Robert E. Morley, Jr., Ph.D.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01928
`
` 5 MICROSOFT MOBILE, INC., : Patent 7,265,494
`
` 6 Petitioner, :
`
` 7 v. :
`
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
`
` 9 Patent Owner. :
`
` 10 __________________________ :
`
` 11 CAPTION CONTINUES ON :
`
` 12 FOLLOWING PAGES :
`
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
`
` 16 Washington, D.C.
`
` 17 May 13, 2016
`
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
`
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
`
` 23 877.370.3377 ph | 917.591.5672 fax
`
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 1
`
`Ex. 1034-0001
`
`
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01928
`
` 5 MICROSOFT MOBILE, INC., : Patent 7,265,494
`
` 6 Petitioner, :
`
` 7 v. :
`
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
`
` 9 Patent Owner. :
`
` 10 __________________________ :
`
` 11 CAPTION CONTINUES ON :
`
` 12 FOLLOWING PAGES :
`
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
`
` 16 Washington, D.C.
`
` 17 May 13, 2016
`
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
`
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
`
` 23 877.370.3377 ph | 917.591.5672 fax
`
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 1
`
`Ex. 1034-0001
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01150
` 5 MICROSOFT MOBILE, INC., : Patent 7,781,980
` 6 Petitioner, :
` 7 v. :
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
` 9 Patent Owner. :
` 10 __________________________ :
` 11 CAPTION CONTINUES ON :
` 12 FOLLOWING PAGES :
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
` 16 Washington, D.C.
` 17 May 13, 2016
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
` 23 877.370.3377 ph | 917.591.5672 fax
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 2
`
`Ex. 1034-0002
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01149
` 5 MICROSOFT MOBILE, INC., : Patent 7,329,970
` 6 Petitioner, :
` 7 v. :
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
` 9 Patent Owner. :
` 10 __________________________ :
` 11 CAPTION CONTINUES ON :
` 12 FOLLOWING PAGES :
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
` 16 Washington, D.C.
` 17 May 13, 2016
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
` 23 877.370.3377 ph | 917.591.5672 fax
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 3
`
`Ex. 1034-0003
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01151
` 5 MICROSOFT MOBILE, INC., : Patent 8,288,952
` 6 Petitioner, :
` 7 v. :
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
` 9 Patent Owner. :
` 10 __________________________ :
` 11 CAPTION CONTINUES ON :
` 12 FOLLOWING PAGES :
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
` 16 Washington, D.C.
` 17 May 13, 2016
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
` 23 877.370.3377 ph | 917.591.5672 fax
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 4
`
`Ex. 1034-0004
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01148
` 5 MICROSOFT MOBILE, INC., : Patent 7,498,749
` 6 Petitioner, :
` 7 v. :
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
` 9 Patent Owner. :
` 10 __________________________ :
` 11 CAPTION CONTINUES ON :
` 12 FOLLOWING PAGE :
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
` 16 Washington, D.C.
` 17 May 13, 2016
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
` 23 877.370.3377 ph | 917.591.5672 fax
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 5
`
`Ex. 1034-0005
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 3
`
` 4 MICROSOFT CORPORATION and : IPR2015-01147
`
` 5 MICROSOFT MOBILE, INC., : Patent 7,994,726
`
` 6 Petitioner, :
`
` 7 v. :
`
` 8 GLOBAL TOUCH SOLUTIONS, LLC, :
`
` 9 Patent Owner. :
`
` 10
`
` 11
`
` 12
`
` 13
`
` 14
`
` 15 DEPOSITION OF ROBERT E. MORLEY, JR., Ph.D.
`
` 16 Washington, D.C.
`
` 17 May 13, 2016
`
` 18
`
` 19
`
` 20 Reported by: Linda S. Kinkade RDR CRR RMR RPR CSR
`
` 21
`
` 22 GOLKOW TECHNOLOGIES, INC.
