CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
` UNDER ARMOUR, INC.,
`
` Petitioner,
`
` vs.
`
` ADIDAS AG,
`
` Patent Owner
`
` ----------------------
`
` Case IPR2015-00698
`
` Patent 8,092,345 B2
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
` DEPOSITION OF DR. JOSEPH A. PARADISO
`
` FRIDAY, APRIL 1, 2016
`
` BOSTON, MASSACHUSETTS
`
`
`
`
`
`
`
`Reported by: Sandra A. Deschaine, CSR, RPR,
`
`CLR, CRA
`
`Job #16062
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 1 of 89
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
` UNDER ARMOUR, INC.,
`
` Petitioner,
`
` vs.
`
` ADIDAS AG,
`
` Patent Owner
`
` ----------------------
`
` Case IPR2015-00698
`
` Patent 8,092,345 B2
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
` DEPOSITION OF DR. JOSEPH A. PARADISO
`
` FRIDAY, APRIL 1, 2016
`
` BOSTON, MASSACHUSETTS
`
`
`
`
`
`
`
`Reported by: Sandra A. Deschaine, CSR, RPR,
`
`CLR, CRA
`
`Job #16062
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 1 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 2
`
` APRIL 1, 2016
`
` 9:13 A.M.
`
` Deposition of DR.JOSEPH A. PARADISO,
`
`held at the offices of Weil, Gotshal &
`
`Manges, 100 Federal Street, Boston,
`
`Massachusetts, pursuant to Notice, before
`
`Sandra A. Deschaine, Registered Professional
`
`Reporter and Certified Live-Note Reporter, a
`
`Notary Public in and for the Commonwealth of
`
`Massachusetts.
`
`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
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 2 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 3
`
`APPEARANCES:
`
`ON BEHALF OF THE DEFENDANTS:
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`
` Jonathan Olinger, Esquire
`
` 1100 Peachtree Street NE, Suite 2800
`
` Atlanta, Georgia 30309-4528
`
` T. 404.745.2494 F. 404.815.6555
`
` jolinger@kilpatricktownsend.com
`
`
`
`ON BEHALF OF THE PLAINTIFFS:
`
`WEIL, GOTSHAL & MANGES LLP
`
` W. Sutton Ansley, Esquire
`
` 1300 Eye Street N.W., Suite 900
`
` Washington, DC 20005-3314
`
` T. 202.682.7000
`
` sutton.ansey@weil.com
`
`
`
`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
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 3 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 4
`
` I N D E X
`
`---------------------------------------------
`WITNESSES: PAGE
`---------------------------------------------
`
`Dr.Joseph A. Paradiso
`
` By Mr. Olinger 5/73
` By Mr. Ansley 65
`
`
`---------------------------------------------
`EXHIBITS: DESCRIPTION PAGE
`---------------------------------------------
`
`PARADISO EXHIBITS
`
`Exhibit 1, Deposition Transcript of
` William Quast 56
`
`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
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 4 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 5
`
`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
`
` DR.JOSEPH A. PARADISO, Deponent,
`
`having first been satisfactorily identified
`
`by the production of his Massachusetts
`
`driver's license and duly sworn by the Notary
`
`Public, was examined and testified as
`
`follows:
`
` EXAMINATION
`
` Q. Good morning, Dr. Paradiso.
`
` A. Good morning.
`
` Q. How are you today?
`
` A. I'm good.
`
` How are you?
`
` Q. I'm good. Thank you.
`
` Real quick, some ground rules and
`
`some background questions.
`
` A. Sure.
`
` Q. Have you ever been deposed before?
`
` A. Yes, I have.
`
` Q. How many times?
`
` A. Three times in this case, and one
`
`time recently in another case; so it's four.
`
` Q. All right. And when you were
`
`referring to this case, is that the IPR
`
`proceedings, IPR2015 698?
