JAMES MORRIS 5/15/2013
`
`Page 1
`
`Page 3
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - - - - -x
` GARMIN INTERNATIONAL, INC., :
` ET AL :
` Petitioner, : Case
` v. : IPR2012-00001
` PATENT OF CUOZZO SPEED : Patent 6,778,074
` TECHNOLOGIES, LLC, :
` Patent Owner. :
`- - - - - - - - - - - - - - - - -x
`
` Videotaped Deposition of JAMES H. MORRIS, Ph.D.
` Pittsburgh, Pennsylvania
` Wednesday, May 15, 2013
` 11:46 a.m.
`
`Pages: 1 - 104
`Reported By: Lisa C. Nagy-Baker, RDR, CRR
`
` A P P E A R A N C E S
`ON BEHALF OF PETITIONER:
` JASON R. MUDD, ESQUIRE
` ERISE IP, P.A.
` 6201 College Boulevard
` Suite 300
` Overland Park, Kansas 66211
` (913) 777-5600
` jason.mudd@eriseIP.com
`
`ON BEHALF OF PATENT OWNER:
` CABRACH J. CONNOR, ESQUIRE
` REED & SCARDINO, LLP
` 301 Congress Avenue
` Suite 1250
` Austin, Texas 78701
` (512) 474-2449
` cconnor@reedscardino.com
`
`ALSO PRESENT:
` Bradley D. Coble, Videographer
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 2
`
`Page 4
`
` C O N T E N T S
`EXAMINATION OF JAMES H. MORRIS, Ph.D.
` PAGE
` By Mr. Mudd 6
` By Mr. Connor 82
` By Mr. Mudd 98
`
` E X H I B I T S
` (Attached to transcript)
`DEPOSITION EXHIBITS PAGE
`Exhibit 1 9
`Exhibit 2 9
`Exhibit 3 14
`Exhibit 4 19
`Exhibit 5 20
`Exhibit 6 20
`Exhibit 7 22
`
`1
`2
`3
`4
`5
`6
`
`789
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` Videotaped Deposition of JAMES H. MORRIS,
`Ph.D., held at the offices of:
`
` Hilton Garden Inn
` The Ohio Boardroom
` 3545 Forbes Avenue
` Pittsburgh, PA 15213
`
` Pursuant to Notice, before Lisa C.
`Nagy-Baker, Registered Diplomate Reporter,
`Certified Realtime Reporter, and Notary Public in
`and for the Commonwealth of Pennsylvania, who
`officiated in administering the oath to the
`witness.
`
`1
`2
`
`345
`
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`1 (Pages 1 to 4)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 1
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 5
`
`Page 7
`
` P R O C E E D I N G S
` VIDEOGRAPHER: We are on the record.
`Today's date is May 15, 2013, and the time is 11:46
`a.m. This is the videotaped deposition of Professor
`James Morris, Ph.D., in the matter of Garmin
`International, Inc., et. al. versus Patent of
`Cuozzo Speed Technologies, LLC, in the United
`States Patent and Trademark Office, Case No.
`IPR2012-00001.
` This deposition is being held at 3454
`Forbes Avenue, Pittsburgh, Pennsylvania, 15213.
`The reporter's name is Lisa Baker. My name is Brad
`Coble. I'm a Certified Legal Videographer. We are
`with Midwest Litigation Services. Would the
`attorneys present please introduce themselves.
` MR. CONNOR: On behalf of the Patent of
`Cuozzo Speed Technologies, LLC, and the witness,
`Professor Morris, my name is Cabrach Connor.
` MR. MUDD: My name is Jason Mudd, with
`the law firm of Erise IP, appearing on behalf of
`the Petitioner, Garmin International.
` VIDEOGRAPHER: Would the court reporter
`please swear in the witness.
` JAMES H. MORRIS, Ph.D.
`after having been first duly sworn, was examined
`Page 6
`
`and did testify under oath as follows:
` EXAMINATION:
`BY MR. MUDD
` Q Good morning, Professor Morris.
` A Good morning.
` Q Can you state your name for the record
`and spell it?
` A James H. Morris, M-O-R-R-I-S.
` Q And can you state your current
`occupation?
` A I'm a Professor of Computer Science at
`Carnegie Mellon University.
` Q Have you had your deposition taken
`before?
` A Yes.
` Q About how many times?
` A Once.
