Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 1 of 8
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`Exhibit 18
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`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 2 of 8
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` IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS - WACO DIVISION
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` CASE NO. 6:21-CV-01101-ADA
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`Page 1
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`--------------------------------------------
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`AIRE TECHNOLOGY LIMITED,
`
` Plaintiff,
`
` -vs-
`
`APPLE INC.,
`
` Defendant.
`
`--------------------------------------------
`
` Deposition of JOHN BLACK, JR., Ph.D.
`
` Monday, July 25, 2022 - 10:00 A.M. EDT
`
`Reported by:
`
`S. Arielle Santos
`
`Job No.: 5235
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`

`

`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 3 of 8
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`Page 2
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`Page 3
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` REMOTE APPEARANCES:
`
`COUNSEL FOR PLAINTIFF:
`BY - DREW B. HOLLANDER, ESQ.
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`dhollander@raklaw.com
`
`COUNSEL FOR APPLE AND WITNESS:
`BY - DANIEL RICHARDS, ESQ.
`ROPES & GRAY
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`daniel.richards@ropesgray.com
`
`Page 5
`
` JOHN BLACK, JR. Testifies under penalty of
` perjury as follows:
` THE WITNESS: I do.
`
` EXAMINATION
` BY MR. HOLLANDER:
` Q Good morning, Dr. Black.
` Could you please state your
` full name for the record?
` A My name is John Richard
` Black, Junior.
` Q Have you ever been deposed
` before?
` A Yes, I have.
` Q How many times have you been
` deposed?
` A Between 15 and 20 is my
` guess.
` Q And were those depositions in
` patent matters or other types of cases?
` A It really did vary. Majority
` probably were related to patents.
` Q Do you understand that you
` are under oath and required to answer
` truthfully?
`
`2 (Pages 2 to 5)
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` JULY 25, 2022
` 10:00 A.M. EDT
`
` REMOTE DEPOSITION of JOHN BLACK, JR.,
`PhD, before S. Arielle Santos, Certified Court
`Reporter, Certified LiveNote Reporter and Notary
`Public.
`
`Page 4
`
` INDEX
`
` JOHN BLACK, JR., Ph.D. PAGE
` BY MR. HOLLANDER 5
`
` BLACK EXHIBITS MARKED - ATTACHED
`
` Black Exhibit 1 - Declaration of 12
` Dr. John Black, Junior,
` regarding indefiniteness of US
` Patent No. 8,205,249
` Black Exhibit 2 - US Patent No. 13
` 8,205,249
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`

