· · · · · UNITES STATES PATENT AND TRADEMARK OFFICE
`· · · · · · _____________________________________
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`· · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`· · · · · · · ·________________________________
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`· · · · · · · · · · · · ·APPLE INC.,
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`· · · · · · · · · · · · ·Petitioner,
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`· · · · · · · · · · · · · · ·vs.
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`· · · · · · · ·UNIVERSAL SECURE REGISTRY, LLC,
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`· · · · · · · · · · · · Patent Owner.
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`· · · · · · ·___________________________________
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`· · · · · · · · · · · Case IPR2018-00812
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`· · · · · · · · · U.S. Patent No. 8,856,539
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`· · · · · · · ·DEPOSITION OF VICTOR SHOUP, Ph.D.
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`· · · · · · · · · · ·New York, New York
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`· · · · · · · · · Monday, February 11, 2019
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`· · ·Reported By:
`· · ·MICHELLE COX
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`· · ·Job No.: 35044
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`USR Exhibit 2111, page 1
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`·1· ·A P P E A R A N C E S:
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`·3· · · · · · ·WILMER CUTLER PICKERING HALE and DORR LLP
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`·4· · · · · · · · · · · · · · February 11, 2019
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`·4· · · · · · ·Attorneys for Plaintiff Petitioner
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`·5· · · · · · · · · · · · · · 10:57 a.m.
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`·5· · · · · · · · · · 950 Page Mill Road
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`·6· · · · · · · · · · Palo Alto, California 94304
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`·7· · · · Deposition of VICTOR SHOUP, Ph.D., held at
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`·7· · · · · · ·BY:· · MARK D. SELWYN, ESQ.
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`·8· ·the offices of Wilmer Cutler Pickering Hale and
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`·8· · · · · · · · · · MONICA GREWAL, ESQ.
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`·9· ·Dorr LLP, 250 Greenwich Street, New York, New
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`10· ·York, pursuant to Notice, before Michelle Cox,
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`10· · · · · · ·QUINN EMANUEL URQUHART & SULLIVAN LLP
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`11· ·a Certified LiveNote Reporter and Notary Public
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`11· · · · · · ·Attorneys for Patent Owner
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`12· ·of the State of New York and New Jersey.
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`12· · · · · · · · · · 865 S. Figueroa Street, 10 Floor
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`·1· · · · IT IS HEREBY STIPULATED AND AGREED by and
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`·2· ·between the attorneys for the respective
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`·3· ·parties herein, that filing and sealing be and
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`·4· ·the same are hereby waived.
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`·5· · · · IT IS FURTHER STIPULATED AND AGREED that
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`·6· ·all objections, except as to the form of the
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`·7· ·question, shall be reserved to the time of the
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`·8· ·trial.
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`·9· · · · IT IS FURTHER STIPULATED AND AGREED that
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`10· ·the within deposition may be sworn to and
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`11· ·signed before any officer authorized to
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`12· ·administer an oath, with the same force and
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`13· ·effect as if signed and sworn to before the
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`14· ·Court.
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`13· · · · · · · · · · Los Angeles, California 90017
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`14· · · · · · ·BY:· · NIMA HEFAZI, ESQ.
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`·1· ·V I C T O R· S H O U P, called as a witness, having
`·2· · · · been duly sworn by a Notary Public, was
`·3· · · · examined and testified as follows:
`·4· ·EXAMINATION BY
`·5· ·MR. HEFAZI:
`·6· · · · Q· · Good morning, Dr. Shoup.
`·7· · · · · · ·So Dr. Shoup, I understand you've been
`·8· · · · deposed before, most recently in another matter
`·9· · · · between Apple and Universal Secure Registry; is
`10· · · · that correct?
`11· · · · A· · That's correct.
`12· · · · Q· · And have you been deposed in any other
`13· · · · matters?
`14· · · · A· · No, I have not.
`15· · · · Q· · Okay.· What did you do to prepare for
`16· · · · today's deposition?
`17· · · · A· · You mean, specifically, aside from writing
`18· · · · my declarations and such?
`19· · · · Q· · Correct.
`20· · · · A· · I met with Apple counsel couple of times
`21· · · · in the last week, just to review things. I
`22· · · · also, on my own, reviewed my declaration -- my
`23· · · · declarations, plural, and various prior art
`24· · · · references and the USR patents themselves.
`25· · · · Q· · Okay.· And you mentioned the declarations,
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`USR Exhibit 2111, page 2
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`·1· ·you reviewed those.
`·2· · · · And did you see anything that you thought
`·3· ·was incorrect or inaccurate?
`·4· ·A· · No.