` Q And what was that situation?
` A It was a dispute between a former
`employee and a corporation.
` Q And were you serving as an expert witness
`in that case?
` A No.
` Q So you were deposed as a fact witness in
`the case?
`
`1
` A Yes. I had been the person's previous
`2
`employer.
`3
` Q I'll just briefly go through some of the
`4
`ground rules that we use today. I'll be asking
`5
`questions. You'll be answering them. We have a
`6
`court reporter here who's taking everything down to
`7
`create a written transcript, so because of that we
`8
`need to be careful not to talk over each other; so
`9
`I'll do my best to wait for you to finish your
`10
`answer, and I'll ask that you wait for me to finish
`11 my question before you answer. Is that okay?
`12
` A Certainly.
`13
` Q The other effect of creating a written
`14
`record is we need to verbalize everything with
`15
`yeses and nos rather than uh-huhs or huh-uhs; is
`16
`that okay?
`17
` A Yep.
`18
` Q You understand that you're under oath
`19
`today. It's the same oath you would take if you
`20 were testifying in a court?
`21
` A Yes.
`22
` Q At certain points I may ask questions
`23
`that are unclear to you. If my question is not
`24
`clear, will you let me know?
`25
` A Yes.
`
`Page 8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` Q And so I'll assume then that if you
`answer the question, that you've understood it; is
`that okay?
` A Yes.
` Q Your counsel may object at certain
`points, but you understand unless he instructs you
`not to answer, you're to answer the question?
` A Yes.
` Q And we have about an hour-and-15-minute
`tape, so we'll try to operate on those increments;
`but if you need to take a break sooner at any
`point, just let me know. Is that okay?
` A Yes.
` Q Is there any reason why today you'd not
`be able to testify truthfully and accurately?
` A No.
` Q What did you do to prepare for today's
`deposition?
` A I read over my Declaration and the patent
`and amendment briefly.
` Q Did you meet with counsel to prepare?
` A Yes, I met just an hour ago, two hours
`ago.
` Q Okay. Did you do anything else to
`prepare for the deposition today?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`2 (Pages 5 to 8)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 2
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 9
`
`Page 11
`
`1
` A No.
`2
` Q I understand you've been retained as an
`3
`expert witness on behalf of Cuozzo Speed
`4
`Technologies in this IPR matter pending in the
`5
`Patent Office; is that correct?
`6
` A Yes.
`7
` Q About when were you first contacted
`8
`regarding the Cuozzo patent?
`9
` A I believe it was in February of this
`10
`year.
`11
` Q And were you retained sometime shortly
`12
`after that?
`13
` A Yes.
`14
` Q So were you retained in approximately
`15
`February of this year?
`16
` A Yes, yeah.
`17
` Q Have you been retained by Cuozzo Speed
`18
`Technologies in connection with any of the District
`19
`Court cases that Cuozzo Speed has filed?
`20
` A No.
`21
` (Whereupon Exhibits 1 and 2 were marked.)
`22
` Q Dr. Morris, I'm handing you what's been
`23 marked Morris Exhibit 1 and Morris Exhibit 2. I'll
`24
`just represent for the record Morris Exhibit 1 is a
`25
`copy of the Deposition Notice for your deposition
`Page 10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Declaration, in your opinion?
` A Yes.
` Q In Paragraph 2 of your Declaration, you
`state that you have studied human computer
`interaction extensively?
` A Yes.
` Q And can you describe for me what is human
`computer interaction?
` A Human computer interaction is the study
`of the design of computer systems, taking into
`account human psychology. It's a combination of
`the academic disciplines of computer science and
`psychology with a little bit of industrial design.
` Q Do you believe that the Cuozzo patent at
`issue in this matter pertains to human computer
`interaction?
` A Yes.
` Q In what way?
` A Well, the fundamental interaction of
`people with devices, whether computerized or not,
`is one of the things that we study naturally, even
`though today there's almost always a computer
`involved; but the understanding of the way people
`react to information presented to them and how to
`present it to them is really the primary study of
`
`Page 12
`
`1
`in this matter; and then Morris Exhibit 2 is a copy
`2
`of a Declaration of James H. Morris in this matter,
`3
`IPR2012-0001. It's dated February 21, 2013.
`4
` You've submitted one Declaration in this
`5 matter; is that correct?
`6
` A Yes.
