UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`BLACKBERRY CORP. and BLACKBERRY )
`LTD., )
` )
` Petitioners, )
` )
` vs. ) No. IPR2014-01506
` ) No. IPR2014-01507
`ZIPIT WIRELESS, INC., )
` )
` Patent Owner. )
`
` VIDEO DEPOSITION OF ALON KONCHITSKY, Ph.D.
` Redwood City, CA
` Thursday, August 27, 2015
`
`REPORTED BY:
`SUSAN F. MAGEE, RPR, CCRR, CLR, CSR No. 11661
`
`Job No. 96498
`
`TSG Reporting - Worldwide
`(877) 702-9580
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`BLACKBERRY EX. 1021, pg. 1
`Blackberry v. Zipit
`IPR2014-01506
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`BLACKBERRY CORP. and BLACKBERRY )
`LTD., )
` )
` Petitioners, )
` )
` vs. ) No. IPR2014-01506
` ) No. IPR2014-01507
`ZIPIT WIRELESS, INC., )
` )
` Patent Owner. )
`
` VIDEO DEPOSITION OF ALON KONCHITSKY, Ph.D.
` Redwood City, CA
` Thursday, August 27, 2015
`
`REPORTED BY:
`SUSAN F. MAGEE, RPR, CCRR, CLR, CSR No. 11661
`
`Job No. 96498
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
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`BLACKBERRY EX. 1021, pg. 1
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 2
`
` August 27, 2015
` 10:01 a.m.
`
` Video deposition of ALON KONCHITSKY, Ph.D.,
` held at the offices of BlackBerry,
` 2000 Bridge Parkway, Redwood City, CA
` 94065, pursuant to Notice before
` SUSAN F. MAGEE, RPR, CCRR, CLR, CSR
` No. 11661.
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`
`BLACKBERRY EX. 1021, pg. 2
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`APPEARANCES:
`
`Page 3
`
` OBLON, McCLELLAND, MAIER & NEUSTADT
` Attorney for Petitioners
` 1940 Duke Street
` Alexandria, VA 22314
` BY: JOHN PRESPER, ESQ.
`
` SMITH RISLEY TEMPEL SANTOS
` Attorney for Patent Owner
` Two Ravinia Drive
` Atlanta, GA 30346
` BY: STEPHEN RISLEY, ESQ.
`
` Also Present:
` KELCE WILSON, Ph.D. EE, MBA
`
` The Videographer:
` SEAN McGRATH
` --o0o--
`
`TSG Reporting - Worldwide
`(877) 702-9580
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`BLACKBERRY EX. 1021, pg. 3
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
` REDWOOD CITY, CALIFORNIA
` Thursday, August 27, 2015, 10:01 a.m.:
`
`Page 4
`
` THE VIDEOGRAPHER: Good morning. This is
`the beginning of Disc No. 1 of the videotaped
`deposition of Dr. Alon Konchitsky in the matter
`BlackBerry Corporation and BlackBerry Limited vs.
`Zipit Wireless, Incorporated, in the United States
`Patent and Trademark Office before the Patent Trial
`and Appeal Board, Nos. IPR 2014-01506 and
`IPR2014-01507.
` This deposition is being held at
`2000 Bridge Parkway, Redwood City, California, on
`August 27, 2015, at approximately 10:01 a.m.
` My name is Sean McGrath from TSG Reporting,
`and I am a legal video specialist. The court
`reporter is Susan Magee in association with TSG
`Reporting.
` Will counsel please introduce yourselves,
`starting with the questioning attorney.
` MR. PRESPER: John Presper of Oblon,
`McClelland, Maier & Neustadt, LLP, representing
`petitioner BlackBerry, and I have with me
`Kelce Wilson also representing BlackBerry.
` MR. RISLEY: Good morning. This is
`
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`(877) 702-9580
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`BLACKBERRY EX. 1021, pg. 4
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Steve Risley for the Patentee Zipit Wireless, Inc.
` THE VIDEOGRAPHER: Will the court reporter
`please swear in the witness, and we can proceed.
