DARYL SODERMAN
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 1
`
` 2
`
` 3
`
` 4 GENERATION BRANDS LLC
`
` 5
`
` 6
`
`-vs-
`
`Petitioner,
`
` 7 LIGHTING SCIENCE GROUP CORP.
`
` 8
`
` 9
`
`10
`
`Patent Owner.
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`* * * * * * * * * * * * * * * * * * *
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`11 DEPOSITION OF DARYL SODERMAN
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`12 DATE TAKEN: January 23, 2018
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`13 TIME: 12:35 - 2:45 p.m.
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`14 PLACE:6650 N. Andrews Avenue
`
`15 Ft. Lauderdale, Florida 33309
`
` TAKEN BEFORE: RICK E. LEVY, RPR, FPR
` AND NOTARY PUBLIC
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`* * * * * * * * * * * * * * * * * * *
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`PATENT OWNER EXHIBIT 2004
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 1
`
` 2
`
` 3
`
` 4 GENERATION BRANDS LLC
`
` 5
`
` 6
`
`-vs-
`
`Petitioner,
`
` 7 LIGHTING SCIENCE GROUP CORP.
`
` 8
`
` 9
`
`10
`
`Patent Owner.
`
`* * * * * * * * * * * * * * * * * * *
`
`11 DEPOSITION OF DARYL SODERMAN
`
`12 DATE TAKEN: January 23, 2018
`
`13 TIME: 12:35 - 2:45 p.m.
`
`14 PLACE:6650 N. Andrews Avenue
`
`15 Ft. Lauderdale, Florida 33309
`
` TAKEN BEFORE: RICK E. LEVY, RPR, FPR
` AND NOTARY PUBLIC
`
`* * * * * * * * * * * * * * * * * * *
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`PATENT OWNER EXHIBIT 2004
`Page 1
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`DARYL SODERMAN
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` 1 APPEARANCES:
`
` 2 On behalf of the Petitioner, Technical Consumer
` Products:
` 3
` STACIE HARTMAN, ESQUIRE
` 4 THOMAS A. RAMMER, II, ESQUIRE
` SCHIFF HARDIN
` 5 233 S. WHACKER DRIVE
` SUITE 6600
` 6 Chicago, Illinois 60606
`
` 7
`
` 8 On behalf of the Respondent:
`
` 9 ERIC HAYES, ESQUIRE
` KIRKLAND & ELLIS LLP
`10 300 N. Lasalle Street
` Chicago, Illinois 60654
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`PATENT OWNER EXHIBIT 2004
`Page 2
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`DARYL SODERMAN
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` 1
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` 2
` - - -
` 3 I N D E X
` - - -
` 4
` WITNESS: DIRECT CROSS REDIRECT RECROSS
` 5 DARYL SODERMAN
` BY MY. HAYES 4 60
` 6 BY MS. HARTMAN 51
`
` 7
`
` 8 - - -
` E X H I B I T S
` 9 - - -
`
`10
` NUMBER PAGE
`11 Respondent's Ex. 1 4
` Respondent's Ex. 2 5
`12 Respondent's Ex. 3 5
` Respondent's Ex. 4 21
`13 Respondent's Ex. 5 46
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`PATENT OWNER EXHIBIT 2004
`Page 3
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`DARYL SODERMAN
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` 1 P R O C E E D I N G S
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` 2 - - -
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` 3 Deposition taken before Rick E. Levy,
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` 4 Registered Professional Reporter and Notary Public
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` 5 in and for the State of Florida at Large, in the
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` 6 above cause.
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` 7 - - -
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` 8 Thereupon,
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` 9 (Daryl Soderman)
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`10 having been first duly sworn or affirmed,
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`11 was examined and testified as follows:
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`12 DIRECT EXAMINATION
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`13 THE WITNESS: I do.
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`14 MR. HAYES: Mr. Soderman, good afternoon.
`
`15 Just a couple preliminary things I'm working on
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`16 here marking some exhibits. I'm going to mark for
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`17 the record as Exhibit 1 the declaration of Daryl
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`18 Soderman dated the 15th July 2016.
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`19 (Respondent's Exhibit No. 1 was
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`20 marked for identification.)