`7
` Q And Morris Exhibit 2, take a moment to
`8
`look at it, but can you confirm that that is a copy
`9
`of the Declaration you've submitted in this case?
`10
` A Yes.
`11
` Q And is that your signature on the last
`12
`page of Morris Exhibit 2?
`13
` A Yes.
`14
` Q Do you still stand by all of the contents
`15
`of your Declaration and the opinions set forth
`16
`therein?
`17
` A Yes.
`18
` Q Is there anything you want to correct or
`19
`amend in your Declaration?
`20
` A No.
`21
` Q Did you draft your Declaration?
`22
` A It was drafted first by Attorney Harsha
`23
`[sic], but then modified and edited by me.
`24
` Q Are your qualifications to be an expert
`25
`in this matter accurately set forth in your
`
`1
`human computer interaction, even more so than the
`2
`engineering of computers.
`3
` Q All right. Do you have any past
`4
`experience working with or on GPS technology?
`5
` A No.
`6
` Q How about do you have past experience
`7 with vehicle instrument panel displays?
`8
` A No, not specifically.
`9
` Q And then do you have specific prior
`10
`experience with speed limit warning systems?
`11
` A No, not as a designer of them; just as a
`12
`user.
`13
` Q And what speed limit warning systems have
`14
`you used?
`15
` A I think sometime in the past I must have
`16
`driven in a car with an audible tone where the tone
`17
`was settable by manually; and I've used navigators,
`18
`automobile navigators, extensively both from Garmin
`19
`and from cell phone manufacturers. But I don't
`20
`think any of those have ever said anything about
`21
`speed limits.
`22
` Q So the navigation devices you're
`23
`referring to, you're saying that none of those
`24
`particular navigation devices had speed limit
`25 warnings, to your recollection?
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`3 (Pages 9 to 12)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 3
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 13
`
`Page 15
`
`1
` A That's correct.
`2
` Q So to your knowledge, you've never used a
`3
`navigation device that includes a speed limit
`4 warning?
`5
` A To my knowledge. They might have, but
`6
`I've never noticed it before.
`7
` Q What was the car that you drove that had
`8
`an audible tone that was settable?
`9
` A I really don't remember specifically, but
`10
`I think it might have been a Cadillac.
`11
` Q Do you recall what year model Cadillac it
`12 was approximately?
`13
` A No, but it was a long time ago.
`14
` Q Would it have been before 2000?
`15
` A Yes.
`16
` Q Would it have been before 1999?
`17
` A Yes.
`18
` Q What's the closest approximate year that
`19
`you would estimate it was?
`20
` A Maybe 1960.
`21
` Q Did the car provide any kind of visual
`22
`indication of a speed limit or speed limit warning?
`23
` A No, not that I recall.
`24
` Q And to your recollection, did this car
`25
`emit an audible tone when the car speed had
`Page 14
`
`1
`exceeded the speed limit?
`2
` A Yes.
`3
` Q Do you know how that system knew what the
`4
`speed limit was?
`5
` A I really don't know specifically; but as
`6
`I understood the technology at the time, somebody
`7
`had to dial it in.
`8
` Q The user had to input the speed limit?
`9
` A Yes.
`10
` Q Do you recall any other systems you've
`11
`used that had a speed limit warning?
`12
` A No.
`13
` (Whereupon Exhibit 3 was marked.)
`14
` Q Dr. Morris, I'm handing you what's been
`15 marked Morris Exhibit 3, which I'll represent for
`16
`the record is a copy of your CV that I obtained
`17
`from your website.
`18
` If you could take a moment to review it,
`19
`and let me know if you believe that the information
`20
`contained in your CV, Exhibit 3, is accurate?
`21
` A Yes.
`22
` Q Do you know how recently you've updated
`23
`your CV and your website?
`24
` A I believe in the past year.
`25
` Q Have you served as a consultant in any
`
`1
`patent matters in the past?
`2
` A I don't believe so. I was an expert
`3
`witness for a company who was involved in
`4
`telephony, but I actually don't remember the
`5
`substance of it. There may have been a patent
`6
`involved; but in any case, I never wrote anything
`7
`about it or testified. The other expert witness
`8
`assignment I had was a tax matter related to
`9
`compact discs, but I don't think patents were
`10
`involved.
`11
` Q So other than this case, the only other
`12
`cases or matters that you've served as an expert in
`13 were the telephony company matter and the CD tax
`14 matter?
