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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` APPLE INC., )
` )
` Petitioner, )
` ) Case IPR2017-00319
` v. ) IPR2017-00321
` ) U.S. Patent No.
` VALENCELL, INC., ) 8,923,941
` )
` Patent Owner. )
` ______________________________)
`
` VIDEOTAPE DEPOSITION OF MAJID SARRAFZADEH, PH.D.
` Irvine, California
` Tuesday, August 29, 2017
`
` Reported by:
` Shari Stellhorn
` CSR No. 2807
`
` Job No. 2683813
` Veritext Legal Solutions
` Mid-Atlantic Region
` 1250 Eye Street NW - Suite 350
` Washington, D.C. 20005
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`Veritext Legal Solutions
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`VALENCELL EXHIBIT 2011
`IPR2017-00321
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`Page 4
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`1 INDEX
`2 WITNESS EXAMINATION
`3 MAJID SARRAFZADEH, PH.D.
`4 (By Mr. Kimble) 6
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`56789
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`1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`3 4
`
` APPLE INC., )
`5 )
` Petitioner, )
`6 ) Case IPR2017-00319
` v. ) IPR2017-00321
`7 ) U.S. Patent No.
` VALENCELL, INC., ) 8,923,941
`8 )
` Patent Owner. )
`9 ______________________________)
`10
`11
`12
`13 Videotape Deposition of MAJID SARRAFZADEH,
`14 PH.D., taken on behalf of Patent Owner, at 5 Park
`15 Plaza, Suite 1600, Irvine, California, beginning at
`16 9:02 a.m. and ending at 3:41 p.m. on Tuesday,
`17 August 29, 2017, before Shari Stellhorn, Certified
`18 Shorthand Reporter No. 2807.
`19
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`Page 3
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`Page 5
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`1 Tuesday, August 29, 2017, Irvine, California
`2 9:02 a m.
`3 -- o0o --
`
`4 5
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` VIDEO OPERATOR: This is the start of DVD
`6 Label No. 1, videotape deposition of Dr. Majid
`7 Sarrafzadeh taken in the matter Apple Inc. versus
`8 Valencell, Inc., filed in the United States Patent
`9 and Trademark Office before the Patent Trial and
`10 Appeal Board, Case Nos. IPR2017-00319 and
`11 IPR2017-00321.
`12 This deposition is being held at 5 Park
`13 Plaza Irvine, California, on August 29th, 2017, at
`14 approximately 9:04 a m. My name is Brent Jordan.
`15 I'm a legal video specialist with TSG Reporting,
`16 Inc. The court reporter is Shari Stellhorn.
`17 Would Counsel present please identify
`18 themselves for the record.
`19 MR. KIMBLE: Justin Kimble for the patent
`20 owner.
`21 MS. HOLOUBEK: Michelle Holoubek for
`22 Petitioner Apple Inc.
`23 MR. CONSILVIO: Mark Consilvio, Law Firm of
`24 Sterne Kessler Goldstein Fox for Petitioner Apple
`25 Inc.
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`2 (Pages 2 - 5)
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`1
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`2
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` APPEARANCES:
`
` For Petitioner:
`3 STERNE KESSLER GOLDSTEIN FOX
` BY: MICHELLE K HOLOUBEK, ESQ
`4 MARK CONSILVIO, ESQ
` 1100 New York Avenue, NW
`5 Washington, DC 20005
` 202 371 2600
`6 holoubek@skgf com
` consilvio@skgf com
`
`7 8
`
` For Patent Owner:
` BRAGALONE CONROY PC
`9 BY: JUSTIN B KIMBLE, ESQ
` 2200 Ross Avenue, Suite 4500W
`10 Dallas, TX 75201-7924
` 214 785 6686
`11 jkimble@bcpc-law com
`12
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` Also Present: Ryan Schletzbaum, Esq
`13 (By telephone and remote real
` time)
`
` Video Operator: Brent Jordan
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`1 MR. SCHLETZBAUM: This is Ryan Schletzbaum
`2 from Shook, Hardy & Bacon on behalf of Apple Inc.
`3 VIDEO OPERATOR: Will the court reporter
`4 please swear in the witness?
`5 THE REPORTER: Can you raise your right
`6 hand, please?
`7 You do solemnly swear the testimony you are
`8 about to give here today should be the truth, the
`9 whole truth and nothing but the truth?