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`21 MR. HAYES: Just so the record is clear I'm
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`22 going to separately mark as exhibits the two
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`23 documents that you attached as Exhibit 1 to your
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`24 declaration and so for the record Exhibit 2 is
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`25 going to be the Silescent S100 LP2 installation
`
`4
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`PATENT OWNER EXHIBIT 2004
`Page 4
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`DARYL SODERMAN
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` 1 instructions.
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` 2 (Respondent's Exhibit No. 2 was
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` 3 marked for identification.)
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` 4 MR. HAYES: Then as Exhibit 3 I'm going to
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` 5 mark the Silescent SL100 LP2 I think you referred
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` 6 to it as the product sheet.
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` 7 (Respondent's Exhibit No. 3 was
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` 8 marked for identification.)
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` 9 MS. HARTMAN: Just before you begin your
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`10 questioning Mr. Hayes and for the record I just
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`11 wanted to note that we provided Mr. Hayes today
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`12 copy of a Silescent invoice dated July 24th 2009
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`13 for a sale of an LP2 product which Mr. Soderman
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`14 provided to us during the preparation for his
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`15 deposition.
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`16 MR. HAYES: Thank you. Mark as Exhibit 4 --
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`17 let's just start there.
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`18 BY MR. HAYES:
`
`19 Q. So Mr. Soderman, good afternoon.
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`20 A. Good afternoon.
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`21 Q. Is there any reason, medication, illness or
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`22 otherwise that you can't answer my questions fully and
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`23 truthfully today?
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`24 A. No.
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`25 Q. Have you been deposed before?
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`5
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`PATENT OWNER EXHIBIT 2004
`Page 5
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`DARYL SODERMAN
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` 1 A. No, I have not.
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` 2 Q. So I'm going to ask questions. You're going
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` 3 to answer them. From time to time -- are you being
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` 4 represented by counsel here today?
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` 5 A. I am.
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` 6 Q. Who is that?
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` 7 A. Stacie.
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` 8 Q. When did Stacie start representing you
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` 9 generally?
`
`10 A. Generally mid December.
`
`11 Q. So from time to time your counsel may object
`
`12 to questions but unless she specifically instructs you
`
`13 not to answer my question you're to answer my question
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`14 to the best of your ability. Do you understand that?
`
`15 A. Yes.
`
`16 Q. So you submitted a declaration. That's
`
`17 Exhibit 1. Let's start there. You originally submitted
`
`18 this declaration in the Generation Brands V. Lighting
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`19 Science Group Corp IPR; is that right?
`
`20 A. Yes.
`
`21 Q. How did you come to be involved with
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`22 Generation Brands?
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`23 A. I was contacted by their counsel explaining to
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`24 me about his involvement in the activities that his
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`25 client was undergoing and through a few discussions that
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`6
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`PATENT OWNER EXHIBIT 2004
`Page 6
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`DARYL SODERMAN
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` 1 ended with this.
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` 2 Q. Did Generation Brand or anyone else pay you to
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` 3 put this declaration together?
`
` 4 A. No, sir.
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` 5 Q. Have you been paid any money for your time or
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` 6 in any way for any of the things you've done relating to
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` 7 the Generation Brands or the TCP case?
`
` 8 A. No.
`
` 9 Q. Your declaration here says you're the
`
`10 co-founder and founder of the Silescent Corporation.
`
`11 Did I pronounce that correctly?
`
`12 A. Silescent, yes.
`
`13 Q. Who is your co-founder?
`
`14 A. Co-founder is Dale Stepps.
`
`15 Q. So the two of you and Mr. Dale Stepps founded
`
`16 Silescent?
`
`17 A. Yes.
`
`18 Q. When?
`
`19 A. It was originally -- the company was renamed
`
`20 in 2007. It was originally founded in 2002.
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`21 Q. What was the original name?
`
`22 A. Inteltech.
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`23 Q. Inteltech. In 2007 Inteltech just kind of
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`24 corporate name changed from Inteltech to Silescent?
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`25 A. Correct, I don't remember the exact date but
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`7
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`PATENT OWNER EXHIBIT 2004
`Page 7
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`DARYL SODERMAN
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` 1 it was that period.
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` 2 Q. What was the business of Inteltech?
