UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`------------------------------X
`SLING TV, L.L.C., SLING MEDIA,:
`L.L.C., DISH NETWORK L.L.C., :
`DISH TECHNOLOGIES L.L.C., :
` :
` Petitioners, :
` :
` :
` :
` :
` :
` :
` Patent Owner. :
`------------------------------X
`
`REALTIME ADAPTIVE
`STREAMING LLC,
`
` vs.
`
` Case No.
` IPR2018-01342
`
` Patent
` 8,934,535
`
` Deposition of SCOTT T. ACTON, Ph.D.
`
` Washington, D.C.
`
` Friday, May 10, 2019 - 9:05 a.m.
`
`Reported by:
`
`Dawn A. Jaques
`
`Job no: 25232
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
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`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`------------------------------X
`SLING TV, L.L.C., SLING MEDIA,:
`L.L.C., DISH NETWORK L.L.C., :
`DISH TECHNOLOGIES L.L.C., :
` :
` Petitioners, :
` :
` :
` :
` :
` :
` :
` Patent Owner. :
`------------------------------X
`
`REALTIME ADAPTIVE
`STREAMING LLC,
`
` vs.
`
` Case No.
` IPR2018-01342
`
` Patent
` 8,934,535
`
` Deposition of SCOTT T. ACTON, Ph.D.
`
` Washington, D.C.
`
` Friday, May 10, 2019 - 9:05 a.m.
`
`Reported by:
`
`Dawn A. Jaques
`
`Job no: 25232
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
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`Page 2
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`Examination of:
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` SCOTT T. ACTON, Ph.D.,
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`the witness, was called for cross-examination by
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`counsel for the Patent Owner, pursuant to notice,
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`commencing at 9:05 a.m., at the law offices of
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`Fish & Richardson PC, 1000 Main Avenue, Southwest,
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`Washington, D.C., before Dawn A. Jaques, CSR, CLR,
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`and Notary Public in and for the District of
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`Columbia.
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`APPEARANCES:
`
`On behalf of the Petitioner:
`
` ADAM R. SHARTZER, ESQ.
`
` MATTHEW P. MOSTELLER, ESQ.
`
` Fish & Richardson PC
`
` 1000 Maine Avenue, SW
`
` Suite 1000
`
` Washington, D.C. 20024
`
` (202) 626-6380
`
` (202) 626-7751
`
` shartzer@fr.com
`
` mosteller@fr.com
`
`On behalf of the Patent Owner:
`
` PHILIP X. WANG, ESQ.
`
` Russ August & Kabat
`
` 12424 Wilshire Boulevard
`
` 12th Floor
`
` Los Angeles, California 90025
`
` (310) 826-7474
`
` pwang@raklaw.com
`
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`Page 4
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` I-N-D-E-X
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`WITNESS: PAGE:
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`SCOTT T. ACTON, Ph.D.
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` Examination by Mr. Wang ........ 5, 91
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` Examination by Mr. Shartzer .... 84, 92
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`
`
` E-X-H-I-B-I-T-S
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`ACTON DEPOSITION EXHIBIT: PAGE:
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`Exhibit 1 Compilation of Declaration
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` of Professor Scott Acton
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` Re: '535 patent, and the
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` Fallon, Dvir and Ishii
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` references .................. 11
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` P R O C E E D I N G S
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`Whereupon,
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` SCOTT T. ACTON, Ph.D.
