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`I N D E X
`PAGE MARKED
`DESCRIPTION
`EXHIBITS
`Ex 2007 One-page spreadsheet brought by
`witness
`15
`2008 Annotated Welch CV, SCEA Ex.
`1010
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`Page 1
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`SONY COMPUTER ENTERTAINMENT AMERICA LLC
`Petitioner
`v.
`APLIX IP HOLDINGS CORPORATION
`Patent Owner
`__________
`Case No. IPR2015-00729
`Patent 7,280,097
`Case No. IPR2015-00730
`Patent 7,932,892
`__________
`
`DEPOSITION OF DR. GREGORY F. WELCH
`VOLUME I, PAGES 1 - 178
`OCTOBER 21, 2015
`
`(The following is the deposition of DR.
`GREGORY F. WELCH, taken pursuant to agreement of
`counsel, at the Hyatt Regency Orlando International
`Airport Hotel, Orlando, Florida, commencing at
`approximately 9:08 o'clock a.m., October 21, 2015)
`
`Page 2
`
`Page 4
`
`APPEARANCES:
`On Behalf of the Petitioner:
`Abran Kean
`ERISE IP
`5600 Greenwood Plaza Boulevard, Suite 200
`Greenwood Village, Colorado 80111
`
`On Behalf of the Patent Owner:
`
`Jason Bartlett
`Mauriel Kapouytian Woods LLP
`1517 North Point Street #454
`San Francisco, California 94123
`ALSO APPEARING:
`Callie Pendergrass, Senior Technical
`Advisor, Erise IP
`
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`P R O C E E D I N G S
`(Witness sworn.)
`DR. GREGORY F. WELCH
`called as a witness, being first duly sworn,
`was examined and testified as follows:
`ADVERSE EXAMINATION
`BY MR. BARTLETT:
`Q. Good morning. Dr. Welch or Professor Welch?
`A. Dr. Welch is fine.
`Q. Dr. Welch.
`A. Thank you.
`Q. Okay. Good morning, Dr. Welch. My name is
`Jason Bartlett, counsel for patent owners, and we are
`here for your deposition in the IPRs relating to the
`'097 and '892 patents. Is that your understanding?
`A. Yes.
`MR. BARTLETT: Okay. And we have an
`understanding with counsel that this deposition will
`be used in both IPRs; correct?
`MR. KEAN: Yes, that's right.
`Q. You are --
`MR. BARTLETT: Sorry.
`MR. KEAN: Oh. You want me to state my name
`for the record? Sure. My name is Abran Kean, I'm
`with the law firm Erise IP, I'm here on behalf of
`1 (Pages 1 to 4)
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`

`
`Page 5
`Sony, and with me today is Callie Pendergrass from our
`firm as well.
`Q. You are appearing as an expert witness for
`petitioner; correct?
`A. Correct.
`Q. What do you understand --
`Can you summarize in your own words what
`your assignment was in this action?
`A. Let's see. My assignment in general was to
`discuss different technological parts of the case and
`to give my opinions, both informally and formally, and
`when the opinions were asked formally, they were very
`narrow, very specific things I was asked to offer
`opinions about, and so that's what I've done.
`Q. Okay. What were the topics that you were
`asked to address formally?
`A. They would be all of the topics that are in
`my declarations for the two patents.
`Q. What are the topics you were asked to
`address informally?
`A. I couldn't tell you. Couldn't remember.
`Q. When were you hired for these proceedings?
`A. I don't recall.
`Q. What's your best estimate?
`A. Boy, I don't know. It could be six months,
`
`Page 6
`it could be a year. I've been involved in a couple of
`IPRs, several IPRs, and so I don't even know where to
`draw the line with those. But -- I mean there's a
`record of it somewhere, but off the top of my head, I
`really don't remember.
`Q. Who hired you?
`A. I guess technically it would be Erise IP.
`I'm not sure whether it's the client or the petitioner
`or whether it's Erise.
`Q. Have you worked with Erise IP before?
`A. Yes.
`Q. On how many occasions?
`A. From memory, I think two other occasions.
`Q. Can you generally describe the nature of
`those engagements?