`
`Page 5
`
` ALON KONCHITSKY, Ph.D.,
`called as a witness, having been duly sworn by a
`Certified Shorthand Reporter, was examined and
`testified as follows:
`
` EXAMINATION BY MR. PRESPER
`
` Q. Please state your name and address for the
`record, please.
` A. Alon Konchitsky. 3453 Wheeling Drive,
`Santa Clara, California 95051.
` Q. Good morning, Dr. Konchitsky. My name is
`John Presper. As you heard, I'm going to be the
`attorney asking you some questions here today. And
`my first question is, is there any reason we cannot
`go forward with you providing truthful and accurate
`testimony? Nothing by way of illness or medication
`or anything like that?
` A. I'm not a medical doctor, but I don't see
`why not.
` Q. So you can give truthful testimony here
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`BLACKBERRY EX. 1021, pg. 5
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 6
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`today; correct?
` A. That's what I believe so, yes.
` Q. Okay. I'm going to be asking you some
`questions. If any of the questions I ask are
`unclear, please feel free to ask me to clarify them,
`I'll see what I can do to help you out. If I ask
`you a question and you answer it, I will assume that
`you understood the question.
` Does that sound fair?
` MR. RISLEY: Objection. Form.
` THE WITNESS: Yes, I think that sounds
`fair.
` BY MR. PRESPER: Q. Okay. That leads me
`to another point. Your counsel will be objecting
`periodically to the form of the questions that I
`ask, but unless you receive an instruction not to
`answer, I would ask that you answer the question
`that I pose to you if you can.
` Is that your understanding?
` A. Yes.
` Q. You were deposed once last week; correct?
` A. That's correct.
` Q. Okay. In IPR proceedings involving
`BlackBerry and Zipit; is that correct?
` A. That's correct.
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 6
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 7
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` Q. Okay. As far as this deposition is
`concerned, how much time did you spend preparing if
`at all for this deposition?
` A. Probably a couple hours the day before
`yesterday, and maybe another three hours yesterday.
` Q. Okay. Did you meet with anyone in
`preparing for your deposition here today?
` A. Yes, I met counsel.
` Q. And Mr. Risley?
` A. Yes.
` Q. Anyone else?
` A. No.
` Q. Okay. Did you review any materials in
`preparation for your deposition here today?
` A. Yes. I reviewed my reports and its -- its
`references.
` Q. Did you review the two patents that are at
`issue in these two IPR proceedings?
` A. Yes.
` Q. Okay. And just for the record, you
`understand you're here today testifying in the IPR
`proceedings ending in 1506 and 1507 involving Zipit
`Patents 7,894,837 and 7,292,870.
` Is that your understanding?
` A. I don't remember by heart the numbers.
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 7
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 8
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` Q. It's not a memory test. That's okay.
` A. But I guess you're telling the truth, yes.
` Q. If I refer to the '837 patent, you'll
`understand that I'm referring to Patent
`No. 7,894,837?
` A. Yes.
` Q. Okay. And same thing with the '870 patent?
`That's Patent No. 7,292,870?
` A. Yes.
` Q. Okay. I'm going to hand you what has been
`previously marked as Exhibit 2007 which -- can you
`confirm for me Exhibit 2007 that I handed you is
`your declaration involving the -- relating to the
`'837 patent in IPR 1507?
` A. Yes. I guess that's it.
` Q. And if you turn to page 241 of
`Exhibit 2007, is that your signature?
` A. Yes.
` Q. And you executed this declaration on
`June 20th of 2015; is that correct?
` A. That's correct.
` Q. Okay. Who prepared this declaration?
` A. I prepared it together with counsel.
` Q. So it was a collaborative process, how you
`prepared this declaration in Exhibit 2007?
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 8
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 9
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` A. I prepared the note and then the complete
`four -- first draft and later, yes, it has been a
`collaborative process.
` Q. So you prepared the first draft of this
`declaration; is that correct?
` A. That's correct.
` Q. Okay. How long did it take you to prepare
`the first draft of this declaration, if you
`remember?
