Jay Kesan
`
`Date:
`
`September 28, 2017
`
`Transcript of the Testimony of
`
`
`
`Case:
`
`RUBICON COMMUNICATIONS VS LEGO A/S
`
`LEGO A/S EX. 2030
`
`Rubicon Communications, LP V. LEGO A/S
`IPR2016—01187
`
`
`
`Date:
`
`September 28, 2017
`
`Transcript of the Testimony of
`
`
`
`Case:
`
`RUBICON COMMUNICATIONS VS LEGO A/S
`
`LEGO A/S EX. 2030
`
`Rubicon Communications, LP V. LEGO A/S
`IPR2016—01187
`
`
`
`·1· · · · UNITED STATES PATENT AND TRADEMARK OFFICE
`
`·2· · · · · · · · · ----------------------
`
`·3· · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·4· · · · · · · · · ----------------------
`
`·5· · · · · · · ·RUBICON COMMUNICATIONS, LP,
`
`·6· · · · · · · · · · · · Petitioner
`
`·7· · · · · · · · · · · · · · v.
`
`·8· · · · · · · · · · · · LEGO A/S,
`
`·9· · · · · · · · · · · ·Patent Owner
`
`10
`
`11· · · · · · · · · ----------------------
`
`12· · · · · · · · · · Case IPR2016-01187
`
`13· · · · · · · · · U.S. Patent 8,894,066
`
`14· · · · · · · · · ----------------------
`
`15
`
`16· · · The deposition of JAY P. KESAN, called for
`
`17 examination, taken before STEVEN STOGEL, CSR No. 6174,
`
`18 Certified Shorthand Reporter for the State of Texas, at
`
`19 the offices of Meyertons Hood Kivlin Kowert & Goetzel,
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`20 P.C., 1120 S. Capital of Texas Highway, Building 2,
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`21 Suite 300, Austin, Texas, on the 28th day of September,
`
`22 2017, at 9:11 a.m.
`
`
`
`·1 APPEARANCES:
`
`·2
`
`·3 APPEARED ON BEHALF OF THE PETITIONER:
`
`·4· · · MEYERTONS HOOD KIVLIN KOWERT & GOETZEL, PC
`
`·5· · · 1120 S. Capital of Texas Highway
`
`·6· · · Building 2, Suite 300
`
`·7· · · Austin, Texas 78746
`
`·8· · · BY:· MR. RYAN T. BEARD
`
`·9· · · · · ·MR. ANTHONY M. PETRO
`
`10· · · 512-853-8800
`
`11· · · rbeard@intprop.com
`
`12
`
`13 APPEARED ON BEHALF OF THE PATENT OWNER:
`
`14· · · DAY PITNEY LLP
`
`15· · · 7 Times Square
`
`16· · · New York, New York 10036
`
`17· · · BY:· MR. ANDREW M. RIDDLES
`
`18· · · 212-297-5855
`
`19· · · ariddles@daypitney.com
`
`20
`
`21 REPORTED BY:· STEVEN STOGEL, CSR, CLR
`
`22· · · · · · · ·Certificate No. 6174
`
`
`
`·1· · · · · · · · · · · ·I N D E X
`
`·2 Examination· · · · · · · · · · · · · · · · · · · · ·Page
`
`·3 JAY P. KESAN
`
`·4· BY MR. RIDDLES· · · · · · · · · · · · · · · · · · · ·4
`
`·5· BY MR. BEARD· · · · · · · · · · · · · · · · · · · · 96
`
`·6· BY MR. RIDDLES· · · · · · · · · · · · · · · · · · ·100
`
`·7
`
`·8· · · · · · · · · · ·E X H I B I T S
`
`·9 Number· · · · · · · · · · · · · · · · · · · · · · · Page
`
`10 EXHIBIT 2100:· Notice of Deposition· · · · · · · · · 16
`
`11 EXHIBIT 2101:· U.S. Patent No. 8,894,066 B2· · · · · 16
`
`12 EXHIBIT 2102:· Petition for Inter Partes Review· · · 16
`
`13· · · · · · · · of U.S. Patent No. 8,894,066
`
`14 EXHIBIT 2103:· Declaration of Dr. Jay P. Kesan· · · ·17
`
`15 EXHIBIT 2104:· Web Page Printouts· · · · · · · · · · 34
`
`16 EXHIBIT 2105:· Chapter 6 "Programming the RCX"· · · ·72
`
`17 EXHIBIT 2106:· Web Page Printouts· · · · · · · · · · 74
`
`18 EXHIBIT 2107:· U.S. Patent Application· · · · · · · ·86
`
`19· · · · · · · · Publication No. 2002/0196250 A1
`
`20
`
`21
`
`22
`
`
`
`·1· · · · · · · · · P R O C E E D I N G S
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`·2· · · · · · · · · ·JAY P. KESAN, Ph.D.,
`
`·3 having been first duly sworn, testified as follows:
`
`·4· · · · · · · · · · · ·EXAMINATION
`
`·5 BY MR. RIDDLES:
`
`·6· · · Q.· ·Good morning, Dr. Kesan.
