` _______________________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _______________________________________
` NICHIA CORPORATION
`
` Petitioner
` v.
` DOCUMENT SECURITY SYSTEMS INC.
` Patent owner
` ________________________________
` Case IPR2018-00966
` Patent No. 7,652,297 B2
` ________________________________
` (Caption continued to next page)
`
` EXAMINATION of JAMES R. SHEALY
` _______________________________
` TAKEN ON
` FRIDAY, JANUARY 18, 2019
`
`REPORTED BY:
`JESSIE WAACK, RDR, CRR, CCRR, CCR, NYACR, NYRCR
`JOB NO.: 225957
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`Transcript of James R. Shealy
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` _______________________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _______________________________________
` NICHIA CORPORATION AND
` EVERLIGHT ELECTRONICS CO., LTD.,
` Petitioners
`
` v.
`
` DOCUMENT SECURITY SYSTEMS INC.
` Patent owner
` ________________________________
` Case IPR2018-00965
` Patent No. 7,919,787 B2
` ________________________________
` Everlight Electronics Co., Ltd., who filed a
`petition in IPR2018-01260, has been joined as a
`petitioner in this proceeding.
`
`Deposition of JAMES R. SHEALY, held at the
`offices of:
` Shearman & Sterling LLP
` 599 Lexington Avenue
` New York, New York 10022
` Phone: 212.848.7116
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`3
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` Deposition of JAMES R. SHEALY,
`Pursuant to notice, before Jessica R. Waack,
`Registered Professional Reporter, Registered
`Merit Reporter, Registered Diplomate Reporter,
`Certified Realtime Reporter, California
`Certified Realtime Reporter, Certified Court
`Reporter in New Jersey, New York Association
`Certified Reporter, New York Realtime Court
`Reporter and Notary Public of the State of
`New York.
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`4
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` A P P E A R A N C E S
`ON BEHALF OF THE PETITIONER:
` SHEARMAN & STERLING
` BY: PATRICK R. COLSHER, ESQ.
` BY: ERIC S. LUCAS, ESQ.
` 599 Lexington Avenue
` New York, New York 10022-6069
` PHONE: 212-8484-7708
` EMAIL: Patrick.colsher@shearman.com
` EMAIL: Eric.lucas@shearman.com
`
`ON BEHALF OF THE PATENT OWNER:
` DAVIDSON BERQUIST JACKSON & GOWDEY LLP
` BY: DON JACKSON, ESQ.
` BY: JAMES T. WILSON, ESQ.
` 8300 Greensboro Drive, Suite 500
` McLean, Virginia 22102
` PHONE: 571-765-7703
` EMAIL: Djackson@dbjg.com
` EMAIL: Jwilson@dbjg.com
` --o0o--
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`5
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` INDEX TO EXAMINATION
` WITNESS: JAMES R. SHEALY
`EXAMINATION PAGE
` BY MR. JACKSON 7
`
` -o0o-
` INFORMATION REQUESTED
` None
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` WITNESS INSTRUCTED NOT TO ANSWER
` None
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` ** No exhibits were attached to transcripts **
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` INDEX TO PREVIOUSLY MARKED EXHIBITS
` WITNESS: JAMES R. SHEALY, [!VOLUME]
` Friday, January 18, 2019
`MARKED DESCRIPTION PAGE
`Exhibit 1001 U.S. Patent No. 7,919,787 135
`
`6
`
`Exhibit 1003 '297 declaration 60
`
`Exhibit 1004 U.S. Patent No. 7,939,842 47
`
`Exhibit 1006 U.S. Patent No. 7,960,819 85
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`Exhibit 1007 Weeks reference 146
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`7
`
` ******
` PROCEEDINGS
` January 18, 2019, 9:26 a.m.
` New York, New York
` ******
` J A M E S S H E A L Y
` called as a witness herein, having
`been first duly sworn on oath, was examined and
`testified as follows:
` EXAMINATION
`BY MR. JACKSON:
` Q Good morning, Dr. Shealy.
` A Good morning.
` Q We are here to talk about two
`different IPR proceedings, correct?
` A Correct.
` Q Okay. And just, for the record, the
`first one is IPR2018-00965, and that's with
`respect to the '787 patent.
` Does that sound correct to you?
` A I don't remember the IPR number, but
`yes.
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` Q Okay. Great.
` And the second proceeding is
`IPR2018-00966, and that's with respect to the
`'297 patent.
` Does that look correct?
` A That looks correct.
` Q Okay. Great.
` And did you have a chance to review
`your declaration and the materials you cited in
`that declaration prior to today's deposition?