` A. Few dozen hours. I can go back to my notes
`and let you know exactly, but if I remember, that
`has been like few dozen hours.
` Q. Do you recall whether you spent more time
`preparing the first draft versus later drafts that
`you worked with with counsel?
` A. Yeah. I would say so. The first one has
`been -- taken more time, yes.
` Q. Okay. Can you walk me through the process
`of how you went about preparing this declaration
`when you prepared the first draft of it?
` A. Yes, yeah. I -- I read the actual
`petition, the IPR, and then I went through -- its
`references, so that was more in how they are related
`and what has been said in the IPR. And then I -- I
`read Dr. Brody and -- Dr. Brody's declaration. I
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 9
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 10
`went back to the citations and the references that
`were referenced.
` After doing that, I put together a list
`of -- I would say points that I think should be
`addressed, and I wrote them in bullet point format
`so I could really ensure them accurately as they are
`reflected to the -- to the petition in Brody's
`declaration 1 to 1, shared that with counsel, with
`Counsel Risley.
` We then communicated about those, and then
`I've been requested to -- requested or maybe I
`proposed to write the actual report, so I started to
`write it according to formats that I'm familiar with
`and I work on other IPRs, so I put it together. And
`then I had some comments from counsel. I fixed some
`things, and then counsel, I think, took this one and
`he helped me with the language and some more
`formalities, I would say.
` And I -- I had some comments, I had some
`edits, some changes. And after back and forth, we
`finalized the report, and at the end I signed the
`report. That's my report, so . . .
` This has been actually for -- I'm
`specifically talking about the one that you handed
`in front of me, Exhibit 2007 for Patent '837.
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`BLACKBERRY EX. 1021, pg. 10
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 11
` BY MR. PRESPER: Q. I understand. And you
`also submitted a declaration which I think has the
`same Exhibit No. 2007 in the IPR dealing with the
`other patent, the '870 patent; is that correct?
` A. Yes. I submitted another report for the
`other patent.
` Q. And was the process of preparing your
`report or declaration for that IPR the same?
` A. I would say very similar, yes. I do not
`recall major differences to other one.
` Q. You've consulted as an expert on several
`patent cases in both district court and IPRs; is
`that correct?
` A. That's correct.
` Q. Okay. And I'm looking -- I'm referring now
`to your CV which I think is Exhibit A at the end of
`your declaration.
` A. Yes, I see that.
` Q. And I count over two dozen expert
`engagements on pages 9 through 12 of your CV; is
`that correct?
` A. Let me just count them to make sure that
`I'm answering the truth. I think that's correct,
`but let me just count it.
` Yes. It will be over 20; that's correct.
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`BLACKBERRY EX. 1021, pg. 11
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 12
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` Q. Okay. Other than the dispute between
`BlackBerry and Zipit, are any of these engagements
`listed on your CV under litigation experience
`ongoing, to your knowledge?
` A. Yes, yes. One of them is ongoing. The
`ITC -- the second -- the second one, the ITC case.
` Q. I'm sorry. Which one are you referring to?
` A. To the second one in the list on page 9.
` Q. Andrea Electronics Corp. v. Toshiba?
` A. That's correct.
` Q. Oh, I see the ITC case at the bottom.
`337-TA-3055.
` A. That's correct.
` Q. Okay. Any others?
` A. Foley Lardner, the fifth one in the list,
`is still going but about to be ending, I guess.
` Q. If we go back to the ITC case, do you
`recall if you are -- are you retained as an expert
`for the complainants or the respondents?
` A. For the defendant.
` Q. So that would be Toshiba?
` A. Yes.
` Q. Okay.
` A. The last one on this page for Folly Lardner
`is still going. It's about to end. I guess that's
`
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`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 12
`Blackberry v. Zipit
`IPR2014-01506
`
`
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`Page 13
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`a long case.
` Q. And who are you testifying an expert for --
`it says validity expert consultant and testifying
`expert on the top of page 10; is that correct?
` A. Yes. So I'm testifying for the plaintiff.
` Q. That's M2M?
` A. Yes.
