In The Matter Of:
`
`Philips v.
`
`Fitbit
`
`\ L E x I TA ST“
`
`Thomas Martin, PHD.
`
`June 18, 2020
`
`Fitbit, Inc. v. Philips North America LLC
`lPR2020-00783
`
`Fitbit, Inc. Ex. 1066 Page0001
`
`

`

`Philips v.
`Fitbit
`
`Page 1
`
` 1 UNITED STATES DISTRICT COURT
` 2 FOR THE DISTRICT OF MASSACHUSETTS
` 3
` 4
` 5 PHILIPS NORTH AMERICA LLC, ) Case No. 1:19-cv-11586-IT
` 6 Plaintiff, )
` 7 v. )
` 8 FITBIT, INC., )
` 9 Defendant. )
`10 ____________________________)
`11
`12
`13
`14 REMOTE VIDEOTAPED DEPOSITION OF
`15 THOMAS L. MARTIN, PH.D.
`16 June 18, 2020
`17 10:02 a.m. Eastern Standard Time
`18 Blacksburg, Virginia
`19
`20
`21
`22
`23 REPORTED BY:
`24 Kristi Caruthers
`25 CLR, CSR No. 10560
`
`Thomas Martin, PH.D.
`June 18, 2020
`Page 3
`
` 1 APPEARANCES:
` 2
` 3 For Plaintiff:
` 4 FOLEY & LARDNER LLP
` BY: RUBEN J. RODRIGUES, ESQ.
` 5 111 Huntington Avenue
` Suite 2500
` 6 Boston, Massachusetts 02199-7610
` 617.342.4000
` 7 rrodrigues@foley.com
` 8
` 9 For Defendant:
`10 PAUL HASTINGS LLP
` BY: CHAD PETERMAN, ESQ.
`11 200 Park Avenue
` New York, New York 10166
`12 212.318.6797
` chadpeterman@paulhastings.com
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` Christian Ruiz, Videographer
`
` ALSO PRESENT:
`
`Page 2
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`Page 4
`
` 1
` 2
` 3 Blacksburg, Virginia
` 4 June 18, 2020
` 5
` 6
` 7
` 8 REMOTE VIDEOTAPED DEPOSITION OF THOMAS L.
` 9 MARTIN, PH.D., located in Blacksburg, Virginia,
`10 pursuant to agreement before Kristi Caruthers, a
`11 California Shorthand Reporter of the State of
`12 California.
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 1 INDEX TO EXAMINATION
` 2 WITNESS: THOMAS L. MARTIN, PH.D
` 3
` 4 EXAMINATION PAGE
` 5 By Mr. Peterman 8, 165
` 6 (AFTERNOON SESSION) 103
` 7 By Mr. Rodrigues 161, 167
` 8
` 9
`10
`11
`12
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`14
`15
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`25
`
`(1) Pages 1 - 4
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`Min-U-Script®
`Fitbit, Inc. Ex. 1066 Page0002
`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`

