Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 1 of 5
`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page1of5
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`EXHIBIT A
`EXHIBIT A
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`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 2 of 5
`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 2 of 5
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`PHILIPS NORTH AMERICA, LLC,}
`)
`
`Plaintiff,
`
`)
`
`)
`
`)
`) Case No. 2:19-cv-O6301-AB-KS
`GARMIN INTERNATIONAL,INC., }
`and GARMIN, LTD.,
`)
`)
`}
`Defendants.
`
`
`i
`;
`;
`
`i
`i
`;
`
`,
`
`INDEX OF EXHIBITS (cont)
`EXHIBITS
`PAGE
`No. 10 - Emails, Quy, Yorks, Sagi, Eric
`Halsne,et al., 3-01-13 to 4-22-16... 163
`
`intellectual Property Transfer
`No. 11 -
`Agreement between Philips and Q-Tec
`Systems, LLC, 7-05-16......... 165
`No. 12 - Provisional Application Cover Sheet,
`Roger Quy, 12-17-99. ......... 170
`
`000
`
`(Marked exhibits attached to original and
`copies of transcript)
`
`000
`
`DESIGNATED CONFIDENTIAL
`
`VIDEOTAPED DEPOSITION OF ROGER QUY,PhD | Exhibit No. 1- presentation of and testimony
`Taken on Behalf of Defendant
`i
`1
`about- Page 38, Line 23 to Page 48,Line 7.
`Wednesday, September 2, 2020
`000
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`ee
`ae
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`fdpapapept
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`aAps
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`FHOWAOAHDOSW
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`ROGER QUY, PhD 9/2/2020 Page 1
`
`INDEX OF EXAMINATION
`PAGE
`ROGER QUY, PhD
`Examination by Ms. Marriott...........
`7
`000
`
`INDEX OF EXHIBITS
`
`PAGE
`EXHIBITS
`No. 1- Letter/Consulting Agreement from
`Foley & Lardner to Roger J. Quy,
`PhD, 10-07-19. ..........4. 38
`.2- Corporate Licensing Opportunity, Q-Tec
`Systems, LLC,Intellectual Property
`Portfolio, with attachments. ..... 49
`.3- Patent Purchase Agreement between
`Q-Tec Systems, LLC anc Philips,
`12-08-08 .. 0. eee 75
`.4- Email, Brian Sagi to Roger Quy,
`O-T7ABL ee 96
`
`.5- Q-Tec Patent Strategic Discussions
`list, 9-17-13. 000000... 100
`.6- Q-Tec Patent Strategic Discussions
`list, 10-0113 ............ "8
`
`.7- Emails, Quy to Brinton Yorks; Brian
`Sagi, Erik Pastink, et al., 2-13-13
`to 4-20-16... cece 127
`
`.8- Emails, Quy, Yorks, Pastink, Sagi,
`et al, 3-17-14 to 3-09-15 ...... 132
`.9- Emails, Quy, Michael Blacksburg,
`Tamara Wallenstein, Erik Dryburgh,
`etal, 2-17 - 3-08-16 ........ 155
`
`1
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`3
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`L
`of
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`PHILIPS NORTH AMERICA,LLC,}
`)
`
`Plaintiff,
`
`)
`
`.
`
`)
`
`)
`} Case No. 2:19-cv-06301-AB-KS
`)
`GARMIN INTERNATIONAL,INC., )
`and GARMIN, LTD.,
`)
`)
`Defendants.
`
`)
`
`.
`
`VIDEOTAPED DEPOSITION OF ROGER QUY,PhD,
`produced, sworn and examined on September 2, 2020,
`betweenthe hours of 11:03 a.m. and 5:16 p.m. of that
`day (CST) before Connie McCarthy, CCR, CSR, RMR, CRR.
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`1 (Pages 1 to 4)
`
`Fax: 314.644.1334
`
`CONFIDENTIAL - OUTSIDE COUNSEL ONLY
`
`GARMINO00005164
`
`

`

`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 3 of 5
`
`ROGER QUY, PhD 9/2/2020
` Page 5
`
`APPEARANCES
`
`For the Plaintiff:
`THOMASS. BROWN, ESQ.
`{via Zoom)
`RUBEN J. RODRIGUES, ESQ.
