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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., ZTE CORPORATION
`and ZTE (USA) INC.,
` Petitioners,
`v.
`E-WATCH, INC.,
` Patent Owner.
`
`: IPR2015-412
`: IPR2015-01366
`: U.S. Patent No.
`: 7,365,871 B2
`:
`:
`
`DEPOSITION OF STEVEN J. SASSON
`Washington, D.C.
`November 12, 2015
`8:45 a.m.
`
`E-Watch, Inc.
`Petitioner - Apple, Inc.
`Patent Owner - E-Watch, Inc.
`IPR2015-00412
`EXH. 2014
`Reported by: Linda S. Kinkade RDR CRR RMR CSR
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`1 INDEX OF EXAMINATION
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`2 3
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` EXAMINATION of STEVEN J. SASSON PAGE
`4 BY MR. DONAHUE 7
`5 196
`6 BY MR. BUROKER 169
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`1 2 3 4 5
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` The following is the transcript of the
`6 deposition of STEVEN J. SASSON held at the offices of:
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` Gibson, Dunn & Crutcher LLP
`10 1050 Connecticut Avenue, N.W.
`11 Washington, DC 20036
`12
`13
`14
`15 Taken pursuant to applicable Rules of Civil
`16 Procedure, before Linda S. Kinkade, Registered
`17 Diplomate Reporter, Certified Realtime Reporter,
`18 Registered Professional Reporter, Registered Merit
`19 Reporter and Certified Shorthand Reporter, as licensed
`20 by the State of California, and Notary Public as
`21 commissioned by the District of Columbia.
`22
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`25
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`1 APPEARANCES:
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`Page 3
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`1 E X H I B I T S
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`Page 5
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`2 3
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`NO. DESCRIPTION PAGE
`4 Exhibit 2 Paper No. 2 Petition for Inter 13
`5 (Paper 2) Partes Review
`6 Exhibit 12 Decision Institution of Inter 80
`7 (Paper 12) Partes Review
`8 Exhibit 1001 United States Patent No. 19
`9 7,365,871 B2
`10 Exhibit 1006 United States Patent No. 95
`11 5,550,754
`12 Exhibit 1007 United States Patent No. 106
`13 5,491,507
`14 Exhibit 1008 Declaration of Steven J. Sasson 52
`15 Exhibit 1010 Picture of standard keypad 110
`16 Exhibit 1012 Memorandum Opinion and Order 65
`17 Exhibit 1014 Reply Declaration of Steven J. 9
`18 Sasson in Support of Inter Partes
`19 Review of U.S. Patent No.
`20 7,365,871 B2
`21 Exhibit 2006 Notice of Allowance of Monroe 28
`22 patent application
`23 Exhibit 2011 Notice of Deposition of Steven J. 8
`24 Sasson
`25
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`23
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`On Behalf of Petitioner:
`4 Gibson, Dunn & Crutcher LLP
`5 By: Brian Buroker
`6 By: Blair Silver
`7 1050 Connecticut Avenue, N.W.
`8 Washington, DC 20036
`9
`10
`11
`12
`13
`14 On Behalf of Patent Owner:
`15 DiNovo Price Ellwanger & Hardy LLP
`16 By: Gregory S. Donahue
`17 7000 N. MoPac Expressway
`18 Suite 350
`19 Austin, Texas 78731
`20
`21
`22
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`25
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`1 Q. Have you ever been deposed before in
`2 conjunction with an IPR proceeding?
`3 A. No, I have not.
`4 MR. DONAHUE: Let me enter the relevant
`5 deposition notice, which is Exhibit 2011.
`6 (Exhibit 2011 was marked for identification.)
`7 BY MR. DONAHUE:
`8 Q. So have you seen this document before?
`9 A. Yes.
`10 Q. Do you understand that you're here to
`11 testify regarding your reply declaration that you
`12 submitted on October 15th, 2015 in conjunction with
`13 IPR2015-00412 and IPR2015-01366?
`14 MR. BUROKER: Objection, form.
`15 THE WITNESS: Yes.
`16 MR. BUROKER: That's fine. Go ahead.
`17 THE WITNESS: Okay. Yes.
`18 BY MR. DONAHUE:
`19 Q. Okay. Let's take a few moments to go over
`20 some basics about depositions. It sounds like you've
`21 been deposed before, but I'll just quickly review.
