Roberto Tamassia, Ph.D.
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`----------------------------x
`APPLE INC, )
` Petitioner, ) Case IPR2016-01585
` )
` vs. )
` ) Patent No.
`VIRNETX INC., ) 8,904,516
` Patent Owner. )
`----------------------------x
`
` DEPOSITION OF ROBERTO TAMASSIA, PH.D.
`
` Washington, D.C.
` Thursday, May 11, 2017
`
`Reported by: Lori J. Goodin, RPR, CLR, CRR,
` Realtime Systems Administrator
`JOB NO. 123693
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`TSG Reporting - Worldwide - 877-702-9580
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`VirnetX Exhibit 2027
`Apple Inc. v. VirnetX Inc.
`IPR2016-01585
`
`Page 1 of 28
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`----------------------------x
`APPLE INC, )
` Petitioner, ) Case IPR2016-01585
` )
` vs. )
` ) Patent No.
`VIRNETX INC., ) 8,904,516
` Patent Owner. )
`----------------------------x
`
` DEPOSITION OF ROBERTO TAMASSIA, PH.D.
`
` Washington, D.C.
` Thursday, May 11, 2017
`
`Reported by: Lori J. Goodin, RPR, CLR, CRR,
` Realtime Systems Administrator
`JOB NO. 123693
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`TSG Reporting - Worldwide - 877-702-9580
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`VirnetX Exhibit 2027
`Apple Inc. v. VirnetX Inc.
`IPR2016-01585
`
`Page 1 of 28
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`Roberto Tamassia, Ph.D.
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`Page 2
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` May 11, 2017
` 9:31 a.m.
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` Deposition of ROBERTO TAMASSIA, PH.D.,
`held at the offices of Sidley Austin LLP,
`1501 K Street, Northwest, #600, Washington,
`D.C., before Lori J. Goodin, RPR, CLR, CRR,
`Realtime Systems administrator, a Notary Public
`in and for the District of Columbia.
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`Roberto Tamassia, Ph.D.
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`A P P E A R A N C E S:
`
` On Behalf of Petitioner:
` SIDLEY AUSTIN
` 1501 K Street, Northwest
` Washington, DC 20005
` BY: SAMUEL DILLON, ESQUIRE
` BY: SCOTT BORDER, ESQUIRE
`
` On Behalf of Patent Owner:
` PAUL HASTINGS
` 875 15th Street, Northwest
` Washington, DC 20005
` BY: DANIEL ZEILBERGER, ESQUIRE
` BY: JOHN HOLLEY, ESQUIRE
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`Roberto Tamassia, Ph.D.
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` PROCEEDINGS
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`Page 4
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` ROBERTO TAMASSIA, PH.D.,
`a witness called for examination, having been
`first duly sworn, was examined and testified as
`follows:
` EXAMINATION
`BY MR. ZEILBERGER:
` Q. Good morning.
` A. Good morning.
` Q. Could you please state your name for
`the record.
` A. Yes. Roberto Tamassia.
` Q. And, you have been deposed before,
`correct?
` A. That's right.
` Q. And I know you are probably familiar
`with all of the rules, but I think it wouldn't
`hurt to just quickly refresh them.
` So, you do understand that you are
`under oath today?
` A. Yes, I do.
` Q. And, you understand that I will be
`asking you questions, and you will be answering
`the questions to the extent you can. And, to
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`the extent you need to take a break, just let
`me know.
` But, if there is a question pending,
`I would appreciate it if you can answer that
`question. Okay?
` A. Sure. I understand.
` Q. And you understand that your lawyer
`may object, but unless an issue of privilege
`comes up, you are required to answer the
`question?
` A. I understand.
` Q. Okay. If any of my questions today
`aren't clear to you, please let me know.
` Otherwise, I will assume that you
`understood the question. Okay?
` A. Okay.
` Q. Do you have any questions?
` A. No.
` Q. Okay. Is there any reason you can't
`testify completely and accurately today?
` A. I cannot think of any such reason.
` Q. Okay. Did you spend any time
`preparing for today's deposition?
` A. Yes, I did.
` Q. When did you begin to prepare?
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` A. I started preparing last weekend.
` Q. How much time did you spend
`preparing?
` A. It was about 12 hours or so.
` Q. Did you prepare with anyone?
` A. I prepared in part by myself, and in
`part also by meeting with Sidley Austin
`counsel.
` Q. Who at Sidley Austin?
` A. I met with Sam Dillon, who is here,
`and Scott Border.
` Q. Anyone else?
