Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` J SQUARED, INC. d/b/a )
` UNIVERSITY LOFT COMPANY, )
` )Case IPR2015-00774
` Petitioner, )Case IPR2015-00958
` )Patent 8,585,136
` vs. )
` )
`SAUDER MANUFACTURING )Oblon Docket No.:
`COMPANY, )464032US and
` )464045US
` Patent Owner. )
`----------------------------)
`
` DEPOSITION OF ANTHONY J. WARNCKE
` Troy, Michigan
` Wednesday, January 20, 2016
`
`Reported by:
`Paula S. Raskin, CSR-4757
`JOB NO. 102144
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`1 2
`
`3
`
`4 5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`J Squared Exhibit 1027, pg. 1
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 2
`
`Page 3
`
`A P P E A R A N C E S:
`
` OBLON, MCCLELLAND, MAIER & NEUSTADT
` Attorneys for Petitioner
` 1940 Duke Street
` Alexandria, Virginia 22314
` BY: SCOTT MCKEOWN, ESQ.
` RUBY NATNITHITHADHA, ESQ.
`and
` BAHRET & ASSOCIATES
` Attorney for Petitioner
` 320 North Meridian Street
` Indianapolis, Indiana 46204
` BY: WILLIAM BAHRET, ESQ.
`
` YOUNG BASILE HANLON & MACFARLANE
` Attorneys for Patent Owner
` 3001 West Big Beaver Road
` Troy, Michigan 48084
` BY: THOMAS YOUNG, ESQ.
`
`ALSO PRESENT:
` Phil Bontrager
`
`Page 5
`
` ANTHONY J. WARNCKE
`left is Mr. Philip Bontrager, who is the
`CEO of patent owner, Sauder Manufacturing
`Company.
` MR. MCKEOWN: To my right is...
` MR. BAHRET: I'm Bill Bahret from
`Bahret & Associates in Indianapolis. I
`represent the petitioner, University Loft
`Company.
` MS. NATNITHITHADHA: My name is Ruby
`Natnithithadha, spelled
`N-A-T-N-I-T-H-I-T-H-A-D-H-A, and I work
`with Scott at Oblon.
` MR. MCKEOWN: So since you haven't
`been deposed before, you may not be
`familiar with the process. I'll just go
`over some ground rules.
` So I'll ask you some questions, and
`I'd ask that you give me audible answers,
`clear answers, because we're creating a
`transcript. So try not to nod your head or
`say uh-huh or yeah or things like that.
` If there's anything about my
`question that you're not clear on, just ask
`me to clarify, I'll be happy to do that.
`
`12
`
`34
`
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` January 20, 2016
` 1:45 p.m.
`
` Deposition of ANTHONY J. WARNCKE,
`held at the offices of Young Basile Hanlon
`& MacFarlane, PC, 3001 West Big Beaver
`Road, Suite 624, Troy, Michigan, before
`Paula Raskin, CSR-4757, a Notary Public of
`the State of Michigan.
`
`1234
`
`5
`
`678
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 4
`
`A N T H O N Y J. W A R N C K E,
` called as a witness, having been duly sworn
` by a Notary Public, was examined and
` testified as follows:
` MR. MCKEOWN: Good afternoon. Could
` you state your name for the record, please?
` THE WITNESS: Anthony J. Warncke.
` MR. MCKEOWN: My name is Scott
` McKeown. I'm an attorney for University
` Loft, and today I'll be asking you some
` questions about a declaration you submitted
` in a patent office proceeding. Do you
` understand that?
` THE WITNESS: Yes.
` How do you spell your last name?
` MR. MCKEOWN: M-C-K-E-O-W-N.
` Have you been deposed before?
` THE WITNESS: Not that I recall.
` MR. MCKEOWN: Do we need to enter
` appearances, or do you just want to copy it
` into the record?
` (Off the record at 1:46 p.m.)
` (Back on the record at 1:47 p.m.)
` MR. YOUNG: Thomas N. Young for
` patent owner and Mr. Warncke. And to my
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`2
`
`J Squared Exhibit 1027, pg. 2
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 6
`
` ANTHONY J. WARNCKE
` We can take breaks. If you need a
` break, just let me know you need a break.