`10 THE WITNESS: I do.
`11
`12 MAJID SARRAFZADEH, PH.D.,
`13 having been administered an oath, was
`14 examined and testified as follows:
`15
`16 CROSS EXAMINATION
`17 BY MR. KIMBLE:
`18 Q Would you please state your full name for
`19 the record?
`20 A Majid Sarrafzadeh.
`21 Q And is it correct that you've been retained
`22 as an expert by Apple and a couple of Inter Partes
`23 reviews matters?
`24 A That's correct.
`25 Q And in particular today we're here for your
`
`Page 7
`1 deposition in two of those matters, IPR2017-319 and
`2 IPR2017-321; do you understand that?
`3 A I do understand that.
`4 Q And you issued or you authored Declarations
`5 in both of those matters; is that right?
`6 A That's correct.
`7 Q And both of those matters relate to patent
`8 US 8,923,941; correct?
`9 A That's correct.
`10 Q And if today I just refer to that as the
`11 '941 patent, you'll know what I'm talking about?
`12 A I do.
`13 Q Okay. And I've placed in front of you
`14 copies of each of your Declarations and your CV.
`15 Feel free, of course, to refer those any time you
`16 want to and they'll be times when I'll direct you to
`17 them; okay?
`18 A Sure.
`19 Q In general, just so you know how I hope to
`20 proceed today, fair amount of questions are --
`21 probably relate to both matters because it's
`22 questions about the patent or your background, so
`23 you feel free to either of them, but if I'm not
`24 directing you to one or the other, my thought is
`25 that it doesn't -- it isn't a question that is
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`Page 8
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`1 particular to either matter. Does that make sense
`2 as far as it goes?
`3 A I think it does.
`4 Q And at some point we'll get into some
`5 particular opinions about different combinations of
`6 art, and at those times I'll try to be clear with
`7 you about which Declaration we're talking about;
`8 okay?
`9 A That would be most helpful.
`10 Q And, in general, when we get to that I'm
`11 going to proceed with a '319 first and then the
`12 '321; okay?
`13 A Okay.
`14 Q All right. What did you do to prepare for
`15 the deposition today?
`16 A I assume you mean after I submitted my
`17 Declarations?
`18 Q Yes. So all I'm asking about is just --
`19 yes, after you submitted the Declarations and once
`20 you knew you were going to be deposed, how did you
`21 prepare to be deposed?
`22 A Sure. I reviewed my Declarations in this
`23 case, the '319 and '321, I reviewed the patent
`24 itself, the '941 patent, I reviewed the prior arts
`25 that I have cited in my Declarations, both
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`Page 9
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`1 Declaration '319 and '321, and I also met with the
`2 counsel.
`3 Q In terms of the documents reviewed, when
`4 did you do that review, most recently for the
`5 deposition time talking about?
`6 A In the past three weeks I would say, give
`7 or take.
`8 Q Okay. And approximately how much time did
`9 you devote to reviewing those documents?
`10 A It was off and on, roughly two weeks, but
`11 off and on; it wasn't full-time on them.
`12 Q Was it more or less than half time for
`13 those two weeks?
`14 A I would say somewhere between 30 and 70% my
`15 working time.
`16 Q Okay. And you were here yesterday to be
`17 deposed in a different matter for a different
`18 patent; right?
`19 A That's correct.
`20 Q Are you able to -- and was your preparation
`21 over these last couple of weeks combined effort to
`22 prepare for yesterday deposition and today's
`23 deposition?
`24 A That's correct.
`25 Q Are you able to distinguish how much time
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`1 you spent reviewing documents related to the two
`2 Declarations that you authored for the '941 patent?
`3 A No, I can't.
`4 Q Okay. Did you -- can you say whether you
`5 spent more time focused on the '965 Declaration or
`6 more time focused on the '941 Declarations?
`7 A It's hard to distinguish it. Maybe roughly
`8 the same, give or take.
`9 Q And you referred to a meeting with counsel
`10 to prepare for the deposition; correct?
`11 A I did.
`12 Q Was it just one meeting?
`13 A It was one meeting.
`14 Q And when did that occur?
`15 A That occurred two days ago on Sunday.
`16 Q Okay. And did that occur in these offices
`17 that we're sitting in now?
`18 A No.
`19 Q Where did it occur?
`20 A In Hotel Irvine about three minutes from
`21 here.