`·5· ·Q· · And you understand the opinions in your
`·6· ·declaration?
`·7· ·A· · Absolutely.· They are my opinions.
`·8· ·Q· · And you stand by those opinions?
`·9· ·A· · Absolutely.
`10· ·Q· · And you understand, I guess, the prior
`11· ·art?
`12· · · · MR. SELWYN:· Objection; form.
`13· ·A· · I -- I've read and reviewed and understand
`14· ·the prior art references that are mentioned in
`15· ·my declaration.
`16· ·Q· · Okay.· And you also understand the USR
`17· ·patents at issue in these proceedings?
`18· ·A· · I've read and reviewed the USR patents,
`19· ·and feel competent in my understanding of them.
`20· ·Q· · Okay.· And you mentioned that you had met
`21· ·with Apple counsel a couple of times.
`22· · · · Is that Mr. Selwyn and Ms. Grewal?
`23· ·A· · Yes.· And also Kelvin Chan and
`24· ·Derek Gosma.
`25· ·Q· · Okay.· Did you meet with anyone that was
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`·1· ·A· · Deposition?
`·2· · · · I don't believe so.
`·3· ·Q· · Did you review your deposition transcript
`·4· ·from the prior deposition?
`·5· ·A· · Yes, I did.
`·6· ·Q· · And did you see anything inaccurate in
`·7· ·that deposition transcript?
`·8· ·A· · There were a couple of typos there that
`·9· ·I -- I did submit a, what's it called, an
`10· ·errata, a couple of typos.
`11· ·Q· · Okay.· And other than --
`12· ·A· · Yes, if you don't mind, there's one point
`13· ·in which I felt kind of silly about.· I did --
`14· ·there was a question regarding my interaction
`15· ·with any referral -- expert witness referral
`16· ·services, and I mentioned one.· But there
`17· ·actually are a couple of others that I just
`18· ·honestly wasn't thinking about them at the
`19· ·time, and so I didn't mention them.· I can tell
`20· ·them to you now, I guess.
`21· ·Q· · Sure.
`22· · · · I think the one you mentioned was with
`23· ·Avi Rubin, Harbor Labs?
`24· ·A· · That's correct.· I couldn't remember the
`25· ·names at the time, but it was Avi Rubin's
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`·1· ·not an attorney?
`·2· ·A· · No, I did not.
`·3· ·Q· · And you mentioned that you started
`·4· ·preparing or meeting with the attorneys a
`·5· ·couple of weeks ago.
`·6· · · · When was -- strike that.
`·7· · · · When did you start preparing for your
`·8· ·deposition?
`·9· ·A· · For this particular deposition?
`10· ·Q· · Correct.
`11· ·A· · I don't know that I know the exact date.
`12· ·Sometime after my last deposition.
`13· ·Q· · Okay.· I guess, approximately, how many
`14· ·hours would you say you spent reviewing these
`15· ·materials and preparing for this deposition?
`16· ·A· · Maybe 30 to 40 hours.
`17· ·Q· · And other than your declarations, the
`18· ·prior art cited in the declarations and the USR
`19· ·patents, are there any other documents that you
`20· ·reviewed in preparing for your deposition
`21· ·today?
`22· ·A· · Well, I reviewed other documents in
`23· ·preparing my declaration, but --
`24· ·Q· · My question is focused just on your
`25· ·deposition.
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`Page 9
`·1· ·company.· And the two others are, I did review
`·2· ·that since that time to make sure I got the
`·3· ·names right, GLG Group and ForensisGroup.
`·4· ·Q· · Okay.· But other than your testimony in
`·5· ·your prior deposition, you haven't submitted
`·6· ·any other testimony in the form of a deposition
`·7· ·or declaration or --
`·8· ·A· · Regarding these proceedings?
`·9· ·Q· · Just generally.
`10· ·A· · No.
`11· · · · MR. HEFAZI:· Let me mark as Exhibit 1.
`12· · · · Counsel, I have two copies of this
`13· ·somewhere.· I might not have two copies of
`14· ·each.
`15· · · · (Deposition Exhibit 1, United States
`16· ·Patent No. 8,856,539, marked for identification
`17· ·as of this date.)
`18· ·Q· · So this is Exhibit 1, U.S. Patent
`19· ·No. 8,856,539.
`20· · · · (Discussion off the record.)
`21· ·Q· · Okay.· So this is Shoup Exhibit 1, U.S.
`22· ·Patent No. 8,856,539.
`23· · · · And you've seen this document before?
`24· ·A· · Yes, I have.
`25· ·Q· · And I'm going to call this the '539 Patent
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`USR Exhibit 2111, page 3
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`·1· ·you'll understand that I'm referring to this
`·2· ·exhibit here, correct?
