UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
` IPR2023-00319
`
` PATENT 10,693,700
`
` CASE NO. IPR2023-00319
`
` ATTORNEY DOCKET: 19688-0196IP2
`
` LG ELECTRONICS, INC.,
`
` Petitioner,
`
` vs.
`
` CONSTELLATION DESIGNS, LLC,
`
` Patent Owner.
`
` REMOTE DEPOSITION OF
`
` GIUSEPPE CAIRE, PH.D.
`
` March 19, 2024
`
` REPORTED BY: Laura H. Nichols
`
` Certified Realtime Reporter,
`
` Registered Professional
`
` Reporter and Notary Public
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`LGE 1032
`LG Electronics, Inc. v. Consellation Designs, LLC
`IPR2023-00319
`
`1
`
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
` IPR2023-00319
`
` PATENT 10,693,700
`
` CASE NO. IPR2023-00319
`
` ATTORNEY DOCKET: 19688-0196IP2
`
` LG ELECTRONICS, INC.,
`
` Petitioner,
`
` vs.
`
` CONSTELLATION DESIGNS, LLC,
`
` Patent Owner.
`
` REMOTE DEPOSITION OF
`
` GIUSEPPE CAIRE, PH.D.
`
` March 19, 2024
`
` REPORTED BY: Laura H. Nichols
`
` Certified Realtime Reporter,
`
` Registered Professional
`
` Reporter and Notary Public
`
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`LGE 1032
`LG Electronics, Inc. v. Consellation Designs, LLC
`IPR2023-00319
`
`1
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`
`
` A P P E A R A N C E S
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`Page 2
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` F O R T H E P E T I T I O N E R :
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` M r . U s m a n A . K h a n
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` A t t o r n e y a t L a w
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` F i s h & R i c h a r d s o n P . C .
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` 1 0 0 0 M a i n e A v e n u e S o u t h w e s t
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` W a s h i n g t o n , D . C . 2 0 0 2 4
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` ( 2 0 2 ) 7 8 3 - 5 0 7 0
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` k h a n @ f r . c o m
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` F O R T H E P A T E N T O W N E R :
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` M r . K e v i n C . A m e n d t
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` M r . W i l l i a m s S . D i x o n
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` A t t o r n e y s a t L a w
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` M i n t z , L e v i n , C o h n , F e r r i s ,
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` G l o v s k y a n d P o p e o , P . C .
`
` O n e F i n a n c i a l C e n t e r
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` B o s t o n , M a s s a c h u s e t t s 0 2 1 1 1
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` ( 6 1 7 ) 5 4 2 - 6 0 0 0
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` k c a m e n d t @ m i n t z . c o m
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` w s d i x o n @ m i n t z . c o m
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` INDEX OF EXAMINATION
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`Page 3
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` Page:
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` DEPONENT: GIUSEPPE CAIRE, PH.D. 7
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` EXAMINATION BY MR. KHAN 7
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` EXAMINATION BY MR. DIXON 166
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` REEXAMINATION BY MR. KHAN 171
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` INDEX OF PREVIOUSLY MARKED EXHIBITS,
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` REFERENCED IN THE
`
` DEPOSITION OF GIUSEPPE CAIRE, PH.D.
`
` Page:
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` Exhibit 1001 49
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` Patent: US 10,693,700 B1
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` Exhibit 1010 12
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` California Institute of Technology,
`
` Jet Propulsion Laboratory, New Technology
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` Reporting Form, NTR Number 44810
`
` (Provisional Application)
`
` Exhibit 1015 12
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` Patent: US 7,978,777 B2
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` INDEX OF PREVIOUSLY MARKED EXHIBITS,
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` REFERENCED IN THE
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` DEPOSITION OF GIUSEPPE CAIRE, PH.D., CONTINUING
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`Page 4
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` Page:
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` Exhibit 1030 147
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` Paper: Non-Uniform Constellations
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` for Next-Generation Digital Terrestrial
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` Broadcast Systems; Author: Manuel
`
` Fuentes Muela, June 2017
`
` Exhibit 2001 10
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` Declaration of Giuseppe Caire
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` Regarding Patent Owner’s Preliminary
`
` Response for Inter Partes Review of U.S.
