Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 1 of 14 PageID #: 6753
`Case 5:19-cv-00036—RWS Document 161-10 Filed 12/09/19 Page 1 of 14 PageID #: 6753
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`EXHIBIT I
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`EXHIBIT I
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`Case 5:19-cv-00036—RWS Document 161-10 Filed 12/09/19 Page 1 of 14 PageID #: 6753
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`EXHIBIT I
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`EXHIBIT I
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 2 of 14 PageID #: 6754
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` IN THE UNITED STATES DISTRICT COURT
` FOR THE EASTERN DISTRICT OF TEXAS
` TEXARKANA DIVISION
`
`_____________________________
`
`MAXELL, LTD., )Case No.
` )5:19-cv-00036-RWS
` Plaintiff )
` )
`vs. )
` )
`APPLE, INC., )
` )
` Defendant )
`______________________________
`
`Videotaped Deposition of Craig Rosenberg, Ph.D.
` Washington, D.C.
` October 29, 2019
` 9:02 a.m.
`
`Reported by: Bonnie L. Russo
`Job No. 170304
`
`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 3 of 14 PageID #: 6755
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`Page 62
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` CRAIG ROSENBERG, PH.D.
`compute the position of the receiver.
` So this is yet another example of
`location -- technology that can give you
`location information.
` Q. Is it fair to say that interpreting
`this paragraph and other parts of the patent,
`which, as you -- as you've mentioned was a
`translation from Japanese, that you've relied
`on your knowledge, your experience as one
`skilled in the art to interpret what the
`inventor was probably trying to convey?
` A. I think that's the role of an
`expert, is to -- to look through the patent and
`to opine as to what one of skill in the art at
`the time of the invention would understand.
` So unless I've misunderstood your
`question, I -- that's what I did. And I
`believe that that's what's expected of an
`expert to do. That's the role of -- of the
`expert in this case.
` Q. Going back to Paragraph 46, again in
`that -- in that part of the patent where it
`refers to infrared ray sensors or the like.
` Do you see that?
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 4 of 14 PageID #: 6756
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`Page 63
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` CRAIG ROSENBERG, PH.D.
` A. I do see that.
` Q. What does the phrase "or the like"
`mean to you?
` A. To me that would mean that -- other
`technologies that can get location information.
`I mentioned earlier in the deposition magnetic
`technologies to do six multiple degrees of
`freedom. I mentioned ultrasonic to collect
`position information.
` So "or the like" would be other
`technologies that can also get position
`information, such as cell phone triangulation,
`GPS, infrared, ultrasonic, magnetic,
`inertial -- you know, gravitational- and
`inertial-based sensors. There's a variety.
` Q. Can you think of any types of
`structures that would be excluded by the phrase
`"or the like"?
` A. Well, I mean I don't mean to be
`glib, but like a -- a bridge is a structure but
`I don't think the -- the -- the patentee
`intended things that were outside the scope of
`collecting location-based information. So --
` Q. Uh-huh.
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 5 of 14 PageID #: 6757
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`Page 64
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` CRAIG ROSENBERG, PH.D.
` A. -- the context is location-based
`information. Structures that are outside of
`technologies to collect location-based
`information is the domain that we're speaking
`of here.
` Q. Sure.
` So you think "or the" -- the phrase
`"or the like" basically refers to any structure
`that is capable of collecting location
`information data; is that fair to say?
` A. Well, I don't see any disavows, if
`you will, or anything in the patents that
`the -- the patentee is -- is saying that this
`technology I'm not considering and should not
`be considered for collecting it.
` So my read, when I see -- when I see
`a list of -- of technologies that can collect
`location-based information and then followed by
`"or the like" would be or other similar
`technologies that can also collect
`location-based information. That's my
`understanding.
` Q. And that itself is not limited to --
`you gave examples: magnetic, ultrasonic.
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 6 of 14 PageID #: 6758
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`Page 65
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` CRAIG ROSENBERG, PH.D.
` It wouldn't necessarily be limited
`to those things; it could be other things that
`we haven't thought of sitting here that were
`capable of getting location information at that
`time; is that fair to say?