`

`Philips v.
`Fitbit
`
`Page 17
`
`Thomas Martin, PH.D.
`June 18, 2020
`Page 19
`
` 1 (Whereupon, Martin Exhibit 1 was
` 2 marked for identification by the
` 3 deposition reporter and is attached
` 4 hereto.)
` 5 BY MR. PETERMAN:
` 6 Q. So you have Exhibit 1 there.
` 7 Can you just tell me: Do you recognize
` 8 Exhibit 1?
` 9 A. Yes, I do.
`10 Q. And Exhibit 1 is titled "Expert Disclosure
`11 of Dr. Thomas L. Martin, Ph.D.," dated June 5th,
`12 2020; correct?
`13 A. Yes, that's correct.
`14 Q. It may be self-evident, but can you just
`15 tell me what Exhibit 1 is?
`16 A. It's the expert disclosure that I've
`17 written for this matter.
`18 Q. Did your counsel discuss Exhibit 1 with
`19 you at any point before this deposition?
`20 MR. RODRIGUES: Objection to form.
`21 I'll instruct you not to answer with
`22 respect to the details of any discussions with
`23 counsel.
`24 BY MR. PETERMAN:
`25 Q. You can answer "yes" or "no" as to whether
`
` 1 please?
` 2 Q. I'll -- I'll take a different track here.
` 3 Did you draft the document that's
` 4 presented here as Exhibit 1?
` 5 A. I was given an initial draft from counsel
` 6 and then worked on it myself.
` 7 Q. And did you review Exhibit 1 before
` 8 signing it?
` 9 A. Yes, I did.
`10 Q. And did you agree with the statements that
`11 you made in Exhibit 1 at the time you signed it?
`12 A. Yes, I did.
`13 Q. And since the time that you signed it, are
`14 there any corrections that you wish to make with
`15 respect to Exhibit 1?
`16 A. There was a place that was highlighted
`17 that should have been noted as being -- there was a
`18 quote where the emphasis was not in the original
`19 quote, and I should have noted that there was some
`20 highlighting there. I'd have to look through it to
`21 find it.
`22 Q. Other than, I guess, a typographical font
`23 type error, is there anything else that you noticed
`24 that's incorrect about Exhibit 1?
`25 A. Off the top of my head, no.
`
`Page 18
` 1 or not you ever discussed Exhibit 1 with your
` 2 counsel.
` 3 A. Yes.
` 4 Q. How much time do you estimate that you
` 5 took to prepare Exhibit 1?
` 6 A. I'd have to look back in my records to be
` 7 sure of the exact time, but probably between 10 and
` 8 15 hours.
` 9 Q. How was Exhibit 1 prepared?
`10 MR. RODRIGUES: Again, instruct you not to
`11 get into the details of the drafting of the expert
`12 report from any communications with counsel.
`13 BY MR. PETERMAN:
`14 Q. Can you answer that question about how
`15 Exhibit 1 was prepared?
`16 A. Sorry. Since this is my first deposition,
`17 he's instructed me not -- my -- Ruben's instructed
`18 me not to answer with respect to the details.
`19 MR. RODRIGUES: Yeah. And if you can't
`20 answer without violating my instruction, then I
`21 think you don't provide an answer.
`22 BY MR. PETERMAN:
`23 Q. Do you believe you can answer without
`24 violating Mr. Rodrigues's instructions?
`25 A. Would you ask the question again, Chad,
`
`Page 20
`
` 1 Q. Beyond the opinions that are expressed in
` 2 Exhibit 1, are you planning to express any other
` 3 opinions in this litigation?
` 4 A. Yes. You know, I was asked to provide the
` 5 opinions that are -- on the matters that are in the
` 6 disclosure, but I'd be happy to -- to look at other
` 7 aspects of this case and provide opinions for those.
` 8 Q. So what additional opinions are you
` 9 planning to provide in connection with this
`10 litigation?
`11 MR. RODRIGUES: Objection to form, lacks
`12 foundation, calls for speculation.
`13 BY MR. PETERMAN:
`14 Q. You may answer the question.
`15 A. I'm not planning on providing any -- like,
`16 there aren't particular things I've been asked to
`17 provide an opinion on beyond those that are in the
`18 disclosure.
`19 Q. Are you planning to testify at the claim
`20 construction hearing in this matter?
`21 MR. RODRIGUES: Calls for -- objection;
`22 calls for speculation, lacks foundation.
`23 THE WITNESS: If I'm asked to, I will.
`24 BY MR. PETERMAN:
`25 Q. At this point, have you been asked to
`
`(5) Pages 17 - 20
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`Min-U-Script®
`Fitbit, Inc. Ex. 1066 Page0003
`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`