`
`·7· · · A.· ·Good morning.
`
`·8· · · Q.· ·Have you been deposed before?
`
`·9· · · A.· ·Yes.
`
`10· · · Q.· ·Okay.· I'm Andrew Riddles with the firm of Day
`
`11 Pitney.· We're representing LEGO, the patent owner in
`
`12 this action, and I'll be here asking you questions.
`
`13 Since you've been through the process before, I'm sure
`
`14 you know how this works.
`
`15· · · · · · · · I'll ask you a question.· Hopefully it
`
`16 will be clear and understandable.· You answer the
`
`17 question.· If there's something about the question that
`
`18 you don't understand, I'd be happy to clarify.
`
`19· · · · · · · · I apologize in advance if I mispronounce
`
`20 your name along the way.· I have a habit of doing that.
`
`21 Feel free to correct me.
`
`22· · · A.· ·That's fine.· Thank you.
`
`
`
`·1· · · Q.· ·I'd like to hand you a document that's in this
`
`·2 case as Paper No. 76.· It's entitled "Notice of
`
`·3 Deposition of Jay P. Kesan."· Is that you?
`
`·4· · · A.· ·Yeah, that is me.
`
`·5· · · Q.· ·And are you appearing pursuant to that notice
`
`·6 today?
`
`·7· · · A.· ·Yes.
`
`·8· · · Q.· ·Could you run through your educational
`
`·9 background for me?
`
`10· · · A.· ·So my -- I started out studying electrical
`
`11 engineering and got my Bachelor's and Master's and
`
`12 Ph.D., finishing with a Ph.D. in electrical and computer
`
`13 engineering, from The University of Texas at Austin.
`
`14 And then --
`
`15· · · Q.· ·Just --
`
`16· · · A.· ·-- after a break --
`
`17· · · Q.· ·Just before we move on from that, what was
`
`18 your area of study with your Ph.D.?
`
`19· · · A.· ·So in my Ph.D., I basically worked on RF
`
`20 devices and circuits, radio frequency.
`
`21· · · Q.· ·And what is your thesis?
`
`22· · · A.· ·I'm sorry?
`
`
`
`·1· · · Q.· ·What was your thesis?
`
`·2· · · A.· ·It was on microwave and millimeter wave
`
`·3 circuits and devices.
`
`·4· · · Q.· ·Okay.· Please continue.
`
`·5· · · A.· ·And then after a few years, I also got my
`
`·6 Juris Doctor degree from Georgetown University, and --
`
`·7 so that's by way of education.
`
`·8· · · Q.· ·What year would you have gotten your BS?
`
`·9· · · A.· ·1984 and --
`
`10· · · Q.· ·Ph.D.?
`
`11· · · A.· ·1989.
`
`12· · · Q.· ·And JD?
`
`13· · · A.· ·1996.
`
`14· · · Q.· ·And did you focus on any particular area when
`
`15 you got your JD?
`
`16· · · A.· ·I had an interest in patents, you know.· Sort
`
`17 of law and technology issues, IP.
`
`18· · · Q.· ·And do you do any further education from
`
`19 there?
`
`20· · · A.· ·I mean, I'm a professor, so I'm constantly
`
`21 reading and educating myself.· But formal degrees, no.
`
`22· · · Q.· ·Okay.· How about work history?
`
`
`
`·1· · · A.· ·So, I mean, I was working as a graduate
`
`·2 research assistant in graduate school, but then after I
`
`·3 finished my Ph.D. I went to work for the IBM Thomas
`
`·4 Watson Research Center in New York, Yorktown Heights,
`
`·5 and I was a research scientist there for several years.
`
`·6· · · Q.· ·What years would those have been?
`
`·7· · · A.· ·1989 to '93.
`
`·8· · · Q.· ·Okay.
`
`·9· · · A.· ·And then I was working -- just as I mentioned
`
`10 before, I was working as a -- through law school also, I
`
`11 was working at Pennie & Edmonds, and then I continued to
`
`12 work for them after law school.· I then went and clerked
`
`13 for Judge Patrick Higginbotham up in the Fifth Circuit
`
`14 Court of Appeals.
`
`15· · · · · · · · And then I started as a -- in a tenure
`
`16 track position as an assistant professor at the
`
`17 University of Illinois at Urbana-Champaign.· And I'm now
`
`18 a professor at the university and going through the
`
`19 professorial ranks, and I do what professors do, teach,
`
`20 research, and be involved in the profession.
`
`21· · · Q.· ·Okay.· So you were at -- if I understand
`
`22 correctly, you were at Pennie -- strike that.
`
`
`
`·1· · · · · · · · You were a research scientist at IBM
`
`·2 Watson from '89 to '93?
`
`·3· · · A.· ·Uh-huh.
`
`·4· · · Q.· ·And did you start at Pennie in '93?
