UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - -x
`APPLE INC., :
`Petitioner,
`: CASE NOS:
`V.
`: IPR2019-00823
`MPH TECHNOLOGIES OY,
`: IPR2019-00824
`Patent Owner.
`: IPR2019-00826
`- - - - - - - - - - - - - -x
`
`Deposition of DOCTOR MICHAEL S. BORELLA
`Conducted virtually
`Monday, May 18, 2020
`10:43 a.m.
`
`Job No.: 298680
`Pages: 1 - 266
`Reported By: Dianna C. Kilgalen
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`EX1024
`Apple v. MPH
`IPR2019-00823
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - -x
`APPLE INC., :
`Petitioner,
`: CASE NOS:
`V.
`: IPR2019-00823
`MPH TECHNOLOGIES OY,
`: IPR2019-00824
`Patent Owner.
`: IPR2019-00826
`- - - - - - - - - - - - - -x
`
`Deposition of DOCTOR MICHAEL S. BORELLA
`Conducted virtually
`Monday, May 18, 2020
`10:43 a.m.
`
`Job No.: 298680
`Pages: 1 - 266
`Reported By: Dianna C. Kilgalen
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`EX1024
`Apple v. MPH
`IPR2019-00823
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`2
`
` Deposition of DOCTOR MICHAEL S. BORELLA,
`conducted virtually.
`
` Pursuant to notice, before Dianna C.
`Kilgalen, Notary Public in and for the State of
`Maryland.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`3
`
` A P P E A R A N C E S
`ON BEHALF OF PETITIONER:
` DANIEL S. BLOCK, ESQUIRE
` MICHAEL D. SPECHT, ESQUIRE
` STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
` 1100 New York Avenue, Northwest
` Washington, DC 20005
` 202.371.2600
`ON BEHALF OF PATENT OWNER:
` JAMES T. CARMICHAEL, ESQUIRE
` STEPHEN T. SCHREINER, ESQUIRE
` CARMICHAEL IP, PLLC
` 8000 Towers Crescent Drive
` 13th Floor
` Tysons Corner, Virginia 22182
` 703.646.9250
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`4
`
` A P P E A R A N C E S C O N T I N U E D
`ON BEHALF OF THE DEPONENT:
` JAMES L. LOVSIN, ESQUIRE
` McDONNELL, BOEHNEN, HULBERT &
` BERGHOFF, LLP
` 300 South Wacker Drive
` Suite 3100
` Chicago, Illinois 60606
` 312.913.0001
`
`Also present:
` Steven Pappas
` Alan Ross, AV Technician Planet Depos
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`5
`
` C O N T E N T S
`EXAMINATION OF DOCTOR MICHAEL S. BORELLA PAGE
`By Mr. Block 6, 252
`By Mr. Carmichael 249
`
` E X H I B I T S
` (Attached to the transcript.)
`BORELLA DEPOSITION EXHIBIT PAGE
`Exhibit 1 IPR2019-00823 - Ex. 2010 -
` Borella Declaration 22
`Exhibit 2 IPR2019-00824 - Ex. 2010 -
` Borella Declaration 2-19-2020 34
`Exhibit 3 IPR2019-00826 - Ex. 2010 -
` Borella Declaration 36
`Exhibit 4 IPR2019-00823 - Ex. 1006 -
` Grabelsky (USP7032242) 96
`Exhibit 5 IPR2019-00823-Ex. 1004-RFC3104 109
`Exhibit 6 IPR2019-00823-Ex. 2004-RFC3103 187
`Exhibit 7 IPR2019-00823-Paper 7-2019.11.06 -
` Decision Granting Institution 209
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`6
`
` P R O C E E D I N G S
` DOCTOR MICHAEL S. BORELLA, having been
`duly sworn, testified as follows:
` EXAMINATION BY COUNSEL FOR THE PETITIONER
`BY MR. BLOCK:
` Q. Good morning, Doctor Borella. Could you
`please state your full name for the record?
` A. Michael Scott Borella.
` MR. BLOCK: And actually, before we get
`started, maybe we can just have counsel
`introduce each other for the record. This is Dan
`Block on behalf of Petitioner Apple. With me
`today is Steve Pappas, also of the law firm of
`Sterne, Kessler, Goldstein & Fox. I'm also
`joined by Michael Specht of the same law firm.
` MR. CARMICHAEL: James Carmichael for
`Patent Owner MPH, and with me is Steve Schreiner
`also with Carmichael.
