UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS, LTD.,
`Patent Owner.
`__________
`Cases: IPR2017-00136
`IPR2017-00137
`
`Patents: 8,641,525
`9,089,770
`
`Deposition of DR. BRUCE RUBINGER
`Boston, Massachusetts
`Thursday, October 26, 2017
`4:40 p.m.
`
`Reported by: Valerie R. Johnston
`Pages: 1 - 98
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`001
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`PETITIONER VALVE CORPORATION, EX. 1018, p.001
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`VALVE CORPORATION,
`Petitioner,
`v.
`IRONBURG INVENTIONS, LTD.,
`Patent Owner.
`__________
`Cases: IPR2017-00136
`IPR2017-00137
`
`Patents: 8,641,525
`9,089,770
`
`Deposition of DR. BRUCE RUBINGER
`Boston, Massachusetts
`Thursday, October 26, 2017
`4:40 p.m.
`
`Reported by: Valerie R. Johnston
`Pages: 1 - 98
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`PETITIONER VALVE CORPORATION, EX. 1018, p.001
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`2
`
`DEPOSITION OF DR. BRUCE RUBINGER, a
`witness called on behalf of the Petitioner, Valve
`Corporation, taken before Valerie R. Johnston,
`Registered Professional Reporter and Notary Public
`in and for the Commonwealth of Massachusetts, at
`the Offices of Global Prior Art, Inc., at 21 Milk
`Street, 5th Floor, Boston, Massachusetts, on
`Thursday, October 26, 2017, commencing at 4:40
`p.m.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.002
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`3
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`APPEARANCES:
`
`ON BEHALF OF IRONBURG INVENTIONS LTD., A UK
`LIMITED COMPANY:
`
`Manatt, Phelps & Phillips, LLP
`EHAB M. SAMUEL, ESQ.
`11355 W. Olympic Boulevard
`Los Angeles, California 90064
`Tel: (310) 312-4000
`E-mail: esamuel-PTAB@manatt.com
`
`ON BEHALF OF PETITIONER, VALVE CORPORATION:
`
`Barcelo, Harrison & Walker, LLP
`JOSHUA C. HARRISON, ESQ.
`2901 West Coast Highway, Suite 200
`Newport Beach, California 92663
`Tel: (949) 340-9736
`E-mail: josh@bhiplaw.com
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`003
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`PETITIONER VALVE CORPORATION, EX. 1018, p.003
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`4
`
`I N D E X
`WITNESS: DIRECT CROSS REDIRECT RECROSS
`Dr. Bruce Rubinger
`(by Mr. Harrison) 5
`(by Mr. Samuel)
`
`88
`__________
`E X H I B I T S
`
`EX. NO.
`Exhibit 2034
`
`Exhibit 1016
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1017
`
`PAGE NO.
`
`Declaration of Bruce
`Rubinger
`Article entitled "Patent
`Searching Tools &
`Techniques"
`Document entitled
`"United States Patent"
`Document entitled
`"United States Patent"
`Article entitled "Locating
`Prior Art Gold: The Five
`Keys to Successfully
`Uncovering Strong Prior
`Art"
`
`7
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`8
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`13
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`PETITIONER VALVE CORPORATION, EX. 1018, p.004
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`5
`
`P R O C E E D I N G S
`MR. HARRISON: My name is Joshua Harrison
`representing Valve Corporation, the Petitioner.
`MR. SAMUEL: I'm Ehab Samuel representing
`Patent Owner, Ironburg Inventions, Limited.
`THE WITNESS: I am Bruce Rubinger
`representing Global Prior Art.
`MR. HARRISON: Can you state your
`address, please.
`THE REPORTER: I'm sorry. I need to
`swear him in.
`MR. HARRISON: Oh, yeah.
`____________
`DR. BRUCE RUBINGER,
`having been satisfactorily identified, and duly
`sworn by the Notary Public, was examined and
`testified as follows:
`DIRECT EXAMINATION
`BY MR. HARRISON:
`A. The address is 21 Milk Street in Boston,
`Mass. 02109. We're on the 5th floor.
`Q. All right.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.005
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`6
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`THE WITNESS: Let me know if I go too
`
`fast.
`Q. Have you ever been deposed before, Dr.
`Rubinger?
`A. Not in 20 some odd years.
`Q. Okay. Don't worry. I'm not here to
`attack your credentials. I've looked at your
`credentials, and they look just fine. So it's not
`going to be that contentious today. I think your
`credentials are fine. I think that the search
`firm we hired's credentials is fine. I just want
`to get to the truth.