`
`·5· · · A.· ·Yeah.
`
`·6· · · Q.· ·And how long were you there?
`
`·7· · · A.· ·Until '97, I think.
`
`·8· · · Q.· ·And then for Judge Higginbotham, would that
`
`·9 have started in '97?
`
`10· · · A.· ·Yeah, for a year.
`
`11· · · Q.· ·So that would have been '97, '98?
`
`12· · · A.· ·Yeah.
`
`13· · · Q.· ·And then you started at the University of
`
`14 Illinois in '98 sometime?
`
`15· · · A.· ·Yeah.
`
`16· · · Q.· ·And that's to present?
`
`17· · · A.· ·Correct.
`
`18· · · Q.· ·And what were your duties as a research
`
`19 scientist at IBM Watson?
`
`20· · · A.· ·Basically did a lot of -- you know, as a
`
`21 research scientist, we were engaged in a lot of
`
`22 different projects.· We were sort of in a group sort
`
`
`
`·1 of -- an exploratory sort of group, so we were
`
`·2 interested in high speed circuitry.· We were interested
`
`·3 in integrated circuits of various kinds.· We did some
`
`·4 processing, some material science.· So it was basically
`
`·5 an area where we were a group of scientists, and we
`
`·6 worked on various things that were of interest to us and
`
`·7 to the company.
`
`·8· · · Q.· ·Did any of it involve product design, or was
`
`·9 it more R&D?
`
`10· · · A.· ·Well, we -- I mean, we're always concerned
`
`11 about things.· Like, for example, we're concerned about,
`
`12 you know, how chips are packaged and how you exactly --
`
`13 you know, in various kinds of -- you know, the product
`
`14 was an integrated circuit.· Then you focused on how it
`
`15 was packaged and how it was put together and how it was
`
`16 designed.
`
`17· · · · · · · · So in that sense, even though we weren't
`
`18 R&D, we were informed by -- or sometimes even worked on
`
`19 product design or product packaging to the extent that
`
`20 it was an issue.
`
`21· · · Q.· ·Can you describe for me some of the projects
`
`22 you were involved in that related to product design or
`
`
`
`·1 packaging?
`
`·2· · · A.· ·Basically, at that time, it was mostly sort of
`
`·3 integrated circuits and packaging of those.· That's what
`
`·4 I recall right now, but it was a long time ago.
`
`·5· · · Q.· ·What type of packaging does an IC circuit
`
`·6 have?
`
`·7· · · A.· ·You know, you have all sorts of, you know,
`
`·8 dual inline packages and various kinds of -- you know,
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`·9 you have a semiconductor chip and, you know, you have a
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`10 die, and then you have some sort of plastic or some sort
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`11 of synthetic material that you place the die in, and
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`12 there's usually -- there's some electrical leads that
`
`13 have to be accommodated and properly packaged.
`
`14· · · Q.· ·I see.· So this is more adapting the IC
`
`15 circuit to a container for the IC circuit, if that
`
`16 characterization is accurate?
`
`17· · · A.· ·It could be for, you know, a socket as you're
`
`18 describing, or it could be for a printed circuit board.
`
`19 The chip goes on the printed circuit board.
`
`20· · · Q.· ·I see.
`
`21· · · A.· ·It just depends.
`
`22· · · Q.· ·This is distinguished, though, from say
`
`
`
`·1 consumer-level packaging?
`
`·2· · · A.· ·So consumer-level packaging at that time --
`
`·3 well, subsequently, you know, others in my -- for
`
`·4 example, in my technical work subsequent to IBM and in
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`·5 my consulting and expert work I've been involved in
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`·6 consumer type of -- for example, you know, wireless
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`·7 audio speakers and the design of --
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`·8· · · Q.· ·Okay.· Just to sort of step back, we've got a
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`·9 timeline of your employment history.· Where does the
`
`10 consulting part fit in here?
`
`11· · · A.· ·Well, once I became a professor, I had
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`12 opportunities to, you know -- so one of the advantages
`
`13 you have as a professor is some flexibility.· So I used
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`14 the opportunity to work with -- in a consulting capacity
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`15 both for startups and also in litigation.
`
`16· · · Q.· ·Now, are you distinguishing between being an
`
`17 assistant -- for those of us who aren't in the academic
`
`18 are, are you distinguishing between being an assistant
`
`19 professor and a professor, or is this sort of
`
`20 generically the whole period?
`
`21· · · A.· ·The whole period.· So basically --
`
`22· · · Q.· ·From 1998 on?
`
`
`
`·1· · · A.· ·Correct.
`
`·2· · · Q.· ·Okay.
`
`·3· · · A.· ·So from 1998 on, I've been actively
`
`·4 involved -- that's one of the advantages of being a
`
`·5 professor is I've been an inventor.· I've filed many
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`·6 patents.· I've had an opportunity to consult with
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`·7 startup companies and also to consult in litigation.