`
` 23 877.370.3377 ph | 917.591.5672 fax
`
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 6
`
`Ex. 1034-0006
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5 The following is the transcript of the
`
` 6 deposition of ROBERT E. MORLEY, JR., Ph.D. held at
`
` 7 the offices of:
`
` 8
`
` 9
`
` 10 Sughrue Mion PLLC
`
` 11 2100 Pennsylvania Avenue, NW
`
` 12 Washington, DC 20037
`
` 13
`
` 14
`
` 15
`
` 16 Taken pursuant to applicable Rules of
`
` 17 Civil Procedure, before Linda S. Kinkade,
`
` 18 Registered Diplomate Reporter, Certified Realtime
`
` 19 Reporter, Registered Professional Reporter,
`
` 20 Registered Merit Reporter, Certified Shorthand
`
` 21 Reporter, as licensed by the State of California,
`
` 22 and Notary Public, as commissioned by the District
`
` 23 of Columbia.
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 7
`
`Ex. 1034-0007
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 APPEARANCES:
`
` 2
`
` 3 On Behalf of Petitioner:
`
` 4 BakerHostetler
`
` 5 2929 Arch Street
`
` 6 Cira Centre, 12th Floor
`
` 7 Philadelphia, Pennsylvania 19104
`
` 8 T 215.564.1603 | F 215.568.3439
`
` 9 BY: John F. Murphy, Esquire
`
` 10 johnmurphy@bakerlaw.com
`
` 11
`
` 12
`
` 13
`
` 14
`
` 15 On Behalf of Patent Owner:
`
` 16 The Kelber Law Group
`
` 17 1875 Eye Street, NW
`
` 18 Fifth Floor
`
` 19 Washington, DC 20006
`
` 20 T 202.429.2091
`
` 21 BY: Steven B. Kelber, Esquire
`
` 22 SBKelber@aol.com
`
` 23
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 8
`
`Ex. 1034-0008
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 APPEARANCES (continued):
`
` 2
`
` 3 On Behalf of Patent Owner:
`
` 4 Cristler IP, PLLC
`
` 5 1801 21st Road North
`
` 6 Arlington, Virginia 22209
`
` 7 T 512.576.5166
`
` 8 BY: Nathan H. Cristler, Esquire
`
` 9 ncristler@cristlerip.com
`
` 10
`
` 11
`
` 12
`
` 13
`
` 14
`
` 15
`
` 16
`
` 17
`
` 18
`
` 19
`
` 20
`
` 21
`
` 22
`
` 23
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 9
`
`Ex. 1034-0009
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 I N D E X
`
` 2
`
` 3 EXAMINATION of ROBERT E. MORLEY, JR. PAGE
`
` 4 BY MR. MURPHY 16
`
` 5 BY MR. KELBER 217
`
` 6
`
` 7
`
` 8
`
` 9
`
` 10
`
` 11
`
` 12
`
` 13
`
` 14
`
` 15
`
` 16
`
` 17
`
` 18
`
` 19
`
` 20
`
` 21
`
` 22
`
` 23
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 10
`
`Ex. 1034-0010
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 E X H I B I T S
`
` 2
`
` 3 NO. DESCRIPTION PAGE
`
` 4 Exhibit 1 Curriculum Vitae Robert E. 15
`
` 5 Morley, Jr. GLOBAL EX. 2003 |
`
` 6 IPR2015-01147
`
` 7 Exhibit 2 Petitioner's Notice of 15
`
` 8 Deposition of Robert E. Morley,
`
` 9 Jr. Re IPR2015-01928 | Patent
`
` 10 7,264,494
`
` 11 Exhibit 3 Petitioner's Notice of 15
`
` 12 Deposition of Robert E. Morley,
`
` 13 Jr. Re IPR2015-01147 | Patent
`
` 14 7,994,726
`
` 15 Exhibit 4 Petitioner's Notice of 15
`
` 16 Deposition of Robert E. Morley,
`
` 17 Jr. Re IPR2015-01148 | Patent
`
` 18 7,498,749
`
` 19 Exhibit 5 Petitioner's Notice of 15
`
` 20 Deposition of Robert E. Morley,
`
` 21 Jr. Re IPR 2015-01149 | Patent
`
` 22 7,329,970
`
` 23
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 11
`
`Ex. 1034-0011
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Exhibit 6 Petitioner's Notice of 16
`
` 2 Deposition of Robert E. Morley,
`
` 3 Jr. Re IPR 2015-01150 | Patent
`
` 4 7,781,980
`
` 5 Exhibit 7 Petitioner's Notice of 16
`
` 6 Deposition of Robert E. Morley,
`
` 7 Jr. Re IPR 2015-01151 | Patent
`
` 8 8,288,952
`
` 9 Exhibit 8 Declaration of Robert E. 40
`
` 10 Morley, Jr. Re IPR2015-01928 |
`
` 11 Patent No. 7,265,494
`
` 12 Exhibit 9 Declaration of Robert E. 40
`
` 13 Morley, Jr. GLOBAL EX. 2002 |
`
` 14 IPR2015-01147 | Patent No.
