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
`_____________________
`
`IPR2015-00412
`IPR2015-013661
`U.S. Patent No. 7,365,871 B2
`_____________________
`
`PATENT OWNER’S MOTION FOR OBSERVATION RELATED TO
`DEPOSITION TESTIMONY OF STEVEN J. SASSON
`
`
`
`
`
`Mail Stop
`Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 IPR2015-01366 has been joined with IPR2015-00412.
`
`
`
`____________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________
`
`APPLE INC.,
`ZTE CORPORATION and ZTE (USA) INC.,
`Petitioners
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`_____________________
`
`IPR2015-00412
`IPR2015-013661
`U.S. Patent No. 7,365,871 B2
`_____________________
`
`PATENT OWNER’S MOTION FOR OBSERVATION RELATED TO
`DEPOSITION TESTIMONY OF STEVEN J. SASSON
`
`
`
`
`
`Mail Stop
`Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 IPR2015-01366 has been joined with IPR2015-00412.
`
`
`
`
`
`
`
`e-Watch Corporation and e-Watch, Inc. (“Patent Owner”) submit this Motion for
`
`Observation Related to Deposition Testimony of Steven J. Sasson, identifying specific
`
`portions of the November 12, 2015 Steven J. Sasson deposition transcript for the Patent
`
`Trial and Appeal Board’s consideration. Steven J. Sasson was a reply declarant of
`
`Apple Inc. (“Petitioner”). Patent Owner submits the following observations:
`
`
`
`Observation Number 1
`
`
`
`In Exhibit 2014, on 10:19-11:4; 14:19-15:13; 16:11-20; and 22:12-24, Mr.
`
`Sasson testified about the qualifications of a person of ordinary skill in the art and the
`
`alleged disclosure in the prior art references (McNelley and Umezawa) of the “non-
`
`audio digital signals” limitation of claim 12 of United States Patent No. 7,365,871
`
`(“’871 Patent”). This testimony is relevant to Mr. Sasson’s statements in paragraphs 4-
`
`5 of the Sasson Reply Declaration (Exhibit 1014) related to the qualifications of a
`
`person of ordinary skill in the art and whether specialized knowledge of cellular phone
`
`devices and systems is required to meet those qualifications and to paragraph 94 of the
`
`Sasson Reply Declaration (Exhibit 1014) related to the alleged disclosure of the “non-
`
`audio digital signals” limitation of claim 12 of the ‘871 Patent in McNelley and
`
`2
`
`Umezawa.
`
`
`
`
`
`
`
`
`
`Observation Number 2
`
`
`
`In Exhibit 2014, on 25:9-26:14 and 28:9-15, Mr. Sasson provided testimony
`
`relevant to the construction of the “selectively displaying,” “selectively transmitting,”
`
`and “selected digitized framed image” limitations in claims 1, 6 and 12 of the ‘871
`
`Patent. For example, when asked whether he agreed that “a captured image must be
`
`stored to memory, recalled from memory, displayed, and then transmitted” to satisfy
`
`the “memory associated with the processor for receiving and storing the digitized
`
`framed image, accessible for selectively displaying in the display window and
`
`accessible for selectively transmitting over the wireless telephone network the digitized
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`framed images” limitation of claim 1 of the ‘871 Patent, Mr. Sasson responded, “[y]es,
`
`I believe that’s true.” This testimony is relevant to Mr. Sasson’s statements in
`
`paragraphs 13-14 of the Sasson Reply Declaration (Exhibit 1014) related to the
`
`construction of the “selectively displaying” and “selectively transmitting” limitations of
`
`the ‘871 Patent.
`
`
`
`Observation Number 3
`
`
`
`In Exhibit 2014, on 38:18-39:21 and 41:2-12, Mr. Sasson testified about the
`
`construction of the “alphanumeric” limitations in claims 1, 6 and 12 of the ‘871 Patent.
`
`For example, when asked “[i]sn’t the idea that the device claimed in the ‘871 patent
`
`permits entry of both letters and text,” Mr. Sasson responded, “I think that was what
`
`
`
`3
`
`
`
`they tried to imply when they were talking about the capability.” This testimony is
`
`relevant to Mr. Sasson’s statements in paragraphs 21 and 26 of the Sasson Reply
`
`Declaration (Exhibit 1014) related to the construction of the “alphanumeric”
`
`
`
`limitations.
`
`
`
`Observation Number 4
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`
`
`In Exhibit 2014, on 45:5-47:2, Mr. Sasson testified about the construction of the
`
`“compatible remote receiving station” limitation of claim 1 of the ‘871 Patent. For
`
`example, when asked whether a remote receiving station needs to be capable of
`
`permitting someone to display or print an image received, Mr. Sasson indicated,
`
`“[w]ell, that may be one attribute of a remote receiving station.” Mr. Sasson further
`
`testified that he didn’t know whether a server was even involved in placing a phone call
`
`or what type of server would be involved in placing a call. This testimony is relevant to
`
`Mr. Sasson’s statements in paragraphs 27 and 31 of the Sasson Reply Declaration
`
`(Exhibit 1014) related to the construction of the “compatible remote receiving station”
`
`limitation.
