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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` APPLE INC., ) IPR2017-00318
`
` ) Patent No. 8,886,269
`
` Petitioner, )
`
` )
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` v. )
`
` )
`
` VALENCELL, INC., )
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` )
`
` Patent Owner. )
`
` -------------------------)
`
` - - -
`
` FRIDAY, SEPTEMBER 15, 2017
`
` - - -
`
` Videotaped deposition of BRIAN W. ANTHONY, PH.D.,
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` taken at the offices of Sterne Kessler Goldstein Fox
`
` 1100 New York Avenue, NW, Suite 600, Washington, D.C.,
`
` beginning at 9:00 a.m., before Nancy J. Martin, a
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` Registered Merit Reporter, Certified Shorthand
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` Reporter.
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` Veritext Legal Solutions
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` Mid-Atlantic Region
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`VALENCELL EXHIBIT 2010
`IPR2017-00317
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` APPLE INC., ) IPR2017-00318
`
` ) Patent No. 8,886,269
`
` Petitioner, )
`
` )
`
` v. )
`
` )
`
` VALENCELL, INC., )
`
` )
`
` Patent Owner. )
`
` -------------------------)
`
` - - -
`
` FRIDAY, SEPTEMBER 15, 2017
`
` - - -
`
` Videotaped deposition of BRIAN W. ANTHONY, PH.D.,
`
` taken at the offices of Sterne Kessler Goldstein Fox
`
` 1100 New York Avenue, NW, Suite 600, Washington, D.C.,
`
` beginning at 9:00 a.m., before Nancy J. Martin, a
`
` Registered Merit Reporter, Certified Shorthand
`
` Reporter.
`
` Veritext Legal Solutions
`
` Mid-Atlantic Region
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`VALENCELL EXHIBIT 2010
`IPR2017-00317
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`Page 2
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` A P P E A R A N C E S :
`
` B R A G A L O N E C O N R O Y P C
` B Y : T . W I L L I A M K E N N E D Y , E S Q .
` 2 2 0 0 R o s s A v e n u e
` S u i t e 4 5 0 0 W
` D a l l a s , T e x a s 7 5 2 0 1
` ( 2 1 4 ) 7 8 5 - 6 6 7 4
` b k e n n e d y @ b c p c - l a w . c o m
` R e p r e s e n t i n g P a t e n t O w n e r
`
` S T E R N E K E S S L E R G O L D S T E I N F O X
` B Y : M I C H A E L D . S P E C H T , E S Q .
` J A S O N A . F I T Z S I M M O N S , E S Q .
` 1 1 0 0 N e w Y o r k A v e n u e
` W a s h i n g t o n , D . C . 2 0 0 0 5
` ( 2 0 2 ) 3 7 1 - 2 6 0 0
` j f i t z s i m m o n s @ s k g f . c o m
` R e p r e s e n t i n g P e t i t i o n e r A p p l e , I n c .
`
` - a n d -
`
` S H O O K , H A R D Y & B A C O N L L P ( V I A T E L E C O N )
` B Y : R Y A N J . S C H L E T Z B A U M , E S Q .
` 2 5 5 5 G r a n d B o u l e v a r d
` K a n s a s C i t y , M i s s o u r i 6 4 1 0 8
` ( 8 1 6 ) 5 5 9 - 2 6 9 3
` r s c h l e t z b a u m @ s h b . c o m
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` A L S O P R E S E N T :
` D A V I D C A M P B E L L , L E G A L V I D E O G R A P H E R
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` I N D E X
` PAGE
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` TESTIMONY OF BRIAN ANTHONY
`
` BY MR. KENNEDY 5
`
` BY MR. SPECHT 202
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` E X H I B I T S
` NUMBER DESCRIPTION MARKED
` Exhibit U.S. Patent Prosecution History 20
` 1002
`
` Exhibit Declaration of Brian W. Anthony, 20
` 1003 Ph.D. in Support of Petition for
` Inter-partes View of U.S. Patent
` 8,886,269, 108 pages
` Exhibit Academic Curriculum Vitae, 20 pages 128
` 1004
`
` Exhibit Mobile Monitoring with Wearable 131
` 1005 Photoplethysmographic Biosensors,
` 13 pages
`
` Exhibit U.S. Patent 6,745,061, 22 pages 162
` 1008
` Exhibit U.S. Patent 5,797,841, 11 pages 146
` 1010
`
` Exhibit U.S. Patent 8,382,671, 15 pages 198
` 2007
` Exhibit
` 1001 U.S. Patent 8,886,269 8
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` WASHINGTON, D.C., FRIDAY, SEPTEMBER 15, 2017;
`
` 9:00 A.M.
