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, :
`
` Petitioner, :
`
`v. : CASE No's. IPR2016-00754
`
`PERSONALIZED MEDIA : And IPR2016-00755
`
`COMMUNICATIONS, LLC, :
`
` Patent owner. :
`
`- - - - - - - - - - - - - x
`
` Videotaped Deposition of TIMOTHY DORNEY, PH.D.
`
` Washington, D.C.
`
` Wednesday, February 15, 2017
`
` 9:04 a.m.
`
`Reported by: Cassandra E. Ellis, RPR
`
`Job No.: 18147
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`
`
`
`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 1
`
`

`

`Page 2
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`Page 4
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` I N D E X
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`EXAMINATION OF TIMOTHY DORNEY, PH.D. PAGE
`
` By Mr. Rabinowitz 6
`
` By Mr. Scott 125
`
` By Mr. Rabinowitz 126
`
` E X H I B I T S
`
` (Attached to the Transcript)
`
`TIMOTHY DORNEY, PH.D. Deposition Exhibit PAGE
`
`Previously Marked
`
`Exhibit 2129 Timothy Dorney, Ph.D. Declaration 32
`
` In IPR2016-00754
`
`Exhibit 2130 Timothy Dorney, Ph.D. Declaration 32
`
` In IPR2016-00755
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` Deposition of TIMOTHY DORNEY, PH.D., held at
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`the offices of Kirkland & Ellis LLP, 655 15th Street
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`Northwest, Suite 1200, Washington, D.C. 20005,
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`pursuant to agreement, before Cassandra E. Ellis,
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`Certified Court Reporter - WA, Certified Shorthand
`
`Reporter - HI, Registered Professional Reporter,
`
`Certified Livenote Reporter, Realtime Systems
`
`Administrator and Notary Public of The District of
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`Columbia.
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`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:
`
` ALAN M. RABINOWITZ, ESQUIRE
`
` 601 Lexington Avenue
`
` New York, New York 10022
`
` (212) 446-4663
`
` alan.rabinowitz@kirkland.com
`
` ON BEHALF OF PATENT OWNER PMC:
`
` KRUPA K. PARIKH, ESQUIRE
`
` GOODWIN PROCTER LLP
`
` 901 New York Avenue, Northwest
`
` Washington, D.C. 20001
`
` (202) 346-4059
`
` Kparikh@goodwinlaw.com
`
` THOMAS J. SCOTT, JR., ESQUIRE
`
` PERSONALIZED MEDIA COMMUNICATIONS, LLC
`
` 11491 Sunset Hills Road, Suite 340
`
` Reston, Virginia 20190
`
` (281) 201-2213
`
` Tscott@pmcip.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 Dr. Timothy Dorney, taken in
` the matter of Apple, Incorporated,
` petitioner, versus Personalized
` Media Communications, LLC, patent
` owner, with Case Numbers
` IPR2016-00754 and IPR2016-00755,
` held in the United States Patent
` and Trademark Office, before the
` Patent Trial and Approval board.
` Today's date is February
` 15th, 2017, and the time on the
` monitor is 9:04 a.m. My name is
` Joseph Ellis, I am the certified
` legal videographer, the court
` reporter is Cassandra Ellis, and
` we are here with Transperfect
` Legal Solutions.
` If counsel would please
`
`2 (Pages 2 to 5)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`
`
`
`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 2
`
`