`
`·8· · · · · · · · So I've been exposed to -- the last 20
`
`·9 years, I've been exposed to a wide variety of
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`10 technologies.
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`11· · · Q.· ·And in your consulting, has any of this been
`
`12 in the area of design of consumer products?
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`13· · · A.· ·So it has involved sometimes utility patents,
`
`14 sometimes design patents in things like, for example,
`
`15 you know, regular power supplies that people use for
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`16 laptops, smartphones, set-top boxes, wireless audio
`
`17 equipment.· These are just some of the things that come
`
`18 to mind right now, but they all involve, you know,
`
`19 things like product design or packaging.
`
`20· · · Q.· ·If I heard you correctly, you said patents on
`
`21 these things.· Were you involved in obtaining the
`
`22 patents, or was it some other part of the patent process
`
`
`
`·1 that you were involved in?
`
`·2· · · A.· ·No.· I was involved in -- in these examples, I
`
`·3 was involved as a technical expert in litigations, these
`
`·4 specific examples that I am giving you.
`
`·5· · · · · · · · And I have also got my own patents as an
`
`·6 inventor.
`
`·7· · · Q.· ·Sure.· In those instances, you weren't
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`·8 involved in the design -- strike that.
`
`·9· · · · · · · · You didn't develop the design yourself.
`
`10 Is that correct?
`
`11· · · A.· ·I did not develop the design myself.· I was
`
`12 involved as a person familiar with, you know, the issues
`
`13 in how these particular products were designed.
`
`14· · · Q.· ·In your employment history, have you had a
`
`15 position where you were responsible for the design of
`
`16 consumer products?
`
`17· · · A.· ·Yeah, I've not been in the position where I
`
`18 was responsible for a particular consumer product, but,
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`19 I mean, obviously things like -- as I mentioned before,
`
`20 things like how chips are packaged and so on, it's found
`
`21 in every consumer product.· It's not a -- you know, it
`
`22 just depends on sort of, you know, what level you're
`
`
`
`·1 looking at it.
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`·2· · · Q.· ·Do you have any connection with SmallWorks,
`
`·3 Rubicon, or the counsel in this action?
`
`·4· · · A.· ·They called me to be an expert.· That's my
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`·5 connection.
`
`·6· · · Q.· ·Excluding the fact that you're sitting here as
`
`·7 an expert in this case?
`
`·8· · · A.· ·Yeah, I don't know these people.
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`·9· · · Q.· ·I'd like to hand you a document that's in this
`
`10 case as Exhibit 1001.· It's a copy of U.S. Patent
`
`11 No. 8,894,066.· Have you seen this patent before?
`
`12· · · A.· ·Yes.
`
`13· · · Q.· ·Have you studied this patent?
`
`14· · · A.· ·Yes.
`
`15· · · Q.· ·In what context did you first see this patent?
`
`16· · · A.· ·When it was sent to me by counsel.
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`17· · · Q.· ·And since that time, you've had an opportunity
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`18 to thoroughly study the patent?
`
`19· · · A.· ·Yes.
`
`20· · · Q.· ·And the claims?
`
`21· · · A.· ·Yes.
`
`22· · · Q.· ·Did you study the prosecution history?
`
`
`
`·1· · · A.· ·Yes.
`
`·2· · · Q.· ·And given your background in both technology
`
`·3 and law, do you feel you have a good understanding of
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`·4 this patent?
`
`·5· · · A.· ·Yes, I do.
`
`·6· · · Q.· ·I'd like to hand you a 48-page document
`
`·7 entitled "Petition for inter partes review for United
`
`·8 States Patent No. 8,894,066 pursuant to 35 U.S.C.
`
`·9 Sections 311 through 319, 37 CFR, Section 42."
`
`10· · · · · · · · MR. BEARD:· Andrew, are you going to mark
`
`11 any of these exhibits for the deposition?
`
`12· · · · · · · · MR. RIDDLES:· They're already in the
`
`13 record, so I wasn't going mark them again.· It didn't
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`14 seem really that necessary unless you think that it
`
`15 would be clearer for the --
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`16· · · · · · · · MR. BEARD:· I don't know.· It's up to
`
`17 you, but that was my concern, just whether or not the
`
`18 documents are clear, which they are -- which document
`
`19 you're talking about at which time.· It's up to you,
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`20 though.· I mean --
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`21· · · · · · · · MR. RIDDLES:· Off the record for a
`
`22 moment.
`
`
`
`·1· · · · · · · · (Discussion off the record)
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`·2· · · · · · · · (Exhibit Nos. 2100 through 2102 marked)
`
`·3 BY MR. RIDDLES:
`
`·4· · · Q.· ·Okay.· So we just marked as Exhibit 2102 the
`
`·5 petition for inter partes review.· Dr. Kesan, have you
`
`·6 seen this document before?
`
`·7· · · A.· ·Yes.
`
`·8· · · Q.· ·And have you reviewed this document?
`
`·9· · · A.· ·Yes, briefly.
