Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 1 of 65 PageID #: 21498
`Case 5:19-cv-00036—RWS Document 408-3 Filed 07/16/20 Page 1 of 65 PageID #: 21498
`PUBLIC VERSION
`PUBLIC VERSION
`
`EXHIBIT 2
`
`EXHIBIT 2
`
`
`Case 5:19-cv-00036—RWS Document 408-3 Filed 07/16/20 Page 1 of 65 PageID #: 21498
`PUBLIC VERSION
`PUBLIC VERSION
`
`EXHIBIT 2
`
`EXHIBIT 2
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 2 of 65 PageID #: 21499
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` IN THE UNITED STATES DISTRICT COURT
`
` FOR THE EASTERN DISTRICT OF TEXAS
`
` TEXARKANA DIVISION
`
`- - - - - - - - - - - - -x
`
` MAXELL, LTD., :
`
` Plaintiff, :
`
` v. : No. 5:19-cv-00036-RWS
`
` APPLE, INC., :
`
` Defendant. :
`
`- - - - - - - - - - - - -x
`
` - - -
`
` Thursday, June 18, 2020
`
` - - -
`
`REMOTE TELEPHONIC deposition of ROBERT L. STOLL,
`
`beginning at 9:03 a.m., before Christina S. Hotsko,
`
`RPR, CRR, when were present on behalf of the
`
`respective parties:
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 1
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 3 of 65 PageID #: 21500
`PUBLIC VERSION
`
` A P P E A R A N C E S
`O n b e h a l f o f P l a i n t i f f :
` B R Y A N C . N E S E , E S Q U I R E
` M a y e r B r o w n , L L P
` 1 9 9 9 K S t r e e t , N o r t h w e s t
` W a s h i n g t o n , D . C . 2 0 0 0 6
` ( 2 0 2 ) 2 6 3 - 3 2 6 6
` b n e s e @ m a y e r b r o w n . c o m
` L U I Z M I R A N D A , E S Q U I R E
` M a y e r B r o w n , L L P
` 7 1 S W a c k e r D r i v e
` C h i c a g o , I l l i n o i s 6 0 6 0 6
` ( 3 1 2 ) 7 0 1 - 8 8 7 3
` l m i r a n d a @ m a y e r b r o w n . c o m
`
`O n b e h a l f o f D e f e n d a n t :
` D A V I D A L M E L I N G , E S Q U I R E
` O ' M e l v e n y & M y e r s , L L P
` T w o E m b a r c a d e r o C e n t e r , 2 8 t h F l o o r
` S a n F r a n c i s c o , C a l i f o r n i a 9 4 1 1 1 - 3 8 2 3
` ( 4 1 5 ) 9 8 4 - 8 9 5 9
` d a l m e l i n g @ o m m . c o m
`
`1
`2
`
`3
`
`4
`
`5
`6
`
`7
`
`8
`
`9
`1 0
`
`1 1
`
`1 2
`
`1 3
`1 4
`1 5
`1 6
`1 7
`1 8
`1 9
`2 0
`2 1
`2 2
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 2
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 4 of 65 PageID #: 21501
`PUBLIC VERSION
`
` C O N T E N T S
`EXAMINATION BY: PAGE
` Counsel for Defendant 06
` Counsel for Plaintiff 229
`
`STOLL DEPOSITION EXHIBITS: * PAGE
` Exhibit 235 Expert Report of Robert L. Stoll 37
` Exhibit 236 Article, On the Way to a Better 87
` Patent System
`
` Exhibit 237 USPTO and Federal District 94
` Courts, A Joint Conference
` between the USPTO and the
` Berkeley Center for Law &
` Technology, 6 June 2011
`
` Exhibit 238 Article, Patently Practical 96
` Advice: The Impact of Recent
` Supreme Court and Federal
` Circuit Cases on Patent Law and
` How They Affect the Advice We
` Give Our Clients
` Exhibit 239 NavTalk Owner's Manual and 126
` Reference Guide
`
` Exhibit 240 Declaration of David Ayres 137
`
` Exhibit 241 Excel Spreadsheet, Garmin 147 149
`
` Exhibit 242 Deposition of L. Kent Broddle 156
`
` Exhibit 243 Service Manual, MVC-FD83/FD88 175
`
` Exhibit 244 Image, Sony Digital Still Camera 190
`
`1
`2
`3
`4
`
`5 6
`
`7
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 3
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 5 of 65 PageID #: 21502
`PUBLIC VERSION
`
`STOLL DEPOSITION EXHIBITS: * PAGE
`
` Exhibit 245 MVC-FD88 Camera 192
`
` Exhibit 246 Article, Keeping Track of Your 201
`
` Magazine Subscriptions
`
` Exhibit 247 Article, Premature Magazine 203
`
` Renewal Notices"
`
` Exhibit 248 Opening Report of Dr. Alan Bovik 207
`
` Exhibit 249 Opinion from Eastern District of 215
`
` Texas, Genband US LLC v.