`
` A. I'm sorry. I'm speaking very
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 5 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 6
`
`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
`
`generally. Two times with the IPRs.
`
` Q. Okay.
`
` A. And one time with the District
`
`Court case.
`
` Q. Excellent.
`
` So the basic instructions so
`
`everybody is on the same page. I will ask a
`
`question and you must provide an answer
`
`unless instructed by your counsel not to do
`
`so.
`
` A. Sure.
`
` Q. You are under oath before as if an
`
`a court before a judge or a jury, so make
`
`sure your testimony is truthful.
`
` A. Of course.
`
` Q. I will assume you understand
`
`questions unless you ask for clarification?
`
` A. Uh-huh.
`
` Q. And if anything I ask is unclear,
`
`please let me know --
`
` A. Yes.
`
` Q. -- and I'll do my best to clarify
`
`as I see fit.
`
` A. Thank you.
`
` Q. So that the court reporter can
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 6 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 7
`
`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
`
`provide an accurate transcript, please answer
`
`audibly, don't nod or shake your head.
`
` A. I will do that.
`
` Q. And also, please let me finish my
`
`questions before you answer, and I will also
`
`allow you to complete your answers before I
`
`begin my next question. It helps the court
`
`reporter keep a clear record.
`
` A. I will try extra hard to do that
`
`and extra hard to speak slowly. Please
`
`remind me if I speak too fast.
`
` Q. We will both work on speaking
`
`slowly for the record.
`
` Before we get started, I wanted to
`
`go on and hand you a number of exhibits that
`
`have already been marked in this matter.
`
` A. Of course.
`
` Q. So the first exhibit I want to
`
`hand to you is -- has been marked as UA1011.
`
` Do you recognize this document?
`
` A. Let me take a quick look.
`
` Yes, I do.
`
` Q. What is this document?
`
` A. This appears to be the Declaration
`
`I made in response to the Expert Declaration
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 7 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`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
`
`on your side.
`
` Q. Okay.
`
` And by "your side," do you mean in
`
`response to the Declaration submitted -- or
`
`the response submitted by patent owner Adidas
`
`AG?
`
` A. Yes.
`
` Q. And on Page 45 of this document,
`
`is that a copy of your signature?
`
` A. Yep, it certainly is.
`
` Q. And now I'm going to hand you
`
`what's been previously marked as UA1003.
`
` MR. ANSLEY: Thank you.
`
`BY MR. OLINGER:
`
` Q. Do you recognize that document?
`
` A. I believe I do. Give me a minute.
`
`(Witness reviewing document.)
`
` A. This looks to be the original
`
`Declaration for the IPR1345.
`
` Q. All right.
`
` And by "345," you mean U.S. Patent
`
`No. 8,092,345.
`
` A. Yes.
`
` Q. On page 100 of this document, is
`
`that a copy of your signature?
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 8 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 9
`
`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. That it is.
`
` Q. All right. Handing now what's
`
`been marked as Exhibit UA1004, which is U.S.
`
`Patent Number 6,513,532. And if it's okay
`
`with you, I'll refer to this exhibit as
`
`Mault.
`
` A. Yes.
`
` Q. And lastly, for now, I'm going to
`
`hand you what's been marked as Exhibit
`
`UA1005, which is U.S. Patent Number
`
`6,321,158, and I'll refer to that as DeLorme.
`
` A. Yes.
`
` Q. And you've reviewed both
`
`Exhibits -- well, have you reviewed Exhibit
`
`1004?
`
` A. I reviewed all of these. Mault,
`
`certainly, of course.
`
` Q. And that also includes DeLorme?
`
` A. Yes, I have.
`
` Q. I want to turn your attention to
`
`Exhibit 1011, your second Declaration?
`
` A. Sure.
`
` Q. And specifically turn to
`
`Paragraphs 179 to 180.
`
` A. Uh-huh.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 9 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`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
`
` Q. And these two paragraphs appear
`
`under the heading "Mault Teaches That a PDA
`
`Can Be Used to Record a User's Location Over
`
`Time"?
