Willis - 3-1-2017
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`CISCO SYSTEMS, INC.,
` Petitioner,
`
`Page 1
`
`IPR2016-01254/IPR2016-01257
`
`Patent No: 8,457,113
`
`v.
`
`FOCAL IP, LLC,
` Patent Owner.
`
`DEPOSITION OF EDWARD DEAN WILLIS
`Dallas, Texas
`Wednesday, March 1st, 2017
`
`Reported by:
`Daniel J. Skur, Notary Public and CSR
`Job No. 119615
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 1
`Willis Deposition Transcript
`IPR2016-01262
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`CISCO SYSTEMS, INC.,
` Petitioner,
`
`Page 1
`
`IPR2016-01254/IPR2016-01257
`
`Patent No: 8,457,113
`
`v.
`
`FOCAL IP, LLC,
` Patent Owner.
`
`DEPOSITION OF EDWARD DEAN WILLIS
`Dallas, Texas
`Wednesday, March 1st, 2017
`
`Reported by:
`Daniel J. Skur, Notary Public and CSR
`Job No. 119615
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 1
`Willis Deposition Transcript
`IPR2016-01262
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` Willis - 3-1-2017
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`Page 2
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` March 1st, 2017
` 9:43 a.m. - 4:30 p.m.
`
` Deposition of EDWARD DEAN WILLIS,
`held at the offices of Baker Botts LLP,
`2001 Ross Avenue, Dallas Texas, before
`Daniel J. Skur, Notary Public and Certified
`Shorthand Reporter in and for the State of
`Texas.
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`IPR2016-01262
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` Willis - 3-1-2017
`A P P E A R A N C E S:
` Baker Botts
` 101 California Street
` San Francisco, California 94111
` BY: Sarah Guske, Esq.
`
` Nelson Bumgardner
` Attorney(s) for Patent Owner
` 3131 West 7th Street
` Fort Worth, Texas 76107
` BY: John Murphy, Esq.
`
` ALSO PRESENT:
`Victor Siber, SiberLaw LLP (via teleconference)
`Hanna Madbak, SiberLaw LLP (via teleconference)
`
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`FOCAL IP, LLC EX2021 - 3
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`IPR2016-01262
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` Willis - 3-1-2017
` IT IS HEREBY STIPULATED AND AGREED
`by and between the attorneys for the
`respective parties herein, that filing and
`sealing be and the same are hereby waived.
` IT IS FURTHER STIPULATED AND AGREED
`that all objections, except as to the form
`of the question, shall be reserved to the
`time of the trial.
` IT IS FURTHER STIPULATED AND AGREED
`that the within deposition may be sworn to
`and signed before any officer authorized to
`administer an oath, with the same force and
`effect as if signed and sworn to before the
`Court.
` - oOo -
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 4
`Willis Deposition Transcript
`IPR2016-01262
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` Willis - 3-1-2017
` P R O C E E D I N G S
` VIDEOGRAPHER: This is the start of
`tape labeled number 1 of the videotaped
`deposition of Dean Willis in the matter of
`Cisco Systems Incorporated versus Focal IP
`LLC, Case Number IPR2016-01254. This
`deposition is being held in Dallas, Texas,
`on March 1st, 2017, at approximately
`9:44 a.m. My name is Nathaniel Mollick.
`I'm a Legal Video Specialist for TSG
`Reporting Incorporated headquartered at 747
`Third Avenue, New York, New York. The
`court reporter is Dan Skur in association
`with TSG Reporting.
` Counsel, will you please introduce
`yourselves and state any agreements or
`stipulations into the record, after which
`the court reporter will swear in the
`witness.
` MS. GUSKE: Sarah Guske from Baker
`Botts LLP for petitioner Cisco Systems.
` MR. MURPHY: John Murphy from Nelson
`Bumgardner for patent owner, Focal IP.
` EDWARD DEAN WILLIS,
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 5
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`IPR2016-01262
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` having been duly sworn, testified as follows:
` (9:43 a.m.)
` EXAMINATION
`BY MR. MURPHY:
` Q. Good morning. Can you please state
`your full name for the record?
` A. My full name is Edward Dean Willis.
`I operate as Dean Willis in publications and
`industry standards.
` Q. So do you go by Mr. Willis?
` A. That's fine, or Dean.
` Q. I'm going to introduce a few
`exhibits that are already in the record for
`talking points.
` Exhibit 1002, which is your expert
`report on the '113 patent in the 1254 case; is
`that correct?
` A. It appears to be.
` (Exhibit 1002 introduced.)
` MR. MURPHY: Do you want paper
` copies?
` MS. GUSKE: I've got -- I've got
` one.
`BY MR. MURPHY:
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 6
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`IPR2016-01262
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`Page 66
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`Willis - 3-1-2017
`anyone of ordinary skill in the art working on
`SCPs at the time.
`Q.
