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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________________________
` APPLE INC.
` Petitioner
` v.
` VIRNETX, INC. and SCIENCE APPLICATION
` INTERNATIONAL CORP.,
` Patent Owner
` _____________________________
` Case IPR2016-00331
` Case IPR2016-00332
` Patent No. 8,504,696
` _____________________________
`
` DEPOSITION OF ROBERTO TAMASSIA
` Washington, D.C.
` September 9, 2016
`
`Reported by: Mary Ann Payonk
`Job No. 111685
`
`TSG Reporting - Worldwide 877-702-9580
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` Page 1 of 64
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`VIRNETX EXHIBIT 2027
`Apple v. VirnetX
`IPR2016-00331
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________________________
` APPLE INC.
` Petitioner
` v.
` VIRNETX, INC. and SCIENCE APPLICATION
` INTERNATIONAL CORP.,
` Patent Owner
` _____________________________
` Case IPR2016-00331
` Case IPR2016-00332
` Patent No. 8,504,696
` _____________________________
`
` DEPOSITION OF ROBERTO TAMASSIA
` Washington, D.C.
` September 9, 2016
`
`Reported by: Mary Ann Payonk
`Job No. 111685
`
`TSG Reporting - Worldwide 877-702-9580
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`VIRNETX EXHIBIT 2027
`Apple v. VirnetX
`IPR2016-00331
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`Page 2
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` September 9, 2016
` 9:00 a.m.
`
` Deposition of ROBERT TAMASSIA, held at
`the offices of Sidley Austin, LLP, 1501 K
`Street, N.W., Washington, D.C., pursuant to
`Notice before Mary Ann Payonk, Nationally
`Certified Realtime Reporter and Notary Public
`of the District of Columbia, Commonwealth of
`Virginia, States of Maryland and New York.
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`APPEARANCES:
`ON BEHALF OF PATENT OWNER:
` DANIEL ZEILBERGER, ESQUIRE
` JOSEPH PALYS, ESQUIRE
` PAUL HASTINGS
` 875 15th Street, N.W.
` Washington, D.C. 20005
`
`ON BEHALF OF PETITIONER:
` THOMAS BROUGHAN III, ESQUIRE
` SIDLEY AUSTIN
` 1501 K Street, N.W.
` Washington, D.C. 20005
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`ROBERTO TAMASSIA,
` called as a witness, having been duly
` sworn, was examined and testified as
` follows:
` EXAMINATION
`BY MR. ZEILBERGER:
` Q. Good morning.
` A. Hello. Good morning.
` Q. Could you state your name and spell
`it for the record?
` A. Yes. Roberto Tamassia,
`T-A-M-A-S-S-I-A. First name, R-O-B-E-R-T-O.
` Q. Do you understand you're here today
`for IPR2016-00331 and IPR2016-00332 relating to
`U.S. Patent Number 8,504,696?
` A. Yes.
` Q. And you have been deposed before;
`correct?
` A. That's right.
` Q. Do you recall when you've been
`deposed?
` A. Yes. So I was first deposed was the
`end of 2012, and then again in November 2015,
`and then twice again in January 2016.
` Q. When you say were you deposed in the
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`end of 2012, what are you referring to?
` A. I'm referring to a software matter
`related to Dunstan versus Comscore.
` Q. Do you understand you're under oath
`today?
` A. Yes, I do.
` Q. You're probably familiar with some of
`the rules, but just to briefly go over them,
`you understand that we will be taking breaks
`today. To the extent we do, please answer any
`pending questions and then, unless there's a
`privilege concern, then we can take a break.
` Your lawyer may object today. Please
`answer anyway unless your lawyer instructs you
`otherwise.
` If any question is unclear today,
`please let me know; otherwise, I'll assume you
`understood the question.
` Do you have any questions?
` A. I don't have any questions. I
`understand the procedure.
` Q. Is there any reason you can't testify
`completely and accurately today?
` A. There is no reason I can think of.
` Q. Did you prepare at all for the
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`deposition today?
` A. Yes, I did prepare.
` Q. What did you do to prepare for today?