`15
` A Yes.
`16
` Q Did you generate any written work product
`17
`or testify in the tax matter?
`18
` A Yes.
`19
` Q What did you do?
`20
` A I wrote a report that was probably
`21
`somewhere between 10 and 20 pages long and then
`22
`subsequently testified about it.
`23
` Q Was that at a deposition?
`24
` A It was no deposition, no. It was in
`25
`front of a judge.
`
`Page 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` Q Is that the only time that you've
`testified in a court?
` A Yes.
` Q Do you know how Cuozzo Speed Technologies
`located you for this matter?
` A No.
` Q Have you worked with either Mr. Connor or
`any of the law firms representing Cuozzo Speed
`Technologies in the past?
` A No.
` Q I think I know the answer to this
`already, but is it correct then you've not
`previously served as an expert in the past on the
`issue of patent claim construction; is that right?
` A That's right.
` Q Did you know either the inventor, Mr.
`Cuozzo, or anyone affiliated with Cuozzo Speed
`Technologies prior to this case?
` A No.
` Q Are you familiar with a Daniel Mitry or
`Travis Salmon?
` A No.
` Q Do you know anyone who works for Garmin?
` A No.
` Q Have you ever owned any Garmin devices?
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`4 (Pages 13 to 16)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 4
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 17
`
`Page 19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` A Yes.
` Q What devices?
` A It was a navigator.
` Q Do you know what model?
` A No. So I owned this in around 2004,
`2003; and as I recall, it was about $400, and it
`was about 4 inches across. Had a visual display on
`it, and to my knowledge -- and it used GPS and
`voice, but to my knowledge had no attachment for
`speed limit -- speed-limit sensing.
` Q Do you still own that device?
` A No.
` Q When was the last time you used it?
` A Maybe 2007, 2008.
` Q Have you ever owned any other Garmin
`devices besides that one?
` A No.
` Q Have you ever used any other Garmin
`devices besides that one?
` A No, not to my knowledge.
` Q Besides Garmin devices, have you ever
`owned or used any other personal navigation
`devices?
` A Yeah. I've used Google maps on multiple
`telephones.
`
`Page 18
`
`1
` Q Any others?
`2
` A I don't believe so. I've used Mapquest
`3
`as a general mapping information device, but I
`4
`don't believe I've used it as a navigation device.
`5
` Q In Paragraphs 3 through 5 of your
`6
`Declaration, you refer to some materials that
`7
`you've reviewed in connection with this case?
`8
` A Yes.
`9
` Q And in Paragraph 3 you say you've
`10
`reviewed the decision that -- first, you used the
`11
`term the Board, and I believe by the Board you're
`12
`referring to the Patent Trial and Appeal Board
`13
`before which this matter is pending?
`14
` A Yes.
`15
` Q So I believe you said you've reviewed the
`16
`Board's Decision to Initiate Trial for Inter Partes
`17
`Review in this matter; is that correct?
`18
` A Yes.
`19
` Q In addition to that decision, you've also
`20
`reviewed the '074 patent at issue in this matter;
`21
`is that correct?
`22
` A Yes.
`23
` Q You've also reviewed an amendment that
`24 was made during prosecution of that patent on
`25
`January 9, 2004; is that correct?
`
`1
` A Yes.
`2
` Q And then you've also reviewed the Awada
`3
`patent; is that correct?
`4
` A Yes.
`5
` Q Other than those four items, were there
`6
`any other materials you reviewed in connection with
`7
`your work on this matter?
`8
` A Not that I recall, no.
`9
` Q And other than that specific January 9
`10
`amendment from the file history, did you review the
`11
`other parts of the '074 patent's file history?
`12
` A Not that I know of. I don't remember any
`13
`other documents.
`14
` (Whereupon Exhibit 4 was marked.)
`15
` Q Mr. Morris, I'm handing you a copy of
`16 what's been marked Morris Exhibit 4, which I'll
`17
`represent for the record is the U.S. Patent
`18
`6,778,074.
`19
` MR. CONNOR: We're going to have to get
`20
`larger copies of this, counsel.
`21
` MR. MUDD: Yes, I know. I don't know how
`22
`this came out smaller.
`23
` MR. CONNOR: They keep getting smaller
`24
`and smaller.