` As long as there's not a question pending,
` I have no problem with stopping whenever.
` Your attorney may object to various
` issues or forms of the question, but unless
` he instructs you not to answer, you're
` expected to answer. Do you understand
` that?
` THE WITNESS: Yes.
` EXAMINATION
`BY MR. MCKEOWN:
` Q. Okay. So let me pass to you an
`exhibit that's been previously marked,
`Exhibit 2046.
` Do you recognize that exhibit?
` A. It appears to be my declaration,
`yes.
` Q. And when you say declaration, you're
`referring to the submission in the patent
`office proceedings. To be clear, that's IPR
`2015-00774 and IPR 2015-00958, correct?
` A. Yes.
` Q. Are you aware of any difference in
`
`Page 8
`
` ANTHONY J. WARNCKE
`impacting the merits or the substance, I'm not
`that interested in typos. I make them all the
`time.
` So why don't we turn to Page 2 of
`your declaration.
` Based upon this description here, it
`appears as though you've been employed by
`Sauder Manufacturing Company for roughly 16
`years. Is that correct?
` A. Exactly 16 and a month.
` Q. And your current position is what?
` A. The title is director of product
`development.
` Q. And what does director of product
`development entail?
` A. A number of things. Including
`amongst that is direct responsibility for
`product engineering, engagement in management
`of the product portfolio, assisting in the
`movement of projects through our process.
` Q. How long did you spend preparing
`this declaration?
` A. That would be difficult to say.
`My -- I harken back to writing term papers for
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 7
`
` ANTHONY J. WARNCKE
`the declarations, or are they basically the
`same?
` So there's two proceedings. Did you
`do two different declarations or just one that
`serves in both proceedings?
` A. I have one declaration document, and
`as you'll find within the preparation here, I
`addressed the two different cases separately.
` Q. Okay. So I'll just refer to your
`declaration, and to the extent we get into any
`issues that are unique to one IPR over another,
`I'll point that out or you feel free to point
`that out as well.
` A. Okay.
` Q. So Page 30, on the back of the
`declaration, that is your signature, correct?
` A. Yes.
` Q. Has anything changed since you've
`signed this declaration that you want to update
`or clarify before we start?
` A. I don't know if anything changed. I
`did, in reading through this yesterday, notice
`a typo. If I can find that, I'll point it out.
` Q. No need. If it's -- if nothing's
`
`Page 9
`
` ANTHONY J. WARNCKE
`college, and that's been a number of years ago,
`but my modus operandi there has always been to
`work in fits and starts.
` Q. So you worked on this over a period
`of time?
` A. Correct.
` Q. Do you know roughly when that
`time frame would have occurred?
` A. The last of it concluded with my
`signature.
` Q. Sure.
` A. I can't recall exactly when it would
`have started.
` Q. Was it weeks? Months?
` A. Weeks.
` Q. Do you know how much time total you
`would have spent on start to finish creating
`this declaration?
` A. I'm trying to sum it up.
` All told, maybe a couple weeks.
` Q. And did you draft all of the text in
`this declaration?
` A. Yes.
` Q. Before you signed this declaration,
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`3
`
`J Squared Exhibit 1027, pg. 3
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 10
` ANTHONY J. WARNCKE
`were there intermediate drafts that you
`created?
` A. Well, as I said a moment ago, I tend
`to work in fits and starts, which means I'm
`jotting notes down on pieces of paper and at
`some point then compile them and wordsmith
`them, if you will. My jots and notes I don't
`end up keeping once they're captured in
`typewritten form.
` Q. Did you work with anyone to create
`this declaration?
` A. No.
` Q. Did you work with an attorney to
`create this declaration?
` A. Tom here -- as you know, I've never
`been deposed before. You might be able to
`conclude that I've never been party to an IPR
`before, and so of course I needed some
`direction as to format and the type of areas
`that need to be addressed to be complete for
`your sake and for the whole process sake.
` Q. Did you work with anyone else other
`than the attorney?
