Case 1:13-cv-00919-LPS Document 129-3 Filed 07/17/19 Page 1 of 5 PageID #: 4970
`Case 1:13-cv-00919—LPS Document 129-3 Filed 07/17/19 Page 1 of 5 PageID #: 4970
`
`EXHIBIT 5E
`
`EXHIBIT 5E
`
`

`

`Case 1:13-cv-00919-LPS Document 129-3 Filed 07/17/19 Page 2 of 5 PageID #: 4971
`IPR2014-00206, IPR2014-00207, IPR2014-00208
`August 7, 2014
`Menasce, Ph.D., Daniel A.
`
`1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
` APPLE INC., GOOGLE INC.,
` and MOTOROLA MOBILITY LLC
`
` Petitioners,
` v.
` ARENDI S.A.R.L.
` Patent Owner.
` ____________
` Cases:
` IPR2014-00206 (Patent No. 7,496,854)
` IPR2014-00207 (Patent No. 7,496,854)
` IPR2014-00208 (Patent No. 7,917,843)
`
` Thursday, August 7, 2014
` 9:03 a.m.
`
` DEPOSITION OF DANIEL A. MENASCÉ, Ph.D.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1012 - Page 1
`
`

`

`Case 1:13-cv-00919-LPS Document 129-3 Filed 07/17/19 Page 3 of 5 PageID #: 4972
`IPR2014-00206, IPR2014-00207, IPR2014-00208
`August 7, 2014
`Menasce, Ph.D., Daniel A.
`2 (Pages 2 to 5)
`4
`
`2
`
`12
`
`678
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`123
`
` Deposition of DANIEL A. MENASCÉ, Ph.D,
`4 taken by Patent Owner at the Offices of Morrison &
`5 Foerster LLP, 2000 Pennsylvania Avenue, Northwest,
`6 Washington, D.C. before Randi J. Garcia, Registered
`7 Professional Reporter, and Notary Public in and for
`8 the District of Columbia, beginning at approximately
`9 9:03 a.m., when were present on behalf of the
`10 respective parties:
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` I N D E X
`3 DANIEL A. MENASCÉ, Ph.D
`4 DIRECT EXAMINATION PAGE
`5 By Mr. Asher 4
`
` ***No exhibits were marked.
`
`3
`
`5
`
`1 Thereupon,
`2 DANIEL A. MENASCÉ, Ph.D
`3 after having been first duly sworn, was
`4 examined and testified as follows:
`5 EXAMINATION
`6 BY MR. ASHER:
`7 Q Please state your full name for the
`8 record.
`9 A Daniel Alberto Menascé.
`10 Q I am going to show you a Notice of
`11 Deposition of Daniel A. Menascé, Ph.D.
`12 Are you the Daniel Menascé identified in
`13 this notice, which is paper number 11 in
`14 IPR2014206? It's paper number 11 in IPR2014207.
`15 It's paper number 13 in IPR2014208.
`16 A Yes, I am.
`17 MR. YAP: Counsel, are you going to label
`18 this at all as an exhibit? No?
`19 MR. ASHER: I just identified it by its
`20 paper number, to keep it clear.
`21 Q May I refer to IPR2014206 and 207 and
`22 208 as the 206IPR, the 207IPR and 208IPR?
`
`1
`A P P E A R A N C E S:
`2
`COUNSEL FOR
`PETITIONER APPLE, INC.
`3
`ALEX S. YAP, ESQUIRE
`MEHRAN ARJOMAND, ESQUIRE
`4 MORRISON & FOERSTER LLP
`707 Wilshire Blvd., Suite 6000
`5
`Los Angeles, CA 90017-3543
`(213) 892-5200
`6 marjomand@mofo.com
`ayap@mofo.com
`
`78
`
`COUNSEL FOR
`PETITIONERS MOTOROLA
`9 MOBILITY, LLC AND GOOGLE,
`INC.
`10
`JULIE TURNER, ESQUIRE
`TURNER BOYD LLP
`11
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040
`12
`(650) 265-6109
`turner@turnerboyd.com
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`COUNSEL FOR PATENT OWNER, ARENDI S.A.R.L.
`ROBERT M. ASHER, ESQUIRE
`JOHN J. STICKEVERS, ESQUIRE
`SUNSTEIN, KANN, MURPHY & TIMBERS LLP
`125 Summer Street, 11th Floor
`Boston, MA 02110-1618
`(617) 443-9292
`rasher@sunsteinlaw.com
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1012 - Page 2
`
`

