UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
` SONY CORPORATION, )
` )
` Petitioner, ) IPR Nos. 2018-00876
` ) 2018-00877
` v. )
` )
` FUJIFILM CORPORATION, )
` )
` Patent Owner. )
` ________________________________)
`
` VIDEOTAPED DEPOSITION OF THOMAS VON ALTEN
` Wednesday, December 12, 2018
` Boise, Idaho
`
`Reported By:
`Andrea J. Couch, CSR, RDR, CRR, CRC
`Job No. 23689
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`FUJIFILM, Exh. 2007, p. 1
`FUJIFILM v. Sony, 2018-00876
`
`

`

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`Page 4
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` EXAMINATION INDEX
` EXAMINATION BY: PAGE
` Ms. Burke 6, 174
` Mr. Speed 163
`
` INDEX OF EXHIBITS
` VON ALTEN
` Exhibit Description Page
` Exhibit 2050 McAllister-II Figure 4 156
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` The videotaped deposition of
` Thomas Von Alten was convened Wednesday,
` December 12, 2018, commencing at 8:04 a.m., held at:
`
` Comfort Suites Airport
` 2906 South Vista Avenue
` Boise, Idaho
`
` before Andrea J. Couch, Certified Shorthand Reporter,
` Registered Diplomat Reporter, Certified Realtime Reporter,
` Certified Realtime Captioner, and Notary Public in and
` for the State of Idaho.
`
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` A P P E A R A N C E S:
`
` For the Sony Petitioner:
` BY: NATHAN SPEED, ESQUIRE
` WOLF GREENFIELD & SACKS, P.C.
` 600 Atlantic Avenue
` Boston, Massachusetts 02210
` 617-646-8283
` nathan.speed@wolfgreenfield.com
`
` For the FUJIFILM Patent Owner:
` BY: KATHARINE BURKE, ESQUIRE
` BY: AARON RABINOWITZ, ESQUIRE
` BAKER BOTTS, LLP
` 1299 Pennsylvania Avenue, Northwest
` Washington, D.C. 20004
` 202-639-7751
` katharine.burke@bakerbotts.com
` aaron.rabinowitz@bakerbotts.com
`
` ALSO PRESENT:
` Chris Ennis, Videographer
`
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`TransPerfect Legal Solutions
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`
` P R O C E E D I N G S
`
` VIDEOGRAPHER: Okay. So the camera
` is rolling and we are on the record.
` This is the video deposition of
` Thomas Von Alten in the matter of Sony
` versus FUJIFILM, IPR 2018-00876 and
` IPR 2018-00877. The deposition is being
` held at the Comfort Suites, 2906 South
` Vista Avenue in Boise, Idaho, on December
` 12th, 2018, at approximately 8:04 a.m.
` My name is Chris Ennis. I am
` from the firm of TSL, and I am the legal
` video specialist. The court reporter is
` Andrea Couch in association with TSL.
` And will Counsel please
` introduce themselves.
` MS. BURKE: Katharine Burke from
` Baker Botts for FUJIFILM.
` MR. RABINOWITZ: Aaron Rabinowitz
` from Baker Botts for FUJIFILM.
` MR. SPEED: Nathan Speed from Wolf
` Greenfield & Sacks for petitioner, Sony.
` VIDEOGRAPHER: And if the court
` reporter will please swear the witness.
`2 (Pages 2 to 5)
`
`FUJIFILM, Exh. 2007, p. 2
`FUJIFILM v. Sony, 2018-00876
`
`