`This deposition is about just truthful
`answers. If the truth is bad for us, fine. If
`the truth is good for us, fine. I think the truth
`is good for us. So I'm not going to try to trick
`you. Okay. I'm just going to ask you questions,
`and if you answer truthfully, it's not a problem.
`A. Uh-huh.
`Q. So is there any reason you can't give
`complete truthful testimony today, any ailments,
`medications?
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`PETITIONER VALVE CORPORATION, EX. 1018, p.006
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`7
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`A. No. I'm able to give truthful answers.
`Q. Do you understand that your testimony
`today is under oath as if it were given in a court
`of law?
`A. I do.
`MR. HARRISON: I'd like to introduce an
`exhibit marked 2034. It's the declaration of
`Bruce Rubinger.
`Oh, I better give you a copy before.
`She's got to mark it.
`You can see it's already marked 2034 down
`
`there.
`
`(Document marked as Exhibit 2034
`for identification)
`BY MR. HARRISON:
`Q. Dr. Rubinger, do you recognize this
`declaration?
`A. (Witness reviews document) I do.
`Q. Do you see anything in that declaration
`that's different from when you first wrote it?
`A. No. It looks the same.
`Q. In Paragraph 10 of that declaration, you
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`PETITIONER VALVE CORPORATION, EX. 1018, p.007
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`8
`
`mention another search firm called Landon IP. Do
`you see that at the end of Paragraph 10?
`A. (Witness reviews document) Right.
`Q. Have you ever heard of Landon IP before
`working on this case?
`A. I have.
`Q. And have you ever heard -- oh, I'm sorry.
`Are they a competitor of your business? Let me
`rephrase that question.
`Were they in 2014 a competitor of your
`business?
`A. We operate in different segments. So,
`you know, I admire Dave Hunt and Landon, and I do
`not view them as competitors.
`MR. HARRISON: I'd like to introduce an
`exhibit which I'll mark as Exhibit 1016.
`(Document marked as Exhibit 1016
`for identification)
`BY MR. HARRISON:
`Q. It's a book entitled -- well, it's an
`excerpt from a book entitled "Patent Searching
`Tools and Techniques" written by David Hunt, Long
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`PETITIONER VALVE CORPORATION, EX. 1018, p.008
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
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`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`9
`
`Nguyen --
`A. Uh-huh.
`Q. -- and Matthew Rodgers.
`A. Uh-huh.
`Q. Have you ever seen that book before, Dr.
`Rubinger?
`A. (Witness reviews document) I thumbed
`through this years ago, maybe, 10 years ago.
`Q. You mentioned that you know David Hunt.
`A. Yes.
`MR. SAMUEL: Objection, relevance.
`Q. Do you Matthew Rodgers or Long Nguyen?
`MR. SAMUEL: Objection, relevance.
`A. I shouldn't use the word -- you know, we
`have occasionally spoken. You know, we -- but no,
`I do not know Matthew Rodgers.
`Q. If we go to the page of this excerpt of
`the book numbered IX, Roman numeral IX --
`A. Uh-huh.
`Q. -- could you just take a look at that,
`please, to see if it refreshes your recollection
`whether you know any of those individuals.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.009
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`10
`
`MR. SAMUEL: Objection, relevance.
`A. (Witness reviews document) Well, you
`know, I see the authors. Perhaps, you can clarify
`the question.
`Q. I think you've answered it.
`Let's go to Page XI, which is Roman
`numeral XI, the second to the last page on that
`one. I was wondering if you could just please
`take a look at the description there of Landon IP.
`Take your time.
`A. (Witness reviews document) Is there a
`particular question about Landon or my thoughts
`about the book?
`Q. Well, if you -- yes. I would like to
`know your thoughts about the book.
`MR. SAMUEL: Objection, relevance.
`A. I might be able to answer that.
`Q. Okay.
`A. I think it's great marketing, and you
`know, I think, you know, we've been doing very
`similar stuff, and I think it's a great marketing
`tool.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.010
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`11
`
`Q. Do you consider Landon IP to be an outfit
`that employs skilled searchers?
`MR. SAMUEL: Objection, relevance;
`objection, speculation.
`A. We don't compete with Landon. I've never
`pursued any government contracts. So we don't
`really compete, and I really can't answer those
`questions, because I have no knowledge about their
`operation.
`Q. Do you -- are you aware of their
`reputation in the field of professional
`searching?