` A. I did not meet with other people.
` Q. Did you review any documents to
`prepare for today?
` A. As part of my preparation I reviewed
`the patent. I reviewed my declaration, and I
`reviewed some relevant exhibits that I
`mentioned in my declaration.
` Q. Did you review anything that is not
`mentioned in your declaration?
` MR. DILLON: Objection, form.
` THE WITNESS: My preparation was
` limited to what is inherent in the
` proceedings and my declaration and what I
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` have mentioned in the declaration.
` Things like the patent itself or
` patents that I quote, for example, the
` patent issued to Beser, and also other
` documents like the IP SEC RFC.
`BY MR. ZEILBERGER:
` Q. But did you review anything not
`mentioned in your declaration for purposes of
`today?
` A. I think the only thing I reviewed
`was how much time I spent in preparing the
`declaration, anticipating such a possible
`question.
` Q. How much time did you spend
`preparing your declaration?
` A. It was about 15 hours to prepare the
`declaration.
` Q. Did you bring anything with you
`today to help you testify?
` A. No, I did not.
` MR. ZEILBERGER: I am handing the
` witness what has been previously marked as
` Exhibit 1003.
` (Whereupon, previously marked
` Exhibit 1003, first referral.)
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`BY MR. ZEILBERGER:
` Q. Do you recognize this document?
` A. Yes. This appears to be the
`declaration that I submitted for these
`proceedings.
` Q. Did anyone help prepare your
`declaration?
` MR. DILLON: Objection to the extent
` this seeks protected information related to
` preparation of his report or communication
` with counsel.
` The witness may answer in a way that
` does not reveal such information.
` THE WITNESS: The preparation of the
` declaration was a collaborative process
` with counsel. However, all of the opinions
` stated in the declaration are mine.
`BY MR. ZEILBERGER:
` Q. Who did you collaborate with to
`prepare your declaration?
` A. So, the collaborative process
`involved lawyers from Sidley Austin.
` Q. Anyone else?
` A. Nobody else.
` Q. And which lawyers at Sidley Austin?
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` A. This was some time ago. I remember
`conversations with Sam Dillon, probably Tom
`Broughan, Scott Border. I don't remember
`exactly. This was last summer.
` (Whereupon, previously marked
` Exhibit 1001, first referral.)
`BY MR. ZEILBERGER:
` Q. Okay. I'm handing the witness what
`has been previously marked as Exhibit 1001.
` Do you recognize this exhibit?
` A. Yes. This is what I refer to as the
`'516 patent, which I mention in my declaration
`and which is the subject of these proceedings.
` Q. And you mentioned earlier that
`you've reviewed the '516 patent for today?
` A. Yes, I did review this patent.
` Q. Okay. Could you turn to Page 12 of
`your declaration. You have a section in your
`declaration dealing with the effective filing
`date of the '516 patent, right?
` A. Yes.
` Q. And in Paragraph 41, you say that it
`is your opinion that the two independent claims
`of the '516 patent, Claims 1 and 15, rely on
`information that was first included in the 783
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`application. Correct?
` A. That is what it says in Paragraph 41.
` Q. Is that still your opinion today?
` A. Yes, I have no reason to change my
`opinion on this matter.
` Q. If you can turn to Paragraph 42:
` You state that it is your opinion
`that "the '516 patent requires intercepting a
`request to look up an internet protocol IP
`address of a second network device, based on an
`identifier associated with the second network
`device."
` And then you go on to say that
`"Based on your review of the documents, no
`application filed prior to the 783 application
`discloses intercepting a request to look up an
`internet protocol IP address based on an
`identifier as claimed." Correct?
` A. I think you have read a portion of
`my declaration.
` Q. And are the opinions in Paragraph 42
`of your declaration still your opinions today?
` A. So, it is clear from the context
`that I am referring in Paragraph 42 to the
`patent '516, and Claim 1 of the patent '516.
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` Unfortunately there is a typo in the
`last line of this paragraph. The way it is
`written is '075 patent claims, but it should be
`clear from the context of the declaration that
`it should have read as '516 patent claims.
`Sorry for that.
` Q. But, other than that typo, the
`opinions in Paragraph 42 are still yours today?
` A. Yes, besides this typo, I have no
`reason to have changed my opinion as expressed
`in this paragraph.
` Q. Why is "based on an identifier"
`emphasized in Paragraph 42 of your declaration?
` MR. DILLON: Objection to the extent
` this seeks protected information related
` to the preparation of his report or
` communications with counsel.
` The witness may answer in a way that
` does not reveal such information.