`

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` introduce yourselves, and whom you
` represent, after which the court
` reporter will be sworn in and you
` may proceed.
` MR. RABINOWITZ: Alan
` Rabinowitz, representing Apple.
` MR. SCOTT: Thomas J. Scott,
` Junior, for Personalized Media
` Communication, LLC.
` TIMOTHY DORNEY, PH.D.
` having been sworn, testified as follows:
` EXAMINATION
`BY MR. RABINOWITZ:
` Q Good morning, Dr. Dorney.
` A Good morning.
` Q Would you please state your
` name, for the record?
` A Timothy Dominic Dorney.
` Q And what is your home address?
` A 3501 Pennsylvania Lane, Plano,
` Texas 75075.
` Q And you are currently employed
`
`Page 7
`
` by Personalized Media Communications,
` LLC; is that right?
` A Yes.
` Q And can we refer to
` Personalized Media Communications, LLC,
` as PMC, today?
` A Yes.
` Q You'll know what I mean if I
` refer to PMC?
` A Yes.
` Q And what is your title at PMC?
` A Vice president intellectual
` property.
` Q And what is your business
` address?
` A 14090 Southwest Freeway,
` Sugarland, Texas 77478.
` Q Have you been deposed before?
` A Yes.
` Q How many times?
` A Once.
` Q And in what matter was that?
`
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` A Samsung, PMC v. Samsung.
` Q And was that in district court
` litigation or in an IPR proceeding?
` A District court.
` Q And in what context were you
` deposed in that case?
` A As an individual.
` Q As a fact witness?
` A I believe that's what you call
` it.
` Q Have you ever testified in
` court?
` A No.
` Q So this is only your second
` time around, so I'm going to just go over
` some ground rules, if we can.
` A Okay.
` Q First, it's very important that
` we don't speak over one another so the
` court reporter can take down everything
` that we've said. It's also important
` that you give me verbal answers to my
`
`Page 9
`
` question, again, because the court
` reporter won't be able to take down
` shrugs or nods or things like that.
` A Okay.
` Q Do you understand?
` A Yes.
` Q If there is anything unclear
` about any of my questions will you let me
` know?
` A Yes.
` Q If you haven't asked me to
` clarify will it be fair of me to assume
` that you've understood my question?
` A To the best of my ability.
` Q Unless your attorney instructs
` you otherwise I would ask that you answer
` all of my questions; do you understand?
` A Yes.
` Q And we will try to take a
` break, every once in awhile, but if you
` ever do need one please just let me know,
` okay?
`
`3 (Pages 6 to 9)
`
`TransPerfect Legal Solutions
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`
`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 3
`
`

`

`Page 10
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`Page 12
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` A Okay.
` Q The only thing I'll ask is that
` if there's a pe- -- question pending,
` that you wait until after we've answered
` the question before taking a break.
` A That's fine.
` Q All right?
` A Yes.
` Q Excuse me.
` You understand that you're
` under oath today; correct?
` A Yes.
` Q Is there any reason why you
` can't testify fully and truthfully today?
` A No.
` Q And what did you do to prepare
` for your deposition today?
` A Let's go back, you asked for my
` business address?
` Q Yes.
` A Which the address I gave you is
` for PMC, but I work out of my home, in
`
`Page 11
`
` Plano, Texas.
` Q Thank you. And again, if at
` any point during today's deposition you
` feel the need to clarify one of your
` previous answers, or anything like that,
` please let me know.
` A Okay.
` Q And --
` MR. SCOTT: Go ahead, are
` you ready for him to answer the
` question?
` MR. RABINOWITZ: Yes.
` MR. SCOTT: The one -- the
` one you posed before?
` MR. RABINOWITZ: Well, why
` don't I ask it again.
` MR. SCOTT: Okay.
`BY MR. RABINOWITZ:
` Q What did you do to prepare for
` today's deposition?
` MR. SCOTT: I instruct you
` not to reveal any communications
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` with your lawyers, simply provide
` a description of what actual
` preparation work you did.
` THE WITNESS: Okay.
` A I met with Mr. Scott and Krupa,
` yesterday afternoon, and I spent some
` time last week and yesterday reviewing
` the material.
` Q And when you refer to "the
` material" what do you mean by that?
` A The declaration, the motion to
` amend, and the prior art references.
` Q Okay.
` A And the patents that are
` associated with it.
` Q And those patents are US patent
` numbers 8,191,091 and 8,599,635?
` A I know them as `091 and `635,
` so I assume the rest of the numbers are
` correct.
` Q Okay. So if we -- if I refer
` today to the `091 or the `635 patent,
`
`Page 13
`
` you'll understand what I'm referring to?
` A Yes.
` Q Would you please describe for
` me your educational experience, beginning
` with college or university?
` A I have a Bachelor of Science
` and electrical engineering from Texas A&M
` University, I have a Master's of Science
` in electrical engineering and applied
` physics in electrical engineering and
` applied physics from Case Western
` University, and -- or Case Western
` Reserve University, and a Ph.D. in
` electrical and computer engineering from
` Rice University.
` Q And when did you receive your
` Bachelor of Science degree?
` A 1990.
` Q And when did you receive your
` Master's degree?
` A 1992.
` Q And when did you receive your
`
`4 (Pages 10 to 13)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`
`
`
`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 4
`
`