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` THOMAS VON ALTEN,
` a witness having been first duly sworn to
` tell the truth, the whole truth and nothing
` but the truth, was examined and testified as
` follows:
`
` EXAMINATION
` BY MS. BURKE:
` Q. Good morning, sir. Can you
` please state your name for the record.
` A. Good morning. My name is
` Thomas William Von Alten.
` Q. And where do you reside?
` A. Here in Boise, Idaho, at
` 2824 North Grandee Street.
` Q. And we met at your deposition
` in April in the ITC matter between Sony
` and FUJIFILM, right?
` A. We did. I thought it was May,
` but --
` Q. May.
` Have you sat for any
` depositions since that deposition in the
` ITC matter between Sony and FUJIFILM?
` A. I have not.
`
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` Q. You understand you are under
` oath today, the same as if you were in a
` court of law, correct?
` A. I do understand.
` Q. Is there any reason you won't
` be able to answer my questions fully and
` truthfully?
` A. There is not.
` Q. All right. In front of you are
` two exhibits that have been marked 1001
` and 1004. Exhibit 1001 is U.S. Patent No.
` 6,462,905.
` Do you see that?
` A. I do.
` Q. And you reviewed the 905 patent
` for purposes of your declaration in this
` matter?
` A. I have.
` Q. And you will understand if I
` refer to Exhibit 1001 as "the 905 patent,"
` correct?
` A. I will.
` Q. And then Exhibit 1004 is the
` declaration of Thomas W. Von Alten.
` Do you see that?
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
` A. I do.
` Q. Is that a declaration that
` you've submitted in these proceedings?
` A. It is.
` Q. You understand that these
` proceedings relate to inter partes review
` proceedings at the United States Patent
` and Trademark Office filed by Sony against
` the 905 patent, correct?
` A. I do.
` Q. And you'll understand if I
` refer to those inter partes review
` proceedings as "IPRs" for purposes of this
` deposition?
` A. Yes, I will.
` Q. And for the IPRs, you prepared
` one declaration.
` Is that correct?
` A. Yes.
` Q. And you understand that that
` declaration has been filed in both IPRs.
` Is that right?
` A. I understand that, yes.
` Q. Do you intend to perform any
` additional work related to Sony's IPRs
`
`Page 9
`
` against the 905 patent after this
` deposition?
` A. I don't have any plans, but I
` am responsive to Sony's counsel and their
` requests.
` Q. But as of today, you don't have
` any plans to perform additional work
` relating to the IPRs.
` Is that correct?
` A. That's correct.
` Q. All right. I think you
` discussed with my colleagues previously
` that you started working at HP,
` Hewlett-Packard, in 1983.
` Is that correct?
` A. Yes.
` Q. And you'll understand if I
` refer to Hewlett-Packard as "HP" for
` purposes of this deposition?
` A. I will.
` Q. Prior to 1983, did you work on
` magnetic tape cartridges at all?
` A. I did not.
` Q. And then at HP from 1983 to
` 1986, you worked on printed circuit
`3 (Pages 6 to 9)
`
`FUJIFILM, Exh. 2007, p. 3
`FUJIFILM v. Sony, 2018-00876
`
`

`

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` assemblies, correct?
` A. Yes.
` Q. Printed circuit assemblies are
` different than magnetic tape drives,
` correct?
` A. Yes.
` Q. You did not work on printed --
` I'm sorry, magnetic tape drives from 1983
` to 1986, correct?
` A. I did not.
` Q. And from 1986 to 1989, you
` began working on disk drives at HP, right?
` A. Yes.
` Q. And you did not work on
` magnetic tape drives from 1986 to 1989?
` A. Not in their manufacture, no.
` I was a user of them as a computer user in
` high-end work stations, that sort of
` thing, but --
` Q. But for purposes of your job
` responsibilities at HP, you did not have
` responsibilities relating to magnetic tape
` cartridges or drives, correct?
` A. I did not.
` Q. In 1989, you went to Stanford
`
`Page 11
` to study manufacturing systems engineering
` for a year.
` Is that correct?
` A. Yes.
` Q. Did you study magnetic tape
` cartridges at Stanford?
` A. Not specifically, no.
` Q. Did you study magnetic tape
` drives at Stanford?
` A. No.
` Q. In 1990, you returned to HP.
` Is that right?
` A. Yes.
` Q. And from 1990 to 1996, you
` again worked on disk drive systems,
` correct?
` A. Yes. I was working in the
` design lab for disk memory division.
` Q. Okay. You did not work on
` magnetic tape cartridges in the period
` from 1990 to 1996, correct?
` A. That's correct.
` Q. And you did not work on
` magnetic tape drives in the period
` from 1990 to 1996?
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`TransPerfect Legal Solutions
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` A. I did not.
` Q. So before 1996, you did not
` have any work or education experience
` relating to magnetic tape cartridges.
` Is that fair?
` A. Not specifically, but the
` general background in mechanical
` engineering, process engineering, and
` design engineering all have applicability.
` Q. Yeah, that wasn't my question.
` My question was if you had any
` work or education experience related to
` magnetic tape cartridges.
` A. No.
` Q. You've heard of the IBM 3480
` cartridge?
` A. I have.
` Q. You never worked at IBM,
` correct?
` A. I did not.
` Q. You never worked on the
` development of IBM 3480 cartridges,
` correct?
` A. I did not.
` Q. You never worked on the design
`Page 13
`
` of IBM 3480 cartridges, correct?
` A. No.
` Q. Okay. In 1996, you moved from
` the disk memory division to a Computer
` Peripheral Bristol division at HP,
` correct?
` A. Yes.
` Q. And you worked at the Computer
` Peripheral Bristol division for three
` years.
` Is that right?
` A. Yes.
` Q. And during that time from 1996
` to 1999, you worked on magnetic tape
` storage, correct?
` A. I did, yes.
` Q. Okay. And then in 1999, you
` left computer peripherals and began to
` work at HP Labs.
` Is that right?
` A. I worked on a project with
` HP Labs. I was technically still an
` employee here in Boise.
` Q. Okay. Beginning in 1999, your
` work with HP Labs did not relate to
`4 (Pages 10 to 13)
`
`FUJIFILM, Exh. 2007, p. 4
`FUJIFILM v. Sony, 2018-00876
`
`