`22 Q And approximately how much time did that
`23 meeting last?
`24 A Approximately, give or take, seven hours.
`25 Q And did that meeting cover both the
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`Page 12
`1 Q Yesterday you talked about some of your
`2 prior experience in being deposed you've been
`3 deposed, I think you said, 15 to 20 times; is that
`4 right?
`5 A That would be a guess statement, correct.
`6 Q Understood. Okay.
`7 And you do have your CV in front of you,
`8 feel free to refer to that whenever. I know that
`9 you mentioned yesterday that there are some expert
`10 work you've done since submitting the CV; correct?
`11 A That's correct.
`12 Q And two of those matters were ones in which
`13 you were also retained by Apple; is that right?
`14 A That's correct.
`15 Q And the first was a case called Immersion
`16 versus Apple; is that right?
`17 A That's correct.
`18 Q And then -- and in that case was it your
`19 testimony that that involved an Inter Partes Review
`20 proceeding as well as an ITC proceeding?
`21 A That was --
`22 MS. HOLOUBEK: Objection to form.
`23 BY MR. KIMBLE:
`24 Q What was your answer there?
`25 A The case that you mentioned, Immersion
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`Page 11
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`1 deposition for the '965 Declaration and this
`2 deposition today?
`3 A Yes, it did.
`4 Q And can you distinguish how much of that
`5 meeting was focused just on preparing for your
`6 deposition on the '941 Declarations?
`7 A To the best of my knowledge, I would
`8 guesstimate half and half.
`9 Q And who was present in that meeting beside
`10 yourself?
`11 A The attorneys that are present here today.
`12 Q And there is another lawyer on the phone
`13 today, Ryan Schletzbaum. Did he participate in that
`14 preparation meeting?
`15 A I don't think he was --
`16 Q Okay.
`17 A -- to my knowledge.
`18 Q Was there anybody from the law firm of
`19 Shook Hardy on the phone during your preparation for
`20 this deposition?
`21 A I don't believe there was any.
`22 Q And other than meeting with counsel, did
`23 you have discussions with anybody else to prepare
`24 for the deposition?
`25 A I don't believe I have.
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`Page 13
`1 versus Apple, had an IPR component and it also had
`2 an ITC component.
`3 Q And who -- what law firm retained you in
`4 the Immersion case?
`5 A I'm not very good with remembering long law
`6 firm names, so escapes me.
`7 Q Do you remember the attorney who you
`8 primarily worked with?
`9 A Yes, Mr. Patterson and Mr. Erickson.
`10 Q Do you remember the first names?
`11 A Todd Patterson.
`12 Q And did you say somebody Mr. Erickson?
`13 A Correct.
`14 Q What's his first name?
`15 A Brian.
`16 Q And do you know what city they work in?
`17 A I believe their main offices are -- or
`18 their location is in Austin, Texas.
`19 Q And is that case ongoing or is it over?
`20 MS. HOLOUBEK: Objection, form.
`21 THE WITNESS: I can't answer as I'm not
`22 exactly sure on the legal matters and when
`23 somebody -- something stops or it's ongoing.
`24 BY MR. KIMBLE:
`25 Q Fair enough.
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`1 A I don't know for sure.
`2 Q Okay. In the ITC part of that work, did
`3 you testify at a trial?
`4 A I did.
`5 Q Okay. Are you continuing to do work in
`6 that matter?
`7 MS. HOLOUBEK: Objection. To the extent
`8 that it calls for privileged information, I'll
`9 caution the witness not to divulge any privileged
`10 information.
`11 BY MR. KIMBLE:
`12 Q And that's fair enough. I'll just tell you
`13 what I'm really getting at, is whether you're
`14 continuing to send invoices for work on that case.
`15 That's what I'm trying to get to.
`16 A I have not sent any invoices since my
`17 deposition.
`18 Q And did you charge -- sorry. Let me take a
`19 step back.
`20 In this matter you're charging Apple 650 an
`21 hour; correct?
`22 A In which matter?
`23 Q The matters in which we're -- you are being
`24 deposed on today.
`25 A That's correct.
`
`1 Q Can you estimate?
`2 A It was I would say for the whole Immersion
`3 case definitely more than 100-, less than a few
`4 hundred. That's the best I recall.
`5 Q All right. And then you also talked about
`6 yesterday that you had done more recently some work
`7 on a case called Masa versus Apple; correct?