`
` Patent NO. 10,693,700
`
` Exhibit 2012 8
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` Curriculum Vitae: Giuseppe Caire,
`
` Ph.D., August 2022
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` Exhibit 2015 30
`
` Paper: Bit-Interleaved Coded
`
` Modulation, Published in IEEE
`
` Transactions on Information Theory, Vol.
`
` 44, No. 3, May 1998
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` REFERENCED IN THE
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` DEPOSITION OF GIUSEPPE CAIRE, PH.D., CONTINUING
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`Page 5
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` Page:
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` Exhibit 2025 8
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` Second Declaration of Giuseppe
`
` Caire for Inter Partes Review of U.S.
`
` Patent No. 10,693,700
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`Page 6
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` S T I P U L A T I O N
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` IT IS STIPULATED AND AGREED, by and
`
` between the parties, through their respective
`
` counsel, that the deposition of GIUSEPPE CAIRE,
`
` PH.D. may be taken before Laura H. Nichols,
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` Commissioner, Certified Realtime Reporter,
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` Registered Professional Reporter and Notary Public;
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` That it shall not be necessary for
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` any objections to be made by counsel to any
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` questions, except as to form or leading questions,
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` and that counsel for the parties may make
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` objections and assign grounds at the time of trial,
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` or at the time said deposition is offered in
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` evidence, or prior thereto.
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`Page 7
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` I, Laura H. Nichols, a Certified
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` Realtime Reporter and Registered Professional
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` Reporter of Birmingham, Alabama, and a Notary
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` Public for the State of Alabama at Large, acting as
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` Commissioner, certify that on this date, as
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` provided by 37 CFR § 42.53, the Federal Rules of
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` Civil Procedure of the United States District
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` Court, and the foregoing stipulation of counsel,
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` there came before me remotely via Zoom, on March
`
` 19, 2024, commencing at 10:03 a.m. EDT, GIUSEPPE
`
` CAIRE, PH.D., witness in the above cause, for oral
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` examination, whereupon the following proceedings
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` were had:
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` GIUSEPPE CAIRE, PH.D.,
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` having been first duly sworn, was examined and
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` testified as follows:
`
` EXAMINATION BY MR. KHAN:
`
` Q. Dr. Caire, thank you very much for
`
` making yourself available today for this
`
` deposition.
`
` I will try to take breaks in between,
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` maybe every hour or so. But should you feel the
`
` need to take a break, please just let me know a few
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` minutes ahead of time so that I can wrap up my line
`
` of questioning; is that okay with you?
`
` A. Sure.
`
` Q. Great. And during any of the breaks
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` today, do you understand that you are not allowed
`
` to discuss the substance of your deposition
`
` testimony until your cross examination is
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` completed?
`
` A. I understand.
`
` Q. And will you agree to let me know if
`
` at any point anyone communicates with you in any
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` manner during the course of the deposition today?
`
` A. Yes.
`
` (Exhibit 2012, having been previously
`
` marked for identification, was
`
` presented in this deposition.)
`
` Q. (BY MR. KHAN:) Thank you. For the
`
` purposes of our conversation today, is it okay if I
`
` refer to Exhibit 2025 as your second declaration?
`
` (Exhibit 2025, having been previously
`
` marked for identification, was
`
` referenced in this deposition.)
`
` A. That is fine. 2025.
`
` Q. (BY MR. KHAN:) And do you have a
`
` copy of that exhibit with you, a clean copy?
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` A. Yes, I have. It is here in front of
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` me.
`
` Q. Do you understand that one of the
`
` reasons for today's deposition is for the
`
` petitioner in this IPR proceeding to get additional
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` clarity regarding your statements in your second
`
` declaration?
`
` A. I understand.
`
` Q. Do you understand that your testimony
`
` today is sworn testimony, taken under oath?
`
` A. I understand.
`
` Q. Do you understand that the oath you
`
` have taken today is as solemn as the oath you would
`
` take as if you were testifying at a trial in court?
`
` A. I do.
`
` Q. And do you understand that your
`
` deposition testimony can be used in a subsequent
`
` brief in the proceedings or at trial?
`
` MR. DIXON: Objection, form.
`
` A. I do.
`
` Q. (BY MR. KHAN:) Are you taking any
`
` medications that would prevent you from answering
`
` the questions completely and truthfully, to the
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` best of your ability?
`
` A. No.
