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` UNITED STATES DISTRICT COURT
`
` FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`______________________________
`
`BLACKBERRY LIMITED, a ) Case No.
`
`Canadian corporation, ) 2:18-cv-01844-GW-KS
`
` Plaintiff, ) Lead Consolidating Case
`
` vs. ) Related Case:
`
`FACEBOOK, INC., a Delaware ) 2:18-cv-02693-GW-KS
`
`corporation, WHATSAPP INC., a )
`
`Delaware corporation, and )
`
`INSTAGRAM, INC., a Delaware )
`
`corporation, and INSTAGRAM, )
`
`LLC, a Delaware limited )
`
`liability company, )
`
` Defendants. )
`
`______________________________)
`
` VIDEOTAPED DEPOSITION OF DAN SCHONFELD, PH.D.
`
` San Francisco, California
`
` Tuesday, July 30, 2019
`
`Reported by:
`
`ASHALA TYLOR, CSR #2436, CLR, CRR, RPR
`
`JOB NO. 3476210
`
`PAGES 1 - 160
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`Page 1
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`Facebook's Ex. 1024
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`

`1 I N D E X
`2 WITNESS EXAMINATION BY PAGE
`3 DAN SCHONFELD, PH.D.
`4 Mr. Weinstein 7, 96, 146
`5 Mr. Schmidt 140
`
`6 7
`
` E X H I B I T S
`8 NO. DESCRIPTION PAGE
`9 Exhibit 1 Declaration of Dan Schonfeld, Ph.D. 10
`10 Exhibit 2 Patent No.: US 8,677,250 B2, 10
`11 BB_Facebook00031819 - 838
`12 Exhibit 3 Patent No.: US 8,279,173 B2, 10
`13 BB_Facebook00031721 - 737
`14 Exhibit 4 Blackberry's Notice of Motion and 133
`15 Motion for Partial Summary Judgment
`16 of Infringement of U.S. Patent Nos.
`17 8,677,250, 8,279,173 and 9,349,120
`18 Exhibit 5 Deposition of Kun Chen, 6-26-19 142
`19
`20
`21
`22
`23
`24
`25
`
`1 UNITED STATES DISTRICT COURT
`2 FOR THE CENTRAL DISTRICT OF CALIFORNIA
`3 ______________________________
`4 BLACKBERRY LIMITED, a ) Case No.
`5 Canadian corporation, ) 2:18-cv-01844-GW-KS
`6 Plaintiff, ) Lead Consolidating Case
`7 vs. ) Related Case:
`8 FACEBOOK, INC., a Delaware ) 2:18-cv-02693-GW-KS
`9 corporation, WHATSAPP INC., a )
`10 Delaware corporation, and )
`11 INSTAGRAM, INC., a Delaware )
`12 corporation, and INSTAGRAM, )
`13 LLC, a Delaware limited )
`14 liability company, )
`15 Defendants. )
`16 ______________________________)
`17
`18 Videotaped deposition of DAN SCHONFELD, PH.D.,
`19 taken at Quinn Emanuel Urquhart & Sullivan, LLP,
`20 50 California Street, San Francisco, California,
`21 commencing at 9:35 a.m. and ending at 3:42 p.m., on
`22 Tuesday, July 30, 2019, before Ashala Tylor, CSR No.
`23 2436, RPR, CRR, CLR.
`24
`25
`
`Page 2
`
`Page 4
`
`1 San Francisco, California; Tuesday, July 30, 2019
`2 9:35 a.m.