`(via telephone)
`Foley & Lardner, LLP
`555 California Street
`Suite 1700
`San Francisco, California 94104
`(415) 434-4484
`tshrown@foley.com
`rrodrigues@foley.com
`
`For the Defendant:
`MICHELLE L. MARRIOTT, ESQ.
`{via Zoom)
`Erise IP, PA.
`7015 College Boulevard
`Suite 700
`Overland Park, Kansas 66211
`(913) 777-5600
`michelle.marriott@eriseip.com
`
`Videographer: Ryan Gray (via Zoom)
`
`Reported By:
`Connie McCarthy, RMR, CRR
`MO CCR #1435
`CA CSR #13173
`
`WN
`IOCloe
`mmO©Sopps
`reTogsGsN
`
`statement to read.
`
`COURT REPORTER: The attorneys
`participating in this deposition acknowledge that |
`am not physically present in the deposition room and
`that | will be reporting this deposition remotely.
`They further acknowledge that,in lieu of
`an oath administered in person, | will administer the
`oath remotely.
`The parties and their counsel consent to
`this arrangement and waive any objectionsto this
`mannerof reporting.
`Please indicate your agreement by stating
`your name and your agreement on the record.
`MS. MARRIOTT: Michelle Marriott.
`| agree.
`MR. BROWN: Tom Brown.
`| agree.
`
`ROGER QUY, PhD,
`called as a witness by the defendants, having
`been duly sworn, testified as follows:
`
`EXAMINATION
`BY MS. MARRIOTT:
`
`Q@. Good morning, Dr. Quy.
`| don't have
`A.
`|am not sure who's speaking.
`a picture of you. Whose voice am | hearing?
`
`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 3of5 Page 7
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`Wednesday, September 2, 2020
`
`11:03 a.m.
`
`VIDEOGRAPHER: Weare on the record.
`
`Today's date is September 2nd, 2020, and the time is
`11:03 a.m., Central Standard Time.
`This is the video-recarded deposition
`of Roger Quy in the matter of Philips North America,
`LLC vs. Garmin International, Incorporated, et al.,
`Case No. 2:19-cv-06301-AB-KSin the United States
`District Court for the Central District of
`
`California. This deposition is being held all
`remote.
`
`The reporter's name is Connie McCarthy. My
`name is Ryan Gray.
`I'm the legal videographer. We
`are with Alaris Litigation Services.
`Would the attorneys present please
`introduce themselves and the parties they represent?
`MS. MARRIOTT: Michelle Marriott for
`defendants Garmin, International and Garmin, Limited.
`MR. BROWN: Tom Brown with Foley & Lardner
`for Philips North America, LLC, and the witness.
`MR. RODRIGUES: Ruben Rodrigues, Foley &
`Lardner, also representing Philips and the witness,
`also on the line.
`
`VIDEOGRAPHER: Now the court reporter has a
`
`Is that
`
`Q@. My name is Michelle Marriott. And | am an
`attorney for Garmin in this case. Can you hear me
`okay?
`[can hear you, but not see you.
`A.
`going to be the case?
`Q.
`I'm not sure. So I'm on video on my end.
`I'm not sureif it's possible on your end, given the
`setup that you all have for you to see me.
`MR. RODRIGUES: Could we go off the record
`for a minute?
`MS. MARRIOTT: Sure.
`VIDEOGRAPHER: Off the record, 11:06 a.m.
`(Recess)
`VIDEOGRAPHER: On the record, 11:16 a.m.
`BY MS. MARRIOTT:
`
`Q. Let's start over. Good morning, Dr. Quy.
`A. Good morning.
`Q. You are here today to have your deposition
`taken in connection withthis litigation. Have you
`ever had your deposition taken before?
`Yes.
`
`How manytimes?
`Once. Yesterday.
`Okay. And wasthatin the Fitbit case?
`Yes.
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`2 (Pages 5 to 8)
`
`Fax: 314.644.1334
`
`CONFIDENTIAL - OUTSIDE COUNSEL ONLY
`
`GARMINO00005165
`
`

`

`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 4of5
`
`ROGER QUY, PhD 9/2/2020
`
`Page 145
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`Page 147
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`one point of novelty in my patents.
`BY MS. MARRIOTT:
`
`Noob
`GobWw
`
`WHROwwDWAwANH
`
`peoppapt
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`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 4 of 5
`
`Q. Are you able to identify what you consider
`to be the points of novelty in your ‘191 family
`patents?
`A.