`
` -oOo-
`
` THE VIDEOGRAPHER: This is the start of media
`
` labeled No. 1 of the videotaped deposition of
`
` Dr. Brian Anthony in the matter of Apple, Inc. v.
`
` Valencell, Inc. This is in the United States Patent
`
` and Trademark Office before the Patent Trial and
`
` Appeals Board. Number IPR2017-00318.
`
` This deposition is being held at
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` 1100 New York Avenue, Northwest, Suite 600,
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` Washington, D.C., 20005 on September 15, 2017 at
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` approximately 9:00 a.m. My name is David Campbell
`
` from TSG Reporting, Inc. I'm the legal video
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` specialist.
`
` The court reporter is Nancy Martin, in
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` association with Veritext Court Reporting.
`
` Counsel, will you please identify yourselves
`
` for the record, and then the witness will be sworn in.
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` MR. KENNEDY: Bill Kennedy for patent owner,
`
` Valencell, Inc.
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` MR. SPECHT: Michael Specht for petitioner
`
` Apple, Inc. Also with me is Jason Fitzsimmons for
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` patent owner, Apple, Inc. Or I'm sorry, for
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` petitioner, Apple, Inc.
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` MR. SCHLETZBAUM: This is Ryan Schletzbaum.
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` I'm from Shook Hardy & Bacon appearing telephonically
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` on behalf of Apple.
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`Page 5
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` BRIAN ANTHONY, PH.D.,
`
` having been first duly sworn/affirmed,
`
` was examined and testified as follows:
`
` EXAMINATION
`
` BY MR. KENNEDY:
`
` Q. Good morning, Dr. Anthony. Welcome back.
`
` A. Good morning.
`
` Q. Like yesterday, I'd like you to introduce
`
` yourself for the record, please.
`
` A. My name is Brian W. Anthony.
`
` Q. And what's your understanding of why you're
`
` here?
`
` A. My understanding is to be cross-examined with
`
` respect to the declaration for the '269.
`
` Q. And that's for IPR2017-00318; correct?
`
` A. I do not recall the exact number, but that
`
` sounds correct.
`
` Q. And like yesterday, I'll ask you if you don't
`
` understand a question that I ask, please let me know.
`
` If you don't explain to me that you don't understand
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` the question, I'll assume that you did in fact
`
` understand the question. Is that fair?
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` A. Yes.
`
` Q. Is there any reason that you cannot testify
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` truthfully here today?
`
` A. No, there's not.
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` Q. And you understand that you're under oath
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` today?
`
` A. Yes, I do.
`
` Q. What did you do to prepare for this
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` deposition?
`
` A. I reviewed my declaration and reviewed the
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` supporting references.
`
` Q. How much time did you spend preparing for
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` today's deposition?
`
` A. I'd say approximately 10 hours or so.
`
` Q. And that's just for today's deposition, not
`
` for the deposition we held yesterday on the -317 IPR;
`
` is that correct?
`
` A. Correct.
`
` Q. Did you meet with anyone to prepare for
`
` today's deposition?
`
` A. Yes, I did. I met with counsel.
`
` Q. Which counsel?
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` A. Counsel from Sterne & Kessler.
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` Q. Did you meet with anyone else to prepare for
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`Page 7
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` the depositions?
