Paul Beard - February 11, 2016
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________________
`
`APPLE INC. AND MOTOROLA MOBILITY, LLC )
`
`Petitioners )
`
` v. )
`
`GLOBAL TOUCH SOLUTIONS, LLC )
`
`________________________________________)
`
`Inter Partes Review No. IPR2015-01171 )
`
` No. IPR2015-01174 )
`
` No. IPR2015-01175 )
`
`________________________________________)
`
`(Captions Continued)
`
` DEPOSITION OF PAUL BEARD
`
` Menlo Park, California
`
` Thursday, February 11, 2016
`
`Reported by:
`
`JANIS JENNINGS
`
`CSR No. 3942, CLR, CCRR
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`GLOBAL EX. 2001
`Apple Inc., et al. v. Global Touch Solutions, LLC
`IPR2015-01175
`
`
`
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________________
`
`APPLE INC. AND MOTOROLA MOBILITY, LLC )
`
`Petitioners )
`
` v. )
`
`GLOBAL TOUCH SOLUTIONS, LLC )
`
`________________________________________)
`
`Inter Partes Review No. IPR2015-01171 )
`
` No. IPR2015-01174 )
`
` No. IPR2015-01175 )
`
`________________________________________)
`
`(Captions Continued)
`
` DEPOSITION OF PAUL BEARD
`
` Menlo Park, California
`
` Thursday, February 11, 2016
`
`Reported by:
`
`JANIS JENNINGS
`
`CSR No. 3942, CLR, CCRR
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`GLOBAL EX. 2001
`Apple Inc., et al. v. Global Touch Solutions, LLC
`IPR2015-01175
`
`
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`Paul Beard - February 11, 2016
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`Page 2
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________
`
`APPLE INC., MOTOROLA MOBILITY, LLC, AND )
`
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC. )
`
`Petitioners )
`
` v. )
`
`GLOBAL TOUCH SOLUTIONS, LLC )
`
`__________________________________________)
`
`Inter Partes Review No. IPR2015-01172 )
`
` IPR2015-01173 )
`
`__________________________________________)
`
`(Captions Continued)
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`Paul Beard - February 11, 2016
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________________
`
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC. )
`
`and APPLE INC. )
`
`Petitioners )
`
` v. )
`
`GLOBAL TOUCH SOLUTIONS, LLC )
`
`__________________________________________)
`
`Inter Partes Review No. IPR2015-01603 )
`
`__________________________________________)
`
` DEPOSITION OF PAUL BEARD, taken on behalf of
`
` the Patent Owner, at LATHAM & WATKINS LLP, 140 Scott
`
` Drive, Menlo Park, California, beginning at 9:10 a.m.
`
` on Thursday, February 11, 2016, before Janis Jennings,
`
` Certified Shorthand Reporter No. 3942, CLR, CCRR.
`
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`
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`Paul Beard - February 11, 2016
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`Page 4
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` A P P E A R A N C E S
`
` For Patent Owner:
`
` SUGHRUE MION, PLLC
`
` 2100 Pennsylvania Avenue, NW
`
` Washington, DC 20037-3213
`
` 202.663.7386
`
` BY: FADI N. KIBLAWI, ESQ.
`
` fkiblawi@sughrue.com
`
` ROBERTS MLOTKOWSKI SAFRAN & COLE P.C.
`
` 7918 Jones Branch Drive
`
` Suite 510
`
` McLean, Virginia 22102
`
` 512.576.5166
`
` BY: NATHAN CRISTLER, ESQ.
`
` ncristler@cristlerip.com
`
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`Paul Beard - February 11, 2016
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`Page 5
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` A P P E A R A N C E S (continued)
`
` For Petitioner Apple Inc.:
`
` LATHAM & WATKINS LLP
`
` 140 Scott Drive
`
` Menlo Park, California 94025-1008
`
` 650.328.4600
`
` BY: GABRIEL S. GROSS, ESQ.
`
` gabe.gross@lw.com
`
` SEAN FERNANDES, ESQ.
`
` sean.fernandes@lw.com
`
` For Petitioner Toshiba America Information Systems:
`
` FINNEGAN, HENDERSON, FARABOW, GARRETT &
`
` DUNNER, LLP
`
` 901 New York Avenue, NW
`
` Washington, DC 20001-4413
`
` 202.408.4000
`
` BY: LUKE J. MCCAMMON, ESQ.