`
`10· · · Q.· ·Did you review this document in preparation
`
`11 for your testimony in this case?
`
`12· · · A.· ·Yeah, I reviewed it when I was preparing my
`
`13 declaration, but -- as I recall, I spent more time on
`
`14 the patent owner response, PTAB's institution decision.
`
`15· · · Q.· ·In your review of the petition, Exhibit 2102,
`
`16 did you see anything that you disagreed with?
`
`17· · · A.· ·Not that I recall.
`
`18· · · Q.· ·And it's correct, is it not, that you
`
`19 discussed this petition in your testimony in this case?
`
`20· · · A.· ·Yeah, I mean, to the extent I discussed any of
`
`21 the documents I relied on, I cited to it in my
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`22 declaration.
`
`
`
`·1· · · · · · · · MR. RIDDLES:· I'd like to ask the
`
`·2 reporter to mark as Exhibit 2103 a document -- a 38-page
`
`·3 document entitled "Declaration of Dr. Jay P. Kesan."
`
`·4· · · · · · · · (Exhibit No. 2103 marked)
`
`·5 BY MR. RIDDLES:
`
`·6· · · Q.· ·Have you seen this document before?
`
`·7· · · A.· ·Yes.
`
`·8· · · Q.· ·And are you the declarant that has signed on
`
`·9 Page 1?
`
`10· · · A.· ·Yes.
`
`11· · · Q.· ·And is this the declaration that you just
`
`12 referred to in your testimony?
`
`13· · · A.· ·Yes.
`
`14· · · Q.· ·Is this declaration complete and accurate as
`
`15 far as you're aware?
`
`16· · · A.· ·Yes.
`
`17· · · Q.· ·Is there anything about this declaration that
`
`18 you would like to change?
`
`19· · · A.· ·There's always the one or two typos that you
`
`20 notice afterwards, and if that paragraph comes up, I
`
`21 will flag those one or two typos.
`
`22· · · Q.· ·Feel free to alert us to any typos.
`
`
`
`·1· · · · · · · · In Paragraphs 30 through 32 of your
`
`·2 declaration, is it a fair characterization that you
`
`·3 argue that the housing and casing can be permanently
`
`·4 attached and still be a housing and a casing?
`
`·5· · · A.· ·Yeah, I don't think it needs to be permanently
`
`·6 attached.· I was responding to what the patent owner was
`
`·7 saying, that the casing needed to be, you know, separate
`
`·8 from and cover one or more surfaces of the housing.· So
`
`·9 I was just pointing out that that language was not found
`
`10 in the claim.
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`11· · · · · · · · And the only discussion of something like
`
`12 separation was found in the specification where the
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`13 casing was described as being separable, and in these
`
`14 paragraphs I note that even though the claims don't
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`15 include the term "separable" or "separate," to the
`
`16 extent that separable is found in the specification,
`
`17 it's really that the housing and the casing are
`
`18 distinguishable.
`
`19· · · Q.· ·So am I correct that the distinction you're
`
`20 making is they should be separate but not necessarily
`
`21 separable?
`
`22· · · A.· ·No.· What I'm saying is that -- you know,
`
`
`
`·1 separable simply meaning that you can distinguish it
`
`·2 from the housing, as opposed to, you know, saying that
`
`·3 this is a structure that is separate from another
`
`·4 structure.
`
`·5· · · Q.· ·Well, they can't be one in the same structure,
`
`·6 can they?
`
`·7· · · A.· ·No.· I mean, I'm -- that's not what I'm
`
`·8 suggesting, that the housing and the casing are one in
`
`·9 the same words.· Again, I'm not saying that they mean
`
`10 the same thing.
`
`11· · · Q.· ·So I guess I'm sort of stumbling over your
`
`12 meaning of separate.· If they don't -- if they're not
`
`13 one and the same, aren't they separate?
`
`14· · · A.· ·What I'm saying is that at the outset, you
`
`15 know, all of the separate or separable is not found in
`
`16 the claim.· So that limitation is not found in the
`
`17 claim, you know.
`
`18· · · · · · · · To the extent that there's any discussion
`
`19 of the casing being separate from the housing, that is
`
`20 found in the patent when it talks about the casing being
`
`21 separable from the controller housing.
`
`22· · · · · · · · And to me separable just means that the
`
`
`
`·1 casing is distinguishable from the housing.· So, you
`
`·2 know, it's -- it's possible to simply distinguish one
`
`·3 from the other.· It doesn't have to be separate and
`
`·4 distinct as those words were used by the patent owner.
`
`·5· · · Q.· ·Doesn't Claim 1 of the '066 patent list a
`
`·6 housing and separately list a casing?
`
`·7· · · A.· ·They are separate words, but there was no
`
`·8 description in Claim 1 that says that the housing is
`
`·9 separate from the casing.· The word "separate" or
`
`10 "separable" is not found in Claim 1.
`
`11· · · Q.· ·Well, although those words may not appear
`
`12 there exactly, isn't that the import of the language
`
`13 used there?