`
`
`
`Observation Number 5
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`
`
`In Exhibit 2014, on 48:15-49:24, Mr. Sasson provided testimony related to the
`
`construction of the “alphanumeric” limitations in claims 1, 6 and 12 of the ‘871 Patent
`
`
`
`4
`
`
`
`
`
`and the “over the cellular telephone network” and “over a wireless telephone network”
`
`limitations of claims 6 and 12 of the ‘871 Patent. In particular, Mr. Sasson, indicated
`
`that, “since numbers are the only thing that’s sent from the caller, that that was all that
`
`was needed to connect the call.” This testimony is relevant to Mr. Sasson’s statements
`
`in paragraphs 27-28 of the Sasson Reply Declaration (Exhibit 1014) related to the
`
`construction of these limitations.
`
`
`
`Observation Number 6
`
`
`
`In Exhibit 2014, on 51:12-52:4 and 54:15-57:10, Mr. Sasson provided testimony
`
`related to the construction of the “wireless communications device adapted for
`
`transmitting any of the digitized signals to the compatible remote receiving station”
`
`limitation in claim 1 of the ‘871 Patent. This testimony is relevant to Mr. Sasson’s
`
`statements in paragraph 28 of the Sasson Reply Declaration (Exhibit 1014) related to
`
`the construction of this limitation, and in particular, the proper construction of “any”
`
`contained in this limitation.
`
`
`
`Observation Number 7
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`
`
`In Exhibit 2014, on 58:23-59:24, Mr. Sasson provided testimony related to
`
`whether the preambles of claims 1, 6 and 12 of the ‘871 Patent are limiting. In
`
`particular, Mr. Sasson admitted that he provided disclosure from McNelley to allegedly
`
`
`
`5
`
`
`
`
`
`satisfy the limitations of the preamble of claim 1 of the ‘871 Patent (i.e. treated the
`
`preamble as limiting) in his original declaration (Exhibit 1008). This testimony is
`
`relevant to Mr. Sasson’s statements in paragraph 38 of the Sasson Reply Declaration
`
`(Exhibit 1014) related to whether the preambles are limiting.
`
`
`
`Observation Number 8
`
`
`
`In Exhibit 2014, on 63:4-65:21 and 67:4-68:5, Mr. Sasson testified about the
`
`construction of the “housing” limitation in claim 1 of the ‘871 Patent. Mr. Sasson
`
`confessed to not fully understanding what antecedent basis means when performing
`
`claim construction and then demonstrated this lack of understanding with respect to the
`
`various components that are contained within the same housing (i.e. an integral image
`
`capture device comprising an electronic camera, a telephonic system, processor and
`
`alphanumeric input keys) as delineated in claim 1 of the ‘871 Patent. This testimony is
`
`relevant to Mr. Sasson’s statements in paragraph 43 of the Sasson Reply Declaration
`
`(Exhibit 1014) related to the construction of the “housing” limitations and related
`
`limitations.
`
`
`
`Observation Number 9
`
`
`
`In Exhibit 2014, on 68:25-70:24; 71:10-73:22 74:17-75:20; and 75:25-76:24,
`
`Mr. Sasson testified about the construction of the “non-audio digital signals” limitation
`
`
`
`6
`
`
`
`
`
`in claim 12 of the ‘871 Patent. Despite repeated questioning about a redundancy in the
`
`claim language created by interpreting “non-audio digital signals” in the manner
`
`Petitioner suggested, Mr. Sasson refused to comment on the redundancy, simply saying,
`
`“I’m not going to make a comment on that.” This testimony is relevant to Mr. Sasson’s
`
`statements in paragraphs 46-47 of the Sasson Reply Declaration (Exhibit 1014) related
`
`to the construction of the “non-audio digital signals” limitation.
`
`
`
`Observation Number 10
`
`
`
`In Exhibit 2014, on 87:19-88:11 and 90:25-91:5, Mr. Sasson testified about the
`
`disclosure of Umezawa related to the “user interface for enabling a user to select the
`
`image data signal for viewing and transmission” limitation in claim 1 of the ‘871
`
`Patent. For example, when asked if Umezawa showed a user interface with the ability
`
`to display captured images, Mr. Sasson responded, “Let me review here. Doesn’t talk
`
`about the user interface to enable[ing] display.” Mr. Sasson also testified that “the
`
`control panel are images of button patterns that are stored in the device” and “[t]hey
`
`were not captured by electro-optical means” and that “[t]he screens are not transmitted
`
`from the device.” This testimony is relevant to Mr. Sasson’s statements in paragraph
`
`67 of the Sasson Reply Declaration (Exhibit 1014) related to the alleged disclosure of
`
`the “user interface for enabling a user to select the image data signal for viewing and
`
`transmission” limitation in Umezawa.