` A. No.
`
`Page 12
`
` ANTHONY J. WARNCKE
`chair with no -- none of the novel features and
`functions that are in this '136 patent.
` Q. And when was that?
` A. I can't say exactly. Perhaps two to
`three years after the launch of Trey.
` Q. Did you discuss your declaration
`with Mr. Harting at any point?
` A. No.
` Q. And I presume you know Mr. Bontrager
`at the other end of the table.
` A. Of course.
` Q. Did you discuss your declaration
`with Mr. Bontrager at any point?
` A. He was quite interested that I was
`continuing to make progress on both end
`deliverables to meet.
` Q. And just so the record's clear, who
`is Mr. Bontrager?
` A. Sorry if I don't know the exact
`title, but essentially CEO, president of Sauder
`Manufacturing Company.
` Q. What did you do to prepare for your
`deposition today?
` A. Certainly got a good night's sleep.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 11
`
` ANTHONY J. WARNCKE
` Q. Did you communicate any work product
`or drafts to anyone other than Mr. Young?
` A. I have three teenage boys, and I
`like to keep them informed about what it is
`that my work includes, so yeah, they read
`those.
` Q. Did you save any of those drafts?
` A. No, sir.
` Q. Do you know David Harting?
` A. Yes.
` Q. Who is he?
` A. Dave is a former partner in the
`design firm Eleven from Boston.
` Q. And how do you know him?
` A. Through our work together in the
`area of student room housing, and of course
`through the development of the Trey chair.
` Q. Do you still work together?
` A. We have not, since -- no. I guess
`I'll leave it there. We have not.
` Q. When was the last time you worked
`together?
` A. We launched a derivation, if you
`will, of the Trey chair that is strictly a task
`
`Page 13
` ANTHONY J. WARNCKE
` Q. Did you meet with anybody?
` A. I was here yesterday.
` Q. Who did you meet with?
` A. I traveled here at the same time
`that Mr. Bontrager and Mr. Harting did. I was
`here to meet with Mr. Young.
` Q. Did you meet with anyone other than
`Mr. Young?
` A. Yeah, the four of us were together.
` Q. So you, Mr. Young, Mr. Bontrager,
`and who else?
` A. Mr. Harting.
` Q. Anyone on the telephone?
` A. No.
` Q. And how long did you meet yesterday?
` A. Several hours.
` Q. All day or...
` A. No.
` Q. Did you review any materials in
`preparation for today?
` A. I've learned that lawyers' hours
`don't start at the beginning of the day, so
`"all day" is a relative term, I suppose.
` Q. Sure, fair enough. But a couple
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`4
`
`J Squared Exhibit 1027, pg. 4
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 14
`
` ANTHONY J. WARNCKE
`hours, you said?
` A. Uh-huh.
` Q. And did you review any materials in
`preparation for your deposition?
` A. I had the chance to reread my
`declaration to Mr. Young to help refamiliarize
`myself with its contents.
` Q. Any other materials?
` A. Well, in the time since I've arrived
`here, I've read through all the prior art
`references in the petitioner's list there.
`I've of course read through my own declaration.
`I've reread the Patent Review Board's -- what
`is it? -- preliminary decision.
` Q. Anything else?
` A. Wall Street Journal.
` Q. But nothing else in preparation for
`today?
` A. Not that I recall, no.
` Q. On Page 3 of your declaration, about
`looks like four paragraphs down, you
`mentioned --
` A. I have line numbers. Would you like
`to reference those?
`
`Page 16
` ANTHONY J. WARNCKE
`don't -- now that I think more deeply about it,
`no, I don't believe so.
` Q. Let's look at Page 5 of your
`declaration. Line 84 there's a sentence which
`reads:
` "After all the components necessary
`for the creation of a basic low-cost task
`chair-tilt/swivel mechanisms, height adjustable
`gas springs, five-star chair bases with
`casters, and even basic seat and back cushions
`were all available to chair manufacturers in
`the open marketplace from East Asian
`suppliers."
` Do you see that sentence?
` A. Yes, I do.