`A. Very generally it was -- they were, as I
`recall, IPRs. I've sort of put them out of my memory.
`As far as the specific topics, I couldn't tell you
`right now. I don't remember.
`Q. What's your best estimate of when those
`engagements began?
`A. Again, I mean my memory is -- is not -- not
`good for things like this, I just put it out of my
`mind, but boy, it could be a year and a half ago,
`could be two years ago. Probably more than a year,
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`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`Page 7
`but I wouldn't -- I can't be certain about that.
`Q.
`Is it fair to say you began working with
`Erise IP within the last two years?
`A. It's probably the case. But again, I --
`I -- I don't want to say it's fair or unfair
`because -- because I really can't remember.
`Q. And since that time you've had engagements
`in three different sets of IPRs.
`A. As I recall, that is the case, yes.
`Q.
`In all those occasions, were you testifying
`on behalf of the petitioner?
`A. I believe that would have been the case,
`that's right.
`In one of the cases, by the way, one of them
`I'm sure was an IPR. The other one I really don't
`remember it; the case kind of disappeared at some
`point and I don't remember at what stage, and I really
`don't remember much about it.
`Q. Okay. If it turns out that that other
`engagement was an IPR, would you have then been
`appearing on behalf of the accused infringer?
`A. I think that would be the case. It would
`not surprise me that that was the case, yes.
`Q. Could you please estimate how many times in
`total you've served as an expert for a patent owner?
`
`Page 8
`A. Two for sure, maybe three cases. I think
`three, but two are coming to mind right now just
`sitting here.
`Q. And can you estimate how many times in total
`you've appeared as an expert -- or I should say served
`as an expert in any capacity for an accused infringer
`or defendant?
`A. Probably roughly 10, something like that.
`But I -- but again, I -- that -- that's a -- that's a
`guess. I'd have to go back and count. Ten would not
`surprise me.
`Q. Okay. So we're up to about 12 to 13,
`roughly speaking, patent cases total; right?
`A. Again, it wouldn't surprise me. I don't
`want to be held to that because I really can't
`remember, but on the order of that, something like
`that, yeah.
`Q. Can you recall any other kinds of patent
`cases that aren't included in that 13 that you've been
`involved in?
`A. No. I mean one of them or two of them were
`ITC cases, but -- but I think, given the phrasing of
`your question, I would have -- I included those in
`that count.
`Q. Okay. Thank you.
`2 (Pages 5 to 8)
`
`

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`A. Uh-huh.
`Q. To your knowledge, have any of your opinions
`ever been rejected or excluded from evidence in a
`legal proceeding?
`A. Not that I'm aware of, no.
`Q.
`I have placed before you reports with your
`name on them, Exhibits 1009 in the IPR on the -- in
`the 729 IPR on the '097 patent, and Exhibit 1010 in
`the 730 IPR on the '892 patent. Do you have those
`before you?
`A. I do.
`Q. Are Exhibits 1009 in the 792 IPR and 1010 in
`the 730 IPR your reports?
`A. Yes, it appears that is the case.
`Q.
`I'll refer to those for clarity as the '097
`report and the '892 report. Is that okay with you?
`A. That's perfect. Thank you.
`Q. Since writing these reports, have you formed
`any new or different opinions about the '097 and the
`'892 patents?
`A. I have not, that I recall, offered any
`formal opinions since then, but my thinking on all
`aspects of all of this continues. I just stop at this
`point. So I have lots of thoughts, but no formal
`opinions that I recall.
`
`Page 10
`Q. Have you reached any new or different
`conclusions?
`A. Not broadly, I don't think so, that I can
`think of sitting here right now.
`Q. Sitting here today, can you think of any new
`opinions that you intend to offer in these proceedings
`that are not captured in your reports?
`A. Well first of all, I would offer opinions on
`anything if asked by the petitioner, so I -- I can't
`foresee what that would be specifically. Generally,
`my understanding is there are other expert reports
`from the patent owner's experts, for example, and I
`believe I might be asked to offer an opinion on those.
`Q. Have you formed any opinions about any of
`those things already?