` A Yes. But some of the materials in the
`deposition were probably reviewed -- or in the
`exhibit list of materials reviewed was probably
`three or four weeks ago.
` Q Okay. That's fine.
` Are you comfortable today testifying
`about the contents of your declaration?
` A Yes.
` Q Great.
` You're being compensated for your time
`in these matters, correct?
` A Yes.
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` Q Is your time in either matter
`contingent on the outcome of either of the
`IPRs?
` A No.
` Q Have you ever been a consultant to
`Nichia or any of its corporate subsidiaries?
` A No.
` Q Have you ever -- excuse me. You're a
`professor, correct? at Cornell?
` A That's correct.
` Q Do you do research on research grants?
` A Yes.
` Q Have -- has any of your research that
`you've conducted ever been funded in part or in
`whole by Nichia or any of its corporate
`subsidiaries?
` A No.
` Q Have you ever been an expert for
`Nichia or any of its corporate subsidiaries?
` A This is the first time I've worked for
`Nichia in this capacity.
` Q Okay. Have you worked for Nichia in
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`any other capacity?
` A No.
` Q And I'm assuming that you studied the
`'297 patent as part of the process for writing
`your declaration in that IPR, correct?
` A That's correct.
` Q And I'm also assuming that you studied
`the '787 patent as part of your declaration
`writing process for that IPR, correct?
` A That's correct.
` Q And you -- did you study the
`prosecution history of each of those two
`patents while writing your respective
`declarations?
` A Yes.
` Q Okay.
` A The prosecution history was some of
`the documents that I reviewed three or four
`weeks ago.
` Q Okay. When you reviewed -- excuse me.
`I'm sorry.
` If you need to take these one at a
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`time, I'm happy to do so. Let me just do that
`just so that we're being clear on the record.
` With respect to the '787 patent and
`the declaration that you wrote regarding that
`patent, I think you indicated that you recently
`studied that declaration; is that correct?
` A Yes.
` Q Okay. And when you reviewed that
`declaration, did you find that you left any
`opinions out of that declaration that are
`relevant to the validity of the '787 patent?
` A No.
` Q Okay. Did you find that there are
`any -- any evidentiary support for the opinions
`that you had in the declaration that you
`inadvertently omitted from that declaration?
` A No.
` Q Okay. Are you aware of any errors or
`mistakes in the declaration for the '787 patent
`that you would like to correct today?
` A There is a common set of mistakes in
`both declarations and my CV --
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`12
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` Q Okay.
` A -- that I'd like to correct.
` Q The mistakes are in your CV?
` A In the CV, yes.
` Q Okay. What are those mistakes?
` A It's in the publication list. There
`are three publications that are listed as being
`published in the "Microwave Journal."
` Q Okay.
` A The "Microwave Journal" is a trade
`magazine, and I don't publish in trade
`magazines. They were summarizing work I had
`done. And that ended up in the list as my
`assistant at Cornell, who put this list
`together -- it was a mistake, and I discovered
`that in a recent different case.
` And so I thought I should mention
`that. I'm not a coauthor on those three
`papers. They were reviewing my work.
` Q Okay. Very good. But other --
` A Aside from that, there are no other
`errors that I'm aware of.
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` Q Okay. And is -- let me ask you with
`respect to the other -- the other patent, the
`'297 patent and the declaration you did with
`respect to that patent, other than the error
`that you just described, are you aware of any
`other errors or mistakes in that declaration?
` A No.
` Q Okay. As you sit here today, are
`there any modifications to either of the two
`declarations that you would like to make?
` A No.
` Q Okay. Let me ask you about your
`declaration with respect to the '787 patent.
`How did you identify the prior art you relied
`upon in that declaration?
` A I think it's accurate to say that I
`was asked by the attorneys to do prior art
`literature searches. And as I sit here today,
`I don't really recall whether I -- which ones I
`came up with and which ones they -- they
`already had in hand.
` But I know I went through a pretty
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`14
`
`exhaustive literature search on each of these
`patents --
` Q Okay.
` A -- to identify any prior art.
` Q Okay. So I asked you specifically
`about the '787 patent. Is the same true for --
` A The same answer would be true --
` Q -- of the '297?
` A Yes.
` Q So it was a combination of you doing
`research as well as some art that the attorneys
`had?
` A That's correct.
` Q Okay. And do you recall which of the
`references that you relied on in the '787
`patent were references that you found?
` A That I just don't recall.
` Q Okay. And how about with respect to
`the '297 patent?
` A That would be the same answer.
` Q Okay. I'm going to apologize in
`advance for being somewhat redundant.
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` A Okay.
` Q But since we have the two
`proceedings --
` A Sure.