`
` luke.mccammon@finnegan.com
`
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`Paul Beard - February 11, 2016
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`Page 6
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` I N D E X
`
` WITNESS EXAMINATION
`
` PAUL BEARD
`
` BY MR. KIBLAWI 9, 222
`
` BY MR. CRISTLER 187
`
` BY MR. GROSS 203, 235
`
` * * * * * * *
`
` QUESTIONS NOT ANSWERED
`
` PAGE LINE
`
` 35 13
`
` * * * * * * *
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`Paul Beard - February 11, 2016
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`Page 7
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` E X H I B I T S
`
` NUMBER DESCRIPTION PAGE
`
` Exhibit 1 United States Patent No. 7,994,726 14
`
` Exhibit 2 Declaration of Paul Beard in Support 15
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 7,994,726
`
` Exhibit 3 Curriculum Vitae of Paul F. Beard 86
`
` Exhibit 4 United States Patent No. 5,898,290 126
`
` Exhibit 5 United States Patent No. 5,712,795 195
`
` Exhibit 6 Declaration of Paul Beard in Support 202
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 7,329,970
`
` Exhibit 7 Declaration of Paul Beard in Support 202
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 7,498,749
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`Paul Beard - February 11, 2016
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`Page 8
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` E X H I B I T S (continued)
`
` NUMBER DESCRIPTION PAGE
`
` Exhibit 8 Declaration of Paul Beard in Support 202
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 7,781,980
`
` Exhibit 9 Declaration of Paul Beard in Support 202
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 8,288,952
`
` Exhibit 10 Declaration of Paul Beard in Support 202
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 7,498,749
`
` Exhibit 11 Declaration of Paul Beard in Support 202
`
` of Petition for Inter Partes Review
`
` of U.S. Patent No. 7,265,494
`
` Exhibit 12 United States Patent No. 5,710,728 213
`
` * * * * * * *
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`MENLO PARK, CALIFORNIA; THURSDAY, FEBRUARY 11, 2016;
`
` 9:10 A.M.
`
` * * * * * * *
`
` PAUL BEARD,
`
` The witness herein, was sworn and
`
` testified as follows:
`
` * * * * * * *
`
` EXAMINATION
`
`BY MR. KIBLAWI:
`
` Q. Good morning, Mr. Beard. 09:10
`
` A. Good morning. 09:10
`
` Q. My name is Fadi Kiblawi, we just met a few 09:10
`
`minutes ago when you walked in. I'm an attorney 09:10
`
`representing the Patent Owner in a number of IPRs, 09:10
`
`Global Touch Solutions, for a number of inter partes 09:10
`
`reviews before the USPTO in cases dealing with, as 09:10
`
`you both are well aware, Apple, Motorola, and some 09:11
`
`of them also dealing with Toshiba. 09:11
`
` So I guess to start, would you please, for 09:11
`
`the record, state your name and spell it. 09:11
`
` A. Paul Frank Beard, P-a-u-l, F-r-a-n-k, 09:11
`
`B-e-a-r-d. 09:11
`
` Q. Okay. Thank you. 09:11
`
` Now, we're here this morning to talk about a 09:11
`
`total of seven inter partes reviews that deal with, 09:11
`
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`Paul Beard - February 11, 2016
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`I believe, a total of six U.S. patents. 09:11
`
` Is that your understanding? 09:11
`
` A. That's my understanding, yes. 09:11
`
` Q. Okay. Among these seven is U.S. Patent 09:11
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`No. 7,994,726, that is the subject of an IPR that's 09:11
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`been assigned case number IPR 2015-01171 before the 09:11
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`U.S. Patent and Trademark Office. 09:11
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` Is that your understanding? 09:11
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` MR. GROSS: Object to the form. 09:11
`
` THE WITNESS: I don't -- I can't verify the 09:11
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`numbers. I don't have them in front of me. 09:11
`
`BY MR. KIBLAWI: 09:11
`
` Q. Okay. Well, I'll refer to U.S. Patent 09:11
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`No. 7,994,726 as the '726 patent. Is that 09:12
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`understandable to you? 09:12
`
` A. That is fine with me. 09:12
`
` Q. Okay. Additionally, among the seven 09:12
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`patents we're here to talk about, is U.S. Patent 09:12
`
`No. 7,781,980, which I'll refer to as the '980 09:12
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`patent. 09:12
`
` Is that understandable to you? 09:12
`
` A. That's understandable. 09:12
`
` Q. Okay. And we're also here to talk about 09:12
`
`U.S. Patent No. 8,288,952 that is the -- that I will 09:12
`
`refer to as the '952 patent. 09:12
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`Paul Beard - February 11, 2016
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` Is that understandable to you? 09:12
`
` A. That's understandable. 09:12
`
` Q. Okay. So before we begin, I'd like to just 09:12
`
`take a few minutes to go through some preliminary 09:12
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`items. Are you suffering from any medical problems 09:12
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`or taking any medications that might affect your 09:12
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`ability to answer questions today accurately and 09:12
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`completely? 09:12
`
` A. No. 09:12
`
` Q. Great. Okay. And do you understand you're 09:12
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`testifying under oath today? 09:12
