IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPROVAL BOARD
`
`Page 1
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`- - - - - - - - - - - - - x
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`APPLE, INCORPORATED, :
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` Petitioner, :
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`v. : CASE No's. IPR2016-00754
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`PERSONALIZED MEDIA : And IPR2016-00755
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`COMMUNICATIONS, LLC, :
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` Patent owner. :
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`- - - - - - - - - - - - - x
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` Videotaped Deposition of THOMAS J. SCOTT, JR.
`
` Washington, D.C.
`
` Friday, February 17, 2017
`
` 9:09 a.m.
`
`Reported by: Cassandra E. Ellis, RPR
`
`Job No.: 18148
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 1
`
`

`

`Page 2
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` C O N T E N T S
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`EXAMINATION OF THOMAS J. SCOTT, JR. PAGE
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` By Mr. Merkin 6
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` E X H I B I T S
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` (Attached to the Transcript)
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`THOMAS J. SCOTT, JR. Deposition Exhibit PAGE
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`Previously Marked
`
`Exhibit 2020 Thomas J. Scott, Jr. Declaration 13
`
` In IPR2016-00754
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`Exhibit 2024 Thomas J. Scott, Jr. Declaration 13
`
` In IPR2016-00755
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` Deposition of THOMAS J. SCOTT, JR., held at
`the offices of Kirkland & Ellis LLP, 655 15th Street
`Northwest, Suite 1200, Washington, D.C. 20005,
`pursuant to agreement, before Cassandra E. Ellis,
`Certified Court Reporter - WA, Certified Shorthand
`Reporter - HI, Registered Professional Reporter,
`Certified Livenote Reporter, Realtime Systems
`Administrator and Notary Public of The District of
`Columbia.
`
`Page 3
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`Page 5
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` A P P E A R A N C E S
`
` ON BEHALF OF PETITIONER APPLE:
` JOEL R. MERKIN, ESQUIRE
` KIRKLAND & ELLIS LLP
` 601 Lexington Avenue
` New York, New York 10022
` (212) 446-4663
` joel.merkin@kirkland.com
`
`
` ON BEHALF OF PATENT OWNER PMC:
` DOUGLAS J. KLINE, ESQUIRE
` GOODWIN PROCTER LLP
` 901 New York Avenue, Northwest
` Washington, D.C. 20001
` (202) 346-4059
` Dkline@goodwinlaw.com
`
`
` ALSO PRESENT: Joseph E. Ellis, CLVS
`
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` P R O C E E D I N G S
` THE VIDEOGRAPHER: Good
` morning. This is the beginning of
` disc number one in the deposition
` of Thomas Scott, taken in the
` matter of Apple, Incorporated,
` versus Personalized Media
` Communications, LLC, with Case
` Numbers IPR2016-00754 and
` IPR2016-00755, held in the United
` States Patent and Trademark Office
` before the Patent Trial and Appeal
` Board.
` Today's date is February
` 17th, 2017, and the time on the
` monitor is 9:09 a.m. My name is
` Joseph Ellis, the certified legal
` video specialist, the court
` reporter is Cassandra Ellis, and
` we are here with Transperfect
` Legal Solutions.
` If counsel would please
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`2 (Pages 2 to 5)
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`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 2
`
`