`
` 15 7,994,726
`
` 16 Exhibit 10 Declaration of Robert E. 40
`
` 17 Morley, Jr. GLOBAL EX. 2005 |
`
` 18 IPR2015-01148 | Patent No.
`
` 19 7,498,749
`
` 20 Exhibit 11 Declaration of Robert E. 40
`
` 21 Morley, Jr. GLOBAL EX. 2006 |
`
` 22 IPR2015-01149 | Patent No.
`
` 23 7,329,970
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 12
`
`Ex. 1034-0012
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Exhibit 12 Declaration of Robert E. 40
`
` 2 Morley, Jr. GLOBAL EX. 2002 |
`
` 3 IPR2015-01150 | Patent No.
`
` 4 7,781,980
`
` 5 Exhibit 13 Declaration of Robert E. 41
`
` 6 Morley, Jr. GLOBAL EX. 2002 |
`
` 7 IPR2015-01151 | Patent No.
`
` 8 8,288,952
`
` 9 Exhibit 14 Bruwer | U.S. Patent No. 59
`
` 10 7,265,494 | Microsoft Exhibit
`
` 11 1001
`
` 12 Exhibit 15 Bruwer | U.S. Patent No. 59
`
` 13 7,994,726 | Microsoft Exhibit
`
` 14 1001
`
` 15 Exhibit 16 Bruwer | U.S. Patent No. 59
`
` 16 7,498,749 | Microsoft Exhibit
`
` 17 1001
`
` 18 Exhibit 17 Bruwer | U.S. Patent No. 59
`
` 19 7,329,970 | Microsoft Exhibit
`
` 20 1001
`
` 21 Exhibit 18 Bruwer | U.S. Patent No. 59
`
` 22 7,781,980 | Microsoft Exhibit
`
` 23 1001
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 13
`
`Ex. 1034-0013
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Exhibit 19 Bruwer | U.S. Patent No. 60
`
` 2 8,288,952 | Microsoft Exhibit
`
` 3 1001
`
` 4 Exhibit 20 Patent Owner's Response re 79
`
` 5 IPR2015-01147 | Patent No.
`
` 6 7,994,726
`
` 7 Exhibit 21 Patent Owner's Response re 103
`
` 8 IPR2015-01928 | Patent No.
`
` 9 7,265,494
`
` 10 Exhibit 22 Jahagirdar | U.S. Patent No. 105
`
` 11 6,125,286 | Microsoft Exhibit
`
` 12 1004
`
` 13 Exhibit 23 Declaration of Mark N. 114
`
` 14 Horenstein, Ph.D. re
`
` 15 IPR2015-01147 | Patent No.
`
` 16 7,994,726 | Microsoft Exhibit
`
` 17 1010
`
` 18 Exhibit 24 Schultz | U.S. Patent No. 136
`
` 19 4,053,789 | Microsoft Exhibit
`
` 20 1005
`
` 21
`
` 22
`
` 23
`
` 24
`
`Golkow Technologies, Inc.
`
`Page 14
`
`Ex. 1034-0014
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 P R O C E E D I N G S
`
` 2 (Exhibit 1 marked for
`
` 3 identification: Curriculum Vitae
`
` 4 Robert E. Morley, Jr. GLOBAL EX.