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` was called as a witness, after having been
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` first duly sworn by the Notary Public, was
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` examined and testified as follows:
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` EXAMINATION BY COUNSEL FOR THE PATENT OWNER 08:32:00
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` BY MR. WANG: 09:05:34
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` Q Good morning, Dr. Acton. We met 09:05:34
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`briefly off the record. 09:05:36
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` A Good morning, Mr. Wang. 09:05:37
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` Q How many times have you been deposed? 09:05:38
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` A Somewhere over a dozen. 09:05:41
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` Q So you're well familiar with the 09:05:43
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`ground rules of a deposition? 09:05:44
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` A I am. 09:05:46
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` Q You understand that you're under oath 09:05:48
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`today? 09:05:50
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` A I do. 09:05:51
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` Q You understand that even though we're 09:05:51
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`in a law office, the testimony you give under oath 09:05:53
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`is subject to the same penalty of perjury as if 09:05:55
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`you were in a court of law? 09:05:58
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` A Yes. 09:05:59
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` Q I'm going to assume that you 09:06:02
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`understand the questions that I ask you unless you 09:06:04
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`tell me that you don't understand them. 09:06:06
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` Is that fair? 09:06:08
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` A Fair. 09:06:09
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` Q If anything is unclear, please feel 09:06:10
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`free to ask me to clarify. 09:06:13
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` Is there anything that would prevent 09:06:16
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`you from thinking clearly and testifying 09:06:18
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`truthfully today? 09:06:21
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` A There's not. 09:06:22
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` Q From time to time, your counsel may 09:06:28
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`object in the form of objection to form, but 09:06:29
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`unless you're instructed not to, you must answer 09:06:33
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`my questions. 09:06:36
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` If at any time you need to take a 09:06:40
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`break during the deposition, please let me know. 09:06:43
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`I only ask that we don't take a break while a 09:06:45
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`question is pending. Is that okay? 09:06:49
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` A That sounds fine. 09:06:51
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` MR. SHARTZER: Counsel, can we pause 09:06:53
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`for a second? 09:06:54
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` MR. WANG: Yes. 09:13:31
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` (Discussion held off the record.) 09:13:31
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` (Pause in the proceedings to fix the 09:14:57
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` realtime.) 09:13:31
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` BY MR. WANG: 09:17:25
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` Q Welcome back, Dr. Acton. 09:17:29
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` A Thank you. 09:17:31
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` Q For the record, this part of the 09:17:35
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`deposition is for the '535 patent, patent number 09:17:41
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`8,934,535. 09:17:45
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` Dr. Acton, what did you do to prepare 09:17:53
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`for today's deposition? 09:17:55
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` A So I went over my two declarations. 09:17:59
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` Q The two declarations on the '535 and 09:18:08
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`the '610 patents? 09:18:11
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` A That is correct. 09:18:13
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` Q Did you do anything else? 09:18:15
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` A Yes. 09:18:16
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` Q What did you do? 09:18:17
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` A I reviewed the references, the 09:18:21
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`references that were cited in the declarations. I 09:18:26
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`reviewed the patents themselves, the '535 and the 09:18:32
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`'610 patent. 09:18:39
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` Q Anything else? 09:18:40
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` A I met with counsel. 09:18:44
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` Q How many times did you meet with 09:18:50
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`counsel? 09:18:52
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` A Essentially it was one meeting over 09:19:02
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`two days. 09:19:04
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` Q Was that the past two days? 09:19:06
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` A That's correct. 09:19:09
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` Q So today is Friday, and you met with 09:19:11
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`counsel on Wednesday and Thursday? 09:19:13
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` A That is correct. 09:19:15
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` Q Who did you meet with? 09:19:16
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` A I met with Matt Mosteller, 09:19:20
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`Adam Shartzer, and Brian Livedalen. 09:19:26
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` Q For how long did you meet with 09:19:34
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`counsel? 09:19:35
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` A During the business hours on Thursday 09:19:37
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`and Wednesday. 09:19:39
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` Q Did you meet with anyone else other 09:19:46
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`than the attorneys that you named? 09:19:47
