`25 comes from. It's the article that that's associated
`Page 20
` 1 with, and it's the article that Dr. Lim refers to. In
` 2 fact, I believe, from memory, he refers to it as 2023 in
` 3 his declaration in two different places. I made notes
` 4 here, paragraph 37 and 43 in Mr. Lim's declaration on
` 5 the '245, I believe he states the name, the full name of
` 6 the article, and then in parentheses after that says
` 7 Exhibit 2023. So I inadvertently conflated the article
` 8 with the exhibit number. So, for example, here, in the
` 9 paragraph where you're pointing me to, it would more
`10 correctly read, or I would like to change it to --
`11 Q. When you say the paragraph I'm pointing you to,
`12 are you talking about paragraph 11 of your '245
`13 supplemental declaration?
`14 A. My apologies. Yes, that's correct.
`15 Q. Sorry to interrupt; I just wanted it to be clear.
`16 A. That's okay. So, yes, in my declaration for
`17 the -- supplemental declaration for the '245, which is
`18 Exhibit 1042, paragraph 11, midway on page 11, which I
`19 guess is exhibit page 12, I refer to Exhibit 23. And I
`20 would more clearly say in the article that associated
`21 with Exhibit 23, or something like that. That's --
`22 Exhibit 23 is a figure that is included in that article,
`23 and it's -- what I intended was the same article that
`24 Mr. Lim refers to in his declaration in paragraphs 37
`25 and 43.
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`Gregory F. Welch, Ph.D.
`12/17/2015
`Page 21
` 1 Q. And you were just mentioning Exhibit 23; you
` 2 meant Exhibit 2023, correct?
` 3 A. I did. I apologize, yeah. And so I actually
` 4 brought with me a complete copy of that article, the one
` 5 that Mr. Lim refers to in his declaration, so we could,
` 6 if it's okay to do, I'd like to put that in the record
` 7 as an exhibit. And I wrote some notes on the front;
` 8 you'll see handwritten notes that indicate the
` 9 paragraphs that I just referred to in Mr. Lim's
`10 declaration.
`11 Q. Is the article from the year 2014?
`12 MR. KEAN: Object to the form.
`13 THE WITNESS: I don't know. I haven't looked
`14 at that. I see a date here on the front that says
`15 that it's the article that Mr. Lim referred to. I
`16 used the URL that he gave in his list of exhibits.
`17 That's how I got the article.
`18 BY MR. GILBERTSON:
`19 Q. Can you tell from the article that you brought or
`20 the URL or anything what year the article was from?
`21 A. Well, I can't be certain, but on the face of the
`22 article, it says, by Charles McLellan or, I should say,
`23 on the face of the printout I brought, March 3, 2014.
`24 But I don't know, you know, offhand if that is the date
`25 for the entire article or not. But again, it's the same
`Page 22
` 1 article that Mr. Lim was citing, or cited twice in his
` 2 declaration.
` 3 Q. The article, according to your '245 supplemental
` 4 declaration, paragraph 11, a few lines down from the
` 5 part we were referring to before, so in other words, on
` 6 page 11 of your '245 supplemental declaration, which is
` 7 actually exhibit page 12, that article refers to
` 8 something called a phablet P-H-A-B-L-E-T, among other
` 9 things; is that right?
`10 A. That's correct.
`11 Q. Is that term, phablet, something that anybody was
`12 using in 2003?
`13 MR. KEAN: Object to the form.
`14 THE WITNESS: I don't recall these terms. All
`15 of these terms were used subjectively by people all
`16 over the place for many years; so that specific term,
`17 I don't recall. I don't know whether I said that here
`18 in my declaration or whether it said in the article.
`19 I'm not sure.
`20 BY MR. GILBERTSON:
`21 Q. Do you know when that term, phablet, came into
`22 the lexicon?
`23 A. I do not know and -- do not recall and don't know
`24 if I said it anywhere or if it's said in the article
`25 right here. I don't know. Again, I was just reacting
`
`Page: 6
`Page 23
` 1 to the article cited by Mr. Lim and all the terminology
` 2 used in that article, but I don't -- I don't recall.
` 3 Q. Could you turn to paragraph 13 of your '245
` 4 supplemental declaration. Let me know when you have
` 5 that in front of you.
` 6 A. I'm there. Thank you.
` 7 Q. You start with a statement about disagreeing with
` 8 a point about Liebenow. And in your second sentence of
` 9 your '245 supplemental declaration, paragraph 13, you
`10 refer to a list of exemplary digital information
`11 appliances that Liebenow gives. Is that right?
`12 A. That is correct. That is the top of page 13 of
`13 my declaration, which is exhibit page 14.
`14 Q. I'll give you a copy of Liebenow to refer to.
`15 A. Thank you.
`16 Q. This one is Exhibit 1003 from the '245 matter.
`17 The part that you refer to and quote in the sentence
`18 we're speaking of in paragraph 13 of your '245
`19 supplemental declaration comes from Liebenow's paragraph
`20 0002; is that right?
`21 A. That is correct.