`25
` Q Is this a copy of the patent you reviewed
`Page 20
`
`1
`for this matter, and specifically the '074 patent
`2
`at issue in this proceeding?
`3
` A I believe so, yes, yes. I see. Yes.
`4
` (Whereupon Exhibit 5 was marked.)
`5
` Q I'm going to hand you what's been marked
`6 Morris Exhibit 5, which I'll represent for the
`7
`record is a copy of the '074 patent's file history.
`8
` Now, if you could take a moment to look
`9
`through this document, I believe you've testified
`10
`that you reviewed the January 9, 2004 amendment
`11
`that's contained in this document; but you don't
`12
`recall reviewing the rest of the contents of this
`13
`file history; is that correct?
`14
` MR. CONNOR: Objection to form. You can
`15
`go ahead and answer that question.
`16
` A Yes, that's true. I recall the amendment
`17
`here, if it's the document, has some pencil or pen
`18
`edits on it; but I didn't see much of any of this
`19
`other information, as I recall. Yes, I see the
`20
`amendment, but I don't recall anything else from
`21
`this packet.
`22
` (Whereupon Exhibit 6 was marked.)
`23
` MR. MUDD: I apologize, counsel. For
`24
`some reason I don't have an extra copy of this next
`25
`one. It's what I've marked as Morris Exhibit 6,
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`5 (Pages 17 to 20)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 5
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 21
`
`Page 23
`
`1
`entitled Decision to Initiate Trial for Inter
`2
`Partes Review. Perhaps you can share with him, or
`3
`maybe you have an electronic copy. I apologize for
`4
`that.
`5
` Q If you could take a moment to review that
`6
`and let me know if Morris Exhibit 6 is a copy of
`7
`the order from the Board that you reviewed for this
`8 matter?
`9
` A I do not recall this document very well.
`10
`I remember -- I certainly remember the issue of
`11
`integrally attached from either this document or
`12
`quotations in other documents and discussions with
`13
`the attorneys; but I didn't read this one,
`14
`certainly not, I don't believe in its entirety
`15
`because I don't recall reading about these other
`16
`inventions, at least not enough that I remember
`17
`anything about them or the names of the inventors.
`18
`So I think I probably had this document. Is this
`19
`like -- no.
`20
` Q So you know you read at least the
`21
`portions of Exhibit 6 that you quoted in your
`22
`Declaration; is that right?
`23
` A Yes.
`24
` Q But you don't know that you reviewed the
`25
`other portions of Exhibit 6 beyond those?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`definitions?
` A I just Googled it and came up with -- I
`think I read the first entry that came up at least.
` Q Do you know what specific source it was?
` A Something -- I don't quite remember the
`specific name, but it was something about an
`internet dictionary; and actually now that I
`recall, I did this last night by the way; and I
`believe I did read the second one, which might have
`been Merriam Webster.
` Q So you believe you looked at two
`different sources for those terms?
` A Yes.
` Q And what was your conclusion after
`reviewing those definitions?
` A That integrate meant combined without the
`provision that the combined things retained their
`individual identity. I did not see anything in the
`definitions of integrate that required the
`distinctness of the parts be preserved. It was
`generally speaking integrate meant unite or
`combine, put together.
` Q And that was based on reviewing
`definitions for both integrate and integral?
` A No. I think it was integrate. I didn't
`
`Page 22
`
`Page 24
`
`1
` A No, I don't believe so. I certainly
`2
`don't recall that.
`3
` (Whereupon Exhibit 7 was marked.)
`4
` Q Okay. I'm going to hand you what's been
`5 marked Morris Exhibit 7, which is a copy of U.S.
`6
`Patent 6,515,596 B2, Awada, A-W-A-D-A. Let me know
`7
`if you've reviewed this document in connection with
`8
`your work on this case?
`9
` A Once again, I don't have a good
`10
`recollection of reading this in detail. What I
`11
`recall is the basic features of the inventions and
`12
`the claims in this patent, but I don't recall
`13
`extensively studying these flow charts or much
`14
`else.
`15
` Q Did you conduct any independent research
`16
`in connection with your work on this matter?
`17
` MR. CONNOR: Objection. Form.
`18
` Q Strike that. Did you conduct any
`19
`independent research to locate additional materials
`20
`to use in connection with your work on this matter?
`21
` A No, except for looking up a definition on
`22
`the internet.
`23
` Q What definition did you look up?