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` A In passing, sure, but I can't recall 09:19:56
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`any names. 09:19:57
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` Q And during your meetings, did you 09:20:03
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`review the same documents that you named? 09:20:05
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` A That's correct. 09:20:10
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` Q Were all of the documents you reviewed 09:20:20
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`submitted in this proceeding as an exhibit? 09:20:21
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` MR. SHARTZER: Objection, speculation. 09:20:35
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` MR. WANG: Counsel, please limit your 09:20:44
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`objections to objection, form. 09:20:45
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` MR. SHARTZER: No, objections aren't 09:20:48
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`limited to objection to form. 09:20:49
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` THE WITNESS: So as to the pending 09:20:56
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`question, I want to say yes, but I'm not sure. 09:20:58
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` BY MR. WANG: 09:21:04
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` Q Have you reviewed the IPR petitions in 09:21:11
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`this case? 09:21:13
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` A I can't recall, but if I did, they 09:21:26
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`would be cited in my, for example, '535 09:21:28
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`declaration. 09:21:34
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` Q The same for the '610 patent? 09:21:35
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` MR. SHARTZER: Objection, form. 09:21:43
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` THE WITNESS: The same answer, and I 09:21:49
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`can easily look at the report. 09:21:50
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` BY MR. WANG: 09:21:54
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` Q Did you bring anything with you today? 09:21:54
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` A I did. 09:21:56
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` Q What did you bring? 09:21:56
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` A Essentially these are my supporting 09:21:59
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`documents. 09:22:03
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` Q Why don't we mark -- why don't we 09:22:05
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`introduce this as an exhibit. So are they already 09:22:08
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`marked? So did you bring a copy of your 09:22:13
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`declaration in the '535 case? 09:22:16
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` A That's part of it, yes, sir. 09:22:21
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` Q So your declaration already has an 09:22:23
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`exhibit number, DISH 1003, correct? 09:22:25
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` A DISH 1003 is correct. 09:22:36
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` Q So why don't we do this? We're going 09:22:39
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`to mark that whole spiral as an exhibit for this 09:22:41
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`deposition, and could you let me know what 09:22:48
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`documents are in that spiral, please? 09:22:52
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` A Right now? 09:22:56
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` Q Yes. 09:22:57
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` (Acton Deposition Exhibit 1 was 09:22:57
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` marked for identification.) 09:22:57
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` THE WITNESS: So in the spiral we have 09:23:00
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`DISH 1003, which is my declaration on the 09:23:04
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`'535 patent. 09:23:09
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` It appears we also have Exhibit 1029, 09:23:27
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`a supplemental declaration. 09:23:33
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` BY MR. WANG: 09:23:44
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` Q Okay. 09:23:44
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` A The next reference is the '535 patent, 09:23:46
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`which we are discussing this morning. 09:23:52
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` Q What's the exhibit number for that? 09:23:54
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` A DISH 1001. 09:23:57
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` Q Okay. 09:23:59
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` A Next we have DISH 1004, which is what 09:24:08
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`I will call this morning Dvir, D-V-I-R. 09:24:13
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` Next we have DISH 1005, which I will 09:24:26
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`refer to as Ishii, I-S-H-I-I. It's a patent. 09:24:32
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` And I believe that's it for the first 09:24:49
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`spiral. 09:24:50
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` Q Okay. I want to make something clear. 09:24:51
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` The portion of your spiral that's 09:24:55
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`Exhibit 1029, I am not introducing that as an 09:24:57
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`exhibit. I understand that you brought it with 09:25:02
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`you, but I am not introducing that as an exhibit. 09:25:05
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`I don't believe that's part of this case. 09:25:09
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` The other spiral, Dr. Acton, that has 09:25:13
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`documents limited to the '610 IPR? 09:25:18
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` MR. SHARTZER: Philip -- well, 09:25:35
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`I'm sorry, you're in the middle of a question. 09:25:37
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` You can provide an answer. 09:25:40
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` THE WITNESS: So not to be too 09:25:41
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`detailed, but I wouldn't say that's accurate just 09:25:48
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`because there's at least one document that's in 09:25:53
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`common, and I know that's not where you were 09:25:55
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`going, but ... 09:25:57
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` MR. SHARTZER: One thing for you. 09:26:02
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` If you're planning on introducing this 09:26:04
