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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`- - - - - - - - - - - - - - - - -x
`
` APPLE INC., :
`
` Petitioner, : Case IPR2014-00237
`
` v. : Patent 8,504,697
`
` VIRNETX, INC. AND SCIENCE :
`
` APPLICATION INTERNATIONAL : Case IPR2014-00238
`
` CORPORATION, : Patent 8,504,697
`
` Patent Owner. :
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`- - - - - - - - - - - - - - - - -x
`
` Deposition of FABIAN NEWMAN MONROSE, Ph.D.
`
` Washington, DC
`
` Thursday, October 23, 2014
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` 9:00 a.m.
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`Job No.: 68382
`
`Pages: 1 - 296
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`Reported By: Lee Bursten, RMR, CRR
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 1
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`Page 1 of 339
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`VIRNETX EXHIBIT 2026
`Apple v. VirnetX
`IPR2016-00331
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`
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - - -x
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` APPLE INC., :
`
` Petitioner, : Case IPR2014-00237
`
` v. : Patent 8,504,697
`
` VIRNETX, INC. AND SCIENCE :
`
` APPLICATION INTERNATIONAL : Case IPR2014-00238
`
` CORPORATION, : Patent 8,504,697
`
` Patent Owner. :
`
`- - - - - - - - - - - - - - - - -x
`
` Deposition of FABIAN NEWMAN MONROSE, Ph.D.
`
` Washington, DC
`
` Thursday, October 23, 2014
`
` 9:00 a.m.
`
`Job No.: 68382
`
`Pages: 1 - 296
`
`Reported By: Lee Bursten, RMR, CRR
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 1
`
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`Page 1 of 339
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`VIRNETX EXHIBIT 2026
`Apple v. VirnetX
`IPR2016-00331
`
`
`
`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
`
` Deposition of FABIAN NEWMAN MONROSE, Ph.D.,
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`held at the offices of:
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`2
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` PAUL HASTINGS LLP
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` 875 15th Street, NW
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` Washington, DC 20005
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` (202) 551-1700
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` Pursuant to agreement, before Lee Bursten,
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`Registered Merit Reporter, Certified Realtime
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`Reporter, and Notary Public in and for the District
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`of Columbia, who officiated in administering the oath
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`to the witness.
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 2
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`Page 2 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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`3
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` A P P E A R A N C E S
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` ON BEHALF OF PETITIONER:
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` JEFFREY P. KUSHAN, ESQUIRE
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` SCOTT M. BORDER, ESQUIRE
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` SIDLEY AUSTIN LLP
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` 1501 K Street, NW
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` Washington, DC 20005
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` (202) 736-8000
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` ON BEHALF OF PATENT OWNER:
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` JOSEPH E. PALYS, ESQUIRE
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` PAUL HASTINGS LLP
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` 875 15th Street, NW
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` Washington, DC 20005
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` (202) 551-1700
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 3
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`Page 3 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` A P P E A R A N C E S C O N T I N U E D
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` ON BEHALF OF PATENT OWNER:
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` JASON E. STACH, ESQUIRE
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` FINNEGAN HENDERSON FARABOW GARRETT
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`4
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` & DUNNER LLP
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` 3500 SunTrust Plaza
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` 303 Peachtree Street, NE
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` Atlanta, Georgia 30308
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` (404) 653-6400
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` ON BEHALF OF PATENT OWNER:
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` JAMES STEIN, ESQUIRE
`
` FINNEGAN HENDERSON FARABOW GARRETT
`
` & DUNNER LLP
`
` 3500 SunTrust Plaza
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` 303 Peachtree Street, NE
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` Atlanta, Georgia 30308
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` (404) 653-6400
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` (Present via telephone)
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 4
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`Page 4 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` C O N T E N T S
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`EXAMINATION OF FABIAN NEWMAN MONROSE, Ph.D. PAGE
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` By Mr. Kushan 7
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`5
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` E X H I B I T S
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` (Exhibits retained by counsel)
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` (Exhibit 1082 attached to transcript)
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`PETITIONER APPLE INC. DEPOSITION EXHIBITS PAGE
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` Exhibit 1082 RFC 2535 98
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`PETITIONER APPLE INC. PREVIOUSLY
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`MARKED DEPOSITION EXHIBITS PAGE
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` Exhibit 1001 US Patent 8,504,697 to Larson 9
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` et al.