`

`Philips v.
`Fitbit
`
`Page 129
`
` 1 in the -- spread around the network.
` 2 Q. So the paragraph beginning at Line 26 of
` 3 Column 13 is about limiting access at various points
` 4 around the network, including the possibility of a
` 5 bystander being part of the network?
` 6 A. Including the possibility of.
` 7 MR. RODRIGUES: Objection to form.
` 8 BY MR. PETERMAN:
` 9 Q. Then at the end of that paragraph, it
`10 states:
`11 "The following are possible
`12 embodiments of security and not
`13 meant to be exclusive."
`14 Do you see that?
`15 MR. RODRIGUES: Objection to form.
`16 THE WITNESS: Yes, I see that.
`17 BY MR. PETERMAN:
`18 Q. Then as we discussed before, following
`19 that, there are four different possible embodiments
`20 of security that are listed from Column 13, Line 43,
`21 down to Line 54.
`22 Do you see that?
`23 A. I see those four paragraphs, but, again,
`24 the paragraph just before them says they're not
`25 meant to be exclusive.
`
`Thomas Martin, PH.D.
`June 18, 2020
`Page 131
` 1 because looking back at the claims, there are
` 2 what -- the following claims after Claim 1 talk
` 3 about different types of security mechanisms that
` 4 that -- that that security mechanism in Claim 1
` 5 could be.
` 6 BY MR. PETERMAN:
` 7 Q. And so, in your opinion, could encryption
` 8 be part of a security mechanism that is disclaimed
` 9 in 1(c)?
`10 MR. RODRIGUES: Objection to form.
`11 THE WITNESS: It could be a part, but it
`12 may not necessarily be the totality of it.
`13 BY MR. PETERMAN:
`14 Q. And what other parts could be included
`15 within 1(c)?
`16 MR. RODRIGUES: Objection to form.
`17 THE WITNESS: When you say "what other
`18 parts," do you mean what other parts besides
`19 encryption?
`20 BY MR. PETERMAN:
`21 Q. Correct.
`22 A. So there could be -- (a) there could be
`23 multiple levels of encryption, so -- which is not
`24 uncommon, so -- and then there could be layers of
`25 authentication.
`
`Page 130
` 1 Q. So what do you take the term "not meant to
` 2 be exclusive" to mean?
` 3 A. It -- it means that there could be other
` 4 alternatives that aren't spelled out. They're just
` 5 giving primary examples.
` 6 Q. And one of the primary examples that is
` 7 given, in fact, the first example, is encryption.
` 8 MR. RODRIGUES: Objection to form.
` 9 THE WITNESS: I'm sorry, but you're taking
`10 that in isolation because, you know, it talks about
`11 security arrangements, you know -- sorry.
`12 So the opening paragraph of the section
`13 back up at Line 26 talks about various types of
`14 security arrangements, and different security
`15 arrangements are meant to address different types of
`16 potential attacks. And so this is just giving an
`17 example of a -- of a particular arrangement, but not
`18 necessarily one that addresses all possible security
`19 attacks or security flaws.
`20 BY MR. PETERMAN:
`21 Q. So is it your testimony, then, that
`22 Claim 1 is designed for only one particular type of
`23 security flaw?
`24 MR. RODRIGUES: Objection to form.
`25 THE WITNESS: No, that's not my opinion,
`
`Page 132
`
` 1 There could be -- I'm trying to think
` 2 of -- and so there might be a mechanism for
` 3 non-repudiation, which would be, you know, trying to
` 4 deny something after the fact.
` 5 Q. So I'm trying to understand your written
` 6 opinion with what you're testifying to today, but is
` 7 it your testimony that governing information
` 8 transmitted between the first personal device and
` 9 the second device could include encryption?
`10 MR. RODRIGUES: Objection to form.
`11 THE WITNESS: Again, it could include
`12 encryption, but it might -- might be more.
`13 BY MR. PETERMAN:
`14 Q. I understand that it could include
`15 encryption but it might be more, but could it
`16 include only encryption?
`17 MR. RODRIGUES: Objection to form.
`18 THE WITNESS: Sorry. I'm trying to think
`19 of situations where you would want to have only
`20 encryption, and it would -- encryption, but only by
`21 the ability to keep unwanted people from seeing the
`22 information, from being able to tell whatever
`23 information's contained.
`24 BY MR. PETERMAN:
`25 Q. So does the Claim 1(c) of the '233 patent
`
`(33) Pages 129 - 132
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`Min-U-Script®
`Fitbit, Inc. Ex. 1066 Page0004
`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`