`
` 5 2003 | IPR2015-01147)
`
` 6 (Exhibit 2 marked for
`
` 7 identification: Petitioner's Notice
`
` 8 of Deposition of Robert E. Morley,
`
` 9 Jr. Re IPR2015-01928 | Patent
`
` 10 7,264,494)
`
` 11 (Exhibit 3 marked for
`
` 12 identification: Petitioner's Notice
`
` 13 of Deposition of Robert E. Morley,
`
` 14 Jr. Re IPR2015-01147 | Patent
`
` 15 7,994,726)
`
` 16 (Exhibit 4 marked for
`
` 17 identification: Petitioner's Notice
`
` 18 of Deposition of Robert E. Morley,
`
` 19 Jr. Re IPR2015-01148 | Patent
`
` 20 7,498,749)
`
` 21 (Exhibit 5 marked for
`
` 22 identification: Petitioner's Notice
`
` 23 of Deposition of Robert E. Morley,
`
` 24 Jr. Re IPR 2015-01149 | Patent
`
`Golkow Technologies, Inc.
`
`Page 15
`
`Ex. 1034-0015
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 7,329,970)
`
` 2 (Exhibit 6 marked for
`
` 3 identification: Petitioner's Notice
`
` 4 of Deposition of Robert E. Morley,
`
` 5 Jr. Re IPR 2015-01150 | Patent
`
` 6 7,781,980)
`
` 7 (Exhibit 7 marked for
`
` 8 identification: Petitioner's Notice
`
` 9 of Deposition of Robert E. Morley,
`
` 10 Jr. Re IPR 2015-01151 | Patent
`
` 11 8,288,952)
`
` 12 ROBERT E. MORLEY, JR., Ph.D.,
`
` 13 Having been first duly sworn, was thereafter
`
` 14 examined and testified as follows:
`
` 15 EXAMINATION
`
` 16 BY MR. MURPHY:
`
` 17 Q. Dr. Morley, my name is John Murphy. I am
`
` 18 a lawyer for Microsoft.
`
` 19 Would you please introduce yourself for the
`
` 20 record?
`
` 21 A. Yes. My name is Dr. Robert E. Morley,
`
` 22 Junior.
`
` 23 Q. All right. And just to review why we are
`
` 24 here, the reporter has kindly marked Exhibits 2
`
`Golkow Technologies, Inc.
`
`Page 16
`
`Ex. 1034-0016
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 through 7.
`
` 2 Would you mind handing those to Dr. Morley.
`
` 3 A. Just for the record, I have number 1
`
` 4 also.
`
` 5 Q. That's fine. And would you please look
`
` 6 through Exhibits 2 through 7 and familiarize
`
` 7 yourself with these, if you aren't already.
`
` 8 A. Okay.
`
` 9 Q. So these are Notices of Deposition in six
`
` 10 IPR proceedings; is that correct?
`
` 11 A. Yes.
`
` 12 Q. And those proceedings are the captioned
`
` 13 proceedings here, and I'm going to read them: IPR
`
` 14 numbers 2015-1928, 2015-1147, 2015-1148, 2015-1149,
`
` 15 2015-1150, and 2015-1151. Is that right?
`
` 16 A. Correct.
`
` 17 Q. And is it your understanding that you are
`
` 18 here to testify in connection with these six IPRs?
`
` 19 A. Yes.
`
` 20 Q. And no others?
`
` 21 A. Correct.
`
` 22 Q. Dr. Morley, have you been deposed before?
`
` 23 I take it the answer is yes?
`
` 24 A. Yes.
`
`Golkow Technologies, Inc.
`
`Page 17
`
`Ex. 1034-0017
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Q. Approximately how many times?
`
` 2 A. Half a dozen.
`
` 3 Q. Okay. So you know that it's best to
`
` 4 provide me with verbal answers to my questions.
`
` 5 A. Correct.
`
` 6 Q. And you know that, if you don't
`
` 7 understand one of my questions, you should just ask
`
` 8 for clarification.
`
` 9 A. Yes.
`
` 10 Q. Okay. And if you do that, I promise you
`
` 11 I will give you that clarification.
`
` 12 Is there any reason why you would not be
`
` 13 able to fully testify today, such as medication or
`
` 14 illness?
`
` 15 A. No.
`
` 16 Q. Let's discuss Exhibit 1, which you also
`
` 17 have a copy of. Do you recognize this?
`
` 18 A. Yes.
`
` 19 Q. Is this your CV?