`

`Page 14
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`Page 16
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` Ph.D.?
` A 2002.
` Q Okay. I'm going to hand to you
` what's previously been marked as PMC
` Exhibit No. 2129 in IPR2016-00754. And
` Mr. Dorney, is this your resumé?
` A Yes.
` Q I'm sorry, I referred to you as
` Mr. Dorney, I apologize, it should be
` Dr. Dorney.
` A No problem.
` Q And you submitted an identical
` resumé in IPR2016-00755; correct?
` A I provided this material to the
` attorneys to put together declarations,
` so I assume it was put in both.
` Q Okay. Now, I'd like to walk
` through the employment positions you have
` listed on your resumé, if that's all
` right?
` A Sure.
` Q So it -- starting from the back
`
`Page 15
`
` of page two of your resumé, it appears
` that you joined Texas Instruments in
` 1988; is that correct?
` A Yes.
` Q And what was your position at
` Texas Instruments in 1988?
` A Product development engineer.
` Q And in 1988 you had not yet
` graduated from college; is that right?
` A Correct.
` Q Were you employed by Texas
` Instruments full time, part time?
` A Full time.
` Q So you were employed full time
` while you were pursuing your
` undergraduate degree?
` A Yes. They have a program where
` you work full time during the summer and
` then go on a leave of absence to go back
` to university.
` Q So you were employed full time
` by Texas Instruments during the summers?
`
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` A Yes.
` Q And that is the summer of --
` which summer was that?
` A `88, `89, `90, and `91.
` Q And what did your
` responsibilities as a product development
` engineer entail?
` A Variety of things, we would
` handle customer returns if there was any
` issues with the products, customers would
` also provide specification sheets they
` want parts built to, and I'd have to
` compare those against what our parts
` currently were specified to do, finding
` differences.
` Also, reprogramming a memory
` tester, which was a DRAM memory design
` group, a memory tester, to have it
` perform faster and more efficiently and
` so on.
` Q And did you subsequently move
` into a different position at Texas
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`Page 17
`
` Instruments?
` A In 1990 I moved into the IC
` design group.
` Q And that -- did that move
` coincide with your graduation from
` college?
` A It did.
` Q Was that the impetus for the
` change in position?
` A No.
` Q It just happened to be?
` A Correct.
` Q And what new position did you
` move into at Texas Instruments?
` A IC design engineer.
` Q And what were your
` responsibilities as an IC design
` engineer?
` A To do semiconductor design for
` the memory products that the team was
` assigned to design.
` Q And you mentioned earlier that
`
`5 (Pages 14 to 17)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
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`
`
`
`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 5
`
`

`

`Page 18
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`Page 20
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` you obtained your Master's degree in
` 1992; is that right?
` A Yes.
` Q So during the time that you
` were pursuing your Master's degree you
` were also employed by Texas Instruments?
` A Correct.
` Q And what was the split in the
` time that you spent pursuing your
` Master's degree and the time that you
` spent working for Texas Instruments?
` A The summers at Texas
` Instruments and the typical academic year
` at university.
` Q So between 1988 and 1992 you
` only worked at Texas Instruments during
` summers?
` A Correct, in `92 I hired in full
` time, so the last half of that year,
` including summer, would be all with Texas
` Instruments.
` Q Okay. Now, I see --
`
`Page 19
`
` A When I say full time, again, it
` wasn't just a summer position, it was
` full time with Texas Instruments on a
` leave of absence.
` Q Understood.
` Now, I understand, looking at
` the first page of your resumé, that you
` were employed as a research associate
` during the same period, or at least for a
` subset of the period that you were
` employed by Texas Instruments; is that
` correct?
` A Yes.
` Q And you were -- did I mention
` that you were a research associate at
` Rice University; is that right?
` A Correct.
` Q And were you only employed as a
` research associate during the academic
` school year?
` A No. I was going to school and
` working full time simultaneously.
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` Q So between 1994 and 1998 you
` were employed full time by Texas
` Instruments, full time as a research
` associate for Rice University, and
` enrolled in academic pursuits?
` A Could you res- -- would you
` clarify what you mean by full time at
` Rice University?
` Q I was just using your words,
` but let me ask it again.
` Between 1998 -- I'm sorry --
` 1994 and 1998, what was the split in
` your employment for Texas Instruments
` and for Rice University?
` A I worked for both
` simultaneously.
` Q And were you in a full-time
` position at both, simultaneously?
` A I was in a full-time position
` at Texas Instruments, and I would have
` enrolled for a certain number of hours as
` a research associate at Rice.
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`Page 21
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` Q And do you have any
` recollection of how many hours you would
` have enrolled in any of those years?
` A Not specifically.
` Q So the research associate
` position was not a full-time position;
` correct?
` A Correct.
` Q And you left Texas Instruments
` in 1998; is that correct?
` A Yes.
` Q And why did you leave Texas
` Instruments at that time?
` A They sold the memory business
` to Micron, and the group was relocated to
` the Dallas area, and I was working in
` Houston.
` Q Okay. So between 1998 and
` 2001, you were employed solely at Rice
` University; is that correct?
` A Correct.
` Q And during those years was that
`
`6 (Pages 18 to 21)
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
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`
`
`
`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 6
`
`