`

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` identify themselves, and whom they
` represent, after which the court
` reporter will swear in the witness
` and you may proceed.
` MR. MERKIN: Joel Merkin, of
` Kirkland and Ellis, on behalf of
` petitioner, Apple.
` MR. KLINE: Doug Kline, of
` Goodwin, on behalf of patent
` owner, PMC, and the witness.
` THOMAS J. SCOTT, JR.
` having been sworn, testified as follows:
` EXAMINATION
`BY MR. MERKIN:
` Q Mr. Scott, good morning.
` A Good morning.
` Q Can you please state your full
` name for the record?
` A Thomas J. Scott, Junior.
` Q Thank you for joining us today.
` I understand that you've been deposed
` several times, previously; is that
`
`Page 7
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` correct?
` A Yes.
` Q You submitted a declaration
` regarding secondary considerations in
` IPR2016-754 and 755; correct?
` A That is correct.
` Q It's the same declaration in
` both of those IPR proceedings; is that
` correct?
` A Yes.
` Q You are the general counsel of
` PMC; correct?
` A That is correct.
` Q You've been the general counsel
` of PMC since April 2014; correct?
` A That's correct.
` Q When did you join PMC?
` A April 1, 2014.
` Q So you didn't hold any other
` positions at PMC prior to general
` counsel; correct?
` A I've never been an employee
`
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` before, no.
` Q Prior to joining PMC you were
` an attorney at Goodwin Procter, a law
` firm; correct?
` A Yes.
` Q How long were you an attorney
` at Goodwin Procter, approximately?
` A I joined Goodwin Procter in
` April -- well, April 23rd, 2007, and I
` left on March 31, 2014.
` Q As an attorney of Goodwin
` Procter you represented PMC?
` A Yes.
` Q When did you start representing
` PMC?
` A Sometime prior to September
` 11th, 1987, and after August 31st, 1985.
` Q Have you separately represented
` Mr. John Harvey?
` A Yes.
` Q When did you start representing
` Mr. Harvey?
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`Page 9
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` A In 1979, while I was employed
` at the law firm, in New York, of Cooper
` Dunham Clark Griffin and Moran, I
` represented Mr. Harvey in his personal
` capacity.
` Q Were those for matters outside
` the scope of PMC?
` A Well, PMC didn't exist, at the
` time.
` Q Outside the scope of PMC or
` PMC's predecessor companies?
` A Well, neither of them existed,
` at that time. It was Mr. Harvey in a
` personal capacity.
` Q Generally speaking, what types
` of matters did you represent Mr. Harvey
` on?
` A Oh, I mean, I actually
` testified to this before, but I'll just
` roughly repeat, Mr. Harvey was, in 1979 a
` officer in the Hambros Bank, and as I
` say, my prior testimony is, which was
`
`3 (Pages 6 to 9)
`
`TransPerfect Legal Solutions
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`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 3
`
`

`

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` closer in time is probably -- is the best
` source of what that was, of what
` happened.
` He -- he was going to leave
` Hambros Bank to take a position with a
` startup that was going to manufacture
` a patented product. And he asked me
` to review the patent, and answer
` certain questions he had about it,
` which I did.
` And then, when he was going
` to take the position, the owner of the
` company decided that he did not wish
` to hire Mr. Harvey and so he -- he
` didn't take that position. He left
` Hambros and, thereafter, he had a
` number of different proposals that he
` was making to media companies, and I
` helped him with some of those.
` Q With regard to your
` representation of PMC, prior to being
` general counsel of PMC, did you represent
`
`Page 11
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` PMC with regard to patent prosecution
` matters?
` A Yes.
` Q Did you represent PMC outside
` of patent prosecution matters?
` A Well, I represented them in a
` number of different circumstances,
` contracts and license agreements that
` they entered into, I advised them with
` respect to that and, you know, certain
` proceedings that they brought in the --
` in the International Trade Commission and
` district court I advised them with
` respect to that.
` Q As the current general counsel
` of PMC you're an employee of the company;
` correct?
` A Absolutely, yes.
` Q PMC currently pays you an
` annual salary; is that correct?
` A Yes.
` Q Do you receive an annual bonus
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` from PMC?
` A No.
` Q Do you receive compensation
` from PMC, aside from a salary?
` A No.
` Q Do you have any shares in PMC?
` A No.
` Q Any units of ownership in any
` PMC entities?
` A No.
` Q Do you receive any compensation
` from PMC, aside from your annual salary?
` A No, not monetary, anyway. It's
` a great place to work.
` Q Aside from monetary
` compensation, is there other forms --
` A No. I mean, I just -- just the
` enjoyment of working with the Harveys,
` who are wonderful people.
` Q I'm going to hand you a pair of
` declarations, these are what I will
` represent to you as identical
`
`Page 13
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` declarations from the two IPR proceedings
` we're discussing today, aside from the
` footer, which identifies the IPR
` proceeding.
` MR. KLINE: Do you have --
` thank you.
` (Previously marked Exhibit
` No's. 2020 and 2024 were
` identified for the record.)
`BY MR. MERKIN:
` Q So the first declaration I've
` handed you is PMC Exhibit 2020, in Apple
` v. PMC, IPR2016-754, the second
` declaration I've handed you is Exhibit
` 2024, in Apple v. PMC, IPR2016-755. Do
` you have each of these declarations in
` front of you?
` A Yes.
` Q And these are the declarations
` that you've submitted in these two IPR
` proceedings regarding secondary
` considerations; correct?
`
`4 (Pages 10 to 13)
`
`TransPerfect Legal Solutions
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`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 4
`
`