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` 3 A. Same as Silescent, lighting. Lighting, design
`
` 4 and development. Largely development at the time.
`
` 5 Research.
`
` 6 Q. So is it fair to say that since the founding
`
` 7 of Inteltech until today which you now have the name
`
` 8 Silescent the business of Inteltech and then Silescent
`
` 9 was lighting, design and development?
`
`10 A. LED lighting, design and development, yes.
`
`11 Q. Does Silescent currently offer any commercial
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`12 products?
`
`13 A. Yes, we do.
`
`14 Q. How many?
`
`15 A. It's a platform consisting of many SKUs but in
`
`16 the general sense down lighting and high bay lighting.
`
`17 Q. Have any of Inteltech or Silescent's LED lamp
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`18 or lighting products ever been accused of infringing a
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`19 patent?
`
`20 A. No.
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`21 MS. HARTMAN: Objection, relevance.
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`22 BY MR. HAYES:
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`23 Q. Has Inteltech or Silescent ever been involved
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`24 in patent litigation?
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`25 MS. HARTMAN: Objection, relevance.
`
`8
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`PATENT OWNER EXHIBIT 2004
`Page 8
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`DARYL SODERMAN
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` 1 THE WITNESS: No.
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` 2 BY MR. HAYES:
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` 3 Q. Does Inteltech and/or Silescent have -- you
`
` 4 have a number of patents; right?
`
` 5 A. Yes.
`
` 6 Q. Does Silescent have patent counsel?
`
` 7 MS. HARTMAN: Objection, relevance.
`
` 8 MR. HAYES: You can answer that yes or no.
`
` 9 THE WITNESS: Yes.
`
`10 BY MR. HAYES:
`
`11 Q. Since the beginning has Inteltech or Silescent
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`12 always had patent counsel?
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`13 MS. HARTMAN: Objection, relevance.
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`14 THE WITNESS: For the most part.
`
`15 BY MR. HAYES:
`
`16 Q. So back to your declaration here you say in
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`17 paragraph one that Silescent is a Florida based lighting
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`18 company that designs, manufacturers and sells lighting
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`19 fixtures including low profile luminaires. What's a low
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`20 profile luminaire?
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`21 A. Minimal dimensional thickness.
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`22 Q. What do you mean by minimal dimensional
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`23 thickness?
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`24 A. Primarily the distance behind the ceiling
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`25 plane to the back of the fixture.
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`PATENT OWNER EXHIBIT 2004
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`DARYL SODERMAN
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` 1 Q. So low profile is minimal dimensional
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` 2 thickness of the distance behind the ceiling plane to
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` 3 the back of the fixture?
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` 4 A. Yes.
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` 5 Q. When you say minimal dimensions is there an
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` 6 absolute number quarter inch, half inch, two inches that
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` 7 is in the ballpark of minimal dimensional thickness?
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` 8 MS. HARTMAN: Objection, form.
`
` 9 THE WITNESS: No.
`
`10 BY MR. HAYES:
`
`11 Q. Four inches behind the -- a distance from
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`12 the -- behind the ceiling plane to the back of the
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`13 fixture of four inches would that be considered, in your
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`14 opinion, a low profile luminaire?
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`15 MS. HARTMAN: Objection, form.
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`16 THE WITNESS: I wouldn't -- I wouldn't look at
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`17 that as low profile.
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`18 BY MR. HAYES:
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`19 Q. How about three inches?
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`20 A. I wouldn't look at that as low profile.
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`21 Q. How about two inches?
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`22 A. I wouldn't look at that as low profile.
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`23 Q. One inch?
`
`24 A. Yes.
`
`25 Q. As the founder of Silescent Corporation
`
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`PATENT OWNER EXHIBIT 2004
`Page 10
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`DARYL SODERMAN
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` 1 Inteltech back in 2002 has your work for the most part
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` 2 for the past 15 years or more been in the design,
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` 3 development of LED lighting?
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` 4 A. Yes.
`
` 5 Q. Any other work or business that you do?
`
` 6 A. Yes.
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` 7 Q. What is that?
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` 8 A. In the general sense product development.
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` 9 Q. For the past 15 years what percentage of your
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`10 work time or work life has been on developing, designing
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`11 LED lights or luminaires?
