UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.
`Patent Owner.
`_________________________________________
`Case No. IPR2019-01612
`U.S. Patent 7,589,642
`
`Virtual Deposition of
`MICHAEL D. SPRENGER, Ph.D.
`Tuesday, September 15, 2020
`8:02 a.m. MST
`
`Job No.: 320996
`Pages: 1 - 250
`Reported by: Elisabeth A. Miller Lorenz, RMR, CRR
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`Roku EX1033
`Roku v. Universal Electronics
`IPR2019-01612
`
`
`________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`ROKU, INC.,
`Petitioner,
`v.
`UNIVERSAL ELECTRONICS, INC.
`Patent Owner.
`_________________________________________
`Case No. IPR2019-01612
`U.S. Patent 7,589,642
`
`Virtual Deposition of
`MICHAEL D. SPRENGER, Ph.D.
`Tuesday, September 15, 2020
`8:02 a.m. MST
`
`Job No.: 320996
`Pages: 1 - 250
`Reported by: Elisabeth A. Miller Lorenz, RMR, CRR
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
`
`2
`
` Virtual deposition of MICHAEL D. SPRENGER,
`Ph.D., taken pursuant to notice, before Elisabeth
`A. Miller Lorenz, Registered Merit Reporter, Certified
`Realtime Reporter, and a Notary Public in and for the
`state of Tennessee.
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`3
`
` A P P E A R A N C E S
`
`ON BEHALF OF PETITIONER:
` TIMOTHY L. TANG, ESQUIRE
` LESTIN KENTON, ESQUIRE
` Sterne Kessler
` 1100 New York Avenue, N.W.
` Washington, D.C. 20005-3934
` 202.371.2600
` ttang@sternekessler.com
` lkenton@sternekessler.com
`
`ON BEHALF OF PATENT OWNER:
` NICHOLAS T. TSUI, ESQUIRE
` THOMAS W. DAVISON, ESQUIRE
` BENJAMIN S. PLEUNE, ESQUIRE
` 1201 West Peachtree Street
` Suite 4900
` Atlanta, Georgia 30309
` 404.881.4962
` nick.tsui@alston.com
` ben.pleune@alston.com
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`4
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` A P P E A R A N C E S (Continued)
`
`ALSO PRESENT:
` Ashby Everhart, Audiovisual Technician
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
`
`5
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` C O N T E N T S
`EXAMINATION OF MICHAEL D. SPRENGER, Ph.D. PAGE
` By Mr. Tang 6
` By Mr. Tsui 242
`
` E X H I B I T S
`SPRENGER DEPOSITION EXHIBITS PAGE
` Exhibit 1 Declaration of Michael D. Sprenger 18
` Exhibit 2 '642 Patent 44
` Exhibit 3 '642 Patent, Mishra Reference 220
` Exhibit 4 '642 Patent, Rye Reference 230
` Exhibit 2100 Curriculum Vitae 242
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`6
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` P R O C E E D I N G S
` THE STENOGRAPHER: Will counsel please
`stipulate that in lieu of formally swearing in the
`witness, the reporter will instead ask the witness
`to acknowledge that their testimony will be true
`under the penalties of perjury, that counsel will
`not object to the admissibility of the transcript
`based on proceeding in this way, and that the
`witness has verified that he is in fact Dr. Michael
`D. Sprenger?
` MR. TANG: Yes.
` MR. TSUI: We agree.
`Whereupon,
` MICHAEL D. SPRENGER, Ph.D.,
`called as a witness herein, having first
`acknowledged under penalty of perjury, was examined
`and testified as follows:
` EXAMINATION BY COUNSEL FOR THE PETITIONER
`BY MR. TANG:
` Q Hi. How are you, Dr. Sprenger?
` A Good morning. Thank you. How are you?
` Q Good, good.
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`7
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` All right. Can you please state your
`full name for the record?
` A Yes. First name is Michael,
`M-I-C-H-A-E-L; middle name is Dominik,
`D-O-M-I-N-I-K; last name is Sprenger,
`S-P-R-E-N-G-E-R.