`MR. SAMUEL: Objection, speculation;
`objection, relevance.
`A. I'd prefer not to speculate about a
`reputation.
`Q. I was just asking you if you are aware of
`their reputation. If you aren't, then that's
`fine. If you are, I just want to know if you are
`aware of it.
`MR. SAMUEL: Objection, relevance;
`objection, speculation.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.011
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`12
`
`A. We operate in different niches, and so I
`really don't have any information to answer that
`question.
`Q. Do you have any reason to believe that
`they are not skilled searchers?
`A. I have no information to answer that
`question.
`MR. HARRISON: Okay. I'd like to enter
`another exhibit. It's Petitioner's Exhibit 1001.
`It's a U.S. Patent 8,641,525.
`(Document marked as Exhibit 1001
`for identification)
`MR. HARRISON: Do you have a copy?
`MR. SAMUEL: Actually, no. I don't have
`one in front of me.
`BY MR. HARRISON:
`Q. Have you looked at this patent before,
`Dr. Rubinger?
`A. (Witness reviews document) I have, and I
`also looked at 700, which is very close to this.
`Q. Okay. Well, let's enter that into the
`record, too, just in case.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.012
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`13
`
`MR. HARRISON: So I'm entering another
`exhibit. It's Petitioner's Exhibit 1002. It's
`U.S. Patent 9,089,770.
`(Document marked as Exhibit 1002
`for identification)
`BY MR. HARRISON:
`Q. Here's the exhibit.
`A. Uh-huh. Right.
`MR. HARRISON: And I'll give this to you
`in just a second.
`MR. SAMUEL: I think they're identical
`specs here.
`BY MR. HARRISON:
`Q. All right. Can we go to Claim 1 in U.S.
`Patent -- the 525 patent.
`A. Uh-huh.
`Q. Near the end of that claim, the claim
`language says, "Each back control, including an
`elongate member that extends substantially the
`full distance between the top edge and the bottom
`edge."
`A. Uh-huh.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.013
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`14
`
`Q. That subphrase of the patent is the one
`that I'm pointing to.
`A. (Witness reviews document) Sure.
`Q. That particular claim limitation, it --
`it compares the length of an elongate member to a
`distance between the top edge and the bottom edge.
`A. Uh-huh.
`Q. Is that the sort of claim limitation that
`you would expect prior art references to verbally
`describe, or would it be more likely for that to
`be shown in figures?
`MR. SAMUEL: Objection, scope; objection,
`speculation.
`THE WITNESS: I don't have a problem
`answering this one.
`MR. SAMUEL: Go ahead.
`BY MR. HARRISON:
`A. What's interesting about this patent is
`that the figures are really very descriptive, and
`for that reason, a skilled searcher would want to
`do a search both by figures, as well as with
`keywords.
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`PETITIONER VALVE CORPORATION, EX. 1018, p.014
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`15
`
`Q. And so would you consider that comparison
`of the buttons' length to the controller something
`that would be more likely found through the
`searching of the figures?
`MR. SAMUEL: Objection, asked and
`answered; objection, scope; objection,
`speculation.
`THE WITNESS: Do I have the option of
`
`passing?
`
`MR. SAMUEL: Oh. You answer every time,
`unless I instruct you not to.
`THE WITNESS: Oh, okay.
`BY MR. HARRISON:
`Q. Yeah. Dr. Rubinger, let me clarify.
`I'll reask the question in a minute.
`But, in the deposition process --
`A. Uh-huh.
`Q. -- opposing counsel will object to
`questions to preserve that objection for later so
`that later, when we work on, you know, our work
`product and back and forth with the Court, he's
`preserved that objection for the record. So he
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`PETITIONER VALVE CORPORATION, EX. 1018, p.015
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`16
`
`states his objection for the record, but you're
`supposed to answer the question, unless he
`instructs you to not answer. So he'll say do not
`answer that question, if he means do not answer.
`If he just objects, just keep going.
`So, just to rephrase the question, is
`that claim limitation that I identified in the 525
`patent the sort of claim limitation that a skilled
`searcher would be more likely to find in the
`figures?
`
`MR. SAMUEL: Objection, speculation,
`calls for speculation; objection, scope;
`objection, asked and answered.
`You can answer.
`A. Well, we've done a lot of cases, you
`know, on input devices and other projects in
`gaming where the figures were really important,
`and in many cases, it's easier to search doing a
`figure search, and in other cases, you're going to
`find it with keywords.