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`12 A. More than half.
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`13 Q. This term you used low profile luminaire, does
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`14 that have a well understood meaning to someone like you
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`15 that designs LED lamps?
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`16 MS. HARTMAN: Objection, form.
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`17 THE WITNESS: I can't state to the industry
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`18 understanding of the term or expression.
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`19 BY MR. HAYES:
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`20 Q. If you were talking to someone else in the
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`21 industry and you used the term low profile luminaire
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`22 would they have a general understanding of what you're
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`23 talking about?
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`24 MS. HARTMAN: Objection, speculation.
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`25 THE WITNESS: Again I don't -- I couldn't say
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`11
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`PATENT OWNER EXHIBIT 2004
`Page 11
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`DARYL SODERMAN
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` 1 whether they would or wouldn't necessarily.
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` 2 BY MR. HAYES:
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` 3 Q. Platform of many SKUs of products that
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` 4 Silescent offers is it more than 20?
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` 5 A. In terms of SKUs?
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` 6 Q. Yes.
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` 7 A. Yes.
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` 8 Q. More than 40?
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` 9 A. Yes.
`
`10 Q. Now, difference between SKUs can be different
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`11 versions of the same product; is that fair? Trying to
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`12 get a sense of how many products like Silescent's
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`13 product line, is it 15 LED lamps or luminaires or is it
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`14 100?
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`15 A. I don't know how to qualify the response in
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`16 that there are a number of attributes and options and
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`17 features that build out that product line.
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`18 Q. Is your product line -- sorry, is Silescent
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`19 Corporation's product line available online?
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`20 A. Yes. I'm sorry, can you clarify the question?
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`21 Q. Like if I wanted to determine or look at
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`22 Silescent's product offerings could I find that --
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`23 A. Could you view it online?
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`24 Q. Could I view that on your Web site?
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`25 MS. HARTMAN: I want to note Mr. Soderman you
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`12
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`PATENT OWNER EXHIBIT 2004
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`DARYL SODERMAN
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` 1 have to weight for Mr. Hayes to finish his question
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` 2 fully before you start answering otherwise the
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` 3 court reporter is going to have to transcribe two
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` 4 people speaking at the same time. Make sure
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` 5 Mr. Hayes is done before you begin your answer.
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` 6 THE WITNESS: Understood and noted. Yes.
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` 7 BY MR. HAYES:
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` 8 Q. That's at Silescent.com or where would I find
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` 9 that?
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`10 A. Yes.
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`11 Q. Turning to paragraph three of your declaration
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`12 you talk about attached as Exhibit 1 is a true and
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`13 accurate copy of the Silescent SL100 LP2 product sheet
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`14 and installation guide. Both are made available to the
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`15 public at least as early as June 2009.
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`16 So to keep -- to make things a little bit
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`17 easier for today I individually identified the
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`18 installation guide as Exhibit 2 and the I think what you
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`19 referred to as the product sheet as Exhibit 3. Do you
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`20 see that?
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`21 A. Yes.
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`22 Q. Is Exhibit 2 and Exhibit 3, installation guide
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`23 and product sheet, separate documents at Silescent?
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`24 A. Yes.
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`25 Q. You state here in your declaration that both
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`13
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`PATENT OWNER EXHIBIT 2004
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`DARYL SODERMAN
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` 1 of these were made available to the public at least as
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` 2 early as June 2009. What's that statement based on?
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` 3 A. The date of the installation instruction and
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` 4 the -- and our practice was to typically on the
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` 5 specification sheet, product spec sheet done prior to
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` 6 the installation instructions.
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` 7 Q. So Exhibit 2 the installation I think you
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` 8 referred to it as installation guide. What do we want
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` 9 to refer so we're on the same page what terminology
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`10 Exhibit 2?
`
`11 A. Installation instructions.
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`12 Q. Installation instructions.
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`13 A. Same.
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`14 Q. Exhibit 3 I think you referred to that in your
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`15 declaration as product sheet. Could we use that term?
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`16 A. Yes.
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`17 Q. So the installation instruction Exhibit 2 has
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`18 a date on it but the product sheet Exhibit 3 does not
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`19 have a date on it; correct?
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`20 A. Correct.