`·3· ·A· · Yes.
`·4· ·Q· · And you've read all of the '539 Patent,
`·5· ·correct?
`·6· ·A· · Yes, I have.
`·7· ·Q· · And when was the last time you read the
`·8· ·'539 Patent?
`·9· ·A· · You mean when is the last time I read it
`10· ·from front to back?
`11· ·Q· · Let's start there.
`12· ·A· · That might have been a while.· I mean,
`13· ·certainly during the preparation of my
`14· ·declaration, I read through it several times.
`15· ·I don't know that during my preparation for
`16· ·this deposition, I may have focused more on the
`17· ·claims and relevant portions of the
`18· ·specification as they pertained to the claims.
`19· ·Q· · Okay.· But you did review this patent as
`20· ·part of your -- preparing form your deposition?
`21· ·A· · Yes.· As I said, mainly focusing on the
`22· ·claims themselves, and then the relevant parts
`23· ·of the specification.
`24· ·Q· · Okay.· And you understand the claims of
`25· ·this patent?
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`·1· · · · And I only have one copy of this.
`·2· · · · (Deposition Exhibit 2, United States
`·3· ·Patent No. 5,930,767, marked for identification
`·4· ·as of this date.)
`·5· ·A· · And if you don't mind, can we just call
`·6· ·this Reber.
`·7· ·Q· · Certainly.
`·8· ·A· · Verbally.
`·9· ·Q· · Okay.· And the Reber patent, this is one
`10· ·of the references you're relying on in
`11· ·challenge the '539 Patent, right?
`12· ·A· · Yes.
`13· ·Q· · Okay.· And you've read all of the Reber?
`14· ·A· · Oh, yes.
`15· ·Q· · And when was the last time you reviewed
`16· ·Reber?
`17· ·A· · Saturday.
`18· ·Q· · And how long did you spend reviewing
`19· ·Reber?
`20· ·A· · On Saturday, four hours.
`21· ·Q· · And how long, in the total course, both in
`22· ·preparing your declaration and preparing for
`23· ·this deposition, have you spent reviewing
`24· ·Reber?
`25· ·A· · I can't give a specific number to that.
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`·1· ·A· · Yes.
`·2· ·Q· · Okay.· And how long would you say you
`·3· ·spent looking and reviewing this '539 Patent
`·4· ·during your preparation for your deposition
`·5· ·today?
`·6· ·A· · It's hard to attach a particular number.
`·7· ·Q· · Just an approximate ballpark.
`·8· · · · MR. SELWYN:· Objection; form.
`·9· ·A· · Much of the time I spent reviewing this
`10· ·was in conjunction with reviewing the
`11· ·declarations that -- my declaration pertaining
`12· ·to the '539 Patent.
`13· · · · So it's hard to say how much time I spent
`14· ·on each one of those.
`15· ·Q· · Okay.· In combination, reviewing the
`16· ·declaration and the '539 Patent, how many hours
`17· ·would you say you spent?
`18· ·A· · Well, I said I spent 20 to 30 hours in
`19· ·total.· So let's say, 15.
`20· ·Q· · Okay.
`21· ·A· · Ten to 15.· And that's a "ballpark
`22· ·estimate," as you call it.
`23· · · · MR. HEFAZI:· Let me now mark as Shoup
`24· ·Exhibit 2, U.S. Patent No. 5,930,767 to
`25· ·Williams Louis Reber et al.
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`·1· ·Q· · Would it have been more or less than ten
`·2· ·hours?
`·3· ·A· · Let's say more than ten.
`·4· ·Q· · More than 20 hours?
`·5· ·A· · I'm not sure.
`·6· ·Q· · You've reviewed it sufficiently, such that
`·7· ·you believe you understand Reber, correct?
`·8· ·A· · I have a good understanding of Reber.
`·9· ·Q· · Okay.· Let's turn to Figure 1 of Reber.
`10· · · · Okay.· And Figure 1 is a block diagram of
`11· ·Reber's transaction system, right?
`12· ·A· · That's correct.
`13· ·Q· · And in Figure 1, there is an End User, 26.
`14· · · · Do you see that?
`15· ·A· · Yes, I do.
`16· ·Q· · And there's a dashed box around a number
`17· ·of the items in Figure 1.
`18· · · · Does that represent the end user's
`19· ·location?
`20· ·A· · Yeah.· The last time I remember reviewing
`21· ·this and reading through references to End User
`22· ·Location 24, and I -- to be honest, I don't
`23· ·know if it's a bug in the diagram.· But I
`24· ·couldn't find anything labeled 24.