`

`Case 1:13-cv-00919-LPS Document 129-3 Filed 07/17/19 Page 4 of 5 PageID #: 4973
`IPR2014-00206, IPR2014-00207, IPR2014-00208
`August 7, 2014
`Menasce, Ph.D., Daniel A.
`7 (Pages 22 to 25)
`24
`
`22
`
`1 create processes. When it is launched by the
`2 user, for example, when you double click on
`3 Word, what happens is that the operating system
`4 creates a process, assigns a process ID to the
`5 process, allocates resources to the process,
`6 memory, et cetera, and then loads the image of
`7 the Word program into memory. And from that
`8 point on the operating system dispatches, the
`9 CPU allocates time slices of the CPU to the
`10
` running program or running programs, so
`11
` basically you have many programs that are
`12
` running concurrently sharing the CPU. Each one
`13
` of them being given a time slice of the CPU by
`14
` the operating system.
`15
` So when, for example, if you have your
`16
` laptop; you're running, let's say, in one window
`17
` you're running Word, in the other Excel, in the
`18
` other your Outlook. All of these programs are
`19
` running at the same time.
`20
` By that I mean that if you have only one
`21
` processor, the operating system is providing a
`22
` time slice, let's say 100 milliseconds to the
`
`23
`1 Word processor. So it goes there and does some
`2 actions within 100 milliseconds. Then it loses
`3 control of the CPU and the operating system will
`4 give a time slice to your Outlook program and so
`5 on so forth.
`6 But for you, as a user, you have an
`7 impression that all are running concurrently.
`8 That's in a nutshell one of the things,
`9 important things that an operating system does.
`10 It is shared resources among different
`11 processes.
`12 Q As you described, Excel would run on one
`13 process?
`14 A Yes.
`15 Q And Word would run on another process?
`16 A Right.
`17 Q And Outlook would run on a third
`18 process?
`19 A Right.
`20 Q And the operating system would time
`21 slice and divide its time between several
`22 slices -- between several application programs?
`
`1 A Yes. Basically it will -- because the
`2 CPU is a shared resource, it will provide shares
`3 of the CPU to each of those programs in the
`4 sense that it will time slice. Time that will
`5 give slices of a time to each running process.
`6 So it does that in a way that the user
`7 does not proceed. For example, if the duration
`8 of time slice were to be too long, then one
`9 program could monopolize the CPU for too long
`10 and then as a user you would not have the
`11 impression that these programs are running
`12 concurrently.
`13 And there are other considerations, but
`14 if you want I can go into that but...
`15 Q When the Word processor described in
`16 Hachamovitch calls its Word Completion Utility,
`17 is a new process created?
`18 A No. Typically the Word Completion
`19 System would be running in a separate process.
`20 And in operating systems -- in fact, one of the
`21 things that operating systems do is they provide
`22 what is called inter-program communication
`
`25
`
`1 mechanisms or inter-process communication
`2 mechanisms. These are mechanisms by which one
`3 process can communicate with another process.
`4 For example, you could have a Word
`5 processor running in process A; Hachamovitch
`6 running in process B and they can communicate.
`7 So there are many inter-process
`8 communication mechanisms. One of them could be
`9 a remote procedure call, another could be a
`10
` service code. This process would be providing
`11
` some services to another program. And there are
`12
` message passing. This is another exactly of a
`13
` service provider mechanism, I should say
`14
` provided by the operating system, to allow
`15
` programs to communicate with one another.
`16
` So the actual way by which the
`17
` communications implemented can vary. It was
`18
` known to a person of ordinary skill in the art
`19
` way, way before 1998. I mean, any operating
`20
` system textbook would talk about that.
`21
` Q So if the Word processing program calls
`22
` the Word Completion Utility, the two of them
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1012 - Page 7
`
`