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` Exhibit 1008 US Patent 5,898,830 to 234
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` Wesinger, Jr. et al.
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` Exhibit 1009 US Patent 6,496,867 to Beser et 160
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` al.
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`Petitioner Apple Inc. - Exhibit 1083, p. 5
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`Page 5 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` E X H I B I T S C O N T I N U E D
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`VIRNETX DEPOSITION EXHIBITS PAGE
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` Exhibit 2004 Glossary for the Linux 96
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` FreeS/WAN project
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` Exhibit 2025 Declaration of Fabian Monrose, 10
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` Ph.D. in 237
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` Exhibit 2025 Declaration of Fabian Monrose, 11
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` Ph.D. in 238
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`Petitioner Apple Inc. - Exhibit 1083, p. 6
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`Page 6 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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`7
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` P R O C E E D I N G S
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` FABIAN NEWMAN MONROSE, Ph.D.
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` having been duly sworn/affirmed, testified as
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` follows:
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` EXAMINATION BY COUNSEL FOR PETITIONER
`
`BY MR. KUSHAN:
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` Q Good morning. Could you give us your full
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`name.
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` A Fabian Newman Monrose.
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` Q And where do you reside?
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` A 800 Long Meadows Road, Chapel Hill, North
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`Carolina.
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` Q And you understand that the testimony
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`you're to give today is to be truthful, correct?
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` A I do understand.
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` Q And you're under oath?
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` A I understand.
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` Q Have you ever been deposed before?
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` A I have not.
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` Q You have not? Have you ever, outside of
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`this proceeding, served as an expert witness in a
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`legal proceeding?
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`Petitioner Apple Inc. - Exhibit 1083, p. 7
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`Page 7 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` A I've served as an expert witness on other
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`matters related to these proceedings.
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` Q Let me try to understand that. So is it
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`that you've written reports or declarations about
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`other patents?
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` A A declaration, yes.
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` Q Okay. Outside of the proceedings for
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`VirnetX, have you been an expert witness for anybody?
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` A I have not.
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` Q Okay. And so you've never been deposed,
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`right?
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` A I have never been deposed.
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` Q So I'll go through a few rules and then
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`make sure we're on the same page.
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` A Sure.
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` Q In a deposition like this, I'll ask you
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`questions. You're going to give me an answer. When
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`you give me an answer, you have to give me a verbal
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`answer. So if I ask you a question and you nod your
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`head, you have to then add "yes" or "no" so I know
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`what you're saying. Okay? Do you understand that?
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` A Understood.
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`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 8
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`Page 8 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` Q Okay. If you need a break, just let me
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`know, and if I'm in the middle of a question, I'll
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`try to wrap up and let you have a break. But just
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`keep me informed about when you want a break.
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` In the course of the deposition, Mr. Palys
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`may be making objections. And when he's completed
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`his objection, then continue to answer the question,
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`unless he's directly asked you to not or instructed
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`you to not answer the question.
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` A Okay.
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` Q So if you have a question about my
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`question, just let me know, so I can try to improve
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`it. So if there's any ambiguity or something that
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`you hear in the question, just let me know and I'll
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`try and give you a better question.
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` A Sounds fair.
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` Q Okay. So let me just get some of the
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`paperwork out of the way. I'm going to hand you --
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`these are exhibits which have already been marked.
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`This is Exhibit 1001.
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` (Petitioner Apple Inc. Exhibit 1001 was
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`previously marked for identification and attached to
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`PLANET DEPOS
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 9
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`Page 9 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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`the deposition transcript.)
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`BY MR. KUSHAN:
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` Q This is an exhibit which is the same
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`exhibit number in the two proceedings. You
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`understand, there were two Patent Office proceedings
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`that you provided declarations in?
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` A Yes, correct.
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` Q Okay. And they both relate to the same
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`patent owned by VirnetX, right?
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` A Yes, the '697 patent.
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` Q And that's this patent, correct?
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` A That is correct.
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` Q I'm going to hand you Exhibit 2025 in IPR
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`number 2014-00237.