`

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` A Yes, as best I can tell, from a
` brief review.
` Q These are the identical
` declarations that we discussed at the
` beginning of your deposition --
` deposition that you submitted in these
` IPRs; correct?
` A Well, the ones I submitted were
` identical, yes.
` Q For purposes of today's
` deposition I do want to walk through your
` declaration. And so are you okay with
` walking through the PMC Exhibit 2020 from
` IPR2016-754?
` A Well, I'll answer any questions
` you have about either one of them.
` Q And it's your understanding,
` correct, that the paragraph numbers in
` each declaration are the same?
` A Well, yes, that's what I said,
` they -- the ones that I submitted were
` identical.
`
`Page 15
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` Q Thank you. If you could please
` turn to paragraph three on page two of
` your declaration?
` A Yes.
` Q You started that paragraph by
` stating "as a registered patent
` attorney"; is that correct?
` A Yes.
` Q Do you believe you need to be a
` registered patent attorney to provide a
` declaration regarding secondary
` considerations?
` A Well, I believe it helps. I
` mean, obviously many of the jurists who
` deal with the matter are not, but I
` believe that a person who has experience
` in all the areas of patent law practice
` and deals with obviousness from many
` different aspects has a better
` understanding of what indicia demonstrate
` the non-obviousness of invention, yes, I
` do.
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` Q Is someone who is not a
` registered patent attorney, in your view,
` not as qualified to be able to opine on
` secondary considerations?
` A Well, as a general matter, I
` mean, obviously, people, very different
` skills and understanding of -- of
` concepts, and there are many people who
` are not registered patent attorneys who
` are very proficient in that subject, but
` as a general matter, I would say a person
` who has a deep experience in all aspects
` of patent practice is better qualified.
` Q If I can turn your attention to
` paragraph four of your declaration,
` starting on page two?
` A Yes.
` Q You state that PMC's patent
` portfolio comprises 97 US patents;
` correct?
` A Yes.
` Q Does PMC have any foreign
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`Page 17
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` patents?
` A Well, yes, it -- it has foreign
` patents. But they're all expired or
` unenforceable.
` Q Of the 97 US patents you refer
` to in paragraph four, are any of those
` patents expired?
` A Oh, yes, mm-hmm.
` Q How many of --
` A Seven.
` Q So for the record, 7 of the 97
` PMC patents --
` A Right.
` Q -- are expired; correct?
` A That's correct. I mean, I --
` the -- the first one, `490, and then the
` one issued in 1999, `243, just expired
` recently.
` Q Of the 97 PMC patents you
` reference in paragraph four have any been
` acquired by PMC?
` A Well, yes, they -- Mr. Harvey
`
`5 (Pages 14 to 17)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 5
`
`

`

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`Page 20
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` and Mr. Cuddihy assigned them to PMC.
` They're the inventors.
` Q Aside from having been assigned
` the patents from Mr. Harvey and
` Mr. Cuddihy have any of the 97 PMC
` patents that you've referenced in
` paragraph four been assigned to PMC from
` another entity?
` A No, all of them are based on
` the inventions of Mr. Harvey and
` Mr. Cuddihy.
` Q Does PMC own any other US
` patents?
` MR. KLINE: Objection,
` relevance.
` A I'm trying to make sure I
` answer this correctly.
` I think the answer is, no.
` I mean, yeah, yeah, I -- as best I
` understand, no, we own no other
` patents.
` Q You state that PMC has seven
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`Page 19
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` pending US patent applications; is that
` correct?
` A Yes, that is correct.
` Q Were any of these seven pending
` PMC patent applications filed after 1995?
` A No.
` Q Has PMC filed any patent
` applications after 1995?
` A No.
` Q Of the 97 issued PMC US
` patents, do any of these patents have
` claims that have been ruled invalid?
` A Yes.
` Q Do you -- strike that.
` How many of PMC's 97 patents
` include claims that have been ruled
` invalid?
` A Seven.
` Q PMC has several patents that
` have been subject to reexamination
` proceedings; is that correct?
` A Well, I think -- can I -- could
`
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` you clarify the question? There's
` several different types of post-grant
` proceedings that are referred to,
` generically, as reexaminations, do you
` mean ex parte reexaminations?
` Q Yes, I'm referring to ex parte
` or inter partes reexaminations.
` A Well, none of them have been
` subject to an inter partes reexamination.
` They don't qualify. They've never
` qualified. Some of them have been
` subject to ex parte reexaminations.
` Q Of the PMC patents that have
` been subject to ex parte reexamination
` proceedings, have there been claims of
` those patents that have been determined
` to be invalid?
` A Well, the -- in reexaminations
` they're canceled and there were several
` claims in -- in the first seven that were
` canceled in -- in reexamination
` proceedings.
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`Page 21
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` Q How many of PMC's 97 patents
` include claims that have been canceled?
` A Include at least one claim
` that's been canceled?
` Q Yeah, that's my question.
` A All right. Well, the seven
` that I referred to earlier, let's just be
` clear, were ruled invalid for lack of
` statutory subject matter by the district
` court in Delaware. And they have been --
` in IPR proceedings they were determined
` to be unpatentable. Those IPR, the
` proceedings are not final.
` The earlier patents, the first
` seven, not seven, I have to think, in
` two -- in two of those patents, the one
` that ends in the number `414 and `654,
` which was sometimes referred to as
` whether -- they were in order, so like
` the first one `490 is called Harvey 1,
` `725 is called Harvey, and so on, so in
` Harvey 4 and Harvey 5, none of the claims
`
`6 (Pages 18 to 21)
`
`TransPerfect Legal Solutions
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`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 6
`
`