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` A. Yes, I do. 09:12
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` Q. Okay. And as we go through the day, I'll 09:12
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`ask a question, and if there is something about my 09:12
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`question that you don't understand or that's vague, 09:13
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`please feel free -- would you please let me know 09:13
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`that and I will repeat the question and reword it in 09:13
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`a manner that may be understandable to you? Is that 09:13
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`okay with you? 09:13
`
` A. That's okay with me. 09:13
`
` Q. Great. And are you represented today by 09:13
`
`counsel? 09:13
`
` A. I am. 09:13
`
` Q. Okay. And now, probably during the day at 09:13
`
`some points, probably frequently, and you just saw 09:13
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`Paul Beard - February 11, 2016
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`it a minute ago, your counsel may object to one of 09:13
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`the questions, and the way this works today is that 09:13
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`you as the witness are to answer the question unless 09:13
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`specifically directed by your attorney or your 09:13
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`counsel not to. 09:13
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` Do you understand that? 09:13
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` A. I understand that. 09:13
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` Q. Okay. Great. Now, have you ever been 09:13
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`deposed before? 09:13
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` A. Yes. 09:13
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` Q. Okay. Do you recall how many times you have 09:13
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`been deposed? 09:13
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` A. About six times. 09:13
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` Q. Okay. And can you tell us the cases that 09:13
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`you were deposed in? 09:13
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` MR. GROSS: Object to the form. 09:13
`
` THE WITNESS: Yes. 09:13
`
`BY MR. KIBLAWI: 09:14
`
` Q. Well, can you give us an example -- well, 09:14
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`were any of the cases -- let me reword that. 09:14
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` Were any of the cases for which you were 09:14
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`deposed patent cases or cases involving an assertion 09:14
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`of a U.S. patent? 09:14
`
` A. Yes. 09:14
`
` Q. Okay. And how many patent cases have you 09:14
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`Paul Beard - February 11, 2016
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`been involved in, in which you were deposed? 09:14
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` A. Five. 09:14
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` Q. Okay. So you have been deposed five times 09:14
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`in five different cases involving U.S. patents? 09:14
`
` A. No. 09:14
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` Q. Okay. How many cases involving U.S. 09:14
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`patents? Different cases involving U.S. patents 09:14
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`have you been deposed in? 09:14
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` A. Different would be four. 09:14
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` Q. Four. And did you serve as an expert 09:14
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`witness in those four cases, in any of those four 09:14
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`cases? 09:14
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` A. No. 09:14
`
` Q. Okay. What was the nature of your testimony 09:14
`
`in those cases? 09:15
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` MR. GROSS: Objection. Form. 09:15
`
` THE WITNESS: Mostly as a fact witness. 09:15
`
`BY MR. KIBLAWI: 09:15
`
` Q. Okay. Have you ever testified at a trial 09:15
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`before? 09:15
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` A. No. 09:15
`
` Q. Have you ever testified before any 09:15
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`proceeding before the U.S. Patent and Trademark 09:15
`
`Office? 09:15
`
` MR. GROSS: Object to the form. 09:15
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` THE WITNESS: No. 09:15
`
`BY MR. KIBLAWI: 09:15
`
` Q. Did you do anything to prepare for today's 09:15
`
`deposition? 09:15
`
` A. Yes. 09:15
`
` Q. Did you speak with anybody in preparation 09:15
`
`for your testimony today? 09:15
`
` A. Yes. 09:15
`
` Q. How long did you take to prepare for today's 09:15
`
`deposition? 09:15
`
` A. About eight hours. 09:15
`
` Q. And did you speak to your counsel in 09:15
`
`preparation for today's deposition? 09:16
`
` A. Yes. 09:16
`
` MR. KIBLAWI: So let's get to it. So I'd 09:16
`
`like to hand you the '726 patent, which I think it 09:16
`
`was marked as Exhibit 1 or Beard Deposition 09:16
`
`Exhibit 1. 09:16
`
` (Exhibit 1 was marked for identification 09:16
`
` and attached hereto.)