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` (VirnetX Exhibit 2025 was previously marked
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`for identification and attached to the deposition
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`transcript.)
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`BY MR. KUSHAN:
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` Q And this is one of your two declarations.
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`This is in the IPR proceeding I mentioned. I'm going
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`to call that the 237 proceeding, just for simplicity.
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`Can you just confirm that's your declaration?
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`PLANET DEPOS
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 10
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`Page 10 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` A This is.
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` Q Okay. And so this declaration, you're
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`addressing a patent in the prior art that was issued
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`11
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`to Beser; do you remember that?
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` A I do.
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` Q And this is just to get us oriented. I'm
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`going to hand you your declaration, which is Exhibit
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`2025 in IPR 2014-00238.
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` (VirnetX Exhibit 2025 was previously marked
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`for identification and attached to the deposition
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`transcript.)
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`BY MR. KUSHAN:
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` Q The same process, this is your same
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`declaration, the second declaration you provided
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`relating to the '697 patent in the 238 proceeding; is
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`that correct?
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` A That's correct.
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` Q Okay. And in a similar way, if I say the
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`238 proceeding, it's the second proceeding I just
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`mentioned. I'll just call this your 238 declaration.
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` A That would be helpful.
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` Q Okay. So do you understand VirnetX has
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`Petitioner Apple Inc. - Exhibit 1083, p. 11
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`Page 11 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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`sued Apple for patent infringement?
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` A I understand.
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` Q Have you had any role in the litigation
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`involving Apple on behalf of VirnetX?
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` A I have not been part of the litigation.
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` Q Have you been given any materials from the
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`litigation?
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` A I have not been given any materials from
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`the litigation.
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` Q Okay. So you haven't seen any information
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`that has originated from Apple describing any Apple
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`systems? And -- I'll narrow it. Everybody's seen
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`something from Apple, I'm sure. But let me say it
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`slightly better.
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` I'm wondering if you have been given any
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`materials from counsel that have been originally
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`obtained from Apple in the litigation.
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` A So I'm not sure I fully understand your
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`question, but so there are prior art that's
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`identified by Apple, which I obviously have seen.
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` Q Okay. But outside of the information in
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`these two proceedings, you haven't received any
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 12
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`Page 12 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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`information from, for example, the litigation that's
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`underway between VirnetX and Apple?
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` A I have not.
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` Q Okay. Can you just give me a description
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`of what you did to prepare for today's deposition?
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` A Sure. For the deposition itself, I went
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`back to my declaration to refamiliarize myself with
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`'697 in particular, I guess the specifications, the
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`claims, looked at the prior art that was identified,
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`which involved going back and looking at the entire
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`intrinsic history.
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` So I went back, I looked at -- reviewed
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`again the petition, the decision instituted by the
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`PTAB, went back to my declaration, made sure
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`everything was consistent. Those are the general
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`processes. It was an iterative process, I had to go
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`back, this was several months ago, verify, go
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`through, and just refresh my memory on some of the
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`specifications and the prior art.
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` Q Did you review the arguments that VirnetX
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`has filed in the proceeding that quotes your
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`declaration?
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`Petitioner Apple Inc. - Exhibit 1083, p. 13
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`Page 13 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` A I did. By that, you mean the patent
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`owner's response and how it uses my declaration?
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`14
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` Q Yes.
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` A I did. Mm-hmm.
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` Q Okay. Can you just give me a rough
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`estimate of how much time you spent preparing for the
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`deposition today?
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` A For the deposition? Hard to say precisely.
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` Q An estimate is fine.
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` A Probably somewhere between 20 and 30 hours,
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`in that ballpark, I would say.
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` Q Did you meet with counsel to prepare for
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`today's deposition?
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` A I met with counsel about the deposition.
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` Q How many times?
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` A So since the -- let me think about that.
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`Since the -- we met in early October. We're in
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`October, sorry. A day and a half, sometime in early
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`October, I think was -- the 6th or the 7th or the 7th
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`or the 8th, sometime then. And then earlier this
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`week.
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` Q So you mentioned a number of documents that
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 14
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`Page 14 of 339
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`you reviewed. Would you say you've reviewed every
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`document that had been filed in each proceeding as
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`part of your preparations for today's deposition?