`

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` magnetic tape cartridges, correct?
` A. That's correct. I was still
` available for consultation with the
` previous project that I had been on.
` Q. But beginning in 1999, you had
` no further responsibilities relating to
` magnetic tape cartridges at HP, correct?
` A. That's correct.
` Q. And you did not, beginning in
` 1999, have any further responsibilities
` relating to magnetic tape drives at HP,
` correct?
` A. Yes. I'd just make one
` correction there. Beginning in 1999 --
` My transition was in late 1999.
` So I was involved with tape drives from
` January through late summer/fall.
` Q. Okay. Understood.
` Beginning in late 1999, you did
` not have any further responsibilities
` relating to magnetic tape drives at HP,
` correct?
` A. One qualification. Sorry.
` There were a number of patents
` that had been applied for and were in
`
`Page 15
`
` process, and so I was still available and
` responsive to requests for completion of
` those patent applications.
` Q. Your work responsibilities
` beginning in late 1999 were not directed
` at magnetic tape drives?
` A. Not primarily, no.
` Q. Okay. Then in 2003, you
` decided to leave HP and become
` self-employed, correct?
` A. Yes.
` Q. And you've been self-employed
` since 2003.
` Is that right?
` A. Yes.
` Q. And in 2003, you left the field
` of tape cartridge --
` Well, let me start over.
` Since 2003, you've not had any
` work responsibilities relating to tape
` cartridges.
` Is that correct?
` A. That's correct.
` Q. And since 2003, you've not had
` any work responsibilities relating to tape
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`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
` drives.
` Is that correct?
` A. That's correct.
` Q. You've done nothing in the
` field of tape cartridge engineering since
` 2003, correct?
` A. Not until I became involved in
` this case.
` Q. So prior to your involvement in
` this litigation --
` Let me --
` Setting aside your involvement
` in the litigation, you've had nothing --
` done nothing in the field of tape
` cartridge engineering since 2003, correct?
` A. That's correct.
` Q. So throughout your career, the
` only experience you've had -- work
` experience you've had related to magnetic
` tape cartridges came through your work on
` the tape storage project at HP from 1996
` through 1999.
` Is that right?
` A. Yes.
` Q. All right. If you could look
`
`Page 17
`
` at Exhibit 1004, your declaration, and
` turn to page 5, please.
` So page 5 sets forth Section 3,
` "Relevant Legal Standards."
` Do you see that?
` A. I do.
` Q. And Section 3 sets forth your
` full understanding of principles of
` anticipation and obviousness that you've
` applied in this matter, correct?
` A. Yes.
` Q. And you received your
` understanding from Sony's lawyers,
` correct?
` A. Yes.
` Q. You trusted that Sony's lawyers
` provided you full and complete
` descriptions of the applicable law of
` anticipation and obviousness, right?
` A. I did.
` Q. If a legal principle is not
` described in Section 3 of your
` declaration, you did not consider it,
` correct?
` MR. SPEED: Objection.
`5 (Pages 14 to 17)
`
`FUJIFILM, Exh. 2007, p. 5
`FUJIFILM v. Sony, 2018-00876
`
`