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` MR. GROSS: Thank you. 09:16
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` MR. KIBLAWI: Now, I would also like to hand 09:16
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`you the Declaration of Paul Beard in Support of 09:16
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`Petition for Inter Partes Review of the '726 patent 09:17
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`which we'll mark as Exhibit No. 2. 09:17
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`GregoryEdwards, LLC | Worldwide Court Reporting
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`Paul Beard - February 11, 2016
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` (Exhibit 2 was marked for identification 09:17
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` and attached hereto.) 09:17
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` MR. GROSS: Thank you. 09:17
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`BY MR. KIBLAWI: 09:17
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` Q. Now, Exhibit No. 2, this is your declaration 09:17
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`in the '726 IPR; correct? 09:17
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` A. That's correct, this is -- that's correct. 09:17
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` Q. Okay. And you also have Exhibit No. 1, the 09:17
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`'726 patent before you; correct? 09:17
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` A. That's correct. 09:17
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` Q. And it's your understanding that we are here 09:17
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`today to talk about this inter partes review of the 09:18
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`'726 patent, among others; is that correct? 09:18
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` A. That's my understanding, yes. 09:18
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` Q. Okay. And so in the IPR for the '726 09:18
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`patent, did you render some opinions on the validity 09:18
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`of certain claims on the '726 patent? 09:18
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` A. I rendered an expert report reviewing the 09:18
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`'726 patent. 09:18
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` Q. Great. Okay. 09:18
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` So if you can please turn to page 12 of your 09:18
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`declaration, Exhibit No. 2. There's a section 09:18
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`entitled "Materials Relied on in Forming My 09:18
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`Opinion." 09:18
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` Do you see that? 09:18
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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`Page 16
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` A. I do. 09:18
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` Q. Now, did you consider any other materials 09:18
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`other than what is listed or described in this 09:18
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`section, item No. 39 of Exhibit No. 2 in preparing 09:19
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`this declaration? 09:19
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` A. Paragraph 39 is a comprehensive list of the 09:19
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`materials I relied on -- I relied on in forming my 09:19
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`opinion. 09:19
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` Q. Okay. Now, who selected these documents for 09:19
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`your review? 09:19
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` MR. GROSS: Object to the form. 09:19
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` And just as a cautionary note about 09:19
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`privilege, I just want to let the witness know that 09:19
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`you should answer Mr. Kiblawi's questions to the 09:19
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`extent you can without, at any point, revealing 09:19
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`communications you may have had with counsel because 09:19
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`those communications are privileged. But for this 09:19
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`question and others, you should feel free to answer 09:19
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`subject to that qualification. 09:20
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` THE WITNESS: Can you be more specific in 09:20
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`which materials you are referring to? 09:20
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`BY MR. KIBLAWI: 09:20
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` Q. Well, did you select any of the materials in 09:20
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`item No. 35 -- I'm sorry. Let me reword that -- 39, 09:20
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`I'm sorry. Let me reword the question here. 09:20
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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` Did you select any of the materials 09:20
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`described in item No. 39 yourself? 09:20
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` MR. GROSS: Object to the form. 09:20
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` THE WITNESS: Yes. 09:20
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`BY MR. KIBLAWI: 09:20
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` Q. Can you tell me which of the materials you 09:20
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`selected yourself in preparing this declaration? 09:20
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` A. I selected -- among other things, I selected 09:20
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`the Danielson patent. 09:20
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` Q. Did you select the Beard patent? 09:20
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` MR. GROSS: Objection. Form. 09:20
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` THE WITNESS: No. 09:20
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`BY MR. KIBLAWI: 09:20
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` Q. Who selected -- let me reword that. 09:20
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` Are you aware of who selected the Beard 09:20
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`patent for your review? 09:20
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` A. Not directly, no. 09:21
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` Q. But it's your general understanding that 09:21
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`counsel selected this patent for your review? 09:21
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` A. The Beard patent, yes. 09:21
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` Q. Okay. So let's just get to the meat of 09:21