`

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` were canceled, even though they were
` reexamined several times.
` In the others there were some
` claims in each of them that were canceled
` and others that were not, I mean, I
` can't -- you know, I mean, they -- some
` of them had 50 or so claims in them.
` I couldn't tell you, right now,
` which ones were, but it's a matter of
` public record so certificates would show
` that.
` Q When you refer to the first
` seven are you referring to the seven PMC
` patents that have expired?
` A Yes.
` Q So is it correct that all seven
` of the PMC patents that have expired --
` strike that.
` Is it correct that seven PMC
` patents have been subject to
` reexamination proceedings?
` A Of the -- of the -- of the
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`Page 23
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` first seven, all of them were subject to
` multiple reexamination proceedings.
` Q And it's your testimony that
` five of those seven PMC patents have had
` at least one claim canceled from those
` patents; correct?
` A That's correct.
` Q Outside of those first seven
` PMC patents have any other PMC patents
` been subject to reexamination
` proceedings?
` A No.
` Q PMC has several patent
` licenses; correct?
` A Oh, yes, mm-hmm.
` Q Are all of PMC's patent
` licenses for the entire PMC family of
` patents?
` A I -- I want to make sure that
` my answer is correct, here. I'm -- yes,
` that -- I believe that's correct. I
` don't -- yeah, they -- they all are for
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` all of the patents that issue the claim
` priority to the first 1981 application
` and the second -- or -- and to the 1987
` CIP application.
` Q So if I refer to PMC's
` portfolio or PMC's family of patents it's
` your understanding that I'm referring to
` the 97 issued PMC patents?
` A Right.
` Q And the seven pending
` applications?
` A Right. All of those claim the
` benefit of the 1981 and 1987
` applications.
` Q Are there any patent -- strike
` that.
` Are there any PMC patent
` licenses for only the `091 patent?
` A Well, that -- I don't -- I
` couldn't answer that question, because it
` would depend on the -- on the products
` that the licensee marketed. If they only
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`Page 25
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` used the claims of the `091 then that
` would be what it was limited.
` I mean, that -- the -- the
` question -- I mean, to give a proper
` answer to your question, I -- it's -- I'm
` just beyond my knowledge.
` Q So I want to be clear, because
` I'm not referring to the usage of PMC's
` patents. I'm specifically referring to
` the patents that are licensed in the
` agreement, itself. So let me re-ask.
` Are there any PMC patent
` licenses where only the `63- -- strike
` that.
` Are there any PMC patent
` licenses where only the `091 patent is
` licensed?
` A Well, the best way to answer
` your question is that the licenses grant
` to the licensee the right to use any
` claimed invention in any of the PMC
` patents. And whether they are using them
`
`7 (Pages 22 to 25)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 7
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`