`
`14· · · · · · · · MR. BEARD:· Objection; vague.
`
`15· · · A.· ·No.· I don't see that as something that
`
`16 follows from the claim.· And also, as I noted, the '066
`
`17 patent itself characterizes the casing as being
`
`18 separable from the housing.
`
`19 BY MR. RIDDLES:
`
`20· · · Q.· ·So am I understanding it correctly that in
`
`21 your view the housing and the casing could be
`
`22 structurally the same item?
`
`
`
`·1· · · A.· ·No, I don't think that they need to be
`
`·2 structurally the same item.· I'm just simply saying that
`
`·3 it simply says that the -- the language of the claim
`
`·4 says a main casing configured to conformably fit around
`
`·5 a portion of the exterior surface of and thereby receive
`
`·6 the housing of the controller.· So the idea here is that
`
`·7 there is a casing provided that conformably fits around
`
`·8 a portion of the exterior surface of the housing.
`
`·9 That's really all that it says.
`
`10· · · · · · · · And so to me we have a housing, and the
`
`11 casing conformably fits around the housing.
`
`12· · · Q.· ·And so does it follow from that that the
`
`13 housing and the casing are two separate elements?
`
`14· · · A.· ·Again, you can have situations where one might
`
`15 conformably fit.· So, you know, it might be a snug fit
`
`16 or a joining by abutment, but just going by the way it's
`
`17 described in the patent and consistent with the language
`
`18 of the claim, the only distinction is that the casing is
`
`19 separable from the housing.
`
`20· · · Q.· ·So does the casing have to be separable from
`
`21 the housing?
`
`22· · · A.· ·Yeah.· I mean, it's -- the specification says
`
`
`
`·1 that the casing is separable from the controller
`
`·2 housing.· Separable itself is not found in the claim.
`
`·3· · · · · · · · MR. BEARD:· Andrew, can we take a break?
`
`·4 I've got to use the restroom.· Is that okay?
`
`·5· · · · · · · · MR. RIDDLES:· Sure.
`
`·6· · · · · · · · (Recess:· 9:48 a.m. to 9:57 a.m.)
`
`·7 BY MR. RIDDLES:
`
`·8· · · Q.· ·I'd like to turn your attention to
`
`·9 Paragraph 37 of your declaration.
`
`10· · · A.· ·Okay.
`
`11· · · Q.· ·If you'd like a moment to read it, that's
`
`12 fine.
`
`13· · · A.· ·Okay.· Yeah, I did.
`
`14· · · Q.· ·Okay.· The Figure 1 in the first sentence of
`
`15 Paragraph 37, that's Figure 1 of the '066 patent?
`
`16· · · A.· ·Yes.
`
`17· · · Q.· ·And the second sentence states, "Absent
`
`18 further details, one of ordinary skill would understand
`
`19 from Figure 1 that housing 14 is 'joined' to casing 16
`
`20 by abutment rather than fastening or connection."
`
`21· · · A.· ·Right.
`
`22· · · Q.· ·What do you mean by the word "abutment"?
`
`
`
`·1· · · A.· ·I'm just simply saying it's next to each other
`
`·2 and close to each other so that one abuts the other.
`
`·3· · · Q.· ·Is it sufficient in your definition of
`
`·4 abutment that they merely touch?
`
`·5· · · A.· ·I think the word "conformably fit" suggests
`
`·6 that it comes together in a snug fit or, you know,
`
`·7 friction fit.
`
`·8· · · Q.· ·Sir, are you using a definition of abut that
`
`·9 would be somehow different than perhaps the dictionary
`
`10 definition of abut?
`
`11· · · A.· ·I'm just simply using it to contrast fastening
`
`12 or connection.· That's really the way I'm using that
`
`13 word in that sentence.· I'm just simply saying that it
`
`14 is joined by abutment rather than fastening or
`
`15 connection, and that's all I'm saying.· The abutment --
`
`16 the word "abutment" is not found in the claim.
`
`17· · · Q.· ·Understood.· It is, however, used in the
`
`18 declaration, and what I'm trying to do is understand how
`
`19 that word relates to the '066 patent and to the claims
`
`20 of the '066 patent.
`
`21· · · A.· ·Right.
`
`22· · · Q.· ·The common usage of the word abut is to touch?
`
`
`
`·1· · · A.· ·Right.· And I'm just saying touching as
`
`·2 opposed to fastening or as opposed to, you know, linking
`
`·3 it in some way.
`
`·4· · · Q.· ·Okay.· The language of Claim 1, however, is
`
`·5 "conformably fit."· Is that right?
`
`·6· · · A.· ·Right.
`
`·7· · · Q.· ·And the casing 16 of Figure 1 of the '066
`
`·8 patent does more than just touch the housing 14 in
`
`·9 Figure 1.· Is that correct?
`
`10· · · A.· ·I mean, I think the term "conformably fit",
`
`11 you know, is -- is I think the way it's shown in
`
`12 Figure 1.