`
` A. Yes.
`
` Q. And in this -- in Paragraph 179
`
`you specifically cite to the Mault reference,
`
`Exhibit 1004 at Column 18 lines 7 to 10.
`
` A. Uh-huh.
`
` Q. And the parenthetical that you
`
`have cited to states, "The monitoring device
`
`according to the present invention may take
`
`other forms. For example, the monitoring
`
`device may be a PDA that includes or
`
`communicates with a body activity monitor."
`
` You see that?
`
` A. I recall that. Let me look at
`
`the -- that's 8 through 10 I believe.
`
` Q. Okay.
`
` A. Yes.
`
` Q. And looking at Mault Exhibit 1004,
`
`are there any additional disclosures in
`
`Exhibit 1004 that refer to a PDA embodiment?
`
` MR. ANSLEY: Objection form.
`
` A. Mault brings PDA in several
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 10 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 11
`
`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
`
`places. Certainly the figure, you have it
`
`here, so the PDA is obviously there as part
`
`of a system. He also talks about definitions
`
`of the computing device and the monitors and
`
`so on, in the section that I cite, where he
`
`does mention PDA as well; so there's two
`
`places.
`
` Q. Are there any other disclosures in
`
`Mault that describe an instance in which the
`
`monitoring device of Mault takes the form of
`
`a PDA?
`
` A. I'd have to review in detail to
`
`see.
`
` Q. In Paragraphs 179 and 180, do you
`
`identify any additional disclosures in Mault
`
`that describe a monitoring device that takes
`
`the form of a PDA?
`
` A. Let me review quickly.
`
`(Witness reviewing document.)
`
` A. Which paragraphs again, 179, 180?
`
` Q. Yes.
`
` A. Yes, there I only cite to that
`
`section.
`
` Q. Okay. And we can go and include
`
`in this question Paragraphs 181 through 184,
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 11 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 12
`
`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
`
`which I believe complete this section
`
`entitled, "Mault Teaches That a PDA Can Be
`
`Used to Record a PDA Location Over Time"?
`
` A. Yes.
`
` MR. ANSLEY: Objection to form.
`
`BY MR. OLINGER:
`
` Q. Across those paragraphs, do you
`
`identify any additional disclosures in Mault
`
`that relate to a monitoring device that takes
`
`the form of a PDA?
`
` MR. ANSLEY: Objection, form.
`
` A. Sure. Let me read through 184.
`
` Q. Okay.
`
`(Witness reviewing document.)
`
` A. Mault is very general about the
`
`way he defines his monitoring device and the
`
`other components of his system, and the
`
`patent indicates that these can be
`
`interpreted broadly and you can add various
`
`components, somewhat freely.
`
` There's no cite to Mault in that
`
`section that explicitly says it can be a PDA
`
`aside from the one that we have. But he very
`
`broadly discusses how components can be mixed
`
`and matched throughout the whole thing.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 12 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 13
`
`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 returning to Column 18, Lines
`
`7 or 8, depending on how to read the line
`
`pagination.
`
` A. Sure.
`
` Q. To about Line 19, that paragraph.
`
` A. That paragraph.
`
` Q. That begins with, "The monitoring
`
`device according to present inventions may
`
`take other forms. For example, monitoring
`
`device may be a PDA," et cetera.
`
` A. Yes.
`
` Q. In that paragraph, does Mault
`
`disclose that this PDA embodiment of the
`
`monitoring device includes a GPS receiver?
`
` MR. ANSLEY: Objection, form.
`
` A. He doesn't explicitly disclose
`
`that it includes a GPS receiver in that
`
`paragraph. But as I say in my report, you
`
`can explicitly assume it by the way he
`
`defines these various devices by including
`
`various components in different ways. He's
`
`very general about that.