` Q. Is that generally referring to the
`features of Figure 2?
` A. Yes.
` Q. So prior to the efforts to design
`the Trey chair, it was known that low-cost task
`chairs had these features that are mentioned in
`that sentence. Is that correct?
` A. I believe that's what I've asserted
`in this declaration, yes.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 15
` ANTHONY J. WARNCKE
` Q. Yeah, sorry. So the paragraph
`beginning about Line 41.
` A. Uh-huh.
` Q. You're discussing a PlyLok family of
`chairs. What is that?
` A. It's exactly what's referenced in
`Exhibit 2047.
` Q. Is that an image, do you recall, or
`is that a description of what it is?
` A. It's what we call a self spec sheet,
`so it presents a statement of line, dimensions,
`features, selling points.
` Q. And what are they constructed of,
`those chairs?
` A. The frames are wood.
` Q. And those chairs are -- they do not
`have casters, is that correct, or wheels to
`move them?
` A. As a matter of a standard product
`offering, no.
` Q. Were they ever offered with those
`options?
` A. As a business, we often respond to
`special requests from customers, and -- no, I
`
`Page 17
` ANTHONY J. WARNCKE
` Q. Let's move on to Page 8. Line 154
`there, you reference contract chairs. Could
`you provide a little more explanation of what a
`contract chair is?
` A. Contract, in my experience, is a
`term of the art or term of the industry, if you
`will. I would contrast it with residential
`furniture.
` Contract product is sold to
`professional buyers who may or may not be the
`direct users of the furniture. And I can't
`speak to the origins of the exact term, but
`those are the distinctions I make.
` Q. So this would be chairs sold
`pursuant to someone's contractual
`specifications. Is that right?
` A. Yes.
` Q. So, for example, things like
`warranty requirements or safety requirements,
`color, things like that, would be part of a
`contract chair deal?
` A. Part of --
` Q. So you're saying it's a contract
`chair, so presumably someone is contracting to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`5
`
`J Squared Exhibit 1027, pg. 5
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 18
`
` ANTHONY J. WARNCKE
`buy a chair with specific specifications,
`right?
` A. Correct, whether those
`specifications are provided by us, by them, or
`a combination thereof.
` Q. And the Trey chair, as you refer to
`it in your declaration, was that a contract
`chair -- or I should say is that a contract
`chair?
` A. It's sold under the conditions that
`I've described contract as, yes.
` (Off the record at 2:05 p.m.)
` (Back on the record at 2:06 p.m.)
` Q. The exhibit I'm handing you has been
`previously marked 1003. Do you recognize that?
` A. Yes.
` Q. And what is that exhibit?
` A. Patent Number 794,461.
` Q. And is that the patent you refer to
`in your declaration as the Mackey patent?
` A. Yes.
` Q. And looking at Page 20 of your
`declaration, there's a section under a
`subheading "Anticipation by Mackey of the '136
`
`Page 20
`
` ANTHONY J. WARNCKE
`design purpose with respect to Mackey and the
`Sauder Trey chair. So --
` A. What I've stated above beginning on
`Line 421:
` "It is my understanding that for
`prior art patent to quote/unquote anticipate
`our patent, the prior art must cover exactly
`what we've patented."
` Q. Right. And when you say what you've
`patented, what do you mean by that?
` A. Contents of the '136 patent.
` Q. The contents of the patent or the
`contents of the claims?
` A. I believe it's the claims that are
`at issue.
` Q. So going back to that last sentence,
`you're talking about a design purpose.
` Is there a design purpose recited in
`claims of the '136 patent?
` A. My understanding as of PHOSITA would
`be that the claims are viewed through light of
`the entire reading of the patent.
` (Off the record at 2:09 p.m.)
` (Back on the record at 2:10 p.m.)
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 19
`
` ANTHONY J. WARNCKE
`Claims 1, 2, 4, 5, 8, 10 and 11." Do you see
`that?
` A. Yes.
` Q. Towards the bottom of that page,
`reading sort of the last half of that last
`sentence there, it states:
` "There should be little doubt that
`these chairs were designed for completely
`different purposes."