`
` 20 A. Yes.
`
` 21 Q. Would you take a second to look through
`
` 22 it and let me know if there are any inaccuracies
`
` 23 that you can see or updates that you need to make.
`
` 24 A. There is one additional patent that's
`
`Golkow Technologies, Inc.
`
`Page 18
`
`Ex. 1034-0018
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 been issued in my name. I don't know the number,
`
` 2 but it was issued last December.
`
` 3 I've actually -- since this was provided I'm
`
` 4 involved as an expert in a case in Missouri that is
`
` 5 Patterson Oil versus someone. I forget who it is.
`
` 6 Someone else -- oh, I think it's Verifone,
`
` 7 Patterson Oil versus Verifone, V-E-R-I-F-O-N-E. I
`
` 8 think that's all that comes to mind here.
`
` 9 Q. All right. Is Patterson Oil versus
`
` 10 Verifone a patent infringement case?
`
` 11 A. No.
`
` 12 Q. What kind of case is it?
`
` 13 A. They are suing for, I guess it's breach
`
` 14 of contract, faulty equipment.
`
` 15 Q. Your CV refers to a few items under the
`
` 16 heading Industrial Career.
`
` 17 A. Yes.
`
` 18 Q. Do you see that part?
`
` 19 A. I do.
`
` 20 Q. Did this industrial career happen in
`
` 21 parallel with your academic career or before?
`
` 22 A. Partly in parallel, mostly before.
`
` 23 Some -- the ABB Hafo was during a sabbatical. The
`
` 24 National Acoustics Lab in Australia was during a
`
`Golkow Technologies, Inc.
`
`Page 19
`
`Ex. 1034-0019
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 sabbatical. The 1976 through '81 at Micro-Term,
`
` 2 part of that was I was teaching part-time at the
`
` 3 university from about '78 to '81 and decided to
`
` 4 leave Micro-Term and go to the university. So that
`
` 5 was the same time. The Lincoln Labs, summer of
`
` 6 '75, was between my Master's and Ph.D. work at the
`
` 7 university.
`
` 8 Q. And did any of this industrial work have
`
` 9 anything to do with the design of electronics?
`
` 10 A. The company that I founded, Micro-Term,
`
` 11 in 1976, I was a designer of computer terminals.
`
` 12 The ABB Hafo -- well, sorry, Lincoln Labs, in the
`
` 13 summer, I designed satellite receivers, signal
`
` 14 processing algorithms for satellite receivers, not
`
` 15 the electronics but the algorithms.
`
` 16 The ABB Hafo in Stockholm in '93 I designed
`
` 17 the actual circuitry and simulated it for a
`
` 18 low-power digital hearing aid, microchip. And the
`
` 19 National Acoustics Lab in Sidney, that was signal
`
` 20 processing. It didn't involve electronics, just
`
` 21 algorithms.
`
` 22 Q. In your industrial experience involving
`
` 23 the design of electronic circuitry, did any of that
`
` 24 electronic circuitry involve microprocessors?
`
`Golkow Technologies, Inc.
`
`Page 20
`
`Ex. 1034-0020
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 A. Yes. The name of my company, Micro-Term,
`
` 2 was because we were the first company to put
`
` 3 microprocessors in the terminal, so from the very
`
` 4 start. And then I've designed with microprocessors
`
` 5 many things over the years that weren't involved in
`
` 6 the industrial career but at the university.
`
` 7 Q. In your industrial experience involving
`
` 8 the design of electronic circuitry did you have
`
` 9 occasion to design any circuitry that involved
`
` 10 touch sensors?
`
` 11 A. No, not in my industrial career.
`
` 12 Q. What about outside your industrial
`
` 13 career?
`
` 14 A. I've used touch sensors with an MSP430
`
` 15 Texas Instruments microprocessor in a senior design
`
` 16 class that I taught. One of the groups used one of
`
` 17 those processors, and I was the mentor on that
`
` 18 project so I got involved with that.
`
` 19 Q. What was the time frame of that project?
`
` 20 A. A couple of years ago.
`
` 21 Q. After 2010?
`
` 22 A. It would have been 2000 maybe '11,
`
` 23 something like that, yes.