` Q. I recognize the next one.
` A. Actually, I'm sorry, I forgot the first
`one. The first one is still going actually. The
`Fitzpatrick, Cella, Harper & Scinto, I am working
`for ZTE.
` Q. Okay.
` A. That's the defendant.
` Q. Any others?
` A. The other one is --
` Q. Not counting the Zipit vs. BlackBerry.
` A. Right. Yes, I don't recognize another one
`here.
` Q. So all the other engagements listed on your
`CV on pages 9 through 12 are not ongoing as far as
`you know?
` A. That's correct.
` Q. Okay.
` A. I'm not involved with any -- no, actually
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`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 13
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 14
`there is another one, but it's an arbitration. It's
`not in either ITC or district court, so . . .
` Q. Is that indicated here on your CV?
` A. Yes, it is. On page 11 at the middle for
`Sidley Austin.
` Q. I see. And it says, "Consultant for a
`Fortune 100 company in the 3GPP LTE standards"?
` A. That's correct.
` Q. Can you identify the Fortune 100 company
`that you're a consultant for?
` A. No.
` Q. Okay.
` A. I won't.
` Q. Other than the 20-some engagements on
`pages 9 through 12, are there any others that are
`either in the past or ongoing or perhaps prospective
`engagements that are not listed here on your CV?
` A. No. I'm about to be engaging in another
`case, but that's the reason it's not listed here.
`But no, that's -- that's all.
` Q. Can you identify the company that you may
`be consulting for in the prospective case?
` A. It's -- it's not assigned yet, and I'm
`obligated for confidentiality, so I --
` Q. Okay.
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`BLACKBERRY EX. 1021, pg. 14
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 15
` A. If we do that attorneys' eyes only, I might
`be able to consult with the other lawyer and see if
`I can do that. Otherwise I'm not.
` Q. If we have to, we'll revisit it. That's
`okay for now.
` So it's fair to say that you are familiar
`with the claim construction process in patent cases.
` Would that be fair?
` MR. RISLEY: Objection. Form.
` THE WITNESS: Would you be more specific or
`be --
` BY MR. PRESPER: Q. In the expert witness
`engagements that you have participated in, have
`you -- in patent cases, have you been involved in
`construing claims as part of your engagement?
` A. Yeah, I think so.
` Q. For example, if you're doing an invalidity
`analysis and trying to ascertain whether the prior
`art invalidates a patent, do you need to construe
`the claims that you're looking at as part of that
`invalidity analysis? Would that be an accurate
`statement?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I'm not a lawyer, so I can't
`tell you if that's an accurate statement or not.
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`BLACKBERRY EX. 1021, pg. 15
`Blackberry v. Zipit
`IPR2014-01506
`
`
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`Page 16
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`But from general memory, I do remember that there
`has been something about construing terms.
` BY MR. PRESPER: Q. How do you know if a
`prior art reference meets a claim limitation in an
`invalidity analysis?
` A. Again, I'm not a lawyer. I can read this
`section about the law for you to be accurate if you
`want me -- as has been explained in my report.
` Q. Well, let me ask it this way: Is it
`necessary to have an understanding of what claim
`terms mean in order to determine of whether they are
`anticipated or rendered obvious by a prior art
`reference?
` A. Again, I'm --
` MR. RISLEY: Objection. Form.
` THE WITNESS: So again, I'm not a lawyer,
`and I would appreciate if you maybe explain each one
`of those terms that you mentioned and be pretty
`clear with your question because you're asking
`something that is very general, I guess, and is very
`specific about the law, so . . .
` BY MR. PRESPER: Q. Well, I'm just asking
`if you are going to opine on whether a prior art
`reference does or does not invalidate a patent
`claim, do you have to know what the claims of -- of
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`BLACKBERRY EX. 1021, pg. 16
`Blackberry v. Zipit
`IPR2014-01506
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`Page 17
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`the terms in that claim mean?
` MR. RISLEY: Objection. Form.