`8 A That's correct.
`9 Q And Apple retained you in that case as
`10 well?
`11 A That's correct.
`12 Q And you were deposed in that case?
`13 A I was deposed in that case.
`14 Q And that's an IPR matter, also?
`15 A That is an IPR matter.
`16 Q And I think your testimony yesterday was
`17 that also involves wearable systems; is that right?
`18 A That is correct.
`19 Q What sort of -- and let me ask -- step back
`20 a minute.
`21 Your expert reports in this case are not
`22 confidential; do you understand that?
`23 A I do.
`24 Q Okay. In the Masa case was your expert
`25 Declaration confidential?
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`1 Q And that was also true for the '965 case
`2 that you were deposed on yesterday; right?
`3 A That's true.
`4 Q Okay. In the Immersion case did you charge
`5 Apple 650 an hour?
`6 A The best I recall, it's either 650 or plus
`7 or minus some percentage. I don't know the exact
`8 number, but that's roughly my rate.
`9 Q And when you say plus or minus, what --
`10 could that be more than 700 an hour or do you think
`11 it's somewhere between 6- and 700?
`12 A It would -- 99% sure it's going to be
`13 between 600 and 700 in all of my cases.
`14 Q Okay. And in that case Apple was the
`15 Petitioner like they are in the '941 matters;
`16 correct?
`17 MS. HOLOUBEK: Objection, form.
`18 THE WITNESS: You mean in the IPR case?
`19 BY MR. KIMBLE:
`20 Q Yes, that's what I meant.
`21 A That's correct.
`22 Q Okay. Approximately how much did you bill
`23 Apple or the law firm for your work on the Immersion
`24 case?
`25 A I don't recall.
`
`1 A I don't know.
`2 Q Okay. Do you have some reason to believe
`3 that the Declaration was confidential in that
`4 matter?
`5 A Not being an attorney, I wouldn't know one
`6 way or another.
`7 Q But you know in this matter, in the '941
`8 matters, your Declarations are not confidential?
`9 A Just because you said so.
`10 Q Fair enough. Okay.
`11 What sort of wearable systems were -- was
`12 the patent at issue in the Masa IPR about?
`13 MS. HOLOUBEK: Objection, form.
`14 THE WITNESS: I don't know how to narrow it
`15 down other than saying it was a general wearable
`16 system.
`17 BY MR. KIMBLE:
`18 Q Did it involve -- did the wearable system
`19 involve PPG sensors?
`20 A I'm not sure if it would have the
`21 implication of having a PPG sensor or not.
`22 Q Do you recall whether the patent claims in
`23 the Masa matter involved determination of heart
`24 rate?
`25 A I'm not sure if they would have the
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`1 implication of having determination of heart rate.
`2 Q What do you mean when you say the
`3 implication of determining heart rate?
`4 A Meaning I need to look at that patent to
`5 give you a better answer. I haven't focused on that
`6 patent with that question in mind.
`7 Q Do you recall -- so you've opined in the
`8 '941 matters about a variety of prior references;
`9 correct?
`10 A I have.
`11 Q Did you opine about any of those matters --
`12 sorry.
`13 Did you opine about any of the prior
`14 references from these cases in the Masa case?
`15 A I can't be 100% sure, but I believe not.
`16 Q And who retained you -- what law firm
`17 retained you for the Masa matter?
`18 A Again, one of those long names.
`19 Q Do you recall the attorneys you worked
`20 with?
`21 A One of them was Ryan Schletzbaum, I believe
`22 how you pronounce it.
`23 Q Schletzbaum?
`24 A Correct.
`25 Q The person who is on the phone today from
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`1 Q No, I mean in total. I think you already
`2 testified about your hourly rate in general for all
`3 the matters that you've been working on.
`4 A Right. I don't remember. This was mostly
`5 last year.
`6 Q 2016?
`7 A Yes --
`8 Q And --
`9 A -- mostly.
`10 Q Okay. Do you believe you charged Apple
`11 more or less than 100,000 for your work on the Masa
`12 matter?
`13 A I have to go back and look. I'm not sure.
`14 Q Do you think it was more or less than
`15 50,000?
`16 A I really like to go back and look before
`17 giving an answer. I don't know.
`18 Q And was your work on the Immersion case in
`19 2016 or 2017?
`20 A Yes.
`21 Q Both?