` MR. LOVSIN: James Lovsin of McDonnell,
`Boehnen, Hulbert & Berghoff on behalf of Doctor
`Borella.
` MR. BLOCK: Thank you. Thank you
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`7
`
`everybody.
`BY MR. BLOCK:
` Q. Doctor Borella, have you ever had your
`deposition taken before?
` A. I have.
` Q. How many times have you had your
`deposition taken?
` A. One time.
` Q. Since -- when was that deposition
`roughly?
` A. Approximately 2008.
` Q. All right. Since it has been a little
`bit of time since your last deposition, I'm just
`going to go over a couple of the ground rules
`today so we are all on the same page.
` I think they are probably more important
`than ever given the fact that this deposition is
`a remote deposition. Before I forget, I do want
`to thank you for doing this under these
`interesting circumstances that we are dealing
`with right now.
` First, you understand that your
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`8
`
`testimony is being transcribed by the court
`reporter, Dianna?
` A. I understand that.
` Q. And that means you need to give your
`answers orally to make sure that she can properly
`write down what you are saying.
` A. Correct.
` Q. And as the court reporter mentioned
`before she swore you in, one thing that will make
`today a lot easier is if you wait until I'm done
`answering my questions before giving your answer,
`and likewise, what I will try to do is wait until
`you are done with your answer before I ask my
`next question.
` Does that sound fair?
` A. That sounds fair.
` Q. It's not a marathon, today's deposition.
`I tend to take breaks every hour or so. If you
`need a break before then, will you let your
`counsel know?
` I just ask that you -- if there is a
`question pending, that you answer that question
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`9
`
`before we take a break.
` Does that sound fair?
` A. Sounds fair.
` Q. My job today is to ask questions and
`your job is to answer my questions. If you don't
`understand one of my questions, will you let me
`know?
` A. I will.
` Q. Otherwise, if you do answer my question,
`I'm going to assume that you understood it.
`Sound fair?
` A. If I answer your question, it will be to
`the best of my understanding of that question.
` Q. Right. But unless you tell me that you
`didn't understand it, my only assumption is that
`you did understand it to some extent.
` Does that sound fair?
` A. I'm not sure that sounds fair.
` Q. But you will let me know if you don't
`understand my question?
` A. I will do my best.
` Q. That's a yes?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`10
`
` A. If I have a lack of understanding of
`your question, I will attempt to let you know.
` Q. You understand that you are under oath
`today?
` A. I do.
` Q. And that means you need to give true and
`complete answers to the best of your ability?
` A. And I will.
` Q. Okay. Is there any reason you can't do
`that today?
` A. No.
` Q. So you understand you are here today to
`discuss three expert declarations that you
`submitted in a number of IPR proceedings?
` A. Yes.
` Q. Have you ever submitted any expert
`opinions in any kind of litigation or proceeding
`in the past?
` A. No.
` Q. This is the first time that you have
`served as an expert?
` A. Yes.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`11
`
` Q. And you are an attorney?
` A. I am.
` Q. What law firm do you work for?
` A. McDonnell, Boehnen, Hulbert & Berghoff.
` Q. That is also known as MBHP. Is that
`right?
` A. Correct.
` Q. How long have you been working for MBHP?
` A. Since 2007.
` Q. How long have you been an attorney for?
` A. Since 2011.
` Q. So you started working at MBHP I presume
`as a non-attorney. Is that right?
` A. That's right.
` Q. And what was your position when you
`first started working at MBHP?
` A. Technical advisor.
` Q. And at any point did your role change at
`MBHP?
` A. It did.
` Q. And what -- when was that approximately?
` A. In 2011 when I became an attorney.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`12
`
` Q. Prior to becoming an attorney, did you
`take and pass the patent bar?
` A. I did.
` Q. And so at some point, were you a patent
`agent?
` A. Yes.
` Q. Okay. Did your title change when you
`became a patent agent from technical advisor?
` A. I don't believe it did.
` Q. What is your current role at MBHP?
` A. I'm a partner.
` Q. How long have you been a partner for?
` A. Since 2015.
` Q. In terms of the type of work that you do
`at MBHP, would you say that it's primarily patent
`prosecution related?
` A. Yes.
` Q. Do you also work on any kind of
`litigations or inter parties proceedings?
` A. Yes.
` Q. Have you ever worked in an inter parties
`proceeding before the PTAB?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`13
`
` A. Yes.
` Q. How many PTAB proceedings have you
`worked on?