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`in this deposition, I mean, I'm not going to stop 09:26:06
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`you, but maybe just try to have some sort of 09:26:09
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`separation. 09:26:12
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` MR. WANG: Yeah, I'm just trying to 09:26:13
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`clarify that. That spiral is about the '610 09:26:14
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`proceeding, or directed to that, correct? 09:26:18
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` THE WITNESS: Correct. 09:26:22
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` BY MR. WANG: 09:26:22
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` Q Okay, so we will introduce that when 09:26:22
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`we get to the other proceeding. 09:26:25
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` Returning back to the '535 IPR, did 09:26:29
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`you review the Patent Owner's preliminary 09:26:34
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`response? 09:26:41
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` A For clarification, do you know how 09:28:24
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`that would appear as a docket? 09:28:27
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` Q So I don't think it existed at the 09:28:29
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`time of your declaration. 09:28:32
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` A Okay. 09:28:35
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` Q So let me clarify my question, 09:28:36
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`Dr. Acton. 09:28:39
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` So in paragraph 26, starting at 09:28:40
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`paragraph 26 of your declaration, you identify 09:28:47
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`some materials that you reviewed; is that correct? 09:28:49
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` A That's correct. 09:28:52
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` Q So apart from the documents and the 09:28:53
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`materials identified here, have you reviewed any 09:28:58
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`other documents since? 09:29:02
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` MR. SHARTZER: Objection, form. 09:29:37
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` THE WITNESS: There may have been 09:29:54
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`additional documents in conjunction with 09:29:55
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`Exhibit 1029, the supplemental, but I can't 09:29:57
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`recall. 09:30:00
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` BY MR. WANG: 09:30:01
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` Q Do you recall reviewing the 09:30:01
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`Patent Owner's Preliminary Response? 09:30:03
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` A I don't recall. 09:30:11
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` Q Do you recall reviewing the Board's 09:30:13
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`Institution Decision? 09:30:16
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` A No. 09:30:19
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` Q Do you recall reviewing any other 09:30:20
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`documents filed in this IPR, like different 09:30:23
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`documents by either party? 09:30:28
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` A I can't recall any beyond what is in 09:30:35
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`Section C, which is paragraphs 26, 27, 28 and 29 09:30:38
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`of my declaration. 09:30:44
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` Q So apart from the documents identified 09:30:48
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`in the Materials Considered here, and putting 09:30:52
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`aside those in Exhibit 1029, are there any other 09:30:56
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`documents you reviewed for this IPR? 09:31:03
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` A Not that I can recall. 09:31:09
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` Q Did you take any notes during your 09:31:11
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`meetings with counsel? 09:31:13
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` A So I have before me basically my 09:31:28
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`materials and what I studied to prepare, and 09:31:31
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`basically there probably are some pencil marks. I 09:31:40
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`don't know if I'd call them notes. 09:31:43
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` In other cases, there might be a 09:31:45
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`couple of numbers which might point to a different 09:31:48
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`paragraph or a different part of a reference. 09:31:51
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` Q Do you have a copy of those notes? 09:31:53
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` A Yes, I do. 09:31:55
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` Q Do you have them with you? 09:31:57
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` A Yes. 09:31:57
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` Q Can I have them? 09:32:02
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` A These are they. 09:32:03
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` Q Okay. So you've written on these 09:32:07
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`documents? 09:32:12
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` A A couple places I made scribbles. I 09:32:14
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`don't know -- yeah, there's a scribble. 09:32:17
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` Q So in preparing for the depositions 09:32:24
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`today, you went back and looked at your 09:32:27
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`declarations? 09:32:31
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` A Yes, sir. 09:32:31
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` Q About how long did you spend doing 09:32:32
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`that? 09:32:34
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` A It's hard to say. A couple hours. 09:32:38
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` Q Sitting here, do you have any changes 09:32:44
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`or corrections to your declaration, Exhibit 1003, 09:32:46
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`that you submitted? 09:32:52
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` A Yes. 09:33:01
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` Q What are they? 09:33:03
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` A If I can point you to the table of 09:33:05
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`contents, Latin index i through ii -- I don't know 09:33:09