`Even in the oddball scenario you
`described that was not typical, the SCP, it's
`not receiving the ISUP message itself, the
`process, correct?
`A.
`In the process of call routing where
`an SCP isn't invoked by some class X switch in
`order to make a call routing decision, the SCP
`would not normally see the entirety of the ISUP
`messages. That is to say, at least of the IM
`and other messages that are processing through
`the switch. The -- depending on how you want
`to define the boundaries of ISUP, which are
`loosely defined by some people, the messages,
`which I would refer to as TCAP that are most
`likely going between the switch and the SCP and
`are in general SS7 messages, are sometimes
`referred to by practitioners as ISUP messages
`even though that might not be precisely
`correct. You'll find that in papers and books
`occasionally.
`Q.
`But an SCP would never generate an
`initial address message as part of the ISUP
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 7
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`Page 67
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`protocol, would it?
` A. That would be an untypical thing.
`I'm not aware of any occurrences where that
`would have happened. Normally the result of
`the message from the SCP would be interpreted
`by another switching device to generate a new
`call leg with a new IAM if necessary. Now,
`that said, you can probably find some examples
`of hybrid devices that are both switches and
`SCPs. I believe Excel made some things like
`that. They were popular in call center
`applications.
` Q. And a POSA at the time of the
`invention would also understand that an SCP was
`not used to generate the answer message of an
`ISUP protocol?
` A. Typically, I would agree that the
`SCP generally does not produce an answer
`message. Again, there may be hybrid behavior
`cases where it occurs, but in your standard
`call processing, that would not be the normal
`case.
` Q. Right. In your standard case of an
`SCP that was in the PSTN, that would not
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 8
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`IPR2016-01262
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`receive the call itself, right?
` MS. GUSKE: Objection, ambiguous.
` A. So let's try and refine that
`question. Are you asking that in the typical
`scenario, the SCP would -- would or not --
`would or would not receive the call setup
`signaling or the call media? Remember when we
`tried to define call earlier we had to split
`that into two things.
`BY MR. MURPHY:
` Q. I say both. Let's take it one at a
`time.
` (Interruption by the reporter.)
` A. Okay.
`BY MR. MURPHY:
` Q. So I believe we just covered the
`ISUP scenario related to the fact that the SCP
`typically does not receive the ISUP messages,
`right?
` A. We discussed that, yes.
` Q. And do you agree with that
`conclusion?
` A. In the typical case, the -- of a
`call setup, the SCP does not see the IAM ISUP
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 9
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` Willis - 3-1-2017
`message. It sees selected data from that
`message as provided by the switch.
` VIDEOGRAPHER: We have ten minutes
` on tape.
`BY MR. MURPHY:
` Q. And regarding the scenario of the
`actual call which the media will travel over,
`would that ever traverse through the SCP of the
`PSTN at the time of the invention?
` A. In a typical scenario, the media
`path would never traverse the SCP; however, as
`we mentioned earlier, there are those hybrid
`cases where you have a dual function device
`that happens to have a function as an SCP and
`happens to have a function as some other role,
`in which case you might get media routed there
`as well. But in the typical case, no.
` Q. Right. Typical case, we're just
`talking about SCP. The SCP itself would never
`get the call media.
` A. Again, the -- you have to back up.
`There's a difference between a box which might
`have many functions when you talk about a piece
`of hardware sitting on a rack and a logical
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`TSG Reporting - Worldwide 877-702-9580
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`function, so a logical function is an
`abstraction of something that something does
`when it is acting in a specific role. So a
`device that is acting in the role of an SCP
`exclusively, so it means it has no other
`function than to act as an SCP, would not see
`the media path of the call, so the voice
`components would not traverse a device that is
`exclusively acting in the function of an SCP.
`Many devices had multiple functions.
` MR. MURPHY: All right. Want to
` take a break?
` MS. GUSKE: Sure.
` VIDEOGRAPHER: We are off record at
` 11:54 a.m.
` (Recess held.)
` VIDEOGRAPHER: We are back on record
` at 12:55 p.m. with the start of tape 2.
`BY MR. MURPHY:
` Q. All right. I want to go back to the
`'113 patent. Going again to column 1, lines 45
`through 51. How would a POSA at the time of
`the invention interpret the differences between
`the edge switches of the PSTN and the tandem
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` Willis - 3-1-2017
`multiple levels. It's even in the background
`section.
` Q. Right. It teaches that there's an
`advantage in the way its architecture is
`designed by being able to apply call features
`at switching hierarchies at a higher level than
`class 5, right?
` MS. GUSKE: Objection, lacks
` foundation, misstates -- or misstates
` evidence.
` A. So when you say as a higher level, I
`assume you mean a lower number like class 3 or
`4 or 1 or something?
`BY MR. MURPHY:
` Q. Correct.