`A. I have reactions to them. I've read two
`reports, and the names of the reports confuse me,
`whether they're replies or responses. So I do have
`reactions to them, but I wouldn't say that I've
`formed, quote, opinions.
`Q. Let's focus, then, in on just the '097 and
`'892 patents.
`A. Uh-huh.
`Q. Have you formed any new or different
`opinions about those patents since preparing these
`
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`reports?
`A. I don't think so. I don't think that my
`opinions as of the -- the opinions as stated in the
`declarations would change or have anything new.
`Again, the only opinions I might have would be
`reactions to points made by other experts or -- or the
`patent owner in general. Anybody, reactions made to
`statements by anybody.
`Q.
`I keep calling them reports. Perhaps I
`should call them declarations, so I should switch to
`that. I'm showing my federal-rules bias. So as far
`as you know -- let me start that again.
`It's fair to say, then, sitting here today,
`as far as you're aware, all of your opinions and
`conclusions that you've formed about the '097 and '892
`patents are fairly reflected in the declarations that
`are Exhibits 1009 and Exhibit 1010.
`A. So I'm not a lawyer and I don't quite
`understand the meaning of the words "opinions" or --
`but again I'll state, just in terms of legal opinions
`or specific opinions that I might offer in the future,
`I haven't reached any conclusions about any of them.
`I don't know what those would be specifically. But my
`general opinions or my opinions as expressed in my
`declarations, sitting here, have not changed, and I
`
`Page 12
`don't have in mind at this moment any particular
`additional opinions that I would offer.
`Q. Okay. So that last part I wanted to focus
`on. Because I understand you may form new opinions in
`the future if you're asked questions.
`A. Right.
`Q.
`I understand that. What I'm trying to get
`at is the opinions and conclusions that you've reached
`up to this point in this deposition, and you're saying
`as far as you're aware everything that you've come to
`a conclusion on is fairly reflected in those reports.
`A. That's right. Anything I've come to a
`conclusion on that I would feel like documenting
`formally is absolutely in these declarations, that's
`right.
`Q. Have you reached any conclusions that you
`did not feel like documenting formally on the '892 and
`the '097 patents?
`A. No, nothing that comes to mind.
`Q. Have you identified anything in these
`opinions that you wanted to change or correct -- in
`these declarations that you wanted to change or
`correct?
`A. Not that I can recall or that I can think of
`sitting here, no.
`
`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`3 (Pages 9 to 12)
`
`

`
`Page 13
`Q. What if anything do you know about the
`inventors of the '097 and the '892 patents?
`A. I don't think I know anything beyond their
`names, beyond what's stated on the faces of the
`patent, at least that I can recall.
`Q. Had you heard of any of them before this --
`before these proceedings?
`A. I don't think so, no.
`Q. Before you were retained in these
`proceedings had you ever seen either of these patents?
`A. No, I'm quite certain I had not.
`Q.
`In your declarations you offer certain
`opinions about the background of the art; correct?
`A. Yes.
`Q. And you offer certain opinions about the
`level of skill in the art of these patents; correct?
`A. That's correct.
`Q. And you offer certain opinions that certain
`combinations of art were obvious to combine; correct?
`A. At a very high level, yes, that's right.
`Q. And at a high level those are all of the
`opinions that are contained within your declarations;
`correct?
`A. As far as I could recall sitting here, that
`is correct. To be --
`
`Page 14
`You know, my declarations stand. What's in
`them is in them. If I'm sitting here not remembering
`something, that wouldn't of course preclude it, but I
`don't recall anything else.
`Q. The understanding you expressed on legal
`issues was provided to you by counsel; right?
`A. That's correct.
`Q. You do not consider yourself an authority on
`patent law; correct?
`A. That is correct.
`Q. You are offering no opinions construing
`claim terms; correct?
`A. I don't recall whether I offered opinions
`construing claim terms or not. Does not --
`In fact, I don't recall doing that, so if I
`did, I did, but I don't recall that.
`Q. You did not form any opinions on issues of
`anticipation; correct?
`A. Not that I recall.
`Q. And with respect to the '097 patent -- feel
`free to look at your declaration if you'd like --
`A. Uh-huh.
`Q.
`-- you have formed no opinions relating to
`the Shima reference; correct?