` THE WITNESS: I don't remember the
` exact motivation for emphasizing those four
` words.
` It could be that I felt that they
` were especially relevant.
`BY MR. ZEILBERGER:
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` Q. Do you think they are especially
`relevant?
` A. I think they are an important
`component of Claim 1, because they explain how
`the lookup is performed. Lookup is on this.
` Q. In what way does based on an
`identifier explain how the lookup is performed?
` A. The phrase, based on an identifier,
`explains the type of lookup request. It
`indicates that this lookup request refers to an
`identifier for the second network device.
` Q. Sorry, I guess I'm just not
`following.
` What do you mean when you say this
`lookup request refers to an identifier for the
`second network device?
` A. I was simply trying to explain that
`in Claim 1, the request would look up an IP
`address for the second network, the device,
`involves an identifier for such a second
`network device.
` Q. Can you think of any requests to
`look up an IP address that wouldn't have an
`identifier for a second network device?
` MR. DILLON: Objection, form.
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` THE WITNESS: Can you clarify
` whether you are asking me in general
` whether it is possible to make such
` requests without an identifier, or whether
` you are specifically referring to the
` context of the claim?
`BY MR. ZEILBERGER:
` Q. Let me ask you another way.
`Maybe --
` What I'm trying to understand is, I
`think I understand why you emphasize based on
`identifier, if you are saying that the
`interception is based on an identifier.
` But, I don't quite understand why
`you emphasized it, if you are saying that the
`lookup is based on an identifier.
` And, do you know, in your opinion,
`whether based on identifier, whether that based
`on is referring to the intercepting, or if it
`is referring to the lookup?
` MR. DILLON: Objection to form.
` THE WITNESS: So, it is clear from
` the sentence in the claim that the request
` itself involves such an identifier.
` And that the interception process
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` will consider the request and the
` identifier within the request.
`BY MR. ZEILBERGER:
` Q. What do you mean when you say will
`consider those things?
` A. That means that the process of
`intercepting will involve inspecting the
`request, and then take actions as explained in
`the rest of the claim.
` Now, when you asked me before about
`can a request to look up an IP address be based
`on something other than an identifier, in
`general terms, outside the context of the
`patent, there are all sorts of types of lookups
`that can be made in computer networks.
` For example, there is a protocol
`that allows to look up an IP address, based on
`a lower networking layer address, like MAC
`address.
` Q. Okay. For the purposes of today, I
`would like to focus on the patent at issue.
` A. Sure. But, it is just that it was
`in the back of my mind.
` Q. No problem. So, would it be fair to
`say that you don't view Claim 1 of the '516
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`patent as having priority to any of the
`applications before the 783 application because
`none of them describe interception based on an
`identifier associated with the second network
`device?
` MR. DILLON: Objection, form.
` Foundation.
` THE WITNESS: Paragraph 42 provides
` examples to substantiate what I say in
` Paragraph 41 about Claims 1 and 15 of the
` '516 patent that rely on the information,
` that appeared in the 783 application but
` not in earlier applications of the series
` cited in Paragraph 40.
` And the example that I have given is
` exactly this requirement in Claim 1, and a
` similar requirement in Claim 15, that
` include this type of language about
` intercepting the request based on an
` identifier for the second network device.
`BY MR. ZEILBERGER:
` Q. I don't think that quite answered my
`question, and I apologize if my question wasn't
`clear.
` What I'm trying to get at again,
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`similar to what I was asking before, is whether
`this determination in Paragraph 42, that
`Claims 1 and 15, don't have priority to any
`earlier applications, whether that is based on
`an interpretation that requires the
`interception to be based on the identifier?
` MR. DILLON: Objection, form.
` Foundation.
` THE WITNESS: I am not sure I
` understand the subtlety of the language in
` your question based on my previous answers.
` So, the point I'm trying to make is
` that this portion of Claim 1, so this
` requirement that appears in the paragraph
` "intercept from the first network device,"
` all of the way through "based on identifier
` associated with the second network device,"
` that this requirement that is something
` that I observed that is related to
` information provided in the 703 application.
`BY MR. ZEILBERGER:
` Q. Is it your opinion that the
`interception in Claim 1 must be based on an
`identifier associated with the second network
`device?
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` MR. DILLON: Objection, form.
` Foundation.
` THE WITNESS: My understanding of
` the concept of intercepting a request is
` something that I have discussed in my
` declaration under the broad interpretation
` of some of the claim terms, like are in
` Paragraph 62, I give what I believe is such
` an interpretation of intercepting a
` request.