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`21 Q. And you said it was -- your practice do you
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`22 typically -- you said you typically included these with
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`23 product; is that right?
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`24 MS. HARTMAN: Object to form.
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`25 THE WITNESS: I'm sorry, can you restate the
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`14
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`PATENT OWNER EXHIBIT 2004
`Page 14
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`DARYL SODERMAN
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` 1 question?
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` 2 BY MR. HAYES:
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` 3 Q. So you said here in paragraph four of your
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` 4 declaration that you typically distributed the
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` 5 installation guide and specification sheets along with
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` 6 product or product samples; is that right?
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` 7 MS. HARTMAN: Object to -- not strictly
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` 8 reading what's in paragraph four.
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` 9 THE WITNESS: Yes, among other means.
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`10 BY MR. HAYES:
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`11 Q. So can I take it from that that -- it was not
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`12 Silescent's practice to always include the installation
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`13 instruction or product sheet with the product?
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`14 A. I'm not aware of our situation where we
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`15 wouldn't have provided.
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`16 Q. Then why did you say typically in your
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`17 declaration?
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`18 A. I can't recall as to exact derivation of the
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`19 phrase.
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`20 Q. Were you involved in drafting or writing the
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`21 installation instruction Exhibit 2?
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`22 A. I didn't draft it if that's what your question
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`23 is.
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`24 Q. Who drafted installation instruction Exhibit
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`25 2?
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`15
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`PATENT OWNER EXHIBIT 2004
`Page 15
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`DARYL SODERMAN
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` 1 A. The counsel at the time that I was speaking
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` 2 to.
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` 3 MS. HARTMAN: I think you may have misheard
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` 4 Mr. Hayes' question. I don't know if you want to
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` 5 have it read back.
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` 6 BY MR. HAYES:
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` 7 Q. My question was who drafted installation
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` 8 instruction, Exhibit 2?
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` 9 A. I'm sorry. Please re-ask the question. I'm
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`10 sorry, I thought we were talking about -- sorry. You
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`11 shifted gears.
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`12 Q. So Exhibit 2, maybe just pull out Exhibit 2,
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`13 installation instruction. Who drafted this Silescent
`
`14 SL100 LP2 installation instruction?
`
`15 A. It would have been -- it would have been a few
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`16 parties that would have had hands in this.
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`17 Q. Who are those parties that had hands in
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`18 drafting the installation instruction?
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`19 A. Mechanical engineering -- excuse me, design
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`20 engineering, myself and a graphic artist that we used at
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`21 the time.
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`22 Q. When you say design engineering is that a team
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`23 at Silescent?
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`24 A. Yes.
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`25 Q. In other words, Silescent employees?
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`16
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`PATENT OWNER EXHIBIT 2004
`Page 16
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`DARYL SODERMAN
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` 1 A. Yes.
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` 2 Q. And is it your testimony that your
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` 3 installation instruction Exhibit 2 is accurate?
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` 4 A. I don't -- it's been ten years since I've read
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` 5 that release of that version but it was reflective of
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` 6 our installation at the time.
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` 7 Q. Is it fair to say that you or someone would
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` 8 have reviewed the installation instruction to make sure
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` 9 it was accurate before it went out?
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`10 MS. HARTMAN: Object to the form.
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`11 THE WITNESS: I don't recall the exact
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`12 approvals process that it underwent but it would
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`13 have -- but I would have reviewed it at the time of
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`14 release or other.
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`15 BY MR. HAYES:
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`16 Q. I'm sure Silescent's practice to for the most
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`17 part to ensure the documentation they sent with products
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`18 was accurate and correct?
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`19 A. Yes.
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`20 Q. Kind of same line of questions with respect to
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`21 the product sheet. Who drafted the product sheet?
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`22 A. The same parties.
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`23 Q. So that would be design engineering and
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`24 Silescent, you Mr. Soderman and a graphic artist had
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`25 input?
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`PATENT OWNER EXHIBIT 2004
`Page 17
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`DARYL SODERMAN
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` 1 A. Yes.
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` 2 Q. And again was it the normal practice at
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` 3 Silescent to ensure that product sheet contained
`
` 4 accurate information before it was distributed to
`
` 5 customers?