`
`
`
`7
`
`
`
`
`
`
`
`Observation Number 11
`
`
`
`In Exhibit 2014, on 92:22-93:16, 94:14-95:2 and 99:12-100:14, Mr. Sasson
`
`testified about the alleged disclosure in McNelley of the “selectively displaying,”
`
`“selectively transmitting,” and “selected digitized framed image” limitations in claims
`
`1, 6 and 12 of the ‘871 Patent. Mr. Sasson testified that while the original petition
`
`indicated that McNelley explicitly disclosed “the memory being accessible for
`
`selectively displaying and transmitting framed images over a wireless telephone
`
`network” limitation of claim 1 of the ‘871 Patent, paragraph 62 of his reply declaration
`
`indicated that he no longer believes that McNelley explicitly discloses selectively
`
`displaying and transmitting, but rather he is now asserting “that one skilled in the art
`
`would understand and expect that, to make the selection of a greeting, you would play it
`
`back.” Mr. Sasson further conceded that McNelley does not explicitly disclose playing
`
`back a “greeting” and that he was merely assuming that occurred during the process of
`
`designating a greeting in McNelley. This testimony is relevant to Mr. Sasson’s
`
`statements in paragraphs 62-63 and 66 of the Sasson Reply Declaration (Exhibit 1014)
`
`related to the alleged disclosure of McNelley of the “selectively displaying,”
`
`“selectively transmitting,” and “selected digitized framed image” limitations.
`
`8
`
`
`
`
`
`
`
`
`
`Observation Number 12
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`
`
`In Exhibit 2014, on 104:24-105:4; 110:1-11; and 199:23-200:2, Mr. Sasson
`
`testified about the alleged disclosure in Umezawa of the “selectively displaying,”
`
`“selectively transmitting,” and “selected digitized framed image” limitations in claims
`
`1, 6 and 12 of the ‘871 Patent. Mr. Sasson testified that the argument contained in the
`
`Petitioner’s reply brief related to the blue screen of Umezawa satisfying these
`
`limitations is “sort of a new variant” on the argument originally presented in the
`
`Petition and that there is no explicit disclosure in Umezawa that the blue screen is
`
`displayed prior to being transmitted. This testimony is relevant to Mr. Sasson’s
`
`statements in paragraphs 68-70 of the Sasson Reply Declaration (Exhibit 1014) related
`
`to the alleged disclosure of Umezawa of the “selectively displaying,” “selectively
`
`transmitting,” and “selected digitized framed image” limitations.
`
`
`
`Observation Number 13
`
`
`
`In Exhibit 2014, on 112:11-14; 114:17-20; 115:13-19; and 119:1-25, Mr. Sasson
`
`testified about the alleged disclosure in McNelley and Umezawa of the “alphanumeric”
`
`limitations of claims 1, 6 and 12 of the ‘871 Patent and the description of these
`
`limitations in the ‘871 Patent. This testimony is relevant to Mr. Sasson’s statements in
`
`paragraphs 73-78 of the Sasson Reply Declaration (Exhibit 1014) related to the alleged
`
`disclosure of McNelley and Umezawa of these limitations and paragraph 80 of the
`
`
`
`9
`
`
`
`Sasson Reply Declaration (Exhibit 1014) related to the written description of these
`
`
`
`limitations in the ‘871 Patent.
`
`
`
`Observation Number 14
`
`
`
`In Exhibit 2014, on 124:18-125:9 and 125:21-126:24, Mr. Sasson provided
`
`testimony related to the alleged disclosure in McNelley and Umezawa of the “over the
`
`cellular telephone network” limitation and the “over a wireless telephone network”
`
`limitation of claims 6 and 12 of the ‘871 Patent and the “wireless communications
`
`device adapted for transmitting any of the digitized signals to the compatible remote
`
`receiving station” limitation of claim 1 of the ‘871 Patent. For example, Mr. Sasson
`
`testified that in placing a call to a network, it may be the case that something different
`
`than a server is being used and that McNelley does not explicitly refer to a server. This
`
`testimony is relevant to Mr. Sasson’s statements in paragraphs 83-84 of the Sasson
`
`Reply Declaration (Exhibit 1014) related to the “over the cellular telephone network”
`
`limitation and the “over a wireless telephone network” limitation of claims 6 and 12 of
`
`the ‘871 Patent and the “wireless communications device adapted for transmitting any
`
`of the digitized signals to the compatible remote receiving station” limitation of claim 1
`
`10
`
`of the ‘871 Patent.