`3 --o0o--
`4 09:31
`5 THE VIDEOGRAPHER: Good morning. We're 09:35
`6 going on the record at 9:35 a.m. on July 30, 2019. 09:35
`7 Please note that the microphones are very, 09:35
`8 very sensitive and may pick up whispering, rubbing 09:35
`9 of clothing, hair and microphone cable. Please 09:35
`10 silence all cell phones and place them away from the 09:35
`11 microphones as they can interfere with deposition 09:35
`12 audio. 09:35
`13 Audio-video recording will continue to 09:35
`14 take place unless all parties agree to go off the 09:35
`15 record. 09:35
`16 This is Media Number 1 of the 09:35
`17 video-recorded deposition of Dr. Dan Schonfeld taken 09:35
`18 by counsel for the defendant in the matter of 09:35
`19 BlackBerry Limited versus Facebook, Inc., WhatsApp, 09:35
`20 Inc., and Instagram, Inc., filed in the 09:35
`21 United States District Court, Central District of 09:36
`22 California. Lead -- excuse me, case number 09:36
`23 2:18-cv-01844-GW-KS, lead consolidated case. 09:36
`24 This deposition is being held at 50 09:36
`25 California Street, 22nd Floor, San Francisco, 09:36
`
`1 APPEARANCES OF COUNSEL:
`
`2 3
`
`FOR THE PLAINTIFF:
`4 QUINN EMANUEL URQUHART & SULLIVAN, LLP,
`5 BY: PATRICK SCHMIDT, ESQ.
`6 865 South Figueroa Street, 10th Floor
`7 Los Angeles, California
`8 213.443.3000
`9 patrickschmidt@quinnemanuel.com
`10
`11 FOR THE DEFENDANTS:
`12 COOLEY LLP
`13 BY: MARK WEINSTEIN, ESQ.
`14 HEIDI KEEFE, ESQ.
`15 3175 Hanover Street
`16 Palo Alto, California 94304-1130
`17 650.843.5001
`18 mweinstein@cooley.com
`19 hkeefe@cooley.com
`20
`21 Also Present:
`22 Brandon Miller, Videographer
`23
`24
`25
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`1 California 94111. 09:36
`
`2 My name is Brandon Miller with the firm 09:36
`
`3 Veritext Legal Solutions, and I'm the videographer. 09:36
`
`4 The court reporter is Ashala Tylor for the firm 09:36
`
`5 Veritext Legal Solutions. 09:36
`
`6 I'm not related to any party in this 09:36
`
`7 action, nor am I financially interested in the 09:36
`
`8 outcome. 09:36
`
`9 Counsel and all present in the room will 09:36
`
`10 now say their appearances and affiliations for the 09:36
`
`11 record. 09:36
`
`12 MR. WEINSTEIN: Mark Weinstein of Cooley 09:36
`
`13 LLP, representing the defendants. And with me is 09:36
`
`14 Heidi Keefe, also from Cooley LLP, also representing 09:36
`
`15 the defendants. 09:37
`
`16 MR. SCHMIDT: Good morning. Patrick 09:37
`
`17 Schmidt from Quinn Emanuel on behalf of the 09:37
`
`18 plaintiff Blackberry. 09:37
`
`19 THE VIDEOGRAPHER: Thank you. You may now 09:37
`
`20 swear the witness. 09:37
`
`21 DAN SCHONFELD, Ph.D., 09:37
`
`22 being first duly sworn or affirmed to testify 09:37
`
`23 to the truth, the whole truth, and nothing but 09:37
`
`24 the truth, was examined and testified as follows: 09:37
`
`25 /// 09:37
`
`Page 6
`
`1 Q. You haven't been deposed in this case, 09:38
`2 have you? 09:38
`3 A. No. 09:38
`4 Q. So I'm going to give you the speech that 09:38
`5 basically every deposition in the United States has 09:38
`6 ever begun within the last 50 nears. I'm sure you 09:38
`7 know everything, but we have to have it on the 09:38
`8 record. 09:38
`9 This deposition and everything you say is 09:38
`10 under oath. It has the same force and effect as if 09:38
`11 we were in open court. 09:38
`12 You understand that, correct? 09:38
`13 A. I do. 09:38
`14 Q. If at any time during the deposition you 09:38
`15 don't understand a question I'm asking, feel free to 09:38
`16 ask me to clarify; otherwise I have no choice but to 09:38
`17 assume that you understood my question. Agreed? 09:38