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` Q. Is there anything else that would
`
` prevent you from answering the questions completely
`
` and truthfully, to the best of your ability?
`
` A. No.
`
` Q. Do you understand that you are being
`
` deposed today for statements made in your second
`
` declaration that was submitted in support of
`
` Constellation's patent owner's reply in
`
` IPR2023-0031, which relates to U.S. Patent Number
`
` 10,693,700?
`
` A. Yes. I understand.
`
` Q. For purposes of brevity, I will refer
`
` to the IPR as the 319 proceedings and the Patent
`
` 10,693,700 as the '700 Patent; is that okay?
`
` A. It is okay.
`
` (Exhibit 2001, having been previously
`
` marked for identification, was
`
` referenced in this deposition.)
`
` Q. (BY MR. KHAN:) The two declarations
`
` that you submitted in these proceedings, did you
`
` write them yourself?
`
` A. Yes, I wrote myself with the help of
`
` the law firm.
`
` Q. Now, other than the attorneys you
`
` were working with, was there any other individual
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` involved in writing or preparing your declaration?
`
` A. No.
`
` Q. And how long would you say,
`
` approximately, did it take for you to work on
`
` these -- on your second declaration?
`
` A. Approximately -- I don't remember
`
` exactly the number of hours that I billed for this
`
` work, but approximately eight, ten hours.
`
` Q. Okay.
`
` A. This includes of course, also, the
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` reading of the documents, reading of the other
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` declarations; it is not just writing the
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` declaration itself.
`
` Q. Have you been deposed before in any
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` other case?
`
` A. No.
`
` Q. Did you review your first and second
`
` declaration in this IPR in preparation of this
`
` deposition?
`
` A. Yes, I did.
`
` Q. In those declarations, you mentioned
`
` a number of documents that you have reviewed in
`
` forming your opinions. Did you also review those
`
` documents?
`
` A. Some of them.
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` Q. Did you review the Board's
`
` institution decision?
`
` A. No.
`
` Q. Did you review the Provisional
`
` Application 60933319, also referred to as Exhibit
`
` 1010?
`
` (Exhibit 1010, having been previously
`
` marked for identification, was
`
` referenced in this deposition.)
`
` A. Can you please repeat which exhibit?
`
` Q. (BY MR. KHAN:) Yes, it is Exhibit
`
` 1010, 1010.
`
` A. Not recently.
`
` Q. Did you review it while preparing
`
` your second declaration?
`
` A. No. I reviewed it when I prepared my
`
` first declaration.
`
` Q. And did you review U.S. Patent Number
`
` 7978777, which is Exhibit 1015?
`
` (Exhibit 1015, having been previously
`
` marked for identification, was
`
` referenced in this deposition.)
`
` A. Okay. I reviewed this -- this patent
`
` at the time of the first declaration, and I only
`
` reviewed the Patent '700 at the time of the second
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` declaration.
`
` Q. (BY MR. KHAN:) Sorry, just to be
`
` clear, you reviewed Exhibit 1015, the '777 Patent,
`
` at the time of preparing your first and your second
`
` declaration; is that right?
`
` A. No, it is not correct. At the time
`
` of the second declaration, I reviewed only the '700
`
` Patent.
`
` Q. Okay. Thank you. Is this your first
`
` case in which you have served as an expert?
`
` A. No.
`
` Q. Do you have a list of cases in which
`
` you have served as a patent expert?
`
` A. I don't.
`
` Q. Would you be able to give me an
`
` approximate of how many cases you have worked on as
`
` an expert, how many patent cases you have worked on
`
` as an expert?
`
` A. Yes, I can provide, it is very
`
` simple -- two, two other cases in the past.
`
` Q. And what technologies were those
`
` cases in?
`
` A. Wireless communication technology.
`
` Q. Were they also related to
`
` Constellation -- I'm sorry. Scratch that.
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` Were those cases also Constellation
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` cases?
`
` A. No, they were not.
`
` Q. If we were to request a list of cases
`
` you worked on, and assuming Constellation's counsel
`
` has no objections to that, would you be able to
`
` provide that list in the future?
`
` A. For one case, yes. Another case, no.
`
` Q. Okay. And is that for
`
` confidentiality reasons?
`
` A. Yes.
`
` Q. Okay.
`
` (Off-the-record discussion.)
