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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` _________________________
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` - - - - - - - - - - - - - - - - - - - - - - -
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` APPLE INC.,
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` Petitioner,
`
` v.
`
` RFCYBER CORP.,
`
` Patent Owner.
`
` Patent No. 10,600,046
`
` Case No. IPR2022-01239
`
` - - - - - - - - - - - - - - - - - - - - - -
`
` VIDEOCONFERENCE DEPOSITION OF
`
` GERALD WILLIAM SMITH
`
` Thursday, May 11, 2023
`
`Reported by:
`
`SUSAN ASHE, CSR, RMR, CRR
`
`Job No.: SY007187
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 001
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`
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` _________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` - - - - - - - - - - - - - - - - - - - - - - -
`
` APPLE INC.,
`
` Petitioner,
`
` v.
`
` RFCYBER CORP.,
`
` Patent Owner.
`
` Patent No. 10,600,046
`
` Case No. IPR2022-01239
`
` - - - - - - - - - - - - - - - - - - - - - -
`
` VIDEOCONFERENCE DEPOSITION OF
`
` GERALD WILLIAM SMITH
`
` Thursday, May 11, 2023
`
`Reported by:
`
`SUSAN ASHE, CSR, RMR, CRR
`
`Job No.: SY007187
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 001
`
`
`
`Page 2
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` _________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - - - - - - - - - - - -
`
` APPLE INC.,
`
` Petitioner,
`
` v.
`
` RFCYBER CORP.,
`
` Patent Owner.
`
` Patent No. 11,018,724
`
` Case No. IPR2022-01256
`
` Videoconference deposition of GERALD
`
`WILLIAM SMITH, taken remotely on behalf of the
`
`Patent Owner, beginning at 9:28 a.m. Eastern
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`Daylight Time, on Thursday, May 11, 2023, via Zoom,
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`before Susan Ashe, CSR, RMR, CRR.
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`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 002
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`Page 3
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`APPEARANCE OF COUNSEL:
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` On behalf of the Petitioner:
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` ERISE IP, P.A.
`
` BY: PAUL R. HART, ESQ.
`
` 5299 DTC Boulevard, Suite 1340
`
` Greenwood Village, Colorado 80111
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` (913) 777-5600
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` paul.hart@eriseip.com
`
` (Via Videoconference)
`
` On behalf of the Patent Owner:
`
` FABRICANT LLP
`
` BY: RICHARD COWELL, ESQ.
`
` 411 Theodore Fremd Avenue
`
` Suite 206 South
`
` Rye, New York 10580
`
` (212) 257-5797
`
` rcowell@fabricantllp.com
`
` (Via Videoconference)
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`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 003
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`
`
` CONTENTS
`
`THE WITNESS
`
`Gerald William Smith
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`Page 4
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` BY MR. COWELL 5, 115
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` BY MR. HART 110
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` THURSDAY, MAY 11, 2023;
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` 9:28 A.M. EASTERN DAYLIGHT TIME
`
` --o0o--
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` All counsel present stipulate
`
` that the witness shall be sworn remotely
`
` by the court reporter.
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` * * *
`
`Whereupon,
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` GERALD WILLIAM SMITH
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` having been first duly sworn, was examined
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` and testified as follows:
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` EXAMINATION
`
`BY MR. COWELL:
`
` Q Good morning, Mr. Smith.
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` A Good morning, Rich. I hope things are
`
`well in your part of the woods.
`
` Q Thank you.
`
` Can you state your full name for the
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`record.
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` A Sure. It's Gerald, with a "G" as in
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`"golf"; William, middle name; Smith, last name.
`
` Q Thank you.
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` And have you been deposed before?
`
` A I have.
`
` Q How many times?
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`212-400-8845 - Depo@TransPerfect.com
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`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 005
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` A I'd say in my life, probably this is the
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`fourth one.
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` Q Okay. And one of those times was in a
`
`different proceeding regarding RFCyber's patents.
`
` Is that right?
`
` A Yes, yes. The previous one was RFCyber.
`
`Yes, sir.
`
` Q Can you tell me, what were the other
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`two?
`
` A There was a Security Exchange Commission
`
`and a Department of Justice, as I remember it.
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` Q The only time you've been deposed in a
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`patent case before is in that other RFCyber case.
`
`Right?
`
` A That's correct -- yes. Yes.
`
` Q All right. So why don't we just go over
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`the ground rules very quickly.
`
` Today you understand you're here to
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`provide full and truthful testimony?
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` A Correct. On the '724 and the '046, is
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`my understanding.
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` Q Okay. You understand that I'll ask
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`questions and you'll answer them. Correct?