`18 A. I will do so to the best -- to the extent 09:38
`19 that I misunderstand the question. 09:38
`20 Q. Thank you so much. 09:38
`21 The court reporter next to us is going to 09:38
`22 take down everything you and I say, so there's a 09:38
`23 reciprocal rule that we both have to follow based on 09:38
`24 the fact that the court reporter can only take down 09:38
`25 one person speaking at a time, which is that I would 09:38
`Page 8
`
`1 EXAMINATION 09:37
`2 BY MR. WEINSTEIN: 09:37
`3 Q. Good morning, sir. 09:37
`4 A. Good morning. 09:37
`5 Q. Would you state your name for the record? 09:37
`6 A. Yeah, it's Dan Schonfeld. 09:37
`7 Q. Okay. And for ease of reference, do you 09:37
`8 prefer Dr. Schonfeld or Mr. Schonfeld? 09:37
`9 A. Dr. Schonfeld is fine. 09:37
`10 Q. Okay. Thank you. 09:37
`11 A. Any which way you prefer is fine. 09:37
`12 Q. Thank you, Dr. Schonfeld. You're 09:37
`13 currently employed, right? 09:37
`14 A. I am. 09:37
`15 Q. Who is your current employer? 09:37
`16 A. The University of Illinois in Chicago. 09:37
`17 Q. Do you have any residences in California? 09:37
`18 A. No. 09:37
`19 Q. Okay. Have you had your deposition taken 09:37
`20 before? 09:37
`21 A. Yes. 09:37
`22 Q. Approximately how many times? 09:37
`23 A. It depends on how you count, but I would 09:37
`24 say somewhere around probably slightly higher than 09:38
`25 40. 09:38
`
`1 ask that you wait for me to finish the question 09:38
`2 before providing an answer, and I, in turn, will 09:39
`3 endeavor to wait for you to finish your answer until 09:39
`4 proceeding to the next question. 09:39
`5 Sounds reasonable? 09:39
`6 A. Yes. 09:39
`7 Q. Okay. Are you taking any medication, 09:39
`8 Dr. Schonfeld, that could affect the testimony that 09:39
`9 you are giving here today? 09:39
`10 A. Not that I'm aware of, no. 09:39
`11 Q. Are there any reasons that you can 09:39
`12 identify that you can't give your best and most 09:39
`13 accurate testimony here today? 09:39
`14 A. Not that I'm aware of, no. 09:39
`15 Q. Okay. Thank you, sir. 09:39
`16 So you have been retained by the plaintiff 09:39
`17 BlackBerry in this case, correct? 09:39
`18 A. Yes. 09:39
`19 Q. Approximately when were you retained in 09:39
`20 this action? 09:39
`21 A. I am -- I believe it was -- in or around 09:39
`22 April 2018. 09:39
`23 Q. Okay. So right around the time this 09:39
`24 litigation got started? 09:39
`25 A. Yes, I presume so. I'm not sure. 09:39
`
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`1 Q. But as far as the actual displaying of the 01:41
`2 tag list, that code is the JavaScript code running 01:41
`3 on the browser, correct? 01:41
`4 A. At least in part. Again, I don't want to 01:41
`5 limit myself to saying all of it is a JavaScript 01:41
`6 code. 01:41
`7 Q. Okay. I'm just -- because -- maybe this 01:41
`8 is more a semantic issue. 01:41
`9 The claim calls for displaying a tag list, 01:41
`10 including tags from one or more tag sources, and 01:41
`11 matching a search string. So the claim actually 01:41
`12 doesn't require that a search be run, correct? 01:41
`13 MR. SCHMIDT: Objection. Calls for a 01:42
`14 legal conclusion. 01:42
`15 THE WITNESS: Well, I think it says 01:43
`16 matching a search string. And under your 01:43
`17 interpretation of the limitation, matching a search 01:43
`18 string would be true whether or not the actual 01:43
`19 matching is performed. And that's not how I read 01:43
`20 it. I actually viewed the matching as being 01:43
`21 something that needs to take place. 01:43
`22 BY MR. WEINSTEIN: 01:43
`23 Q. Okay. It -- 01:43
`24 A. And -- 01:43