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` 6 A. Yes. To the best of our ability at the time
`
` 7 of release.
`
` 8 Q. Paragraph three of your declaration you say
`
` 9 the last sentence says "both were made available to the
`
`10 public at least as early as June 2009." What do you
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`11 mean by "made available to the public?"
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`12 A. They would have been provided to a variety of
`
`13 different individuals in and out of the industry.
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`14 Q. Besides your testimony your recollection of
`
`15 what happened and what you say in your declaration here
`
`16 do you have any other evidence, documented evidence or
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`17 otherwise, that shows your product sheet and
`
`18 installation instruction being distributed beyond
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`19 Silescent?
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`20 A. It would have been our standard practice at
`
`21 the time that these are documents were being created
`
`22 they would be immediately being dispensed, distributed.
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`23 Q. So the installation instruction has the
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`24 June 2009 date on it. So it's your testimony that
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`25 because it has the June 2009 date on it that's also the
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`PATENT OWNER EXHIBIT 2004
`Page 18
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`DARYL SODERMAN
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` 1 time in which it would have gone out the door?
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` 2 MS. HARTMAN: Object to the form.
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` 3 THE WITNESS: Yes, to the best of my
`
` 4 recollection because of the dates and the time at
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` 5 which we operated. We also have an invoice that's
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` 6 dated July of which our product is very much or is
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` 7 a specification grade product that has very lengthy
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` 8 sales cycles and so for that development to lead to
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` 9 a sale would definitely have required many weeks of
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`10 planning, preparation and communication.
`
`11 BY MR. HAYES:
`
`12 Q. You referred to an invoice. Are those the
`
`13 invoices that I was handed when I walked in today?
`
`14 A. Yes, as an example.
`
`15 Q. So these invoices I was handed today don't
`
`16 anywhere indicate that your installation instruction or
`
`17 product sheet was included with the product being sold;
`
`18 correct?
`
`19 A. No, but what it ties to again is our standard
`
`20 practice and efforts that lead up to that not only the
`
`21 distribution of the product but also the date of sale of
`
`22 it of which would take many months in the sales cycle to
`
`23 obtain coupled with the June date and again the release
`
`24 of demos. If we provide a sample or demo it would
`
`25 always go with the specification sheet because they
`
`19
`
`PATENT OWNER EXHIBIT 2004
`Page 19
`
`
`
`DARYL SODERMAN
`
` 1 would need to know what the options and features of the
`
` 2 product were.
`
` 3 Q. Who are your customers here on these invoices
`
` 4 that received this product?
`
` 5 A. That I would say is confidential.
`
` 6 Q. So you're not going to let me contact them and
`
` 7 ask them if they received the installation guide or
`
` 8 product sheet but you testified they did?
`
` 9 A. That was an example of its distribution.
`
`10 Q. That's fine.
`
`11 MS. HARTMAN: Mr. Hayes, since you've been
`
`12 questioning Mr. Soderman about that document I
`
`13 assume you're going to mark it as an exhibit?
`
`14 MR. HAYES: Sure.
`
`15 MS. HARTMAN: Is that Exhibit 4 then?
`
`16 MR. HAYES: Yes, I'll mark it eventually here.
`
`17 It's fine. We can mark it Exhibit 4, you want them
`
`18 all Exhibit 4? I'll state for the record I was
`
`19 handed what is Exhibit 4 when I walked in today, a
`
`20 redacted invoice to which the witness is refusing
`
`21 to identify who it was sent to and it doesn't
`
`22 anywhere indicate including product sheet
`
`23 installation instructions or anything else with the
`
`24 product.
`
`25 MS. HARTMAN: Well --
`
`20
`
`PATENT OWNER EXHIBIT 2004
`Page 20
`
`
`
`DARYL SODERMAN
`
` 1 MR. HAYES: Mark that as Exhibit 4.
`
` 2 MS. HARTMAN: I'll object to the various
`
` 3 characterizations but --
`
` 4 (Respondent's Exhibit No. 4 was
`
` 5 marked for identification.)
`
` 6 BY MR. HAYES:
`
` 7 Q. Keeping with your declaration here in
`
` 8 paragraph five you include some technical description or
`
` 9 some description of the features and functionality of
`
`10 the Silescent SL100 LP2. Do you see that?