`

`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 4 of 8
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`Page 14
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` yes, sir.
` Q And your declaration contains
` your opinions regarding indefiniteness of
` a claim term in U.S. Patent No. 8,205,249;
` is that correct?
` A That is correct.
` Q For purposes of today's
` deposition, is it okay if I refer to the
` patent as the '249 patent?
` A That works for me, yes.
` Q Great.
` And why don't you take a look
` at Exhibit 2 and confirm for me this is a
` copy of the '249 patent.
` A (Reviewing.) It looks to be
` the same copy of the patent that I
` reviewed.
` Q Back to your declaration, if
` we can turn to paragraph 36.
` There, you note that
` Samsung's IPR petition expert Dr. Shamos
` opined that a POSITA -- a person of
` ordinary skill in the art -- at the time
` of the alleged invention would have had at
` least -- and then there's a list of
`
`Page 16
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` user authentication:"
` Is that right?
` A This is generally how it's
` characterized in my field, yes.
` Q And what are those three
` methods that you are referring to?
` A They are generally called
` something you know, something you have,
` and something you are. Or more formally,
` as listed here, something that is
` knowledge based, something that is
` token-based, and something that is
` biometric based, which corresponds to
` those three things I said at the outset.
` Q One method is token-based,
` what the user has; is that right?
` A Yes, it is.
` Q Can you explain what you mean
` by that?
` A So this is a broad category.
` But, for example, you might have a
` physical metal key that opens your front
` door, in a sense, that is a token. It's
` not a computer domain. But more relevant
` to computer technology, you might have a
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` criteria.
` Do you see that?
` A I do see that.
` Q And do you agree with Dr.
` Shamos' definition of a person of ordinary
` skill of the art -- in the art at the time
` of the alleged invention?
` A I think that is a reasonable
` definition. I think you can change it
` here and there and it probably wouldn't
` affect my opinions.
` Q Do you consider yourself to
` be a person of ordinary skill in the art
` at the time of the claimed invention based
` on Dr. Shamos' definition?
` A Certainly. I had a PhD by
` the time -- I believe we are in roughly
` 2002 timeframe, so I had a PhD by then and
` certainly was familiar with all these
` areas and had the level of experience and
` training described in that paragraph.
` Q Let's scroll down to
` paragraph 40 of your declaration.
` You note, "There are three
` generally accepted bases for performing
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`Page 17
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` fob that has an RFID or some kind of
` electronics inside, and when you swipe it
` by a sensor, some transaction occurs
` between the fob and sensor that
` authenticates you, and that will open a
` door or give you some access to something.
` There's also hybrid devices,
` like, if you have seen these rolling
` passwords you press a button and it gives
` you a one-time password that you manually
` enter into a keypad or website or
` something like this.
` But generally, it's a
` physical object, it is not part of your
` body, it's not part of your anatomical
` makeup that you can carry around and then
` present to a verifying authority to
` authenticate your identity.
` Q Are you aware of any
` instances in the '249 patent that discuss
` the use of token-based authentication
` methods in connection with the claimed
` portable data carrier?
` A I am not sure if I would
` consider -- I don't want to get the name
`
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`5 (Pages 14 to 17)
`
`

`

`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 5 of 8
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`Page 18
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` wrong. Is this portable data carrier, I
` think that is the term in the patent?
` Q That's right.
` A I have to look it up, but,
` yeah. You might consider that. I think
` at least in the drawing it appears to be a
` card with a smart chip on it, and I think
` patent describes it that way. So one
` might say that itself comprises a
` token-based user authentication method.
` It's unclear if the patentees
` intended to use that way. It is
` interacting with the terminal. So in some
` sense you could say that is a token-based
` user authentication method because it has
` to be there or protocol described in the
` patent to take place.
` But they never call it
` token-based, but with those words. So
` it's a matter of whether you consider it
` or not to be such.
` Q I notice you mentioned a chip
` enabled smart card.
` I see you also mention that
` in paragraph 45 of your declaration, if
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`Page 20
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` Q So the device that produces
` the rolling PIN is a separate device from
` the portable data carrier; is that right?
` MR. RICHARDS: Objection.
` Form.
` THE WITNESS: My intent is
` that it would be possible to have
` both portable data carrier and a
` second physical device that would
` be scanned at the terminal somehow,
` even though that example is not in
` the patent.
` I imagine that the claim
` attempts to include such examples
` of, let's say you walk up to the
` terminal with your portable data
` carrier and your fob, and -- I
` won't go through all the steps in
` the patent, but it sets up a
` connection. And then instead of a
` fingerprint, you present your fob
` to the terminal; it extracts
` features, sends those to the
` portable data carrier that
` validates your identity according
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` you want to turn to paragraph 45.
` Can you explain it in the
` example here, how someone authenticates
` themselves with a chip enabled smart card?
` A Sure. So I have a smart card
` in my wallet that has a chip inside of it
` that I go up to a certain door and I swipe
` the card in front of the sensor on the
` door -- and I won't go into the technology
` unless you want to talk about it. But
` there's a cryptographic exchange between
` the sensor and smart card that has to be
` satisfied to the sensor's threshold -- you
` have to satisfy a cryptographic
` authentication protocol, whereupon, if you
` do, the door opens. So that would be an
` example of a smart card with a chip
` inside.
` Q Then in paragraph 45, you
` note other examples include a fob or
` onetime password generator that produces a
` rolling PIN each time a button is pressed
` on the device.
` Did I read that correctly?
` A I believe so, yes.
`
`Page 21
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` to what is stored in the portable
` data carrier, and that would be
` another method of authenticating
` yourself separate from fingerprint.
` BY MR. HOLLANDER:
` Q So just unpacking that a bit.
` So the fingerprint in the
` example you just described would be
` entered into what you described as a
` separate fob from the portable data
` carrier; is that right?
` MR. RICHARDS: Objection.
` Form.
` THE WITNESS: I'm sorry, I
` think I was -- maybe didn't state
` it clearly.
` So the example given in the
` patent is that the data terminal
` has a fingerprint scanner, as an
` example. They state it could be
` other things. But in the preferred
` embodiment, it's fingerprint
` scanner.
` I am saying, well, let's take
` that off, it's not there. But
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`6 (Pages 18 to 21)
`
`