`

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` a full-time position?
` A Yes.
` Q And in -- in 2001 you joined a
` firm called Rosenthal & Osha, LLP; is
` that correct?
` A Yes.
` Q And what was your position at
` Rosenthal & Osha?
` A Patent engineer, initially.
` Q And what were your
` responsibilities as a patent engineer?
` A Patent prosecution.
` Q And what did you mean when you
` said "initially"?
` A I became a patent agent in
` 2002.
` Q And how did your
` responsibilities change from when you
` became a patent agent from what they had
` been when you were a patent engineer?
` A Not significantly.
` Q And you left Rosenthal & Osha
`
`Page 23
`
` in 2003; is that correct?
` A Correct.
` Q Your resumé doesn't list
` anything after that point in time; do you
` see that?
` A Yes.
` Q Do you have an understanding as
` to why?
` A Because this is only current up
` to 2003.
` Q It's 2017 now; right?
` A Correct.
` Q What did you do when you left
` Rosenthal & Osha?
` A I joined Texas Instruments'
` licensing team.
` Q And what were your
` responsibilities on Texas Instruments'
` licensing team?
` A To use Texas Instruments'
` patent portfolio to identify infringing
` products and to provide proof of that
`
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` infringement, present proof of that
` infringement, and then handle any type of
` defenses to that infringement or the
` patents, themselves.
` Q In the course of your
` employment on Texas Instruments'
` licensing team did you prepare claim
` charts?
` A Yes.
` Q What types of intellectual
` property were you responsible for in your
` role on Texas Instruments' licensing
` team?
` A Analog, memory,
` microprocessors, and digital systems.
` Q I couldn't quite tell, in your
` previous answer, whether you were
` referring to analog and memory separately
` or analog memory, which was it?
` A Separately.
` Q And what does analog refer to?
` A Anything having to do with a
`
`Page 25
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` continuous valued signal being operated
` on.
` Q And what is that category --
` how did that category relate to Texas
` Instruments' intellectual property?
` A They have a lot of patents in
` analog.
` Q And how long were you a member
` of the Texas Instruments' licensing team?
` A `Til 2014.
` Q And what did you do in 2014?
` A I moved to my current position
` with PMC.
` Q And how did you come to be
` employed by PMC?
` A When I was at Texas Instruments
` we used a consultant, his name was Boyd
` Lemna, and Boyd had transitioned already
` to PMC and he contacted me about joining
` the company.
` Q And what are your
` responsibilities at PMC?
`
`7 (Pages 22 to 25)
`
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`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 7
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`

