`
`Case: 17-1894 Document: 38 Page: 1 Filed: 06/07/2018
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`Boston Brussels Chicago Dallas Düsseldorf Frankfurt Houston London Los Angeles Miami
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`Strategic alliance with MWE China Law Offices (Shanghai)
`
`Paul M. Schoenhard
`Attorney at Law
`pschoenhard@mwe.com
`+1 202 756 8223
`
`June 7, 2018
`
`VIA ECF
`
`Hon. Peter R. Marksteiner
`Circuit Executive and Clerk of Court
`U.S. Court of Appeals for the Federal Circuit
`717 Madison Place NW
`Washington, DC 20005
`
`Re: GoPro Inc. v. Contour IP Holding LLC, Nos. 17-1894, -1936
`
`Dear Mr. Marksteiner:
`
`Pursuant to Fed. R. App. P. 28(j) and Fed. Cir. R. 28(i), Contour alerts the circuit clerk
`that certain statements made by GoPro and its declarant Damon Jones during PTAB proceedings
`and this appeal were false. Such information came to Contour’s attention during Damon Jones’
`recent deposition in on-going district court proceedings. Relevant deposition transcript pages are
`attached and, for ease of reference, have been assigned appendix page numbers.
`
`GoPro argued to this Court that the so-called “GoPro Catalog” should be treated as a
`prior art printed publication, in part because it was allegedly made available on the GoPro
`website. E.g., GoPro Br. at 23-34; GoPro Reply Br. at 16-28.1 In support, GoPro relies
`exclusively on the testimony of Damon Jones, who declared: “After the 2009 Tucker Rocky
`Dealer Show and prior to September 13, 2009, GoPro continued to distribute and otherwise make
`available the GoPro Catalog to GoPro’s actual and potential customers, dealers and retailers
`through its website, direct mail, and other means of distribution.” Appx4321 (¶ 11); Appx4331
`(same). Mr. Jones later declared: “In the First Declaration, ¶ 11 is made based on my personal
`knowledge. . . .” Appx5000-01; Appx5005-06 (same).
`
`Mr. Jones recently testified, however, he has no such personal knowledge:
`
`Q. Was the GoPro catalog you distributed at the 2009 Tucker
`Rocky dealer show on GoPro’s website after the Tucker Rocky
`dealer show?
`
`
`1
`The PTAB declined to address this argument. Appx22 n.8; Appx54-55 n.8; Appx71-72;
`Appx83. Contour has asked this Court to treat the argument as waived. Contour Br. at 30-31.
`
`U.S. practice conducted through McDermott Will & Emery LLP.
`500 North Capitol Street, N.W. Washington DC 20001-1531 Telephone: +1 202 756 8000 Facsimile: +1 202 756 8087 www.mwe.com
`
`GOPRO-1043, Page 001
`IPR2015-01078
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`

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`Case: 17-1894 Document: 38 Page: 2 Filed: 06/07/2018
`June 7, 2018
`Page 2
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`The exact one that I distributed, the exact version and
`A.
`everything, I don’t know that.
`
`Q. When was the GoPro HD HERO catalog that you’ve
`referenced in your declarations and that you distributed at the
`Tucker Rocky dealer show, when was that catalog available on
`GoPro’s website?
`
`Again, I don’t know. That’s similar to the previous
`A.
`question.
`
`Appx5916; see also Appx5917-18, Appx5919-20, Appx5921, Appx5922. Mr. Jones also
`testified he had no evidence the catalog was sent to GoPro customers by direct mail. Appx5922-
`23.
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Paul M. Schoenhard
`
`Paul M. Schoenhard
`
`
`
`GOPRO-1043, Page 002
`IPR2015-01078
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`

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`Case: 17-1894 Document: 38 Page: 3 Filed: 06/07/2018
`
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`
`(REDACTED)
`Page 1
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`Case No. 17-cv-04738-WHO
`---------------------------------X
`CONTOUR IP HOLDING, LLC,
`Plaintiff,
`
`v.
`GOPRO, INC.,
`
`Defendant.
`---------------------------------X
`
`HIGHLY CONFIDENTIAL - ATTORNEYS' EYES ONLY
`(cid:9)(cid:51)(cid:38)(cid:37)(cid:34)(cid:36)(cid:53)(cid:38)(cid:37)(cid:10)
`VIDEOTAPED DEPOSITION OF DAMON JONES
`MAY 8, 2018
`Palo Alto, California
`9:12 a.m.
`
`REPORTED BY:
`KELLI COMBS, CSR NO. 7705
`
`800-642-1099
`
`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
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`GOPRO-1043, Page 003
`IPR2015-01078
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`