`

`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 6 of 8
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`Page 26
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` I would like to explore that
` a bit more.
` A Okay.
` Q The device in your example is
` the fob; is that right?
` A I intended that a fob be one
` of other examples and then a one-time
` password generator be a separate thing.
` So if we could just say a one-time
` password generator.
` You might call that a fob. I
` don't usually. I usually mean a fob is
` just an opaque piece of plastic with no
` display window. But if you want to focus
` on one-time password generators, we can do
` that.
` Q So for the one-time password
` generator, how does that interact with the
` portable data carrier in your example?
` A So once again, no
` fingerprints are involved here. You have
` this one-time password generator in your
` hand and you walk up to the data terminal
` and the data terminal has a keypad, as
` shown in the patent figure, and display.
`
`Page 28
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` random one-time password generator?
` A That's where it is
` originating from, yes.
` Q Can you enter your
` fingerprint into a key fob or separate
` device and authenticate yourself that way?
` MR. RICHARDS: Objection.
` Form.
` THE WITNESS: I'm sorry, are
` we talking outside the scope of the
` patent or you mean as another
` method that the patent might
` contemplate as authenticating
` users?
` BY MR. HOLLANDER:
` Q As another method.
` A So just to make sure I
` understand. You are saying you have a
` fob, which is not a rolling password
` generator, it's just a device, and that
` you scan your fingerprint on the fob to
` authenticate yourself. I think that's
` what you said.
` Q That's right.
` A Well, if your -- if
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` And it says, give me your rolling
` password, your one-time password.
` So then you turn to your
` one-time password generator and you press
` a button and it comes up with a 12 digit
` number, let's say. And then you have to
` enter that number into the keypad on the
` data terminal. And then after that, the
` data terminal would tell your portable
` data carrier what that number was and the
` portable data carrier would say whether
` that was -- truly authenticates you or
` not.
` Q Okay.
` So you enter in the password
` into the terminal, and then the terminal
` communicates with the portable data
` carrier to confirm the user is who they
` say they are, right, the user's
` authenticated?
` A Right. Or at least that they
` entered a number that makes sense for that
` time and place.
` Q And in this example that PIN
` is just coming from something else, this
`
`Page 29
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` authentication is complete when you scan
` your fingerprint on a fob, it's separate
` from anything in the claimed invention.
` I don't think you're
` practicing user authentication according
` to Claim 1 because you haven't used the
` portable data carrier or the data terminal
` and those are recited elements of the
` plan.
` Q So the key is that the
` portable data carrier is what conducts the
` authentication; isn't that right?
` MR. RICHARDS: Objection.
` THE WITNESS: The portable
` data carrier is the ultimate
` authority to decide whether the
` user has been authenticated or not
` and it then communicates that to
` the terminal.
` BY MR. HOLLANDER:
` Q Is it possible to have a
` fingerprint scanner on a portable data
` carrier?
` MR. RICHARDS: Objection.
` Form.
`
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`8 (Pages 26 to 29)
`
`