`
`
`
`
`
`
`
`
`
`Observation Number 15
`
`
`
`In Exhibit 2014, on 133:4-11; 135:13-136:3; 140:18-141:1 and 196:25-197:15,
`
`Mr. Sasson testified about the alleged disclosure in McNelley of the “handheld self-
`
`contained cellular telephone and integrated image processing system” limitation,
`
`“portable” limitation, and/or “housing” limitation of the independent claims of the ‘871
`
`Patent. For example, Mr. Sasson indicated that he believed “handheld” is any device “a
`
`human being can lift…no matter how inconvenient or cumbersome it is.” He further
`
`testified that despite the specification of McNelley indicating in two places that FIG. 9
`
`is a side view of FIG. 8 and that FIG. 8 is a modular configuration of a phone and
`
`camera, “it is very clear” that FIG. 9 is an integrated phone and camera and not a
`
`modular configuration. He further conceded, that even if FIG. 9 shows an integrated
`
`phone and camera, the resulting combination would be several times larger than just the
`
`handset alone. This testimony is relevant to Mr. Sasson’s statements in paragraph 88 of
`
`the Sasson Reply Declaration (Exhibit 1014) related to McNelley’s alleged disclosure
`
`of the “portable,” “handheld,” and/or “handheld self-contained cellular telephone and
`
`integrated image processing system” limitations of the claims of the ‘871 Patent.
`
`
`
`Observation Number 16
`
`
`
`In Exhibit 2014, on 143:7-144:7; 145:16-146:2; and 148:2-7, Mr. Sasson
`
`testified about the “non-audio digital signals” limitation of independent claim 12 of the
`
`
`
`11
`
`
`
`
`
`‘871 Patent and the disclosure of McNelley and Umezawa related to this limitation.
`
`Mr. Sasson admitted that voice protocols were used to send an image at the time of
`
`McNelley, that neither McNelley nor Umezawa specifically discuss using a non-audio
`
`digital transmission protocol for sending images and that he did not discuss the sending
`
`of images using a non-audio digital signal protocol in his original declaration. This
`
`testimony is relevant to Mr. Sasson’s statements in paragraphs 93-94 and 97 of the
`
`Sasson Reply Declaration (Exhibit 1014) related to the “non-audio digital signals”
`
`limitation and the disclosure of McNelley and Umezawa involving this limitation.
`
`
`
`Observation Number 17
`
`
`
`In Exhibit 2014, on 157:23-158:2; 158:5-14; 159:1-160:2; 160:13-15; 161:19-
`
`162:3, Mr. Sasson testified about the scope of his reply declaration. This testimony is
`
`relevant to Mr. Sasson’s statements in paragraphs 109-110 of the Sasson Reply
`
`Declaration (Exhibit 1014) and whether they go beyond the proper scope of a reply
`
`declaration.
`
`
`
`Observation Number 18
`
`
`
`In Exhibit 2014, on 165:11-166:10; 166:22-167:4; and 167:20-168:10, Mr.
`
`Sasson testified about his compensation, clients and preconceived notions about the
`
`invalidity of the ‘871 Patent. This testimony is relevant to Mr. Sasson’s potential bias
`
`
`
`12
`
`
`
`and the weight that should be afforded his testimony.
`
`
`
`
`
`
`
`By: /s/ Gregory S. Donahue
`DATED: November 20, 2015
` Gregory S. Donahue (Reg. No. 47,531)
` DiNovo Price Ellwanger & Hardy LLP
` 7000 North MoPac Expressway
` Suite 350
`
` Austin, TX 78731
` Telephone: (512) 539-2625
` Facsimile: (512) 539-2627
`
`
`Attorney for Patent Owner E-Watch, Inc.
`
`
`
`
`
`13
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
`
`of this Patent Owner’s Motion for Observation Related to Deposition Testimony of
`
`Steven J. Sasson by electronic mail on November 20, 2015 on the counsel of
`
`record for:
`
`Patent Owner:
`
`Robert C. Curfiss, bob@curfiss.com
`
`David Simmons, dsimmons1@sbcglobal.net
`
`Greg Donahue, gdonahue@dpelaw.com
`
`ZTE Corporation and ZTE (USA) Inc.:
`
`Steve Moore, steve.moore@pillsburylaw.com
`
`Richard Thill, richard.thill@pillsburylaw.com
`
`Barry Shelton, barry.shelton@pillsburylaw.com
`
`Brian Nash, nash@pillsburylaw.com
`
`Apple Inc.:
`
`Brian Buroker, bburoker@gibsondunn.com
`
`Blair Silver, bsilver@gibsondunn.com
`
`
`
`
`
`
`
`DATED: November 20, 2015 By: /s/ Gregory S. Donahue
`
`
`
`
`
`14
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