`
` Metaswitch Networks Corp.,
`
` 7 Jan 2016
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
` Exhibit 250 Decision from Western District 220
`
`10
`
` of Michigan, Magna Electronics,
`
` Inc., v. TRW Automotive Holdings
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Corp., 29 Jan 2016
`
` * (Exhibits attached to transcript.)
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 4
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 6 of 65 PageID #: 21503
`PUBLIC VERSION
`
` P R O C E E D I N G S
`
`Whereupon,
`
` ROBERT L. STOLL,
`
`being first duly sworn or affirmed to testify to
`
`the truth, the whole truth, and nothing but the 08:13:20
`
`truth, was examined and testified as follows:
`
` MR. ALMELING: Perhaps we can begin with
`
`appearances. This is David Almeling of
`
`O'Melveny & Myers representing the defendant.
`
` MR. NESE: This is Bryan Nese with Mayer 09:03:43
`
`Brown, LLP, representing Maxell Limited and the
`
`witness. I'm joined today by my colleague from
`
`Mayer Brown, Luiz Miranda.
`
` MR. ALMELING: Counsel, there are various
`
`agreements the parties have reached before the 09:04:08
`
`deposition regarding the conduct of the
`
`deposition. I'll discuss those in questioning.
`
`But before we begin, is there anything that you
`
`would like to put on the record?
`
` MR. NESE: Not at this time. 09:04:14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 5
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 7 of 65 PageID #: 21504
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to be an expert?
`
` A. Field of process before the Patent and
`
`Trademark Office, for example, public
`
`accessibility and prior art. And that's probably
`
`the field that I'm most engaged for. 09:19:10
`
` Inequitable conduct issues. Prosecution
`
`laches issues.
`
` Q. Other than the items that you just
`
`mentioned, do you believe that you're an expert in
`
`any subject? 09:19:28
`
` A. I mean, I have a background, a degree, in
`
`chemical engineering, but I would not be able to
`
`generally say I'm an expert in every field of
`
`chemical engineering.
`
` Q. Do you believe you're an expert in any 09:19:45
`
`field of chemical engineering?
`
` A. Not at this late date.
`
` Q. So to be clear, the only fields in which
`
`you consider yourself to be an expert are the
`
`process before the PTO and the subprocesses to 09:19:59
`
`that you answered in response to my previous
`
`question; is that correct?
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 19
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 8 of 65 PageID #: 21505
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`given and all of the writings that I've made, and
`
`you're going to see that it's very difficult for
`
`me to tell you how many companies I have advised.
`
`But I have done it -- I do it on a regular basis,
`
`and it's different issues, and sometimes they deal 09:42:41
`
`with technical issues, including ethics issues
`
`and -- it's just -- I can't begin to quantify it.
`
` Q. I'm not asking you to quantify it, and I
`
`will ask you about your speeches and your articles
`
`later. Right now I'm asking for the names of 09:43:00
`
`specific clients.
`
` Please name at least three clients that
`
`you've advised regarding PTO and practice and
`
`procedural legal issues.
`
` A. I mean, I do a lot of Microsoft work, so 09:43:16
`
`let me say I've advised Microsoft. I've done some
`
`Johnson & Johnson. And I've done some PayPal.
`
` Q. What specific legal advice did you
`
`provide to Microsoft regarding PTO practice and
`
`procedure? 09:43:53
`
` MR. NESE: Objection. That's going to be
`
`privileged information, attorney-client
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 40
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 9 of 65 PageID #: 21506
`PUBLIC VERSION
`
`privileged. It has nothing to do with this case,
`
`so I'm going to instruct the witness not to
`
`answer.
`
`BY MR. ALMELING:
`
` Q. Are you following counsel's instruction? 09:44:04
`
` A. Yes.
`
` Q. What specific advice did you provide to
`
`Johnson & Johnson regarding patent practice and
`
`procedure?
`
` MR. NESE: Same objection. That's 09:44:17
`
`privileged information.
`
` Mr. Stoll, I instruct you not to answer.
`
`BY MR. ALMELING:
`
` Q. Are you following your counsel's
`
`instruction? 09:44:23
`
` A. Yes.
`
` Q. What specific advice did you provide to
`
`PayPal regarding patent practice and procedure?
`
` MR. NESE: Same objection. Calls for
`
`privileged attorney-client communications. I 09:44:38
`
`instruct Mr. Stoll not to answer.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 41
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 10 of 65 PageID #: 21507
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`BY MR. ALMELING:
`
` Q. Are you following counsel's instruction?
`
` A. Yes.
`
` Q. To save us all time, I plan to ask that
`
`same question for each of your clients at Faegre 09:44:49
`
`to whom you've provided advice regarding PTO
`
`practice and procedure.
`
` Is your answer to all of those questions
`
`regarding all of those clients going to be the
`
`same, which is that you refuse to answer on the 09:45:06
`
`grounds that it calls for your attorney-client
`
`communications with those respective clients?
`
` A. On the advice of counsel, I am not
`
`answering.
`
` MR. ALMELING: And to be clear, Counsel, 09:45:28
`
`that would be the instruction that you would
`
`provide and, therefore, the instruction that would
`
`be followed by Mr. Stoll?
`
` MR. NESE: Obviously it would depend on
`
`the specific question. But if you're asking what 09:45:37
`
`legal advice did you give to various clients, yes,
`
`that's attorney-client privileged information, and
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 42
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 11 of 65 PageID #: 21508
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`I would object to that.
`
`BY MR. ALMELING:
`
` Q. Mr. Stoll, have you ever advised a client
`
`at Faegre regarding the basis for the laws and
`
`regulations governing the grant of patents? 09:45:55
`
` A. I don't understand what you're
`
`specifically referring to.
`
` Q. You don't understand basis for the laws
`
`and regulations governing the grant of patents?
`
` A. Well, are you talking about the 09:46:10
`
`Constitution? Are you talking about 35 USC? Are
`
`you talking about 37 CFR? Are you talking about
`
`guidelines in the MPEP? I don't understand what
`
`you're talking about.
`
` Q. Thank you for the question. I will 09:46:26
`
`clarify.
`
` By bases for laws and regulations I
`
`literally mean all laws and regulations governing
`
`the grants of patents.
`
` I presume that you advise clients at 09:46:37
`
`Faegre regarding the various laws and regulations
`
`governing the grant of patents, correct?
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 43
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 12 of 65 PageID #: 21509
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` A. I have.
`
` Q. And I would like to ask about what
`
`specific advice you've provided to specific
`
`clients regarding that. We can go client by
`
`client or we can do all the clients generally. 09:46:56
`
`But I suspect your counsel will provide the same
`
`instruction. So let me see if I can ask a general
`
`question, and then your counsel can provide a
`
`general instruction.
`
` Please provide the -- withdrawn. 09:47:10
`
` Please describe the advice that you have
`
`given to clients at Faegre regarding the basis for
`
`the laws and regulations governing the grant of
`
`patents.
`
` MR. NESE: So Mr. Stoll, I'll allow some 09:47:28
`
`leeway here, because I think I know what Apple's
`
`counsel is trying to do. You may discuss
`
`generally your experience in advising clients in
`
`the areas that Mr. Almeling is questioning you
`
`about, but please do not reveal any specific legal 09:47:47
`
`advice -- that is, any privileged attorney-client
`
`communications or privileged work product -- that
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 44
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 13 of 65 PageID #: 21510
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`you may have experience with in your time in
`
`private practice.
`
` With that instruction, you can answer.
`
`BY MR. ALMELING:
`
` Q. Are you following counsel's instruction? 09:48:09
`
` A. Yes.
`
` I have advised on issues related to
`
`35 USC 101, 112, 102, 103, many other sections of
`
`35 USC. I have advised on 37 CFR. I have advised
`
`on case law. I have advised on guidelines. I 09:48:36
`
`have advised on the MPEP.
`
` Q. If I ask specific questions about
`
`specific advice provided to specific clients about
`
`any of those topics, you would refuse to answer on
`
`the grounds of the attorney-client privilege; is 09:48:53
`
`that correct?
`
` A. I assume that my attorney would object
`
`and I assume he would instruct me not to answer,
`
`and I would follow that instruction.
`
` MR. ALMELING: Counsel, is that 09:49:13
`
`assumption correct?
`
` MR. NESE: Again, it depends on the
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 45
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 14 of 65 PageID #: 21511
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`specific questions. I certainly don't want to
`
`stand in your way of questioning the witness about
`
`his experience in this area. But if these
`
`questions extend to attorney-client communications
`
`or other privileged material, that is out of 09:49:27
`
`bounds.
`
`BY MR. ALMELING:
`
` Q. Have you ever advised a client on the
`
`date on which a magazine was published?
`
` A. I'm sure I have. 09:49:39
`
` Q. Please identify at least one of your
`
`clients to whom you've provided advice on the date
`
`on which a magazine was published.
`
` A. I don't remember.
`
` Q. So sitting here today, you're not able to 09:49:52
`
`identify a single client in [sic] which you have
`
`provided advice regarding the date on which a
`
`magazine was published, correct?
`
` A. I don't remember. I know that I've done
`
`that before, but I don't remember to whom or when. 09:50:05
`
`As I said, I've been doing this for ten years.
`
` Q. Have you ever advised a client on whether
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 46
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 15 of 65 PageID #: 21512
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Do you see that?
`
` A. Yes.
`
` Q. That accurately summarizes the scope of
`
`your opinions in this case, correct?
`
` A. Well, it also says that, for technical 10:12:57
`
`matters in support of my opinions in this report,
`
`I am relying on analysis and opinions of
`
`plaintiff's technical experts.
`
` Q. But to be clear, you're opining in this
`
`case on only matters that are related to USPTO 10:13:11
`
`patent practice and procedure and their
`
`application to the patents-in-suit, as opposed to
`
`other topics. Is that accurate?
`
` A. I think we already discussed some of the
`
`things that I was opining on, and it dealt with 10:13:26
`
`those issues and the public acceptability and
`
`prior art. And I think I answered your questions
`
`related to that before.
`
` Q. Are you testifying -- withdrawn.
`
` Did you provide an opinion about any 10:13:42
`
`topic that doesn't fall in the category of U.S.
`
`patent practice and procedure and their
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 58
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 16 of 65 PageID #: 21513
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`application to the patents-in-suit?
`
` A. Not that I'm aware of.
`
` Q. You do not provide any opinion in this
`
`case about whether any of the asserted patents are
`
`infringed, correct? 10:14:02
`
` A. That is correct. I did not do an
`
`infringement analysis.
`
` Q. Nor have you done any patent analysis,
`
`correct?
`
` A. What do you mean patent analysis? 10:14:09
`
` Q. Sorry, withdrawn.
`
` You haven't done any damages analysis,
`
`correct?
`
` A. I have not done any damages analysis.
`
`That is correct. 10:14:19
`
` Q. While you opine on aspects of invalidity,
`
`you have not reached a conclusion on whether any
`
`of the asserted patents are valid or invalid,
`
`correct?