`22 A Yes.
`23 Q Was any of that work before 2016?
`24 MS. HOLOUBEK: Objection, form.
`25 THE WITNESS: Are you saying that did I do
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`1 Shook Hardy?
`2 A That's correct.
`3 Q Okay. Do you recall any other attorneys
`4 you worked with on that matter?
`5 A I don't remember the name, but there were
`6 one or two other attorneys.
`7 Q And in the Masa IPR, was Apple the
`8 Petitioner as they are in the '941 matters?
`9 MS. HOLOUBEK: Objection, form.
`10 THE WITNESS: I believe Apple was the
`11 Petitioner.
`12 BY MR. KIMBLE:
`13 Q They were challenging the patentability of
`14 the patent?
`15 MS. HOLOUBEK: Objection, form.
`16 THE WITNESS: I believe Apple was
`17 challenging the pantentability.
`18 BY MR. KIMBLE:
`19 Q And approximately -- oh, are you continuing
`20 to send invoices for your work in the Masa IPR?
`21 A I haven't sent an invoice for a long time.
`22 Q And approximately how much did you charge
`23 Apple or its attorneys for your work in the Masa
`24 IPR?
`25 A Do you mean hourly rate or --
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`Page 21
`1 any work in relation to Immersion and Apple in 2015
`2 or before that?
`3 BY MR. KIMBLE:
`4 Q Correct.
`5 A The answer is I believe no.
`6 Q Okay. And other than the Immersion and
`7 Masa cases and these Valencell matters, have you
`8 been retained by Apple as an expert witness in any
`9 other cases?
`10 MS. HOLOUBEK: Objection to the extent that
`11 it calls for privileged information. I'll ask the
`12 witness not to divulge any privileged or
`13 confidential information.
`14 THE WITNESS: I have not been retained by
`15 Apple in other matters in the past.
`16 BY MR. KIMBLE:
`17 Q Have you -- so the lawyers who are with you
`18 in the room here are from law firm called Sterne
`19 Kessler. Have you ever been retained by Sterne
`20 Kessler in any other matters besides these Valencell
`21 cases?
`22 MS. HOLOUBEK: Objection to the extent that
`23 it calls for privileged information. I'll ask the
`24 witness not to divulge any privileged or
`25 confidential information.
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`1 THE WITNESS: Not to the best of my
`2 knowledge.
`3 BY MR. KIMBLE:
`4 Q And same question for the law firm of Shook
`5 Hardy, Mr. Schletzbaum's law firm, other than the
`6 Masa IPR and the Valencell IPRs -- well, let me take
`7 a step back.
`8 Other than the Masa IPR, have you been
`9 retained by Shook Hardy in any other matters?
`10 MS. HOLOUBEK: Repeat the objection to the
`11 extent that it calls for privileged information.
`12 I'll ask the witness not to divulge any confidential
`13 or privileged information.
`14 THE WITNESS: In the past, not to the best
`15 of my knowledge.
`16 BY MR. KIMBLE:
`17 Q To date, how much have you invoiced Apple
`18 for your work on the Valencell IPR matters?
`19 A I don't know. I have to go back and check.
`20 Q Maybe we can get to it a different way.
`21 How much time have you spent working on the
`22 Valencell IPR matters?
`23 A Again, that's something I need to go back
`24 and check to give you an accurate answer.
`25 Q Can you give me an estimate on how much
`
`1 10s of hours on '965 matters.
`2 BY MR. KIMBLE:
`3 Q So if you had invoiced Apple today for 100
`4 hours of work, that would be $65,000 based on your
`5 billable rate. Can you say whether you've been
`6 compensated that much or more to date by Apple for
`7 work on the Valencell IPRs?
`8 MS. HOLOUBEK: Objection, form.
`9 THE WITNESS: I'm not certain. I really
`10 need to go back and check.
`11 BY MR. KIMBLE:
`12 Q Feel free to consult your CV. How many
`13 times have you been retained in a case as an expert
`14 by the Plaintiff or the patent owner?
`15 MS. HOLOUBEK: Objection, form.
`16 THE WITNESS: I do not completely
`17 understand your question.
`18 BY MR. KIMBLE:
`19 Q Okay. In this case -- sorry.
`20 In the Valencell IPR matters you understand
`21 that Apple is the Petitioner --
`22 A Right.
`23 Q -- and Valencell is the patent owner?