`
` A. Excuse me, how do you see Exhibit
`
` Share?
`
` THE REPORTER: Off the record?
`
` MR. KHAN: Yeah, can we get off the
`
` record?
`
` (Off-the-record discussion.)
`
` MR. KHAN: Okay. We can go back on
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` record, Dr. Caire, if you are ready.
`
` A. Yes, I am ready.
`
` Q. (BY MR. KHAN:) Dr. Caire, do you
`
` stand by all the statements you made in both your
`
` first and second declarations?
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` A. Yes, I stand by the statements.
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` Q. Do you still believe that the
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` challenged claims are not anticipated or rendered
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` obvious by the references presented in the
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` petition?
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` A. Can you clarify? I don't understand
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` the question.
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` Q. So the question is: Do you believe
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` that the challenged claims in these IPR proceedings
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` are not anticipated or obvious, based on the
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` references that were cited in the petition?
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` A. Excuse me. Are you referring to the
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` challenged claim in the first declaration, the
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` challenged claim in the second declaration?
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` Q. Oh, we can just talk about Claims 5,
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` Claim 5, if you would like, or claims -- yeah.
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` A. Yes. Yes, I still believe they are
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` not anticipated by those references.
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` Q. What is your understanding of when a
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` claim is anticipated?
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` A. I don't fully understand the
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` question. I just said that the claim is not
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` anticipated, so -- what do you mean by where it is
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` anticipated?
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` Q. Well, like you said, you said the
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` claim is not anticipated. So my question is: What
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` does it mean for a claim to be anticipated?
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` A. Is it a general question, what does
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` it mean when a claim is not anticipated, is it an
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` abstract question or it is a specific question for
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` this claim and these references?
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` Q. It is a general question: What does
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` it mean for a claim to be anticipated?
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` A. Well, as far as I understand, a claim
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` is anticipated when a so-called POSITA can easily
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` deduct the claim from a reference that would stand
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` before the patent or something like that. I don't
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` have a legal -- legal expertise here. I am an
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` academic.
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` So in my view, I can assess the
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` novelty of a contribution at a scientific level. I
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` cannot assess the novelty of a contribution in the
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` legal sense. But this is my understanding,
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` basically.
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` Q. And in your answer, you mentioned
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` that a POSITA can easily deduct -- deduct a claim
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` from a reference. What do you mean by "easily
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` deduct a claim from a reference"?
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` A. So easily deduct in the sense that,
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` today, what is described in the claim is
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` essentially already in some paper somewhere else,
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` and after minor changes, a person skilled in the
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` art will derive to the same thing.
`
` Q. So if a person of skill in the art
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` would have understood from the description in a
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` document that the claim features are disclosed,
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` then that document anticipates the claims; is that
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` correct?
`
` A. I think that one has to be a bit more
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` specific than that because one has to establish
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` basically the distance between one -- say a
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` scientific document describing some ideas and the
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` precise content of a patent.
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` So that is, I guess, it is a little
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` bit what we are discussing here, is whether --
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` Q. Can we --
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` A. What?
`
` Q. Sorry. Go ahead. I didn't want to
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` interrupt you. Sorry. Were you finished with your
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` answer?
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` A. Yeah.
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` Q. Okay. Sorry.
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` A. So the answer -- the answer is
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` finished. Again, we are talking about something in
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` the abstract. In the abstract, it is difficult to
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` say, because how can you draw a line in the
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` abstract, right? One has to be specific, and then
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` we can -- we can discuss something specific. But
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` in the abstract, how you say that this is easy,
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` this is difficult or this is not anticipated is a
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` little bit up in the air.
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` Q. In your answer, you said one has to
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` establish the distance between the document and the
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` contents of the patent.
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` A. Right.
`
` Q. At what point -- what is that -- what
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` does that distance have to be for something to be
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` -- for that scientific document to anticipate the
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` patent?
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` MR. DIXON: Objection. Sorry.
`
` Q. (BY MR. KHAN:) Is it --
`
` A. Again, I don't think that there is an
`
` absolute metric. It depends on the context. If
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` you are talking about that scientific publication
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` and say is this new with respect to that? Well,
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` this is up to the reviewers and the editor to
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` decide if the idea -- if there's enough novelty,
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` enough contribution for publishing. Because a
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` patent is up to the patent office probably or court
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` to establish that. Again, there is no absolute
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` semantic metric that can establish this distance.