`
` A. I have determined that the submitted 10:14:33
`
`prior art was not clear and convincing to overturn
`
`the patents. So to that extent -- that was part
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 59
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 17 of 65 PageID #: 21514
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`of it. I'm making that analysis.
`
` Beyond -- I don't know what you're
`
`talking about. I did not do a separate analysis,
`
`if that's what you're asking.
`
` Q. You understand that the court has issued 10:15:02
`
`a claim construction in this case, correct?
`
` A. I -- I know that they will if they
`
`hadn't, but I was not aware of a particular claim
`
`construction.
`
` Q. You do not provide any opinion in your 10:15:13
`
`report about any claim construction or propriety
`
`of any claim construction, correct?
`
` A. I don't see why that would be necessary
`
`if the court has already made a claim
`
`construction, which you seem to indicate they 10:15:32
`
`have.
`
` Q. You do not provide in your report any
`
`opinion on the proper meaning of any claim in the
`
`asserted patents, correct?
`
` A. I do not talk about the meaning of a 10:15:43
`
`claim. Correct.
`
` Q. You do not provide any opinion in this
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 60
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 18 of 65 PageID #: 21515
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`regulations governing the grant of patents."
`
` Do you see that?
`
` A. I do.
`
` Q. What do you mean by basis for the laws
`
`and regulations? 10:22:10
`
` A. Well, the next sentence says, "The United
`
`States Constitution" -- that's the basis. And
`
`then I mentioned to you earlier the other sections
`
`that I talk about later in my report dealing with
`
`the 35 USC, 37 CFR, MPEP, and some case law. 10:22:27
`
` Q. Do you intend to testify about the legal
`
`standards for patentability in this case?
`
` A. If the judge asks me. But --
`
` Q. Did you --
`
` A. -- if the -- 10:22:47
`
` Q. Did you provide any opinions --
`
`withdrawn.
`
` Did you provide any opinions in your
`
`report on the legal standards for patentability?
`
` A. I provided a background of -- of some of 10:22:59
`
`the information there, but the focus of my
`
`testimony is on public accessibility in prior art.
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 66
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 19 of 65 PageID #: 21516
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Q. So I understand that you intend to
`
`testify about how you apply the law regarding
`
`public use and accessibility in the context of
`
`Cyberguide, NavTalk, Sony MVC-FD83 and MVC-FD88
`
`prior art. 10:23:32
`
` But do you also intend to testify about
`
`the applicable legal standards for public use and
`
`accessibility?
`
` A. You're going to have to give me an
`
`example. I'm actually a little confused about 10:23:43
`
`what you're asking. What do you mean about
`
`legal --
`
` Q. Sure.
`
` It is the difference between applying the
`
`law and describing what the law is. I understand 10:23:52
`
`that your report purports to apply the law on
`
`public use and accessibility in the context of
`
`certain prior art.
`
` My question is, do you also intend to
`
`provide an opinion or a description of the legal 10:24:04
`
`standards for public accessibility and public use?
`
` A. I -- I mean, I -- if asked about it, I
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 67
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 20 of 65 PageID #: 21517
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`guess I would. But my intent is to apply it to
`
`the situation here, to actually talk about the
`
`facts.
`
` Q. Please turn to paragraph 87.
`
` A. Which one? 10:24:28
`
` Q. 87.
`
` A. It's still downloading, it's taking a
`
`while.
`
` I'm there.
`
` Q. Paragraph 87 contains a chart from the 10:25:19
`
`MPEP titled, "How to determine the meaning of a
`
`claim term that does not invoke 35 USC 112(f)."
`
` Do you see that?
`
` A. I do.
`
` Q. Do you intend to present this chart to a 10:25:35
`
`jury?
`
` A. I wasn't planning on it.
`
` Q. Please turn to paragraph 94 in your
`
`report, the first sentence of which reads, "Some
`
`of the concerns regarding the existing 10:26:03
`
`reexamination proceedings were discussed by
`
`Senator Kyl upon the introduction of a predecessor
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 68
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 21 of 65 PageID #: 21518
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to answer.