` Q -- I end up having to ask the same
`question twice --
` A Okay.
` Q -- or seemingly the same question.
` And did you, in fact, write your
`declaration in the '787 patent IPR?
` A It was a collaborative process. Once
`I formed my opinions, it was a collaborative
`process of writing the declaration. Clearly,
`you know, there's legal content in there.
` That came -- I was explained those
`legal concepts, and that ended up in there.
`But the opinions I form, and then it was a
`collaborative process with the attorneys to
`write it up.
` Q Okay. And did you write any portion
`of the petition in the '787 IPR?
` MR. COLSHER: I'm just going to just
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`16
`
`caution the witness. And I don't want to get
`into work product. I'll give you a little bit
`of leeway, but let's not go down that path too
`far.
` THE WITNESS: There's similarities.
`So but as I sit here, I can't tell you -- I
`mean, you can probably see in the petition what
`was lifted out of the declaration. But I did
`not -- you know, I participated in creating the
`declaration; not the petition.
`BY MR. JACKSON:
` Q Okay. So just to explain the process
`again with respect to the '787 IPR, were you
`given drafts of the petition when you were
`writing your declaration or not?
` MR. COLSHER: Again, object on work
`product grounds, but you can...
` THE WITNESS: I believe I may have --
`I really don't recall, but it's quite possible
`they gave me a piece of it to review. I just
`don't -- don't recall.
` I know in the declaration that it was,
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`you know, really -- it was joint work, but it
`was a summary of my opinions.
`BY MR. JACKSON:
` Q Sure.
` A And so I'm a little bit fuzzier on the
`petition itself.
` Q Okay. And just, again, to be
`complete, with respect -- let me ask you the
`same type of questions with respect to the '297
`patent IPR.
` Were you given drafts of that petition
`while you were writing your declaration?
` MR. COLSHER: Same objection.
` THE WITNESS: In both cases, including
`the '297 and the '787, I -- the declaration was
`a process on its own. When it was created, I'm
`not sure when I first saw the petition, but I
`think it was late in the game as far as on the
`creation of the declaration.
`BY MR. JACKSON:
` Q Okay. But prior to the final sign-off
`on your declaration?
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` A I believe so.
` Q Okay. I believe in your declaration
`with respect to the '787 patent, you describe
`some of your professional experience with LEDs;
`is that fair?
` A Yes.
` Q And have you, in fact, designed LED
`structures similar to the diagrams that are
`shown in the '787 patent?
` MR. COLSHER: Object to form.
` THE WITNESS: Most of my LED
`experience, when it relates to packages, was
`during my time at General Electric.
` In the university we don't usually --
`at least the focus of my research was on
`semiconductor materials and the creation of the
`devices.
` In the university we usually go out of
`our way not to package stuff, because it's --
`it's -- it's more manufacturing related, and
`it's just something that's not normally pursued
`in my line of work in the university.
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` But while I was at General Electric, I
`worked on a lot of packages, but I also did the
`crystal growth for the light emitting diode,
`developed fabrication techniques for the light
`emitting diode and then took available
`packaging technology at the time, which is
`different than today.
`BY MR. JACKSON:
` Q Okay.
` A And placed LEDs in these packages,
`measured efficiencies of the LEDs, measured
`radiation patterns. And then it rated on
`various features of the package to optimize
`both the efficiency and the radiation pattern.
` Q Okay. What period of time are you
`designing LED packaging at General Electric?
` A That would be -- I spent 10 years with
`them. It would -- that would be from 1980 to
`1987, and then I was a consultant for GE after
`1987, and I continued but although less
`concentrated effort as consultant.
` Q Okay. So as a consultant, that would
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`have been from '87 to '90; is that correct?
` A Started in '87, and I think it lasted
`about another 10 years.
` Q Okay. So -- and during the time you
`were consultant, you were still designing LED
`packages for General Electric; is that right?
` A There was some packaging work going
`on, because packages continually evolve. But
`the majority of the consulting work was running
`the -- or giving instructions on running the
`crystal growth reactor.
` Q Okay.
` A Which is where, you know, lots of
`the -- that's where the LED is created.
` Q You're talking about the LED die
`itself?
` A The crystal that's in the die before
`it even gets to the die stage.
` Q Okay.
` A Wafer level crystal growth.
` Q Okay. You had mentioned that the
`substrate -- I'm sorry, that the packaging
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`technology is different today versus when you
`were designing packaging for General Electric.
` Can you explain the differences in
`that technology?
` MR. COLSHER: Objection to form.
` THE WITNESS: Well, one of the major
`differences is the light emitting diodes that
`were being built at GE were infrared, so
`they're not used for light.
