Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - -
` )
`FEDEX CORP., )
` )
` Petitioner, )
` ) Case IPR2017-00729
`vs. )
` )
`INTELLECTUAL VENTURES II LLC, ) Patent No.
` ) 8,494,581
` Patent Owner. )
` )
`- - - - - - - - - - - - - - - -
`
`
` VIDEOTAPED DEPOSITION OF
` TAL LAVIAN, Ph.D.
` Palo Alto, California
` Tuesday, October 17, 2017
`
`REPORTED BY:
`CATHERINE A. RYAN, CMR CRR, CSR No. 8239
`REF: 19805
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 1
`
`IV Exhibit 2007
`FedEx v. IV
`Case IPR2017-00729
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - -
` )
`FEDEX CORP., )
` )
` Petitioner, )
` ) Case IPR2017-00729
`vs. )
` )
`INTELLECTUAL VENTURES II LLC, ) Patent No.
` ) 8,494,581
` Patent Owner. )
` )
`- - - - - - - - - - - - - - - -
`
`
` VIDEOTAPED DEPOSITION OF
` TAL LAVIAN, Ph.D.
` Palo Alto, California
` Tuesday, October 17, 2017
`
`REPORTED BY:
`CATHERINE A. RYAN, CMR CRR, CSR No. 8239
`REF: 19805
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
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`Exhibit 2007 Page 1
`
`IV Exhibit 2007
`FedEx v. IV
`Case IPR2017-00729
`
`
`
`Page 2
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` October 17, 2017
` 9:20 a.m.
`
` Videotaped Deposition of TAL LAVIAN,
`Ph.D., held at the offices of Finnegan, Henderson,
`Farabow, Garrett & Dunner, LLP, 3300 Hillview
`Avenue, Palo Alto, California, pursuant to Notice
`before CATHERINE A. RYAN, CMR, CRR, CSR No. 8239,
`within and for the State of California.
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`A P P E A R A N C E S:
`
`On Behalf of Patent Owner:
`DESMARAIS LLP
`BY: KEVIN K. McNISH, ESQ.
` KYLE PETRIE, ESQ.
` ADAM STEINMETZ, ESQ. (Telephonically)
` 230 Park Avenue
` New York, New York 10169
` 212.351.3400
` kmcnish@desmaraisllp.com
` kpetrie@desmaraisllp.com
` asteinmetz@desmaraisllp.com
`
`
`On Behalf of Petitioner:
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`BY: DANIEL C. TUCKER, ESQ.
` ALEXANDER M. BOYER, ESQ.
` Two Freedom Square
` 11955 Freedom Drive
` Reston, Virginia 20190-5675
` 571.203.2700
` daniel.tucker@finnegan.com
` alexander.boyer@finnegan.com
`
`
`APPEARANCES (Continued)
`ALSO PRESENT:
` PETER YAROSCHUK, Legal Video Specialist
`
`TELEPHONIC PRESENTATION:
` JAMES HIETALA, Intellectual Ventures
`
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`212-400-8845 - Depo@TransPerfect.com
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`Page 4
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`-------------------------INDEX----------------------
`WITNESS EXAMINATION BY PAGE
`TAL LAVIAN, Ph.D.
` BY MR. McNISH 8
`
`------------------EXHIBITS INTRODUCED-------------------
`NUMBER DESCRIPTION PAGE
`Exhibit 1001"United States Patent, Barbosa, et 10
` al., Patent No.: US 8,494,581 B2,
` Date of Patent: Jul. 23, 2013"; 20
` pages
`
`Exhibit 1006"Declaration of Tal Lavian, Ph.D., in 12
` Support of Petition for Inter Partes
` Review of U.S. Patent No. 8,494,581";
` 113 pages
`
`Exhibit 1002"United States Patent, Barbosa et al., 23
` Patent No.: US 8,494,581 B2, Date of
` Patent: *Jul. 23, 2013"; 19 pages
`
`Exhibit 1004"Declaration of Tal Lavian, Ph.D., in 210
` Support of Petition for Inter Partes
` Review of U.S. Patent No. 6,633,900";
` 58 pages
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`
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`Page 5
`------------------EXHIBITS INTRODUCED-------------------
`NUMBER DESCRIPTION PAGE
`Exhibit 1003"United States Patent, Butler et al., 225
` Patent Number: 4,922,516, Date of
` Patent: May 1, 1990"; 18 pages
`
`--------------------EXHIBITS MARKED---------------------
`NUMBER DESCRIPTION PAGE
`Exhibit 2007"United States Patent, Brockman et 256
` al., Patent Number: 6,125,356, Date
` of Patent: Sep. 26, 2000"; 85 pages
`
`Exhibit 2008"United States Patent, Bernard, Patent 257
` Number: 5,497,339, Date of Patent:
` Mar. 5, 1006"; 36 pages
`
`Exhibit 2009"Declaration of Tal Lavian, Ph.D., in 258
` Support of Petition for Inter Partes
` Review of U.S. Patent No. 8,494,581";
` 110 pages
`
`//
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`-------------------QUESTIONS MARKED--------------------
` PAGE
` "Q. So would a person with the 69
` education and experience of a person
` of ordinary skill in the art, as
` you've described in paragraphs 44
` through 49 of your declaration, have
` considered a portable computer to
` include a wireless communication
` interface?"