`

`Philips v.
`Fitbit
`
`Page 133
` 1 as written allow the security mechanism to only
` 2 include encryption?
` 3 MR. RODRIGUES: Objection to form, vague.
` 4 THE WITNESS: It could only be encryption.
` 5 BY MR. PETERMAN:
` 6 Q. So I want to go back to the distinction
` 7 that you were drawing where we were talking about
` 8 between controlling the transmission of information
` 9 and controlling the information transmitted.
`10 Is there an actual distinction, or do you
`11 think it's just cleaner English to use your
`12 formulation of it?
`13 MR. RODRIGUES: Objection to form.
`14 THE WITNESS: That formulation does seem
`15 to -- to make more clear the cases where you're also
`16 trying to control the access to the information.
`17 BY MR. PETERMAN:
`18 Q. So you think your formulation is perhaps
`19 broader than just saying "controlling the
`20 information transmitted"?
`21 MR. RODRIGUES: Objection to form,
`22 mischaracterizes prior testimony.
`23 THE WITNESS: I mean off the top of my
`24 head, if you had one of these devices where you just
`25 wanted to prevent somebody from sniffing the
`
`Thomas Martin, PH.D.
`June 18, 2020
`Page 135
`
` 1 transmitted at all, and you think that your
` 2 formulation of the words "transmission of
` 3 information" captures that better?
` 4 A. Yeah, "controlling the transmission of
` 5 information."
` 6 Q. So what is the basis that you are using as
` 7 a person of ordinary skill in the art to rewrite
` 8 what the inventor said governing information
` 9 transmitted into governing or controlling the
`10 transmission of information? What makes you know --
`11 MR. RODRIGUES: Objection --
`12 BY MR. PETERMAN:
`13 Q. -- that better than themselves?
`14 MR. RODRIGUES: Objection to form.
`15 THE WITNESS: Well, as I said before, I
`16 was not the one who rewrote the -- the phrasing. So
`17 if you're asking me why I rewrote it, then I can't
`18 answer that question. But if you mean in general --
`19 do you mean in general?
`20 BY MR. PETERMAN:
`21 Q. Well, I'm looking at an expert declaration
`22 that you signed in support of Philips's claim
`23 construction.
`24 And so, you know, if you didn't think
`25 about it, that's fine. I'll accept that as an
`
`Page 134
` 1 information, from eavesdropping on it, and that was
` 2 the only security thing that you were worried about,
` 3 you just didn't want somebody to eavesdrop on the
` 4 information that was being transmitted, then, you
` 5 know, the information is being transmitted by --
` 6 somebody generally see the encrypted version of it.
` 7 So they're still receiving it. It's just encrypted.
` 8 If you're making a system that that's the
` 9 only security flaw that you're -- the security
`10 attack that you're worried about, then the
`11 encryption might be the only thing you'd do.
`12 But it seems to me that the way this is
`13 described, you're also -- the patent's also talking
`14 about controlling the access to the device, and in
`15 that case, encryption would be a part of -- would
`16 likely be a part of what you're doing, but it
`17 wouldn't be enough to provide access.
`18 And so controlling that -- if you didn't
`19 want that information to be received at all, perhaps
`20 there's information that you don't want to be
`21 transmitted at all, then encryption wouldn't be
`22 enough to prevent that.
`23 BY MR. PETERMAN:
`24 Q. Okay. So now you're describing a system
`25 where you don't want the information to be
`
`Page 136
` 1 answer. But, you know, you signed this declaration
` 2 which changes the wording of the claim language, and
` 3 I want to know why that's correct as opposed to what
` 4 the inventors actually wrote in their patent?
` 5 MR. RODRIGUES: Objection to form,
` 6 mischaracterizes the record.
` 7 THE WITNESS: Again, restating what I've
` 8 said before and, you know, I just think that's a
` 9 more clear formulation, more clear wording that
`10 captures the nuances of the -- of the other aspects
`11 in the claims.
`12 BY MR. PETERMAN:
`13 Q. And you think you understand the nuances
`14 better than the inventors of the '233 patent?
`15 MR. RODRIGUES: Objection to form.
`16 THE WITNESS: I wouldn't say that I
`17 understand it better.
`18 BY MR. PETERMAN:
`19 Q. Did you speak with the inventors in coming
`20 up with your claim construction positions?
`21 A. I did not speak with the inventors.
`22 Q. And I take it the attorneys didn't explain
`23 to you why they changed the order of the words in
`24 this claim?
`25 MR. RODRIGUES: Objection to form,
`
`(34) Pages 133 - 136
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`Min-U-Script®
`Fitbit, Inc. Ex. 1066 Page0005
`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`