` MR. TANG: All right. So for the record,
`today's deposition is being conducted remotely. The
`witness, the court reporter, the examining attorney,
`and the defending attorney are all in different
`geographic locations and are conducting this
`deposition via video conference. The parties have
`stipulated that the witness may be sworn in
`remotely.
`BY MR. TANG:
` Q So, Dr. Sprenger, today's deposition is
`being conducted remotely; is that correct?
` A Yes.
` Q And are you in your personal residence
`right now?
` A I am.
` Q Is that in Colorado?
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`8
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` A Yes, it's in Boulder, Colorado.
` Q And can you describe your immediate
`environment for the record?
` A I am in our basement, which is the most
`quiet area in the house. You can see the dart board
`over my shoulder. It's sort of a hangout room for
`the kids, and I chose this, again, because we're
`undisturbed.
` Q And are you alone in the room right now?
` A I am alone in the room.
` Q Do you have any materials with you?
` A I have material -- the only material I
`have is my printed-out CV, which counsel instructed
`me to print out prior to the proceedings today.
` Q And so then do you have any extra notes
`that you prepared with you in advance of this
`deposition?
` A I do not. They're all in a separate
`room.
` Q And do you have any telecommunications
`devices currently enabled other than your laptop?
` A I have my mobile phone, which is on mute
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`Conducted on September 15, 2020
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`9
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`right now. It's about four feet away from me.
` Q And do you have any applications such as
`e-mail open or other web browsers?
` A Oh, I do. I still have the calendar open
`with the link and all the other things, the
`information about today's deposition.
` Q If you could, just close those. I think
`that would be helpful.
` A Absolutely. If you give me a moment,
`please, I'm going to just quit the application.
`Okay. Hang on. There's a spreadsheet open. Here
`we go. And a calculator. There. All right. Okay.
` Q So have you ever been deposed before?
` A I have, yes.
` Q About how many times?
` A Let's see. Once a number of years ago,
`about seven, eight years ago. More recently in a
`Markman hearing in January. And I'm thinking there
`might have been one more. I would have to think
`about it.
` Q So about a handful of times?
` A So say again, please.
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`Conducted on September 15, 2020
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`10
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` Q About a handful of times?
` A Yes, that's a good approximation.
` Q And so what types of cases were those
`related to?
` A The first case --
` MR. TSUI: Sorry, I just caution the
`witness not to disclose any confidential
`information, but, of course, you can answer the
`question.
` THE WITNESS: Thank you for the
`clarification.
` The first case was related to a
`fiberoptic transmission technology. The second case
`was regarding video rendering and video streaming in
`a consumer electronics environment. And there might
`have been another one. I don't recall at the
`moment.
`BY MR. TANG:
` Q So have you been deposed by video
`conference before?
` A No, this is the first time.
` Q So give me your previous deposition
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`11
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`experience.
` You are familiar with the deposition
`process, correct?
` A Yes, I am.
` Q All right. And so -- just so we're on
`the same page before diving into the subject matter,
`I just want to go over a few guidelines that I like
`to follow.
` So first, when I ask a question, just
`make sure you answer verbally so that the court
`reporter can record your answer.
` Is that okay?
` A Yes, that makes sense.
` Q And typically, I like to take a break
`about every hour or so.
` Does that sound reasonable to you?
` A That will work very well for me. Thank
`you.
` Q And if you need a break before that time,
`just let your attorneys know, and we'll do our best
`to find a convenient stopping point for you.
` A Okay. Will do that.
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`12
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` Q And I guess before we just take any
`breaks, if there's a pending question, I just ask
`that we finish the answer to the question before we
`go on break.
` Is that okay?
` A Yes, this makes sense.
` Q And just so we're clear, even though
`we're remote, we'll still be treating this as if we
`were in the same room. So all the same restrictions
`and requirements would also apply here.
` Does that make sense?
` A Yes, that makes sense.
` Q And to be more specific on that, you
`understand that you're not allowed to pass notes or
`any other documentation with counsel during this
`deposition, correct?
` A I understand that, yes.
` Q And for the record, that means -- notes
`include electronic means such as communications via
`phone or laptop, correct?
` A Yes, that makes sense.