`25· ·Q· · Okay.· But as a person of skill in the
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`USR Exhibit 2111, page 4
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`·1· ·art, do you understand Figure 1, that the
`·2· ·dashed box surrounding certain elements in
`·3· ·there, to represent the user location?
`·4· · · · MR. SELWYN:· Objection; form.
`·5· ·A· · Since it wasn't specified in the diagram,
`·6· ·I haven't really -- I don't have an opinion on
`·7· ·what the dashed box represents.
`·8· · · · I just certainly can -- took the words
`·9· ·"user location" in the specification to mean
`10· ·what they ordinarily mean.
`11· ·Q· · So I guess you don't have an opinion as to
`12· ·whether the dashed box surrounding certain
`13· ·items in Figure 1 is the user location?
`14· · · · MR. SELWYN:· Objection; form.
`15· ·A· · Since the dashed box isn't labeled, and
`16· ·since I did not, to the best of my knowledge, I
`17· ·don't remember reading a description, like, the
`18· ·dashed box in Figure 1 represents such and
`19· ·such, I don't really have an opinion.
`20· ·Q· · Okay.· So it's your opinion that one
`21· ·skilled in the art, looking at Figure 1 in the
`22· ·Reber specification, would be unable to
`23· ·determine whether or not the dashed box
`24· ·represents user location?
`25· · · · MR. SELWYN:· Objection; form.
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`·1· ·Figure 8 in conjunction with the discussion of
`·2· ·Figure 8 of Column 10 of Reber at Line 9, where
`·3· ·it says, "Figure 8 is an illustration of an
`·4· ·example of the data reader 30 and the network
`·5· ·access apparatus 32 at the user location."
`·6· · · · So that is consistent with the assertion
`·7· ·that that's at the user location.
`·8· · · · And then it continues to say, "In this
`·9· ·example, the network apparatus 32 comprises of
`10· ·a personal computer 140," which you can see
`11· ·labeled in Figure 8.
`12· ·Q· · There's also a data reader in Figure 1
`13· ·labeled 30.
`14· · · · And I guess that also appears in Figure 8
`15· ·as item 30?
`16· ·A· · That's correct.
`17· ·Q· · And that would also be at user location,
`18· ·at the end user's location?
`19· ·A· · In some embodiments, yes.
`20· ·Q· · Does Reber disclose any embodiments where
`21· ·it's not at the user location?
`22· ·A· · Yes.
`23· ·Q· · Can you show me where that is?
`24· ·A· · So, for example, as Reber discloses, the
`25· ·second data -- so I'm looking at Column 4,
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`·1· ·A· · All I can say is my first impression is,
`·2· ·that may be reasonable, but I withhold an
`·3· ·opinion.
`·4· ·Q· · Okay.· Okay.· So within the dashed box,
`·5· ·there's a box labeled 34.
`·6· · · · That's the display device, correct?
`·7· ·A· · Box labeled 34.· That's correct.
`·8· ·Q· · And that would be, like, a computer
`·9· ·monitor; is that right?
`10· ·A· · Let's -- well, for example, in Figure 8 of
`11· ·the Reber patent, 34 is identified as -- that
`12· ·embodiment is identified as a computer monitor.
`13· ·Q· · Okay.· And that computer monitor would be
`14· ·at the end user's location?
`15· ·A· · That seems reasonable, yes.
`16· ·Q· · And at the -- Box 32, there's a network
`17· ·access apparatus that connects to the
`18· ·electronic network.
`19· · · · Do you see that?
`20· ·A· · Yes.
`21· ·Q· · And that network access apparatus, it
`22· ·would also be reasonable to say that that's at
`23· ·the user location?
`24· ·A· · Right.
`25· · · · So I think it's helpful to look at
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`·1· ·Line 21 where it says, "Alternatively, the
`·2· ·second data element is generated within the
`·3· ·network access apparatus 32.· In this case, the
`·4· ·second data element can be prestored in the
`·5· ·network access apparatus 32, or it can be
`·6· ·generated by a code generator associated with
`·7· ·the network access apparatus 32.· Preferably,
`·8· ·the code generator generates the second data
`·9· ·element, which is a time-varying and
`10· ·nonpredictable by unauthorized parties."
`11· · · · Now, the second data element is something
`12· ·that is disclosed earlier as being something
`13· ·that can be read by the data reader.
`14· · · · Also, the other thing that can be read by
`15· ·the data reader, and we can look at references
`16· ·or citations, if you wish, is the first data
`17· ·element.