`

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` A Very widespread. Again,
` similar to Texas Instruments, I build
` claim charts, present those claim charts,
` defend against the patents or the claim
` charts, at times also do business
` negotiations.
` Q And do you report to anybody in
` particular at PMC?
` A Boyd Lemna is the first level
` of management. I work with Tom Scott,
` and then Gerald Holtzman is the president
` of the company, and we also have owners.
` Q Okay. Now, you refer -- you
` submitted declarations in the IPRs
` related to each of the `091 and `635
` patents; correct?
` A Yes.
` Q And do you understand that the
` `091 and `635 patents share a
` specification?
` A Yes. The `635 we also take a
` look at the 1981 specification for
`
`Page 27
`
` support, whereas on the `0 -- that's for
` the `635, on the `091 we typically look
` at only the 1987 specification.
` Q Okay, I understand. But let --
` let's take a step back -- step back for a
` moment.
` A Okay.
` Q The specification in the actual
` published patent, the `635 and the `091
` both share the same specification;
` correct?
` A The words are substantially the
` same.
` Q And those specifications were
` based on an application that was filed in
` 1987; correct?
` A Yes.
` Q If I refer to 1987
` specification, will you understand that
` I'm referring to the specification as it
` was published in both the `091 and `635
` patents?
`
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` A Yes, unless you start giving
` column and line numbers, in which case
` they're different.
` Q I understand. And you referred
` earlier to a 1981 specification; right?
` A Correct.
` Q And that was a specification
` that was filed in the application that
` became US patent number 4,694,490;
` correct?
` A I know it as the `490, I assume
` the other digits are correct.
` Q All right. And you, at PMC,
` sorry, has alleged that the `635 patent
` is entitled to a priority date based upon
` the `490 application; correct?
` A Correct.
` Q And PMC is not alleging that
` the `091 patent is entitled to a priority
` date based on the `490 application;
` correct?
` MR. SCOTT: Well, your
`
`Page 29
`
` understanding.
` A My understanding is that the
` board has decided that for the purposes
` of this, this interaction, that we're to
` use the `87 specification.
` Q But in your declaration, that
` you submitted in connection with the `091
` patent, you did not allege that there was
` any supporting disclosure in the `81
` specification for the amended claims of
` the `091 patent; correct?
` A Correct.
` Q And I referred a moment ago to
` the `81 specification, do you understand
` that I mean the application, the
` specification that was filed with the
` specification for the `490 patent when I
` refer to the `81 specification?
` A Yes.
` Q Okay. PMC has filed contingent
` motions to amend the claims of both the
` `091 and `635 patents; correct?
`
`8 (Pages 26 to 29)
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`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 8
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`

`

`Page 30
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`Page 32
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` A Yes.
` Q Were you involved in drafting
` those motions?
` MR. SCOTT: Remember, you
` can answer yes or no.
` A Yes.
` Q And what was your involvement?
` MR. SCOTT: I -- well, do
` not answer anything that would go
` to specific interaction with the
` lawyers. You can simply say --
` well, can you answer the question
` without referring to
` communications that you had with
` lawyers?
` THE WITNESS: I can provide
` a little bit of information.
` A I had some ideas for elements
` that might be patentable in the amended
` claims.
` Q Did you draft the amended
` claims?
`
`Page 31
`
` MR. SCOTT: Again, only --
` now, don't reveal anything that
` has to do with the interaction
` with the lawyers.
` A I was part of a team that
` drafted the claims.
` Q Who else was part of the team
` that drafted the claims?
` A We worked with Mr. Scott, with
` Krupa and April, and the technical team
` within PMC, and that is three other
` people besides myself.
` Q Mm-hmm. And you referred to an
` individual named April, who is that?
` A It was on your request for this
` deposition, April Weisbruch.
` Q Okay. And who is April
` Weisbruch?
` A She's an attorney at Goodwin
` and Procter.
` Q Did you work with any other
` attorneys at Goodwin Procter?
`
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` A Krupa.
` Q Anyone other than Ms. Parikh?
` A No.
` (Previously marked Exhibit
` No. 2130 identified for the
` record.)
`BY MR. RABINOWITZ:
` Q Now, I'm going to hand you a
` document that's been marked as PMC
` Exhibit 2130 in IPR2016-00755, entitled
` declaration of Timothy D. Dorney, Ph.D.,
` in support of patent owner's contingent
` motion to amend the claims. And that is
` your declaration relating to the `091
` patent; correct?
` A Yes.
` (Previously marked Exhibit
` No. 2129 identified for the
` record.)
`BY MR. RABINOWITZ:
` Q And I am also going to hand to
` you a document that's been stamped as PMC
`
`Page 33
`
` Exhibit 2130 (sic) in IPR2016-0 --
` -00754, entitled declaration of Timothy
` D. Dorney, Ph.D., in support of patent
` owner's motion to amend the claims. And
` this is your declaration that you filed
` in connection with the `635 patent;
` correct?
` A Yes.
` Q What was your purpose in
` submitting the two declarations that I
` just handed to you?
` A To provide specification
` port -- support for the amendments in the
` base claims.
` Q And who asked you to submit
` these declarations?
` MR. SCOTT: Again, just
` identify a person.
` A Mr. Scott.
` Q And have you ever done this
` type of analysis before?
` A Would you please be more
`
`9 (Pages 30 to 33)
`
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`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 9
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`