`24 We'll just start with that.
`25 In IPR matters how many times have you been
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`1 time you've spent working on these matters?
`2 A It's more than 50 hours, less than a few
`3 hundred hours for sure, but beyond that, I need to
`4 check.
`5 Q You have before you two Declarations, one
`6 for the '319 matter and one for the '321 matter.
`7 A Correct.
`8 Q How much time did you spend preparing the
`9 Declaration for the '319 matter?
`10 A Time including analysis and reading of
`11 patents and prior arts and all that?
`12 Q Yes.
`13 A I would say 10s of hours, maybe more.
`14 Q And how about for the '321 matter?
`15 A I would say probably the same.
`16 Q And when you say the same, you don't mean
`17 those 10s of hours were for both; you are saying 10s
`18 of hours for each of those Declarations?
`19 MS. HOLOUBEK: Objection, form.
`20 THE WITNESS: I would think so for each.
`21 BY MR. KIMBLE:
`22 Q And similar for the '965 Declaration that
`23 you were deposed about yesterday?
`24 MS. HOLOUBEK: Objection, form.
`25 THE WITNESS: I think, again, I would say
`
`1 retained by the patent owner?
`2 MS. HOLOUBEK: Objection, form.
`3 THE WITNESS: I'm not 100% sure. My guess
`4 is perhaps once or twice.
`5 BY MR. KIMBLE:
`6 Q And how many times in IPRs have you been
`7 retained by the Petitioner?
`8 MS. HOLOUBEK: Objection, form.
`9 THE WITNESS: Including this case?
`10 BY MR. KIMBLE:
`11 Q Including the Valencell matters, yes.
`12 A Probably around three times.
`13 Q And then you list on the second page of
`14 your CV some District Court matters; do you see
`15 that?
`16 A I do.
`17 Q And so, for example, the second bullet
`18 point from the bottom is a case called Altera versus
`19 PACT; do you see that?
`20 A Correct.
`21 Q And is it correct that in that case you
`22 were retained by Altera?
`23 A That's correct.
`24 Q And they are the Plaintiff in that case;
`25 right?
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`1 A That's correct.
`2 Q How many times have you been retained as an
`3 expert by the Plaintiff?
`4 A In District Courts I would say roughly,
`5 again, three times or so.
`6 Q And about how many times have you been
`7 retained on the other side, by the Defendant?
`8 MS. HOLOUBEK: Objection, form.
`9 THE WITNESS: My best guesstimate would be
`10 two or three times.
`11 BY MR. KIMBLE:
`12 Q In 2017 you've received some compensation
`13 for work as an expert; right?
`14 A Correct.
`15 MS. HOLOUBEK: Objection, form.
`16 THE WITNESS: I have received compensation
`17 as an expert this year.
`18 BY MR. KIMBLE:
`19 Q Approximately what percentage of your
`20 income in 2017 has come from your work as an expert?
`21 A Ending 2017, my guess is for sure less than
`22 50%.
`23 Q Do you think it's closer to 50 or closer to
`24 30?
`25 MS. HOLOUBEK: Objection, form.
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`Page 27
`1 THE WITNESS: I have to go back and check.
`2 I'm not certain.
`3 BY MR. KIMBLE:
`4 Q Okay. Same question for 2016. What
`5 portion or percentage of your income in 2016 came
`6 from your work as an expert?
`7 A Again, I would say less than 50%. That's
`8 just a guesstimate. I need to look to be sure.
`9 Q Sure.
`10 Did you receive relative to 2017 more or
`11 less of your compensation from expert work in 2016?
`12 MS. HOLOUBEK: Objection, form.
`13 THE WITNESS: I can't tell. I really need
`14 to look at these to be sure.
`15 BY MR. KIMBLE:
`16 Q Are you aware of whether an expert opinion
`17 that you've given has been criticized by a Court?
`18 A Explain that further. What do you mean?
`19 Q Like are you aware of a Court Order in
`20 which your -- an opinion of yours was criticized?
`21 A In what sense criticized?
`22 Q For example, criticized for not providing
`23 the correct level of detail.
`24 MS. HOLOUBEK: Objection, form.
`25 THE WITNESS: I'm not aware of any.
`
`1 BY MR. KIMBLE:
`2 Q In the Altera case, are you aware of
`3 whether the Court criticized your opinions?