`

`Case 1:13-cv-00919-LPS Document 129-3 Filed 07/17/19 Page 5 of 5 PageID #: 4974
`IPR2014-00206, IPR2014-00207, IPR2014-00208
`August 7, 2014
`Menasce, Ph.D., Daniel A.
`20 (Pages 74 to 77)
`76
`
`74
`
`1 paragraph 63. "The only corresponding
`2 structure that performs the recited function is
`3 step 22 in Figures 1 and 2."
`4 So let me get the patent here. And so
`5 Figures 1 and 2, step 22, which says "insert
`6 correct address and name in document."
`7 Now, in the disclosures that correspond
`8 to those figures and to example five are just
`9 mere recitals of the function without any
`10 disclosure of any structure needed to perform
`11 the certain function. So that is the context
`12 of my declaration.
`13 Q Turn to the '854 patent.
`14 A Okay.
`15 Q Claim 1 on column 10. Claim 1 includes
`16 the recitation "inserting a second information
`17 into the document." Is that correct?
`18 MR. YAP: Objection. Document speaks for
`19 itself.
`20 THE WITNESS: Responding to user selection
`21 -- yes, I can read that.
`22 Q At the time of the invention of the '854
`
`1 Are we talking about Claim 1, Counsel?
`2 MR. ASHER: Yes.
`3 THE WITNESS: I'm sorry? We are talking
`4 about '854?
`5 Q Yes.
`6 A Sorry, I am confused now.
`7 MR. YAP: I don't see any
`8 means-plus-function.
`9 MR. ASHER: I didn't ask about
`10 means-plus-function.
`11 Do you want to read back the question?
`12 (Thereupon, the requested portion of the
`13 record was read back by the court reporter.)
`14 A In my reply I mentioned that to put my
`15 statement in paragraph 62 in the context in
`16 which I was making that statement. It was in
`17 the context of means for responding to user
`18 selection by inserting a second information into
`19 the document.
`20 And what I was saying in my response is
`21 that there is nothing in the specification that
`22 teaches how to do that.
`
`75
`
`77
`
`1 patent, what would one of ordinary skill in the
`2 art face in terms of achieving that insertion?
`3 MR. YAP: Object to form.
`4 THE WITNESS: As I said before, there
`5 would be many different alternatives, depending
`6 on the type of Word processor, depending upon
`7 how it was designed. So what this claim
`8 limitation says, it just says inserting without
`9 any support in the specification for how that
`10 is done.
`11 And the Board seems to agree that if not
`12 all but large number of the claims that have
`13 this means-plus-function limitations are
`14 indefinite under 112, so because structure
`15 was not found.
`16 The point I am making in my declaration
`17 is that there is no structure. There is no
`18 algorithm. There is no structure that
`19 teaches how to insert a second information
`20 into the document. That is the context of my
`21 statement.
`22 MR. YAP: I think there is confusion here.
`
`1 Q Claim 1 of the '854 patent includes the
`2 recitation of inserting a second information
`3 into the document.
`4 My question is, what challenges would
`5 one of ordinary skill in the art face at the
`6 time of the invention of the '854 patent in
`7 doing that?
`8 A Well, this invention was geared at
`9 several types of programs that could use this
`10
` invention, right. It could be the Word
`11
` processor. It could be a spreadsheet program.
`12
` So each of these programs may have different
`13
` ways and mechanisms by which one could achieve
`14
` the inserting, or they may not even have
`15
` mechanisms that facilitate an insert.
`16
` So these are not claims geared towards
`17
` Microsoft Word. These are claims that are
`18
` general in the sense that inserting -- it says
`19
` here "inserting a second information into the
`20
` document." The document could be managed by a
`21
` variety of programs. It is not just Word.
`22
` So the person of ordinary skill in the
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1012 - Page 20
`
`