`
` If it's possible to answer the question
`
`in general terms without revealing privileged
`
`attorney-client communications or attorney work
`
`product, please do so. 10:36:57
`
`BY MR. ALMELING:
`
` Q. Are you following your counsel's
`
`instruction?
`
` A. I am.
`
` Q. And to save us time, if you identified 10:37:03
`
`any additional clients to whom you provided advice
`
`regarding IPRs and I asked for you to disclose in
`
`this deposition what advice you provided, would
`
`you follow your counsel's instruction not to
`
`answer that question? 10:37:21
`
` A. Yes.
`
` MR. ALMELING: And Counsel, would you
`
`provide that instruction -- if I asked for each
`
`client that he identified by name what specific
`
`legal advice he gave to that client, would you 10:37:36
`
`instruct him not to answer on the basis of the
`
`attorney-client privilege?
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 77
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 22 of 65 PageID #: 21519
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. NESE: If the question calls for
`
`privileged communications, then I would object on
`
`the basis of privilege, yes.
`
`BY MR. ALMELING:
`
` Q. Mr. Stoll, I want to switch gears a 10:37:50
`
`little bit and talk about some of the applicable
`
`law regarding various aspects of patents
`
`generally, as well as patent office practice and
`
`patent litigation. So I'm going to give a series
`
`of statement and ask whether or not they're 10:38:10
`
`correct statements of applicable law.
`
` So with that background, the following is
`
`a correct statement of applicable law; is that
`
`correct, sir? Where a patent repeatedly and
`
`consistently characterizes a claim term in a 10:38:23
`
`particular way, it is proper to construe that term
`
`in accordance within that characterization.
`
` A. You're asking a very complex question,
`
`and let me give you a complex answer.
`
` So it is true that the applicant is its 10:38:43
`
`own lexicographer and can define terms as they
`
`wish to be known.
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 78
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 23 of 65 PageID #: 21520
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`asserted patents the Abowd reference is alleged
`
`prior art for, correct?
`
` A. Well, I kind of thought it was the -- the
`
`'498 and the '999 and the '317.
`
` Q. The last sentence in paragraph 121 reads, 11:30:57
`
`"On the other hand, the exhibit indicates that at
`
`least the electronic version of the journal was
`
`available to only Pitt-affiliated users."
`
` Do you see that?
`
` A. I do. 11:31:12
`
` Q. Do you know how many Pitt-affiliated
`
`users exist now?
`
` A. I don't know how many Pitt-affiliated
`
`users exist now, but that wouldn't be the test.
`
`It would be how many Pitt-affiliated users in the 11:31:27
`
`time frame necessary.
`
` Q. And you don't know how many
`
`Pitt-affiliated users were within the time frame
`
`necessary, correct?
`
` A. I do not know how many Pitt -- I don't 11:31:41
`
`know if any Pitt-affiliated users were available
`
`back in the 1999 area.
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 111
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 24 of 65 PageID #: 21521
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Q. You do not know how many Pitt-affiliated
`
`users existed in 1999, correct?
`
` A. I do not know how many Pitt-affiliated
`
`users there were in 1999.
`
` Q. Do you know if you were a Pitt-affiliated 11:32:05
`
`user in 1999?
`
` A. I know I was not a Pitt-affiliated user
`
`in 1999.
`
` Q. Please provide your understanding of the
`
`complete list -- the category of people that 11:32:21
`
`constituted Pitt-affiliated users in 1999.
`
` A. I would assume they would have to have
`
`some affiliation with Pitt.
`
` Q. Do you know what constituted a
`
`Pitt-affiliated user in 1999? 11:32:36
`
` A. I do not know what constituted a
`
`Pitt-affiliated user in 1999. But the word says
`
`Pitt-affiliated, so it had to have some
`
`affiliation with Pitt.
`
` Q. But you don't know as a matter of fact 11:32:56
`
`whether or not it did have any affiliation with
`
`Pitt because you do not know what qualified as a
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 112
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 25 of 65 PageID #: 21522
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Pitt-affiliated user in 1999, correct?