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` P R O C E E D I N G S
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`Page 7
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` THE VIDEOGRAPHER: This is Tape No. 1 of
`the videotaped deposition of Tal Lavian in the
`matter of Fed-Ex Corporation versus Intellectual
`Ventures II LLC, in the United States Patent and
`Trademark Office, Patent and Trial Appeal Board,
`Case No. 1 -- or -- sorry -- Case No. IPR2017-00729.
` This deposition is being held at
`3300 Hillview Avenue, Palo Alto, California 94304 on
`October 17, 2017, at approximately 9:20 a.m.
` My name is Peter Yaroschuk from the firm
`of TransPerfect. I am the legal video specialist.
`The court reporter is Catherine Ryan, in association
`with TransPerfect.
` Will counsel please identify themselves.
` MR. McNISH: Kevin McNish, Desmarais LLP,
`counsel for Patent Owner Intellectual Ventures II
`LLC.
` MR. PETRIE: Kyle Petrie, Desmarais LLP.
` MR. TUCKER: Dan Tucker, Finnegan, on
`behalf of Petitioner Fed-Ex Corp.
` MR. BOYER: Alexander Boyer, of law firm
`Finnegan, on behalf of Fed-Ex.
` THE VIDEOGRAPHER: Will the court reporter
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`please swear in the witness.
` TAL LAVIAN, Ph.D.,
`having been administered an oath, was examined and
`testified as follows:
` EXAMINATION
`BY MR. McNISH:
` Q My name is Kevin McNish. I represent the
`patent owner, Intellectual Ventures II LLC. This is
`a deposition in Case IPR2017-00729 at the Patent
`Trial and Appeal Board.
` Dr. Lavian, would you please just state
`your full name for the record.
` A Dr. Tal Lavian.
` Q Okay. And that's "Lavian," not "Lavian"?
` A Both are fine.
` Q I just want to get it correct.
` Dr. Lavian, I'm going to be asking you a
`series of questions today.
` Do you understand that you were just sworn
`in and you'll be answering my questions under oath?
` A Yes.
` Q You understand that you are obligated to
`testify truthfully, correct?
` A Yes.
` Q We have a court reporter who is
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`transcribing my questions and your answers today.
`So please just wait until I finish my questions
`before you give an answer.
` Will you do that?
` A Yes.
` Q Also, please give verbal answers for the
`court reporter to write down as opposed to gestures
`or "mm-hmms."
` Will you do that for me?
` A Yes.
` Q If you don't understand a question, please
`just ask me to repeat it or clarify it. If you
`don't, I'm going to assume you understand the
`question. Fair?
` A Yes.
` Q And if you need a break, please just let
`me know. The only thing I ask is that you not take
`a break when there's a question pending. Fair?
` A Yes.
` Q Dr. Lavian, you understand that you're
`acting in these proceedings as an expert witness for
`the petitioner, correct?
` A Yes.
` Q You understand that your testimony today
`will become part of the record in this proceeding,
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`correct?
` A Yes.
` Q You understand that your testimony will
`become publicly available as if you're testifying in
`open court, correct?
` A Yes.
` Q You understand that you're being
`videotaped today, correct?
` A Yes.
` Q And with -- you understand that, with the
`Board's authorization, excerpts of your video
`testimony can be submitted as evidence?
` A Yes.
` Q Dr. Lav- -- Lavian, is there any reason
`you cannot provide full and truthful testimony
`today?
` A No.
` Q Okay. The testimony you give today will
`be full and truthful?
` A Yes.