`
`13· · · Q.· ·In Figure 1, the inside dimensions of the
`
`14 casing 16 correspond to the exterior dimensions of the
`
`15 housing 14.· Is that correct?
`
`16· · · A.· ·Well, in a manner of speaking they conform to
`
`17 each other, yes.
`
`18· · · Q.· ·And where you have curved portions in the
`
`19 housing, you have curved portions in the casing.· Is
`
`20 that correct?
`
`21· · · A.· ·Yeah.· You have corresponding portions in one
`
`22 respect or the other, so one is -- one conformably fits
`
`
`
`·1 with the other -- the casing conformably fits with the
`
`·2 housing.
`
`·3· · · Q.· ·So does the form of the casing correspond to
`
`·4 the form of the housing in Figure 1?
`
`·5· · · A.· ·Yeah.· I mean that's, I think, the idea
`
`·6 when -- of conformably fitting is that they fit with
`
`·7 each other.
`
`·8· · · Q.· ·So the forms would have a correspondence of
`
`·9 one another?
`
`10· · · A.· ·So that they are conformably fit as recited in
`
`11 the claim, yes.
`
`12· · · Q.· ·And in Figure 1, it's so the casing 14 would
`
`13 fit around the housing 14?
`
`14· · · A.· ·Yeah.· I mean, the casing is designed to
`
`15 conformably fit around the housing, yes.
`
`16· · · Q.· ·So you would agree, would you not, that it
`
`17 requires more than just touching?· Strike that.· Let me
`
`18 see if I can make that question clearer.
`
`19· · · · · · · · You would agree, would you not, that
`
`20 conformably fit requires more than two objects simply
`
`21 touching?
`
`22· · · A.· ·Yeah.· I mean, it would need to be -- they
`
`
`
`·1 would need to conform with each other.
`
`·2· · · Q.· ·There should be some correspondence in form
`
`·3 between the two objects.· Is that correct?
`
`·4· · · A.· ·Yeah.· That's, you know, one way of thinking
`
`·5 about it, yes.
`
`·6· · · Q.· ·I'd like to direct your attention to
`
`·7 Paragraph 41.· If you could, just take a minute to
`
`·8 review that.
`
`·9· · · A.· ·Sure.· I'm ready.
`
`10· · · Q.· ·Am I correct that you are essentially agreeing
`
`11 with the patent owner's definition of manipulate with
`
`12 the omission of the last phrase "changing in a skillful
`
`13 manner"?
`
`14· · · A.· ·Yeah.· I'm essentially saying that, you know,
`
`15 you can change -- manipulating means changing with, and
`
`16 changing with hands or by mechanical or electronic
`
`17 means.· It's the skillful manner that, you know, is --
`
`18 you know, is a subjective term.· So the word here is
`
`19 just "manipulate."
`
`20· · · Q.· ·Is any intent required in manipulation?
`
`21· · · A.· ·No.· I mean, you're just talking about
`
`22 changing, however it comes about, you know.
`
`
`
`·1· · · Q.· ·So if you bump into something, that's
`
`·2 sufficient?
`
`·3· · · A.· ·I mean, I don't know about bumping, but -- you
`
`·4 know, I mean, the idea here is that you can change, you
`
`·5 know, with your hands or through some other means, but
`
`·6 it's not necessary for it to be skillful.
`
`·7· · · Q.· ·But I guess my question goes to whether there
`
`·8 has to be an intent to make the change.
`
`·9· · · A.· ·Well, the way the term is used in the claim
`
`10 it's simply talking about manipulating images or
`
`11 symbols, and I think, you know, the intent here is to
`
`12 manipulate images or symbols on a display in accordance
`
`13 with what the user wants.· So it's not just some
`
`14 inadvertent bumping.
`
`15· · · Q.· ·The definition, though, as proposed here is
`
`16 changing with or as if with the hands or by mechanical
`
`17 or electronic means, and that doesn't indicate any
`
`18 particular desire by the user.· That might include
`
`19 bumping, short circuit, earthquake?
`
`20· · · A.· ·I think you don't read the word "manipulate."
`
`21 You have to read the word "manipulating" in the context
`
`22 of the other words in the claim.· That's what I'm
`
`
`
`·1 saying.
`
`·2· · · Q.· ·So shouldn't the definition ascribed to it
`
`·3 here be reflective of the context of the claim?
`
`·4· · · A.· ·Yeah.· And I think it is, because you're
`
`·5 talking about manipulating images or symbols in a
`
`·6 display, and here you're just saying that you can change
`
`·7 that with your hands or change it through some other
`
`·8 mechanical or electronic means.
`
`·9· · · Q.· ·Wouldn't an unintended transient signal
`
`10 perhaps manipulate an image on the screen?
`
`11· · · A.· ·It could happen, yeah.· I mean, these kinds of
`
`12 things could happen.
`
`13· · · Q.· ·But that wouldn't be consistent with the plan?