` Q So, Dr. Sprenger, is there any reason
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`Conducted on September 15, 2020
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`13
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`that you would not be able to provide a full,
`complete, and accurate testimony here today?
` A I cannot think of any.
` Q So you understand that you're here today
`to testify regarding the declaration you submitted
`for inter partes review proceeding IPR2019-01612
`regarding the U.S. Patent No. 7,589,642, correct?
` A That is correct, yes.
` Q You have submitted declarations in two
`related proceedings, which are IPR2019-01613
`regarding U.S. Patent No. 8,004,389; and the other
`proceeding being IPR2019-01614 regarding U.S. Patent
`No. 9,911,325; is that correct?
` A Yes, these are both correct.
` Q So for ease of discussion throughout
`this -- the depositions this week, would it be okay
`if I refer to the three patents as the '642, '389,
`and the '325 patents respectively?
` A Yes, that makes sense.
` Q And so just so you're aware, we'll focus
`today on the '642 patent, but your testimony will be
`applicable and submitted in each of the proceedings
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`Conducted on September 15, 2020
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`14
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`I previously mentioned.
` Do you understand?
` A Yes, I understand.
` Q So before we dive into the subject
`matter, can you tell me what you did to prepare for
`your deposition today?
` A I reviewed my declaration, and I reviewed
`some of the -- I reviewed the related patents, and I
`reviewed the secondary sources.
` Q Which secondary sources are you referring
`to?
` A Secondary sources, I meant the prior art.
`I think that's the proper expression. Really, the
`patents, we internally refer to them as Mishra, Rye,
`Caris, Dubil, and Skerlos.
` Q And so about how long do you -- like how
`much time did you spend, in estimate, in total
`preparing for these depositions?
` A When you say that, do you mean over the
`past days and weeks?
` Q Yes.
` A Not -- not just from yesterday to today?
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`Transcript of Michael D. Sprenger, Ph.D.
`Conducted on September 15, 2020
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`15
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` Q Correct.
` So for -- in the past two weeks, we'll
`say, how much time did you spend?
` A I am hard pressed to answer that. I
`would have to guess, or I could look at the time
`sheet I submitted. So -- so -- sorry.
` Q Yeah.
` Do you have a rough estimate?
` A A few dozen hours.
` Q And when were you first approached by UEI
`to provide declaratory evidence for this proceeding?
` MR. TSUI: I'll caution the witness not
`to disclose the substantive communications. You can
`give the date if you remember.
` THE WITNESS: Thank you.
` To the best of my knowledge, we had our
`first contact -- I think it was very late last year,
`end of 2019. I don't recall the exact date.
`BY MR. TANG:
` Q And do you recall who approached you
`first?
` A Not at the moment. I don't recall the
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`Conducted on September 15, 2020
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`16
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`first phone call we had with -- or who was on the
`first phone call. It was somebody from Alston &
`Bird. I don't remember his name at the moment. I'm
`sorry.
` Q So how much time did you spend preparing
`your declarations themselves?
` A Again, in terms of number of hours I put
`in?
` Q Yes.
` A Or -- okay. That's not easy for me to
`answer. This was done over a period of many weeks,
`and I'm not sure at the moment how much time on
`average I spent per day.
` Q Did you personally draft the
`declarations?
` A Counsel provided a template with the
`structure and the general outline of the
`declaration, and there were -- some legal portions
`were filled in already. And I wrote all of the
`technical material, so -- I did not type every
`single word in the deposition -- in the declaration,
`excuse me.
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`Conducted on September 15, 2020
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`17
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` But now I own the document. We went
`through an extensive edit and review cycle.
` Q So in preparing the declaration, did you
`speak to anyone else other than your attorney?
` A I did not.
` Q All right. So now I think we're ready to
`jump into the '642 declaration. So if you have that
`handy, please feel free to pull that out.
` A So I have the box here that you shipped.
` Q Yes. I'm not sure how we marked them,
`but this will be your '642 declaration.
` A If you give me just a moment to find the
`correct document.
` Q Sure.
` MR. TANG: For the Planet Depos
`technician, this will be Exhibit 2003, if you can
`just pull that up on the screen.