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` A Yes.
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` MR. PALYS: Objection to form.
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` A I reviewed -- so every document that is
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`pertinent for these proceedings for 237 and 238, as
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`cited in my declaration.
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`BY MR. KUSHAN:
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` Q Okay. So there were a number of exhibits
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`that the patent owner filed in its response to the
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`proceedings, and those are numbered in the series
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`2001 through two thousand I think four or five. Did
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`you review all of those exhibits?
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` A Two thousand -- I'm trying to remember the
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`exact exhibit numbers, which ones these were.
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` Q I'm just trying to understand, you just
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`used the word "pertinent" to describe the category of
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`documents that you had reviewed. And I'm just trying
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`to make sure I understood that to be all the
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`documents that were in the record of the proceeding,
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`or a subset.
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 15
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`Page 15 of 339
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` A I see what you're saying. So the exhibits
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`and other documentation that supported the petition
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`that were relevant to the decision and its instituted
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`grounds. That's what I looked at. I'm sorry. I'm
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`not a lawyer and there are all these legal terms.
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`I'm trying to figure that out.
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` Q I appreciate that. This is just to
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`understand what you've been looking at so I know if I
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`have to give you more time to look at something, we
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`can do that later.
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` A Mm-hmm.
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` Q Did you look at any documents that you had
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`not looked at before you wrote your declaration in
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`your preparations today, for the deposition today?
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`So what I'm asking --
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` A Yes.
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` Q Okay. You did look at some additional
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`documents?
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` A Yes.
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` Q And what were they?
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` A I believe a -- in legal terms, the Federal
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`Circuit decision came out after my declaration. I
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 16
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`Page 16 of 339
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`skimmed that.
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` Q Was there anything else?
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` A No documents.
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` Q And did you notice anything of significance
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`about the Federal Circuit decision when you reviewed
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`it?
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` MR. PALYS: Objection to form.
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` A "Significance"? What does that mean?
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`BY MR. KUSHAN:
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` Q Well, you read the decision of the Federal
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`Circuit, correct?
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` A Correct.
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` Q And did it have an effect on any of your
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`opinions that you had previously expressed in your
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`declaration?
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` A No. Nothing in that decision affected my
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`opinions expressed in my declaration.
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` Q Okay. So let's just go back a little bit.
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`Before you prepared -- when were you first retained
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`to help in the proceeding?
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` A This particular one, or retained by counsel
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`for VirnetX?
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 17
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`Page 17 of 339
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` Q Well, let's just start with the easier
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`question. When were you first retained by VirnetX
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`for any reason?
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` A So I believe that goes back to around July
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`time frame of 2014.
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` Q Okay. And what were you asked to do at the
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`time you were retained by VirnetX?
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` A What --
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` MR. PALYS: Hold on. I counsel the witness
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`to not disclose any information that you may have
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`discussed with counsel. If you can answer the
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`question without doing that, go ahead. But if your
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`answer requires you to divulge any information or
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`communications between you and counsel, I instruct
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`you not to answer.
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` A I guess on the advice of my counsel, I will
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`choose not to answer the question.
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`BY MR. KUSHAN:
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` Q No, no. Let's try to make sure that's an
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`accurate instruction to you. So I'm allowed to ask
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`you what they asked you to do. That's in a general
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`sense. I'm not asking for you to recount kind of the
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 18
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`Page 18 of 339
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`conversation you had with them, but I would like your
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`understanding of what you were asked to do.
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` A Understood. So I was asked to take a look
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`at the patent at that time, I can't recall off the
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`top of my head which one that was, that was assigned
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`to VirnetX. I was also asked to provide an
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`understanding of what I believed was disclosed in
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`that patent, and later provided with some identified
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`prior art that I believed was used by petitioner with
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`respect to anticipation claims for that patent.
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` Q So the patent that you -- the first patent
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`that you mentioned, was it the '697 patent?
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` A No.
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` Q Do you remember the number of the patent or
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`any part of it?
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` A I believe it was '135.
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` Q '135. Okay. And so you were asked to
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`analyze the patent to see whether it had described
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`something in it?