`So my experience is, for an invalidity
`search, you really want to pursue both avenues to
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`PETITIONER VALVE CORPORATION, EX. 1018, p.016
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`17
`
`have a higher probability of finding good art.
`Q. And can you direct your answer to that
`particular limitation that I identified in the
`patent, please.
`A. Well, I think it's -- there are different
`ways of describing those limitations. So, you
`know, on the one hand, you can describe it using
`different terminology and so you -- although
`whereas it sort of visually is easier looking at
`the figures.
`So, if you're going to go look at the
`terminology, it is really important to look at the
`terminology that appears in the patent examiner's
`report as a starting point for higher success.
`Q. So, in Paragraph No. 10 of your
`declaration, you had mentioned pretty much what
`you've just said there, I think, which is that you
`would have recommended a search by hand or a
`manual search. Let me find that.
`A. Yup. Page 4.
`Q. Right. It says, (as read) "A skilled
`searcher would have searched the subclass slash
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`PETITIONER VALVE CORPORATION, EX. 1018, p.017
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`18
`
`subclass by hand and by using keyword
`combinations." When you say, "by hand," what does
`that entail?
`A. So, basically, it's sort of a way one
`would do a hand search, you know, before they
`introduced the E system where you would go by
`class and subclass and look at the exhibits or the
`figures. Of course, for this, looking at the
`figures is important.
`On the other hand, you know, one should
`also consider searching using some of the common
`terms. Both would be a good strategy.
`So, for instance, when I looked at
`345/169, there were 2,700 documents, and it turned
`out, when I was looking at different ways of
`searching that, if you use important keywords,
`including remote or controller and finger, you end
`up with a subset of only 700 patents, which
`basically one could go through and look at all of
`the figures in a day and a half to two days.
`MR. SAMUEL: I'm sorry to interrupt, but
`she's having a hard time hearing you. So, maybe,
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`PETITIONER VALVE CORPORATION, EX. 1018, p.018
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`19
`
`you can speak a little louder.
`A. On the other hand, you know, if you look
`at the keywords, we found that you could end up
`with 49 results, and that's really a pretty
`limited set to review as well.
`Q. So can you tell me, what are the steps of
`what you are calling a manual review or a review
`by hand? If you -- let's talk about a particular
`reference. What do you do with that reference
`when you review it by hand?
`A. Well, we basically flip to -- flip
`through it and look at the figures, and if it
`looks like it's relevant, we sort of flag it in
`order to do a more detailed analysis. If it
`doesn't appear relevant, you know, right away,
`then we'll skip it and go to the next one in that
`subclass.
`Q. So you look at all of the figures?
`A. We do.
`Q. And, to understand what you're looking
`at, do you, like, look at the abstract or do you
`read some of the text?
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`019
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.019
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`20
`
`A. Well, the abstracts are often misleading.
`You know, we -- we have cases where you find it
`might be Figure No. 10, or there are various
`embodiments, and so if it looks potentially
`relevant, we will look at all of the figures in
`that patent document.
`If it's clearly non-relevant, you -- you
`quickly know that when you're three or four pages
`in, and we'll just skip it and go to the next one.
`Q. Uh-huh. If you don't do a manual search,
`what are the chances that you would miss important
`prior art?
`A. Well, we -- we have to distinguish
`between a patentability search and an invalidity
`search, and so for a patentability search, you
`only want to pick up the low-hanging fruit, and
`your objectives are really quite different from an
`invalidity search.
`We have lots of data on the likelihood of
`locating prior art having conducted more than
`14,000 projects over the last 35 years, and so we
`are very good at invalidating patents, and we'll
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`020
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.020
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`21
`
`probably come up with invalidating art 90 percent
`of the time.
`Q. That's using the methods that you're
`describing that includes the manual searching?
`A. Well, one is a manual search. Many times
`we'll do Japanese searching. Japanese searches
`are really important for many topics. I've got
`people in Japan searching Japanese language
`materials. For some topics, literature is
`important. Products could be really important.
`And so each technology is different, and
`so the best way to conduct a search is really very
`much defined by the technology, as well as what
`you plan to do.
`You know, so patent is -- product art is
`going to be really good, say, if you want to file
`an IPR. For litigation, you may refer to some
`other types of art. So it really depends on the
`goals, and it really depends on the technology.
`Q. So, if I'm understanding you correctly,
`you're saying that a search process -- the
`appropriate search process depends on the
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`021
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`PETITIONER VALVE CORPORATION, EX. 1018, p.021
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`22
`
`situation, the technology, and some other
`factors?