` MR. BROUGHAN: I'll object to the
` extent it calls for privileged work
` product-protected information, but
` please answer to the extent you can.
` A. I met with counsel, and I did review
`my declaration, the patent in question, '696,
`and some of the exhibits.
` Q. And when you refer to counsel, who
`are you referring to?
` A. I'm referring to meetings with Tom
`Broughan, who is here, Sam Dillon, and also
`Herman Webley.
` Q. Anyone else?
` A. No.
` Q. Are those attorneys for Sidley
`Austin?
` A. Yes, they are.
` Q. You mentioned that you reviewed some
`exhibits. Do you recall which exhibits you
`reviewed?
` A. Yes. I focused on the Beser patent,
`on the Aventail reference, and on the RFC 2401.
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`Those are the references I focused on while
`preparing.
` Q. Did you review any other exhibits?
` A. I did not review them.
` Q. Did you review any other documents?
` A. Did not review any other documents
`for the purpose of preparing for this
`deposition.
` Q. How long did you prepare for the
`deposition today?
` A. So I started last weekend, and I
`think I spent about 15 hours or so. I don't
`recall now an exact count, but that's a good
`approximation, 15 hours.
` Q. Did you bring anything with you today
`to help you testify?
` MR. BROUGHAN: Object to the extent
` it calls for privilege work
` product-protected information. Caution
` you not to reveal the substance of any
` communications with counsel. But
` subject to that, you may answer.
` A. So I did not bring anything for the
`purpose of helping me today testify.
` MR. ZEILBERGER: Just to get it out
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` of the way, I'm handing the witness
` what's been previously marked as
` Exhibit 1005 in IPR2016-00331.
` (Exhibit No. 1005, previously marked, was
` referenced and indexed.)
` MR. ZEILBERGER: And I'm handing
` the witness what's been previously
` marked as Exhibit 1005 in IPR2016-00332.
` (Exhibit No. 1005, previously marked, was
` referenced and indexed.)
`BY MR. ZEILBERGER:
` Q. Do you recognize the two exhibits I
`just handed you?
` A. Yes, I recognize them.
` Q. What are these exhibits?
` A. Yes, they appear to be two
`declarations that have been filed for two IPRs
`that are the subject of the deposition today.
`And they appear to be exactly as, you know, I
`prepared them. I understand you're
`representing these to me.
` Q. Can you turn to the last page of
`Exhibit 1005 in the 331 matter?
` A. Yes.
` Q. And do you recognize the signature
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`that's on that page?
` A. Yes. That's my signature.
` Q. And it's dated December 22, 2015;
`correct?
` A. That's right.
` Q. So you signed this declaration on
`December 22, 2015?
` A. Yes, I understand that is the date.
` Q. Can you turn to the last page of
`Exhibit 1005 in the 332 proceeding?
` A. Yes.
` Q. Is that your signature as well?
` A. Yes, it is.
` Q. And both of these declarations relate
`to U.S. Patent Number 8,504,696; correct?
` A. That's right.
` Q. And just for purposes of today, if I
`refer to that patent as the '696 patent, you'll
`understand what I'm referring to?
` A. I do. And it's fine to refer to it
`as the '696 patent. I may also refer to it in
`the same way.
` Q. Okay, great.
` Did you review the entirety of the
`'696 patent when you prepared these
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`declarations?
` A. The specification of this patent is
`substantially similar to other patents I have
`reviewed over a period of more than one year,
`so I am familiar with the specification of the
`patent.
` So for the purpose of preparing, I
`focused primarily on portions related to the
`claim construction section of my declarations,
`and also to portions that are related to the
`claims of the '696 patent.
` Q. Okay. So you relied on your review
`of substantially similar specifications from
`other patents for the other portions of the
`specification; is that accurate?
` A. I will say that at some point in the
`past I have reviewed the entire specification
`of the patent, because it's essentially
`substantially similar to that of other patents.
` Q. Okay. When did you first begin
`preparing the opinions that are in the two
`declarations here?
` A. So this was the beginning of
`December 2015. Could have been a bit earlier.
`I don't remember exactly.
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` Q. Were any materials provided to help
`you prepare these declarations?