`
` Q. Is it necessary that the PDA
`
`embodiment would include a GPS receiver?
`
` MR. ANSLEY: Objection, form.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 13 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 14
`
`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. For much of Mault, you want the
`
`GPS, because Mault is all about location.
`
`It's written throughout the whole patent. GPS
`
`is endemic there.
`
` So it will appear, somewhere in
`
`Mault's system, it could be in the PDA, could
`
`be attached to the PDA, it may make sense for
`
`those skilled in the art, that PDA can
`
`interface with GPS, we've done it many times
`
`in my lab. You can incorporate the GPS other
`
`ways. Mault is very general about this.
`
` Q. And does this paragraph in Column
`
`18 that we've been discussing from Line 7 to
`
`19, does it disclose that the monitoring
`
`device that may be a PDA communicates with
`
`the GPS receiver?
`
` MR. ANSLEY: Objection, form.
`
` A. In this paragraph explicitly, he
`
`does not mention GPS. GPS is all over; and
`
`again, where he defines his computing
`
`monitoring devices, he includes PDA and
`
`things of that sort that communicate with GPS
`
`or the camera.
`
` I mean, certainly in Figure 6 he
`
`has a body activity monitor connected to GPS,
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 14 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 15
`
`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
`
`and if that's a PDA, as suggested in that
`
`paragraph, it naturally would be disclosed or
`
`its taught by Mault that you can connect GPS
`
`to it.
`
` Q. But does Column 18, Lines 7 to 19,
`
`does that paragraph describe Figure 6?
`
` MR. ANSLEY: Objection, form.
`
` A. I think Figure 6 is implied
`
`throughout his discussion. The device is one
`
`of the primary blocked diagrams, if not the
`
`primary blocked diagram of the system; so any
`
`understanding of what Mault is trying to
`
`implement would go here.
`
` As an engineer trying to build
`
`this, this is the figure I would take.
`
` Q. Turning now to Paragraph 187 to
`
`188 of your report.
`
` A. Sure.
`
` Q. Or your Declaration. Apologies.
`
` A. Yes.
`
` So paragraph, again, can you
`
`repeat.
`
` Q. 187.
`
` A. Yes.
`
` Q. In the first sentence of paragraph
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 15 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`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
`
`187 states, "DeLorme also does not teach away
`
`from combining its disclosures with those in
`
`Mault."
`
` A. It says that.
`
` Q. And then continuing to paragraph
`
`188, you discuss that a person of ordinary
`
`skill in the art implementing the GPS-related
`
`aspects of Mault" and DeLorme -- I'm sorry,
`
`"Mault or DeLorme'S disclosures would have
`
`known about selective availability."
`
` A. Yes.
`
` Q. In Paragraphs 187 or 188 -- strike
`
`that.
`
` In Paragraphs 187 and 188, do you
`
`identify any disclosures in DeLorme that
`
`state that the Solus Pro's limitations
`
`regarding automatic navigation or guidance
`
`are due to selective availability?
`
` MR. ANSLEY: Objection, form.
`
` A. It's not explicitly said in that
`
`warning, but we all know that that's why it
`
`was there, because selective availability
`
`limited the accuracy of GPS to certain 100
`
`meters, and you have an automatic guidance
`
`system that's accurate to 100 meters, so most
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 16 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 17
`
`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
`
`applications it could be even dangerous. But
`
`we -- that's the reason why.
`
` Q. So you say "we all know."
`
` But do you cite to any evidence in
`
`DeLorme?
`
` A. Oh, sorry. It was all over the
`
`popular press. Everybody knew about
`
`selective availability, even in the general
`
`public. It's not limited to experts.
`
` Q. My question, though, is whether or
`
`not you cite to any evidence that DeLorme's
`
`limitations are due to selective
`
`availability?
`
` MR. ANSLEY: Objection, form.
`
` A. Let me read exactly what I said,
`
`and I can give you a more careful answer.
`
`(Witness reviewing document.)