` A. Three.
` Q. And were those inter parties reviews?
` A. Yes.
` Q. Were you representing the Petitioner or
`the Patent Owner in those cases, if you recall?
` A. The Patent Owner.
` Q. So it's fair to say you have been
`working with patents I think you said since, what
`was it, 2007? Is that right?
` A. That's right.
` Q. Would you consider yourself an expert in
`patent law?
` MR. CARMICHAEL: Objection. Calls for a
`legal conclusion. Scope.
` A. That's not something I have formed an
`opinion on.
` Q. So you don't have an opinion on whether
`you are an expert in patent law?
` MR. CARMICHAEL: Objection. Asked and
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`14
`
`answered. Vague.
` A. I'm not sure what you mean by expert.
` Q. Well, would you consider yourself
`knowledgeable in patent law?
` A. It's not something I have formulated an
`opinion on.
` Q. So you don't know whether you are
`knowledgeable in patent law?
` MR. CARMICHAEL: Objection. Vague.
` A. That's not something I formed an opinion
`on.
` Q. So to be clear, you are a partner in a
`law firm that specializes -- yourself, you
`specialize in patent law. Is that right?
` MR. CARMICHAEL: Objection. Vague.
` A. I'm not sure what you mean by
`specialize.
` Q. Well, how much of your work relates to
`patent law at MBHP?
` MR. CARMICHAEL: Objection.
` A. I don't think I can quantify that on the
`fly.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`15
`
` Q. Does any of your work relate to
`non-patent law?
` A. Yes.
` Q. Would you consider it to be a larger
`percentage than the work that you have -- that
`you perform that relates to patent law?
` MR. CARMICHAEL: Objection. Vague.
` A. A larger percentage of what?
` Q. In other words, do you spend more time
`working on matters related to patent law or other
`matters?
` MR. CARMICHAEL: Objection.
` A. Most of my work is related to patent
`law.
` Q. Right. As somebody who performs most of
`his work related to patent law as a partner at
`law firm, you don't know whether you are
`knowledgeable about patent law?
` A. That's not something I have formed an
`opinion on.
` Q. Have you ever held yourself out to be
`knowledgeable about patent law to clients or
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`16
`
`potential clients?
` A. I still don't know what you mean by
`knowledgeable.
` Q. Well, what does the term knowledgeable
`mean to you?
` A. That's not something I have formed an
`opinion on.
` Q. So you don't know what the word
`knowledgeable means to you?
` A. It's not something I have considered.
` Q. Have you ever used the term
`knowledgeable before in your life?
` A. Most likely.
` Q. And you know what the word means, right?
` A. I'm not sure what it means in the
`context of your question.
` Q. Do you have an understanding of patent
`law?
` MR. CARMICHAEL: Objection. Vague.
` A. I'm not sure what you mean by
`understanding.
` Q. What does the word understanding mean to
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`17
`
`you?
` A. I don't understand what you mean in the
`context of the question.
` Q. Well, you just used the word understand.
`How do you use it?
` A. I use it to convey the fact that your
`question could mean different things to different
`people.
` Q. Well, what different things could it
`mean?
` A. It would require speculation.
` Q. So how do you know that it means
`different things if you can't tell me the
`different things that it means?
` A. It's not something I contemplated for
`purposes of this declaration.
` Q. So if you haven't contemplated it, how
`can you tell me that the word understand has
`different meanings?
` A. It's a vague term.
` Q. So you think the word understand is
`vague?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`18
`
` A. I don't understand -- I don't know how
`you are using it. I don't know what you mean by
`it.
` Q. I just -- I mean it in the plain and
`ordinary meaning of the term. Do you have an
`understanding of patent law? Do you have
`knowledge about patent law?
` A. That's not something I've contemplated.
` Q. How many patent applications have you
`drafted roughly?
` A. I don't recall.
` Q. Would you say more than a hundred?
` A. Yes.
` Q. Would you say more than 500?
` A. I don't recall.
` Q. So somewhere between a hundred and 500
`applications, maybe more?
` A. I don't recall the exact number.
` Q. But certainly more than a hundred?
` A. Yes.
` Q. Okay. So as somebody who has certainly
`drafted more than a hundred patent applications,
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`19
`
`you can't tell me whether you have an
`understanding of patent law?
` A. I still don't know how you are using
`that term. So I can't answer your question until
`you tell me what you mean by an understanding of
`patent law.