` THE WITNESS: If you -- again, if you'd
`please be more specific --
` BY MR. PRESPER: Q. I'm just asking
`generally. I'm not talking about any specific
`patent. I'm not talking about any specific prior
`art reference. I'm just asking a very general
`question which is whether in order to determine
`whether a prior art reference invalidates the claim
`of a patent, do you need to understand what the
`terms of that claim mean?
` MR. RISLEY: Objection. Form.
` THE WITNESS: So again, I'm -- I'm not a
`lawyer, and I am happy to defer to my report. I'm
`here to talk about my report. And there is
`something that remind me some of those buzz words
`that you just stated, and I can -- I can try to
`address them in the -- in the context of why I'm
`here.
` So beyond that, I -- you know, I'm here to
`answer questions about my report which is in
`response to BlackBerry's petition for an IPR of US
`Patent No. 7,894,837 and Brody's declaration.
` I'm not a lawyer. I'm not here to opine
`
`TSG Reporting - Worldwide
`(877) 702-9580
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`BLACKBERRY EX. 1021, pg. 17
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 18
`about the law, and therefore if you ask the -- the
`question again and -- and be very specific to what
`I've been asked to do, I'm happy to -- to try to
`answer your question.
` BY MR. PRESPER: Q. I understand you're
`not a lawyer, and I'm not asking you to opine about
`the law. I just want to know -- and I may have my
`answer -- about whether or not you need to have --
`or whether or not you feel you need to have an
`understanding of what claim terms mean in order to
`find -- in order to determine whether a claim is
`anticipated or rendered obvious by a prior art
`reference.
` Do you need to know what the claim terms
`mean?
` MR. RISLEY: Objection. Form.
` THE WITNESS: So is your question is do I
`need to know what the claim terms mean, or --
`because you asked a --
` BY MR. PRESPER: Q. I'm just talking about
`very generally. If you're asked to decide whether a
`prior art reference --
` (Discussion off the record.)
` MR. PRESPER: All right. Perhaps I'm
`making this a little too complicated.
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`BLACKBERRY EX. 1021, pg. 18
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 19
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` BY MR. PRESPER: Q. Let's put aside
`anticipation and obviousness. I want to speak very
`generally about just whether a prior art reference
`invalidates a patent.
` You're aware that sometimes prior art
`references can invalidate a patent?
` A. Yes, I'm aware of -- I'm aware of that.
`That's -- yes.
` Q. Okay. In order to determine whether or not
`a prior art reference invalidates a patent, a patent
`claim, do you need to understand what the terms of
`that claim mean?
` MR. RISLEY: Objection. Form.
` THE WITNESS: When you say in general, does
`that mean that it's not related to my report or -- I
`don't understand what you mean in general, so . . .
` BY MR. PRESPER: Q. Correct. General.
` A. I see. So I'm here to --
` MR. RISLEY: Objection. Form.
` THE WITNESS: I'm here to answer questions
`in my report, so if you ask it in the context of my
`report, I'll be able to answer.
` BY MR. PRESPER: Q. Did you have to have
`an understanding of what the terms in the claims
`under review in the '837 and '870 patents mean in
`
`TSG Reporting - Worldwide
`(877) 702-9580
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`BLACKBERRY EX. 1021, pg. 19
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 20
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`order to determine whether the prior art cited in
`the petition, BlackBerry's petition, invalidated the
`claims?
` MR. RISLEY: Objection. Form.
` THE WITNESS: So I understand that now
`you're really specific and that's related to my
`report.
` BY MR. PRESPER: Q. You said you weren't
`comfortable with general. You wanted specifics. So
`I'm just trying to make it easier for you. I
`thought general would be easier, but if you want to
`talk specifics, now I'm asking you in the context of
`your report.
` Did you need to have an understanding of
`what the terms mean in the claims under review in
`order to determine whether -- whether the prior art
`cited in the petition by BlackBerry invalidated the
`'830 -- '837 and '870 patents?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I'll ask you to clear your --
`I don't understand your --
` BY MR. PRESPER: Q. What's not clear about
`my question?
` A. It has been such a long question with so
`many parts in there, so I just don't understand the
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 20
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 21
`
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`question.