`18· · · · And later on Column 4, Line 50, it says,
`19· ·"Alternatively, the first data element is
`20· ·generated in response to a user-initiated event
`21· ·received by an input device of the network
`22· ·access apparatus 32.· In this case, the end
`23· ·user 26 can select the item and initiate a
`24· ·transaction based upon a second human-viewable
`25· ·image 62 displayed by the display device 34."
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`·1· ·Q· · So let's break that down a bit.
`·2· · · · Network access apparatus 32 is within the
`·3· ·user location, correct?
`·4· · · · I think we just testified to that?
`·5· ·A· · That sounds correct.
`·6· ·Q· · And where in this disclosure does it teach
`·7· ·that the data reader 30 is not within the user
`·8· ·location?
`·9· ·A· · Well, it's my opinion, and my
`10· ·understanding of the Reber patents, that the
`11· ·embodiment of which a data reader is present,
`12· ·is to read the first and second data elements
`13· ·required for the transaction, and that's one
`14· ·embodiment, maybe even a preferred embodiment.
`15· · · · However, the Reber patent also discloses
`16· ·in the points that I've cited at Column 4, Line
`17· ·21, and Column 4, Line 50, that there are other
`18· ·embodiments in which the first and second data
`19· ·elements are generated without the use of a --
`20· ·Q· · Okay.· So you're not saying --
`21· · · · MR. SELWYN:· I don't think he finished his
`22· ·answer.
`23· ·Q· · I'm sorry, could you --
`24· ·A· · I think I did finish.
`25· ·Q· · Okay.· So you're not saying the data
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`·1· ·alternative embodiments discussed elsewhere in
`·2· ·the Reber patent, for example, at Column 4,
`·3· ·Line 21, and Column 4, Line 50, there's
`·4· ·alternative embodiments, which do not entail a
`·5· ·data reader.
`·6· ·Q· · Okay.· But in the embodiments that are
`·7· ·shown with the data reader, the data reader is
`·8· ·at the user location, right?
`·9· · · · MR. SELWYN:· Objection; form.
`10· ·A· · All I can say is that the embodiment shown
`11· ·in Figure 1 shows a data reader.
`12· ·Q· · Okay.· And you don't see any embodiment
`13· ·that shows a data reader at a location other
`14· ·than the end user's location?
`15· · · · MR. SELWYN:· Objection; form.
`16· ·A· · Can you read the question, please.
`17· ·Q· · You don't see any embodiment that shows a
`18· ·data reader at a location other than the end
`19· ·user location?
`20· · · · MR. SELWYN:· Objection; form.
`21· ·A· · That's a question that I -- wasn't at the
`22· ·top of my -- whether or not there was a data
`23· ·reader present at any other locations, was not
`24· ·an issue that I considered in preparing my
`25· ·declaration and preparing my mappings.
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`·1· ·reader would be located somewhere else, you're
`·2· ·just saying that in certain embodiments, that
`·3· ·there might not be a data reader; is that what
`·4· ·you're --
`·5· · · · MR. SELWYN:· Objection; form.
`·6· ·A· · I think a person of ordinary skill in the
`·7· ·art would see the various embodiments presented
`·8· ·in Reber, and come to the conclusion that the
`·9· ·data reader would be used where needed, and not
`10· ·used where needed, depending on the goals and
`11· ·engineering constraints of building a
`12· ·particular embodiment.
`13· ·Q· · So I'm just talking about Reber's
`14· ·disclosures right now.· So in Figure 1, there
`15· ·is a data reader shown.
`16· · · · And I'm asking you, in the embodiment of
`17· ·Figure 1 --
`18· ·A· · Mm-hmm.
`19· ·Q· · -- is the data reader at the user's
`20· ·location?
`21· · · · MR. SELWYN:· Objection; form.
`22· ·A· · In the embodiment of Figure 1, there is a
`23· ·data reader that's present at the user
`24· ·location.
`25· · · · However, as I've already mentioned, in
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`·1· ·Q· · Okay.
`·2· ·A· · To the best of my knowledge, I don't
`·3· ·recall one.· But as I said, that wasn't a top
`·4· ·priority for me in analyzing.
`·5· ·Q· · Okay.· And you mentioned, you know, first
`·6· ·data element and the second data element, and
`·7· ·let's discuss that for a second.
`·8· · · · There is a device here labeled "device
`·9· ·40."
`10· · · · Do you see that, this is Figure 1?
`11· ·A· · Yes.
`12· ·Q· · And device 40 that's used -- well, strike
`13· ·that.
`14· · · · There's also a device in Figure 1 showing
`15· ·device 52.
`16· · · · Do you see that?
`17· ·A· · Just a moment.· Fifty-two, yes.