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` Q. So if the patent office thought
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` something was really obvious in view of a
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` particular reference, they would find that
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` reference anticipates the patent; is that right?
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` A. To the best of my knowledge, this is
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` how patent offices work. They go through -- cite a
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` lot of references, prior art, and they establish if
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` something has sufficient novelty to be granted as a
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` patent or not. And many times they deny because
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` there is not enough novelty. And so normally this
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` is the job. You would trust the patent office with
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` this job.
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` Q. Do you have patents of your own?
`
` A. Yes.
`
` Q. How many?
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` A. Twenty-eight, twenty-four. I don't
`
` have a precise memory of that.
`
` Q. Have you been involved in the
`
` examination process of those patents?
`
` A. On the side of the inventor, yes.
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` Q. Did you provide legal arguments or --
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` I'm sorry. Scratch that.
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` Did you provide technical arguments
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` or legal arguments in support of the patents you
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` applied for?
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` MR. DIXON: Objection, form.
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` A. Can I answer? So working with the
`
` patent lawyers that filed the patent, of course,
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` there was a review process and a back and forth
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` between the patent office and the law firm who
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` filed the patent. And I provided technical
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` arguments to respond to the objections of the
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` patent office. And this may go through several
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` rounds.
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` Q. (BY MR. KHAN:) So it is fair to say
`
` that issues like obviousness or anticipation are
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` things that you have had to deal with for your own
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` patent applications?
`
` A. Yeah.
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` MR. DIXON: Objection, form.
`
` A. It happened that the patent office
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` found that one invention was included in something
`
` else. And we had to comment on the novelty and the
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` differences with respect to some published papers
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` and the invention and eventually the patent was
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` granted. So this is as far as I can understand
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` about, you know, the concept of the novelty and
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` anticipation, based on experience, not on legal
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` arguments, because I am not a lawyer.
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` Q. (BY MR. KHAN:) Who determines what
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`Page 21
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` is obvious in a patent?
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` A. Who?
`
` Q. Yes.
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` A. Well, again, on the side of an
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` inventor, I guess an inventor believes that his
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` invention is new and nonobvious. The patent office
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` may come back with comments and say oh, this
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` reference, this reference, this reference make your
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` invention obvious. This claim cannot be taken and
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` so on and so forth. And then the inventor may
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` argue otherwise.
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` And then at the end, if the patent
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` office is convinced, the patent is granted. Maybe
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` some claims are scrapped from the patent because
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` they are not accepted, and at the end, whatever is
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` written there is written there. That is my
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` understanding of the process.
`
` Q. So when obtaining a patent, it is the
`
` inventor and the patent office that determine when
`
` a claim is obvious; is that right?
`
` A. I would say so, until there is a
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` lawsuit and somebody else has a different opinion,
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` and a court overrules and says no, this is -- you
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` know -- so -- but until the patent is not
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` challenged, I guess that is it. This is a matter
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` of the inventor and the patent office.
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` Q. So when a patent is challenged, like
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` the '700 Patent has been challenged, who determines
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` what is obvious?
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` A. Ultimately or in the process?
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` Because it is clear that there are divergent
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` opinions here, so there are different experts with
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` divergent opinions and eventually a court will make
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` a decision; I don't know.
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` Q. Is there a standard for determining
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` obviousness of the '700 Patent?
`
` A. I don't know.
`
` Q. In your declaration, you mention a
`
` POSITA. What does POSITA stand for?
`
` A. Now I do not remember exactly the
`
` acronym, but the -- according to my knowledge, this
`
` means an individual skilled in the art or something
`
` like that.
`
` Q. And who is one of skilled in the art
`
` in the context of the '700 Patent?
`
` A. Well, one skilled in the art in this
`
` context is a telecommunication engineer with
`
` experience in digital modulation systems and
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` channel coding and physical layer. Physical layer
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` meaning the layer interface of a communication
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` system, a wireless communication system mainly.
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` Q. And how much experience does this
`
` person of ordinary skill in the art have to have?
`
` A. Okay. I would say probably a person
`
` with a Ph.D. in electrical engineering, specialized
`
` with a thesis done in these topics, and possibly
`
` some years of work after Ph.D. in these topics.