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` A Correct.
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` Q Okay. If at any point you don't
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`
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`understand one of my questions, please let me know
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`Page 7
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`and I'll do my best to rephrase it or clarify it.
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` But if you do answer, I'll assume you
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`understood.
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` Is that fair?
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` A Correct. Yes, that's fair.
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` Q Okay. From time to time, your counsel
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`may object. Unless he instructs you not to answer,
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`however, you still have to answer my question.
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` Is that understood?
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` A Understood.
`
` Q Okay. If at any time you'd like to take
`
`a break, just let me know.
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` But if there's a pending question, I'll
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`ask that you answer it before we go on a break.
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` Is that fair?
`
` A Yes, that's fair.
`
` Q Okay. Are you on any medications today
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`that would prevent you from giving full and truthful
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`testimony?
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` A No, sir.
`
` Q Okay. Is there any other reason you
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`can't give full and truthful testimony today?
`
` A Not to my knowledge.
`
` Q How did you prepare for today's
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`
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`deposition?
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` A I reviewed the declarations and some of
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`the source material prior to today's meeting, since
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`it was written more than a year ago, so just to try
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`to refamiliarize myself to the level I can --
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`though, I....
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` Don't be surprised if I ask for further
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`clarification, since I'm used to delivering right
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`after preparing, in many cases -- not in a legal
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`sense.
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` But that's how I prepared: I reviewed
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`the declarations.
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` Q Okay. Did you meet with anybody to
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`prepare?
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` A I did coordinate with counsel.
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` Q Okay. And how long did you meet with
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`counsel?
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` A It's in terms of -- a few hours.
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` Q Okay. Was that Mr. Hart?
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` A Yes.
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` Q And was anybody else present?
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` A There were from time to time. The names
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`escape me at the moment.
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` But Paul was in, and there was my
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`principal point of contact.
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` Q Were there any nonlawyers that you met
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`Page 9
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`with?
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` A Not to my knowledge.
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` Q Did you meet with anyone from Apple?
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` A No.
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` Q Have you provided declarations in other
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`IPR proceedings before?
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` A I have.
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` Q About how many?
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` A I'm trying to do the math. Probably a
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`dozen by now, over my 30-plus year career in IP
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`matters.
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` Q Have you ever testified in court?
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` A No; never gotten that far.
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` Q Have you ever provided an opinion where
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`you opined that a patent was valid?
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` A No, I have not -- to my knowledge, I
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`have not.
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` Q Where do you work currently?
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` A I currently work in -- that's a complex
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`question.
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` I'm principally a consultant for the
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`Homeland Security, Transportation and Security
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`Administration, where I manage a very large
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`credential program.
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`TransPerfect Legal Solutions
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`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 009
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` And I do my own work in terms of smart
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`card diagnostics and the like in a company I formed
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`called Generic Smart Cards LLC, which is how I'm
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`represented -- I'm linked up with Paul today.
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` Q Can you tell me what kind of work you do
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`for Homeland Security or TSA?
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` A Sure, sure. I am the principal
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`consultant on a identity biometrically enabled smart
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`card that we've been issuing since 2007. And
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`it's -- every day is a -- its own unique challenges.
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` But that's what I do.
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` I don't make policy. I don't run
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`anything operationally, that sort of thing.
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` But I'm a principal consultant based on
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`my extensive background in smart cards, standards,
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`things like GlobalPlatform -- things like that.
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` Q You use GlobalPlatform in your work for
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`Homeland Security?
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` A I do, yeah. It's just shy of an
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`international standard.
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` The organization hasn't elected to run
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`down that track, but it's a widely used framework.
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` Q All right. What do you do for Generic
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`Smart Cards LLC?
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` A Mostly I build diagnostic equipment,
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`which are host to smart card, smart card to host,
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`usually direct communications trying to either debug
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`the card, the reader, the host, or everything -- all
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`the above.
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` Q All right. So you make equipment that
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`performs diagnostics on smart cards.
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` Did I understand that right?
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` A That's correct, right.
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` And those are based on different
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`platforms, yes -- on the host side.
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` Q Where are you today, physically?
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` A Yes. I -- I moved recently. I'm in
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`Sarasota, Florida, near St. Armands. Okay?
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` Q How long have you been working as a
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`consultant for Homeland Security?
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` A Coming up on 20 years -- well, I
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`actually joined in 2007.
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` Q 2007. So, about 16 years.
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` Is that right?
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` A 16 years -- yeah, 16 plus. Maybe it
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`feels like 20. I don't know, yeah.
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` Q Do you do any work with mobile payments
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`for Homeland Security?