` THE TECHNICIAN: Got it. Thank you.
` THE WITNESS: Okay. I have the document
`here.
`BY MR. TANG:
` Q I guess we'll start --
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`18
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` MR. TANG: Can we just mark this as
`Deposition Exhibit 1?
` (Marked Exhibit No. 1.)
` MR. TANG: Planet Depos, we're okay with
`that and everything too?
` THE TECHNICIAN: Yes, sir.
`BY MR. TANG:
` Q Dr. Sprenger, the document you have in
`front of you now and what we have on the screen
`here -- if you can just scroll down a little bit --
`a little bit more -- is titled Declaration of
`Dr. Michael D. Sprenger in Support of Patent Owner's
`Response to Petition for Inter Partes Review of
`U.S. Patent No. 7,589,642.
` Do you see that?
` A Yes, I see that.
` Q This is the same document that you have
`in front of you now, correct?
` A Yeah. The first page appears to be the
`same.
` Q So can you flip through the document just
`to confirm what you have in front of you is the
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`correct and accurate copy of what you submitted?
` A Yes. If you give me just a moment,
`please.
` Q Sure.
` A Okay. To the best of my abilities, I
`would say this is identical.
` Q And on the last page, can you confirm
`that that's your signature?
` A This is my signature indeed.
` Q So this document contains your true and
`correct opinion as far as it relates to the '642
`patent; is that correct?
` A That's correct, yes.
` Q And sitting here today, are you aware of
`any errors or corrections that need to be made to
`this document?
` A I'm not aware of anything.
` MR. TANG: So I think we can pull that
`down from the screen now.
`BY MR. TANG:
` Q So let's turn first to Paragraph 20 of
`your declaration.
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`Conducted on September 15, 2020
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`20
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` A I'm looking at Paragraph 20 right now.
` Q And so in Paragraphs 20 and 21, you list
`several documents that you say you reviewed in
`preparing the declaration.
` Are there any other documents that you
`reviewed?
` A Let me quickly read to make sure I get
`the context and everything else.
` Q Please.
` A Yes, these are the documents I reviewed.
` Q Great.
` So now I'd like to turn to Paragraph 8.
` A I have Paragraph 8 here.
` Q So in Paragraph 8, it says you have over
`30 years of experience in engineering communications
`and consumer electronics, and then it lists several
`of the subject matters that -- that you're familiar
`with.
` Did you work with any remote controls in
`your 30 years of experience?
` A Yes, I have, quite extensively so. In my
`20-plus years in the telecom space, I worked for a
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`Conducted on September 15, 2020
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`21
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`number of telecommunications providers and network
`operators, all of which provided video services in
`various form from the early forms of what we call
`IPTV back in the day to -- excuse me -- excuse me --
`IPTV back in the day to more recent forms that are
`called OTT over the stop -- over-the-top video
`streaming. All of these technologies and products
`and services involved remote controls.
` Remote controls were viewed as very
`important because these are some of the devices that
`are essentially customer facing, and the customer
`interacts with using a remote control with the
`services that we provided. So the remote control
`and the associated graphical user interface on the
`TV was seen as very important.
` Q So then did you design any remote control
`programming systems?
` A I did not personally design a remote
`control that was going into production, in case you
`mean that. We did some experimental setups that
`were used for internal testing, try things out, some
`cases demonstration. We typically call that a
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`sandbox environment.
` But I have very intimate knowledge of
`remote controls, the associated circuit technology,
`the kind of programming that's involved in making
`remote controls work, as well as the various
`protocols that are used in infrared and RF --
`infrared and RF remote controls.
` Q So I think I heard you mention the IPTV
`project, and I think you talk about that later on in
`Paragraph 12, I believe.
` Can you tell me about that project?
` A Yes. In the earlier days -- and I'm
`talking approximately 20 years ago, in the very
`early 2000s -- essentially all of the telecom
`operators were engaged in this kind of project.
` IPTV stands for providing TV service over
`the internet -- over an internet protocol. This is
`slightly different from the kind of video streaming
`that most consumers take advantage of today.