` MR. BROUGHAN: I'll object to the
` extent it calls for privilege or work
` product-protected information. Caution
` the witness not to reveal the substance
` of communications with counsel. Subject
` to that, you may answer.
` A. I was provided the patent, the '696
`patent, and the documents I referred to in my
`declarations.
` Q. Anything else?
` MR. BROUGHAN: Same objection as
` before.
` A. I don't think so. I don't remember
`being provided anything but what I referred to
`in the declarations itself, themselves.
` Q. Okay. Did you review any decisions
`issued by the Board in preparing your
`declarations?
` MR. BROUGHAN: Object to form.
` A. Can you clarify the meaning of
`decisions issued by the Board?
` Q. So when I say "the Board," I'm
`referring to the Patent Trial and Appeal Board.
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`Do you know what the Patent Trial and Appeal
`Board is?
` A. I understand what that is. My
`question to you for the purpose of
`clarification is what is the meaning of
`decision by PTAB?
` Q. So I think your declarations cite to
`some decisions issued by the Board. Correct?
` A. In the claim construction section I
`have cited certain interpretations that the
`Board stated at some point and so that's what I
`been referring to. I'm not sure if those are
`called decisions or if they have some other
`technical name.
` Q. So you do understand that those
`statements from the Board appear in some
`documents that the Board issued; right?
` So if you go to the 331 declaration,
`paragraph 64 is one example.
` So if you look at the bottom of page
`21 it says, for example, "institution
`decision."
` Do you see that?
` A. Yes.
` Q. So that's one example of a decision
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`issued by the board; right?
` A. As I state in this paragraph, this is
`information that I received about an
`interpretation made by the Board. I believe
`this specific interpretation was not
`controversial, and what I did is taking into
`account the specification in what would be the
`broadest possible interpretation in view of
`this specification, then I came up with what in
`paragraph 66 on page 23 I have indicated as
`being my own interpretation.
` Q. When your declarations cite to these
`decisions by the Board, did you review those
`decisions?
` A. I don't remember the exact process at
`the time. It was quite some time ago. I may
`have done a focused review just to double-check
`the statement I'd been informed about.
` Q. Did you review any of your prior
`opinions when you prepared the declaration in
`the 331 and 332 proceedings?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information.
` A. I believe I understand your question,
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`but if you could just be more specific about
`what you referred to when you say my prior
`declarations.
` Q. I'm referring to any of your prior
`declarations in the IPR proceedings between
`VirnetX and Apple.
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. I
` caution the witness not to reveal the
` substance of any communications with
` counsel. Subject to that, you can
` answer.
` A. Are you ready for my answer now?
` Q. Yes, please.
` A. Okay. So I had in mind my previously
`filed declarations in Apple versus VirnetX
`matters, which were on patents with
`substantially similar specifications, and also
`with some similarity, sometimes significant, in
`the claims and structure of the claims. And
`hence, there were -- certainly in my mind when
`I prepared this declaration, I -- I had a copy,
`of course, of my declarations. I don't
`remember right now if I did or not, how I may
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`have referred to them or relied on my memory.
` Certainly, as anybody can see, these
`declarations also have similarities to my
`previous declarations because they are on
`similar matters.
` Q. Who retained you for these
`proceedings?
` A. I was retained by Sidley Austin.
` Q. Have you ever communicated with
`anyone outside of Sidley Austin regarding these
`proceedings?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Do not
` reveal the substance of communications
` with Apple's counsel. Subject to that,
` you may answer.
` A. The fact that I have written and
`submitted a declaration, the fact that I'm
`being deposed today is a matter of public
`record and so I've been open about it.
` There are several people who know,
`for example, that I am, you know, being deposed
`today including, for example, my partner. She
`knows about it. I'm not sure she remembers or
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`knows that it involves Apple or VirnetX.
` There are colleagues. There are
`collaborators who know that I am, you know,
`here, okay?
` My employer knows that I'm involved
`in this line of work. So there are a number of
`people, and some of these communications, like
`the one to my employer, are required as a
`condition of employment.
` Q. Let me narrow the question.