`24
` A Integrate and integral.
`25
` Q And where did you look up those
`
`1
`do two separate searches.
`2
` Q So you looked up the definition of the
`3 word integrate?
`4
` A I believe so. Many dictionary entries.
`5
`It might have covered other things, but that's what
`6
`I typed into Google.
`7
` Q Other than that search for definitions of
`8
`integrate, did you do any other independent
`9
`research to locate materials for your work on this
`10 matter?
`11
` A No.
`12
` Q You state in Paragraph 6 of your
`13
`Declaration -- I'm referring to Morris Exhibit 2 --
`14
`that you're familiar with the Rules of Claim
`15
`Interpretation?
`16
` A Yes.
`17
` Q And how is it that you've come to be
`18
`familiar with the Rules of Claim Interpretation?
`19
` A I have reviewed patents before
`20
`preliminary to a possible expert witness engagement
`21
`which I didn't go forward with; and I have a
`22
`relative who is a lawyer who explained to me what
`23
`claims are; and in discussing it with the
`24
`attorneys, both Connor and Harsha [sic], was
`25
`reminded several times the difference between
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`6 (Pages 21 to 24)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 6
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 25
`
`Page 27
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`claims and embodiments.
` Q Any other ways in which you've become
`familiar with the Rules of Claim Interpretation?
` A No.
` Q This relative who is a lawyer, is this
`person a patent lawyer?
` A An intellectual property lawyer but not
`specifically focused on patents.
` Q And when did these discussions with your
`relative take place?
` A Sometime in the past year.
` Q Were they discussions specifically in
`connection with your work on this matter?
` A I don't recall because I did discuss with
`her another possible patent. It probably came up
`in that discussion.
` Q And did you discuss with her the specific
`subject of how patent claims are interpreted under
`the law?
` A Not extensively, no.
` Q So is your understanding of claim
`interpretation primarily from your discussions with
`the lawyers for Cuozzo Speed in this case?
` A Yes.
` Q And in Section 2 of your Declaration,
`
`1
`that you're being compensated for your work in this
`2 matter. At what rate are you being compensated?
`3
` A $400 an hour.
`4
` Q Approximately how much time have you
`5
`spent on this matter?
`6
` A I don't actually -- I'm not sure, but I'd
`7
`say four or five hours, maybe a little more. Less
`8
`than ten.
`9
` Q Do you know about how much of that time
`10 was spent working on your Declaration?
`11
` A Oh, three hours, two hours.
`12
` Q About two or three hours?
`13
` A Yes.
`14
` Q And have you billed Cuozzo Speed for the
`15
`time you spent on this matter?
`16
` A Yes.
`17
` Q If you could go to Paragraph 15 again,
`18
`your understanding of claim interpretation, do you
`19
`believe you have an understanding of claim
`20
`interpretation beyond what you've set forth in your
`21
`Declaration?
`22
` A Well, what I might have added was that
`23
`the -- is that the embodiment is not supposed to
`24
`affect the means of the claims, certainly not to
`25
`eject anything or detract anything from the claims;
`
`Page 26
`
`Page 28
`
`1
`this is Paragraph 15, you lay out your
`2
`understanding of the Rules of Claim Construction;
`3
`is that right?
`4
` A Yes.
`5
` Q Is that an accurate description of your
`6
`understanding of the Rules of Claim Construction?
`7
` MR. CONNOR: Object to the form of that
`8
`question.
`9
` A Yes.
`10
` Q We'll go back to Paragraph 7 of your
`11
`Declaration. Will you let me know if Paragraph 7
`12
`is an accurate description of the assignment you
`13 were given for this matter?
`14
` A Yes; that was the focus of what I was
`15
`asked to consider.
`16
` Q So is it correct that the focus of your
`17
`assignment was on the interpretation of the term
`18
`integrally attached in the claims of the '074
`19
`patent?
`20
` A Yes.
`21
` Q Are all the opinions that you've formed
`22
`in this matter to date contained in your
`23
`Declaration?
`24
` A Yes.
`25
` Q Let's see. In Paragraph 14, you state
`
`1
`but it more or less says that, when it says the
`2
`Board did not rely on the feature to give meaning
`3
`to what the inventor means by a claim term would be
`4
`extraneous. It doesn't mention the embodiments
`5
`here, but that's certainly something that I
`6
`believe.