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`Case: 17-1894 Document: 38 Page: 4 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 33
`
`BY MR. KEVILLE:
` Q Was the GoPro HERO -- HD HERO catalog you
`distributed at the Tucker -- at the 2009 Tucker
`Rocky dealer show on GoPro's website before the
`Tucker Rocky dealer show?
` A That, I don't know.
` Q Was the GoPro catalog you distributed at
`the 2009 Tucker Rocky dealer show on GoPro's website
`at the time of the Tucker Rocky dealer show?
` A That, I do not know.
` Q Was the GoPro catalog you distributed at
`the 2009 Tucker Rocky dealer show on GoPro's website
`after the Tucker Rocky dealer show?
` A The exact one that I distributed, the
`exact version and everything, I don't know that.
` Q When was the GoPro HD HERO catalog that
`you've referenced in your declarations and that you
`distributed at the Tucker Rocky dealer show, when
`was that catalog available on GoPro's website?
` A Again, I don't know. That's similar to
`the previous question.
` Q Do you know if the GoPro HD HERO catalog
`that you distributed at the 2009 Tucker Rocky
`dealer show was ever on GoPro's website?
` A I know the catalogs that were available on
`
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5916
`
`GOPRO-1043, Page 004
`IPR2015-01078
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`

`

`Case: 17-1894 Document: 38 Page: 5 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 34
`GoPro website. I know that there were other trade
`shows going on. I don't know exactly which catalogs
`they had and for how long. I do know the catalogs
`were available that were current catalogs at the
`time.
` Q Sure.
` And it's probably my fault my question
`wasn't clear.
` I'm asking about the catalog that you
`referenced in your declaration that you distributed
`at the 2009 Tucker Rocky dealer show. When was that
`catalog available on GoPro's website?
` MS. KHACHATOURIAN: Objection; asked and
`answered.
` THE WITNESS: Again, I -- I don't know the
`exact catalog. You're asking about versions
`earlier. I don't know the version of that catalog.
`I don't know if that exact -- I don't know what
`exact catalog was up there. I know that people
`had -- I know there were catalogs available on
`GoPro.com. I know that we would mail out catalogs
`to people. The exact one that I gave, I don't know
`if that was the exact one that was -- I mean, the
`one that I had was the one that I had. It didn't go
`anywhere else. So, I mean, I only have -- like, the
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
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`www.veritext.com
`
`Appx5917
`
`GOPRO-1043, Page 005
`IPR2015-01078
`
`

`

`Case: 17-1894 Document: 38 Page: 6 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 35
`version that I recorded or brought in was the one
`that I retained, so...
` MS. KHACHATOURIAN: I'm going to object to
`this line of questions because counsel is refusing
`to show Mr. Damon [sic] the catalog that's attached
`to his declaration.
`BY MR. KEVILLE:
` Q Mr. Damon, you also mentioned mailing.
` MS. KHACHATOURIAN: Mr. Jones, sorry. My
`bad.
` MR. KEVILLE: Yeah, I'm following your
`lead. I'll try not to do that.
` MS. KHACHATOURIAN: My bad.
`BY MR. KEVILLE:
` Q Mr. Jones, you mentioned mailing. Do you
`have any knowledge that the exact catalog that you
`attached to your declaration and you say you
`distributed at the 2009 Tucker Rocky dealer show was
`ever mailed by GoPro to any customers?
` A Do I have any evidence of that?
` Q No. Do you have any knowledge that that
`actually happened?
` A I believe they were, yes, because it
`became very popular as a first time people saw HD
`video, and they were impressed, and everybody all of
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5918
`
`GOPRO-1043, Page 006
`IPR2015-01078
`
`

`

`Case: 17-1894 Document: 38 Page: 7 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 188
`reference on the GoPro website to the HD HERO camera
`or any LCD BakPac, Wi-Fi BakPac or other remote
`BakPacs, correct?
` MS. KHACHATOURIAN: Objection; vague,
`ambiguous, overbroad, calls for speculation, lacks
`foundation, compound.
` THE WITNESS: I don't know if there was or
`wasn't. On this that you provided, I don't see any.
`BY MR. KEVILLE:
` Q Assuming that -- well, let me put it this
`way: If Exhibit 37, the Wayback Machine snapshot of
`GoPro's website on August 3rd, 2009, is accurate and
`authentic, then you would agree that between June
`and August 3rd, 2009, GoPro did not have on its
`website any HD HERO marketing material?
` MS. KHACHATOURIAN: Objection; vague,
`ambiguous, overbroad, calls for speculation,
`compound.
` THE WITNESS: I can't -- I can't say
`whether there was or there was not. From what you
`provided here, it does not show any.
`BY MR. KEVILLE:
` Q Looking at Exhibit 37 --
` A Yes.
` Q -- the snapshot of the GoPro website as of
`
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5919
`
`GOPRO-1043, Page 007
`IPR2015-01078
`
`

`

`Case: 17-1894 Document: 38 Page: 8 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 189
`August 3rd, 2009, you would agree that looking at
`that between June and August 3rd, 2009, there was no
`GoPro HD HERO marketing material on the GoPro
`website?
` MS. KHACHATOURIAN: Objection; vague,
`ambiguous, overbroad, calls for speculation, lacks
`foundation, compound.
` THE WITNESS: All I can agree with was
`there is nothing mentioned in here that you
`provided. I can't say what was on the website or
`what there wasn't. Then I can't remember. From
`what I see here that you provided, I don't see it.
`BY MR. KEVILLE:
` Q So if Exhibit 37, the snapshot of the
`GoPro website from the Wayback Machine, is authentic
`and accurate, you would agree that up until
`August 3rd, 2009, GoPro had no marketing material
`for the HD HERO camera or its BakPac accessories on
`the website?
` MS. KHACHATOURIAN: Objection; vague,
`ambiguous, overbroad, compound, lacks foundation,
`calls for speculation.
` THE WITNESS: Again, I can only go from
`this that you provided. This is not the whole
`website. This is a snapshot of some pages of the
`
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5920
`
`GOPRO-1043, Page 008
`IPR2015-01078
`
`