`
` 24 Q. Did you -- do you have any experience
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`Golkow Technologies, Inc.
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`Page 21
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`Ex. 1034-0021
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 designing electronic circuitry involving touch
`
` 2 sensors prior to 2010?
`
` 3 A. No.
`
` 4 Q. What about --
`
` 5 A. Pardon me. I was forgetting. I did a
`
` 6 project with a friend of mine. We did a display
`
` 7 for a company in St. Louis named Coin Acceptors or
`
` 8 Coinco. It was a cathode ray tube, CRT, display
`
` 9 for a vending machine that we used a
`
` 10 touch-sensitive overlay on the CRT screen for
`
` 11 selecting objects on the screen. That would have
`
` 12 been back in the late '80s.
`
` 13 Q. How does a touch-sensitive overlay work
`
` 14 generally?
`
` 15 A. That one was, I believe, a resistive
`
` 16 overlay that varied the resistance in an X-Y grid.
`
` 17 Q. Was there some other kind of overlay
`
` 18 other than resistive?
`
` 19 A. Capacitive.
`
` 20 Q. What's the difference?
`
` 21 A. The fundamental electrical phenomenon of
`
` 22 resistance versus capacitance.
`
` 23 Q. Is there some reason why you used a
`
` 24 resistive overlay and not a capacitive one in the
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`Golkow Technologies, Inc.
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`Page 22
`
`Ex. 1034-0022
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 project that you mentioned?
`
` 2 A. At this point I don't remember what the
`
` 3 decision process was.
`
` 4 Q. Do you have any experience designing
`
` 5 portable telephones?
`
` 6 A. I was involved in the design of something
`
` 7 called the C-phone, which was a portable
`
` 8 communications device for deaf people. So it had
`
` 9 the name "phone" on it. It was actually a terminal
`
` 10 with a modem that -- so it was a little device that
`
` 11 had a little keypad and you could put a phone in it
`
` 12 and communicate with it. So we called -- and the
`
` 13 deaf people used the symbol with your fingers like
`
` 14 this called -- well, sorry, it was like this --
`
` 15 which meant that you could see the phone. They
`
` 16 called it C-phone. And, anyway, I designed that.
`
` 17 Q. Did the C-phone have a touch sensor?
`
` 18 A. It did not.
`
` 19 Q. Did it have a proximity sensor?
`
` 20 A. No.
`
` 21 Q. In the engagements listed under the
`
` 22 heading Industrial Career on your CV, were any of
`
` 23 these paid engagements?
`
` 24 A. Well, the Micro-Term was, like I
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`Golkow Technologies, Inc.
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`Page 23
`
`Ex. 1034-0023
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 mentioned, a company I founded, and I paid myself
`
` 2 to work there. And the Lincoln Laboratories, I was
`
` 3 paid to work there. I was paid at ABB Hafo. The
`
` 4 National Acoustics Lab, I did not get paid for that
`
` 5 visit. I was paid by the university, my
`
` 6 university.
`
` 7 Q. Are you currently engaged in any kind of
`
` 8 industrial engagement? I'm sorry. That was
`
` 9 awkward.
`
` 10 Do you have a job outside of your academic
`
` 11 job at the moment?
`
` 12 A. Yes.
`
` 13 Q. What is it?
`
` 14 A. I am a founder and principal of a company
`
` 15 by the name of REM, R-E-M, Holdings 3, LLC, and in
`
` 16 that company I have designed with a partner a
`
` 17 credit-card reader, a mag stripe credit-card
`
` 18 reader, that plugs into the headset jack of a
`
` 19 smartphone for the purpose of conducting mobile
`
` 20 payments.
`
` 21 Q. So there is ongoing litigation related to
`
` 22 these patents, right?
`
` 23 A. At the present time I'm happy to report
`
` 24 there is a binding term sheet.
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`Golkow Technologies, Inc.
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`Page 24
`
`Ex. 1034-0024
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Q. Oh.
`
` 2 A. A week ago we made an agreement to end
`
` 3 the litigation, but it hasn't been signed yet.