`18· ·Q· · Okay.· And device 40, examples of device
`19· ·40 are -- strike that.
`20· · · · Examples of the device 40 in Figure 1 are
`21· ·shown as Figures 2 through 4 of Reber; is that
`22· ·right?
`23· ·A· · Those are some examples, yes.
`24· ·Q· · Okay.· And some examples of device 52 are
`25· ·also shown in Figure 5 through 7 of Reber,
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`USR Exhibit 2111, page 6
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`Page 22
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`·1· ·correct?
`·2· ·A· · Those are some examples, yes.
`·3· ·Q· · Okay.· Now, to initiate a transaction, the
`·4· ·end user needs to generate two types of data:
`·5· ·A first data element and a second data element;
`·6· ·is that right?
`·7· ·A· · That's correct.
`·8· ·Q· · And the first and second data element are
`·9· ·generated at the user's location, right?
`10· ·A· · I believe that's correct.
`11· ·Q· · And to generate the second data element,
`12· ·the user can scan machine-readable data 36 on
`13· ·device 40; is that correct?
`14· ·A· · Repeat the question.
`15· ·Q· · So to generate the second data element,
`16· ·the user can scan the machine readable data
`17· ·labeled 36 in Figure 1 within device 40?
`18· ·A· · That's one possible embodiment.
`19· · · · As I've already mentioned at Column 4,
`20· ·Line 21, Reber says, "Alternatively, the second
`21· ·data element is generated within the network
`22· ·access apparatus 32."
`23· · · · I won't read the rest of it.
`24· ·Q· · Okay.· And so the network apparatus is
`25· ·another way, in your opinion, to generate the
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`Page 24
`·1· ·"embodiment" in a way that perhaps connotes a
`·2· ·concept that I don't quite understand; even
`·3· ·though I've been using the term here with you.
`·4· · · · As a person in technology, what I'm
`·5· ·looking for is a way to take the principles
`·6· ·annunciated in the Reber patent and apply those
`·7· ·principles in the mappings that I presented in
`·8· ·my analysis to show that those principles, and
`·9· ·a person of ordinary skill in the art would
`10· ·have applied those principles to reach the same
`11· ·claims in the '539 Patent.
`12· · · · So I'm not trying to be cagey.· I just
`13· ·want to make sure I'm not using the word
`14· ·"embodiment" in a particular way.
`15· ·Q· · Okay.· So you've used the word
`16· ·"embodiment" several times.
`17· · · · What did you mean when you said, you know,
`18· ·in some embodiments Reber does this, in some
`19· ·embodiments Reber does that?
`20· ·A· · Well, at the quotes that I gave you, like
`21· ·at Line 50 of Column 4, it says,
`22· ·"Alternatively, the first data element is
`23· ·generated in response to."
`24· · · · Reber's not saying in a different
`25· ·embodiment, right -- so -- or in one
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`·1· ·second data element, right?
`·2· ·A· · That's correct.
`·3· ·Q· · Okay.· And to generate the first data
`·4· ·element, the user can scan the machine readable
`·5· ·data 50 on device 52?
`·6· ·A· · That's one possible embodiment.
`·7· · · · As I've already mentioned, another
`·8· ·embodiment mentioned, disclosed at Column 4,
`·9· ·Line 50, is that, alternatively, the first data
`10· ·elements is generated in response to a
`11· ·user-initiated event, received by an input
`12· ·device of the network access apparatus 32."
`13· ·Q· · Okay.· You mentioned embodiment a couple
`14· ·of times.
`15· · · · So you agree that Reber discloses multiple
`16· ·different embodiments, correct?
`17· ·A· · Okay, yes.
`18· ·Q· · Do you agree there are multiple
`19· ·embodiments of Reber's transaction service
`20· ·disclosed in the Reber patent?
`21· ·A· · Yes.
`22· ·Q· · Okay.· And in your declaration, do you
`23· ·rely on one of those embodiments?
`24· · · · MR. SELWYN:· Objection; form, foundation.
`25· ·A· · As a nonlawyer, I hesitate to use the term
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`Page 25
`·1· ·embodiment, that's not what Reber is saying.
`·2· · · · So I don't know, as a nonlegal personal,
`·3· ·whether or not, when a patent reference like
`·4· ·this says in one embodiment or another
`·5· ·embodiment, that means something different to a
`·6· ·lawyer than what it means to say that just,
`·7· ·alternatively, the first data element is
`·8· ·generated, such and such.
`·9· · · · There's different implementation
`10· ·techniques that could be used.· And an engineer
`11· ·would look at these techniques and apply them.