`
` A. There's nothing in 187 and 188
`
`that talks about DeLorme mentioning selective
`
`availability. I have reviewed DeLorme,
`
`actually, several times. I would have to
`
`review it again to see if he mentions that
`
`term explicitly in there; but in these
`
`paragraphs, I have no cite to DeLorme talking
`
`about using that term, "selective
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 17 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 18
`
`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
`
`availability." That said, any person of
`
`ordinary skill in the art at that time would
`
`have known about it.
`
` Q. In preparing your Declaration, had
`
`you found a citation in DeLorme stating that
`
`its limitations regarding automatic
`
`navigation or guidance are due to selective
`
`availability, would you have cited that
`
`portion of DeLorme?
`
` MR. ANSLEY: Objection, form,
`
` foundation.
`
` A. It's possible. It's so obvious to
`
`me that I don't necessarily think I have to
`
`cite it from DeLorme. Because, again, even a
`
`person in the general public knew about it.
`
`Anybody of ordinary skill in the art would
`
`certainly know about it.
`
` Q. And by "it," are you referring to
`
`selective availability?
`
` A. Selective availability, yes.
`
` Q. And are you saying that that's the
`
`only reason that the DeLorme system would
`
`have issues regarding automatic navigation or
`
`guidance?
`
` MR. ANSLEY: Objection, form.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 18 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`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. That would be the main reason,
`
`yes, for that kind of thing. Also, the
`
`subject of these patents is not automatic
`
`navigation or guidance. It's far from it.
`
`If you deal with guidance, you deal with --
`
`and automatic navigation, you deal with using
`
`a control system to get you to a specific
`
`point in space. The accuracy of that
`
`guidance is a function of the application
`
`that you need.
`
` You talk about a strategic
`
`missile, you talk about a cruise missile, we
`
`talk about just trying to walk some place.
`
`There are different requirements on accuracy.
`
` For tagging location of certain
`
`things, which is the subject of Mault,
`
`subject of '345, and a system that somebody
`
`carries, it's irrelevant actually. Automatic
`
`guidance is irrelevant to that.
`
` Q. In Paragraph 189 of your
`
`Declaration, specifically on Page 12 of
`
`Exhibit 1011.
`
` A. Sure.
`
` Q. You discuss citations to DeLorme
`
`to the effect that "the addition of GPS
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 19 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 20
`
`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
`
`provides enhancement capabilities"?
`
` A. Uh-huh.
`
` Q. Ellipsis, "as well as
`
`user-friendly automated adjustments of
`
`display variables on the PDA."
`
` A. Uh-huh.
`
` Q. And you're citing specifically to
`
`DeLorme, Exhibit 1005, at Column 13, Lines 22
`
`to 31?
`
` A. Yes.
`
` Q. Do you identify any disclosures in
`
`DeLorme describing what user-friendly
`
`automated adjustments are made?
`
` MR. ANSLEY: Objection, form.
`
` A. May I look at -- I've looked at
`
`this several times in that cite, but can I
`
`look at it again to refresh quickly?
`
` Q. Take your time.
`
` A. Thank you.
`
` Can you repeat the question?
`
` Q. Certainly. My question is: In
`
`Paragraph 189, do you identify any
`
`disclosures in DeLorme describing what
`
`user-friendly automated adjustments are made?
`
` MR. ANSLEY: Objection, form.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 20 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 21
`
`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. He does describe map scale level
`
`of detail. Those are cited. There's some
`
`others that he mentions as well here.
`
` Q. Is there anything else that you
`
`cite to in DeLorme regarding these
`
`adjustments?
`
` A. I cite to that entire section, of
`
`course.
`
` Q. Other than that section?
`
` A. No, just that section.
`
` Q. And do you identify any citations
`
`in DeLorme that describe how these automated
`
`adjustments are made?
`
` A. Not beyond that section that I
`
`cite.