` Q. Let me see if I can shorten it up for you.
` Do you need to know what claim terms mean
`in order to determine whether a claim is invalid?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I understand the claims of
`the '837. I absolutely understand the claims of the
`'837 patent.
` BY MR. PRESPER: Q. Okay. But that's not
`my question. My question is very simple.
` Do you need to know what the claim language
`means in order to determine if a claim is invalid?
` MR. RISLEY: Objection. Form.
` THE WITNESS: Again, I'm not a lawyer, so
`it's hard for me to answer this question when I've
`been requested to opine in response to BlackBerry's
`petition for an IPR of US Patent 7,894,837 and the
`Brody declaration.
` BY MR. PRESPER: Q. Have you done an
`invalidity analysis before?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I did, yes.
` BY MR. PRESPER: Q. Before this case?
` A. Yes.
` MR. RISLEY: Objection. Form.
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 21
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 22
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` BY MR. PRESPER: Q. In one of the two
`dozen or so cases that you were retained as an
`expert?
` MR. RISLEY: Objection. Form.
` THE WITNESS: How is this related to my
`report?
` BY MR. PRESPER: Q. I'm just asking you
`generally if you know how to do an invalidity
`analysis. That's not my question. That's what I'm
`trying to get at. I just want to know can you
`describe the process for me when you are trying to
`determine whether a patent claim is invalid and you
`have a prior art reference and you need to determine
`or you're asked by your counsel to determine whether
`that reference invalidates a claim. How do you do
`it?
` MR. RISLEY: Objection. Form.
` THE WITNESS: That's not what I've been
`requested to do. I've been requested to opine in
`response to BlackBerry's petition for an IPR of US
`Patent No. 7,894,837 in the Brody's declaration.
` BY MR. PRESPER: Q. Did you need to
`understand the claim terms of the '837 patent in
`order to write your report?
` MR. RISLEY: Objection. Form.
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 22
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 23
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` THE WITNESS: I understand that claim
`construction is the process of determining a
`patent's claims meaning. I also have been informed
`and understand that a proper construction of a claim
`term is the meaning that PHOSITA, is person of
`ordinary skilled in the art, would have given to
`that term.
` Does that answer your question?
` BY MR. PRESPER: Q. Not really, but we can
`move on.
` Claims under review in an IPR proceeding
`are given their broadest reasonable interpretation;
`is that correct?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I'm not a lawyer and you're
`asking me if that's correct or no, so --
` BY MR. PRESPER: Q. Why don't you look at
`paragraph 33 of your declaration.
` A. Yeah. That's exactly where I am. That's
`what I was thinking that I need to read for you.
` Q. Okay. It says in paragraph 33 -- I'm
`sorry. I don't mean to cut you off. I'm just
`trying to move things along. You say, "I understand
`that claims in inter partes review proceedings are
`to be given their broadest reasonable interpretation
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 23
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 24
`in light of the specification, which is what I have
`done when performing my analysis in this
`declaration."
` That's what you said; correct?
` A. Yeah. That's what I intended to say before
`you cut me off, that I do understand that "claims in
`inter partes review proceedings are to be given
`their broadest reasonable interpretation in light of
`the specification, which is what I have done when
`performing my analysis."
` Q. When you construe claims in a district
`court proceeding, are they construed under the same
`standard as an IPR proceeding?
` MR. RISLEY: Object to form.
` THE WITNESS: I'm here to opine in response
`to BlackBerry's petition for an IPR of US Patent
`No. 7,894,837 in the Brody declaration, so I guess I
`don't understand your question about district court.
` BY MR. PRESPER: Q. You've construed
`claims in district court proceedings before;
`correct?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I -- again, generally just
`from memory, I think so, yes.
` BY MR. PRESPER: Q. Okay. Well, when you
`
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`
`BLACKBERRY EX. 1021, pg. 24
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 25
`did a claim construction analysis in district court,
`were the claims -- did you construe the claims in
`the same standard broadest reasonable interpretation
`in light of the specification that applies in an IPR
`proceeding such as this one?