`

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` or not is up to them.
` So the scope of the license
` depends on their activities. But they
` have available to them the right to use
` any claim of any of the patents within
` the scope of the license.
` Some of the licenses, you know,
` they're all for licensed products that
` are defined terms in the agreement and
` some of them are different in scope.
` Q Fair to call PMC's licenses
` portfolio licenses?
` A Well, how -- what -- what's
` your definition of a portfolio license?
` Q That it includes the entirety
` of PMC's portfolio.
` A Well, it includes the right to
` use any claim invention in any patent in
` the portfolio, that's a correct
` statement.
` Q I want to direct your attention
` to paragraph 11, and on the top of page
`
`Page 27
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` six you state that: "Numerous media and
` telecommunications companies use PMC's
` technology"; do you see that?
` A Yes.
` Q What companies, in your view,
` use the `091 patent?
` A Well, certainly Apple does, a
` number of e-commerce companies do, and
` many of the -- of the companies that
` distribute content on a controlled access
` basis use the `091.
` I mean, again, it -- it's
` dependent, it's like I said before, it's
` depe- -- dependent on the form of control
` access technology that they employ,
` because the claims in `091 have certain
` requirements in terms of how the keys are
` distributed and whether they're encrypted
` or not or open and then where -- how
` they're pulled out of the -- of a
` transmission that provides them so that
` there are a number of different
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` techniques and whether the companies use
` them or not is dependent on whether they
` use the techniques that are called forth
` in `091, but the -- it's used quite
` ubiquitously.
` Q Are you aware of what companies
` use technology that, in your view, is
` embodied by the `091 patent?
` A Well, yes, I mean, there --
` there is -- there are a large number of
` companies that use the -- the key
` distribution and -- and decryption
` techniques that are covered by the `091
` patent.
` And as I say, I think many of
` the decryption schemes that are used in
` all forms of media distribution and, as
` well, in -- as in certain sort of
` e-commerce activities, use that -- use
` one or more claims of that patent.
` Again, it's dependent on
` whether, for example, some of the
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`Page 29
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` claims require that some sort of -- of
` mass media be distributed or as in a
` form of a program, and others don't
` require that particular limitation,
` and so it's dependent on the business
` model of the -- of the company.
` But I certainly -- I could
` certainly say that, in my view, many
` of the -- of the -- of e-commerce
` companies, I mean, including Amazon
` and all of the other retailers, use
` certain claims of that patent, and
` many of the media distribution
` companies, such as Apple and Netflix,
` and so on, use them in the control
` access environment.
` Q Would your answer be the same
` with regard to the `635 patent?
` A Well, again, it would be
` different because the claims of that
` patent are different. But in a generic
` way, yes, because what that -- I mean,
`
`8 (Pages 26 to 29)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 8
`
`

`

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` I -- as you know, Mr. Harvey and
` Mr. Cuddihy disclosed a -- a kind of a --
` a -- a -- a significant number of
` different ways to manage key
` distribution.
` And, you know, and again, it
` would depend on the particular claim
` involved, and these techniques, and --
` and the ability to change the fashion in
` which the decryption is -- is -- key is
` distributed, are used ubiquitously in
` media companies, e-commerce companies,
` and other places.
` Q Your declaration doesn't
` analyze any specific claims of the `091
` or `635 patents; correct?
` A No, it does not.
` Q I want to direct your attention
` to paragraph 14 of your declaration. PMC
` has a license with StarSight Telecast;
` correct?
` A Yes, mm-hmm.
`
`Page 31
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` Q That license is an exclusive
` license; correct?
` A Yes, it's a exclusive license
` to the delivery of schedule information.
` MR. KLINE: I just want to
` remind you there that this is a
` public --
` THE WITNESS: I know.
` MR. KLINE: Okay.
` A But that -- that -- that part
` of it is public.
` MR. KLINE: You can just
` have that in mind, too, Joel.
` MR. MERKIN: Yes.
` MR. KLINE: Okay.
` MR. MERKIN: Understood.
` There is, I will say, various
` levels of that type of detail in
` his public declaration already.
` MR. KLINE: Yeah, sure
` thing. That's fine. I just want
` to make sure we don't lose track
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` of it.
`BY MR. MERKIN:
` Q StarSight Telecast paid PMC a
` lump sum license payment; correct?
` A No, that -- it -- that's not
` correct. And unfortunately, to give a
` full explanation of what the payment was,
` is something I can't do in a public
` forum. But your statement is not
` correct.
` Q If you look at paragraph 14 of
` your declaration, on the second line, you
` refer to a one-time payment; what do you
` mean by that?
` A Well, yes, and it also refers
` to the stock options, too. That's --
` yeah, there was a one-time payment and
` then there were the stock options, as
` well.
` Q Is -- is the one-time payment
` portion a lump sum?
` A Yes, that is a lump sum, but
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`Page 33
`
` again, there -- there were provisions,
` other provisions in the agreement, that
` required -- well, again, I have to be
` careful.
` Q Please.
` A But that -- this is a -- a
` high-level description of what -- what
` happen -- of what the situation was.
` Q Is it accurate to say that
` StarSight Telecast paid PMC a lump sum
` payment and additionally stock options?
` A And a -- yes, that's correct.
` Q I want to direct your attention
` to paragraph 17 of your declaration, on
` page eight. PMC engaged in litigation
` with The Weather Channel and Landmark
` Communications; correct?
` A That is correct.
` Q You represented PMC in that
` litigation?
` A Well, my law firm did.
` Q Were you part of the team at
`
`9 (Pages 30 to 33)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 9
`
`