`A. Absolutely.
`Q. So a skilled searcher doesn't always use
`one particular process?
`MR. SAMUEL: Objection, scope; objection,
`
`form.
`A. I think --
`MR. SAMUEL: Objection; speculation.
`Go ahead.
`A. I think the scope of the search is going
`to change, depending upon the focus and the
`technology.
`So you may have a Japanese patent search,
`because Japanese utility models are going to be
`really important, or literature searching or
`product searching.
`If you're going to do a U.S. patent
`search, it is always important to cover the most
`relevant classes and subclasses, and -- and that's
`the reason why the cited references on the front
`are really important to giving you a starting
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`022
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.022
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`23
`
`point, and we always look at those.
`Q. So you're declaration describes a search
`process that you felt was applicable in this
`situation, correct?
`A. Yes.
`Q. And do you always follow that process for
`all of your searches?
`A. We always start our search using this
`process. So we always start by looking at the
`classes where the cited art appears, and after
`going through those -- and it could be both manual
`searching, as well as key word strings. We always
`build on it, and so we'll go follow up with
`promising leads, and we'll look at foreign
`counterparts.
`We'll take a look at whether people
`filing patents have -- have written articles,
`whether these companies have patents out -- have
`product out there, but this is really the core to
`the start is the U.S. patent searches. This is
`how we would start with the U.S. patent search.
`Q. So are you saying that all of the
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`023
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.023
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`24
`
`searches you conduct start with a review of the
`references that the examiner cited?
`MR. SAMUEL: Objection, asked and
`answered.
`A. We basically will look at all of the
`important references on the front and where they
`were -- where they came from. In some cases,
`we'll have kickoff meetings with our client, and
`they'll tell us his perspective on which of the
`cited references are closer.
`But knowing where the cited art is coming
`from is really important, because the examiners
`are really specialists in terms of that core
`technology and do lots of searching for
`patentability, and so the classes where they look
`tend to be pretty important classes.
`Q. And, following that procedure, do you
`always identify all of the important prior art
`every time?
`A. We have a very high success rate.
`Q. You were saying 90 percent of the time?
`A. Well, 90 percent of the time you're going
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`024
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.024
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`25
`
`to find prior art to invalidate a patent. That's
`what I said. Probably, 5 percent of the time or 7
`percent of the time you end up with patents that
`have gone through so many re-exams where they have
`narrowed the claim so much it's difficult to find
`prior art, but those patents are so narrow they
`don't actually read against anything. And so
`that's why you only can invalidate 90 percent, and
`3 percent to 4 percent of U.S. patents are what I
`would call real innovations that -- that are going
`to hold up.
`Q. Is the method that you outlined in your
`declaration the only reasonably diligent search
`method?
`
`MR. SAMUEL: Objection, speculation.
`A. Well, it reflects our experience and our
`process, and you know, our clients use different
`search companies, and they feel they have high
`confidence that our work is very, very high
`quality.
`Q. Is it possible that another search firm's
`different process could be reasonably diligent,
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`025
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.025
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`26
`
`also, even if it's different?
`MR. SAMUEL: Objection, calls for
`speculation.
`A. Yeah. I have no information to answer a
`question like that.
`Q. Well, you mentioned in your last answer
`that your clients sometimes hire other search
`firms --
`A. Uh-huh.
`Q. -- and that your process has compared
`favorably to theirs.
`A. Uh-huh.
`Q. And my question is, does that necessarily
`mean that the others' search process is not
`reasonably diligent?
`MR. SAMUEL: Objection, calls for
`speculation.
`A. Well, we -- we have cases where people
`have used other search firms, and they come to
`Global, because they find that the findings were
`not particularly strong, and they ask us to redo
`the work. And that -- that, certainly, is a way
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`026
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.026
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`27
`
`of -- for joint defense groups and others to have
`a relatively analytic way of comparing different
`approaches.
`You know, all I know -- all I know is we
`have a tremendous reputation for quality and joint
`defense groups, and many leading attorneys have a
`long relationship with us.
`Q. So you're saying that your search methods
`have proven to be above average?
`A. Yes.
`Q. And would you say that every reasonably
`diligent searching method -- is it your opinion
`that every reasonable -- reasonably diligent
`searching method would have found the Worn prior
`art in this particular case?
`A. Could you restate that.
`Q. Sure. Is it your opinion that, if a
`searching method did not find the Worn reference
`in this particular case, that it must not be
`reasonably diligent?