`25 Q. Go ahead. I'm sorry. 01:43
`
`1 If I could direct you to a passage in 01:45
`2 column 5. It starts on line 39 through 47. I'll 01:45
`3 read it into the record. 01:45
`4 "In an embodiment, as the user begins to 01:45
`5 type, photo tag selection module 148B may be 01:45
`6 configured to search one or more selected 'tag 01:45
`7 sources' for tags that match the currently entered 01:45
`8 text." 01:45
`9 And then it goes on from there. Do you 01:45
`10 see that? 01:45
`11 A. I do. 01:45
`12 Q. We'll stop there. So when you read the 01:45
`13 claim, do you think that the claim requires that the 01:45
`14 system search one or more tag sources in order to 01:45
`15 generate the tag list? 01:46
`16 MR. SCHMIDT: Objection to the extent it 01:46
`17 calls for a legal conclusion. 01:46
`18 THE WITNESS: So when I read the 01:46
`19 limitation in Claim 13, limitation A that we are 01:46
`20 talking about, reading it in light of the 01:46
`21 specification, I do not impose anything beyond what 01:47
`22 the claim limitation requires. And the claim 01:47
`23 limitation does not explicitly require what's in 01:47
`24 column 5. 01:47
`25
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`Page 106
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`Page 108
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`1 A. And I would say that the claim asserted in 01:43
`2 this case is Claim 14. And from Claim 14, the code 01:43
`3 is for providing a tag entry field for entering the 01:43
`4 search string. 01:43
`5 So if one were to interpret it where no 01:43
`6 search takes place, then you would have to enter a 01:43
`7 search string for Claim 14 and do nothing with it. 01:43
`8 So it would be an unusual interpretation of the 01:43
`9 claim. 01:44
`10 Q. Understood. So as far as how the search 01:44
`11 is conducted, does the claim provide any limitations 01:44
`12 on how the search must be conducted, in your 01:44
`13 opinion? 01:44
`14 MR. SCHMIDT: Objection to the extent it 01:44
`15 calls for a legal conclusion. 01:44
`16 THE WITNESS: The only thing that I -- 01:44
`17 according to my interpretation, I imposed the fact 01:44
`18 that the search has to actually perform a search and 01:44
`19 by at least matching a search string. 01:44
`20 BY MR. WEINSTEIN: 01:44
`21 Q. Does the -- does the claim require that 01:44
`22 the search -- well, withdrawn. 01:44
`23 Let me -- let me refer you -- I know 01:45
`24 you're looking at the patent, and that's perfectly 01:45
`25 fine. 01:45
`
`1 BY MR. WEINSTEIN: 01:47
`2 Q. So it does not require that what is 01:47
`3 searched be one or more tag sources. Is that what 01:47
`4 you're saying? 01:47
`5 MR. SCHMIDT: Objection to the extent it 01:47
`6 calls for a legal conclusion. 01:47
`7 THE WITNESS: Well, it requires -- the 01:47
`8 wording that are required are code for displaying a 01:47
`9 tag list, including tags from one or more tag 01:47
`10 sources. 01:47
`11 So the tags have to come from one or more 01:47
`12 tag sources, and they have to match a search string. 01:47
`13 And I do not go beyond that to -- to determine what 01:47
`14 is required. 01:47
`15 BY MR. WEINSTEIN: 01:47
`16 Q. How can the system search for tags that 01:47
`17 come from one or more tag sources without searching 01:47
`18 within those tag sources? 01:47
`19 A. So I'm not sure if I completely understand 01:48
`20 the question, but the limitation is only about code 01:48
`21 for displaying, and specifically it's for displaying 01:48
`22 a tag list. And then there is the limitation 01:48
`23 requires that that list include tags that are from 01:48