` Did you ever discuss any VirnetX
`patent with an individual from a law firm other
`than Sidley Austin?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Caution
` the witness not to reveal the substance
` of any communications with Apple's
` counsel. Subject to that, you can you
` may answer.
` A. Can you repeat exactly the question?
` Q. Did you ever discuss any VirnetX
`patent with an individual from a law firm other
`than Sidley Austin?
` MR. BROUGHAN: Same objection.
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` A. I don't remember discussing VirnetX
`patents, discussing, you know, what they cover,
`what they do.
` The disclosure to my employer may
`result in a conversation they may want to have
`with me about what is the nature of my expert
`witness work and possible relationships with my
`own research work, but my employer so far has
`accepted my disclosure of, you know, external
`consulting work. They've not called me in yet
`to discuss what is the work about VirnetX.
` Q. Your employer isn't a law firm;
`right?
` A. No, my employer is Brown University.
` Q. I'll just repeat my question.
` A. Okay.
` Q. I think you misheard.
` Did you ever discuss VirnetX patents
`with an individual from a law firm other than
`Sidley Austin?
` MR. BROUGHAN: Same objection as
` earlier. Caution you not to reveal the
` substance of communications with Apple's
` counsel. Subject to that, you may
` answer.
`
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` A. So I've not had discussions about
`VirnetX's patents, like what is my opinion on
`them or what they are about with any individual
`who is a member of a law firm.
` Q. Have you had any discussions
`regarding the proceedings between VirnetX and
`Apple with any individual from a law firm other
`than Sidley Austin?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Caution
` the witness not to reveal the substance
` of communications with Apple's counsel.
` Subject to that, you may answer.
` A. Can you clarify what you are seeking
`when you say discussions about proceedings?
`Because these proceedings are about patents, so
`it appears to be a very similar question.
` Q. So I'm not trying to get at the
`substance of your conversations. What I want
`to answer is -- when I refer to a proceeding
`between VirnetX and Apple, do you understand
`what I'm referring to?
` A. The proceedings are, for example, the
`current IPR proceedings on which I'm being
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`deposed, right? Like the inter partes review
`331 --
` Q. Right.
` A. -- and 332 and others that are
`pending. I understand there are several of
`them at various stages.
` Q. Right.
` And you understand there's also a
`litigation between VirnetX and Apple, for
`example?
` A. I understand that there is also some
`litigation, yes.
` Q. So what I want to understand is
`whether you've ever had any discussions in any
`manner about these proceedings with an
`individual from a law firm other than Sidley
`Austin.
` MR. BROUGHAN: Same objection as
` before.
` A. So as someone who's an expert in
`multiple fields of computer science and
`computer engineering, I am, you know, sometimes
`approached by individuals who appear to be
`either members of law firms or somehow, you
`know, representing them, okay? And their
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`inquiries could be of the type, you know, what
`is your experience, or something of this type.
` And as the fact that I've been
`involved in these proceedings is public
`information, I would feel comfortable in, you
`know, if asked, in letting them know.
` Q. Other than individuals who are
`seeking to retain your services for matters
`unrelated to VirnetX patents, is there anyone
`else you've discussed these proceedings between
`VirnetX and Apple with?
` MR. BROUGHAN: Object to the extent
` it calls for privileged or work
` product-protected information. Caution
` you not to reveal the substance of
` communications with counsel. You may
` answer.
` A. Okay, so other than individual
`members of law firms or associated with them
`who may have approached me with the purpose of
`potentially exploring a retention of my
`services on matters unrelated to VirnetX
`patents, I've not discussed VirnetX patents or
`proceedings with any member of the -- of a law
`firm or associated with a law firm.
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` Q. Okay. Your declarations include a
`section regarding anticipation; correct?
` A. Both my declarations include sections
`about anticipation.
` Q. To be more specific, paragraphs 19 to
`23 of both of the declarations discuss
`anticipation; right?
` A. Yes.
` Q. So you understand that for a patent
`claim to be anticipated by the prior art, each
`and every requirement of the claim must be
`found expressly or inherently in a single prior
`art reference as recited in the claim; correct?