`
` Q. And do you identify -- sorry.
`
`Strike that question.
`
` The citation that you identified
`
`in Column 13, Lines 22 through 31 of DeLorme,
`
`does it describe whether those adjustments
`
`are made during navigation?
`
` MR. ANSLEY: Objection, form.
`
` A. It doesn't say that explicitly, I
`
`think. Let me read, once more, the
`
`beginning.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 21 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 22
`
`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
`
`(Witness reviewing document.)
`
` A. It doesn't describe that
`
`explicitly, except one would assume that
`
`automatic adjustments would be in response to
`
`change of position, velocity, so on and so
`
`forth; so as is common on any navigation
`
`system that we have in practice now.
`
` Q. But we're not talking about what's
`
`in practice now; right?
`
` A. Uh-huh.
`
` Q. You understand that?
`
` A. Yes, of course, this is in
`
`practice at the time of the patent.
`
` Q. Can you identify any disclosures
`
`in DeLorme that demonstrate that that
`
`capability wasn't practiced?
`
` A. It doesn't say explicitly -- well,
`
`you -- look here. It's time and distance the
`
`destination. That's got to be updated
`
`dynamically as you move otherwise it makes no
`
`sense.
`
` Q. But are there any disclosures
`
`about whether automated adjustments to the
`
`navigation screen itself are made during
`
`navigation?
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 22 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 23
`
`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. He doesn't say it explicitly
`
`because I think it's pretty obvious that's
`
`why you would do it.
`
` Q. Well, let's look to Column 16 of
`
`DeLorme.
`
` A. Correct.
`
` Q. Starting around Line 55, and you
`
`can take your time and read on down through
`
`Column 17, Line 14.
`
` A. Sure.
`
` Q. Let me know when you finish
`
`reading that section.
`
` A. Okay.
`
`(Witness reviewing document.)
`
` A. Okay.
`
` Q. So looking first at Column 16,
`
`Line 59, DeLorme states that "you can use the
`
`organizer's scroll buttons to zoom in and out
`
`for greater or lesser detail."
`
` A. Yes.
`
` Q. Using a scroll button, is that
`
`automatic updating of a navigation screen?
`
` MR. ANSLEY: Objection, form.
`
` A. That's a manual update.
`
` Q. And it also states you can "tap
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 23 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 24
`
`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
`
`the map to pan in different directions"?
`
` A. Yes.
`
` Q. Is that an automatic adjustment to
`
`the navigation screen?
`
` MR. ANSLEY: Objection, form.
`
` A. That's a manual update.
`
` Q. And reading on down to Line 66 of
`
`up Column 16, it's states, "When the map is
`
`centered within either of these rectangles,
`
`you can use the organizer's scroll buttons to
`
`zoom in and out for greater or lesser detail.
`
`You cannot zoom outside the rectangles"
`
` A. Uh-huh.
`
` Q. Is that a manual or automatic
`
`adjustment in your mind?
`
` MR. ANSLEY: Objection, form.
`
` A. That looks to be manual.
`
` Q. Okay.
`
` In this portion of DeLorme,
`
`describing the map view of its system, do you
`
`see any disclosures relating to an automatic
`
`adjustment of a navigation screen?
`
` MR. ANSLEY: Objection, form.
`
` A. In this section he's mainly
`
`talking about manual capability. In the
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 24 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 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
`
`section that we talked about before, he was
`
`explicitly talking about automatic display
`
`changes.
`
` Q. But we've established, though,
`
`that you identified no additional disclosures
`
`in DeLorme regarding automated adjustments?
`
` MR. ANSLEY: Objection, form.
`
` A. Not that I recall at the moment.
`
`I thought the disclosure that we found was
`
`adequate to mention that he did talk about
`
`that.
`
` Q. In Paragraph 189 of your second
`
`Declaration, Exhibit 1011, you also reference
`
`Paragraph 35 of your first Declaration. Turn
`
`to Paragraph 35 of your first Declaration,
`
`please.