`

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` specific?
` Q Have you ever done the type of
` analysis that is apparent in the two
` declarations that you submitted
` previously?
` A I've done lots of specification
` support, in different matters, this is
` the first time as a declaration.
` Q And what opinions were you
` offering in your declarations?
` MR. SCOTT: Can you read
` that back, please?
` (Question, "And what
` opinions were you offering in your
` declarations," read back by the
` reporter.)
` A I was providing specification
` support for the base amended claims,
` having reviewed the material in the case.
` Q Were you offering opinions as
` an expert in providing your declarations?
` A You'd have to rephrase the
`
`Page 35
`
` question so I'd understand.
` Q Were you offering your opinion
` to the Patent Trial and Appeal Board as
` an expert witness?
` A What do you mean by expert?
` Q Do you claim to have some
` particular expertise that makes your
` opinion of the specification support
` relevant to PTAB's consideration?
` A Yes.
` Q And what is that?
` A Educational background and
` experience.
` Q Do you have any opinions as to
` whether the proposed amendments of the
` `091 patent are enabled by the 1981 or
` 1987 specifications?
` A Yes.
` Q And what is that opinion?
` A They're supportive.
` Q Is that in your declaration?
` A If not implicitly, then
`
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` certainly by providing support, itself.
` Q So your -- are -- have you --
` you have -- do you have a position as to
` whether there is a difference in the
` amount of disclosure that's required to
` satisfy the written description and
` enablement provisions?
` MR. SCOTT: Answer yes or
` no.
` THE WITNESS: Could you
` restate the question, please?
`BY MR. RABINOWITZ:
` Q Do you have an understanding as
` to whether there's a difference in what
` is required to satisfy the written
` description and enablement requirements
` of the patent laws?
` A I've often merged the ideas in
` my head that one has to provide a clear
` description to enable one to be able to
` reproduce the results.
` Q And do you have an opinion as
`
`Page 37
`
` to whether the claims of the `635 patent,
` as amended in PMC's contingent motion to
` amend, are enabled by the 1981 or 1987
` specification?
` A Yes.
` Q And do you have an opinion as
` to whether the claims of the `091 patent,
` as amended in PMC's contingent motion to
` amend, are enabled by the 1987
` specification?
` A Yes.
` Q And what is your opinion in
` both of those cases?
` A That they're enabled.
` Q And is that opinion set forth
` in either of your declarations?
` A By providing support in the
` tables that we have here.
` Q So your answer is yes?
` A Yes.
` Q Did you consider any particular
` claim constructions in drafting your
`
`10 (Pages 34 to 37)
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`
`APPLE EXHIBIT 1058
`APPLE v. PMC
`IPR2016-01520
`Page 10
`
`

`

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` declarations?
` A I believe in the motion to
` amend there was one that was provided.
` Q And which motion to amend was
` that?
` A In `091, at least.
` Q And -- I'm sorry, please go
` ahead.
` A In `091, at least.
` Q And is that the only claim
` construction that you referred to in
` preparing your declaration?
` A In the declaration I don't
` think it's brought out. We simply
` provide support for what -- what the
` specification has relative to the claim.
` Q And when you say "relative to
` the claim" do you mean as understood in
` light of that construction?
` A No. I mean in light of what
` support is available in the specification
` for the words in the claim.
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`Page 39
`
` Q So when you were drafting your
` declaration, and identifying support in
` the specification, you were not
` considering whether that support actually
` supported the term as construed?
` A No. I'm saying that I provided
` support from the specification and it
` would at least encompass the construction
` that was provided in the motion to amend.
` Q Did you consider any of the
` constructions adopted by the Patent Trial
` and Appeal Board in their institution
` decisions?
` A Yes.
` Q If you will, look, please, at
` the declaration that you filed in support
` of the motion to amend the `091 patent,
` please. And please turn in your
` declaration to page 11, where the chart
` begins.
` A Okay.
` Q Are you there?
`
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` A Yes.
` Q The first claim here is claim
` 32; correct?
` A Yes.
` Q And that is a proposed
` amendment of claim -- the claim that
` issued as claim 13 in the `091 patent;
` correct?
` A I don't have the motion to
` amend or any other document, it doesn't
` say claim 13. I presume that you're
` correct.
` Q Okay. Now, in your chart
` you've indicated amendments on the
`