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` A. I did not.
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` Q. Did you communicate with anyone else to
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` prepare for the deposition?
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` A. I did not.
`
` Q. Yesterday we spent a lot of time going over
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` your CV and your background. I was wondering if since
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` yesterday, has anything changed in that experience
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` that would apply to the '269 patent versus applying to
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` the '830 patent that we talked about yesterday?
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` MR. SPECHT: Counsel, may I interrupt just
`
` for a moment. You've referred to the deposition as
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` taking place yesterday a number of times. It was
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` Wednesday.
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` MR. KENNEDY: Sorry. There's a break between
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` the depositions.
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` Q. So by "yesterday," I meant on Wednesday.
`
` A. I'm sorry. Can you please repeat the
`
` question.
`
` Q. So on Wednesday we spoke about your CV and
`
` your experience as that applied to the '830 patent.
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` Is it your understanding that that patent, the '830
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` patent, is related to the '269 patent that we're
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` discussing today?
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` A. I understand that the '269 patent is the
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` parent of the '830 patent, if I recall correctly.
`
` Q. So would the experience that we discussed in
`
` the deposition on Wednesday relating to the '830
`
` patent also apply, in your mind, to the '269 patent?
`
` A. Yes, my experience would.
`
` Q. Is there anything additional that you have in
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` your background that relates to the '269 patents that
`
` does not relate to the '830 patent?
`
` A. I'm sorry. Can you please repeat the
`
` question?
`
` Q. Sure. Is there anything in your background
`
` that relates to the '269 patent but that does not
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` relate to the '830 patent?
`
` MR. SPECHT: Objection. Form.
`
` THE WITNESS: Not that I can specifically
`
` identify at this point.
`
` MR. KENNEDY: I'm going to hand you what's
`
` been labeled as Exhibit 1001. That's the '269 patent.
`
` Do you recognize it?
`
` (The witness reviewed Exhibit 1001.)
`
` THE WITNESS: Yes, I do.
`
` BY MR. KENNEDY:
`
` Q. Have you read the '269 patent?
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` A. Yes.
`
` Q. You've read the entire thing?
`
` A. Yes.
`
` Q. Have you read the claims?
`
` A. Yes.
`
` Q. Did you read the entire '269 patent
`
` carefully?
`
` A. I read the entire '269 patent in forming my
`
` opinions.
`
` Q. My question was did you read the entire '269
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` patent carefully?
`
` A. I read it carefully while reading it. I read
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` the words and understood it.
`
` Q. Did you understand all the concepts in the
`
` '269 patent?
`
` A. I understood the concepts sufficiently in
`
` forming an obviousness analysis of the patent.
`
` Q. My question was did you understand all of the
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` concepts in the '269 patent?
`
` A. I understood the concepts sufficiently in
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` terms of forming an opinion about the obviousness of
`
` the claims in the patent.
`
` Q. So was the answer to the question that you,
`
` yes, did understand all the concepts in the '269
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` patent?
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` MR. SPECHT: Objection. Asked and answered.
`
` THE WITNESS: As I said, I read the '269
`
` patent, and I understood the terms as used in the '269
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` patent in the context of forming an opinion as to
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` whether or not a person skilled in the art would have
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` read the claims and understood --
`
` BY MR. KENNEDY:
`
` Q. I didn't ask you about the terms. I just
`
` want to know, yes or no, did you understand all of the
`
` concepts in the '269 patent?
`
` MR. SPECHT: Objection. Asked and answered.
`
` THE WITNESS: Again, I understood the '269
`
` patent in forming my opinion for an obviousness
`
` analysis.
`
` BY MR. KENNEDY:
`
` Q. So I just asked you, "Yes or no, did you
`
` understand all the concepts in the '269 patent."
`
` And your answer was, "I understood the '269
`
` patent in forming my opinion for an obviousness
`
` analysis." How did that answer you just gave me
`
` answer my question?