` A. My understanding of anticipation is
`clarified in these paragraphs of the
`declaration and so, as I wrote in 21, my
`understanding includes that each and every
`requirement of the claim must be found
`expressly or inherently in a single prior art
`reference as recited in the claim, and I add my
`further understanding about prior -- that
`limitations not expressly described in a prior
`art reference might still be there if they are
`inherent to what is being described in the
`prior art.
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` So it is, you know, an explanation of
`the exact meaning of something being inherent
`that is inherent not only to the specific items
`but to the process, to the broader process that
`is being described.
` Q. Your declarations also have a section
`about obviousness in paragraphs 24 to 39.
`Correct?
` A. That's right. I have a review of
`what is my own understanding of obviousness as
`somebody who is a technical expert, of course,
`and not a lawyer.
` Q. In referring specifically to
`paragraph 28, you understand that an
`obviousness analysis requires consideration of
`the differences between the prior art and the
`claims at issue; correct?
` A. I understand that any such analysis
`should include the consideration of what would
`be differences between what is being claimed in
`a patent and what is taught by the prior art in
`addition to what I list as additional factors,
`which is a scope and content of the prior art,
`what would be the knowledge of someone of
`ordinary skill in the art related to the
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`patent, and other factors that, you know, may
`exist. You know, they should be objective
`factors for the specific case.
` So I -- I try to summarize there what
`is my understanding. I agree that differences
`is one of the factors.
` Q. In your declaration in the 331
`proceeding, did you map any claim of the '696
`patent to any prior art?
` A. My declaration for the 331
`proceedings does not make an explicit mapping
`between prior art, prior art combinations, and
`claims. I understand that the petitioner,
`Sidley Austin on behalf of Apple, has made such
`analysis.
` The work I have done provides an
`analysis of combinations and obviousness that
`is relevant to the correspondence that has been
`indicated by the petitioner, and the petitioner
`considers that my declaration supports what are
`their findings.
` Q. In your declaration in the 332
`proceeding, did you map any claim of the '696
`patent to any prior art?
` A. I'll make the -- I'll give you the
`
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`same answer. I don't think it's necessary that
`I repeat it. I have not explicitly made these,
`you know, correspondence analysis, but I
`understand that my analysis of combinations has
`been used to support, okay, a mapping analysis.
` Q. Did you analyze whether any prior art
`discloses the features recited in any claim of
`the '696 patent?
` MR. BROUGHAN: Objection, form.
` A. Are you referring to one declaration,
`to the other, to both?
` Q. In your declaration in the 331
`proceeding did you analyze whether any prior
`art discloses the features recited in the
`claims of the '696 patent?
` MR. BROUGHAN: Object to form.
` Q. Let me ask you another way. If you
`can answer, please go ahead.
` A. Yeah. So again, I did not make a
`legal analysis of anticipation. What I did is
`a technical type of, you know, study and
`investigation, reporting what are my findings.
`And my declaration is related, has been used in
`support, okay? Could be used in support. I
`should say could be used in support.
`
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` Q. You have no opinion on whether any
`prior art reference -- strike that.
` A. Okay.
` Q. Your declaration in the 331
`proceeding does not include any opinion on
`whether any prior art reference discloses any
`claim limitation in the '696 patent; correct?
` A. I have not expressed in my
`declaration for the 331 proceedings any
`explicit opinion about whether
`claim limitations or elements have been
`disclosed by prior art; however, I have
`analyzed the prior art and my findings are
`relevant to such, an analysis of such, a legal
`analysis.
` Q. And was that your same response for
`the 332 declaration as well?
` A. Yes, I will give you the same
`response if you ask me about the 332.
` (Recess taken.)
` MR. ZEILBERGER: I'm handing the
` witness what's been previously marked as
` Exhibit 1001 in both the 331 and 332
` proceedings.
` (Exhibit No. 1001, previously marked, was
`
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` referenced and indexed.)
`BY MR. ZEILBERGER:
` Q. Do you recognize Exhibit 1001?
` A. Yes. It is the '696 patent.
` Q. Can you turn to figures 26 and 27?
` A. Yes.
` Q. Do you understand how the system
`shown in figure 26 operates?