`

`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 7 of 8
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`Page 38
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` then present -- since she is an authorized
` user, she can authenticate herself with
` that fob to the data terminal, and it
` would -- if it would work with you, it
` would work with her.
` Q What happens if I just needed
` help in the context of the transaction?
` So I am still possessing the
` data carrier, I just give her the fob but
` I want to authenticate myself --
` MR. RICHARDS: Objection to
` form.
` BY MR. HOLLANDER:
` Q -- is that still possible?
` A So you're saying you're
` holding the portable data carrier, she is
` holding the fob, and you are sort of
` acting together?
` Q Yes.
` A I mean, off the cuff, I guess
` it would work if you're both there and
` you're both authorized, clearly, then it
` would authenticate you and her together.
` I mean, I haven't considered
` the ins and outs of how that works with
`
`Page 41
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` ACKNOWLEDGEMENT
` STATE OF ___________
` COUNTY OF __________
`
` I, the undersigned, hereby
` certify that I have read the transcript
` of my testimony taken under oath in my
` deposition; that the transcript is a true
` and complete and correct record of my
` testimony, and that the answers on the
` record as given by me are true and
` correct.
`
` _______________________
` JOHN BLACK, PhD
`
` Signed and subscribed to
` before me this _______ day of
` ______________, 20__.
`
` _____________________________
` Notary Public
`
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` string of bits, some string of
` numbers that was taken from the fob
` and then transmitted to the
` portable data carrier for
` verification, but it could take
` almost any form.
` BY MR. HOLLANDER:
` Q Now, in this example, if I
` were shopping with my wife and I was
` fumbling around in my pockets, would she
` be able to present the fob to the terminal
` and my data carrier still perform the
` transaction?
` A Are you saying that you have
` given the fob to your wife or that she's
` taken it without your consent? I am not
` sure what the context is.
` Is she an authorized user of
` the fob, is my question.
` Q Sure.
` Let's say I gave it to her
` and she is an authorized user?
` A Yeah.
` Q Meaning I shared it with her.
` A Okay. So, yeah, she could
`
`Page 40
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` the patent. But in this hypothetical, it
` seems like it would work.
` MR. HOLLANDER: I have no
` further questions.
` MR. RICHARDS: Nothing here.
` MR. HOLLANDER: Thank you,
` Dr. Black, for your time. Mr.
` Richards, I appreciate it.
` (Whereupon Testimony Concluded
` at 10:50 a.m. EDT.)
`
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`11 (Pages 38 to 41)
`
`

`

`Case 6:21-cv-01101-ADA Document 49-6 Filed 07/28/22 Page 8 of 8
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` I, S. Arielle Santos,
` Certified Shorthand Reporter, Certified
` LiveNote Reporter do hereby certify:
` That prior to being examined, the witness
` named in the forgoing deposition, was by
` me duly sworn to testify the truth, the
` whole truth, and nothing but the truth.
` That said deposition was taken before me
` at the time and place set forth and was
` taken down by me in shorthand and
` thereafter reduced to computerized
` transcription under my direction and
` supervision, and I hereby certify the
` foregoing deposition is a full, true and
` correct transcript of my shorthand notes
` so taken.
` I further certify that I am neither
` counsel for nor related to any party to
` said action nor in anywise interested in
` the outcome thereof.
`
` ____________________________________
` S. Arielle Santos, CCR, CLR
`
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` *** ERRATA SHEET ***
`CASE: Aire Technology Ltd. v. Apple Inc.
`DATE: July 25, 2022
`WITNESS: John Black, Jr., Ph.D.
`JOB NO.: 5253
` PAGE/LINE CHANGE REASON
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
` ______________________________________________________
`
` ___________________________
`
` John Black, Jr., Ph.D.
`
` Subscribed and sworn to before me
`
` this ____ day of ____________, 20__.
`
` _______________________________
` Notary Public
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
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`12 (Pages 42 to 43)
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