`I can identify, sitting here today, off the
`top of my head talking about a patentoriginally
`filed 20 years ago -- and you have to rememberin
`aspect.
`that context, we're talking about the technology as
`So there are three examples of manyright
`of 1998 when| filed -- '99, when|filed the
`there. And |'ilstop, becausethis is a very long
`answer.
`provisional. And in that context, the common form
`of -- well, let me backtrack.
`| don't want to give
`you too long an answer.
`But I've been involved in monitoring
`patients since the late 70s when | invented a device
`that was for monitoring brain activity from patients.
`And the key feature of that device was it's mobile.
`Back in those days, when | was a post-doctoral
`research fellow in London, the state of the art was
`telemetry, and telemetry, which described a lot of
`the prior art referenced in the '191 patent,
`typically involved short-term radio connectivity
`between a medical monitoring device and some form of
`base station or some form of modem that was connected
`
`capability, memory, display size, what you could do
`ona mobile phone. So a key part of my invention
`back in the late 90s or mid 90s wasfiguring out what
`could be done within the constraints of what was then
`
`a nascent web-enabled wireless phone. And the
`solution to that was to push a lot of the processing
`on to the backend server. And that was another
`
`@. No, | appreciate that.
`With respect to the mobile monitoring by a
`wireless telephone, what was the benefit of using a
`wireless telephone to provide monitoring?
`A. The primary benefit is defined in a mobile
`phone. Mobility. One could be monitored in the big
`outside world rather than being confined in the home
`or the gym or the clinic. That allowed monitoring
`of, let's say, a mecical data, or exercise data in
`which someone's running.
`If you're exercising in the
`form of running or cycling, you certainly can't do
`that with a common telephone whichis plugged into
`the wall. So there is one benefit right there.
`Q@. And when you're describing the monitoring,
`
`into a telephone line. By that nature, that meantit
`
`Page 146
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`Page 148
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`really was not mobile, in that the patient could walk
`around the home, or walk around in a hospital
`environment, but they couldn't walk around in the
`outside world.
`
`Soa key element of my invention, whichis
`described in ‘191 and made more explicit in the '377
`claim, that this is a mobile monitoring, by meansof,
`for example, a wireless telephone. So one no longer
`is confined to just telemetry, being monitored in the
`home or ina gym or in a hospital environment. So
`mobility was a key environment.
`Another key aspect of my invention, going
`back to the '94 patent in Home Healthcare
`Interactive, is indicated by the name, whereit's
`interactive monitoring in contrast to a lot of the
`prior art where it was simply monitoring data from
`the patient. Instead, there are a number of forms of
`information and feedback provided to the patient or
`to the subject, the user, to make that monitoring -~-
`mobile monitoring an interactive monitoring.
`Another key element described in the one --
`in the '191 patent was the notion that because back
`in the late 90s -- we're talking about the last
`century, after all -- the capability of mobile phones
`and the like was verylimited in terms of processing
`
`who's doing the monitoring?
`A. The monitoring is a term in the state of
`art for receiving a form of data.
`In this case,
`physiological data. And receiving itin a device
`whichis collecting that data, storing it, and so
`forth. That's a generic term for gathering data from
`a subject.
`@. So monitoring, when you're using the word
`"monitoring", it's gathering data?
`A. Amongst other things, yes. So one
`describes -- for example, today, you go into a
`|
`hospital and say, There's the heart rate monitor.
`think it's understood that that means that's a device
`
`for gathering and storing and displaying, etc., data,
`pertaining to heart rate. That is the common
`understanding of the word "monitor".
`@. And does monitoring,in the way that you're
`using the word, have anything to do with viewing the
`data? Oris it just in terms of gathering data?
`A. My apologies, my colleague here sneezed in
`the middle of that statement.
`| didn't hear it.
`
`Q@. No worries. When you are using the word
`“monitoring”in this discussion, doesit have any
`relation to viewing data that's received? Or is it
`just the process of gathering data?
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`37 (Pages 145 to 148)
`
`CONFIDENTIAL - OUTSIDE COUNSEL ONLY
`
`GARMIN00005200
`
`

`

`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page 5 of 5
`Case 1:19-cv-11586-FDS Document 366-1 Filed 03/30/22 Page5of5
`
`ROGER QUY, PhD 9/2/2020
`
`
`
`Page 149
`
`mwNYF
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`on
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`A. Certainly is not just. No, itis not just
`the process of gathering data.