`

`Page 18
` THE WITNESS: That seems rather a
` broad statement for me to agree to, so
` I guess I would be hesitant to.
` I mean, I understand some
` things about legal principles. I'm not a
` legal expert, but --
` Q. (BY MS. BURKE) Yeah, you're not
` a lawyer.
` A. That's correct.
` Q. And you don't have any
` experience in understanding patent law,
` correct?
` A. Not other than the experience
` that I gained working as an engineer,
` filing patent applications and working
` with patent lawyers in that context.
` Q. Did you presume to rely on that
` experience in rendering your opinions in
` this case?
` A. It's the body of knowledge that
` I rely on, along with my mechanical
` engineering training and the experience
` that I had in the industry.
` Q. For the legal principles that
` you considered important, did you identify
`Page 19
`
` them in Section 3 of your declaration?
` A. Yes.
` Q. Can you identify, sitting here
` today, any legal principle that you
` applied in rendering your opinions that's
` not in Section 3?
` A. No.
` Q. If you could turn to paragraph
` 22, please.
` A. I have it.
` Q. Okay. In paragraph 22, it
` states that, "I understand that in order
` for a claimed invention to be considered
` obvious, a POSA must have had a reason for
` combining teachings from multiple prior
` art references (or for altering a single
` prior art reference, in the case of
` single-reference obviousness) in the
` fashion proposed."
` Do you see that?
` A. I do.
` Q. And the acronym "POSA" in
` paragraph 22 refers to a person of
` ordinary skill in the art, correct?
` A. Yes.
`
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` Q. If I use the term "POSA" today,
` you'll understand I'm using it to refer to
` the phrase "person of ordinary skill in
` the art"?
` A. I will.
` Q. Okay. So in your
` understanding, if Sony proves that a POSA
` had reason for combining teachings from
` multiple prior art references in the
` fashion proposed, that is sufficient to
` render it claimed obvious, correct?
` A. Yes.
` Q. Nothing more is required to be
` shown, in your understanding?
` A. I believe that's true, yes.
` Q. Okay. When do you understand a
` person must have had a reason for
` combining teachings from multiple prior
` art references?
` A. I'm not sure I understand the
` question.
` Q. Do you understand that there's
` a time frame that you must use in
` assessing obviousness?
` A. Yes. We are in the time frame
`
`Page 21
`
` of 1999 for this consideration, putting
` ourselves in the position of a person of
` ordinary skill in the art at that time.
` Q. And what is the significance of
` 1999?
` A. It's when the 905 patent was
` filed.
` Q. Okay. In paragraph 23, you
` identify some examples of approaches and
` rationales that may be considered in
` assessing obviousness.
` Do you see that?
` A. I do, yes.
` Q. Now, one example that you list,
` if you go to page 8, the next page, the
` fifth bullet point, it says, "Known work
` in one field of endeavor may prompt
` variations of it for use in either the
` same field or a different field -- or a
` different one based on design incentives
` or other market forces if the variations
` would have been predictable to one of
` ordinary skill in the art."
` Do you see that?
` A. I do.
`
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`TransPerfect Legal Solutions
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`
`6 (Pages 18 to 21)
`
`FUJIFILM, Exh. 2007, p. 6
`FUJIFILM v. Sony, 2018-00876
`
`