` And you appear to be discussing
`these chairs being the Sauder Trey chair and
`the chair described by the Mackey reference.
`Is that correct?
` A. Yes.
` MR. YOUNG: If I might add, we are
` now in the 774 IPR specific issues.
` MR. MCKEOWN: Sure, fair enough.
` Q. Do you understand anticipation to
`require the same design goal?
` A. Could you clarify or expound
`further?
` Q. Sure. So on Page 20 you appear to
`provide a discussion of anticipation by Mackey,
`and you make the point that there's a different
`
`Page 21
` ANTHONY J. WARNCKE
` Q. So do you understand the claims to
`require a design purpose then?
` A. I'm sorry. May I have a copy of the
`'136 patent?
` Q. Sure. And that's Exhibit 1001, I
`believe. Yes.
` A. I'm sorry. I should have written
`down some notes on your question. Could you
`ask it again, please?
` Q. Sure. So going back to Page 20 of
`your declaration, you're distinguishing the
`design purpose of Mackey with that of the '136
`patent.
` So the question is, where is the
`design purpose recited in the claims of the
`'136 patent?
` A. Design purpose, as I believe you're
`referring to it, can be taken a couple ways.
` If you're referring to whether or
`not it's used in a college -- but it's saying
`college-aged students; that's referenced
`earlier in the patent language, the
`specification. And I think by the types of use
`described here, it's clear that the claims and
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`6
`
`J Squared Exhibit 1027, pg. 6
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 22
` ANTHONY J. WARNCKE
`the type of use shared in those claims are
`completely different than the application
`described by Mackey.
` Mackey claims itself as being used
`for small children, and I would argue that
`small children cannot use the functions as
`described in claims.
` Q. So just looking at Claim 1, is there
`a limitation on who can use this chair?
` A. Explicitly, no.
` Q. But you interpret them to require
`one?
` A. Require one what?
` Q. To a limitation as to the type of
`user.
` A. What I interpret is that the type of
`user described is different from the type of
`user described in Mackey.
` Q. So the type of user described in the
`'136 patent is different. And to be clear, the
`specification of the '136 patent is different
`than the user that's described in the Mackey
`patent. Is that what you're saying?
` A. Yes.
`
`Page 24
` ANTHONY J. WARNCKE
`those two things is in parens "stool."
` Q. Uh-huh.
` A. Stool is a term of the art. It
`refers to an armless and backless seating
`surface, if I recall correctly.
` Q. And is that definition --
` A. I'm not done.
` Q. Sorry.
` A. Yes. Line 50 of the Mackey patent
`says -- well, let me start at Line 49:
` "When the upper part is removed, the
`lower part serves as an ordinary seat, the
`extension 4 forming a sufficient back
`therefore."
` And so my definition -- and it's not
`mine. I believe it's undergirded by the Review
`Board's preliminary decision that a stool in
`the normal art, ordinary art, does not have a
`back, and Mackey refers to that having a back.
` Q. You would agree that Mackey
`describes that the base serves as a seat,
`though. Is that correct?
` A. An ordinary seat, yes.
` Q. Do the claims of the '136 patent
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 23
`
` ANTHONY J. WARNCKE
` Q. But you agree that there is no
`explicit requirement and a specific type of
`user in the claims of the '136 patent.
` A. Explicit? No.
` Well, I agree that there is not
`explicitly.
` Q. Let's just clear it up. So you
`agree that there's no explicit requirement in
`the claims for a specific type of user.
` A. Yes.
` Q. Take a look at Page 22 of your
`declaration, right around Line -- well, at Line
`463 on Page 22, there's a sentence that begins:
` "The raised lip around the top of
`the two-drawer base portion and the extension 4
`at its rear edge prevent the top from being a
`respectable or comfortable seating surface
`(stool), and also would interfere with its use
`as a work or writing surface."
` Do you see that?
` A. I do.
` Q. What do you mean by respectable or
`comfortable seating surface?
` A. Well, as you noted, directly behind
`
`Page 25
` ANTHONY J. WARNCKE
`require any degree of, as you stated, comfort
`or respectability?