`
` 4 Q. Okay. Well, I was just going to use that
`
` 5 opportunity to say -- I was going to ask you a few
`
` 6 questions about the history of the litigation and
`
` 7 your involvement, but I wanted to make the point
`
` 8 that -- which I'm sure you know -- I'm not fishing
`
` 9 for any confidential information, and if there's
`
` 10 any question I ask where part of it is confidential
`
` 11 with regard to other parties and doesn't belong in
`
` 12 this public record, that's fine. I just want to
`
` 13 get a sense of the background.
`
` 14 A. Okay.
`
` 15 Q. So how many patents does REM Holdings 3
`
` 16 own?
`
` 17 MR. KELBER: Objection, assumes facts not
`
` 18 in evidence.
`
` 19 THE WITNESS: I can give a rough count
`
` 20 of -- I mean, there are some that I understand are
`
` 21 about to issue. The ones that have issued, I
`
` 22 believe are four.
`
` 23 Q. Does REM Holdings 3 own all of your
`
` 24 patents related to the payment system?
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`Golkow Technologies, Inc.
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`Page 25
`
`Ex. 1034-0025
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 A. No. I did a lot of work at the
`
` 2 university on an antifraud system for mag stripes,
`
` 3 and I think they're on the order of eight patents
`
` 4 for that work that the university licensed to an
`
` 5 industrial company by the name of MagTek,
`
` 6 Incorporated.
`
` 7 Q. So how many patents total are you the
`
` 8 named inventor on? Is it 18?
`
` 9 A. Well, I have 16 here and I mentioned that
`
` 10 there was one -- there are 16 mentioned here in my
`
` 11 CV, and I said I know there's one that issued last
`
` 12 December.
`
` 13 Q. So REM Holdings 3 owns between one and
`
` 14 nine patents, somewhere in that range?
`
` 15 A. Yeah, fair to say.
`
` 16 Q. Have you ever had one of your patents go
`
` 17 through an IPR before?
`
` 18 A. I have.
`
` 19 Q. How many?
`
` 20 A. Only one fortunately.
`
` 21 Q. Was that one of the REM Holdings 3
`
` 22 patents?
`
` 23 A. Yes. It's what we call the '946 patent.
`
` 24 Q. What was the result of that IPR?
`
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`Page 26
`
`Ex. 1034-0026
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 A. Three claims were found to be patentable.
`
` 2 Q. Were any found to be unpatentable?
`
` 3 A. Some were found, yes, to be unpatentable;
`
` 4 however, the proceeding has not ended.
`
` 5 Q. Where is it now?
`
` 6 A. That's a good question. I have a number
`
` 7 of proceedings going on, so for the '946 there's
`
` 8 actually a petition to terminate, and I think that
`
` 9 we're at a phase where we're waiting to hear on a
`
` 10 petition to terminate for various reasons.
`
` 11 Q. But at some point along the way in the
`
` 12 '946 IPR there was a decision by the Patent Office
`
` 13 that some claims were unpatentable?
`
` 14 A. Correct.
`
` 15 Q. Okay. Have you ever had any patents go
`
` 16 through any other type of Patent Office review
`
` 17 proceeding other than an IPR?
`
` 18 A. Yes. I have two patents that are
`
` 19 involved in the inter partes re-exam, one of which
`
` 20 is at the stage of an appeal to the Federal
`
` 21 Circuit. It's called the '729 patent.
`
` 22 I have another one that is called the '248
`
` 23 patent that is -- was sent back from the PTAB to
`
` 24 the examiner because of new grounds of rejection.
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`Golkow Technologies, Inc.
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`Page 27
`
`Ex. 1034-0027
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`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 We amended some claims, and they were allowed, but
`
` 2 it's still -- it's still at the Patent Office.
`
` 3 Q. So if I counted right, you named two
`
` 4 inter partes re-exams and one IPR. Do I have that
`
` 5 right?
`
` 6 A. That's right.
`
` 7 Q. Any others?
`
` 8 A. There was an inter partes re-exam of a
`
` 9 patent, that was the '394 patent, and because it
`
` 10 had no commercial value to us, we decided to
`
` 11 abandon that one.
`
` 12 Q. Was the '394 an REM Holdings 3 patent?
`
` 13 A. Correct.
`
` 14 Q. Who initiated these inter partes re-exams
`
` 15 in the IPR?