`24 one or more tag sources. It's silent as to where -- 01:48
`25 where the search has to take place. 01:49
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`1 Q. Okay. Now, I'll represent to you that I 01:49
`2 do not believe that any terms from the '173 patent 01:49
`3 were construed by the court in connection with this 01:49
`4 case; but in order to form an opinion of 01:49
`5 infringement, you formed an understanding of what 01:49
`6 the claims actually require, correct? 01:49
`7 A. I understood the claims and what they 01:49
`8 meant to me. 01:49
`9 Q. Okay. So -- so in your own words, can you 01:49
`10 describe for me what the word "tag sources" means in 01:49
`11 the context of the '173 patent? 01:49
`12 MR. SCHMIDT: Objection to the extent it 01:49
`13 calls for a legal conclusion. 01:49
`14 THE WITNESS: I simply adopted the 01:49
`15 understanding that -- well, just the plain meaning. 01:49
`16 And I think plain meaning is something that in this 01:49
`17 case, and not only a person of ordinary skill but 01:50
`18 any person would understand, and this is just a 01:50
`19 tag is a -- it's just a source of tags. 01:50
`20 BY MR. WEINSTEIN: 01:50
`21 Q. Okay. And then a search string, what is 01:50
`22 your understanding, as a person of skill in the art,
`23 of what a search string is when you were looking for
`24 infringement of the '173 patent?
`25 MR. SCHMIDT: Objection to the extent it 01:50
`Page 110
`
`1 and the patent specification gives some examples. 01:53
`2 Once again, if you look at paragraph 82 of my 01:53
`3 declaration, I cite to the patent -- for example, to 01:53
`4 column 6, lines 5 through 9 -- where the patent 01:53
`5 talks about a user's Facebook friends. Facebook 01:53
`6 friends is one example, and I also cite to column 5, 01:53
`7 line 43 through 47. And I think generally the 01:53
`8 patent specification talks about other examples of 01:53
`9 sources such as locations. 01:53
`10 Claim 18, for example, talks about a tag 01:53
`11 source as having one or more of an online network 01:53
`12 profile, an address book, browser bookmarks, 01:54
`13 landmark tears -- tags, sorry, and free form text. 01:54
`14 And so it gives a whole array of examples both in 01:54
`15 the claims as well as the specification, and it's 01:54
`16 scattered throughout. 01:54
`17 BY MR. WEINSTEIN: 01:54
`18 Q. But a tag source identifies where tags 01:54
`19 come from, correct? 01:54
`20 MR. SCHMIDT: Objection to the extent it 01:54
`21 calls for a legal conclusion. 01:54
`22 THE WITNESS: I don't necessarily view it 01:54
`23 as -- as limited to -- to determining where it comes 01:54
`24 from; but it does provide a distinction between -- 01:54
`25 between -- between the different objects or the 01:54
`Page 112
`
`1 calls for a legal conclusion. 01:50
`2 THE WITNESS: So I think the easiest for 01:51
`3 me -- easiest way for me to convey my understanding 01:51
`4 of a search string would be just by example. 01:51
`5 If you look at Figures 4B, 4C, 4D, 4E, and 01:51
`6 4F, those would be an example consistent with a 01:51
`7 search string means to anyone. 01:51
`8 BY MR. WEINSTEIN: 01:51
`9 Q. Understood. 01:51
`10 A. Again, it's not the term that you need the 01:51
`11 knowledge of a person of ordinary skill because 01:51
`12 everybody browses the web. 01:51
`13 Q. Knows what a search string is, right? 01:51
`14 (Reporter clarification.) 01:51
`15 Q. Knows what a search string is, right? 01:51
`16 Everyone knows what a search string is, right? 01:51
`17 A. I believe so. 01:51
`18 Q. Okay. Now, you mentioned earlier that a 01:51
`19 tag source is simply -- withdrawn.