` Q. Do you have knowledge of patent law?
` A. What do you mean by knowledge?
` Q. Are you aware of legal-related matters
`with respect to patent law?
` A. What do you mean by legal-related
`matters?
` Q. Are you familiar with case law related
`to patent law?
` A. I know what case law is.
` Q. Are you familiar with any case law
`itself that relates to patent law?
` A. Yes.
` Q. Would you consider yourself
`knowledgeable about the case law that relates to
`patent law?
` A. I still don't understand how you are
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`20
`
`using that word.
` Q. I guess I don't understand how you don't
`know what the word knowledge means. So why don't
`you tell us your definition of the word knowledge
`in any context? And then we will see if that
`works for my question.
` A. That's not something I formed an opinion
`on.
` Q. Sitting here today right now, you can't
`tell me to you what the word knowledge means?
` A. I'm waiting for you to define it more
`clearly.
` Q. Well, I'm not asking for your opinion.
`I'm just asking -- I'm asking you what it means
`to you.
` A. It's not something I can define on the
`fly.
` Q. Have you used the term knowledge before?
` A. Yes.
` Q. How did you use it? How did you mean it
`when you used it?
` A. That depends on context. It can mean
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`21
`
`different things in different situations to
`different people at different points in time.
` Q. Take any time you used the word
`knowledge in any context and tell me the way you
`meant it.
` A. I can't think of a specific time off the
`top of my head.
` Q. You have opined in this case of the
`knowledge of a person of ordinary skill in the
`art, right?
` A. I have.
` Q. Okay. So would you define knowledge
`with respect to the knowledge level required for
`a person of ordinary skill in the art?
` A. I believe if you refer to my declaration
`on the 494 patent proceeding, paragraph 15.
` MR. BLOCK: Well, before we -- before we
`do that, why don't I -- why don't I just
`officially introduce each of these exhibits and
`then we can talk about this issue?
` So if the technician -- if, Alan, you
`could bring up the 494 declaration, which I think
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`22
`
`is Exhibit 2010. We can mark this as Exhibit 1
`to Doctor Borella's deposition.
` (Whereupon, Borella Deposition Exhibit
`1 was marked for identification and attached to
`the transcript.)
` MR. BLOCK: If we could scroll back up
`there a little bit, Jim -- Alan, if you can
`scroll down just a little bit so we can see the
`title of the document. Perfect.
`BY MR. BLOCK:
` Q. Doctor Borella, I have brought up on the
`screen and I believe you have in your hands right
`now Exhibit 2010 to IPR 2019-00823. Is that
`right?
` A. Correct.
` Q. And this declaration this is a
`declaration that you submitted in this
`proceeding?
` A. If you could hold on for one moment,
`Mr. Block, I need to check something. I'm going
`to need a side bar with Mr. Carmichael.
` MR. BLOCK: Absolutely. You should mute
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`23
`
`your -- mute your mic.
` Doctor Borella, just let me know when
`you are ready. I see you in front of the camera
`there, but you are still muted.
` (Thereupon, there was a recess taken at
`11:00 a.m.)
` (Thereupon, the proceedings were resumed
`at 11:14 a.m.)
` MR. CARMICHAEL: Dan, we are
`investigating this copy that you put in the box,
`because I think it might not be the right one.
`Now, if you look on the very last page, if you
`have the same copy that was in the box, if you
`look at the very last page, please.
` MR. BLOCK: Hold on. That is
`interesting. How is it we have a copy that is
`not signed?
` MR. CARMICHAEL: We are investigating
`that. My operating theory is that you got one
`copy from the electronic service from the PTAB
`which you should have used, and perhaps another
`copy we sent to you that we shouldn't have, in
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`24
`
`which case we want to claw it back as privileged
`and work product. But I need a few minutes to
`nail this down.
` MR. BLOCK: Okay.
` MR. CARMICHAEL: In the meantime, I
`would suggest that you avail yourself of the one
`that was actually filed and served electronically
`through the PTAB filing service.
` MR. BLOCK: Let me just make sure I
`understand what you are saying. Are you saying
`you may have served this version on us but filed
`a different version?
` MR. CARMICHAEL: I'm investigating that.
` MR. BLOCK: Okay.
` MR. CARMICHAEL: In the meantime, you
`should probably look at the one that was served
`on you through the PTAB automatic service system,
`or you can pull it off of the PTAB website if you
`want to.