`BY MR. ZEILBERGER:
` Q. I'm not asking you about the
`construction you have in that section of your
`declaration where I think you were focused on
`intercepting a request.
` My question is directed to
`Paragraph 42 where you have the language, based
`on an identifier. In that context is the
`intercepting based on an identifier?
` MR. DILLON: Objection, form.
` Foundation.
` THE WITNESS: It says that the
` process of intercepting a request involves
` capturing the request and then inspecting
` the request itself.
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` And these requirements of the claim
` considers the requests that have an
` identifier as part of the, as part of the
` request. And the interception process will
` inspect such an identifier.
`BY MR. ZEILBERGER:
` Q. Does the interception process in
`Claim 1 begin before or after the identifier is
`inspected?
` MR. DILLON: Objection, form.
` Foundation.
` THE WITNESS: I have not analyzed in
` detail the temporal aspect of the possible
` substeps and the preliminary steps or
` subsequent steps within the interception.
` What I can say is, first of all,
` that the claim appears to refer to certain
` categories of lookup requests. And for the
` categories of requests that are
` intercepted, the analysis inspection of the
` identifier will trigger certain actions or
` some other actions as described in the
` claims and in the specification.
`BY MR. ZEILBERGER:
` Q. Would it trigger the determine step
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`in Claim 1?
` MR. DILLON: Objection, form.
` THE WITNESS: Can you say what you
` refer to when you say it?
`BY MR. ZEILBERGER:
` Q. Would the inspection that you refer
`to trigger the determine operation in Claim 1?
` MR. DILLON: Objection, form.
` THE WITNESS: What I can say is
` that, as I mention in my declaration in
` Paragraph 48, there are portions of the
` specification of the '516 patent that show
` how, in the context of identifiers that are
` domain names, the interception of the
` request for an IP address based on the DNS
` name will result in a determination of
` whether certain steps should be taken for
` what the specification calls connecting to
` a secure site versus connecting to a site
` that does not have security features.
`BY MR. ZEILBERGER:
` Q. Are you referring to the examples in
`the specification that have, for example, DNS
`domain name extensions?
` MR. DILLON: Objection, form.
`
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`
`Roberto Tamassia, Ph.D.
`
`Page 20
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` THE WITNESS: I am citing precisely
` in Paragraph 48 the passages that I was
` referring to.
` These are Column 40, primary.
`BY MR. ZEILBERGER:
` Q. So --
` A. Column 40 is -- sorry. Column 40 is
`the one associated, for example, with the DNS
`proxy. I think I said a DNS proxy that is
`associated or attached to a regular DNS server.
`That is what I meant to say.
` Q. In Column 40, Line 36 to 39, it
`says, the '516 patent says, "If access to a
`secure site has been requested, as determined
`for example by domain name extension or by
`reference to an internal table for such sites."
` A. Yes. That's right.
` Q. Is that the particular passage you
`are referring to for the inspection? To put a
`finger on it, are you referring to the domain
`name extension in that passage?
` MR. DILLON: Objection, form.
` THE WITNESS: So, what we have in
` Column 40 is a description of the operation
` of a DNS proxy.
`
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`Roberto Tamassia, Ph.D.
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`Page 21
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` And, the fact that the proxy, as
`mentioned on Column 40, Line 7, will trap the
`DNS requests. The proxy will perform various
`steps.
` At some point, as part of the
`operation of the proxy, a determination is
`made, that is Line 35, of whether a secure site
`has been requested for access.
` And, some examples that are given in
`the specification of how this determination is
`made. One example here says domain name
`extension. The other one will be having some
`type of data structure, a table that stores
`what will be such secure sites.
` And then, based on this
`determination, there are additional steps in
`the establishment of what would be this secure
`type of connection, a virtual private network
`connection with the requested site.
` I think the process illustrated in
`one of the Figures 26.
` MR. ZEILBERGER: Okay. Why don't we
` take a five-minute break.
` THE WITNESS: Sure.
` (Recess taken -- 10:26 a.m.)
`
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`Roberto Tamassia, Ph.D.
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` (After recess -- 10:31 a.m.)
`BY MR. ZEILBERGER:
` Q. Do you understand the standards that
`govern the determination of whether a patent
`claim is anticipated by prior art?
` A. My understanding of anticipation is
`in my declaration. For example, I can refer to
`Paragraph 21 of my declaration about my
`understanding of a patent claim to be
`anticipated by prior art.
` Q. Do you understand the standards that
`govern the determination of whether a patent
`claim would have been obvious to a person of
`ordinary skill?