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`this. Can you please turn to page 50 of 09:21
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`Exhibit No. 2, your declaration. 09:21
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` So there on page 50 at the bottom, there is 09:21
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`a section entitled "Grounds of Invalidity." 09:21
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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`Page 18
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`Correct? 09:21
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` A. Section 10 says, "Grounds of Invalidity." 09:21
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`Correct. 09:21
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` Q. Okay. And it looks like that begins a 09:21
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`section where you start talking about validity of 09:21
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`various claims of the '726 patent; is that correct? 09:21
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` A. So ground -- so it -- yeah, it talks about 09:21
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`ground 1, claims 1, 3, 5, 6, 10, 19, and 27. 09:21
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` Q. And it says that in your opinion: 09:22
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` "Claims 1, 3, 5, 6, 10, 19 and 27 are 09:22
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` invalid under 35 USC 103 on the ground that 09:22
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` they are all rendered obvious by Beard in 09:22
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` view of Rathmann." 09:22
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` Correct? 09:22
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` A. That's correct. 09:22
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` Q. Okay. And if you'd please turn to page 81 09:22
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`of your declaration. There is a section entitled 09:22
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`"Ground 2" at the top; correct? 09:22
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` A. That's correct. Ground 2 is claims 4, 7, 8, 09:22
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`9, and 20. 09:22
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` Q. Okay. And it says that in your opinion: 09:22
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` "Claims 4, 7, 8, 9 and 20 are invalid under 09:22
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` 35 U.S.C. 103 on the ground that they are 09:22
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` all rendered obvious by Beard in view of 09:22
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` Rathmann and Danielson." 09:22
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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` Correct? 09:22
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` A. That's correct. 09:22
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` Q. What is your understanding of obviousness in 09:22
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`the realm of patent law? 09:22
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` MR. GROSS: Objection to the form. And I 09:23
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`object to the extent it calls for a legal 09:23
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`conclusion. 09:23
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` THE WITNESS: So on page 9 of that document, 09:23
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`I discuss invalidity by anticipation or obviousness. 09:23
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`So if you look at paragraph 33, halfway down it 09:23
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`talks about: 09:23
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` "In analyzing obviousness in light of the. 09:23
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` prior art, I understand that it is 09:23
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` important to understand the scope of the 09:23
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` claims, the level of skill in the relevant 09:23
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` art, the scope and content of the prior 09:23
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` art, the differences between the prior art 09:23
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` and the claims, and any secondary 09:24
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` considerations." 09:24
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` And then paragraph 34 goes on to say: 09:24
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` "I also understand that 'if a technique has 09:24
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` been used to improve one device, and a 09:24
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` person of ordinary skill in the art would 09:24
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` recognize that it would be" -- "that it 09:24
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` would improve similar devices in the same 09:24
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`
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`Paul Beard - February 11, 2016
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`Page 20
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` way, using the technique is obvious unless 09:24
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` its actual application is beyond his or her 09:24
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` skill...' There may also be a specific 09:24
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` teaching, suggestion or motivation to 09:24
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` combine a prior art reference with another 09:24
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` prior art reference. Such a teaching, 09:24
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` suggestion, or motivation to combine the 09:24
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` prior art references may be explicit or 09:24
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` implicit in the prior art." 09:24
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`BY MR. KIBLAWI: 09:24
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` Q. Okay. So if you would turn to item No. 33 09:24
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`in your declaration, you state that -- 09:25
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` MR. GROSS: Paragraph number, Counsel? 09:25
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` MR. KIBLAWI: Sorry. Paragraph No. 33 in 09:25
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`your declaration on page 9. 09:25
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`BY MR. KIBLAWI: 09:25
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` Q. If you turn to that paragraph, you state 09:25
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`that you understand "...that anticipation of a claim 09:25
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`requires that every element of a claim be disclosed 09:25
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`expressly or inherently in a single prior art 09:25