` MR. BLOCK: Okay. Yeah. I see it on
`the PTAB website. All right. Yeah. I mean,
`that's -- well, let's see where things stand,
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`25
`
`because I -- the bottom line is if there are
`substantive differences between those two, I
`don't know if there are, there may not be, that's
`going to be problematic. So but -- well,
`continue your investigation.
` MR. CARMICHAEL: Okay.
` (Thereupon, there was a recess taken at
`11:16 a.m.)
` (Thereupon, the proceedings were resumed
`at 11:20 a.m.)
` MR. CARMICHAEL: Okay. Dan, can you
`hear me?
` MR. BLOCK: I can hear you.
` MR. CARMICHAEL: I investigated the
`service copy and it matches what we filed at the
`PTAB. It's a signed and dated version of Doctor
`Borella's declaration.
` Just now I reforwarded to you the
`service copy that we e-mailed to you and it will
`match the one that was served on you by the
`electronic system from the PTAB as well.
` Where you got this unsigned undated one
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`26
`
`is currently a mystery. But nonetheless, I'm
`objecting to its use as work product and propose
`that we will want to claw it back and not answer
`questions about it.
` We are prepared to have Doctor Borella
`be examined about the declaration that he
`actually signed and dated that was actually filed
`at the PTAB and that was actually served on you.
` MR. BLOCK: Right. Well, so I
`understand your position. I would agree to
`examine him on the new declaration that has his
`signature on it, the -- just for the purposes of
`making this deposition as efficient as possible.
` I'm not agreeing at this moment to
`clawing back. It's not like we obtained this
`declaration via any improper purposes. I'm
`certain that it was e-mailed to us in some
`fashion.
` There may have been some kind of mix-up.
`I'm not sure where we got it from either. But,
`you know, it certainly was from you. I think we
`can all agree there.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`27
`
` So I would like to do some more
`investigation on our side as well before I would
`agree to any kind of clawing back with respect to
`this deposition.
` That said, for purposes of just making
`today efficient and not delaying today's
`deposition any further, I'm willing to examine
`Doctor Borella on the declaration that you --
`that is signed.
` The only question I really have then is
`do you want to print it out? Does he have
`another copy? How do you want to handle the
`paper copy?
` MR. CARMICHAEL: He has a paper copy of
`the declaration that he actually signed and was
`filed and served.
` MR. BLOCK: Okay. Fair enough. Then
`since I can't really see what he has in front of
`him, does he have copy of all three so we are not
`wasting any more time?
` MR. CARMICHAEL: I think the other two
`in the box were fine.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`28
`
` MR. BLOCK: So it's just that one?
`Okay. Interesting.
` MR. CARMICHAEL: Yes.
` MR. BLOCK: All right. Yeah. Look, I'm
`willing to delay the conversation about the
`clawback to some later date once we figure out
`what exactly happened.
` I will tell you, having done a quick
`comparison myself, there are some differences
`between the two declarations beyond just missing
`signature. I'm not sure.
` We will have to look and investigate the
`circumstances on that. I don't know whether they
`matter or not, but that will be for a later date.
` MR. CARMICHAEL: Okay. And in case you
`need to print out the file copy, I just
`reforwarded to you the service e-mail.
` MR. BLOCK: I appreciate that. I was
`able to -- let me just make sure I have the --
`hold on a second. I was able to pull it off the
`PTAB's website. So hold on. Okay. Why don't
`we -- so what we need to do -- one second here.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`29
`
`I don't know how to get this --
` Alan, what -- can you send me an e-mail
`so I have your e-mail address? I need to forward
`you this document so that you can -- so that you
`can get the right document marked.
` AV TECH ROSS: This will be -- so this
`will replace Exhibit 1? I will put my e-mail
`address in the chat. You should be able to see
`it there. You can send me the file. I will just
`put that in there.
` I have to say there is a lot of feedback
`on the witness's audio feed. I don't know if
`it's making it difficult for the reporter to
`hear. If it is, I have to troubleshoot.
` THE REPORTER: Yes. It is making it a
`little difficult for me.
` AV TECH ROSS: While Mr. Block is
`sending that, Mr. Carmichael, are you able to
`hear me?
` (Thereupon, there was a recess taken at
`11:27 a.m.)
` (Thereupon, there was a technical issue
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`30
`
`discussion off the record.)
` (Thereupon, the proceedings were resumed
`at 11:29 a.m.)
` MR. BLOCK: Jim, we did do some
`investigating on our side. And it looks as
`though there was a service e-mail from Steve
`which is where we got this from.