`20 You said earlier that a tag source is a 01:52
`21 source of tags. What is a source? 01:52
`22 MR. SCHMIDT: Objection to the extent it 01:52
`23 calls for a legal conclusion. 01:52
`24 THE WITNESS: So, again, this is a term 01:52
`25 that I applied the plain and ordinary meaning to, 01:52
`Page 111
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`1 different tags, I should say. 01:54
`2 BY MR. WEINSTEIN: 01:54
`3 Q. Looking at paragraph 79 of your 01:55
`4 declaration, it looks like you have identified five 01:55
`5 different alleged tag sources for the Facebook 01:55
`6 website, correct? 01:55
`7 A. That is correct. 01:55
`8 Q. And I'll just read them into the record. 01:55
`9 Those are Facebook friends, friends of Facebook 01:55
`10 friends, general Facebook pages, pages associated
`11 with locations, and verified Facebook profiles.
`12 Do you see that? 01:56
`13 A. I do. 01:56
`14 Q. Okay. Let go to page 13 of your report, 01:56
`15 and if you see, there's a -- it appears to be a 01:56
`16 screenshot of the photo-tagging interface for the 01:56
`17 Facebook.com website. 01:56
`18 Do you see that? 01:56
`19 A. I do. 01:56
`20 Q. And it looks like -- did you create that 01:56
`21 using a fictitious account? 01:56
`22 A. It was a fictitious account, yes. 01:56
`23 Q. Okay. And in this example, there's a tag 01:56
`24 list there -- correct -- that's shown? 01:56
`25 A. There is a... 01:57
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`1 Q. Okay. For this limitation, that's all 03:41
`2 you've cited, correct? 03:41
`3 A. Correct. 03:41
`4 MR. WEINSTEIN: That's all for me. 03:41
`5 MR. SCHMIDT: I have no further questions. 03:41
`6 THE VIDEOGRAPHER: This concludes today's 03:41
`7 deposition of Dr. Dan Schonfeld. The total number 03:42
`8 of media used is four. Going off the record at 03:42
`9 3:42 p.m. 03:42
`10 MR. WEINSTEIN: Thank you. 03:42
`11 (At the time of 3:42 p.m. the deposition 03:42
`12 was concluded.) 03:42
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`Page 158
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`1 CERTIFICATE OF REPORTER
`2 I, ASHALA TYLOR, CSR No. 2436, in and for the State
`3 of California, do hereby certify:
`4 That the foregoing proceedings were taken before me
`5 at the time and place herein set forth; that any
`6 witnesses in the foregoing proceedings, prior to
`7 testifying, were placed under oath; that a verbatim
`8 record of the proceedings were made by me using machine
`9 shorthand which was thereafter transcribed under my
`10 direction; further that the foregoing is an accurate
`11 transcription thereof.
`12 That before the completion of the deposition,
`13 review of the transcript was not requested.
`14 I further certify that I am neither financially
`15 interested in this action nor a relative or employee of
`16 any attorney or any of the parties hereto.
`17 In compliance with Section 8016 of the Business and
`18 Professions Code, I certify under penalty of perjury
`19 that I am a Certified Shorthand Reporter with
`20 California License No. 2436 in full force and effect.
`21 WITNESS my hand this 31st day of July, 2019.
`22
`23
`24 <%11625,Signature%>
`25 Ashala Tylor, CSR #2436, RPR, CRR, CLR
`Page 160
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`1 PENALTY OF PERJURY CERTIFICATE
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`2 3
`
` I hereby declare I am the witness in the within
`4 matter, that I have read the foregoing transcript and
`5 know the contents thereof; that I declare that the same
`6 is true to my knowledge, except as to the matters which
`7 are therein stated upon my information or belief, and
`8 as to those matters, I believe them to be true.
`9 I declare being aware of the penalties of
`10 perjury, that the foregoing answers are true and
`11 correct.
`12
`13
`14
`15 Executed on the ______ day of _______________, 20__, at
`16 _______________________, __________________.
`17 (CITY) (STATE)
`18
`19 __________________________________
`20 DAN SCHONFELD, PH.D.
`21
`22
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