` A. Yeah. I don't see a reason, from
`what I've read, to limit a given location-based
`technology, given what I've read. This seems
`to be contemplating that this invention can
`work with a variety of location-based data
`providers, if you will.
` Q. Do you have an opinion as to why the
`inventor may have included an infrared ray
`sensor as an example of structure for --
`capable of getting location information?
` A. No. No opinion.
` Q. Does your -- does you declaration
`include all of the opinions that you will offer
`in connection with the construction of the term
`"a device for getting location information
`denoting a present place of said portable
`terminal"?
` A. Yes, it does.
` Q. I want to go back in your
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 7 of 14 PageID #: 6759
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`Page 66
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` CRAIG ROSENBERG, PH.D.
`declaration to Page 11, and in particular
`Paragraph 44. And there's a table there that
`is a list of the -- the terms on which you say
`you will be providing opinions; is that right?
` A. Yeah. I -- I'd like to make a
`correction, which is I did not provide a
`opinion on that last -- the last row on the
`table in -- in Paragraph 44.
` Q. Do you have any opinion on what the
`construction of that term should be?
` A. I do not. My understanding is that
`the parties have come to agreement on that --
`that term.
` Q. Is it your understanding that the
`parties have agreed that the structure for --
`for that term beginning with "a device
`connected to a server" is the same thing as
`what Maxell has proposed is the correct
`construction for two terms immediately above
`it?
` A. Actually, I don't know one way or
`the other what -- what the two parties agreed
`upon. But my understanding is they did come to
`an agreement on what -- what the term -- what
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 8 of 14 PageID #: 6760
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`Page 69
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` CRAIG ROSENBERG, PH.D.
`in this opinion, the court construed terms from
`the '317 patent, we'll call it?
` And I can direct you to page 67, if
`that's helpful.
` A. Sure. Thank you.
` Yes. I see a discussion of the '317
`patent at the bottom of 67.
` Q. Do you understand generally that the
`'317 patent is a continuation of the '498
`patent?
` A. I do understand that, yes.
` Q. And that they share the same
`specification?
` A. Yes. That's true.
` Q. Going to Page 71, do you see that
`there's a discussion about the construction of
`the term "said device connected to said
`server"?
` A. I see that.
` Q. Do you understand that this is the
`same claim term that the -- is referred to on
`Page 11 of your declaration in the last -- the
`last row of the table that the parties agreed
`on?
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 9 of 14 PageID #: 6761
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`Page 70
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` CRAIG ROSENBERG, PH.D.
` A. You say Page 11?
` Q. Yeah.
` A. I see parts that are similar, but
`it's not the -- the same -- the same collection
`of -- of words that are put forth for
`construction.
` Q. Do you see that they both refer the
`Claim 6 of the '317 patent?
` A. I do see that, yes. Perhaps
`different parts of Claim 6 though.
` Q. Looking back at Page 11 of your
`declaration and focusing on the third, fourth
`and fifth rows of that table.
` A. Okay.
` Q. Is it correct that your opinion is
`that the -- although the functions might be
`different, it's your opinion that the
`structures for all three of these terms is the
`same?
` A. I believe that's correct. Let me
`just review for a moment.
` Q. Sure.
` A. I think that's correct.
` Yeah. That is correct.
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 10 of 14 PageID #: 6762
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`Page 71
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` CRAIG ROSENBERG, PH.D.
` Q. And it's your opinion for all three
`of those -- well, first of all, let me ask this
`just to make sure I -- I'm reading your -- your
`declaration correctly.
` Is it fair to say that your
`declaration in paragraphs 61 through 69, as
`compared to paragraphs 70 through 78, generally
`discusses the same parts of the intrinsic
`record that you're relying on?
` A. I'm just checking the -- the
`paragraph numbers. But the answer is yes.
` Yes. That's correct.
` Q. And it's your opinion that the
`structure for these terms includes a CPU and a
`device for data communication of a portable but
`not necessarily a Personal Handy-phone System?
` A. Yes. In previewing multiple parts
`of the specification, I think there's ample
`evidence that shows that the -- the inventor
`did not intend that both were required.