`
` A. I'm going to say that that's correct. I
`
`do not know what specific qualifications were to
`
`be a Pitt-affiliated user, and I do not know what
`
`the -- what it means. But I also know that, in 11:33:15
`
`fact, Mr. Munford nor Mr. Paradiso informed me of
`
`what that was. And in order to make the
`
`determination by clear and convincing evidence, I
`
`would have to know that, in fact, it was available
`
`to the people who were interested, to the POSITAs 11:33:37
`
`who were interested, in this particular subject
`
`matter, and they did not tell me that there
`
`were -- that it was available to the people who
`
`were POSITAs because they did not tell me anything
`
`about the Pitt-affiliated users or that it was 11:33:53
`
`available to the public.
`
` Q. And you did not do an independent
`
`investigation regarding what qualified as a
`
`Pitt-affiliated user as part of your work on this
`
`case, correct? 11:34:06
`
` A. It was not my job to do that. It was
`
`Apple's job to show by clear and convincing
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 113
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 26 of 65 PageID #: 21523
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`evidence that these were references applicable
`
`against the claims of these patents. And they did
`
`not do that.
`
` Q. Notwithstanding what Apple did or did not
`
`do, I'm asking about what you did or did not do. 11:34:22
`
` You did not conduct an independent
`
`investigation as part of your work on this case
`
`about what constituted a Pitt-affiliated user in
`
`1999, correct?
`
` A. That was not my responsibility. That was 11:34:34
`
`Apple's responsibility to tell me that it was a
`
`Pitt -- that Pitt-affiliated users was a broad
`
`term or broadly provided accessibility to the
`
`document, and they did not.
`
` Q. Apologize for continuing to ask the 11:34:52
`
`question, but you still haven't answered it. You
`
`answered about what was or was not your
`
`responsibility. I'd like to ask whether or not
`
`you, in fact, did or did not do something.
`
` As part of your work on this case, you 11:35:00
`
`did not conduct an independent investigation to
`
`determine what constituted a Pitt-affiliated user
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 114
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 27 of 65 PageID #: 21524
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`positioning capability in that prototype?
`
` A. I see the word "positioning prototype" in
`
`figure 3. And "positioning beacons." I see those
`
`words.
`
` Q. I understand those words are -- I'm 11:38:56
`
`referencing the picture as opposed to any textual
`
`description in the picture.
`
` In the picture --
`
` A. I --
`
` Q. -- of figure 3, paragraph 148 of your 11:39:01
`
`report, can you point to anything in the picture
`
`that shows any positioning capability?
`
` A. I don't know that I would know it if I
`
`saw it.
`
` Q. Can you describe how positioning 11:39:14
`
`capability encourages or does not encourage user
`
`mobility?
`
` A. I -- I have not analyzed that.
`
` Q. That would be a technical question on
`
`which you did not opine, correct? 11:39:32
`
` A. I think that's correct.
`
` Q. Please go to paragraph 152 in your
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 118
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 28 of 65 PageID #: 21525
`PUBLIC VERSION
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`report.
`
` A. I'm there.
`
` Q. The first two sentences of paragraph 152
`
`of your report read, "Other outdoor prototypes
`
`were also developed, such as limited functionality 11:40:01
`
`PC versions of Cyberguide. These limited
`
`functionality prototypes do not appear to have had
`
`any orientation support, as evidenced by the
`
`smiley face on figure 5 below."
`
` Do you see that? 11:40:16
`
` A. Yes.
`
` Q. On what basis do you believe the presence
`
`of the smiley face in figure 5 evidences that the
`
`prototype shown in that figure does not appear to
`
`have orientation support? 11:40:30
`
` A. I'm just saying it appears that way
`
`because it's a smiley face.
`
` Q. And why does the presence of a smiley
`
`face make it appear that way to you?
`
` A. I don't know what other reason there 11:40:46
`
`would be to put a smiley face in the picture.
`
` Q. What do you believe the smiley face in
`
`Veritext Legal Solutions
`866 299-5127
`
`Page 119
`
`
`
`Case 5:19-cv-00036-RWS Document 408-3 Filed 07/16/20 Page 29 of 65 PageID #: 21526
`PUBLIC
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