`
` A. Sure. Here it is.
`
` Q. And here, do you identify any
`
`disclosures within Mault that state its
`
`system would benefit from additional features
`
`of the GPS receiver used in DeLorme?
`
` A. Uh-huh.
`
` MR. ANSLEY: Objection, form.
`
` A. Can you repeat your question?
`
` Q. Sure.
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 25 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 26
`
`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
`
` In Paragraph 19 of your second
`
`Declaration, you state that "Patent Owner
`
`also suggests that a person of ordinary skill
`
`in the art would not combine Mault and
`
`DeLorme because Mault is," quote, 'fully
`
`operable for its intended function,'" end
`
`quote.
`
` A. Uh-huh.
`
` Q. And you say, "But as I explained
`
`in my February 5th, 2015 Declaration, Mault
`
`describes a generic GPS receiver and alone
`
`provides a specific example for use."
`
` A. Yes.
`
` Q. And my question is -- in so
`
`doing, making that statement, you cite to
`
`your original Declaration Paragraph 35.
`
` A. Sure.
`
` Q. In Paragraph 35 of your original
`
`Declaration, do you identify any specific
`
`disclosure in Mault to suggest that-it would
`
`benefit from any additional features provided
`
`by DeLorme's specific example of use for a
`
`GPS receiver?
`
` MR. ANSLEY: Objection, form.
`
` A. They are both complimentary, and
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 26 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`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
`
`if I were an engineer trying to build Mault,
`
`make a product out of Mault, DeLorme, because
`
`of the overlap and the kind of things that
`
`they do, would be a natural choice for a GPS
`
`for the Mault system.
`
` Q. But do you identify any specific
`
`disclosures in Mault in Paragraph 35 to
`
`support that opinion?
`
` MR. ANSLEY: Objection, form.
`
` A. I talk about the way the domains
`
`of these inventions have overlapped; so
`
`there's a natural synergy between them. I
`
`don't identify a specific cite here within
`
`Mault; but, again, Mault is all about tagging
`
`locations with activities, with foods, have
`
`related features, things of this sort, and
`
`DeLorme is also about tagging locations with
`
`various kinds of attributes; so they're very
`
`complimentary. But I don't cite a specific
`
`package in Mault here.
`
` Q. Going back to your second
`
`Declaration of 1011.
`
` A. Sure.
`
` Q. On Page 13, the subsection B is
`
`entitled "Software to Create a New Journal,
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 27 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 28
`
`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
`
`to the Extent Not Disclosed by Mault" --
`
` A. Yes.
`
` Q. -- "Would Have Been Obvious to a
`
`Person of Ordinary Skill in the ART."
`
` And in Paragraph 193 you state
`
`that at user may be motivated to enter the
`
`user's weight, height and other vitals?
`
` A. Yes.
`
` Q. And that by doing so, the user is
`
`setting up or creating a journal for use?
`
` A. Yes.
`
` Q. Does entering those parameters
`
`necessarily create a new journal?
`
` MR. ANSLEY: Objection, form.
`
` A. Yes, it does. Because Mault is a
`
`personal health monitor, at least that's one
`
`of its main -- one of the main things it was
`
`aimed at.
`
` And when you receive Mault -- or
`
`you receive this as a device, you have to set
`
`it up with these parameters for it to do its
`
`job; as such, you're creating your journal,
`
`when you have this and you put in your
`
`parameters, you're creating your journal.
`
`From then on these parameters were used in
`
`TransPerfect Legal Solutions
`212-400-8845 -- Depo@transperfect.com
`
`REDACTED
`
`Patent Owner adidas AG - Exhibit 2039
`Page 28 of 89
`
`
`
`CONFIDENTIAL - PURSUANT TO PROTECTIVE ORDER
`
`Page 29
`
`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
`
`the journal entries.
`
` Q. So what is yo
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