`
`11 A. Yes.
`
`12 Q. I assume there's maybe more to the Silescent
`
`13 SL100 LP2 that you include in paragraph five; is that
`
`14 right?
`
`15 MS. HARTMAN: Object to the form.
`
`16 THE WITNESS: I don't recall offhand but I'm
`
`17 sure there was.
`
`18 BY MR. HAYES:
`
`19 Q. So why did you include this particular
`
`20 description in paragraph five and not some of the other
`
`21 information that could be found on the installation
`
`22 guide and product sheet?
`
`23 A. I don't recall particulars that lead me to
`
`24 identify those specific elements.
`
`25 Q. The last sentence there in paragraph five of
`
`21
`
`PATENT OWNER EXHIBIT 2004
`Page 21
`
`
`
`DARYL SODERMAN
`
` 1 your declaration says "per the documents the power
`
` 2 conditioner fit within any UL approved junction box,
`
` 3 including a standard four inch junction box or
`
` 4 equivalent (or four inch can)." Do you see that?
`
` 5 A. Yes.
`
` 6 Q. Does the installation instruction or product
`
` 7 sheet actually identify a four inch junction box?
`
` 8 A. I don't recall exactly the language used
`
` 9 specifically within the -- within either of the two
`
`10 documents.
`
`11 Q. Does the installation instruction or product
`
`12 sheet actually identify a four inch can?
`
`13 A. Again I don't recall specifically any language
`
`14 as it relates. Would you like me to review it?
`
`15 Q. Sure. I'm trying to understand why you
`
`16 decided to include the specificity with respect to the
`
`17 size of the junction box being four inch and the size of
`
`18 the can being four inches?
`
`19 MS. HARTMAN: Object to the form and asked and
`
`20 answered.
`
`21 THE WITNESS: Yes, again I don't remember the
`
`22 specifics as to why I would identify some of those
`
`23 attributes that were part of the product.
`
`24 BY MR. HAYES:
`
`25 Q. Did the lawyers for Generation Brands ask you
`
`22
`
`PATENT OWNER EXHIBIT 2004
`Page 22
`
`
`
`DARYL SODERMAN
`
` 1 to include the detail you included in paragraph five?
`
` 2 A. I don't recall if they asked me specifically.
`
` 3 Q. When you were working with the Generation
`
` 4 Brands folks were you represented by counsel at the
`
` 5 time? I want to make sure I don't ask any questions
`
` 6 that might be subject to some type of attorney-client
`
` 7 communication.
`
` 8 A. Through my counsel. I don't -- yes, I don't
`
` 9 know how to necessarily respond to the question.
`
`10 Q. So when you say your counsel like Silescent's
`
`11 counsel was giving you guidance with respect to drafting
`
`12 this declaration or Generation Brands' counsel or were
`
`13 they the same?
`
`14 A. Generation --
`
`15 MS. HARTMAN: Mr. Hayes?
`
`16 THE WITNESS: I don't know how to answer that.
`
`17 MS. HARTMAN: Why don't we just take 60
`
`18 seconds and maybe I can help Mr. Soderman answer
`
`19 your question.
`
`20 MR. HAYES: If you want to step outside that's
`
`21 fine.
`
`22 MS. HARTMAN: I think if you're going to be
`
`23 asking questions about his being represented by
`
`24 counsel it's difficult for him to maybe navigate
`
`25 that. If you need the information.
`
`23
`
`PATENT OWNER EXHIBIT 2004
`Page 23
`
`
`
`DARYL SODERMAN
`
` 1 MR. HAYES: This is awkward, this declaration
`
` 2 was prepared long before you were involved I think.
`
` 3 It's the Generation Brands' case declaration so I'm
`
` 4 going to ask questions about when it was prepared.
`
` 5 I just don't want to be breaching some type of -- I
`
` 6 have no idea if he was represented back then or
`
` 7 not. Maybe you represented him back then. I would
`
` 8 assume if you did you would tell me.
`
` 9 MS. HARTMAN: We appreciate that. Why don't I
`
`10 take a short break so I can understand the issue
`
`11 and then we'll come back and answer your question.
`
`12 MR. HAYES: Okay.