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`how people refer to that. So in the table of 09:33:21
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`contents, which actually copies into the Word file 09:33:27
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`that I used to make my declaration, there are 09:33:30
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`repeated an error, the same error, which is 09:33:32
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`"anticipated under 103." 09:33:40
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` And when I say "anticipated," I should 09:33:46
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`have said anticipated under 102 and rendered 09:33:47
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`obvious under 103, so that's a correction. 09:33:51
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` Q Anything else? 09:33:58
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` A Not that comes to mind, no. 09:34:00
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` Q Do you have any other opinions to add 09:34:02
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`to your declaration? 09:34:04
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` A I guess we'll see. 09:34:08
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` Q So you do have other opinions to add 09:34:10
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`to your declaration? 09:34:13
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` A Not that I can think of right now, but 09:34:16
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`what I'm saying is maybe you'll ask me questions 09:34:17
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`that will -- 09:34:20
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` Q So your declaration contains your 09:34:21
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`complete opinions about invalidity for the 09:34:23
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`'535 patent? 09:34:27
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` MR. SHARTZER: Objection to form. 09:34:29
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` THE WITNESS: I believe that -- so if 09:34:33
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`I can point you to paragraph 219 of my 09:35:13
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`declaration, "I reserve the right to supplement my 09:35:20
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`opinions to address any information obtained, or 09:35:29
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`positions taken, based on any new information 09:35:31
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`introduced throughout this proceeding." 09:35:35
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` BY MR. WANG: 09:35:38
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` Q So apart from that paragraph, do you 09:35:38
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`have any opinions in mind now that you wish to 09:35:40
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`supplement with? 09:35:44
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` A Not at this time, no. 09:35:58
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` Q Who wrote your declaration? 09:36:03
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` A So every paragraph in the 09:36:06
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`declaration -- and we'll get to the '610 one 09:36:12
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`later -- is my paragraph, my report. 09:36:15
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` I did write it in collaboration with 09:36:21
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`counsel. 09:36:23
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` Q Did counsel provide a first draft for 09:36:26
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`you? 09:36:28
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` A No. 09:36:31
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` Q But every paragraph is your opinion? 09:36:35
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` A Every paragraph is my opinion. 09:36:41
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` There are some paragraphs, as you'll 09:36:45
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`notice, where I've been informed by counsel; for 09:36:47
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`example, some of the legal portions. 09:36:51
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` Q Let's turn to that right now. Let's 09:36:55
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`turn to the section Statement of Legal Principles 09:36:58
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`beginning on paragraph 30 of your declaration. 09:37:03
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` Are you there? 09:37:14
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` A Yes. 09:37:15
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` Q So starting on paragraph 30, there's 09:37:16
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`kind of three sections under Statement of Legal 09:37:18
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`Principles: Claim Construction, Anticipation, and 09:37:20
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`Obviousness. Do you see that? 09:37:23
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` A Yes. 09:37:29
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` Q Was this what you were referring to, 09:37:30
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`the legal standard section? 09:37:31
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` A Yes, this is at least part of that. 09:37:38
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` Q Apart from this, is there anything 09:37:41
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`else? 09:37:42
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` A Is there anything else? 09:37:45
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` Q That was provided to you from counsel. 09:37:47
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` A I think it's fair to say that the 09:38:46
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`materials I relied on, they kept track of those 09:38:48
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`materials with my help, probably drafted that 09:38:52
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`section. 09:38:56
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` Q Anything else? 09:39:00
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` A Yes. 09:39:17
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` Q What else? 09:39:18
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` A So in terms of claim construction, I 09:39:23
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`was provided claim construction by counsel, and 09:39:27
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`that is paragraphs 40 through 44 of this 09:39:34
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`declaration, and that construction or those 09:39:42
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`constructions were provided by counsel, and I did 09:39:50
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`my analysis under those constructions. 09:39:55
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` Q Did you perform any analysis of 09:39:58
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`whether those constructions are correct? 09:40:01
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` MR. SHARTZER: Objection, legal 09:40:04
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`conclusion. 09:40:06
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` THE WITNESS: No, that wasn't the job 09:40:16