`MR. BARTLETT: While he's looking at that,
`
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`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
`1-800-553-1953
`info@stirewalt.com
`
`Page 15
`
`let's go off the record for just a minute.
`(Discussion off the record.)
`(Exhibit 2007 was marked for
`identification.)
`MR. BARTLETT: Do you want the question read
`back or do you have it in mind?
`THE WITNESS: Let's read it back just to be
`
`sure.
`
`(Record read by the court reporter.)
`A. That is correct with respect to the '097
`patent.
`I have marked as Exhibit 2007 a chart which
`Q.
`you were referring to earlier, so I'm going to hand it
`back to you. Can you just explain what the different
`columns in that chart are.
`A. Sure. The columns --
`Well the rows -- it probably makes more
`sense to describe those -- the rows are patents and
`claims, and the columns are cross-references to which
`claims are independent, where the topics were covered
`in the petition, where they're covered in my
`declaration, which is the most useful to me, where
`they're covered in the institution decision, and then
`which references -- which prior-art references are
`relevant to those particular claims. And then the
`
`Page 16
`object of this, as I stated off the record, is to help
`me better find places in my report that are relevant
`to questions that I might be asked.
`Q. Without revealing the contents of any
`communications you may have had with lawyers in this
`case, can you tell me who prepared that chart?
`A. I believe I created an initial version and
`sent it to them saying that I would like something
`that helps me better map between these things, and
`then I think someone might have cleaned it up and sent
`it back to me.
`Q.
`In Exhibit 2007, the third column in,
`there's the word "Petition," and in the first row it
`says "A/B." What does that signify?
`A. I don't remember. I don't know that I've
`ever even looked at that column. The only column I
`ever -- or columns I looked at or that I can recall
`looking at are the "Declaration" column and then the
`prior art columns.
`Q. Under the "Declaration" column in the first
`row it says "C," then in the second row "D," then "Did
`not opine," and then "E," for example. What do those
`letters mean?
`A. Those are sections in that respective
`declaration, so C in the '097 part of the chart -- or
`4 (Pages 13 to 16)
`
`

`
`Page 17
`the table is my section C in my '097 report.
`Q. Thank you.
`A. Sure.
`Q. You also have formed no opinions on
`so-called secondary considerations or objective
`indicia of non-obviousness in either of your
`declarations; correct?
`A. My memory of my declarations is that I
`documented that I was aware that those exist but was
`not aware of anything that should be considered or
`that I was asked to be considered in that respect. I
`don't recall that there's any such opinion, but I'm
`aware that there could have been.
`Q. Do you have before you Exhibit No. 1010 in
`the '097 patent IPR, which is your CV? It's Exhibit
`No. 1010 from the '097 patent --
`A. I think --
`Q.
`-- IPR.
`A. I'm sorry.
`Q. The exhibit numbers are a little different
`in the two.
`A. I see. I had forgotten that.
`Yes, I do.
`Q. And is the CV still basically current?
`A. Basically, yes. There are probably --
`
`Page 18
`In fact, I'm sure there are a few more
`publications to add and some other activities since
`February, but nothing that I would remove.
`Q. When would you say you started your career
`in the computer sciences?
`A. Wow. That would be probably high school.
`Q. What year?
`A. 1978, '79, '80, somewhere in there.
`Q. Okay. So that's a career of about 35 years
`in the computer sciences?
`A. Sure. I don't know that I love being
`reminded of that, but sounds right.
`Q. Have any --
`Has any of your experience over the last 35
`years in the computer sciences involved one in which
`you were personally involved in designing a hand-held
`game controller?
`A. I can't recall making or being a part of a
`team that developed a controller that was specifically
`for a game. However, I do recall developing
`controllers that were used for general-purpose
`interactions among which some -- several were games
`that people would play. They were general-purpose
`input devices that could be used for scientific
`visualization or just architectural walk-throughs or
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`STIREWALT & ASSOCIATES
`MINNEAPOLIS, MN
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`info@stirewalt.com
`
`Page 19
`games, a variety of things. And then there's another
`project I worked on where we developed a hand-held
`system for Marines training in the desert during live
`exercises, and so it's not really a game but it's a
`simulation of a -- of a real event.
`Q. So to summarize, you've never designed or
`been involved in designing a hand-held game controller
`specifically; correct?
`MR. KEAN: Objection.
`A. I don't recall -- and I'd have to go back
`and think more carefully, but I don't recall working
`on something that would solely be called that. I do,
`of course, recall working on things where the initial
`intent was that it would be used for games and other
`things, so game play was one of the considerations.
`Q.
`I think you referred to those as input
`devices more generally; correct?
`A. Well they were --
`They had inputs. I think one of them had,
`yeah, multiple. They did have output in them also.
`But they were hand-held devices that had buttons on
`them, had some form of feedback. Both of them that I
`can -- the two that I'm thinking of were tracked in
`six degrees of freedom, one was indoors, one was
`outdoors.
`
`Page 20
`Q. Okay. So these experiences you're talking
`about now, these relate to what you would refer to as
`hand-held input devices?
`MR. KEAN: Objection.
`A. I would call them hand-held user interaction
`devices. I don't know that I would necessarily just
`call them input because they also got output.
`Q. Hand-held user interaction devices.
`MR. KEAN: Objection.
`A. You could call them that. I mean I haven't
`thought about this long and hard, so if I was asked to
`really think about it and given the context, but I --
`I think someone could call them that, sure.
`It's a user interface device.
`Q. Hand-held user interface device.
`A. Sure, you could call it that. Again, it
`depends on the context who's calling it that, who's
`choosing the words, but certainly in some communities
`that would be a reasonable description.
`Q. Okay. Handing you a pen, could you please
`note with initials HHUI for Hand Held User Interface
`each of the experiences in your CV that related to you
`being involved in designing a hand-held user
`interface.
`A. So I will do that, but before I do that I'll
`5 (Pages 17 to 20)
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`Page 21
`state that some of the experiences aren't documented
`in here because some of them are not things we
`published, we just developed for in-house use in our
`experimental systems for use by people who visited the
`lab, by our collaborators in experiments, but we never
`published them. But I'll try and mark the ones that I
`can think of.
`Okay. I've reviewed my CV and I've
`attempted to mark items in general with HHUI as you
`asked. Some of them I marked HHUI in parentheses
`because we did things that were related, as I recall,
`to HHUI; I don't remember whether we specifically made
`a device or not. The other ones that I've marked just
`HHUI, I believe we made specific devices. Some of
`them my memory is vague, it's been a long time, but
`I've attempted to do what you asked.
`Q. Okay. So the ones in parentheses, sitting
`here today you cannot envision in your mind the
`specific hardware device that was made.
`A. No, that's not quite correct. Sorry if
`that's what I said. They are --
`This is very qualitative, I'm doing this on
`the fly, but I guess for the parenthetical HHUIs, they
`were things that either had an HHUI component to them
`that was real that we did develop but may or may not
`
`Page 22
`have been hand-held in that particular use, may have
`been set on a table or something or on a wheelchair in
`one case, or may have discussed like a publication
`where we talked about hand-held user interfaces but I
`didn't actually build something, so those are the
`HHUIs in parentheses. I believe that's what I was
`attempting to do.
`Q. So the HHUIs in parentheses are ones where
`perhaps no device was actually built or perhaps a
`device that was built was not hand-held.
`A. At least for a couple of examples where I
`did that, that would be a good description. I might
`have used it in other cases, too. I don't remember
`for whatever reason subjectively; at that moment I put
`some in parentheses and some not.
`Q. Are you saying that the ones that you were
`marked -- you marked in parentheses were just
`generally the ones you didn't feel that sure about?
`A. I guess qualitatively I would call them less
`solidly HHUI but certainly related in some way.
`Although, as I said, some of them that I think I
`marked HHUI in parentheses were publications where we
`talked about user interfaces as part of the
`publication but didn't involve actually developing
`one. And I thought that was your question.
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`Page 23
`
`Q. That was my question. Thank you.
`MR. BARTLETT: Okay. Why don't we mark that
`as Exhibit No. 2008, the annotated copy of your CV,
`which is Exhibit 1010 in the '097 IPR, please.
`A. And again, if I could, just to make sure if
`someone goes back and looks at that, you may or may
`not find publications that document some of that work
`because much of it we didn't publish. Some of it is
`published and I noted those, but some of it is work we
`did as part of research projects that, for one of many
`reasons, never made it to publication.
`Q. And therefore didn't make it onto the CV.
`A. That's correct, yeah. No more than --
`For example, I marked grants. There were
`several grants where we developed hand-held devices
`and courses where students that I worked with
`developed hand-held devices, but there's no published
`or no permanent record of that other than, you know,
`going back and digging through course records or
`something like that.
`MR. BARTLETT: You can finish the marking.
`(Exhibit 2008 was marked for
`identification.)
`BY MR. BARTLETT:
`Q. Were there any experiences relating to
`
`Page 24
`hand-held user interfaces that are too recent to have
`been included on Exhibit 2008?
`A. Not that I can recall offhand, no.
`Q. When we take a break, I'll match my copy of
`your CV to yours and ask you more about that, but why
`don't we move on now so we keep with the progress.
`Generally speaking, what did you do to
`prepare the analyses set out in your declarations?
`A. Very generally, I was given things to review
`that I reviewed. I gathered my own thoughts, made
`notes, had discussions, and then a subset of those
`things ended up in the final declaration.
`Q. How many hours would you estimate that you
`spent total on each patent?
`A. I have a hard time estimating that, again,
`because I worked on some other patents for the same
`petitioner, and I'm going to guess anywhere from 50 to
`a hundred. Could be more, could be less.
`Q. How much time did you spend writing your
`declarations on the '097 and '892 patents?
`A. It would depend what you include as
`"writing." There's a --
`For me, writing begins with a long process
`of formulating the ideas, then maybe sketching an
`outline or sketching the main topics, then there's the
`6 (Pages 21 to 24)
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`

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`Page 25
`actual sort of pen to paper, if you will, or typing,
`and then the review, so that entire process, probably
`months with some downtime in between. Clearly, I'm a
`professor, so it's work a little, don't work, work a
`little, but it would have probably carried out over a
`period of months.
`Q. How would you estimate it in terms of hours
`spent?
`A. It would be roughly the same estimate I gave
`earlier. That's primarily the only thing I've done
`for the petitioner that I can think of here other than
`reviewing some other reports, which was a couple of
`hours.
`Q. Who helped you prepare your declarations?
`MR. KEAN: Objection to the extent it calls
`for privileged information.
`MR. BARTLETT: Just asking for the names of
`people. I don't want to discover the contents of any
`communications you may have had with counsel.
`A. So it would have been the two folks sitting
`here in the room with me from the petitioner.
`Q. Anyone else?
`A. Not that I can recall.
`Q. Did you read both the '097 and the '892
`patents in their entirety?
`
`Page 26
`
`A. Yes.
`Q. Did you read the prosecution histories of
`those patents?
`A. I believe I did at one time. Not recently,
`but I believe I did.
`Q. Did you read all of the references cited in
`your declarations?
`A. Yes.
`Q. Did you read anything else that you can
`recall sitting here today?
`A. Not specifically that I can recall sitting
`here, no.
`Q. What did you do to -- again without
`discovering the contents of any attorney-client
`communications, work product communications -- what
`did you do to prepare for your testimony today?
`A. The same thing I've done before, which is to
`reread the patents, the '097 and the '892
`specifically; I reread the prior art that I cite in my
`declarations; and I reread my declarations; and we
`spent some time yesterday, I did, with the counsel for
`the petitioner discussing a few things.
`Q. About how long did you meet?
`A. I think six or six and a half hours,
`including lunch, an hour for lunch or something.
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`Q. Apart from the meeting yesterday, did you
`have any other meetings to prepare for today's
`deposition?
`A. I recall I might have had -- no, I did have
`at least one phone call, a short phone call.
`Q. Anything else?
`A. Not that I can recall sitting here.
`Q. How are you being compensated for your
`testimony today?
`A. A straight hourly rate for everything I do.
`In all of the expert-witness work I've ever done, I
`don't do anything but just charge a flat rate.
`Q. And what is that rate?
`A. It's 500, I believe, per hour.
`Q. So earlier we established that you are
`offering an opinion on the level of skill in the art
`of these patents; right?
`A. Correct.
`Q. Summarize for me what you concluded as the
`appropriate level of skill in the art at this time.
`A. So the best summary I could give you would
`be in paragraph -- I believe in paragraph 39 of my
`'097 declaration, and I believe it's the same --
`there's an identical paragraph in the '892, and I'm
`happy to read that if you like.
`
`Page 28
`Q. What were the reasons for your concluding
`that the appropriate level of skill in the art is as
`is stated in paragraph 39 of your declaration?
`A. The reasons, in fact, are stated in
`paragraph 38, the paragraph preceding my opinion about
`the person of ordinary skill. So at a high level, at
`least, they're described there. And I could read
`that, again, if you like, but it's there in paragraph
`38.
`Q. Can you just summarize for me in your own
`words?
`MR. KEAN: Object to form.
`A. My own words here from the report are that I
`considered several factors including the type of
`problems encountered, solutions to the problems,
`rapidity with which innovations are made in the field,
`sophistication of the technology, and the education
`level of active workers in the field. That's just a
`subset of what I wrote.
`And those are my words in paragraph 38 of
`the -- of my '097 declaration.
`Q. Are the words in paragraph 39 also your
`words?
`A. I believe they are.
`Q. So when you use --
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`Page 29
`
`When you said that a person of ordinary
`skill in the art would have a working knowledge of
`computers, including hand-held computing devices, and
`their processing, storage, hardware, including input
`devices and software, what did you mean by "working
`knowledge?"
`A. I mean as distinct from book knowledge or
`didactic learning that would have come primarily in
`the first item, which is an undergraduate degree in
`computer science, computer engineering, electrical
`engineering or similar technical field. So while a
`person in those -- in satisfying that first point may
`have done some course projects or may have built or
`done a few things, most of what they would have
`learned would be in lectures and reading or writing,
`whereas in two, what I mean by that is actually hands-
`on experience, so learning that came from working with
`those devices that I list there in two.
`Q. So a person with working knowledge of
`computers, including hand-held computing devices,
`their processing, storage, hardware, input devices and
`software, would have been personally working hands-on
`developing hand-held computing devices and input
`devices and software?
`MR. KEAN: Object to form.
`
`Page 30
`A. I don't know about hands-on necessarily, if
`you literally mean physically manipulating or doing
`something with hands. It could have involved working
`on, say, a project where a student or somebody was
`involved in discussions and decisions made about those
`sorts of devices or needed some knowledge --
`I mean it could have involved hardware,
`software, could have involved just intellectually
`being on a team, but -- it's a little hard to
`describe, but more than book knowledge, so maybe
`specific to a real working product or some real
`working examples of projects or products.
`Q.
`I'm having trouble following what you're
`saying as the definition of working knowledge as you
`use that, so I just want to go back over this again.
`You said that the first number, number one
`under paragraph 39, related to theoretical knowledge,
`I guess is the way of summarizing your testimony.
`MR. KEAN: Object to form.
`A. I wouldn't say "theoretical." I don't think
`I said that and I wouldn't say that. It is just more
`didactic or more-formal structured teaching or
`learning and, as I said, could involve course
`projects, could involve other activities. But it's
`very fundamental knowledge in those areas, not
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`Page 31
`specific to necessarily even computing devices much
`less hand-held computing devices.
`Q. Okay. So subpart one of paragraph 39
`relates to having been taught.
`MR. KEAN: Same objection.
`A. I would say having learned, which is
`different from having been taught. In my mind
`necessarily as a professor, I would think of it as
`slightly different. Part of what you do, the learning
`you do in one comes from didactic -- from lectures or
`from courses, some of it comes from your own
`experiences or your own side reading, but it's more
`about -- I think of one as more about the fundamental,
`basic science and engineering that is the building
`block for many other things, whether you're building
`aircraft, whether you're building flight controllers,
`whether you're building a game. That's very basic
`knowledge that's not specific to a field in general.
`Q. So it's not so much that the form of
`education wa