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` These are fairly advanced topics that are not
`
` taught in undergraduate or even master-level
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` courses. So it requires courses -- advanced
`
` courses in digital communication plus direct
`
` experience, research experience.
`
` Normal students, in my experience,
`
` cannot read and understand papers like the ones
`
` that are in the exhibits. Simply -- I'm not aware
`
` of any program where a student after a course would
`
` just read this paper and understand, to the point
`
` of actually implementing or designing a system.
`
` Q. You mentioned that this person of
`
` skill in the art would also have some years of work
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` experience after their Ph.D.
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` How many years of work experience
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` would this person have?
`
` A. That is really hard to say. It
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` depends on what type of work experience. It could
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` be if the Ph.D. is precisely on these topics, like,
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` for example, the person from the University of
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` Politecnica de Catalunya, it is clear that this
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` person knows everything. If somebody who had a
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` Ph.D. in digital communications and information
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` theory, knows what capacity is, what the Gaussian
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` channel is, but has never worked in coded system
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` and a physical layer, this probably requires one or
`
` two years' experience. It depends. It could be
`
` zero years of experience if the Ph.D. is on these
`
` topics, precisely on these topics. But how many
`
` people have -- a handful, no more, probably.
`
` Q. Does this person of skill in the art,
`
` in the context of the '700 Patent, have to have a
`
` certain number of paper publications or conference
`
` publications?
`
` A. Does not have, is not a requirement,
`
` of course. If a person has the type of background
`
` I just described, so a Ph.D. in the area, is most
`
` likely. In almost any Ph.D. program I am aware of,
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` requirements to defend a thesis is to have also
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` publications on the thesis topic. So it is
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` presumable that a person of this kind would have
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` papers on the topic, yes.
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` Q. And when you are determining what is
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` obvious or not obvious in the context of the '700
`
` Patent, what time frame do you look at in making
`
` that determination of obviousness?
`
` A. In the sense of prior art?
`
` Q. Yeah, so for example, if I am looking
`
` at the '700 Patent to determine what is obvious to
`
` a person of ordinary skill in the art, can I look
`
` at the date that the patent issues and determine
`
` the obviousness as of that date?
`
` A. So when I considered this question on
`
` obviousness, I looked at the papers that were
`
` mentioned in -- so the -- how do you call this, the
`
` exhibits, right? Several papers were mentioned. A
`
` few papers were considered during my first -- to
`
` prepare my first declaration. Other papers were
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` mentioned and were considered to prepare the second
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` declaration.
`
` So the time frame referred to those
`
` papers, right? Yeah, so basically spans the years
`
` of these papers. I don't remember exactly the
`
` years of the various publications but.
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` Q. But is there a particular date that
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` you can start? I mean, for example, can we go back
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` to the year 1800 to determine obviousness of this
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` technology?
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` A. Of course not. Clearly, the patent
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` refers explicitly to the so-called BICM capacity
`
` also known as part of the coding capacity. This
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` concept was introduced in one of my papers, so
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` 19 -- I don't remember, 1993, '92, something like
`
` that. This paper is very highly cited and this
`
` methodology of the BICM has been adopted in a
`
` variety of communication systems. In this paper,
`
` we have introduced this metric for the goodness of
`
` constellations and the binary labeling of
`
` constellations.
`
` The patent clearly uses this metric
`
` to compare different constellations in terms of
`
` gain and capacity, SNR, at which certain capacities
`
` are achieved. So I would say the time frame should
`
` go from that seminal paper to -- to the time of the
`
` first summation of these ideas, because in my
`
` understanding, this patent was granted in 2020, but
`
` it is a long process of -- of patenting that
`
` started much, much before. Something like 2008,
`
` maybe. So I think the right frame to consider
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` this -- this nonobviousness is between the first
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` paper on BICM and 2008, so the first submission of
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` the preliminary patent idea. Anything that came
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` later, well, there were already papers, even from
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` the author of the patent, there were already papers
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` out, so once the paper is out, anybody can pick
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` up --
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` (Off-the-record discussion.)
`
` A. Yes, once a paper is out in the open
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` literature, any other author can, of course,
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` reference to this paper or even not reference to
`
` this paper sometimes and pick up some ideas, do
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` some improvements and then publish -- try to
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` publish some other papers, if the r
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