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`I was asked to do. 09:40:18
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` BY MR. WANG: 09:40:19
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` Q Counsel provided those constructions 09:40:19
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`to you, and as part of your analysis, you applied 09:40:21
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`those constructions? 09:40:25
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` A That is correct. 09:40:28
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` Q Turning back to paragraph 30, so the 09:40:31
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`legal principles of claim construction, 09:40:35
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`anticipation, and obviousness, they were provided 09:40:37
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`to you from counsel? 09:40:40
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` A I think it's fair to say they were 09:41:13
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`provided by counsel or I was informed by counsel. 09:41:14
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`Of course we discussed them. 09:41:19
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` Q And you have some understanding of the 09:41:24
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`legal standards for claim construction, 09:41:27
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`anticipation, and obviousness, even before this 09:41:30
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`proceeding, correct? 09:41:34
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` MR. SHARTZER: Objection, foundation. 09:41:37
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` THE WITNESS: Yes. 09:41:39
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` BY MR. WANG: 09:41:40
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` Q Based on your work in other cases and 09:41:41
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`other IPRs? 09:41:43
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` A Yes. 09:41:45
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` Q Let's talk about anticipation, 09:41:51
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`paragraph 32, for a minute. 09:41:53
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` You say in the middle of this 09:41:59
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`paragraph that, "In order for the invention to be 09:42:01
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`anticipated, each element of the claimed invention 09:42:03
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`must be described or embodied, either expressly or 09:42:05
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`inherently, in the single prior art reference." 09:42:08
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` Do you see that? 09:42:12
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` A Yes. 09:42:13
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` Q Do you have any opinions about 09:42:13
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`inherency in this case? 09:42:15
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` A I can't recall. I don't know if you 09:43:08
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`want me to search through the report. 09:43:10
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` Q I can just ask you what you recall 09:43:13
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`sitting here. 09:43:14
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` Do you recall expressing any opinions 09:43:16
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`about inherency? 09:43:17
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` A I can't recall. 09:43:19
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` Q And the very next paragraph, the very 09:43:19
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`next sentence that I read previously, it says, "In 09:43:21
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`order for a reference to inherently disclose a 09:43:25
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`claim limitation, that claim limitation must 09:43:29
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`necessarily be present in the reference." 09:43:30
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` Do you recall offering that opinion or 09:43:34
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`providing that analysis about inherency? 09:43:37
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` A So I'm sorry, your question is a 09:43:41
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`little confusing. Are you -- 09:43:43
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` Q I'm providing more background about 09:43:47
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`inherency. Here in this paragraph you write, "In 09:43:49
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`order for a reference to inherently disclose a 09:43:53
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`claim limitation, that claim limitation must 09:43:56
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`necessarily be present in the reference." 09:43:57
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` Do you recall offering any opinions 09:44:00
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`about inherency or opining that any claim 09:44:03
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`limitation must necessarily be present in the 09:44:08
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`reference? 09:44:11
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` A I think I answered that question in 09:44:19
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`the previous question, and I can't recall. 09:44:20
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` Q Paragraph 32, is this the legal 09:44:27
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`standard that you applied in your anticipation 09:44:31
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`analysis? 09:44:35
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` A Paragraph 32 is a good description of 09:44:48
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`anticipation and, yes, one which I would use in my 09:44:54
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`analysis. 09:45:00
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` Q Is this the description that you 09:45:01
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`applied in your opinions? 09:45:03
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` A I think it's a fair description, yes. 09:45:17
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` Q So my question -- I'm going to ask it 09:45:19
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`again -- is this the description that you applied 09:45:23
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`in your opinions? 09:45:27
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` MR. SHARTZER: Objection, asked and 09:45:44
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`answered. 09:45:44
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` THE WITNESS: I think it's congruent 09:45:47
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`with my analysis, yes. 09:45:48
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` BY MR. WANG: 09:45:51
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` Q So my question is whether or not it's 09:45:52
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`what you applied. My question isn't whether it's 09:45:54
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`fair or whether it's congruent.
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