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` A I do not. I got out of the payment
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`industry before that. This is more identity space.
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` Q When did you get out of the payment
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`industry?
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` A I'm computing the math here....
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` Well, at least 2003.
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` And based on some other roles in between
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`before joining Homeland, I would say up to about
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`2005, I'd say.
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` I keep an interest in it because every
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`once in a while they do something interesting over
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`there. But I wouldn't say that was my -- that has
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`been my focus since about 2005.
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` Q Okay. So since 2005, you've haven't
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`been in the payment industry.
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` Is that correct?
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` A I have not, no. I wasn't representing
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`anybody in the payment industry, also. Right.
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` Q You understand we're here today for a
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`deposition in regards to two different IPR
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`proceedings.
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` Is that right?
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` A That's correct.
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` Q And one of those is IPR2022-1239.
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` Is that right?
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` A Yeah. I know them as referencing patent
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`numbers.
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`Page 012
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` But give me a second, if you would. I
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`just want to make sure I've got that.
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` That would be on the -- each page, I
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`would think.
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` Q Yeah.
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` A Okay.
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` (Witness reading.)
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` A Yeah, the -1239 -- yes, that's one of
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`them. That's the -- what, the '046 matter, yes.
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` Q Right. That was my next question.
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` The -1239 proceeding is regarding
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`U.S. Patent No. 10,600,046.
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` Is that right?
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` A That's what the cover page says and
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`that's what I opined against, yes.
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` I'm just double-checking that, going to
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`the cover page....
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` Yes, 10,600,046.
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` And we've already stated the IPR number.
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`Yes, sir.
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` Q Is it okay if I refer to that as the
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`"'046 patent" going forward?
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` A Yes. I actually would prefer that,
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`because that's kind of how I think.
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` Q Okay. And then we're also here in
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`RFCyber's Exhibit No. 2003, IPR2022-01239
`Page 013
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`
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`regards to IPR2022-1256. Correct?
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` A Yes. I'm pulling that up now on the --
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`Acrobat.
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` (Pause.)
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` A -1256, yes. -01256, yes.
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` Q Okay. And that IPR-1256 is regarding
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`U.S. Patent 11,018,724.
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` Is that right?
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` A That's correct. That's what I have.
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`Yes.
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` Q All right. And then is it okay if refer
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`to that patent as the "'724 patent" going forward?
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` A Yes, please.
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` Q You've been looking at things on your
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`screen. Can you tell me what documents you have
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`before you.
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` A Yes. Right now I have the '046, which
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`we just mentioned, and the '724.
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` And that's all I have in front of me at
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`the moment.
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` Q Okay. What applications do you have
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`open on your computer right now?
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` A Oh, I have Adobe Acrobat; this
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`application, which is a Zoom application; and I have
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`my Google email open.
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`Page 014
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` But I can close that or whatever you
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`need in that regard.
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` Q Yeah, if you could close your Google
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`email that would be preferable.
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` A Yes, I will do that right now.
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` Signing out.... It's always slow.
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` And I closed the browser as well.
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` Q Great.
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` A So it's just Adobe and Zoom, is what I
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`have open now.
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` Q Okay. And do you have any folders open
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`with the materials from this case?
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` A I can get to them. But at this point,
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`no.
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` I just opened the two declarations.
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`Because I felt that was -- we'd be talking about
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`those. So that's where I started.
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` Q All right. But I understand you do have
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`copies of the files from this case. Correct?
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` A As I understand it, I have the complete
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`record, is what I've been advised.
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` And based on the references and
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`everything else -- again, did a lot of that work a
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`year ago -- I believe I have a complete record.
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`Yes, sir.
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` Q Okay. And the copies you have, are
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`those clean copies or do they have annotations or
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`notes or anything of that sort?
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` A The ones I have in the complete
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`record -- I didn't look at every one, it's 300
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`megabytes per matter -- but my understanding is
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`they're all clean copies.
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` Q Okay. If you do happen to open
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`something that has notes or annotations, would you
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`please tell me?
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` A Will do. Absolutely.
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` Q Okay. We just talked about
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`declarations. So in both of these two proceedings,
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`you submitted a declaration.
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` Is that right?
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` A That's correct.
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` Q And starting with the declaration
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`regarding the '046 patent, are all of your
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`obviousness opinions for the '046 patent included in
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`your declaration?
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` A The short answer is yes.
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` Q Okay. Is there a long answer?
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` A No, no. I always have to think about
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`things. I'm trying to shut my professor brain down.