`
` A. I believe I answered your question in that I
`
` understood the concepts as they're described in the
`
` '269 patent in forming an opinion regarding the
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` obviousness and the background of the patent.
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` Q. But I didn't just ask you about "the
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` concepts." I asked you about "all the concepts";
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` correct?
`
` A. Correct.
`
` Q. So was your answer saying that, yes, you did
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` understand all the concepts in the '269 patent?
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` MR. SPECHT: Objection. Asked and answered.
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` THE WITNESS: Again, I read the '269 patent
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` in the context of forming an opinion regarding the
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` obviousness of the claims, and in that context, I
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` understood the terms.
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` MR. KENNEDY: Objection. Nonresponsive.
`
` Q. I'll ask one more time. If you don't answer
`
` with a yes or no, I'll assume that you're refusing to
`
` answer the question.
`
` MR. SPECHT: Objection. Form.
`
` BY MR. KENNEDY:
`
` Q. Yes or no, did you understand all the
`
` concepts in the '269 patent?
`
` MR. SPECHT: Objection. Asked and answered.
`
` THE WITNESS: I'm sorry. Please ask the
`
` question one more time.
`
` BY MR. KENNEDY:
`
` Q. Yes or no, did you understand all the
`
` concepts in the '269 patent?
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` A. Yes. In the context of reading the patent in
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` forming opinion about the obviousness of the claims, I
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` understood the concepts.
`
` Q. Did you understand all the words in the '269
`
` patent?
`
` A. There were no words that I -- so sorry. Ask
`
` the question again.
`
` Q. Did you understand all of the words in the
`
` '269 patent?
`
` A. All of the words are English words, and I
`
` read the words in their context of the '269 patent.
`
` So I understood what I was reading in helping to form
`
` my opinion about whether or not a person skilled in
`
` the art, reading those same terms, would understand
`
` what they meant.
`
` Q. Did you understand all the claims in the '269
`
` patent?
`
` (The witness reviewed Exhibit 1001.)
`
` BY MR. KENNEDY:
`
` Q. I'm not asking you to reread the claims and
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` figure out if you understand them now. I'm asking
`
` when you read them in preparation for your declaration
`
` if you understood all of the claims of the '269
`
` patent?
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` A. I'm rereading the claims to make sure I
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` refresh my memory correctly. And reading the claims,
`
` I was asked to form an opinion regarding whether a
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` person skilled in the art would have understood those
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` claims to be disclosed in the prior art, and in that
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` context, I understood the claims.
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` Q. In your opinion, what's the purported novelty
`
` of the '269 patent?
`
` A. I'm sorry. "The purported novelty"?
`
` Q. The purported novelty of the '269 patent.
`
` A. Are you asking novelty as it relates to --
`
` the context of novelty, I guess is the --
`
` Q. In a patentable sense. The '269 patent
`
` purportedly describes its novelty, and I want to know,
`
` in your opinion, what that purported novelty is.
`
` A. In my opinion, a person of skill in the art
`
` reading these claims would have understood them to
`
` have been disclosed in the prior art, and as such, I
`
` guess my understanding is such that that would not be
`
` deemed as being novel then in the context of a patent.
`
` Q. So in the '269 patent, it's your opinion that
`
` nowhere in that patent does it describe what its own
`
` purported novelty is?
`
` MR. SPECHT: Objection. Mischaracterizes the
`
` witness' testimony.
`
` THE WITNESS: I would also highlight that I
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` don't recall. I'd have to look at my declaration.
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` But I was not asked to consider one of the claims. So
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` I can't speak to that claim. So I have no opinion on
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` that claim.
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` REPORTER MARTIN: What was the last sentence?
`
` THE WITNESS: I -- counsel asked all of the
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` claims, and I was not asked to consider all of the
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` claims. I considered -- I forget which claim I did
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` not consider.
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` BY MR. KENNEDY:
`
` Q. So it's your opinion that nowhere in the '269
`
` patent does it describe its purported novelty?