` Q. And going back to Exhibit 16, the
`claim construction order, do you see that, on
`page 74 at the very top, the Court in that
`opinion was construing the term beginning "said
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 11 of 14 PageID #: 6763
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`Page 90
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` CRAIG ROSENBERG, PH.D.
` A. "We agree with patent owner
`petitioner fails to provide any evidence."
` Q. And feel free to review more of it.
` A. Uh-huh.
` I see -- I've read the first few
`sentences. If you -- if you have a pending
`question, it might help focus --
` Q. Sure.
` A. -- what you want me to review.
` Q. Yeah.
` My only question was whether you see
`and you agree that that's what it says.
` A. Yes. I'm reading those words, and
`that's what it says.
` Q. And then on Page 11 of Exhibit 17 --
`you can read the whole paragraph if -- if you'd
`like, but I would -- at the top, but I would
`direct you to the sentence that says, towards
`the bottom of that paragraph: Based on this
`record, Petitioner has not established that the
`cited art teaches or suggests a "device for
`getting location information denoting a present
`place of said portable terminal."
` Do you see that?
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 12 of 14 PageID #: 6764
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`Page 91
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` CRAIG ROSENBERG, PH.D.
` A. I do see that, yes.
` Q. Having been an expert retained on
`IPR matters, are you generally familiar with I
`guess the mechanism by how IPRs work?
` A. At a high level, in general, yes.
` Q. Do you understand that, in this
`particular IPR, that the -- the board did not
`institute the proceedings based on its findings
`in this -- in this opinion?
` A. That's my understanding, yes.
` Q. And that the reason that they didn't
`institute the proceedings is because they found
`that the petitioner had not shown that the
`prior art that they were relying on included an
`infrared ray sensor?
` A. I see that, yes.
` Q. And you mentioned, I think, that
`this was -- well, it sound like maybe you --
`just -- just -- just so I'm clear, you -- you
`have -- is this -- this is the first time
`you're seeing this document?
` A. Yes, it is. It's possible it was
`sent to me after I've filed my declaration.
`But I don't recall reading it or reviewing it
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`TSG Reporting - Worldwide 877-702-9580
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 13 of 14 PageID #: 6765
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`Page 92
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` CRAIG ROSENBERG, PH.D.
`before.
` I did, as I spoke earlier, reviewed
`a related document.
` Q. With a footnote?
` A. With that Footnote 3 --
` Q. Okay.
` A. -- on Page 10. Uh-huh.
` Q. And that document that you're
`referring to is not something that you saw
`before submitting your declaration on October
`4th; is that right?
` A. That's correct, yes.
` Q. Having reviewed that document,
`having seen this decision denying institution
`today, does it change or otherwise alter any of
`your opinions as to the construction of that
`term?
` A. No. Not at all. I - I think, in my
`declaration, I points out plenty of reasons why
`the proposed structures for the proposed claim
`terms are what one of skill in the art would
`have understood, that these do not change my
`opinion.
` Q. Okay. And I think I forgot to the
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`Case 5:19-cv-00036-RWS Document 161-10 Filed 12/09/19 Page 14 of 14 PageID #: 6766
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`Page 93
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` CRAIG ROSENBERG, PH.D.
`ask earlier.
` Does your -- and I'm going back to
`your declaration now, Exhibit 14.
` A. Yes.
` Q. Does your declaration contain a
`complete -- let me restart the question.
` Does your declaration include all of
`the opinions you will offer on the terms 3
`through 5 in that table on Page 11?
` A. Yes, it does. I -- I mean I haven't
`been asked to do any more work regarding claim
`construction. So I believe the answer is yes.
` MR. BEASLEY: Thank you very much
`for your time. I have no more further
`questions.
` THE WITNESS: Thank you.
` MR. BAKEWELL: No redirect.
` THE VIDEOGRAPHER: We are off the
`record at 11:16.
` (Whereupon, the proceeding was
`concluded at 11:16 a.m.)
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`TSG Reporting - Worldwide 877-702-9580
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