` A. Say again, please.
` Q. Yes. Do you understand the
`standards that govern the determination of
`whether a patent claim would have been obvious
`to a person of ordinary skill?
` A. So, my understanding of the
`standards for obviousness is reported in my
`declaration. For example, starting at
`Paragraph 27, I explain my understanding of the
`standards.
` Q. Does your declaration in this
`
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`Roberto Tamassia, Ph.D.
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`proceeding offer an opinion as to whether any
`claim of the '516 patent is anticipated by any
`prior art?
` A. My declaration does not state
`opinions of anticipation.
` However, I understand that the
`analysis of the previous art in my declaration
`could be used to make anticipation analysis and
`provide anticipation opinions.
` However, I have not directly
`explicitly stated any opinions on anticipation
`of the claims.
` Q. Does your declaration in this
`proceeding offer an opinion as to whether any
`claim of the '516 patent is obvious in view of
`any prior art?
` A. Similarly to my previous answer, my
`declaration in itself does not directly offer
`such legal opinions of obviousness.
` However, the analysis of previous
`art that is contained in my declaration, and my
`analysis of combinations and variations of
`previous art could be used for an obviousness
`analysis and opinion.
` Q. Does your declaration map any claim
`
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`Roberto Tamassia, Ph.D.
`
`Page 24
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`of the '516 patent to any prior art?
` MR. DILLON: Objection, form.
`BY MR. ZEILBERGER:
` Q. Do you understand the question?
` A. Yes. My declaration does not
`explicitly provide a detailed correspondence
`between the claims or their components mapping
`them explicitly to prior art or combinations
`of it.
` However, my analysis of prior art
`variations and combinations is related to what
`is described in the claims.
` Q. If I were to ask you to point me to
`where in your declaration there is a mapping of
`the prior art to the claims, would you be able
`to do so?
` MR. DILLON: Objection, form.
` THE WITNESS: As I said, I have not
` provided in my declaration an explicit
` mapping of claims and elements and
` combinations of the prior art.
` The scope of my declaration is an
` analysis of relevant prior art and relevant
` combinations.
` I understand that the petitioner has
`
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`Roberto Tamassia, Ph.D.
`
`Page 25
`
` made in that petition such mapping.
` MR. ZEILBERGER: We have no further
` questions.
` THE WITNESS: We are done?
` MR. DILLON: Let's just take a
` couple minute break.
` (Recess taken -- 10:43 a.m.)
` (After recess -- 10:45 a.m.)
` MR. DILLON: We have no questions.
`
` * * *
` (Time Noted: 10:45 a.m.)
` * * *
`
` _____________________
`
` Signature of Deponent
`
`SUBSCRIBED AND SWORN BEFORE ME
`THIS ____ DAY OF __________, 2017.
`____________________
`(Notary Public) MY COMMISSION EXPIRES:__________
`
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`Roberto Tamassia, Ph.D.
`
`Page 26
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` C E R T I F I C A T E
` UNITED STATES OF AMERICA )
` ) ss.:
` DISTRICT OF COLUMBIA )
`
` I, Lori J. Goodin, a Notary Public
` within and for the District of Columbia, do
` hereby certify:
` That ROBERTO TAMASSIA, PH.D., 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 16th day of May, 2017.
`
` __________________________________
` Lori J. Goodin, RPR, CLR, CRR
` Realtime Systems Administrator
`
` My Commission Expires:
` May 14, 2021
`
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`Roberto Tamassia, Ph.D.
`
`Page 27
`
` --------------------I N D E X------------------
` WITNESS: ROBERTO TAMASSIA, PH.D.
`
` EXAMINATION BY PAGE
` Mr. Zeilberger 4
`
` --------------------EXHIBITS-------------------
` PREVIOUSLY MARKED EXHIBITS
` PRIOR MARKED EXHIBITS FIRST REFERRAL
`
` 1003 8
` 1001 9
`
` * * *
`
` (Exhibits retained by counsel.)
`
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`Roberto Tamassia, Ph.D.
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`Page 28
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` ERRATA SHEET
`Case Name:
`Deposition Date:
`Deponent:
`Pg. No. Now Reads Should Read Reason
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`___ ___ __________ __________ ____________________
`
` _____________________
`
` Signature of Deponent
`
`SUBSCRIBED AND SWORN BEFORE ME
`THIS ____ DAY OF __________, 2017.
`____________________
`(Notary Public) MY COMMISSION EXPIRES:__________
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Page 28 of 28
`
`
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