`
` MR. SPECHT: Objection. Mischaracterizes the
`
` witness' testimony.
`
` MR. KENNEDY: I just asked him a question. I
`
` wasn't summarizing his testimony. So I'll read the
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` question.
`
` Q. So is it your opinion that nowhere in the
`
` '269 patent does it describe its purported novelty?
`
` A. I believe the '269 patent attempts to
`
` describe not what it believed to be novel.
`
` Q. And what does the '269 patent believe it's
`
` novelty to be?
`
` A. I believe as in the claims, that as in 1, "A
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` monitoring device, comprising:
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` "a band configuring to at least partially
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` encircle a portion of the body of a subject, the band
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` comprising:
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` "a generally cylindrical outer body portion
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` and a generally cylindrical inner body portion secured
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` together in concentric relationship, the inner body
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` portion comprising light transmissive material, and
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` having inner surface;
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` "a layer of cladding material near the inner
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` body portion inner surface; and
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` "at least one window formed in the cladding
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` material that serves as a light-guiding interface to
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` the body of the subject; and
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` "at least one optical emitter and at least
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` one optical detector attached to the band;
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` "wherein the light transmits the material is
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` an optical communication with the at least one optical
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` emitter and at least one optical detector is
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` configured to deliver light from the at least one
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` optical emitter to one or more locations of the body
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` of the subject via the at least one window and deliver
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` the collected light to the at least one optical
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` detector."
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` There are other claims. That was Claim 1.
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` My understanding is those -- the claims are the things
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` that the -- were considered by the purported inventors
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` to be novel things.
`
` Q. You testified earlier today that you read the
`
` '269 patent carefully; correct?
`
` A. I did testify to that, that's correct. I
`
` said carefully in the context of forming my opinion
`
` for an obviousness analysis.
`
` Q. Anywhere in the '269 patent before the claims
`
` do you recall the '269 patent describing its purported
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` novelty?
`
` A. I did not memorize the '269 patent, but in
`
` the description, prior to the claims, I certainly
`
` discussed this, the background, the detailed
`
` description.
`
` Q. So before the claims, where does the '269
`
` patent describe its purported novelty?
`
` (The witness further reviewed Exhibit 1001.)
`
` THE WITNESS: So prior to the claims the
`
` patent describes the field of invention. It describes
`
` the background of the invention. It summarizes the
`
` invention. It gives a detailed description of the
`
` invention, all as preamble to the claims.
`
` BY MR. KENNEDY:
`
` Q. In any of those sections do you recall the
`
` '269 patent describing its purported novelty over the
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` prior art?
`
` (The witness further reviewed Exhibit 1001.)
`
` BY MR. KENNEDY:
`
` Q. Again, I'm not asking you to take five
`
` minutes and review the document to see if you can come
`
` up with an answer now. I'm asking if you actually
`
` recall the '269 patent describing its purported
`
` novelty over the prior art.
`
` A. As I answered, I believe what I said is the
`
` background of the invention summary describes the
`
` background, describes the field of use. If I were to
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` summarize as an example, the highlights in the
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` background of the invention that there's a "growing
`
` market demand for personal health and environmental
`
` monitors, for example, for gauging overall health --
`
` REPORTER MARTIN: Slow down, please.
`
` THE WITNESS: -- "metabolism during exercise,
`
` athletic training, dieting, daily life activities,"
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` Generally -- and I skipped -- "However, traditional
`
` health monitors and environmental monitors may be
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` bulky, rigid, and uncomfortable -- generally not
`
` suitable for use during daily physical activity." It
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` goes on. "There is also growing interest in
`
` generating and comparing health and environmental
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` exposure statistics of the general public and
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` particular demographic groups. For example,
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` collective statistics may enable the healthcare
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` industry medical community to direct health care
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` resources to where they are most highly valued.
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` However, methods of collecting these statistics may be
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` expensive and laborious, often utilizing human-based
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` recording/analysis steps at multiple times.