` A. It calls for a stool.
` Q. And you said that stool means it
`must be backless. Is that right?
` A. I said the term in the ordinary art
`means that it's backless and armless.
` Q. And where is that definition coming
`from?
` A. I'm sorry. Do you have a copy of
`the Board's preliminary decision on the '774
`patent?
` Q. That one's clean.
` A. Actually, I don't know that I need
`to reference this. I think term "ordinary in
`the art" is understood by someone who's of
`ordinary skill in the art, and I believe that's
`what I've asserted I am.
` Q. Okay. But I guess I'm asking, is
`there a description in the '136 patent of stool
`meaning that it has no back, or in the
`institution decision for that matter?
` A. I'm sorry. Was that part of your
`question?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`7
`
`J Squared Exhibit 1027, pg. 7
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 26
`
` ANTHONY J. WARNCKE
` Q. Yes. I guess I'm asking, is the
`definition that this stool be backless come
`only from your knowledge of one of skill in the
`art, or is it explicitly explained in the '136
`patent or in the institution decision?
` THE WITNESS: Could you read back
` his question, please?
` (Record read by the reporter at
` 2:23 p.m.)
` A. I think in referencing the '136
`patent, one need only look at the Figures 20,
`21 to recognize that what is referred to as a
`stool does not have a back or arms.
` Q. But is there an explanation in the
`'136 patent that that must be the case?
` A. A patent is inclusive of both the
`written word and the figures, is it not?
` Q. Well, I'm asking you where the
`writing is.
` A. And I'm saying that the writing and
`the figures are intertwined.
` Q. So you're saying that everything
`that's in the figures that you identified must
`necessarily be in the claims?
`
`Page 28
`
` ANTHONY J. WARNCKE
` A. Are they one and the same?
` Q. Yes, it's the same thing.
` Do you recognize that document?
` A. Are you suggesting I should
`recognize that the entire compilation here is
`as I would have known it to be?
` Q. Have you reviewed any aspect of that
`previously?
` MR. YOUNG: Well, which question do
` you want him to answer?
` Q. Well, let's start with the first
`one. Do you recognize the document?
` A. I've learned enough through my life
`experience that to suggest that I know the
`entirety of this document by looking at the top
`three pages of what appear to be 50 or more,
`that I can't conclusively answer that question.
` Q. Do you recognize any aspect of that
`document?
` A. It appears to be a patent
`application on a continuation patent. I don't
`know if "continuation" is the right word or --
`I see it notes Jeff Jameson, Tom Hagerty, and
`me as applicants.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 27
`
` ANTHONY J. WARNCKE
` A. No, I didn't say that.
` Q. Okay. So is there an explicit
`explanation anywhere in the '136 patent that a
`stool cannot have a back?
` A. I'm sorry. Repeat that?
` Q. Is there any explicit description in
`the '136 patent that a stool as used in this
`patent cannot include a stool with a back?
` A. When you say explicit, I take that
`to mean exactly what you've said, and I've not
`found those words.
` Q. Okay. How did you go about
`construing the claims of the '136 patent?
` A. Through the lens of the patent as a
`whole.
` Q. What does that mean?
` A. I believe it means similar to what
`the Review Board stated in their own opinion.
` Q. Let me ask you a question first.
` (Off the record at 2:27 p.m.)
` (Back on the record at 2:28 p.m.)
` Q. Pass you an exhibit that is marked
`1013 in the 774 proceeding and 1008 in the 958
`proceeding.
`
`Page 29
`
` ANTHONY J. WARNCKE
` Q. Have you seen that document
`previously?
` A. It's been a number of years, but I
`believe I have.
` Q. Did you review it before you
`prepared this declaration?
` A. I've not reviewed it recently, no.
` Q. So just so we're clear, you did not
`review that document in order to construe the
`claims of the '136 patent.
` A. Well, here again you refer to the
`document, and for me to answer with confidence
`accurately, I'll have to look more deeply as to
`what this contains.
` Q. How long will that take?
` A. How many pages do you believe there
`to be?