`It can be reviewed;
`often is reviewed. Doesn't have to be reviewed, but
`typically is reviewed. Either by the user himself,
`because what's the point of gathering data if you
`can't see it in some instances? Other cases,it
`might be reviewed by a physician, it might be
`reviewed later on by the patient afterit's been
`stored, it might be reviewed by another third party
`such as a fitness coach.
`
`Q. And -- okay, that's helpful.
`And when you're talking about the third
`element that you identified, that the capability of
`phones waslimited, and so you were pushing a lot of
`the processing on to the backend server, did that
`backend server, the processing that was happening
`there, relate to the monitoring?
`A.
`Itcan.
`It doesn't have to. The -- it
`
`It could be avery
`depends on the application.
`simple process on the server wherethe data simply --
`the data is simply sent from the phone to a server to
`be stored and later sent -- later reviewed by the
`user. For example, how much running have | done this
`week? Or what does is my glucose monitor -- my
`glucose levels look like this week? It could be a
`
`toOxDOB®WYBR
`
`BoBBO
`ms No+
`
`you had retained, correct?
`| had
`A. Mr. Sagi had discussions with them.
`discussions to clarify a numberof points around
`their licensing, etc., that Mr. Sagi invited me to
`ask Philips for clarification, yes.
`Q. Andin the context of doing that, you
`created a DAF, correct? You set up a DAF?
`A. Ask me the question again, please?
`Q. Yep. To facilitate that purchase, that
`acquisition, you set up on your side what's called a
`DAF? Is that true?
`
`A. The answer to your question as you asked is
`no. The question -- yes, | did set up a DAF.
`For the sake of reporter, that's a
`donor-advised fund.
`
`|
`| set that up prior to the acquisition.
`set it up as part of my philanthropic strategy, and |
`set it up first to receive some - abouta haifa
`million dollars of low basis stock. Also
`
`subsequently usedit to receive the -- to receive
`Q-Tec and its assets.
`
`it was not set up for the sole purpose of
`receiving those assets or those patents, no.
`Q@. Okay. And what does that -- does that DAF
`provide certain tax benefits?
`
`NONNMN Page 151
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`Page 150
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`Page 152
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`much more involved interaction whereby the server
`brings in data from databases such as other people's
`activities or other -- or normsof data, or advice.
`It could involve really complicated interactions such
`as bringing in an artificial intelligence system. Or
`it could allow, as you already indicated, a physician
`to review the data.
`
`So there are many forms of applications
`that could run on that backend server.
`
`@. And in the context of what you believe you
`invented, was the purpose of pushing data to the
`backend server so that someone other than the user
`could monitor that data?
`
`it was one of
`it wasn't a sole purpose.
`A.
`the benefits, because then somebodyelse, a remote
`second user, had the opportunity to review the data.
`Clearly, if the patient is wandering around in the
`outside world or is home, it doesn't necessarily
`allow the physician to review it. By putting it into
`a server, it enables a physician or someone else to
`review it. That wasn't the sole purpose of any of
`it. Just one of the benefits.
`
`Q@. At some point, you -- we can take this
`exhibit down -- at some point, you had discussions
`with Philips about them acquiring the patents that
`
`A. The donor-advised fund is a means by which
`one can make donations to charitable entities from
`
`low basis stock or other such assets without paying
`capital gains. So, yes, it does provide tax benefits
`in that if | had sold my stock and donated the
`fund -- donated the proceeds, ''d have to pay capital
`gains in the same wayif | had sold the patents and
`then donated the proceeds, | would have to pay
`capital gains. So as a tax strategy,it is well
`knownthatit's beneficial to donate low basis stock
`
`prior to sale to avoid paying tax, and rather to use
`that moneyinstead for charitable purposes, which is
`what I chose to do.
`
`Q@. And is that what happened with -- let me
`strike that.
`
`When yousold the remainder of your
`portfolio to Philips in 2016, did you personally
`receive any amount of moneyas a result of that
`acquisition?
`A. All right, you've asked me a question again
`which| have to unpack in order to answer.
`| did not sell the patents to Philips.
`|
`did receive -- | did not personally receive anything
`from Philips, but my donor-advised fund, or the
`charitable foundation that owned it, did receive
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`38 (Pages 149 to 152)
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`CONFIDENTIAL - OUTSIDE COUNSEL ONLY
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`GARMINO0005201
`
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