`
`14· · · A.· ·I mean, it could happen.
`
`15· · · Q.· ·So what I'm trying to determine here is
`
`16 whether, as the expert in this case -- whether this term
`
`17 requires that this change be intended by the user, not
`
`18 intended by the user.· Does it matter?
`
`19· · · A.· ·I mean, you're definitely trying to capture
`
`20 the user's preference for how those symbols or images on
`
`21 the display are to be manipulated.· That's certainly
`
`22 what you're trying to do when you have, you know, a
`
`
`
`·1 manual controller like this one.
`
`·2· · · Q.· ·And in your opinion, changing in a skillful
`
`·3 manner doesn't reflect that?
`
`·4· · · A.· ·It doesn't matter whether it's skillful or
`
`·5 not.· It doesn't require that it be skillful.
`
`·6· · · Q.· ·But it does require that it be intended?
`
`·7· · · A.· ·I mean, the -- the intent of this invention is
`
`·8 to facilitate the user to manipulate symbols or images
`
`·9 on a display with some sort of manual controller.
`
`10 That's the idea.
`
`11· · · Q.· ·I'm not sure how that answered the question.
`
`12· · · · · · · · When you say "changing" in your
`
`13 definition, what manner of change do you intend by that?
`
`14· · · A.· ·Typically in these sorts of things, you're
`
`15 just moving those symbols and images on the display.
`
`16· · · Q.· ·So lateral movement would be changing?
`
`17· · · A.· ·Right.
`
`18· · · Q.· ·Rotational movement?
`
`19· · · A.· ·Right.
`
`20· · · Q.· ·What about change in color?
`
`21· · · A.· ·I mean, I suppose, just depending on what
`
`22 sorts of -- the claim itself doesn't talk about
`
`
`
`·1 specifically manipulating one way or the other.
`
`·2 Manipulation suggests something that is -- that is
`
`·3 physical, but -- but we're -- in context here, we're
`
`·4 talking about manipulating images or symbols on a
`
`·5 display.
`
`·6· · · Q.· ·We're talking about manipulating a particular
`
`·7 image on a display.· Is that correct?
`
`·8· · · A.· ·Well, it doesn't say "particular."· It just
`
`·9 says "manipulating images or symbols on a display."
`
`10· · · Q.· ·But it doesn't mean replacing one set of
`
`11 symbols with an entirely different set of symbols.· Is
`
`12 that correct?
`
`13· · · A.· ·I mean, it could be that, yeah.· I mean --
`
`14· · · Q.· ·How would that be manipulation of the symbol?
`
`15· · · A.· ·Well, you know, you -- you sort of move a
`
`16 symbol and then you put another symbol in place or --
`
`17 you know, you're -- you know, it just depends on what
`
`18 you're trying to do.
`
`19· · · Q.· ·So if you replace a first symbol with a second
`
`20 symbol, that second symbol wouldn't be a different
`
`21 symbol?
`
`22· · · A.· ·So what is the hypothetical again?
`
`
`
`·1· · · Q.· ·You've got a video display, and it has a first
`
`·2 symbol.
`
`·3· · · A.· ·Some symbol?
`
`·4· · · Q.· ·Some symbol.
`
`·5· · · A.· ·Okay.
`
`·6· · · Q.· ·And you replace it with some other symbol.
`
`·7· · · A.· ·You could do that.· You could remove the one
`
`·8 symbol.· You could replace it with another symbol.· You
`
`·9 could leave the first symbol on and just add another
`
`10 symbol.· You could do -- you could do all those things.
`
`11· · · Q.· ·Right, but that's changed the hypothetical.
`
`12 The question is:· If you replace the first symbol with a
`
`13 second symbol, have you manipulated the first symbol?
`
`14· · · A.· ·I would say you have changed it, yeah, because
`
`15 you've -- you know, you've essentially eliminated it
`
`16 from the display is what you're doing.· That's what
`
`17 you're saying?· Am I correct?
`
`18· · · Q.· ·Manipulate includes removing entirely?
`
`19· · · A.· ·I suppose it could.· I mean, just changing
`
`20 it -- I suppose it could.· I don't see a discussion of
`
`21 that specific hypothetical in the patent, but if you're
`
`22 manipulating images, I suppose it could.
`
`
`
`·1· · · Q.· ·And is there any example in the patent where
`
`·2 an image or symbol is completely removed?
`
`·3· · · A.· ·I don't remember off the top of my head, but
`
`·4 if you point out the situation to me, I'm happy to look
`
`·5 at it.
`
`·6· · · Q.· ·I don't know of a situation.· I was asking
`
`·7 whether you knew of such a situation.
`
`·8· · · A.· ·I'd have to go through the entire
`
`·9 specification to see if there is such a situation or
`
`10 not.
`
`11· · · Q.· ·Okay.· Suffice it to say, as you sit here
`
`12 right now, you're not aware of any support in the '066
`
`13 patent for manipulating,
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