` Q. Well, I'm asking you if you reviewed
`the document.
` A. And I'm saying to you I can't tell
`you without looking at the document to say --
` Q. Okay. Then I need you to review
`every page.
` MR. YOUNG: Do you want to take a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`8
`
`J Squared Exhibit 1027, pg. 8
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 30
`
` ANTHONY J. WARNCKE
` break while he does that?
` MR. MCKEOWN: Sure.
` (Recess taken at 2:32 p.m.)
` (Back on the record at 2:48 p.m.)
`BY MR. MCKEOWN:
` Q. Getting back to the document that
`you have in front of you, which is 1013 in the
`774 proceeding and Exhibit 1008 in the 958
`proceeding, did you review that document in
`preparation -- well, strike that.
` Did you review that document prior
`to preparing your declaration?
` A. No.
` Q. I'm handing you an exhibit marked
`1022, which is an annotated version of Claim 1,
`and I'll represent to you that these
`annotations were made by Mr. Harting this
`morning to express his understanding of
`Claim 1. And I just want to understand if you
`agree or disagree with his understanding of
`Claim 1.
` So we'll start at the top of
`Exhibit 1022. The claim reads, "A combination
`of a," and Mr. Harting had inserted desk or
`
`Page 32
`
` ANTHONY J. WARNCKE
` Q. The next annotation appears under
`the terminology "releasably engage," and it's
`written in there, "Locked together in a
`receptacle."
` Do you agree that that's a
`requirement of Claim 1?
` A. I believe the Review Board in their
`preliminary decision said that engage means
`locked together.
` Q. And as to the language "in a
`receptacle"?
` A. Well, I think I'd look at the claim
`in its entirety, and in the following paragraph
`it refers to coupled. And, again, referencing
`the Board's preliminary decision in this 774
`IPR, they say coupled means joined together via
`receptacle and insert.
` Q. So are you agreeing that that's a
`requirement of Claim 1?
` A. That what is?
` Q. Locked together in a receptacle.
` A. Again, I'll revert to the language
`that has been provided by the Patent Review
`Board. Coupled means a receptacle and an
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 31
` ANTHONY J. WARNCKE
`task chair.
` Do you read Claim 1 to require a
`desk or task chair?
` A. Am I commenting on Mr. Harting's
`assumption?
` Q. Yes. I'm asking if you agree with
`that construction.
` A. I do.
` Q. So the next annotation gets to stool
`base, which Mr. Harting has written in
`"armless, backless, with a flat surface and
`appropriate legs."
` Do you agree that Claim 1 also
`requires these features?
` A. You've already asserted that the
`accepted definition for a stool is armless and
`backless. "Flat" is a relative term, whether
`that means planar or it means in orientation of
`that plane. And appropriate legs, I can't
`hazard to guess what he meant by appropriate
`legs.
` Q. But you would agree with him as to
`armless and backless?
` A. Yes.
`
`Page 33
` ANTHONY J. WARNCKE
`insert. The insert in this case is the saddle.
` Q. Right. I'm --
` A. Releasably engaged means locked
`together. With those two things said as
`precursors, then I can reach that conclusion.
` Q. Okay. So that's a yes, you agree
`with Mr. Harting as to locked together in a
`receptacle?
` Is that a yes?
` A. Was that a question?
` Q. Yes. Just so we're clear, the
`language "locked together in a receptacle" is
`written on Exhibit 1022. Do you agree with
`Mr. Harting that that is a limitation of
`Claim 1?
` A. 1022 is what?
` Q. Yeah, it's at the bottom. It's the
`exhibit number.
` A. Now you've got me confused.
` Q. So Exhibit 1022 is an annotated
`version of Claim 1 with certain language that
`was added by Mr. Harting to convey his
`understanding of the requirements of Claim 1.
` So looking specifically at the
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`9
`
`J Squared Exhibit 1027, pg. 9
`J Squared vs. Sauder
`IPR2015-00958
`
`

`
`Page 34
`
` ANTHONY J. WARNCKE
`language about three paragraphs down, he's
`added the language under