`22 Q. And is Liebenow's paragraph 0002 in a section of
`23 Liebenow with the heading background of the invention?
`24 A. Yes, it is.
`25 Q. And are there, later in the specification,
`Page 24
` 1 sections headed summary of the invention, brief
` 2 description of the drawings, and detailed description of
` 3 the invention?
` 4 A. Yes. At least those, that's correct.
` 5 Q. Would you agree that when Liebenow describes his
` 6 invention and its embodiment, he does so in those latter
` 7 three categories, not in the background section?
` 8 MR. KEAN: Object to the form.
` 9 THE WITNESS: No, I wouldn't. I would say that
`10 the description of the invention is the entire patent.
`11 Everything from the claims down to the specification
`12 and the background is an important part of setting the
`13 context of, for example, the later sections. It's
`14 sort of telling the reader, this is what I'm talking
`15 about; this is the context; this is the area; these
`16 are the sorts of things I'm talking about. And then
`17 Liebenow goes on to, like most patents, then describe
`18 some particular teachings related to his or her ideas
`19 in that area.
`20 BY MR. GILBERTSON:
`21 Q. Is it your testimony that in the background of
`22 the invention section, Liebenow discusses an embodiment
`23 of his invention?
`24 MR. KEAN: Object to the form.
`25 THE WITNESS: Liebenow doesn't use the word
`
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`
`Page: 7
`Page 27
`
`Gregory F. Welch, Ph.D.
`12/17/2015
`Page 25
` 1 embodiment, but Liebenow is giving examples of the
` 2 sorts of devices that Liebenow is talking about in the
` 3 patent. The title of the patent, of course, says,
` 4 Digital information appliance, and then that very
` 5 first sentence in the background is saying, Digital
` 6 information appliances such as, and then Liebenow is
` 7 listing examples. So to me, Liebenow is saying to the
` 8 reader, these are the sorts of things I'm talking
` 9 about. This is what I'm going to tell you about;
`10 these are the sorts of things I'm going to tell you
`11 about.
`12 BY MR. GILBERTSON:
`13 Q. You mentioned that you don't see the words -- or
`14 the word embodiment in that background section. That
`15 word is used in the latter three sections, isn't it,
`16 many times?
`17 A. Certainly, it is used at least once, I see, but
`18 I'm sure it's used many times, yes.
`19 Q. So, for example, in paragraph 0007 in the summary
`20 of the invention section, the third line refers to an
`21 exemplary embodiment; is that right?
`22 A. The third line says -- the first -- start of the
`23 sentence, In an exemplary embodiment, and then goes on.
`24 Q. And in the brief description of the drawings
`25 section, for example, at paragraph 0010, there's a
`Page 26
` 1 reference to an exemplary embodiment; is that right?
` 2 A. That's correct. But in 0007, for example, I
` 3 mean, you know, the patent says what it says, but
` 4 preceding the statement at line 3, the third line of
` 5 that paragraph, it says, The present invention is
` 6 further directed to a method of aiding a user in
` 7 entering information into the digital information
` 8 appliance.
` 9 So again I would read that as how Liebenow
`10 defined or described digital information appliances
`11 preceding that. So anything talking about that
`12 embodiment or any embodiments after that would be
`13 examples, which is what Liebenow says, an exemplary
`14 embodiment, for example, in paragraph 0007.
`15 Q. So my question was about paragraph 0010.
`16 Paragraph 10, in the brief description of the drawings
`17 section, refers to an exemplary embodiment; is that
`18 right?
`19 A. That's correct. It says, Isometric view of a
`20 digital information appliance in accordance with an
`21 exemplary embodiment of the present invention.
`22 Q. And in the detailed description of the invention
`23 section within Liebenow, paragraph 0024 refers to the
`24 presently preferred embodiments of the invention; is
`25 that right?
`
` 1 A. That's correct.
` 2 Q. So those three sections, summary of the
` 3 invention, brief description of the drawings, and
` 4 detailed description of the invention, refer explicitly
` 5 to embodiments of Liebenow's invention, but the
` 6 background of the invention section does not; would you
` 7 agree with that?
` 8 A. I'm sorry. Could you restate that, please.
` 9 Q. I'll break it up into two pieces, because it was
`10 kind of a long question. Would you agree that the
`11 summary of the invention section, the brief description
`12 of the drawings section, and the detailed description of
`13 the invention section of Liebenow all refer explicitly
`14 to exemplary embodiments of Liebenow's invention?
`15 A. Again, I have difficulty following the question,
`16 but I -- I'm sorry, but I think it's -- it's clear. I
`17 mean, the patent says what it says. It certainly talks
`18 about exemplary embodiments. Like, no patent obviously
`19 could describe every embodiment; so the way I read this
`20 is the way I would read any patent that was written like
`21 this is, the background is setting the stage for the
`22 sorts of things the inventor is thinking about, and then
`23 the specific embodiments preferred or however they're
`24 referred to are examples, which is how Liebenow
`25 characterizes them here. So Liebenow certainly uses the
`Page 28
` 1 words exemplary embodiments in the areas where Liebenow
` 2 is talking about s