` A. I did previously review this figure,
`and I did review the passages that refer to
`this figure, and I did come up with my
`understanding of the configuration and method
`associated with that figure.
` Q. And what is your understanding of the
`configuration shown in figure 26?
` A. So figure 26 is meant to illustrate
`one of the aspects of the claimed invention.
`And it relates to figure 25, showing how
`additional components have been added to what
`is deemed to be the prior art in terms of a web
`browser client seeking to connect with certain
`target site.
` What figure 25 shows, the web browser
`being equipped with networking software called
`IP stack, making a query to a DNS server and
`
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`then making a page request to a target website.
` Figure 26 shows a modified type of
`system configuration where now there are
`additional components. For example, a DNX
`proxy application or service that is contacted
`instead of the original DNS server, and then
`additional components like something called the
`gatekeeper.
` And also, it indicates how
`connections could be made to a target site that
`in one case is labeled of being secure, in the
`other case, it's labeled being unsecure. So it
`does illustrate one of the aspects of the
`claimed invention.
` Q. What is your understanding of the
`difference between a secure target site and the
`unsecure target site?
` MR. BROUGHAN: Object to form.
` MR. ZEILBERGER: I'll rephrase.
` Q. In your answer, you referred to a
`secure target site and the unsecure target site
`in figure 26; right?
` A. Yes.
` Q. So what is your understanding of the
`difference between the secure target site and
`
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`the unsecure target site that you referred to?
` A. To give you an accurate answer of
`what is my understanding, I would like to go
`back now to the passage that introduces figure
`26. If you can point me to it, it would be
`faster; otherwise, I can go through based on my
`general recollection of where it may appear.
` Q. No problem.
` A. Thank you.
` Q. I think it begins at column 40, line
`16.
` A. Thank you.
` So the specification outlines a
`different approach for processing requests
`originated by the web browser depending on
`whether the target website is determined to be
`secure or not.
` If the target website is determined
`to be unsecure, then the access by the client
`to the website is performed in a way that the
`specification mentions to be similar to that of
`the prior art.
` In particular, the specification
`refers to the module called DNS proxy in line
`44 of the column where it says that the proxy
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`will forward the request to the server, then
`the user will receive presumably the IP address
`of the site labeled unsecure and then will
`access it. So that is expressed starting at
`45.
` Conversely, if a determination is
`made that the site is secure, then the
`processing of the request is now different and
`the proxy there will do an access control
`verification based on what the specification
`calls user security privileges to access the
`site.
` So there is a situation where this
`intermediate device, DNX proxy, does additional
`checks related to the user's access control.
` And so that is the difference in the
`processing the request that is outlined in this
`portion of the specification. That's one of
`the elements in this voluminous specification
`that he has claimed to be novel.
` Q. And why do you say that this is one
`of the elements that's claimed to be novel?
` A. Well, the reason I believe that the
`specification considers this configuration as
`part of the invention is language of the type
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`according to one embodiment, and, you know,
`contrasting this with what is referred to as
`prior art or conventional scheme, so -- and, in
`general, the entire context of the
`specification.
` Q. If you look at figure 25, what is
`your understanding how element 2502 operates?
` A. You're asking me about box labeled
`DNS number 2502?
` Q. Yes.
` A. So as described by the specification,
`device or software server 2502 receives as
`illustrated by the passage at column 39,
`starting at line 33, so receives a DNS request.
`This would be a request that comes from the
`client 2501 to receive an IP address that is
`associated with a certain name. Since the
`language DNS is used, it appears that this is
`the -- a host name.
` Then this DNS server comes up with
`a -- with an IP address corresponding with this
`name if it can be found. So there is certain
`operations that run by 2502. And the response,
`you know, will generally include an IP address,
`which is further used now by the client to
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`connect to the target server, in this example,
`client server for the purpose of illustration,
`web browser and website, okay? They call it
`web server.
` And so now there is a request that is
`made for a certain resource on the website.
`Could be a page, could be an image. And this
`request, as indicated later on in the passage,
`that request is made via the IP address to
`reach the target website.
` So this prior art was definitely
`known, okay, ho
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