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` Q. So that's one example of an
` approach or rationale for obviousness,
` right?
` A. Yes.
` Q. Then right above it, there's
` another example. "Applying a technique or
` approach that would have been 'obvious to
` try,' i.e., choosing from a finite number
` of identified, predictable solutions with
` a reasonable expectation of success."
` Do you see that?
` A. I do.
` Q. So under this example, if a
` patent challenger shows that a POSA would
` have had a reasonable expectation of
` success, it can show obviousness, correct?
` A. Yes.
` Q. A patent challenger is not
` required to show a reasonable expectation
` of success in combining prior art
` references to prove obviousness, though,
` right?
` A. Ask it again, please.
` I'm sorry.
` Q. A patent challenger is not
`
`Page 23
` required to show a reasonable expectation
` of success in combining prior art
` references to prove obviousness, right?
` A. I'm not sure I'm clear on the
` question.
` A patent challenger has to
` prove one of these many things, but not
` any one particular thing.
` Q. So you can't answer my
` question?
` A patent challenger is not
` required to show a reasonable expectation
` of success in combining prior art
` references to prove obviousness, correct?
` A. Well, the bullet point as
` expressed here says that one of the roads
` to obviousness would be to apply a
` technique from a finite number of
` predictable solutions with a reasonable
` expectation of success.
` So that's part of the clause.
` Q. Right. My question is a little
` bit different.
` A patent challenger is not
` required to show a reasonable expectation
`
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` of success in combining prior art
` references to prove obviousness, in your
` understanding, correct?
` MR. SPEED: Objection.
` THE WITNESS: I don't really
` understand your question.
` Q. (BY MS. BURKE) Okay.
` A. I'm sorry.
` There's a subtle point you're
` getting at there, and it's not clear from
` your question what it is you're trying to
` get me to answer.
` This is one of the many
` conditions for showing obviousness.
` Q. It's just a "yes" or "no."
` In your understanding, a patent
` challenger is not required to show a
` reasonable expectation of success in
` combining prior art references to prove
` obviousness?
` Can you answer that question
` "yes" or "no"?
` A. No. Yes, I can answer the
` question. The answer is no, a challenger
` is not required to prove that, in my
`
`Page 25
`
` understanding.
` Q. Okay. All right.
` If we could turn now to
` page 16, please, and if you could look at
` paragraph 38.
` Paragraph 38 starts, "The 905
` patent identifies two purported problems
` with the type of cartridge design depicted
` in McAllister-I, Mizutani, Tsuyuki, and
` Morita-II."
` Do you see that?
` A. I do.
` Q. What do you mean by a
` "purported problem"?
` A. That's what the 905
` specifications describe as the motivation
` for their invention.
` Q. And you're not accepting,
` though, that the two problems that the 905
` patent applicants described actually
` existed in the prior art, correct?
` A. I am not stating one way or
` another. I'm saying those are the
` problems that they identify in their
` patent. So they're purported until
`7 (Pages 22 to 25)
`
`FUJIFILM, Exh. 2007, p. 7
`FUJIFILM v. Sony, 2018-00876
`
`