`
`13 (Thereupon, a brief recess was taken.)
`
`14 MS. HARTMAN: Why don't I explain it for ease
`
`15 of reference and if it's an issue you can let us
`
`16 know. Mr. Soderman was not represented by
`
`17 Generation Brands' counsel nor by me or Schiff
`
`18 Hardin at the time of his declaration. I don't
`
`19 know if you need more than that but I understood
`
`20 that to be the scope of your question; is that
`
`21 correct?
`
`22 MR. HAYES: Yes. So I don't want to ask
`
`23 questions that breach any type of attorney-client
`
`24 privilege.
`
`25 MS. HARTMAN: Understood.
`
`24
`
`PATENT OWNER EXHIBIT 2004
`Page 24
`
`
`
`DARYL SODERMAN
`
` 1 MR. HAYES: So I'm going to ask questions. If
`
` 2 you think -- I don't think they're going to get
`
` 3 into attorney-client communications but if they do
`
` 4 someone has to let me know.
`
` 5 MS. HARTMAN: I will do that. What I'm trying
`
` 6 to convey to you is that I think it's fair and not
`
` 7 invasive of the attorney-client privilege for you
`
` 8 to ask him questions about communications with
`
` 9 Generation Brands counsel.
`
`10 MR. HAYES: Fair enough.
`
`11 MS. HARTMAN: If you need to be asking other
`
`12 questions about other conversations then we may
`
`13 have an issue but I'm trying to give you the lane
`
`14 that I think is fair.
`
`15 BY MR. HAYES:
`
`16 Q. So with respect to this -- I was kind of
`
`17 asking you about the substance of paragraph five of your
`
`18 declaration, your description of some of the technical
`
`19 features of the Silescent SL100 LP2. In that context
`
`20 did you draft or prepare the language of paragraph five
`
`21 of your declaration?
`
`22 A. As I recall it was through a question and
`
`23 answer session.
`
`24 Q. With Generation Brand folks?
`
`25 A. Yes, sir.
`
`25
`
`PATENT OWNER EXHIBIT 2004
`Page 25
`
`
`
`DARYL SODERMAN
`
` 1 Q. Generally with respect to the information you
`
` 2 decided to include in your declaration, Exhibit 1, did
`
` 3 you kind of come up with the subject matter of these six
`
` 4 paragraphs or was that also through discussion or
`
` 5 questions with the Generation Brands folks?
`
` 6 A. Correct. It was through discussions and Q and
`
` 7 A with the representation.
`
` 8 Q. So let's move on to paragraph six. You state
`
` 9 there in paragraph six of your declaration "I am a joint
`
`10 inventor of U.S. patent number 7980736 filed
`
`11 November 13th 2007 and issued July 19th 2011" which you
`
`12 then refer to as the 736 patent. The Silescent SL100
`
`13 LP2 is a commercial embodiment of the '736 patent." So
`
`14 are you a named inventor on at least as a joint inventor
`
`15 on all Silescent's patents that cover this Silescent
`
`16 SL100 LP2?
`
`17 A. I don't recall and doubtful that I would be on
`
`18 all.
`
`19 Q. Okay. Do you know who all the inventors would
`
`20 be of the Silescent SL100 LP2?
`
`21 MS. HARTMAN: Objection, form.
`
`22 THE WITNESS: You're speaking all patents or
`
`23 the 736 as the paragraph implies?
`
`24 BY MR. HAYES:
`
`25 Q. So we can start -- I have a copy of the 736
`
`26
`
`PATENT OWNER EXHIBIT 2004
`Page 26
`
`
`
`DARYL SODERMAN
`
` 1 patent here in front of me and it lists you, Mr. Daryl
`
` 2 Soderman and Mr. Dale B. Stepps as inventors?
`
` 3 A. Yes, sir.
`
` 4 Q. So at least with respect to the 736 patent
`
` 5 that's related to this and it's your testimony here that
`
` 6 the Silescent SL100 LP2 is a commercial embodiment of
`
` 7 the 736 patent; is that right?
`
` 8 A. Yes.
`
` 9 Q. So at least with respect to the 736 patent you
`
`10 and Mr. Dale B. Stepps are the listed inventors; is that
`
`11 ri
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