` So we -- among things, we didn't put
`in capsules that contained color conversion
`phosphors in it. For example, that's a big
`difference.
` These -- some of these LEDs were put
`in harsh environments, and so they were in
`ceramic or metal hermetically sealed packages
`which is far more expensive packaging
`methodology than -- than what you see used
`today in LED lightbulbs, for example. It's
`very important to control the cost there.
`BY MR. JACKSON:
` Q Right.
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` A And it wasn't at the time. Some of
`the packages were -- also included silicon
`phototransistors with isolation, generally a
`piece of glass between them. And these are
`used to make optocouplers which are used for
`isolation in a variety of electronic circuits.
` Q And those -- with the phototransistor,
`that can receive light?
` A That receives the light. When you
`turn the LED on, depending on how hard you turn
`it on, there's a correspondence in how hard you
`turn the transistor on.
` Q Okay.
` A So those packages had unique
`requirements different than --
` Q Right.
` A -- than a raw LED in an isolated
`package.
` Q Were there any other significant
`differences between packaging that you were
`working on at GE versus today what we see in
`the art today?
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`23
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` MR. COLSHER: Objection to form.
` THE WITNESS: Mainly for reliability
`concerns we use eutectic solders. And some of
`them were pretty high temperature, and you
`don't see that in most of the LED packages
`today. So silver epoxy is very commonly used
`to attach die, for example, in semiconductor
`packages.
` And we did not find that robust enough
`to build the LEDs, so we used eutectic solders,
`a much higher temperature process.
`BY MR. JACKSON:
` Q Okay.
` A Some of the packaging materials used
`for LEDs that are in lighting products won't
`handle the temperatures that the eutectic
`solders would require.
` Q Okay. And what type of applications,
`if you can tell us, were the LED packages -- in
`what type of applications were the LED packages
`being used that you were working on while you
`were at GE?
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`24
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` A The biggest selling product that they
`had was the optocouplers. However, they were
`also sold in pairs. So you could buy a
`separate phototransistor and a separate light
`emitting diode with a lens on it so that you
`could spatially separate them.
` The most common example of something
`like that would be your garage door opener
`where there is a light beam that runs across.
`And if it's broken, it reverses the door.
` And so there was a lot of, you know,
`products like that, that were sold. But at the
`time, the optocouplers were in pretty big
`demand, so that's where more of the effort
`probably focused on.
` Q Were the applications for the GE
`products, were they commercial applications?
` A Yes.
` Q Okay.
` A At that time, GE was an aerospace
`company, so there were also military
`applications. But I think most of the products
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`25
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`were going into commercial.
` Q Okay. Understand.
` A There's additional LED packaging I did
`on red LEDs. My group was one of the first to
`develop high efficiency quantum well red light
`emitter. And I worked with a company in
`Yonkers, I believe, to develop a package to
`couple the light from the red LED into a
`plastic optical fiber bundle.
` Q Okay.
` A So that was kind of a specialized
`effort in that case.
` Q That was used for communication?
` A Yeah. Low-cost optical links. It
`never really took off -- well, you'll see them
`around, but that's basically -- yeah, that's
`what it was.
` Q Okay. And was the last time that you
`professionally designed an LED package, was
`that when you were a consultant at GE?
` A No. It was when I was a professor at
`Cornell. I think it was around '87 that I was
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`26
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`doing that. I think.
` Q Okay.
` A In that time frame anyway. The reason
`I can't -- it's hard to nail down because I was
`also consulting for Cornell when I was working
`at GE.
` Q Right.
` A So did I do it as a consultant or
`after they hired me as a professor? I don't
`remember which.
` Q But either way --
` A Mid-'80s.
` Q Okay. I believe in your CV or maybe
`it was in your declaration itself, you
`indicated that you previously testified as an
`expert witness; is that correct?
` A That's correct.
` Q Do you recall approximately how many
`times you've testified as an expert witness?
` A On the order of a dozen times maybe.
`It could be more. I've been doing it -- I
`guess I started around in the early 2000s doing
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`this type of consulting work.
` Q Okay. Each time you've testified, has
`it been by deposition?
` A I've done a lot of depositions, but
`many of the cases went to trial. And so I
`testified in front of a -- never in front of a
`jury, but in front of -- I've done many ITC
`trials and I've testified in a few others.
` Q Okay. Great.
` Let me ask you to take a look at the
`'297 patent since we're talking about your
`background. I have a question about that
`patent. So you see the filing date of this
`patent is September 11, 2007.
` Do you see that?
` A Yes.
` Q Prior to that date, did you design an
`LED package that had one or more notches in a
`reflector wall for purposes of preventing or
`minimizing delamination?