` Again, we will still proceed, as we
`discussed. It was on February 19th is when we
`received that e-mail from Steve with the exhibit.
`But in any event, we will proceed as planned.
` I will just put on the record, you know,
`that we had a discussion, you know, we came to
`learn that we were using the wrong exhibit. We
`are still investigating how that came to be.
` In any event, we are going to be
`proceeding with what was filed at the PTAB.
`Sound good?
` MR. CARMICHAEL: Okay. So this is the
`incorrect Exhibit 1.
` MR. BLOCK: It should be up on the
`screen now. I see you are just talking to the
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`31
`
`witness. Yeah. Are we ready to proceed?
` MR. CARMICHAEL: Dan, it would be
`helpful if you would forward the e-mail in which
`you received the incorrect copy to help us
`straighten it out.
` MR. BLOCK: Yeah. In one of the breaks,
`I will take care of it, or I will have someone --
`I will have someone do it so you guys -- so you
`guys have it. Okay. If I don't do it, just
`remind me. I will send it to you.
` If it's that important, I think we are
`good, because we delete our e-mails after a
`period of time, but I think it should be coming.
`BY MR. BLOCK:
` Q. All right. Doctor Borella, are you
`ready?
` A. Yes.
` MR. BLOCK: Okay. Dianna, are you good?
`Welcome back, Doctor Borella. Counsel for Patent
`Owner informed me that we appear to be using a
`different version of your declaration than what
`was submitted to the PTAB.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`32
`
` We are investigating as to how we came
`into possession of that, and we will discuss that
`matter further with counsel for Patent Owner
`after this deposition.
` In the meantime, we have agreed off the
`record, but I will state it for the record, to
`use the declaration that you submitted to the
`PTAB.
` As I understand it, Alan has that up on
`the screen right now. I will just reintroduce
`this exhibit.
`BY MR. BLOCK:
` Q. So Doctor Borella, this is a document
`that is labeled Exhibit 2010 for a case IPR
`2019-00823. It is also titled Declaration of
`Michael S. Borella.
` Do you recognize this document?
` MR. CARMICHAEL: Dan, for housekeeping,
`can you show the last page to see if it is
`signed, this is the signed version?
` MR. BLOCK: Okay.
` Q. So Doctor Borella, do you recognize this
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`33
`
`document?
` A. I do.
` Q. And just so we are clear for the record,
`this is the declaration that you understood you
`had submitted in this proceeding. Is that right?
` A. Yes, it is. But from time to time, I
`will be verifying against the paper copy I have
`in front of me.
` Q. As I had mentioned, I think we -- I'm
`okay with you just using the paper copy, assuming
`that works for you, that you have in front of
`you.
` A few more housekeeping items; this
`proceeding IPR 2019-00823 relates to a Patent
`9,712,494. Is that correct?
` A. Yes.
` Q. And if I refer to that patent as the 494
`patent, you will understand that I'm referring to
`U. S. Patent Number 9,712,494?
` A. Yes.
` Q. And if I refer to this proceeding as the
`494 proceeding, you'll understand I'm referring
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`34
`
`to IPR 2019-00823?
` A. Correct.
` MR. BLOCK: Okay. Why don't we just
`bring up the other declarations right now? That
`way, we can all be sure we have the right
`document in front of them and I will continue on.
` So Alan I think if you could bring up
`Exhibit 2 that you had premarked before. And
`before you mark it, why don't you just go ahead
`and scroll down to the bottom? Okay. All right.
` (Whereupon, Borella Deposition Exhibit
`2 was marked for identification and attached to
`the transcript.)
` Q. Doctor Borella, you have in front of you
`an exhibit we have marked as Exhibit 2. This is
`also labeled Exhibit 2010 to case IPR 2019-00824.
`Do you recognize this document?
` A. Yes.
` Q. And this is the declaration that you
`submitted for that proceeding?
` A. It is.
` Q. And that proceeding IPR 2019-00824
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Doctor Michael S. Borella
`Conducted on May 18, 2020
`
`35
`
`relates to a U. S. Patent Number 9,712,502?
` A. Yes.
` MR. CARMICHAEL: Dan, excuse me. For
`the sake of a clear record, for these other two,
`would you mind showing the last page again?
` MR. BLOCK: Absolutely. Alan, if you
`can scroll down there. I thought we had done
`that earlier. But --
` MR. CARMICHAEL: Thank you.
` Q.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