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` "As such, improved ways of collecting,
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` storing and analyzing" physical -- "physiological
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` information are needed. In addition, improved ways of
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` seamlessly extracting physiological information from a
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` person doing everyday life activities, especially
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` during high activity levels, may be important for
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` enhancing fitness training and healthcare quality,
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` promoting and facilitating prevention, and reducing
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` healthcare costs."
`
` So that's the general background of the
`
` invention. And so I can go on and specifically
`
` identify the areas that are more specific, but it's
`
` highlighting that that is the area where it's trying
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` to innovate.
`
` BY MR. KENNEDY:
`
` Q. What did you mean by you can go on and
`
` specifically identify the areas that are more
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` specific?
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` A. You asked me to halt my review of the summary
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` of the document, and so I gave an example of
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` background of the invention to answer your question.
`
` Q. My question wasn't asking you to review the
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` entire document and see if you can come up with a
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` purported novelty. It was do you recall any of those
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` sections before the claims describing purported
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` novelty over the prior art.
`
` A. I believe I answered the question in that the
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` patent is described in the background of the
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` invention, the summary of the detailed description,
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` and other discussion. If you'd like me to identify
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` and point to the specific places, I would like to
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` review the document and point you to specifically
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` those lines.
`
` Q. Just off the top of your head, you can't
`
` recall those sections describing any purported
`
` novelties of the '269 patent; is that correct?
`
` A. As I said, I did not memorize the patent line
`
` by line.
`
` Q. Is it still your opinion that you know the
`
` '269 patent well?
`
` A. It is my opinion that in reviewing this
`
` patent to form my opinion as to whether a person
`
` skilled in the art would have found the claims to be
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` disclosed in the prior art, yes.
`
` MR. KENNEDY: I'm going to hand you now
`
` Exhibit 1003.
`
` (Deposition Exhibit 1003 was marked for
`
` identification.)
`
` MR. KENNEDY: I'm also going to hand you
`
` Exhibit 1002.
`
` (Deposition Exhibit 1002 was marked for
`
` identification.)
`
` BY MR. KENNEDY:
`
` Q. Dr. Anthony, do you recognize Exhibit 1002?
`
` (The witness reviewed Exhibit 1002.)
`
` THE WITNESS: It appears to be the
`
` prosecution history.
`
` BY MR. KENNEDY:
`
` Q. Prior to signing your declaration in this
`
` IPR, did you review Exhibit 1002?
`
` A. I -- yes, I did. I skimmed through it.
`
` Q. By "skimmed through," what do you mean?
`
` A. Read pieces of it in detail. Skimmed through
`
` other sections.
`
` Q. Do you recognize which pieces you read in
`
` detail?
`
` A. I do not recall specifically.
`
` Q. Did any of those specific pieces you read in
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` detail inform any of your opinions in your
`
` declaration?
`
` A. My review of that document helped inform my
`
` opinions.
`
` Q. What's a specific example of how you reviewed
`
` that document in forming your opinions?
`
` (The witness reviewed Exhibit 1002.)
`
` THE WITNESS: For example, on Page 22 of my
`
` declaration, which, actually, if you want to now
`
` note -- let me just confirm this is actually my
`
` declaration.
`
` (The witness reviewed the document.)
`
` THE WITNESS: Okay. That does appear to be
`
` my declaration.
`
` So as I state on Page 22, Paragraph 43 of my
`
` declaration, "I reviewed the prosecution history for
`
` the '269 patent, considered it in formulating my
`
` opinions, including my interpretation of the claims of
`
` the '269 patent. On February 19, 2014 Valencell filed
`
` the application" --
`
` BY MR. KENNEDY:
`
` Q. Are you planning on reading the entire
`
` background on the prosecution history?
`
` A. You asked me to point to specific areas, if I
`
` recall the question correctly, where the prosecution
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` history helped to form my opinion, and this is the
`
` section in my opinion where I highlight the specific
`
` sections of the prosecution history that helped
`
` formulate my opinion.