` MR. COLSHER: Objection to form.
` THE WITNESS: No. The geometry of
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`what I was designing was very similar to this,
`but there were no notches in the reflector.
`BY MR. JACKSON:
` Q Okay.
` A But there was a reflector in a LED die
`chip and a wire bond just like depicted on the
`front page of the '297 patent.
` Q In the packages that you designed, how
`did you address the problem of delamination?
` MR. COLSHER: Objection to form.
` THE WITNESS: Well, these were
`hermetically sealed, meaning -- how should I
`put this? It was a can. There are more
`expensive packages. There's a metal can, and
`it's backfilled with inert gas. And I think
`we -- I think at the time we were using argon.
` And then the lid of the package is
`welded onto the metal can, which contain
`their -- the metal can contained all -- all of
`this you see in the front page.
` And think of that line on top as the
`lid. That lid was welded on trapping the inert
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`gas in there. So, you know -- in a sense, the
`inert gas was the encapsulant. So -- so there
`was no delamination issues to deal with.
`BY MR. JACKSON:
` Q Now, let me ask you to take a look at
`your declaration that you submitted with
`respect to the '297 patent and specifically
`paragraph 42.
` A Okay. I found it.
` Q Okay. Great. Go ahead and just take
`a minute to read that paragraph.
` (Pause in testimony.)
` A Okay.
` Q In the paragraph 42, you say that the
`broadest reasonable interpretation is
`consistent with -- I'm sorry. Let me start
`over.
` In paragraph 42, you say the broadest
`reasonable interpretation of the claim terms of
`the '297 patent are generally consistent with
`the term ordinary and customary meaning as a
`person of ordinary skill would have understood
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`them, correct?
` A Yes.
` Q What is an ordinary and custom
`meaning?
` A Well, of course it depends on the term
`you're talking about. But it's how one skilled
`in the art at the time of the invention would
`interpret the use of these claim terms.
` Q Is that a meaning or a -- a meaning
`that they would apply or use in their
`day-to-day work?
` MR. COLSHER: Objection to form.
` THE WITNESS: I think it's a -- you
`know, we describe the person of ordinary skill
`in this document, and it's a combination of
`work experience and education.
` So some of the terms could come out of
`a textbook, but some of the terms, the clear
`meaning could emerge, you know, from working in
`the field.
`BY MR. JACKSON:
` Q Okay. And would that person have had
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`the benefit of what was disclosed in this case
`in the '297 patent?
` MR. COLSHER: Objection to form.
` THE WITNESS: Could you -- I didn't
`quite catch that.
`BY MR. JACKSON:
` Q Sure. With respect to their ordinary
`and custom meaning that this person of skill in
`the art would have, would that person have had
`the benefit of the disclosure that is
`incorporated into the '297 patent?
` MR. COLSHER: Objection to form.
` THE WITNESS: That person would have
`read literature that's similar to what's in the
`'297 as to -- which would -- you know, as a
`matter of their, you know, work, they would be
`keeping up to date with literature. And so the
`'297 is just another piece of literature.
`BY MR. JACKSON:
` Q Right. But just -- I'm trying to get
`at a fine point, I think.
` A Okay.
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` Q With respect to the ordinary and
`customary meaning that a person of skill in the
`art would have at the time of the invention, at
`that point would they or would they not have
`had the benefit of seeing what was described in
`the '297 patent --
` MR. COLSHER: Objection.
`BY MR. JACKSON:
` Q -- itself?
` MR. COLSHER: Objection to form.
` THE WITNESS: You mean would they have
`actually encountered the '297 and read it?
`BY MR. JACKSON:
` Q Right.
` A I would say if you're keeping up with
`modern LED -- well, modern as of '07, yeah, you
`would have -- you would have been aware of this
`patent and many others like it.
` Q Okay. Do you have the '297 patent in
`front of you?
` A Yes.
` Q That patent, we're talking about
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`September 11, 2007, is the date for the
`ordinary and customary meaning, correct?
` A Yes.
` Q But this patent didn't issue until
`2010, right?
` A Uh-huh.
` Q I'm sorry. Just for the record, could
`you say "yes" or "no."
` A I'm sorry. Yes.
` Q So it would not have been possible for
`a person of skill in the art to have been able
`to read the '297 patent itself in the relevant
`time period, correct?
` A I'm not sure when this information
`became public, but there is an awful lot of
`literature that's very similar to this. So I
`think one skilled in the art would be aware of
`what's in this, whether they -- generally
`speaking, whether they read the document or
`not.
` Q Okay. I'm just trying to get at --
`and I understand what you're saying about the
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