` MR. RISLEY: Objection. Form.
` THE WITNESS: So can you clear the question
`again?
` BY MR. PRESPER: Q. Are claims construed
`under the same standard in district court versus an
`IPR proceeding? That's my question.
` MR. RISLEY: Objection. Form.
` THE WITNESS: That's a legal question. I'm
`not a lawyer.
` BY MR. PRESPER: Q. You don't know. Is
`that your testimony. You don't know?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I'm net a lawyer and you're
`asking me a legal question about two different
`procedures, and I -- I don't think that I don't
`know. I would need to analyze that in order to give
`you an answer.
` BY MR. PRESPER: Q. Analyze what?
` A. To analyze the difference between
`district -- between court and IPR procedure
`
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`(877) 702-9580
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`BLACKBERRY EX. 1021, pg. 25
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 26
`because -- again, you're asking me a question about
`particular low-end procedures, and I'm --
` Q. I'm just asking if you have an
`understanding whether the claim construction
`standard in district courts versus IPR are the same
`or are they different.
` A. "I understand that claims in inter partes
`review proceedings are to be given their"
`broadcast -- I'm sorry -- "broadest" -- too much
`telecommunication background in me, but I'm sorry --
`"proceedings are to be given their broadest
`reasonable interpretation in light of the
`specification."
` That's what I have been done when
`performing my analysis in this IPR. I -- I would
`need to analyze the -- the case for -- for -- for
`different legal procedure than this one in order to
`answer a question. And -- and -- and even when I do
`that, I will need to do that and -- and -- and
`explain to you that I'm -- again, that I'm not a
`lawyer when I will potentially try to analyze and
`answer this question, so . . .
` Q. Well, you're not a lawyer, but you know
`that in an IPR, the claims are given the broadest
`reasonable interpretation as you say in
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`BLACKBERRY EX. 1021, pg. 26
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 27
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`paragraph 33; right?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I stand by paragraph 33 of my
`reports, yes.
` BY MR. PRESPER: Q. Okay. In a district
`court proceeding, are claims construed under the
`same standard as you articulated in paragraph 33 of
`your report?
` MR. RISLEY: Objection. Form.
` THE WITNESS: You're asking me question
`that relates to district court rather than inter
`partes review which that's why I'm here, and I will
`need to analyze this particular question and then
`give you an answer, letting you know again in
`advance that I am not a lawyer and then I would be
`able to answer this question.
` BY MR. PRESPER: Q. I think the one thing
`we've established beyond a shadow of a doubt is that
`you're not a lawyer. What I'm asking you is just
`whether the claims construed under the same standard
`in district court versus an IPR or are they
`different. I'm not asking you to tell me what the
`standard is in district court. I understand you
`know what the standard is in an IPR proceeding
`because you set forth in paragraph 33. I'm just
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 27
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 28
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`asking you -- and maybe you don't know. If the
`answer is you don't know, then you don't know. It's
`a yes, no, or I don't know. Are the standards the
`same for claim construction in district court versus
`an IPR or are they different?
` MR. RISLEY: Objection. Form.
` THE WITNESS: I'm sorry. You said
`something that is very, very long. You started with
`shadow about attorney or something or lawyer about
`me. Would you please -- I don't think I understood
`the first part of your sentence. I do remember
`shadow and lawyer and me.
` So if you don't mind to repeat it, and -- I
`just don't understand what you have said. And then
`if you don't mind, to ask the question again because
`that has been a very long --
` BY MR. PRESPER: Q. Do you know whether
`the claim construction standard in an IPR is the
`same or different than the claim construction
`standard in a district court proceeding?
` MR. RISLEY: Objection. Form.
` THE WITNESS: You --
` BY MR. PRESPER: Q. It's a yes-or-no
`question.
` MR. RISLEY: Objection. Form.
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`BLACKBERRY EX. 1021, pg. 28
`Blackberry v. Zipit
`IPR2014-01506
`
`
`
`Page 29
` BY MR. PRESPER: Q. Either you know or you
`don't. Do you know?
` MR. RISL
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