`22 If at any time you need to or want to take a
`23 break, please just let me know and we'll take a break.
`24 I'd ask that you try to complete your -- the pending
`25 answer to the pending question before we do so.
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`Page 6
`1 Exhibit 2012 Decision Denying Institution of 32
`2 Inter Partes Review
`3 Exhibit 2013 Oxford Dictionary Definition of 55
`4 "any" in English
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`5 6 7 8 9
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`1 P R O C E E D I N G S
`2 (In session at 8:42 a.m.)
`3 STEVEN SASSON,
`4 Having been first duly sworn, was thereafter
`5 examined and testified as follows:
`6 MR. BUROKER: For the record, this is Brian
`7 Buroker from Gibson Dunn on behalf of the petitioner
`8 Apple.
`9
`10 EXAMINATION
`11 BY MR. DONAHUE:
`12 Q. Hi, and my name is Greg Donahue. I'm
`13 working with DiNovo Price Ellwanger & Hardy, and I
`14 represent e-Watch, Inc. and e-Watch Corporation in a
`15 patent litigation matter against, among others, Apple
`16 and ZTE, and also in these IPR proceedings numbered
`17 IPR2015-00412 and IPR2015-01366. Do you understand
`18 that?
`19 A. Yes.
`20 Q. Have you ever been deposed before?
`21 A. Yes, I have.
`22 Q. In what type of cases have you been
`23 deposed?
`24 A. In federal district court patent cases.
`25 That's basically it.
`
`1 A. Oh, of course.
`2 Q. And in order to make sure we keep and
`3 maintain an accurate record, I would ask that you
`4 answer verbally and don't shake your head or make hand
`5 gestures that would be difficult for the court
`6 reporter to record.
`7 A. Oh, yes.
`8 Q. And then, finally, I'd like to ask that,
`9 before you begin answering the question that I ask,
`10 that you let me finish the question, and I will, of
`11 course, extend you the same courtesy to allow you to
`12 finish your answer before I ask you another question.
`13 Does that seem fair?
`14 A. Yeah. Very good.
`15 Q. Are you on any medication today that would
`16 prevent you from being able to testify truthfully and
`17 accurately?
`18 A. No.
`19 Q. Okay. Let's go ahead and introduce the
`20 next exhibit, which has already been marked. It's
`21 Exhibit 1014 --
`22 (Exhibit 1014 was marked for identification.)
`23 BY MR. DONAHUE:
`24 Q. -- which is your reply declaration. Do you
`25 recognize that?
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`1 A. Yes.
`2 Q. Let's go ahead and flip to page 2,
`3 paragraph 4 and 5. Paragraph 4 says:
`4 I disagree with Dr. Melendez'
`5 assertion that a person of ordinary
`6 skill in the art would necessarily
`7 have specialized experience related
`8 to the design of cellular
`9 communication devices for several
`10 reasons.
`11 And then paragraph 5 goes on and says that:
`12 First, the '871 patent discloses no
`13 particular cellular communication
`14 system, instead referring simply to
`15 an unspecified cellular telephone or
`16 cellular transmission.
`17 Do you see that?
`18 A. Yes, I do.
`19 Q. Do you agree that the '871 patent has
`20 limitations in the claims related to transmission of
`21 images?
`22 A. Yes, it does.
`23 Q. Do you agree that the '871 patent has
`24 limitations directed specifically to the type of
`25 signals that can be transmitted and received?
`
`Page 12
`1 networks were in 1998 with respect to sending images?
`2 MR. BUROKER: Same objection.
`3 THE WITNESS: The only capability that
`4 would be required to interface with a cellular phone
`5 is what's required in the interface and the
`6 capabilities of the network in terms of bit rate
`7 perhaps.
`8 BY MR. DONAHUE:
`9 Q. If the allegations in the petition were
`10 that McNelley and Umezawa -- McNelley, I think, is
`11 1995 is the priority date, and Umezawa is 1994 -- if
`12 the allegations were that those references explicitly
`13 disclose the limitations of the '871 patent, including
`14 the transmission of images, wouldn't it be important
`15 to know what standard cellular networks could transmit
`16 in 1994 and 1995?
`17 MR. BUROKER: Objection, form.
`18 THE WITNESS: It is important to know what
`19 they can transmit, and I think it was common knowledge
`20 what they could transmit in '94 and '95.
`21 BY MR. DONAHUE:
`22 Q. Would it be important to know how they
`23 transmit those images?
`24 MR. BUROKER: Same objection.
`25 THE WITNESS: Not to the designers of those
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`1 MR. BUROKER: Objection, form.
`2 THE WITNESS: There are different types
`3 of -- different types of signals that are talked about
`4 in the '871, yes.
`5 BY MR. DONAHUE:
`6 Q. Let's look at paragraph 6. I'm not going
`7 to read this one into the record. If you could just
`8 read paragraph 6 for a moment and then let me know
`9 when you're done.
`10 A. Okay. I've read it.
`11 Q. So regardless of whether standard cellular
`12 phone components are being discussed in the '871
`13 patent, to properly construe the claims of the '871
`14 patent wouldn't it be important to understand what the
`15 capabilities of standard cellular networks would be
`16 with respect to sending images in 1998?
`17 MR. BUROKER: Objection, form.
`18 THE WITNESS: Could you repeat the
`19 question, again?
`20 BY MR. DONAHUE:
`21 Q. Sure. So regardless of whether standard
`22 cellular phone components are being discussed in the
`23 '871 patent, to properly construe the claims of the
`24 '871 patent wouldn't it be important to understand
`25 what the capabilities of standard cellular phone
`
`1 products, no.
`2 BY MR. DONAHUE:
`3 Q. Let me introduce the petition in this
`4 matter, which is Paper No. 2 in the docket. It's a
`5 pretty big document, but if you just take a quick look
`6 at it and let me know if you've seen it before.
`7 (Exhibit 2 was marked for identification.)
`8 THE WITNESS: This is the --
`9 BY MR. DONAHUE:
`10 Q. Original petition.
`11 A. The original petition. Yes, I do see the
`12 original petition.
`13 Q. So let's move to page 41 and 42 of this
`14 petition.
`15 A. Page 41, you said?
`16 Q. Yeah, let's start with page 41.
`17 A. Okay.
`18 Q. You'll see sentences that begin with,
`19 McNelley discloses that the -- I'll just read it.
`20 McNelley discloses that the
`21 telecamcorder includes an integral
`22 video phone capable of receiving and
`23 sending teleconferencing signals and
`24 transmitting/receiving data other
`25 than audio and video, that the
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`1 telecamcorder is applicable to any
`2 type of network, such as a wireless
`3 cellular telephone network, and that
`4 the device is equipped with
`5 communication electronics that
`6 establish a connection over a network
`7 and transmit/receive video and audio
`8 signals while displaying video
`9 signals and reproducing audio
`10 signals.
`11 McNelley also discloses the use of
`12 digital recording and an enhanced
`13 digitally based telecamcorder that
`14 may include microprocessors for
`15 operational functions.
`16 And then you'll see below, there's a sentence
`17 that begins with "Umezawa discloses".
`18 A. Mm-hmm.
`19 Q. So that's -- that's the discussion, and if
`20 you look on page 40 on the bottom, that's the
`21 discussion of Claim (f), limitations.
`22 If the petitioner is relying on explicit
`23 disclosure in McNelley and Umezawa, as it appears in
`24 the petition, and not obviousness based on the
`25 references or inherency of the references, wouldn't it
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`Page 16
`1 knowledge, only appears once in the '871 patent, and
`2 it's my impression that that refers to the baseband
`3 signal. And so are you asking me to consider it not
`4 being the baseband signal or the signal content?
`5 Q. Not the signal content, but how the signal
`6 is sent.
`7 A. So you're asking me to consider that term
`8 as it's used being a transmission protocol.
`9 Q. Correct.
`10 A. Okay. Please ask the question again.
`11 Q. Sure. If the non-audio digital signal does
`12 not mean the image signal that is sent but instead how
`13 the image is sent, the protocol, would you agree that
`14 neither Umezawa nor McNelley explicitly disclose that?
`15 MR. BUROKER: Objection, form.
`16 THE WITNESS: They don't -- they don't
`17 disclose a particular protocol. They talk about a
`18 number of protocols that they could use. McNelley
`19 talks about doing digital all the way and interface to
`20 future digital networks.
`21 BY MR. DONAHUE:
`22 Q. Do either of the references of McNelley or
`23 Umezawa reference non-audio digital signals?
`24 A. That term is not used.
`25 MR. BUROKER: I was just going to say
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`1 be important to know what and how images are
`2 transmitted in McNelley -- at the time of McNelley and
`3 Umezawa?
`4 MR. BUROKER: Objection to form, and
`5 objection, beyond the scope of his reply declaration.
`6 THE WITNESS: The how part I interpret you
`7 to ask is how the network actually transmits the
`8 information. These devices, McNelley and Umezawa, and
`9 certainly the '871 patent, are attachments to
`10 networks, they are peripherals, as such, and so,
`11 therefore, they have to just know the interface to the
`12 network and not how the network actually transmits the
`13 information.
`14 BY MR. DONAHUE:
`15 Q. Okay. If the non-audio digital signal does
`16 not mean the image signal but instead how the image is
`17 transmitted, the protocol, would you agree with me
`18 that neither Umezawa or McNelley explicitly disclose a
`19 protocol for sending images?
`20 MR. BUROKER: Objection to form.
`21 THE WITNESS: Please ask that question
`22 again.
`23 BY MR. DONAHUE:
`24 Q. Sure.
`25 A. The term non-audio digital signal, to my
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`Page 17
`1 objection, form. So slow down a little bit. I'm not
`2 as quick sometimes as I would like to be.
`3 BY MR. DONAHUE:
`4 Q. Okay. Let's look at -- we can put the
`5 petition aside for a moment. I think we'll come back
`6 to it eventually, but let's look back at your
`7 declaration, which is Exhibit 1014.
`8 In paragraph 7, on page 4, it says, I do not
`9 agree with Dr. Melendez' view -- sorry. Let me give
`10 you an opportunity to get there before I start
`11 reading.
`12 A. Okay. Where are you?
`13 Q. It's paragraph 7, but it's actually on page
`14 4. It's a sentence that's on page 4.
`15 A. Okay.
`16 Q. It says:
`17 I do not agree with Dr. Melendez'
`18 view that a person of ordinary skill
`19 in the art requires specialized
`20 experience related to cellular
`21 communications devices but no
`22 particular experience whatsoever
`23 related to the number of other modes
`24 of transmission also disclosed in the
`25 '871 patent.
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`1 Do you see that?
`2 A. Yes.
`3 Q. Are you suggesting that Dr. Melendez'
`4 definition of a person of ordinary skill in the art
`5 should actually include other wireless modes of
`6 transmission as well as cellular, or are you saying it
`7 shouldn't include any wireless modes of transmission?
`8 A. I'm saying neither. I'm saying he's being
`9 inconsistent.
`10 Q. So your position is -- well, let me ask
`11 you. What is your position, then? Should it include
`12 any transmission, wireless modes of transmission?
`13 A. It's not necessary. A person of ordinary
`14 skill in the art in this field would have been exposed
`15 in their undergraduate education to communication
`16 channel theory, and that would have been enough for a
`17 person to be able to interface to any of the networks
`18 discussed in these patents.
`19 Q. Isn't a cellular telephone recited in
`20 independent Claims 1, 6 and 9 of the '871 patent? Let
`21 me give you -- I don't want it to be a memory test.
`22 Let me give you a copy of that. Actually one of those
`23 might have a marking on the bottom. That might be my
`24 copy.
`25 Does one of them have a marking on the bottom?
`
`1 importance over other wireless technologies?
`2 MR. BUROKER: Objection, form.
`3 THE WITNESS: It's one of the forms that is
`4 used, one of the interfaces that is required, for this
`5 patent. It's one of those that's required. So you
`6 would have to understand the interface to the cellular
`7 network, not how the cellular network works.
`8 BY MR. DONAHUE:
`9 Q. So even though cellular telephones is
`10 recited in almost all the independent claims, you
`11 don't think that cellular telephone technology is of
`12 particular importance over other wireless technologies
`13 to understand the '871 patent?
`14 A. I see no particular technology being
`15 offered here with respect to that.
`16 Q. Let's move to paragraph 11.
`17 A. Of my declaration?
`18 Q. Yeah, of your declaration, Exhibit 1014.
`19 A. Okay.
`20 Q. It says, "While Dr. Melendez is incorrect
`21 regarding the level of ordinary skill in the art, the
`22 following analysis and the analysis in my original
`23 declaration remains the same under either definition
`24 of the level of ordinary skill in the art."
`25 I don't see any specific reason provided in
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`Page 19
`1 MR. BUROKER: Oh, there's a checkmark on
`2 that.
`3 MR. DONAHUE: Sorry about that.
`4 (Exhibit 1001 was previously marked for
`5 identification and referenced herein.)
`6 BY MR. DONAHUE:
`7 Q. The other one should be a clean copy.
`8 Sorry.
`9 A. Okay. Do you want me to go to the claims?
`10 Q. Yeah, if you would just look at Claims 1, 6
`11 and 9 and tell me if you see a cellular telephone
`12 recited in those claims.
`13 A. I see the words "cellular telephone" in
`14 Claims 1 and 6, but I just see "wireless telephone" in
`15 12.
`16 Q. No, I said 1, 6 and 9, sir.
`17 A. Oh. You said 1, 6 and 9.
`18 Q. Yeah.
`19 A. Oh, okay. Yes. I apologize.
`20 Q. No problem. 9 is not at issue here.
`21 A. Yeah, that's why I jumped to 12.
`22 Q. Those are the three I said. Given that --
`23 given that cellular telephone is recited in three of
`24 the four independent claims of the patent, doesn't it
`25 seem like cellular technology is of particular
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`Page 21
`1 paragraph 11 for why your opinions wouldn't change
`2 even under the Patent Owner's definition of a person
`3 of ordinary skill in the art. Can you tell me why you
`4 say it doesn't matter which definition is used?
`5 A. It doesn't matter because, even if you had
`6 knowledge about how cellular telephones work, it would
`7 not help you in the implementation of the '871 at all.
`8 Q. Do you think that's true even if the Patent
`9 Owner's definition of non-audio digital signal is
`10 adopted by the PTAB?
`11 MR. BUROKER: Objection, form.
`12 THE WITNESS: That term at issue is very
`13 poorly defined, and, therefore, I couldn't attribute
`14 that particular form of communication protocol to any
`15 particular type of communication network.
`16 BY MR. DONAHUE:
`17 Q. With that said, if the PTAB adopts the
`18 Patent Owner's definition of non-audio digital signal,
`19 do you think then that it would be important to
`20 understand the methodology, how a digital image is
`21 sent over the network, over a cellular network?
`22 MR. BUROKER: Objection, form.
`23 THE WITNESS: I don't believe that how the
`24 actual technology used to transmit the digital
`25 information over the network would be important to the
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`1 developer of the '871. '871 simply needs to know how
`2 to interface to that network.
`3 BY MR. DONAHUE:
`4 Q. Does he need to know what protocol is being
`5 used to send an image if the Patent Owner's definition
`6 of non-audio digital signal is adopted?
`7 A. If I take a look at the implementation of
`8 the '871, the interface to the cellular network that's
`9 suggested in Fig. 5 is a simple bidirectional
`10 communication port with no encoding whatsoever as part
`11 of it.
`12 Q. Okay. But my question is a little
`13 different, I think. My question is: If the Patent
`14 Owner's definition of non-audio digital signal is
`15 adopted, meaning that it's how the image is sent, the
`16 protocol that's used, if that's the case, wouldn't it
`17 be important to understand cellular networks and how
`18 they transmitted images?
`19 MR. BUROKER: Objection, form.
`20 THE WITNESS: It depends on what you're
`21 asking the '871 device to do. If you're asking it to
`22 encode the actual information to be directly sent to
`23 the cellular network, then you would have to know the
`24 encoding scheme, if it was, as you suggested.
`25 BY MR. DONAHUE:
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`1 interpretation.
`2 BY MR. DONAHUE:
`3 Q. Okay. Let's look at paragraph 14 of
`4 Exhibit 1014, your declaration.
`5 A. Paragraph 14 on page 6?
`6 Q. Yes.
`7 A. Okay.
`8 Q. And I'm going to skip down to where it
`9 says, there's a quotation mark, and it says:
`10 Two generic configurations are shown
`11 and described, the first where each
`12 image is transmitted as it is
`13 captured while other portions of the
`14 specification supports storing
`15 multiple images before display,
`16 selection and transmission. None of
`17 these portions ... selecting at least
`18 one image.
`19 Do you see that?
`20 A. Yes, I do.
`21 Q. In there it says selective recall of
`22 captured images with images being plural; is that
`23 correct?
`24 A. Where are you quoting from?
`25 Q. In the passage I just read it talks about
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`1 Q. Okay. Let's move on in Exhibit 1014 in
`2 your declaration. It looks like starting on page 5
`3 and carrying through page 24 of this reply declaration
`4 you opine on claim construction of some of the terms
`5 in the '871 patent; is that correct?
`6 A. Yes.
`7 Q. Are you an attorney?
`8 A. No, I am not.
`9 Q. Are you familiar with claim construction
`10 canons for interpreting claim language?
`11 A. I am -- I am an engineer by training. I
`12 have applied for and received a number of patents and
`13 I've worked with patent lawyers, so I have a, I would
`14 say, a passing understanding, but I'm certainly not a
`15 patent attorney.
`16 Q. Have you opined on the proper claim
`17 construction of terms in a patent in the past?
`18 A. I believe I have in some depositions, yes.
`19 Q. Are you certain you have or --
`20 A. No, I think I have, because they were my
`21 patents.
`22 Q. Are you aware whether claim construction is
`23 a matter of law as opposed to a fact issue?
`24 MR. BUROKER: Objection, form.
`25 THE WITNESS: Yeah, it's a legal
`
`1 multiple images.
`2 A. Yes. Well, you mean the sentence, while
`3 other portions of the specification support storing
`4 multiple images before display? Yes.
`5 Q. Well, actually let me go ahead and have you
`6 flip to Exhibit 1001. We'll just go right into the
`7 actual Monroe patent.
`8 A. Okay.
`9 Q. And look at column -- I think it will be
`10 easier to do it this way. Let's look at column 5,
`11 lines 6 through 9, please, and I'll just read them.
`12 "Two generic configurations are shown and
`13 described, the first where each image is transmitted
`14 as it is captured and the second which permits
`15 capture, storage and selective recall of captured
`16 images for transmission."
`17 Do you see that?
`18 A. Yes, I do.
`19 Q. So it says, selective recall of captured
`20 images, with images being plural in the patent,
`21 correct?
`22 A. In the specification in the sentence you
`23 just read?
`24 Q. Yes.
`25 A. Yes, the image transmitted is captured and
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`1 the second was image captured, storage, recall of
`2 captured images, plural, yes.
`3 Q. So the second configuration that's
`4 discussed in the '871 patent involves multiple images
`5 being captured and then you select from among them,
`6 correct?
`7 MR. BUROKER: Objection, form.
`8 THE WITNESS: Okay. That sentence says,
`9 which permits the capture, storage and selective
`10 recall of captured images for transmission. Okay. So
`11 it selects from the images that have been captured.
`12 BY MR. DONAHUE:
`13 Q. The images, plural, correct?
`14 A. Yes, it says images there, plural, yes.
`15 Q. Do you think the claims at issue, meaning
`16 the claims, independent Claims 1, 6 and 12, relate to
`17 both of these configurations that are discussed here
`18 or only the latter, the second configuration?
`19 A. Well, Claims 1, 6 and 12?
`20 Q. Yeah. Do you think they relate to both of
`21 those configurations or just one?
`22 A. Well, can I -- can I look at the claims?
`23 Q. Of course. Of course. And maybe, just to
`24 make it easy, let's just start with Claim 1 rather
`25 than going through all of them right now.
`
`1 digitized framed images.
`2 A. Yeah.
`3 Q. After you read that, do you think still
`4 that it could be directed to both configurations that
`5 we just discussed?
`6 A. I'm not sure. I can just interpret how the
`7 claim is written, and they are referring to a single
`8 image in that particular case.
`9 Q. Do you agree that a captured image must be
`10 stored to memory, recalled from memory, displayed, and
`11 then transmitted to satisfy that limitation I just
`12 read?
`13 MR. BUROKER: Objection, form.
`14 THE WITNESS: Yes, I believe that's true.
`15 All those terms are mentioned in the claim.
`16 BY MR. DONAHUE:
`17 Q. Are you familiar with the prosecution
`18 history of the '871 patent?
`19 A. I have seen it.
`20 Q. So this is another exhibit that's already
`21 been introduced in this proceeding. It's Exhibit
`22 2006.
`23 (Exhibit 2006 was previously marked for
`24 identification and referenced herein.)
`25 BY MR. DONAHUE:
`
`Page 27
`
`Page 29
`
`1 A. Claim 1. Sure. I'm not really sure
`2 because it's image in the singular in this claim, and
`3 so they are talking about a single image.
`4 Q. Setting aside that issue, do you think that
`5 Claim 1 relates to taking a picture and immediately
`6 sending it or do you think that it's required that
`7 it's stored in memory and then selectively recalled
`8 before it's transmitted?
`9 MR. BUROKER: Objection, form.
`10 THE WITNESS: It doesn't really refer to
`11 either one. It says for capturing a visual image and
`12 transmitting it, so they are talking about capturing a
`13 single image and transmitting it. I'm reading the
`14 preamble of Claim 1. If there's another part of it
`15 that you'd like me to refer to, I'll be happy to.
`16 BY MR. DONAHUE:
`17 Q. Sure. Maybe let's look at column 14, lines
`18 63 through 67. At the bottom it says:
`19 A memory associated with the
`20 processor for receiving and storing
`21 the digitized framed image,
`22 accessible for selectively displaying
`23 in the display window and accessible
`24 for selectively transmitting over the
`25 wireless telephone network the
`
`1 Q. And if you'll flip to page 10, which is
`2 sort of in the middle -- maybe first flip to page 9
`3 and confirm that we're talking about Claim 43, and
`4 then flip over to page 10, which is what we'll
`5 actually be talking about.
`6 So this Claim 43 actually issued as Claim 1,
`7 and it was amended when the notice of allowance
`8 occurred --
`9 A. Okay.
`10 Q. -- to add the underlined language that you
`11 see on, for example, page 10. If you'd look at that
`12 underlined language for a minute and let me know when
`13 you're done that's on page 10.
`14 A. I'm going to read the whole claim, if you
`15 don't mind.
`16 Q. That's fine, too.
`17 A. Where on page 10 --
`18 Q. The underlined language.
`19 A. Okay. Okay. I've read that, yes.
`20 Q. Okay. Would you agree that the additional
`21 language that's added with that underlining precludes
`22 the capture and immediate transmission of an image
`23 without storing it to memory and displaying it?
`24 MR. BUROKER: Objection, form and outside
`25 the scope of the declaration.
`
`212-279-9424
`
`Veritext Legal Solutions
`www.veritext.com
`
`8 (Pages 26 - 29)
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`212-490-3430
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`Page 30
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`1 THE WITNESS: Ask the question again
`2 because there's two words you used in your question
`3 that kind of confuse me.
`4 BY MR. DONAHUE:
`5 Q. Okay. Sure. Does this additional
`6 underlined language preclude capturing and immediately
`7 transmitting an image without storing it to memory and
`8 displaying it first?
`9 MR. BUROKER: Same objections.
`10 THE WITNESS: I need clarification, I
`11 apologize, but when you say capture an image, you are
`12 storing it. And so you're saying capture store and
`13 then not store. So I need to know a clarification of
`14 that.
`15 BY MR. DONAHUE:
`16 Q. Okay. Does this -- does this language
`17 require you to take a picture, store it to memory,
`18 display it and then transmit it?
`19 MR. BUROKER: Same objections.
`20 THE WITNESS: Again, taking a picture is
`21 implied storing -- anyone who refers to taking a
`22 picture is capturing an image. When you take a
`23 picture, you are storing it. When you say those
`24 words, you are storing it. You can argue about how
`25 you store it, but it is stored.
`
`Page 32
`1 rehearing just mean that the board is saying it did
`2 not interpret it, the selecting limitations at all,
`3 which means it didn't construe them as requiring a
`4 selection from two or more images?
`5 MR. BUROKER: Objection, form.
`6 THE WITNESS: What I was reacting to here
`7 is that the petitioner was suggesting that they
`8 were -- did take that interpretation.
`9 BY MR. DONAHUE:
`10 Q. Oh, you think the Patent Owner took the
`11 position that it's already been interpreted that way.
`12 A. No, I'm sorry. Ask your question again.
`13 Q. So after I read that parenthetical, the
`14 question was, couldn't that language that you're
`15 quoting there just mean that the board is saying it
`16 didn't interpret the selecting limitations at all,
`17 which means it didn't construe them as requiring a
`18 selection from two or more images?
`19 A. Yes, I agree. Yeah.
`20 Q. Let's take a quick look at -- this one we
`21 will need to mark.
`22 (Exhibit 2012 was marked for identification.)
`23 BY MR. DONAHUE:
`24 Q. Let me give you a minute to look at it, an