`
` 16 A. Square, Incorporated.
`
` 17 Q. And this is the company that you had the
`
` 18 litigation dispute with, right?
`
` 19 A. Correct.
`
` 20 Q. Were any of the lawyers who are involved
`
` 21 in this IPR having to do with Microsoft and Global
`
` 22 Touch involved in the Square litigation or related
`
` 23 Patent Office proceedings?
`
` 24 A. No.
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`Golkow Technologies, Inc.
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`Page 28
`
`Ex. 1034-0028
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Q. Is the Square -- if I say "the Square
`
` 2 litigation," do you know what I'm referring to
`
` 3 generally?
`
` 4 A. Yes.
`
` 5 Q. Okay. Is the Square litigation the only
`
` 6 time you've been involved as a party in patent
`
` 7 litigation as opposed to an expert?
`
` 8 A. Back when I was at Micro-Term there was
`
` 9 a -- it was alleged that we were in violation or
`
` 10 infringing a patent held by RCA, I believe it was.
`
` 11 I don't remember what happened with that. We
`
` 12 certainly didn't -- it didn't go very far.
`
` 13 Q. This would have been in the late 1970s or
`
` 14 early 1980s?
`
` 15 A. Correct.
`
` 16 Q. One of the things I think I heard you
`
` 17 mention is that some of your patents are owned by
`
` 18 the Washington University of St. Louis; is that
`
` 19 right?
`
` 20 A. I have assigned my rights to a number of
`
` 21 patents to the university. I've also assigned
`
` 22 rights to patents to Central Institute for the Deaf
`
` 23 that were licensed. They were patents covering
`
` 24 digital hearing aids.
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`Golkow Technologies, Inc.
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`Page 29
`
`Ex. 1034-0029
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 Q. Do you receive any income in connection
`
` 2 with those patents such as licensing revenue?
`
` 3 A. I do. I got a one-time share of
`
` 4 royalties when the digital hearing aid patents were
`
` 5 sold many years ago, and my most recent payment for
`
` 6 the antifraud technology patents to MagTek, they
`
` 7 pay a minimum royalty of -- to the University -- of
`
` 8 half a million dollars a year, and I share in that
`
` 9 with the other inventors, and that's been going on
`
` 10 for 13 years or something like that, and I recently
`
` 11 received a payment. They pay in January and I get
`
` 12 my share in April or something, so I was recently
`
` 13 given a share of that.
`
` 14 Q. Over the course of those 13 years, what's
`
` 15 your typical annual income from licensing revenue?
`
` 16 A. I personally receive approximately
`
` 17 $40,000; however, I have an agreement with an
`
` 18 ex-wife to share that with her 50/50, even though
`
` 19 there was no precedent in the state of Missouri for
`
` 20 an inventor ever getting divorced evidently. We
`
` 21 have an agreement that I pay the taxes on it and
`
` 22 then we split what's left in half.
`
` 23 Q. So what about REM Holdings 3, aside from
`
` 24 what may come from a settlement of this dispute,
`
`Golkow Technologies, Inc.
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`Page 30
`
`Ex. 1034-0030
`
`
`
`Robert E. Morley, Jr., Ph.D.
`
` 1 does REM Holdings 3 generate any income for you?
`
` 2 A. No. We had one -- not currently. We had
`
` 3 a customer for our credit-card reader that was a
`
` 4 Korean company, and they bought some ten thousand
`
` 5 readers one time, but they have since gone out of
`
` 6 business, so we don't have any ongoing revenue
`
` 7 stream.
`
` 8 Q. If you are at liberty to say,
`
` 9 approximately how much are you expecting to make
`
` 10 from the settlement?
`
` 11 MR. KELBER: Caution the witness not to
`
` 12 reveal any confidential information.
`
` 13 THE WITNESS: There was a public
`
` 14 statement made by CEO of Square, Mr. Dorsey, that
`
` 15 the settlement amount was $50 million.
`
` 16 Q. That's what Square said.
`
` 17 A. Yes.
`
` 18 Q. Okay. Let's talk about your work as an
`
` 19 expert. And you can refer to your CV, if it helps
`
` 20 you recall, but approximately how many times have
`
` 21
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