`

`Case: 17-1894 Document: 38 Page: 9 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 197
`reference to a product catalog; just individual
`product links?
` MS. KHACHATOURIAN: Objection; vague,
`ambiguous, overbroad, calls for speculation, lacks
`foundation.
` THE WITNESS: On the pages that you
`provided, I do not see a sample video or product
`catalog listed on those pages.
`BY MR. KEVILLE:
` Q Do you know when in 2009 GoPro first put a
`product catalog on its website?
` A In 2009 when it first put a product
`catalog on its website?
` MS. KHACHATOURIAN: Objection; vague and
`ambiguous, overbroad.
` THE WITNESS: I do not know when it first
`put one on.
`BY MR. KEVILLE:
` Q When you were at GoPro up until 2016, did
`GoPro keep any backup or archive copies of its
`website?
` MS. KHACHATOURIAN: Objection; compound.
` THE WITNESS: I don't know. I have no
`idea.
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5921
`
`GOPRO-1043, Page 009
`IPR2015-01078
`
`

`

`Case: 17-1894 Document: 38 Page: 10 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 238
`this wireless feature, out of its catalog as of
`October 2009?
` MS. KHACHATOURIAN: Objection; vague and
`ambiguous, overbroad, calls for speculation, lacks
`foundation, assumes facts not in evidence.
` THE WITNESS: I don't know. Whoever was
`in charge of those decisions would have to be asked.
`I don't know.
`BY MR. KEVILLE:
` Q In your Exhibit 31 declaration, you said:
` "After the 2009 Tucker Rocky
` dealer show and prior to
` September 13th, 2009, GoPro
` continued to distribute and
` otherwise make available the GoPro
` catalog to GoPro's actual and
` potential customers, dealers and
` retailers through its website."
` Do you have any evidence that the catalog
`that's marked Exhibit 34 that has the wireless
`remote was ever on the GoPro website?
` A Do I have any evidence of that personally?
` Q Yes.
` A I don't have any evidence of that
`personally.
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5922
`
`GOPRO-1043, Page 010
`IPR2015-01078
`
`

`

`Case: 17-1894 Document: 38 Page: 11 Filed: 06/07/2018
`
`(REDACTED)
`HIGHLY CONFIDENTIAL - ATTORNEYS EYES ONLY
`Page 239
` Q And also say it was distributed through
`direct mail. Do you have any evidence that that
`catalog that's marked Exhibit 34 was sent to GoPro
`customers by direct mail?
` MS. KHACHATOURIAN: Objection; vague and
`ambiguous and overbroad.
` THE WITNESS: I don't have any -- any
`evidence of that personally.
` MS. KHACHATOURIAN: Do you understand what
`"evidence" means?
` MR. KEVILLE: No. No. Counsel, you can
`ask questions at the end. You know how this works.
`You're a lawyer. You don't get to ask questions in
`the middle of my deposition.
` MS. KHACHATOURIAN: I'm not going to let
`you trick him --
` MR. KEVILLE: No. No. No.
` MS. KHACHATOURIAN: -- because that's
`exactly what you're doing. I'm not going to let you
`trick him. I'm not going to let you trick him, so
`it is what it is.
` MR. KEVILLE: Bring that up with the
`judge.
` MS. KHACHATOURIAN: Go ahead. I would be
`happy to talk to the judge about this deposition.
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`Appx5923
`
`GOPRO-1043, Page 011
`IPR2015-01078
`
`

`

` Form 30
`FORM 30. Certificate of Service
`Case: 17-1894 Document: 38 Page: 12 Filed: 06/07/2018
`Rev. 03/16
` UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`CERTIFICATE OF SERVICE
`I certify that I served a copy on counsel of record on
`by:
`
`June 7, 2018
`
`U.S. Mail
`Fax
`Hand
`Electronic Means (by E-mail or CM/ECF)
`
`Paul M. Schoenhard
`Name of Counsel
`
`/s/ Paul M. Schoenhard
`Signature of Counsel
`
`Law Firm
`Address
`City, State, Zip
`Telephone Number
`Fax Number
`E-Mail Address
`
`McDermott Will & Emery LLP
`500 North Capitol Street NW
`Washington, DC 20001
`202-756-8223
`202-756-8087
`pschoenhard@mwe.com
`
`NOTE: For attorneys filing documents electronically, the name of the filer under whose log-in and
`password a document is submitted must be preceded by an "/s/" and typed in the space where the
`signature would otherwise appear. Graphic and other electronic signatures are discouraged.
`
`Reset Fields
`
`GOPRO-1043, Page 012
`IPR2015-01078
`
`