`12· ·Q· · So is it fair to say, in performing your
`13· ·invalidity analysis, you did not consider
`14· ·whether a particular disclosure was part of one
`15· ·embodiment in Reber or a part of another
`16· ·embodiment?
`17· · · · MR. SELWYN:· Objection; form.
`18· ·A· · Again, it comes down to whether or not you
`19· ·consider alternative implementation details to
`20· ·be different embodiments or implementation
`21· ·details that could be applied to the same
`22· ·embodiment in slightly different ways.
`23· ·Q· · Okay.
`24· ·A· · I'm not sure it's a distinction with a
`25· ·difference.· As I said, I'm not a lawyer.
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`·1· ·Q· · Okay.· So in performing your invalidity
`·2· ·analysis, you were not informed as to the
`·3· ·meaning of what an embodiment is?
`·4· · · · MR. SELWYN:· Objection; form.
`·5· ·A· · I mean, certainly, the term was used in
`·6· ·discussions.· But I don't know that I saw a
`·7· ·definition written out of what an embodiment
`·8· ·is.
`·9· · · · I mean, maybe it just does have its
`10· ·ordinary meaning.· I'm not sure.· I just -- we
`11· ·used it in my discussions with the Apple legal
`12· ·team.
`13· · · · MR. SELWYN:· Don't reveal specific
`14· ·discussions.
`15· · · · THE WITNESS:· Sure.
`16· ·Q· · Please don't reveal discussions with your
`17· ·attorneys.
`18· ·A· · Sure.
`19· ·Q· · But go ahead, you were finishing your
`20· ·statement.
`21· · · · MR. SELWYN:· If to answer that, you would
`22· ·have to reveal specific discussions.
`23· · · · THE WITNESS:· I won't reveal any -- sorry.
`24· · · · I see, okay.
`25· ·A· · I don't have anything to add to that.
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`·1· ·with another embodiment?
`·2· · · · Maybe we can kind of make this more
`·3· ·general, and more simple.
`·4· · · · So if a patent discloses a first
`·5· ·embodiment and a second embodiment --
`·6· ·A· · Mm-hmm.
`·7· ·Q· · -- did you take any steps to -- let me ask
`·8· ·it this way:· What steps did you take to
`·9· ·determine whether the first embodiment should
`10· ·be modified with disclosures from the second
`11· ·embodiment?
`12· · · · MR. SELWYN:· Objection; form.
`13· ·A· · Generally speaking, I'd say that I would
`14· ·look at the different embodiments or
`15· ·implementation alternatives if they were not
`16· ·explicitly labeled as embodiments, and see if
`17· ·they seem to be -- you know, one could be a
`18· ·modular replacement for another without --
`19· ·without requiring any particularly creative
`20· ·step to do so.
`21· ·Q· · Okay.· So one thing you look for is
`22· ·whether you could combine steps from the second
`23· ·embodiment into a first embodiment and have it
`24· ·work?
`25· ·A· · I mean, when you're reading a patent
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`Page 27
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`·1· ·Q· · So what is your understanding of an
`·2· ·embodiment?
`·3· ·A· · Well, a patent presents an invention.· And
`·4· ·that invention can take various forms.· Those
`·5· ·various forms may be called "embodiments."
`·6· ·There may be different implementation details
`·7· ·that arise.· Maybe some of those implementation
`·8· ·details are different embodiments or not.
`·9· · · · So I use -- I'll just tell you the way I
`10· ·understood it in preparation of my analysis,
`11· ·was that it's just a different -- alternative
`12· ·aspects of how one might implement the
`13· ·invention.
`14· ·Q· · Okay.· So did you see alternative aspects
`15· ·in Reber -- well, strike that.
`16· · · · Using your understanding of the word
`17· ·"embodiment," did you see different embodiments
`18· ·in Reber?
`19· ·A· · Yes.
`20· · · · For example, I've already told you, I see
`21· ·embodiments that have a reader, and I see
`22· ·embodiments that don't have a reader.
`23· ·Q· · Okay.· And when you saw different
`24· ·embodiments, what steps did you take to
`25· ·determine whether one embodiment can be used
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`Page 29
`·1· ·specific, in general, you know, there are many
`·2· ·examples given within them in which, you know,
`·3· ·some minor aspects of one embodiment are
`·4· ·suggested that are, maybe, even, you know, some
`·5· ·embodiments of an embodiment, and many
`·6· ·different variations are presented.
`·7· · · · And I guess it's my understanding of the
`·8· ·type of analysis that I was to do would be, how
`·9· ·would a person of ordinary skill read this and
`10· ·see that, yes, this is -- this particular
`11· ·combination of elements was something that was
`12· ·intended and obvious.
`13· ·Q· · So other than determining that the two
`14· ·embodiments were combinable such that they
`15· ·would work, did you take any other steps to
`16· ·determine whether it would be obvious to
`17· ·combine these two different embodiments?
`18· ·A· · Well, certainly if the language of the two
`19· ·embodiments was such that there was nothing
`20· ·precluding the combination.
`21· · · · And, again, you know -- I'm not sure how
`22· ·to answer your question more specifically.
`23· ·Q· · Well, I guess I'm wondering, in your
`24· ·analysis for Reber, did you, at any
`25· ·point -- strike that.
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`·1· · · · In your analysis for Reber, do you believe
`·2· ·that you combined different embodiments?
`·3· ·A· · No.
`·4· ·Q· · Okay.· And so then it's fair to say that
`·5· ·in your analysis for Reber, you didn't provide
`·6· ·any motivation to combine embodiments?
`·7· · · · MR. SELWYN:· Objection; form.
`·8· ·A· · You know, unlike comparing two separate
`·9· ·patents and determining whether or not they can
`10· ·be combined, I think when looking at a single
`11· ·patent such as Reber, you know, there are
`12· ·various aspects in which different
`13· ·implementations are suggested.· They're not
`14· ·even described as alternative embodiments.
`15· · · · And -- and it's possible that I combined
`16· ·different implementation details that seem to
`17· ·me to not even be separate embodiments.
`18· · · · Like I said, I don't know how to really
`19· ·parse the distinction between what is -- you
`20· ·know, if you want to parse these words it is,
`21· ·you know, Figure -- Column 4, Line 50, is that
`22· ·describing a different embodiment.
`23· · · · And, again, I don't know if there's a
`24· ·legal meaning to the term that I'm not
`25· ·appreciating here.
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`Page 32
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`·1· ·whether it's implicit for that -- that
`·2· ·combination of alternative systems is really
`·3· ·implicit and inherent in the patent itself.
`·4· ·Q· · Sir, I'm just asking a very simple
`·5· ·question right now.
`·6· ·A· · Yes.
`·7· ·Q· · When you performed your invalidity
`·8· ·analysis, did you consider whether Reber
`·9· ·disclosed different embodiments, as you have
`10· ·used this term today, or did you consider Reber
`11· ·to disclose a single embodiment?
`12· · · · MR. SELWYN:· Objection.
`13· ·A· · Oh, you're asking me does Reber disclose a
`14· ·single embodiment?
`15· ·Q· · I'm asking you whether you stand by your
`16· ·testimony that you do not consider Reber to
`17· ·disclose different embodiments?
`18· · · · MR. SELWYN:· Objection.
`19· ·A· · I don't think I said that.· Maybe I did,
`20· ·and if I did, I . . .
`21· ·Q· · So I asked, in your analysis of Reber, do
`22· ·you believe that you have combined different
`23· ·embodiments, and you said no.
`24· · · · And --
`25· · · · MR. SELWYN:· Can you just ask a question,
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`·1· ·Q· · Understood.
`·2· · · · But, sir, you just testified, correct me
`·3· ·if I'm wrong, you did not consider there to be
`·4· ·different embodiments within Reber when
`·5· ·performing your invalidity analysis?
`·6· · · · MR. SELWYN:· Objection.
`·7· ·A· · That, I don't think I testified to.
`·8· · · · I said that Reber had different
`·9· ·embodiments.
`10· ·Q· · So when you asked, in your analysis for
`11· ·Reber, do you believe you combined different
`12· ·embodiments, you testified no.
`13· · · · Do you stand by that testimony?
`14· · · · MR. SELWYN:· Objection; form.
`15· ·A· · I think the issue boils down to, is there
`16· ·is a distinction between different embodiments,
`17· ·or different implementations of subsystems
`18· ·within a given embodiment.
`19· · · · And that's a little bit of a gray area
`20· ·that, I think, at that point, I just have to
`21· ·apply the understanding of what a person of
`22· ·ordinary skill in the art would consider to
`23· ·be -- when two subsystems or alternative
`24· ·subsystems can be combined or not, whether
`25· ·that's really -- requires any creative step or
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`·1· ·and let him answer the question.
`·2· ·Q· · So my question is:· Do you stand by that
`·3· ·testimony:
`·4· ·A· · Which testimony?
`·5· ·Q· · In your analysis for Reber, do you believe
`·6· ·that you have combined different embodiments?
`·7· · · · MR. SELWYN:· Objection; form.
`·8· ·A· · In my analysis of Reber, do I believe I
`·9· ·have combined different embodiments?
`10· ·Q· · Correct.
`11· ·A· · I have combined different impl