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` Q Okay. And then turning to the other
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`proceeding regarding the '724 patent, are all of
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`your obviousness opinions regarding the '724 patent
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`included in your declaration for the -- that
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`proceeding?
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` A Yes.
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` Q And each of your declarations cites to
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`evidence for your opinions. Correct?
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` A Yes.
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` Q And do your declarations cite all the
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`evidence you relied on to arrive at your opinions in
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`those declarations?
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` A I would say almost.
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` There's also my direct experience as a
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`40-year smart card expert.
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` But as far as trying to verify or
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`justify a particular element, I'd say that it's
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`mostly yes -- other than, yes, I am a smart card
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`expert.
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` Q Okay. All the documents on which you
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`relied are cited within your declarations.
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` Is that right?
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` A Absolutely.
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` Q Who hired you to work on this case?
`
` A Who hired me?
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` Q Yes.
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` A ERISE IP retained me as Generic Smart
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`Page 18
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`Cards.
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` Q And when were you retained to work on
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`this case?
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` A Paul would know that probably better
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`than me, and I could look it up.
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` But I'm thinking a year, a year and a
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`half ago, just in rough terms.
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` Q Okay. And -- well, have you been
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`retained in connection with any district court
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`litigation regarding RFCyber?
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` A I had in the past with -- I believe it
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`was Samsung.
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` Q Are you currently under retainer to work
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`in connection with district court litigation
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`regarding RFCyber?
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` A Just what -- this matter we're talking
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`about today.
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` Other than that, no, I have no
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`obligations.
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` Q I'm sorry. I think I may have gotten
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`garbled there.
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` Are you currently retained to work in
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`the district court litigation, not the IPRs,
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`regarding RFCyber?
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` A I know I'm retained for the IPR.
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` I think I can go beyond that, but I have
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`to check with the contract language.
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` Q Did you conduct a prior art search in
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`connection with this case?
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` A I generally do on all matters before I
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`even begin. I want to make sure that I have, you
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`know, enough capability and skill sets to be -- you
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`know, to add value.
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` So I did some background searches, yes.
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` Q Roughly, when was that?
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` A Oh, that was some time ago. I would
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`say, again, what -- not -- usually it's right after
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`I get retained, I tend to start with a search of
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`prior art.
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` Again, my experience helps direct me to
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`look at this or that.
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` Q So roughly about 12 to 18 months ago?
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` A Yeah, I'd say that's a reasonable time
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`frame.
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` Q Okay. And why did you perform a prior
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`art search?
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` A It's just part of my nature of how I
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`learn my role as -- I don't know if it's correct or
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`not -- as my role as an expert witness is, you're
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`going to deal with a matter, who's also has thought
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`about these ideas either partially or completely.
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`So it's just a part of my behavior.
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` Q How much time did you spend on the prior
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`art search?
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` A I usually don't spend that much, but I
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`would say under a week, even more -- it might be
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`more -- eight to ten hours, just to get a feel for
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`the material.
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` So -- and again, it wasn't to get --
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`drill down on any claim element or anything. It was
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`just -- it was more of a competence kind of thing
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`and knowing how rich the field is in a particular
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`technology area.
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` Q Did you locate the references that you
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`used in your declarations?
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` A Some of them, yes.
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` If not, having worked directly on things
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`like GlobalPlatform.
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` That was an easy one.
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` Q Did you yourself formulate the grounds
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`on which you opine in your declarations?
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` A I assisted.
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` I contributed to say grounds, yes.
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` Q Okay. Let's turn to the -1239
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`proceeding, which is on the '046 patent.
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` A Yes, sir.
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` '046, okay. I'm at the cover page at
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`this point.
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` Q Okay. And there's three grounds of
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`invalidity presented in the '046 petition. Correct?
`
` A Yeah, I'm getting there now.
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`There's....
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` (Pause.)
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` A Yes, opinions regarding one, two, and
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`three.
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` I thought we had four in this one.
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` We're talking about the '046. Right?
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` Q Correct.
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` A Maybe I don't completely understand your
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`meaning, but -- let me see, maybe go to -- a little
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`further down, if I could.
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` (Pause.)
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` A Maybe you can point me into the
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`declaration where I should look.
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` There's my qualifications.
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` (Pause.)
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` A I'm getting there.
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` Q Well, maybe I'll ask it a different way.
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`I don't know that you have it laid out in grounds in
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`your --
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`Page 22
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` (Court reporter request for clarity.)
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` MR. COWELL: Oh, I'm sorry.
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` (Court reporter request for clarity.)
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` MR. COWELL: Sure -- well, I'm not sure
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` I can repeat it, because I don't remember what
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` I said. But I will -- I'm just going to ask
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` the question a different way.