`
` Q. So in your own words, without reading the
`
` summary of the prosecution history, what is the
`
` specific example of how the prosecution history
`
` informed your opinions in your declaration, this IPR?
`
` MR. SPECHT: Objection. Form.
`
` THE WITNESS: So if I paraphrase, for
`
` example, from Paragraph 44, it changed -- Valencell
`
` changed the field-of-use from earbuds to physiological
`
` monitoring.
`
` Furthermore, if I paraphrase Paragraph 45, it
`
` amended independent claims, as I highlight, striking
`
` "capable of encircling" and adding "configured to at
`
` least partially encircle" as examples.
`
` And in Paragraph 46, if I were to
`
` paraphrase, it stated that monitoring including
`
` circular band --
`
` REPORTER MARTIN: Please slow down..
`
` THE WITNESS: So I'm paraphrasing from my
`
` opinion.
`
` BY MR. KENNEDY:
`
` Q. What you just did was state things that
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` happened in the prosecution history. How did those
`
` things inform your opinion in your declaration?
`
` A. So as I highlight in Paragraph 48, the Patent
`
` Office did not supply reasons for allowing the claims
`
` over prior art. It deemed that the independent
`
` Claim 1 was allowable based on at least one of the
`
` additional features in view of the remarks discussed.
`
` And I found that surprising in forming my opinion
`
` because a person skilled in the art would have
`
` understood these elements added to the claim were
`
` already in the prior art.
`
` So I was surprised of the allowance of the
`
` claims after those modifications, as an example.
`
` Q. Why did you qualify that with, "as an
`
` example"?
`
` A. Because I did not reread every paragraph and
`
` point to other examples, and there may be other
`
` examples.
`
` Q. So without looking at your declaration, just
`
` off the top of your head, can you recall any specific
`
` example in which the prosecution history informed the
`
` opinions in your declaration for the '269 patent?
`
` A. First, I have a question. Is it
`
` impermissible for me to review my declaration in these
`
` proceedings?
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` Q. For this question, it is. The question is
`
` asking you without looking at your declaration.
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` MR. SPECHT: Objection. Form.
`
` THE WITNESS: I did not memorize, in
`
` preparation for this proceedings, any document. To
`
` give an answer that's reflective of my opinion, I feel
`
` it's important to be able to review documents.
`
` BY MR. KENNEDY:
`
` Q. So in your previous answer you said, "as an
`
` example." So now taking a look at your declaration,
`
` can you now come up with any portion of the
`
` prosecution history that you relied on to inform
`
` your -- that actually informed your opinions in the
`
` '269 patent? Sorry. Let's strike that.
`
` Now taking a look at the prosecution history,
`
` is there -- strike that.
`
` Now taking a look at your declaration, can
`
` you think of any specific part of the prosecution
`
` history that informed your opinions in your
`
` declaration?
`
` MR. SPECHT: Objection. Asked and answered.
`
` MR. KENNEDY: That's fine. I'll withdraw the
`
` question and ask a different question.
`
` Q. Now taking a look at your declaration, can
`
` you think of any -- of how any specific part of the
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` prosecution history informed your opinions in your
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` declaration? So I'm not asking you to identify a
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` specific part. I'm asking how it actually informed
`
` your opinion.
`
` A. I think I answered that question, and I would
`
` point, for example, to Paragraph 48. And if I
`
` paraphrase, there was an evolution of the claims, and
`
` I found it surprising, in my opinion, that the -- I
`
` understood that the original claims had been rejected
`
` and the claims were modified. I feel that a person
`
` skilled in the art would have found those revised
`
` claims to be disclosed in the prior art.
`
` And so in my opinion I was surprised that's
`
` how -- you know, that evolution of allowing the claims
`
` helped form my opinion.
`
` Q. You said, "for example." Are there any other
`
` examples? And, again, I'm not asking you to identify
`
` a part of a specification that you relied -- or the
`
` part of the prosecution history that you relied on.
`
` I'm asking you how that particular part of the
`
` pro
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