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` MR. PALYS: I'm going to instruct the
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`witness not to answer that question. You can ask him
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`what he did, but not in particular what instructions
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 19
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`Page 19 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
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`he received from counsel or communication like that.
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`BY MR. KUSHAN:
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` Q So did you analyze the '135 patent to see
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`20
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`what it was describing?
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` A I did.
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` Q And the '135 patent is not involved in this
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`proceeding, right?
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` A That is correct.
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` Q And so I just would like to understand what
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`you were looking for in the '135 patent.
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` MR. PALYS: I'm going to also object to
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`this line of questioning under scope.
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` A So I think just like I would with any
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`document, whether or not I understood what was being
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`expressed in that document, for a patent,
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`specifically whether I understood the specifications,
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`the claims and the scope of the claims, and kept
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`that -- and keeping in mind whether or not my
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`understanding would have been similar to what one
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`skilled in the art and how they would have
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`interpreted that context at that time.
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`BY MR. KUSHAN:
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 20
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`Page 20 of 339
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` Q So you weren't looking for any particular
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`example of a system or anything in the patent?
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` MR. PALYS: Objection, form and outside the
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`scope of direct.
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` A I'm not sure I understand what that means,
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`by looking for a specific system in a patent.
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`BY MR. KUSHAN:
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` Q I'm just trying to understand, you did an
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`analysis of the '135 patent, and I'm trying to see if
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`you were looking for something in it or if there was
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`some other -- you know, you were just reading it
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`generally for some reason.
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` MR. PALYS: Objection to form and outside
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`the scope of direct.
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` A So first and foremost, as I said, in
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`reviewing any such material, I have to be comfortable
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`that I understand what is being expressed in that
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`material. So as an academic, I went through, looked
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`at the -- what was in there, does this make sense to
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`me, if it does, how should it be interpreted.
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` And then if any prior art, you know, is
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`there any way that this prior art is anticipating any
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 21
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`Page 21 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
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`of the claims that I'm looking at generally that's in
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`22
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`the patent.
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`BY MR. KUSHAN:
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` Q So then one of the things you might have
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`been looking at or the reasons that you might have
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`been looking at the '135 patent was to see if the
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`'135 patent claims were anticipated by any prior art?
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` MR. PALYS: Objection, form, and outside
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`the scope. I'll just ask you to keep it within the
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`scope of the direct. We're talking about a patent
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`that's not at issue in these proceedings.
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` MR. KUSHAN: Joe, just make your
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`objections, single word objections, and don't have
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`talking objections, okay?
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` A Could you repeat your question?
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`BY MR. KUSHAN:
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` Q Yes. So you indicated in one of your
`
`answers you gave me that you were looking to see if
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`the '135 patent claims are anticipated by prior art;
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`is that right?
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` A At some point --
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` MR. PALYS: Same objections.
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 22
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`Page 22 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` A -- I looked at that.
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`BY MR. KUSHAN:
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` Q And do you remember what the prior art was?
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` MR. PALYS: Same objections.
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` A That was months ago. I'm sorry.
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`BY MR. KUSHAN:
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` Q Was it the same prior art you considered
`
`for this proceeding?
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` MR. PALYS: Same objections.
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` A Honestly, I don't recall. That was months
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`ago.
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`BY MR. KUSHAN:
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` Q Okay. Now, do you remember, did you notice
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`that the '135 patent had a very similar disclosure to
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`the '697 patent?
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` A Yes.
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` Q Now, you've been granted patents, correct?
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` A I have.
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` Q Okay. So you've participated in the
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`process where you would write the patent description?
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` A I have.
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` Q And then you know what a patent claim is?
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`Petitioner Apple Inc. - Exhibit 1083, p. 23
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`Page 23 of 339
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` A I do.
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` Q Okay. And the patent claim defines the
`
`invention, right?
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` A And the scope of the invention.
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` Q And this is based on your own knowledge
`
`before you were hired to do work in this case, right?
`
` A Correct.
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` Q Okay. And when you see a claim in a
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`patent, that's defining the invention, as I just
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`said, right? Let me get a cleaner question. So the
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`claim in the patent defines the invention, correct?
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` A So the claim defines the scope of the
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`invention in light of the specifications, and I
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`believe how one skilled in the art would have
`
`understood those.
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` Q And --
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` A Again, not a lawyer.
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` Q I know, and I'm just asking for your
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`understanding. It's just based on an observation
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`that you've been granted patents.
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` A Yes.
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` Q So I'm just --
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 24
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`Page 24 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
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` A Working with lawyers at Lucent Technologies
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`25
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`and elsewhere.
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` Q Great. So when you see a patent claim,
`
`that may describe one example of something that's
`
`described in the patent, correct?
`
` A I think generally that is correct. Mm-hmm.
`
` Q And it's also correct that when you look at
`
`a patent claim, the Patent Office will not grant you
`
`that claim unless they believe there's a support for
`
`that claim in the description, correct?
`
` MR. PALYS: Objection, form.
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` A My understanding is that the process is,
`
`the PTO office applies -- from my experiences,
`
`looking to see whether that is patentable.
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`BY MR. KUSHAN:
`
` Q Again, so when you see a patent claim
`
`that's been issued in the patent, and that defines
`
`the invention, you will also see a description,
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`typically in more detail, of what that invention is
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`in the disclosure of the patent?
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` A You will typically see that.
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` Q Okay. So if the patent examiner were to
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`Petitioner Apple Inc. - Exhibit 1083, p. 25
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`Page 25 of 339
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`look at your claim that you presented in a patent
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`application and they didn't see that invention in the
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`description, they probably wouldn't give you that
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`patent claim, right?
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` MR. PALYS: Objection, form, and outside
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`scope of direct.
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` A So can you repeat your question a little
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`bit more specifically for me, please?
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`BY MR. KUSHAN:
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` Q Sure. And we just walked through the
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`description of a patent claim. It may cover a
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`particular embodiment of the invention, right?
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` A Mm-hmm.
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` Q And so when you present a patent
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`application with a claim in it, the claim gets
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`examined for compliance with all of the requirements
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`of patentability, right?
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` A Right.
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` Q So one of the questions the patent examiner
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`may look at is whether the claim describes something
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`which is described in the patent disclosure, correct?
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` MR. PALYS: Objection to form. Outside
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 26
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`Page 26 of 339
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`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
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`27
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`scope of direct.
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` A So I think one of the standards that would
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`have been applied at that time by the examiner is
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`interpreting the scope of the claims in light of the
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`broadest reasonable interpretation that should be
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`assigned. So think more broadly about what is said
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`here, and, you know, the broadest reasonable
`
`interpretation as one of ordinary skill would have
`
`viewed this. So...
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`BY MR. KUSHAN:
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` Q Sure. And so if the patent examiner
`
`doesn't see the invention that you've claimed that's
`
`described in your -- sorry -- that the patent
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`examiner does not see in your disclosure a
`
`description of the invention as it's been defined in
`
`your patent claim, they won't grant you that patent
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`claim, right?
`
` MR. PALYS: Objection to form, and outside
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`scope of direct testimony.
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` A I don't know.
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`BY MR. KUSHAN:
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` Q You don't know?
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`Apple v. VirnetX, et al., IPR2014-00237 and IPR2014-00238
`Petitioner Apple Inc. - Exhibit 1083, p. 27
`
`Page 27 of 339
`
`
`
`DEPOSITION OF FABIAN NEWMAN MONROSE, Ph.D.
`CONDUCTED ON THURSDAY, OCTOBER 23, 2014
`
` A No. I mean...
`
` Q But just generally, your patent claim has
`
`to be described in your patent disclosure, right?
`
` MR. PALYS: Objection, form. Outside scope
`
`28
`
`of direct testimony.
`
` A Patent claim...
`
`BY MR. KUSHAN:
`
` Q And I don't want to make this more
`
`complicated than --
`
` A I'm just -- the claims are supported by
`
`the -- you know, what's expressed in the
`
`specification of the patent.
`
` Q Right. If I see a claim and it says
`
`perform steps A, B, and C, I go into the patent
`
`disclosure, I'm going to see probably in more detail
`
`a description of a process where you perform steps A,
`
`B, and C, correct?
`
` MR. PALYS: Objection, form.
`
` A Correct. I might be making this harder
`
`than it is. I just want to be on the same page
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