` A. So yes, that is, I think, roughly
`what you said there is consistent with my
`statement and declaration on what I believe
`'113 is attempting to teach as of -- as a focal
`set of claims which are the delivery of
`services in a switch which is in the generic
`class of what one might call a tandem switch
`which is to say not a class 5 switch or not a
`purely class 5 switch. I can refer back to
`
`TSG Reporting - Worldwide 877-702-9580
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`that section in the declaration if you like.
` Q. I think I understand you. You're
`saying that the invention of the '113 patent
`was directed to applying call features at a
`PSTN switching hierarchy level of classes 1
`through 4.
` MS. GUSKE: Objection, misstates
` prior testimony.
` A. Yeah, let me pull back to exactly
`what I said here because I think I liked my
`wording. Here we go. Oh, no. The very
`beginning. Too much paper here. Ah, here we
`go. Refer to my declaration, page 46,
`paragraph 69.
`BY MR. MURPHY:
` Q. Is that consistent with what I just
`said?
` A. In general, yes. Subtle specifics
`are perhaps off, but in general, yes.
` Q. At the time of the invention, what
`would a POSA consider the class of the PSTN
`switching hierarchy of a long distance network?
` A. Well, they would depend on the long
`distance network. I can speak directly to
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 13
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`anywhere in 143?
` A. No, it does not.
` Q. Does it appear in any of the
`dependent claims to 143 that you analyzed in
`your report?
` A. No, it does not.
` Q. How about claim 163; was that the
`subject of your report?
` A. Yes, it was.
` Q. Does it include the term "edge
`switch"?
` A. No, it does not.
` Q. How about any of the dependent
`claims to 163 that you analyzed?
` A. No, they do not.
` MS. GUSKE: No further questions.
` MR. MURPHY: No further questions.
` VIDEOGRAPHER: We're off record at
` 4:30 p.m.
`
` ________________________
` EDWARD DEAN WILLIS
` Subscribed and sworn to before me
`this _____ day of _______________, 2017.
`
`TSG Reporting - Worldwide 877-702-9580
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 14
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` C E R T I F I C A T E
`STATE OF TEXAS )
` )
`COUNTY OF DALLAS )
` I, Daniel J. Skur, a Notary Public
` within and for the State of Texas, do
` hereby certify:
` That EDWARD DEAN WILLIS, the witness
` whose deposition is hereinbefore set forth,
` was duly sworn by me and that such
` deposition is a true record of the
` testimony given by such witness.
` I further certify that I am not
` related to any of the parties to this
` action by blood or marriage; and that I am
` in no way interested in the outcome of this
` matter.
` IN WITNESS WHEREOF, I have hereunto
` set my hand this 6th day of March, 2017.
`
` _________________________________
` Daniel J. Skur
` Notary Public, State of Texas.
` My Commission Expires 7/7/2018
`
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`ERRATA SHEET FOR THE TRANSCRIPT OF:
`Case Name:
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`CISCO SYSTEMS, INC.
` IPR2016-01254/IPR2016-01257
`v.
` Patent No: 8,457,113
`FOCAL IP, LLC
`
`Dep. Date: March 1st, 2017
`Deponent: EDWARD DEAN WILLIS
`Reason codes:
`1. To clarify the record.
`2. To conform to the facts.
`3. To correct transcription errors.
`
` CORRECTIONS:
`
`Pg. Ln. Now Reads Should Read Reason
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`TSG Reporting - Worldwide 877-702-9580
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`___ ___ ______________ ______________ ______
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` ____________________
` EDWARD DEAN WILLIS
`
`SUBSCRIBED AND SWORN BEFORE ME
`THIS _____ DAY OF ____________, 2017.
`
`_______________________________
`(Notary Public) MY COMMISSION EXPIRES:_______
`
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` -------I N D E X-------
`WITNESS: EXAMINATION BY PAGE:
`EDWARD DEAN WILLIS
` Mr. Murphy 6
` Ms. Guske 159
`
` *****
`--------------------EXHIBITS-------------------
`Cisco System's, Inc., Exhibits PAGE/LINE
`Exhibit 1001 United States Patent 8/11
` Number 8,457,113
`Exhibit 1002 Declaration of Dean 6/20
` Willis in Support of
` Petition For Inter
` Partes Review of U.S.
` Patent Number 8,457,113
` - 2016-01254
`
`Exhibit 1003 United States Patent 105/23
` Number 6,353,660
`Exhibit 1005 United States Patent 142/6
` Number 5,958,016
`
`Exhibit 1008 Notice Regarding Change 92/25
` of Power of Attorney
`Exhibit 1012 Engineering and 34/7
` Operations in the Bell
` System
`Exhibit 1102 Declaration of Dean 7/5
` Willis in Support of
` Petition For Inter
` Partes Review of U.S.
` Patent Number 8,457,113
` - 2016-01257
`
`TSG Reporting - Worldwide 877-702-9580
`
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2021 - 18
`Willis Deposition Transcript
`IPR2016-01262
`
`
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