`

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` your law firm representing PMC in that
` litigation?
` A That's -- repeat that.
` (Question, "Were you part of
` the team at your law firm representing
` PMC in that litigation," read back by
` the reporter.)
` A I mean, I -- I assisted the
` lawyers who were working on it, so I -- I
` don't know how to answer what the team
` was, but I was -- I was a witness, so I
` wasn't actively involved in the
` litigation.
` Q Was The Weather Channel and
` Landmark Communications both parties to
` that litigation?
` A Yes.
` Q PMC's litigation against The
` Weather Channel/Landmark Communications
` did not involve the `091 or `635 patents;
` correct?
` A Well, not -- not directly,
`
`Page 35
`
` because they hadn't issued yet.
` Q What were the accused products
` or services in PMC's litigation against
` The Weather Channel and Landmark
` Communications?
` A It was a -- a device used by
` The Weather Channel at the head ends of
` cable companies called the Weather Star,
` it had some sort of number after it, but
` it was a device that allowed the
` presentation of local weather at -- at
` the particular cable facility that it was
` present at, so it was a -- it was a
` device at the cable head end that would
` allow local weather to be distributed to
` the people at -- who were served by that
` head end.
` Q PMC's license agreement with
` The Weather Channel and Landmark
` Communications was part of a settlement
` of litigation; correct?
` A I mean, yes, I think it was
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` actually called that.
` Q The Weather Channel and
` Landmark Communications paid PMC a lump
` sum payment as part of that settlement;
` correct?
` A Well, yeah, I've got down here,
` yeah, and an option for further rights,
` too, which again, I have to be careful
` about, but that statement is correct.
` Q I want to direct your attention
` to paragraph 19 of your declaration.
` PMC's -- PMC Satellite is a wholly owned
` entity of PMC; correct?
` A It was in January of 2000, it's
` not now.
` Q PMCs Satellite's license with
` Pegasus was in a -- strike that.
` PMC Satellite's license with
` Pegasus was -- included various fields of
` use; correct?
` A Well, it was a field of use.
` Q What was the field of use? I
`
`Page 37
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` caution you to keep your answer --
` understand this is a public record.
` A Yeah. Repeat it, again, so I
` can.
` Q I'll re-ask the question.
` What was the field of use of
` PMCs Satellite's license to Pegasus?
` A So you're asking me what the
` field of use was?
` Q Correct.
` A I can't say in a public forum.
` Q The entirety of that field of
` use is confidential; is that correct?
` A Yes.
` Q PMC engaged in litigation with
` Direct TV; is that correct?
` A Yeah, along with Pegasus
` Development or Pegasus.
` Q That litigation did not involve
` the `091 or `635 patents; correct?
` A But it involved the technology
` which they cover, because it controlled
`
`10 (Pages 34 to 37)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`APPLE EXHIBIT 1053
`APPLE v. PMC
`IPR2016-00754
`Page 10
`
`

`

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` access, was an element of that -- of that
` litigation, and the claims of the first
` seven patents that are directed to key
` encryption and controlled access were
` asserted in those claims. So the -- it
` was that technology that was at issue in
` that case.
` Q Is it your view that the claims
` of the `09 patent are included within the
` claims of PMC's first seven patents?
` A Well, I would say it this way:
` That the first seven patents had a number
` of claims that addressed to control
` access. And that the follow-on patents
` claimed particular embodiments that were
` patentably distinct from the earlier
` ones. But -- and therefore, that's
` why -- that's the reason that they have
` their own 17-year life.
` But they are certainly
` addressed to the same technology, and the
` claims asserted against Direct TV, I
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`Page 39
`
` mean, I could even tell you which ones of
` which patents they were, addressed
` encryption and decryption and controlled
` access, and, therefore, were much the
` same as the one -- yeah, I mean, they
` covered the same subject matter but in a
` more -- in a broader context.
` Q PMC's litigation against Direct
` TV, it didn't include the `091 and `635
` patents; is that correct?
` A Well, it included to the extent
` that the license agreement between Direct
` TV and PMC includes the right to Direct
` TV to use the `091