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`reference, arranged as in the claim." Correct? 09:25
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` A. That's my understanding of anticipation. 09:25
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` Q. Okay. Now, is it your understanding that 09:25
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`for a patent claim to be considered invalid as 09:25
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`obvious, each claim element must be taught or 09:25
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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`suggested by the prior art? 09:25
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` MR. GROSS: Objection to form. 09:25
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` Go ahead. 09:25
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` THE WITNESS: It's my understanding that 09:25
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`obvious, in analyzing it, it's important to 09:25
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`understand the scope of the claims, the level of 09:26
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`skill in the relevant art, the scope of the content 09:26
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`of the prior art, the differences between the prior 09:26
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`art and the claims, and any secondary 09:26
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`considerations. 09:26
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`BY MR. KIBLAWI: 09:26
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` Q. Okay. So in considering the scope of the 09:26
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`claim in rendering your opinion on the obviousness 09:26
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`of a claim in this declaration, is it your 09:26
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`understanding that each element of the claim must be 09:26
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`taught by the prior art? 09:26
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` MR. GROSS: Object to the form. 09:26
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` THE WITNESS: Can you repeat the question? 09:26
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`BY MR. KIBLAWI: 09:26
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` Q. Sure. So in considering the scope of a 09:26
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`claim in rendering your opinion on the obviousness 09:26
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`of that claim in this declaration, is it your 09:27
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`understanding that each element of that claim must 09:27
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`be taught by the prior art? 09:27
`
` MR. GROSS: Same objection. 09:27
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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`Page 22
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` THE WITNESS: It largely depends on the 09:27
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`elements of the claims. Sometimes they are this or 09:27
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`that so not necessarily all the elements of the 09:27
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`claim need to be considered. 09:27
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` DEPOSITION REPORTER: "Need to be"?
`
` THE WITNESS: Considered. 09:27
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`BY MR. KIBLAWI: 09:27
`
` Q. Okay. So in rendering your opinions on the 09:27
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`invalidity of claims in this declaration, is it your 09:28
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`understanding that when combining two prior art 09:28
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`references to render a claim invalid as obvious, 09:28
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`there must be some reason to combine these 09:28
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`references? 09:28
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` MR. GROSS: Object to the form. 09:28
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` THE WITNESS: It's my understanding that 09:28
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`there should be a reason to combine references. 09:28
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`BY MR. KIBLAWI: 09:28
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` Q. Okay. Now, if you'd please turn to page 10 09:28
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`your declaration, Exhibit No. 2, at paragraph 35, 09:28
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`you state: 09:28
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` "I understand that '[c]ombining two 09:28
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` embodiments disclosed adjacent to each other 09:28
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` in the prior art patent does not require a 09:28
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` leap of inventiveness.'" 09:28
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` Correct? 09:28
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
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`Paul Beard - February 11, 2016
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`Page 23
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` A. We're talking about paragraph 35? 09:28
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` Q. Yes. 09:28
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` A. That's correct. 09:28
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` Q. Is it your understanding that when combining 09:28
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`two embodiments disclosed adjacent to each other in 09:28
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`a prior art patent, there must be a reason for that 09:29
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`combination in order to sustain a claim as being 09:29
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`obvious? 09:29
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` MR. GROSS: Object to the form. 09:29
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` THE WITNESS: Well, there's usually a 09:29
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`motivation to combine prior art references, and they 09:29
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`add clarity and detail to the analysis. 09:29
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`BY MR. KIBLAWI: 09:29
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` Q. So is it your understanding that when 09:29
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`combining two adjacent embodiments in one prior art 09:29
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`patent reference, there must be a motivation to 09:29
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`combine these embodiments? 09:29
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` MR. GROSS: Objection. Form. 09:29
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` THE WITNESS: I think I answered that 09:29
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`question. I think combining prior art references 09:29
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`adds clar
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