`A. That is my opinion.
`Q. So are you saying that any reasonably
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`027
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.027
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`28
`
`diligent search method would be guaranteed to find
`that reference?
`A. My experience is that there's a high
`likelihood -- if a search is done diligently by an
`expert, there's a high probability they -- they
`would have been likely to have uncovered that
`reference.
`Q. The expert would be a human being,
`correct?
`A. Yes.
`Q. And human beings make mistakes. So isn't
`it possible that a reasonably diligent searcher
`using -- a reasonably diligent and skilled
`searcher could follow a reasonably diligent search
`process and still not uncover that reference?
`MR. SAMUEL: Objection, speculation.
`THE WITNESS: Do I have to answer this?
`MR. SAMUEL: Yes. Of course. Unless I
`tell you don't answer, answer all the questions.
`Maybe, you can restate the question or
`reread the question.
`MR. HARRISON: I'll restate the question.
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`028
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.028
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`29
`
`BY MR. HARRISON:
`Q. Is it your opinion that a skilled
`searcher following a reasonably diligent search
`method, that it would be impossible for him to
`miss the Worn reference?
`MR. SAMUEL: Objection, scope; objection,
`speculation.
`A. I don't really know how the search was
`carried out previously and the amount of time
`devoted to it. So I can't really answer that
`question, because I don't really have the facts.
`You know, it may very well be it was an anomaly of
`that one particular search. I can't go beyond
`that --
`Q. I'm not asking --
`A. -- because I don't have any facts.
`Q. I'm not asking you to. In fact, that's
`really what I'm asking is that, is it your opinion
`that, based on what you reviewed, that you know
`for a fact that their method was not reasonably
`diligent?
`A. If you say, from the perspective of an
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`029
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.029
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`30
`
`invalidity search, should they have done more in
`terms of coverage, my -- my perspective is they
`could have had broader coverage, and I think it's
`reasonable that they would have picked up this
`particular reference.
`Q. When you say -- in your declaration, you
`said it was reasonably likely that they'd pick up
`that reference.
`A. Uh-huh.
`Q. When you say reasonably likely, you're
`not saying it's guaranteed, correct?
`A. I think it's reasonably likely that you
`would find it. That's my experience. That's how
`I do it.
`Q. That means that there's a possibility
`that you wouldn't find it, correct, even if you
`were following a reasonably diligent search
`method --
`MR. SAMUEL: Objection.
`Q. -- correct?
`MR. SAMUEL: Objection, speculation;
`objection, relevance.
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`030
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.030
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`31
`
`MR. HARRISON: Can you repeat the
`question, please.
`THE REPORTER: "Question: That means
`that there's a possibility that you wouldn't find
`it, correct, even if you were following a
`reasonably diligent search method --
`"MR. SAMUEL: Objection.
`"Question: -- correct?"
`BY MR. HARRISON:
`A. I think, based on my experience searching
`that, if you are following sort of a really
`rigorous search, there's a good probability you
`would have picked up if not this or you could have
`picked up other art.
`So I don't think the question is would
`you not have picked this up. I think one could
`equally say you could have found other art, you
`know, but we don't know since we never did -- the
`search is really outside the scope of your
`question.
`Q. Yeah. There's more than one way to do a
`search, clearly. And my question is that, because
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`031
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.031
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`32
`
`we're talking about probabilities, that would you
`agree that it's possible that a search process
`could be reasonably diligent and yet not find this
`reference?
`MR. SAMUEL: Objection, speculation.
`A. From my perspective, you really want
`consistency in outcomes, and that's really why
`process is important, so you have a higher
`likelihood of getting good findings each time.
`So I -- I don't think it's all about
`probability. I think it's really about process.
`Q. And you just said that the process gives
`you a likelihood but not a certainty, correct, of
`finding any one particular reference, unless
`you're using hindsight? When you're searching,
`these processes are all about increasing your
`chances of finding a reference, correct?
`A. They do, but the reality is that the Worn
`reference is not something that's filed in some
`random class you wouldn't be looking at. So I
`think there's a high likelihood -- since you're
`going to search that class, I think this is
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`032
`
`PETITIONER VALVE CORPORATION, EX. 1018, p.032
`VALVE CORP. v. IRONBURG INVENTIONS LTD.
`IPR2017-00136 & IPR2017-00137
`
`
`
`Transcript of Dr. Bruce Rubinger
`Conducted on October 26, 2017
`
`33
`
`something there is a high likelihood it would have
`and sho
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