`7
` Q So adding in that concept with the other
`8
`contents of Paragraph 15, do you believe you have
`9
`any understanding of claim interpretation beyond
`10
`that?
`11
` A No. I guess one other little detail
`12
`which I was informed of is that not only did the
`13
`language be interpreted in terms of persons skilled
`14
`in the art, but it should be skilled in the art at
`15
`the time that the patent was filed; and I don't
`16
`think that's mentioned here either.
`17
` Q So with the addition of that concept, as
`18 well as the concept you added about the effective
`19
`embodiments in the contents of Claim 15, do you
`20
`believe you have any other understanding of claim
`21
`interpretation beyond that?
`22
` A No, I don't believe so.
`23
` Q Did you arrive at an opinion as to what
`24
`the level of ordinary skill in the art was for this
`25
`patent at the time it was filed?
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`7 (Pages 25 to 28)
`
`Fax: 314.644.1334
`
`Garmin International, Inc.
`
`Exhibit 1021 - 7
`
`

`

`JAMES MORRIS 5/15/2013
`
`Page 29
`
`Page 31
`
`1
` A Yes.
`2
` Q What was that opinion?
`3
` A Well, it was that the use of computer
`4
`displays, specifically bitmap displays, which is a
`5
`more general term covering LCD displays, was in
`6
`common use in computer systems and even in some
`7
`automobiles at the time.
`8
` Q But did you arrive at an opinion as to
`9 what the minimum qualifications would be for a
`10
`person to be a person of ordinary skill in the art
`11
`at the time of the invention?
`12
` A Well, I mean, I don't know what the
`13
`minimum would be for people working, let's say, for
`14
`automobile companies would be; but anybody who had
`15
`been educated, anybody who knew about computer
`16
`technology, I would say possibly by being a
`17
`computer science student or computer engineer,
`18
`would certainly have the skill to know about how to
`19
`program bitmap displays or LCD displays.
`20
` Q So you didn't reach a specific opinion as
`21
`to what the minimum qualification would be to be a
`22
`person of ordinary skill in the art at the time of
`23
`the invention; is that right?
`24
` MR. CONNOR: Objection to form.
`25
` A Well, as I say, I was pretty clear on the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`doing this work; but I didn't write it down here.
`By the way, I just noticed here on Page 9 there is
`a phrase "when skilled in the art at the time of
`the invention." That wasn't up in Item 5 or
`whatever it was you were asking me about, but it
`did end up here on Page 9.
` Q All right. But even though you referred
`to the term "one skilled in the art at the time of
`the invention," you didn't specifically define what
`the minimum requirements would be to be deemed such
`a person, did you?
` MR. CONNOR: Objection to form.
` A No, this is possibly partly related to
`the fact that computer technology and software
`engineering, to my knowledge, doesn't effectively
`have a formal licensing process that is being used
`by people or by employers, whereas some of your
`other engineering fields might. I suppose the only
`other detail that I would be aware of is I knew
`that automobile companies, specifically Ford Motor,
`were employing a lot of digital engineers and
`computer scientists and were relatively
`sophisticated in their use of digital technology in
`cars; so I suppose that went to form my opinion
`that anybody who was doing something with an
`
`Page 30
`
`Page 32
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`fact about what people I knew who were computer
`experts, were designers of anything involving
`digital technology would know; but I'm really not
`qualified to understand what, let's say, a person
`who was purely a mechanical engineer would know,
`except it would be my opinion that if such a person
`didn't understand digital technology, they probably
`weren't well-qualified to be a mechanical engineer;
`but that's just partly, let's say, an opinion that
`may be affected by my particular profession.
` Q Do you know the legal factors to be
`considered in determining what the minimum
`qualifications are for a person to be a person of
`ordinary skill in the art?
` A No.
` Q And was part of your assignment -- as
`part of your assignment, did counsel specifically
`ask you to arrive at an opinion as to the level of
`ordinary skill in the art?
` A Yes.
` Q Did you lay that opinion out anywhere in
`your Declaration?
` A I don't believe so. I'm just looking.
`No. As I say, it was pretty clear in my mind the
`kind of practitioner that I would expect to be
`
`1
`automobile at the time should know something about
`2
`digital technology.
`3
` Q So do you believe anyone working in the
`4
`automotive field who knew something about digital
`5
`technology would be one of skill in the art?
`6
` MR. CONNOR: