Page 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________________________
` APPLE INC.
` Petitioner
` v.
` VIRNETX, INC. and SCIENCE APPLICATION
` INTERNATIONAL CORP.,
` Patent Owner
` _____________________________
` Case IPR2016-00331
` Case IPR2016-00332
` Patent No. 8,504,696
` _____________________________
`
` DEPOSITION OF ROBERTO TAMASSIA
` Washington, D.C.
` September 9, 2016
`
`Reported by: Mary Ann Payonk
`Job No. 111685
`
`TSG Reporting - Worldwide 877-702-9580
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`VIRNETX EXHIBIT 2040
`Apple v. VirnetX
`IPR2016-00332
`
`Page 1 of 64
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________________________
` APPLE INC.
` Petitioner
` v.
` VIRNETX, INC. and SCIENCE APPLICATION
` INTERNATIONAL CORP.,
` Patent Owner
` _____________________________
` Case IPR2016-00331
` Case IPR2016-00332
` Patent No. 8,504,696
` _____________________________
`
` DEPOSITION OF ROBERTO TAMASSIA
` Washington, D.C.
` September 9, 2016
`
`Reported by: Mary Ann Payonk
`Job No. 111685
`
`TSG Reporting - Worldwide 877-702-9580
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`VIRNETX EXHIBIT 2040
`Apple v. VirnetX
`IPR2016-00332
`
`Page 1 of 64
`
`
`
`Page 2
`
` September 9, 2016
` 9:00 a.m.
`
` Deposition of ROBERT TAMASSIA, held at
`the offices of Sidley Austin, LLP, 1501 K
`Street, N.W., Washington, D.C., pursuant to
`Notice before Mary Ann Payonk, Nationally
`Certified Realtime Reporter and Notary Public
`of the District of Columbia, Commonwealth of
`Virginia, States of Maryland and New York.
`
`1 2 3 4
`
`5
`
`6 7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 2 of 64
`
`
`
`Page 3
`
`APPEARANCES:
`ON BEHALF OF PATENT OWNER:
` DANIEL ZEILBERGER, ESQUIRE
` JOSEPH PALYS, ESQUIRE
` PAUL HASTINGS
` 875 15th Street, N.W.
` Washington, D.C. 20005
`
`ON BEHALF OF PETITIONER:
` THOMAS BROUGHAN III, ESQUIRE
` SIDLEY AUSTIN
` 1501 K Street, N.W.
` Washington, D.C. 20005
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 3 of 64
`
`
`
`Page 4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`ROBERTO TAMASSIA,
` called as a witness, having been duly
` sworn, was examined and testified as
` follows:
` EXAMINATION
`BY MR. ZEILBERGER:
` Q. Good morning.
` A. Hello. Good morning.
` Q. Could you state your name and spell
`it for the record?
` A. Yes. Roberto Tamassia,
`T-A-M-A-S-S-I-A. First name, R-O-B-E-R-T-O.
` Q. Do you understand you're here today
`for IPR2016-00331 and IPR2016-00332 relating to
`U.S. Patent Number 8,504,696?
` A. Yes.
` Q. And you have been deposed before;
`correct?
` A. That's right.
` Q. Do you recall when you've been
`deposed?
` A. Yes. So I was first deposed was the
`end of 2012, and then again in November 2015,
`and then twice again in January 2016.
` Q. When you say were you deposed in the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 4 of 64
`
`
`
`Page 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`end of 2012, what are you referring to?
` A. I'm referring to a software matter
`related to Dunstan versus Comscore.
` Q. Do you understand you're under oath
`today?
` A. Yes, I do.
` Q. You're probably familiar with some of
`the rules, but just to briefly go over them,
`you understand that we will be taking breaks
`today. To the extent we do, please answer any
`pending questions and then, unless there's a
`privilege concern, then we can take a break.
` Your lawyer may object today. Please
`answer anyway unless your lawyer instructs you
`otherwise.
` If any question is unclear today,
`please let me know; otherwise, I'll assume you
`understood the question.
` Do you have any questions?
` A. I don't have any questions. I
`understand the procedure.
` Q. Is there any reason you can't testify
`completely and accurately today?
` A. There is no reason I can think of.
` Q. Did you prepare at all for the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 5 of 64
`
`
`
`Page 6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`deposition today?
` A. Yes, I did prepare.
` Q. What did you do to prepare for today?
` MR. BROUGHAN: I'll object to the
` extent it calls for privileged work
` product-protected information, but
` please answer to the extent you can.
` A. I met with counsel, and I did review
`my declaration, the patent in question, '696,
`and some of the exhibits.
` Q. And when you refer to counsel, who
`are you referring to?
` A. I'm referring to meetings with Tom
`Broughan, who is here, Sam Dillon, and also
`Herman Webley.
` Q. Anyone else?
` A. No.
` Q. Are those attorneys for Sidley
`Austin?
` A. Yes, they are.
` Q. You mentioned that you reviewed some
`exhibits. Do you recall which exhibits you
`reviewed?
` A. Yes. I focused on the Beser patent,
`on the Aventail reference, and on the RFC 2401.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 6 of 64
`
`
`
`Page 7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Those are the references I focused on while
`preparing.
` Q. Did you review any other exhibits?
` A. I did not review them.
` Q. Did you review any other documents?
` A. Did not review any other documents
`for the purpose of preparing for this
`deposition.
` Q. How long did you prepare for the
`deposition today?
` A. So I started last weekend, and I
`think I spent about 15 hours or so. I don't
`recall now an exact count, but that's a good
`approximation, 15 hours.
` Q. Did you bring anything with you today
`to help you testify?
` MR. BROUGHAN: Object to the extent
` it calls for privilege work
` product-protected information. Caution
` you not to reveal the substance of any
` communications with counsel. But
` subject to that, you may answer.
` A. So I did not bring anything for the
`purpose of helping me today testify.
` MR. ZEILBERGER: Just to get it out
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 7 of 64
`
`
`
`Page 8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` of the way, I'm handing the witness
` what's been previously marked as
` Exhibit 1005 in IPR2016-00331.
` (Exhibit No. 1005, previously marked, was
` referenced and indexed.)
` MR. ZEILBERGER: And I'm handing
` the witness what's been previously
` marked as Exhibit 1005 in IPR2016-00332.
` (Exhibit No. 1005, previously marked, was
` referenced and indexed.)
`BY MR. ZEILBERGER:
` Q. Do you recognize the two exhibits I
`just handed you?
` A. Yes, I recognize them.
` Q. What are these exhibits?
` A. Yes, they appear to be two
`declarations that have been filed for two IPRs
`that are the subject of the deposition today.
`And they appear to be exactly as, you know, I
`prepared them. I understand you're
`representing these to me.
` Q. Can you turn to the last page of
`Exhibit 1005 in the 331 matter?
` A. Yes.
` Q. And do you recognize the signature
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 8 of 64
`
`
`
`Page 9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`that's on that page?
` A. Yes. That's my signature.
` Q. And it's dated December 22, 2015;
`correct?
` A. That's right.
` Q. So you signed this declaration on
`December 22, 2015?
` A. Yes, I understand that is the date.
` Q. Can you turn to the last page of
`Exhibit 1005 in the 332 proceeding?
` A. Yes.
` Q. Is that your signature as well?
` A. Yes, it is.
` Q. And both of these declarations relate
`to U.S. Patent Number 8,504,696; correct?
` A. That's right.
` Q. And just for purposes of today, if I
`refer to that patent as the '696 patent, you'll
`understand what I'm referring to?
` A. I do. And it's fine to refer to it
`as the '696 patent. I may also refer to it in
`the same way.
` Q. Okay, great.
` Did you review the entirety of the
`'696 patent when you prepared these
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 9 of 64
`
`
`
`Page 10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`declarations?
` A. The specification of this patent is
`substantially similar to other patents I have
`reviewed over a period of more than one year,
`so I am familiar with the specification of the
`patent.
` So for the purpose of preparing, I
`focused primarily on portions related to the
`claim construction section of my declarations,
`and also to portions that are related to the
`claims of the '696 patent.
` Q. Okay. So you relied on your review
`of substantially similar specifications from
`other patents for the other portions of the
`specification; is that accurate?
` A. I will say that at some point in the
`past I have reviewed the entire specification
`of the patent, because it's essentially
`substantially similar to that of other patents.
` Q. Okay. When did you first begin
`preparing the opinions that are in the two
`declarations here?
` A. So this was the beginning of
`December 2015. Could have been a bit earlier.
`I don't remember exactly.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 10 of 64
`
`
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q. Were any materials provided to help
`you prepare these declarations?
` MR. BROUGHAN: I'll object to the
` extent it calls for privilege or work
` product-protected information. Caution
` the witness not to reveal the substance
` of communications with counsel. Subject
` to that, you may answer.
` A. I was provided the patent, the '696
`patent, and the documents I referred to in my
`declarations.
` Q. Anything else?
` MR. BROUGHAN: Same objection as
` before.
` A. I don't think so. I don't remember
`being provided anything but what I referred to
`in the declarations itself, themselves.
` Q. Okay. Did you review any decisions
`issued by the Board in preparing your
`declarations?
` MR. BROUGHAN: Object to form.
` A. Can you clarify the meaning of
`decisions issued by the Board?
` Q. So when I say "the Board," I'm
`referring to the Patent Trial and Appeal Board.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 11 of 64
`
`
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Do you know what the Patent Trial and Appeal
`Board is?
` A. I understand what that is. My
`question to you for the purpose of
`clarification is what is the meaning of
`decision by PTAB?
` Q. So I think your declarations cite to
`some decisions issued by the Board. Correct?
` A. In the claim construction section I
`have cited certain interpretations that the
`Board stated at some point and so that's what I
`been referring to. I'm not sure if those are
`called decisions or if they have some other
`technical name.
` Q. So you do understand that those
`statements from the Board appear in some
`documents that the Board issued; right?
` So if you go to the 331 declaration,
`paragraph 64 is one example.
` So if you look at the bottom of page
`21 it says, for example, "institution
`decision."
` Do you see that?
` A. Yes.
` Q. So that's one example of a decision
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 12 of 64
`
`
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`issued by the board; right?
` A. As I state in this paragraph, this is
`information that I received about an
`interpretation made by the Board. I believe
`this specific interpretation was not
`controversial, and what I did is taking into
`account the specification in what would be the
`broadest possible interpretation in view of
`this specification, then I came up with what in
`paragraph 66 on page 23 I have indicated as
`being my own interpretation.
` Q. When your declarations cite to these
`decisions by the Board, did you review those
`decisions?
` A. I don't remember the exact process at
`the time. It was quite some time ago. I may
`have done a focused review just to double-check
`the statement I'd been informed about.
` Q. Did you review any of your prior
`opinions when you prepared the declaration in
`the 331 and 332 proceedings?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information.
` A. I believe I understand your question,
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 13 of 64
`
`
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`but if you could just be more specific about
`what you referred to when you say my prior
`declarations.
` Q. I'm referring to any of your prior
`declarations in the IPR proceedings between
`VirnetX and Apple.
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. I
` caution the witness not to reveal the
` substance of any communications with
` counsel. Subject to that, you can
` answer.
` A. Are you ready for my answer now?
` Q. Yes, please.
` A. Okay. So I had in mind my previously
`filed declarations in Apple versus VirnetX
`matters, which were on patents with
`substantially similar specifications, and also
`with some similarity, sometimes significant, in
`the claims and structure of the claims. And
`hence, there were -- certainly in my mind when
`I prepared this declaration, I -- I had a copy,
`of course, of my declarations. I don't
`remember right now if I did or not, how I may
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 14 of 64
`
`
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`have referred to them or relied on my memory.
` Certainly, as anybody can see, these
`declarations also have similarities to my
`previous declarations because they are on
`similar matters.
` Q. Who retained you for these
`proceedings?
` A. I was retained by Sidley Austin.
` Q. Have you ever communicated with
`anyone outside of Sidley Austin regarding these
`proceedings?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Do not
` reveal the substance of communications
` with Apple's counsel. Subject to that,
` you may answer.
` A. The fact that I have written and
`submitted a declaration, the fact that I'm
`being deposed today is a matter of public
`record and so I've been open about it.
` There are several people who know,
`for example, that I am, you know, being deposed
`today including, for example, my partner. She
`knows about it. I'm not sure she remembers or
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 15 of 64
`
`
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`knows that it involves Apple or VirnetX.
` There are colleagues. There are
`collaborators who know that I am, you know,
`here, okay?
` My employer knows that I'm involved
`in this line of work. So there are a number of
`people, and some of these communications, like
`the one to my employer, are required as a
`condition of employment.
` Q. Let me narrow the question.
` Did you ever discuss any VirnetX
`patent with an individual from a law firm other
`than Sidley Austin?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Caution
` the witness not to reveal the substance
` of any communications with Apple's
` counsel. Subject to that, you can you
` may answer.
` A. Can you repeat exactly the question?
` Q. Did you ever discuss any VirnetX
`patent with an individual from a law firm other
`than Sidley Austin?
` MR. BROUGHAN: Same objection.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 16 of 64
`
`
`
`Page 17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A. I don't remember discussing VirnetX
`patents, discussing, you know, what they cover,
`what they do.
` The disclosure to my employer may
`result in a conversation they may want to have
`with me about what is the nature of my expert
`witness work and possible relationships with my
`own research work, but my employer so far has
`accepted my disclosure of, you know, external
`consulting work. They've not called me in yet
`to discuss what is the work about VirnetX.
` Q. Your employer isn't a law firm;
`right?
` A. No, my employer is Brown University.
` Q. I'll just repeat my question.
` A. Okay.
` Q. I think you misheard.
` Did you ever discuss VirnetX patents
`with an individual from a law firm other than
`Sidley Austin?
` MR. BROUGHAN: Same objection as
` earlier. Caution you not to reveal the
` substance of communications with Apple's
` counsel. Subject to that, you may
` answer.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 17 of 64
`
`
`
`Page 18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A. So I've not had discussions about
`VirnetX's patents, like what is my opinion on
`them or what they are about with any individual
`who is a member of a law firm.
` Q. Have you had any discussions
`regarding the proceedings between VirnetX and
`Apple with any individual from a law firm other
`than Sidley Austin?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Caution
` the witness not to reveal the substance
` of communications with Apple's counsel.
` Subject to that, you may answer.
` A. Can you clarify what you are seeking
`when you say discussions about proceedings?
`Because these proceedings are about patents, so
`it appears to be a very similar question.
` Q. So I'm not trying to get at the
`substance of your conversations. What I want
`to answer is -- when I refer to a proceeding
`between VirnetX and Apple, do you understand
`what I'm referring to?
` A. The proceedings are, for example, the
`current IPR proceedings on which I'm being
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 18 of 64
`
`
`
`Page 19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`deposed, right? Like the inter partes review
`331 --
` Q. Right.
` A. -- and 332 and others that are
`pending. I understand there are several of
`them at various stages.
` Q. Right.
` And you understand there's also a
`litigation between VirnetX and Apple, for
`example?
` A. I understand that there is also some
`litigation, yes.
` Q. So what I want to understand is
`whether you've ever had any discussions in any
`manner about these proceedings with an
`individual from a law firm other than Sidley
`Austin.
` MR. BROUGHAN: Same objection as
` before.
` A. So as someone who's an expert in
`multiple fields of computer science and
`computer engineering, I am, you know, sometimes
`approached by individuals who appear to be
`either members of law firms or somehow, you
`know, representing them, okay? And their
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 19 of 64
`
`
`
`Page 20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`inquiries could be of the type, you know, what
`is your experience, or something of this type.
` And as the fact that I've been
`involved in these proceedings is public
`information, I would feel comfortable in, you
`know, if asked, in letting them know.
` Q. Other than individuals who are
`seeking to retain your services for matters
`unrelated to VirnetX patents, is there anyone
`else you've discussed these proceedings between
`VirnetX and Apple with?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Caution
` you not to reveal the substance of
` communications with counsel. You may
` answer.
` A. Okay, so other than individual
`members of law firms or associated with them
`who may have approached me with the purpose of
`potentially exploring a retention of my
`services on matters unrelated to VirnetX
`patents, I've not discussed VirnetX patents or
`proceedings with any member of the -- of a law
`firm or associated with a law firm.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 20 of 64
`
`
`
`Page 21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q. Okay. Your declarations include a
`section regarding anticipation; correct?
` A. Both my declarations include sections
`about anticipation.
` Q. To be more specific, paragraphs 19 to
`23 of both of the declarations discuss
`anticipation; right?
` A. Yes.
` Q. So you understand that for a patent
`claim to be anticipated by the prior art, each
`and every requirement of the claim must be
`found expressly or inherently in a single prior
`art reference as recited in the claim; correct?
` A. My understanding of anticipation is
`clarified in these paragraphs of the
`declaration and so, as I wrote in 21, my
`understanding includes that each and every
`requirement of the claim must be found
`expressly or inherently in a single prior art
`reference as recited in the claim, and I add my
`further understanding about prior -- that
`limitations not expressly described in a prior
`art reference might still be there if they are
`inherent to what is being described in the
`prior art.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 21 of 64
`
`
`
`Page 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` So it is, you know, an explanation of
`the exact meaning of something being inherent
`that is inherent not only to the specific items
`but to the process, to the broader process that
`is being described.
` Q. Your declarations also have a section
`about obviousness in paragraphs 24 to 39.
`Correct?
` A. That's right. I have a review of
`what is my own understanding of obviousness as
`somebody who is a technical expert, of course,
`and not a lawyer.
` Q. In referring specifically to
`paragraph 28, you understand that an
`obviousness analysis requires consideration of
`the differences between the prior art and the
`claims at issue; correct?
` A. I understand that any such analysis
`should include the consideration of what would
`be differences between what is being claimed in
`a patent and what is taught by the prior art in
`addition to what I list as additional factors,
`which is a scope and content of the prior art,
`what would be the knowledge of someone of
`ordinary skill in the art related to the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 22 of 64
`
`
`
`Page 23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`patent, and other factors that, you know, may
`exist. You know, they should be objective
`factors for the specific case.
` So I -- I try to summarize there what
`is my understanding. I agree that differences
`is one of the factors.
` Q. In your declaration in the 331
`proceeding, did you map any claim of the '696
`patent to any prior art?
` A. My declaration for the 331
`proceedings does not make an explicit mapping
`between prior art, prior art combinations, and
`claims. I understand that the petitioner,
`Sidley Austin on behalf of Apple, has made such
`analysis.
` The work I have done provides an
`analysis of combinations and obviousness that
`is relevant to the correspondence that has been
`indicated by the petitioner, and the petitioner
`considers that my declaration supports what are
`their findings.
` Q. In your declaration in the 332
`proceeding, did you map any claim of the '696
`patent to any prior art?
` A. I'll make the -- I'll give you the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 23 of 64
`
`
`
`Page 24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`same answer. I don't think it's necessary that
`I repeat it. I have not explicitly made these,
`you know, correspondence analysis, but I
`understand that my analysis of combinations has
`been used to support, okay, a mapping analysis.
` Q. Did you analyze whether any prior art
`discloses the features recited in any claim of
`the '696 patent?
` MR. BROUGHAN: Objection, form.
` A. Are you referring to one declaration,
`to the other, to both?
` Q. In your declaration in the 331
`proceeding did you analyze whether any prior
`art discloses the features recited in the
`claims of the '696 patent?
` MR. BROUGHAN: Object to form.
` Q. Let me ask you another way. If you
`can answer, please go ahead.
` A. Yeah. So again, I did not make a
`legal analysis of anticipation. What I did is
`a technical type of, you know, study and
`investigation, reporting what are my findings.
`And my declaration is related, has been used in
`support, okay? Could be used in support. I
`should say could be used in support.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 24 of 64
`
`
`
`Page 25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q. You have no opinion on whether any
`prior art reference -- strike that.
` A. Okay.
` Q. Your declaration in the 331
`proceeding does not include any opinion on
`whether any prior art reference discloses any
`claim limitation in the '696 patent; correct?
` A. I have not expressed in my
`declaration for the 331 proceedings any
`explicit opinion about whether
`claim limitations or elements have been
`disclosed by prior art; however, I have
`analyzed the prior art and my findings are
`relevant to such, an analysis of such, a legal
`analysis.
` Q. And was that your same response for
`the 332 declaration as well?
` A. Yes, I will give you the same
`response if you ask me about the 332.
` (Recess taken.)
` MR. ZEILBERGER: I'm handing the
` witness what's been previously marked as
` Exhibit 1001 in both the 331 and 332
` proceedings.
` (Exhibit No. 1001, previously marked, was
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 25 of 64
`
`
`
`Page 26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` referenced and indexed.)
`BY MR. ZEILBERGER:
` Q. Do you recognize Exhibit 1001?
` A. Yes. It is the '696 patent.
` Q. Can you turn to figures 26 and 27?
` A. Yes.
` Q. Do you understand how the system
`shown in figure 26 operates?
` A. I did previously review this figure,
`and I did review the passages that refer to
`this figure, and I did come up with my
`understanding of the configuration and method
`associated with that figure.
` Q. And what is your understanding of the
`configuration shown in figure 26?
` A. So figure 26 is meant to illustrate
`one of the aspects of the claimed invention.
`And it relates to figure 25, showing how
`additional components have been added to what
`is deemed to be the prior art in terms of a web
`browser client seeking to connect with certain
`target site.
` What figure 25 shows, the web browser
`being equipped with networking software called
`IP stack, making a query to a DNS server and
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 26 of 64
`
`
`
`Page 27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`then making a page request to a target website.
` Figure 26 shows a modified type of
`system configuration where now there are
`additional components. For example, a DNX
`proxy application or service that is contacted
`instead of the original DNS server, and then
`additional components like something called the
`gatekeeper.
` And also, it indicates how
`connections could be made to a target site that
`in one case is labeled of being secure, in the
`other case, it's labeled being unsecure. So it
`does illustrate one of the aspects of the
`claimed invention.
` Q. What is your understanding of the
`difference between a secure target site and the
`unsecure target site?
` MR. BROUGHAN: Object to form.
` MR. ZEILBERGER: I'll rephrase.
` Q. In your answer, you referred to a
`secure target site and the unsecure target site
`in figure 26; right?
` A. Yes.
` Q. So what is your understanding of the
`difference between the secure target site and
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 27 of 64
`
`
`
`Page 28
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`the unsecure target site that you referred to?
` A. To give you an accurate answer of
`what is my understanding, I would like to go
`back now to the passage that introduces figure
`26. If you can point me to it, it would be
`faster; otherwise, I can go through based on my
`general recollection of where it may appear.
` Q. No problem.
` A. Thank you.
` Q. I think it begins at column 40, line
`16.
` A. Thank you.
` So the specification outlines a
`different approach for processing requests
`originated by the web browser depending on
`whether the target website is determined to be
`secure or not.
` If the target website is determined
`to be unsecure, then the access by the client
`to the website is performed in a way that the
`specification mentions to be similar to that of
`the prior art.
` In particular, the specification
`refers to the module called DNS proxy in line
`44 of the column where it says that the proxy
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 28 of 64
`
`
`
`Page 29
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`will forward the request to the server, then
`the user will receive presumably the IP address
`of the site labeled unsecure and then will
`access it. So that is expressed starting at
`45.
` Conversely, if a determination is
`made that the site is secure, then the
`processing of the request is now different and
`the proxy there will do an access control
`verification based on what the specification
`calls user security privileges to access the
`site.
` So there is a situation where this
`intermediate device, DNX proxy, does additional
`checks related to the user's access control.
` And so that is the difference in the
`processing the request that is outlined in this
`portion of the specification. That's one of
`the elements in this voluminous specification
`that he has claimed to be novel.
` Q. And why do you say that this is one
`of the elements that's claimed to be novel?
` A. Well, the reason I believe that the
`specification considers this configuration as
`part of the invention is language of the type
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 29 of 64
`
`
`
`Page 30
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`according to one embodiment, and, you know,
`contrasting this with what is referred to as
`prior art or conventional scheme, so -- and, in
`general, the entire context of the
`specification.
` Q. If you look at figure 25, what is
`your understanding how element 2502 operates?
` A. You're asking me about box labeled
`DNS number 2502?
` Q. Yes.
` A. So as described by the specification,
`device or software server 2502 receives as
`illustrated by the passage at column 39,
`starting at line 33, so receives a DNS request.
`This would be a request that comes from the
`client 2501 to receive an IP address that is
`associated with a certain name. Since the
`language DNS is used, it appears that this is
`the -- a host name.
` Then this DNS server comes up with
`a -- with an IP address corresponding with this
`name if it can be found. So there is certain
`operations that run by 2502. And the response,
`you know, will generally include an IP address,
`which is further used now by the client to
`
`TSG Reporting - Worldwide 877-702-9580
`
`Page 30 of 64
`
`
`
`Page 31
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`connect to the target server, in this example,
`client server for the purpose of illustration,
`web browser and website, okay? They call it
`web server.
` And so now there is a request that is
`made for a certain resource on the website.
`Could be a page, could be an image. And this
`request, as indicated later on in the passage,
`that request is made via the IP address to
`reach the target website.
` So this prior art was definitely
`known, okay, how to
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