`

`Page 26
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`Page 28
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` demonstrated.
` Q. Well, why did you use the word
` "purported"?
` A. Because I'm qualifying somebody
` else's work.
` Q. And you haven't reached an
` opinion as to whether or not those two
` problems existed in the prior art,
` correct?
` A. Well, I spelled out my opinion
` in great detail in this declaration.
` And in particular, we
` discuss -- I discuss in the declaration
` those two problems of misalignment in
` great detail and the purported problem of
` overwinding.
` Q. All right. If you could go to
` paragraph 52, please.
` Paragraph 52, the last sentence
` says, "The difference in gear diameters,
` like the guide members, thus allegedly
` solves the misalignment problem."
` Do you see that?
` A. I do.
` Q. And so here again, you're
`
`Page 27
`
` repeating what you understand the 905
` patent applicants identified as one
` solution to the problem of brake
` misalignment, correct?
` A. That's correct.
` Q. But you don't necessarily agree
` that difference in gear diameter solves
` the misalignment problem, in your opinion?
` A. In this case specifically, the
` word "allegedly" was chosen and footnoted,
` and I described my thinking about why I
` disagreed with the authors of the patent.
` Q. All right. Let's look at
` another instance of "allegedly."
` So if you go to paragraph 51,
` it says in the last sentence, "The guide
` members thus allegedly solved the problem
` the 905 patent identified, misalignment of
` the brake."
` So, again, here you're
` repeating what the 905 patent applicants
` identified, but you've not necessarily
` verified whether the guide members
` actually solved the misalignment problem
` in the 905 patent, right?
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` A. I've not necessarily verified?
` I question their description of
` effectiveness of their design.
` Q. It's possible the guide members
` had not solved the misalignment problem,
` correct?
` A. No single element here solves
` it completely, which is why we are talking
` about multiple elements.
` Q. So, again, my question: It's
` possible the guide members, including
` guide members, all else equal, would not
` solve the misalignment problem, correct?
` A. Yes, that's true.
` Q. Okay. If you could actually
` flip backwards now to paragraph 34.
` A. I have it.
` Q. Okay. So paragraph 34 states,
` "Below are four examples of a conventional
` cartridge."
` Do you see that?
` A. I do.
` Q. And then below paragraph 34,
` you identify cartridges from the
` McAllister-I, Mizutani, Morita-II, and
`
`Page 29
`
` Tsuyuki references here, correct?
` A. Yes.
` Q. And you understand that if I
` use the phrases "McAllister-I," "Mizutani"
` "Morita-II," and "Tsuyuki," I'm referring
` to the patent references identified in the
` declaration?
` A. I do.
` Q. So you identify those four
` specific references in paragraph 34
` because each of those disclose an LTO-type
` cartridge, correct?
` A. Yes.
` Q. And you would agree that none
` of the four references identified in
` paragraph 34 anticipate Claim 1 of the 905
` patent, correct?
` A. Claim 1 is having to do with
` having a guide surface, and I would
` disagree with that in terms of Tsuyuki,
` which does have a conical surface and a
` gear design which provides that guiding.
` Q. You haven't provided any
` opinions in your declaration that Tsuyuki
` anticipates Claim 1 of the 905 patent,
`8 (Pages 26 to 29)
`
`FUJIFILM, Exh. 2007, p. 8
`FUJIFILM v. Sony, 2018-00876
`
`

`

`Page 30
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`Page 32
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` correct?
` A. Well, let me check the table of
` contents on that. I think --
` I suspect it's probably true
` since you wouldn't have asked the
` question, but --
` So we used Tsuyuki to challenge
` Claim 3 specifically and not Claim 1. So,
` yes, I agree with your question.
` Q. Okay. So just to clarify for
` the record, you're not providing any
` opinions that any of the four references
` identified in paragraph 34 anticipate
` Claim 1 of the 905 patent, correct?
` A. That's correct. Those opinions
` are not in this declaration.
` Q. And you're not providing any
` opinions that any of the four references
` identified in paragraph 34 anticipate
` Claim 2 of the 905 patent, correct?
` A. Yes, that's correct.
` Q. And that is because Claims 1
` and 2 require structures called guide
` members, right?
` A. Yes.
`
`Page 31
`
` Q. And you agree that Mizutani
` does not disclose a guide member, correct?
` A. Yes, I agree to that.
` Q. And you agree that McAllister-I
` does not disclose a guide member, correct?
` A. It does not.
` Q. And you agree that Morita-II
` does not disclose a guide member, correct?
` A. It does not.
` Q. And in your work at HP, you
` worked with LTO cartridges from HP and
` Seagate on a regular basis from 1996 to
` 1999, correct?
` A. That's not strictly true.
` 1996 was the beginning of the
` project, so they came into being by virtue
` of the design work that we did over the
` course of years.
` And I don't think we had any
` Seagate cartridges specifically until --
` it would have been late 1997 or 1998.
` Q. Okay. So during that time
` period in the late '90s, you worked with
` LTO cartridges from HP and Seagate on a
` regular basis, correct?
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` A. Yes.
` Q. And you cannot identify any LTO
` cartridge before the 905 patent that had a
` guide member, correct?
` A. That's correct.
` Q. Okay. So you contend that
` guide members are found in what you call
` the Laverriere and Morita-I references?
` A. Yes.
` Q. Okay. I'll pull those
` references for you.
` So you're being handed what is
` premarked as Exhibit 1007 and
` Exhibit 1010. If you take a look at
` Exhibit 1007, that's European Patent
` Application 0,284,687 to Laverriere.
` Is that right?
` A. Yes.
` Q. And you understand if I refer
` to Exhibit 1007 as "Laverriere"?
` A. I will.
` Q. And Exhibit 1010 is