`4 MS. HOLOUBEK: Objection, form.
`5 THE WITNESS: I'm personally not aware of
`6 any.
`7 BY MR. KIMBLE:
`8 Q Yesterday there were some questions --
`9 there was discussion about whether university for
`10 which you work receives grants from consortiums that
`11 may or may not include Apple; do you remember that?
`12 A I do.
`13 Q So I'm not talking about that today.
`14 A Okay.
`15 Q Other than compensation that you've
`16 obtained from Apple or its lawyers for work as an
`17 expert, have you been compensated ever in any other
`18 way by Apple?
`19 A Again, setting aside of any mutual fund I
`20 may have --
`21 Q Please set that aside.
`22 A I will -- and anything that was donated to
`23 our labs or institution, I would say no.
`24 Q And just to kind of put a kind of a -- tie
`25 up that line of questions -- and we'll talk about
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`1 this a little further -- there is a could that you I
`2 believe co-founded called Bruin Biometrics; is that
`3 right?
`4 A Correct.
`5 Q Has Bruin Biometrics received any funding
`6 from Apple?
`7 A In the early days that I was involved with
`8 Bruin Biometrics, 2009, 2011, '12, so the founding
`9 stages of it, I don't believe so.
`10 Since then this is an independent company
`11 and I'm not aware of their financial matters, so I
`12 don't know.
`13 Q And same question for MediSens Wireless.
`14 Are you aware of Apple providing any funding to that
`15 company?
`16 A In the early days that I co-founded and did
`17 some of the early work for MediSens, 2007, I would
`18 say, to 2011, '12, perhaps, I don't believe there
`19 were any.
`20 Since then MediSens is an independent
`21 company with its own financial structure, so I'm not
`22 aware if they did or did not.
`23 Q Are you aware of Bruin Biometrics or
`24 MediSens Wireless doing any business with Apple?
`25 MS. HOLOUBEK: Objection, form.
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`1 THE WITNESS: I'm not involved in business
`2 matters of MediSens and Bruin Biometrics, so I
`3 wouldn't know one way or another.
`4 BY MR. KIMBLE:
`5 Q When were you retained by Apple to work on
`6 the Valencell IPRs?
`7 A I think it was sometimes in the first half
`8 of 2016.
`9 Q And focusing particularly on the '319 and
`10 '321 matters which both relate to the '941 patent,
`11 what were you retained by Apple to do?
`12 A As I have stated in Paragraph 2 of the '319
`13 report, I state that, "I have been retained on
`14 behalf of Apple Inc. to provide expert opinions in
`15 connection with a Petition for Inter Partes Review
`16 before the United States Patent and Trademark
`17 Office. I understand that this Declaration involves
`18 my expert opinion and expert knowledge related to
`19 US Patent No. 8,923,941," which we agreed to refer
`20 to it as the '941 patent, and its title is "Methods
`21 and Apparatus for Generating Data Output Containing
`22 Physiological and Motion-Related Information and its
`23 field of endeavor."
`24 Q What sort of opinions did you understand
`25 you were retained to provide?
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`1 MS. HOLOUBEK: Objection, form.
`2 THE WITNESS: The types of opinion that I
`3 have outlined in '319 and '321 report.
`4 BY MR. KIMBLE:
`5 Q And, in general, is it to say it's your
`6 opinion in both of those Declarations that the
`7 claims of the '941 patent are not patentable?
`8 MS. HOLOUBEK: Objection, form.
`9 THE WITNESS: My opinion is that there are
`10 prior art that read on the claims of '941 patent.
`11 BY MR. KIMBLE:
`12 Q And was it your understanding in 2016 that
`13 you were retained to provide opinions that the
`14 claims of the '941 patent were invalid?
`15 MS. HOLOUBEK: Objection, form.
`16 THE WITNESS: That was not my
`17 understanding. My understanding was to provide an
`18 independent analysis.
`19 BY MR. KIMBLE:
`20 Q So did you understand that if it was your
`21 opinion that the claims of the '941 patent were
`22 valid, you could provide those opinions?
`23 A I --
`24 MS. HOLOUBEK: Objection, form.
`25 THE WITNESS: I wouldn't have it any other
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`1 way as a scientist.
`2 BY MR. KIMBLE:
`3 Q I'm not asking right now for specific
`4 information or anything that would be confidential,
`5 but have you ever been retained as an expert in a
`6 pate