` Back then, the only way to really
`feasibly and reliably do this was to have a network
`operator provide the internet connectivity as well
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`as the video service as such. So this would have to
`be a combined offer to really make this work from a
`perspective of retaining the desired quality for the
`end consumer.
` Q So -- so you're -- you're referring to
`streaming video there.
` What device received that within the
`consumer's home?
` A In the consumer's home, there would
`typically be a set-top box, a consumer set-top box
`that our end users or our subscribers, as we call
`them, would then be interacting with the set-top box
`via remote control and some form of what we call
`EPG, an electronic program guide, which is part of
`overall a GUI, a graphical user interface.
` Q Did the company that you worked for, did
`they provide those set-top boxes?
` A They did not. The network operators
`typically would procure set-top boxes from equipment
`manufacturers or we call them equipment vendors.
`Sometimes a vendor would not necessarily manufacture
`every piece of the hardware.
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` So we typically specified the exact
`requirements that our set-top box or boxes had to
`fulfill, in terms of functionality, in terms of
`potentially a road map for further upgrades, and
`potential -- in terms of power requirements, heat
`dissipation, interface, and, of course, also the
`remote control.
` Q You're saying you had to design the
`remote control for that manufacturer.
` A Sorry, can you repeat the question,
`please?
` Q Sure.
` So you're saying you had to design the
`remote control for the manufacturer.
` MR. TSUI: Object to form.
` THE WITNESS: No, this was perhaps a
`misunderstanding. We did not design the remote
`control. We specified all the requirements that
`would go into a design. We would specify typically
`interfaces that would come into play, the protocols
`that are used, that's true, for the remote control,
`as well as protocols for services or signals that
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`would go into and out of the set-top box.
`BY MR. TANG:
` Q So providing those specifications, the
`manufacturer put the remote control together.
` A So you -- you dropped out for just a
`brief moment. I could only understand part of the
`question.
` Q Sure.
` So -- so you provided the specifications
`to the manufacturer, and the manufacturer designed a
`remote control to your specifications; is that
`correct?
` MR. TSUI: Object to form.
` THE WITNESS: That's correct, yes.
`BY MR. TANG:
` Q And do you know if any of those remote
`controls were programmable?
` A I don't recall at the moment. We -- we
`did look at a huge range of remote controls,
`including some of the more upscale services. When I
`say upscale, I mean more elaborate in terms of the
`kind of service offerings that typically would have
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`the more capable remote controls associated with
`them.
` I do believe that some of these were
`programmable to some extent, but I don't recall any
`details.
` Q So I'd like to turn now to Paragraph 14
`of your declaration.
` A Paragraph 14, yes.
` Q Yes.
` This relates to your work at CableLabs;
`is that correct?
` A Let me quickly look at the declaration to
`confirm.
` Q Yes, please.
` A Yes, that's correct.
` Q And so at CableLabs, did you work on
`fiberoptic cables?
` A I did. We -- I was instrumental in
`setting up a new fiberoptic lab for testing and
`development of new fiberoptic transmission
`technologies.
` Q And were these wired or wireless
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`technologies?
` A These are wire technologies.
` Q So then did you conduct any wireless
`communications research at CableLabs?
` A At CableLabs, I did not.
` Q So now I'd like to turn to Paragraph 29
`of your declaration.
` A Let me quickly read to make sure I
`understand the context.
` Q Sure.
` A Yes, go ahead, please.
` Q So this is in a section entitled Legal
`Principles; is that right?
` A Let me go back real quick to confirm.
` Q Sure.
` A Yes, that's correct.
` Q And Paragraph 29 is under the subheading
`called Anticipation, right?
` A That's correct, yes.
` Q And now I'd like to turn to Paragraph 31.
` A Okay. Okay. I'm looking at 31.
` Q And that is under a subheading called
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`Obviousness, right?
` A That's correct.
` Q So what is your understanding of the
`difference between anticipation and obviousness?
` A I'm not sure I opined on that in my
`declaration. This is -- I'm able to offer technical
`opinions on technical matters. I'm unable to offer
`opinions in the matter of the law.
` Q So then did you not consider the
`difference between anticipation and obviousness when
`performing your analysis?