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`BY MR. COWELL:
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` Q There's only three combinations you
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`present opinions on with regard to the '046 patent.
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` Is that right?
`
` A I believe I presented four different
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`opinions.
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` Hold on a minute. I will go back to the
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`table of contents.
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` I don't know if that's a relevant place
`
`to go, but I did opinions regarding Laracey and
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`Jogu. I did opinions of....
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` Nope, you're right. That's right.
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`That's the same -- same combination.
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` Yes, given that -- given those, that
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`would be three. You are correct.
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` Q Okay. And your obviousness opinions
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`are -- the first combination is based on Laracey and
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`Jogu.
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` Is that right?
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` A That's correct.
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` Q And the second opinion is Laracey, Jogu,
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`and Tang.
`
` Is that right?
`
` A And Tang, yes.
`
` Q And third one is Laracey, Jogu, and
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`Dorsey.
`
` Is that right?
`
` A That's correct.
`
` Q Okay. Are you the one who discovered
`
`the Laracey reference?
`
` A I don't recall now who found what, when.
`
`So that's not a question I can really give you a
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`definitive answer on.
`
` I don't believe so. But, again, I don't
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`do an extensive prior art search unless asked to do
`
`an extensive prior art search.
`
` Q Okay. Do you recall if you were the one
`
`who discovered any of those four references on which
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`you relied?
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` A This is on the '046?
`
` Q Yeah.
`
` A I would say the same answer, that I
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`don't really recall that I was the one that brought
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`that forward.
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` Q Okay. Are you aware of any references
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`that anticipate any claim of the '046 patent?
`
` A When you say "anticipate," it says --
`
`has the same wording and all that as the '046.
`
` Is that what you mean by that?
`
` Q No. I'll ask it a different way.
`
` Are you aware of any references that
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`disclose, within a single reference, all the
`
`elements of any claim of the '046 patent?
`
` A Beyond what I've opined on, which is
`
`always in combination, I do not.
`
` Q Right. And all your opinions rely on
`
`combinations. Correct?
`
` A That's correct, or for a given claim
`
`element, yes -- where needed, yes.
`
` Q Do you know what a "tag" is?
`
` A Well, if I go to Webster's, it's pretty
`
`long. But are you referring to a radio frequency
`
`identification tag? Is that what you mean, or
`
`something more generic, in terms of an object?
`
` Q What is a radio frequency identification
`
`tag?
`
` A A radio frequency identification tag is
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`typically static memory of the originals, static
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`memory that had connectivity in a non-contact way.
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` And we tended -- started to call them
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`"RFID" tags and the like.
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` Some have more specificity these days.
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`But that's my understanding -- versus a, say, a
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`contactless smart card, which is a different animal
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`in my mind.
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` Q Is an RFID tag what's being referred to
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`in the claims of the '046 patent?
`
` A I don't believe so. I think that was --
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`my understanding or read of that was, it was an
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`object. Okay? And then we managed that object.
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` And if anything else, maybe it was to
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`try to separate it out from, let's say, a
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`contactless smart card or other means to do things.
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` So I did not use that term "tag" to mean
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`RFID tag -- which is even worse, which in my mind
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`means memory only.
`
` So, no, I just see tag meaning the
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`object.
`
` Q When you say "tag" meaning the object,
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`what do you mean by "object"?
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` A "Object" is just that. It's a construct
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`of different tuples and things and functionality put
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`around it.
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` Now, can you call a tag -- can you use a
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`tag for other things? Perhaps.
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` But for me, a tag is a very simple,
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`primitive thing.
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` Q You said a tag is a simple, primitive
`
`thing. Correct?
`
` A As I understand it, as a smart card
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`expert, yes.
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` And there's actually standards built up
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`around RFID tags which are separate and distinct
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`from other instantiations, if you will, of
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`non-contact means.
`
` Q Is there some other non-contact means
`
`that wouldn't be a tag?
`
` A Yes -- well, in my mind there is.
`
` Q Okay. In your mind, what are some of
`
`those?
`
` A Of course, a full-up smart card
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`processer and memory, okay, is supporting either an
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`ISO standard like 14443 or near-field
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`communications.
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` A barcode is a non-contact means. Okay?
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`That could be -- that can serve as a tag.
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` The things that clip off my sweater,
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`too, sometimes is a tag. But I don't think that
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`we're talking about that here.
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` So a tag, as I saw it grow up in the
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`industry, since it goes all the way back to the
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`'50s, was -- is basically -- what I've seen is, it's
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`a pretty static thing with a particular protocol
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`that you talk to it
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