` A I did so in a general sense as it's --
`you know, would make sense to a layperson and the
`law such as myself.
` Q In a general sense, how did you
`distinguish obviousness from anticipation?
` A Give me a moment, please, to think about
`this.
` Q Sure.
` MR. TSUI: I'll just object to the extent
`it calls for a legal conclusion.
` THE WITNESS: Sorry, I did not hear the
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`last comment.
` MR. TSUI: I was just objecting.
` THE WITNESS: Oh, okay.
` MR. TSUI: If you didn't hear it, it was
`an objection to the extent it calls for a legal
`conclusion.
` THE WITNESS: So it says here in
`Anticipation -- this is Section B -- As properly
`construed is either found explicitly or inherently
`in a prior art reference.
` Then under Obviousness, if a prior art
`reference or references -- if it would have been
`obvious to a person of ordinary skill in the art at
`the time of the alleged invention, taking into
`account the scope and content of prior art, the
`differences between prior art and the claims, the
`level of ordinary skill in the art, and any
`so-called secondary considerations of
`nonobviousness.
`BY MR. TANG:
` Q So if I heard you correctly, you said
`that the -- one of the differences is that inherency
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`is implied under Anticipation.
` Did I hear that correctly?
` MR. TSUI: Object to form and
`mischaracterizes.
` THE WITNESS: Could you repeat your
`question, please?
`BY MR. TANG:
` Q Sure.
` If I heard you correctly, it sounded like
`you said inherency was under the subheading of
`Anticipation; is that correct?
` MR. TSUI: Same objection and calls for a
`legal conclusion.
` THE WITNESS: That's what it says here
`in -- in Section B under Anticipation.
`BY MR. TANG:
` Q And so can I turn you to Paragraph 4 of
`your declaration?
` A Sorry, say the number again, please.
` Q Sure. Paragraph 4.
` A 4, yes. I'm looking at Paragraph 4.
` Q And so you've provided a table here that
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`says the basis of each of these three grounds is
`obviousness.
` Do you see that?
` A I see that, yes.
` Q There's nothing you want to change about
`this table; is that correct?
` MR. TSUI: Object to form.
` THE WITNESS: I don't want to change
`anything.
`BY MR. TANG:
` Q So based on this table, what you've
`written here, you applied obviousness to your
`analysis; isn't that correct?
` MR. TSUI: Object to form.
` THE WITNESS: Based on the table, yes.
`BY MR. TANG:
` Q So I'd like to turn to Paragraph 31 now.
` A I'm looking at 31.
` Q All right. And you have a bullet point
`in the middle of this paragraph that starts with
`No. 4 that says that you considered any so-called
`considerations of nonobviousness.
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` Do you see that?
` A No. 4, any so-called secondary
`considerations of nonobviousness, yes.
` Q And you didn't determine that any
`secondary conditions existed here; is that right?
` MR. TSUI: Object to form.
` THE WITNESS: I'm not sure I understand
`the question.
`BY MR. TANG:
` Q Did you consider any secondary conditions
`when analyzing the condition?
` A When you say secondary conditions,
`meaning secondary considerations?
` Q Yes, consideration.
` A As in -- okay. I'm still not sure I
`understand the question. I'm sorry.
` Q So -- well, looking at Paragraph 31,
`right, you have any so-called secondary
`considerations of nonobviousness, and then you list
`a few examples, I believe, after that.
` Do you see that?
` A I see that, yes.
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` Q So did you make any analysis related to
`those factors, we'll say, in your analysis?
` A I did, yes.
` Q Can you tell me which ones?
` A Not specifically. They're -- at this
`point. They're all in the declaration, so we would
`have to go through case by case.
` Q I'd like you to now turn to Paragraph 32,
`and if you'd like to review that as well, please
`feel free.
` A 32, yes.
` Q So in this paragraph, you say that to
`combine two references there must be a reason to
`combine the references, right?
` MR. TSUI: Object to form.
` THE WITNESS: Sorry, there was a brief
`audio dropout on my side. If you could restate the
`question, please.
`BY MR. TANG:
` Q Sure, sure.
` So in this paragraph, you say that to
`combine two references there must be a reason to
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`combine the references,
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