` Q Dr. Lavian, did you bring any documents
`with you today?
` A No.
` (Exhibit 1001 was introduced.)
` MR. McNISH: Handing the witness what's
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`been previously marked in this proceeding as
`Petitioner's Exhibit 1001.
` Q Dr. Lavian, what I've placed in front of
`you -- let me start that over.
` Dr. Lavian, Exhibit 1001 that I've placed
`in front of you is U.S. Patent 8,494,581 to Barbosa
`and Ortiz, correct?
` A Yes.
` Q I'm going to call Exhibit 1001 the "'581
`patent."
` Is that all right?
` A Yes.
` Q The '581 patent is the patent at issue in
`Case IPR2017-00729, correct?
` A Yes.
` Q And the '581 patent is the patent
`discussed in your declaration in Case IPR2017-00729,
`correct?
` A Yes.
` Q So you've read the '581 patent?
` A Yes.
` Q You read the claims in the '581 patent?
` A Yes.
` Q You've read the file history of the '581
`patent?
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` A Yes.
` Q Okay. And you gave opinions about the
`claims of the '581 patent in your declaration in
`this proceeding, correct?
` A Yes.
` Q You gave opinions on Claims 1 through 24
`of the '581 patent in your declaration, correct?
` A Yes.
` Q You understand that the Board instituted
`trial only on Claims 1 through 17 of the '581
`patent, correct?
` A Yes.
` Q So I'm going to refer to Claims 1 through
`17 of the '581 patent as the "instituted claims."
` Is that fair?
` A Yes.
` (Exhibit 1006 was introduced.)
` MR. McNISH: Handing the witness what's
`been previously marked in this proceeding as
`Exhibit 1006.
` Q Dr. Lavian, what I have handed you that's
`been previously marked as Exhibit 1006 in this
`proceeding is your declaration in this proceeding,
`correct?
` A Yes.
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` Q If you'll turn to paragraph 34 of your
`declaration, Exhibit 1006, Dr. Lavian, paragraph 34
`of Exhibit 1006 refers to your understanding of the
`means-plus-function claiming, correct?
` A Yes.
` Q You understand what "means-plus-function
`claiming" is, correct?
` A Yes.
` Q Dr. Lavian, if you'll please turn to
`paragraph 51 of your declaration, Exhibit 1006.
` A Which paragraph?
` Q Paragraph 51 of your declaration,
`Exhibit 1006.
` Dr. Lavian, in paragraph 51 of your
`declaration, Exhibit 1006, you state that you were
`asked to identify structure in the specification of
`the '581 patent that corresponds to each limitation
`of the '581 patent that uses the word "means,"
`correct?
` A Yes.
` Q You understand that a claim doesn't have
`to use the word "means" to be a means-plus-function
`claim, correct?
` A Yes.
` Q If you'll turn in the '581 patent to
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`Claim 7, Claim 7 of the '581 patent recites a
`communication module, correct?
` A Yes.
` Q In your declaration, you don't opine that
`a communication module, as recited in Claim 7, is a
`means-plus-function term, correct?
` A I believe, yes.
` Q A person of ordinary skill in the art
`would not understand a communication module, in
`Claim 7, to be a means-plus-function term, correct?
` A I'm not sure I understand the question.
` Q Let me start -- let me ask it a little
`differently.
` A communication mod- -- the communication
`module recited in Claim 7 is not a
`means-plus-function term, correct?
` A It's a legal term. I believe that I am
`not a legal expert here. My understanding from the
`lawyer is that the "communication module" is a term
`-- I think -- I don't know. I don't know. That's a
`legal question. I cannot opine on something that is
`legal. I believe from the lawyer that this is a
`means-plus-function, but I'm not sure.
` Q Okay. So you believe that the
`communication module in Claim 7 is a
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`means-plus-function term?
` A I am not a legal expert. I cannot answer
`this type of question.
` Q To the best of your ability, is the
`communication module in Claim 7 a
`means-plus-function term?
` A I think it, yes. I cannot opine on legal
`issue.
` Q But you think that the communication
`module in Claim 7 is a means-plus-function term?
` A That is what I understand, yes.
` Q If you'll turn to paragraph 158 of your
`declaration, and that's paragraph 158 in
`Exhibit 1006.
` So before I go into that, first let me
`just -- just ask you this: What is your basis for
`believing that the communication module in Claim 7
`of the '581 patent is a means-plus-function term?
` A I -- I don't have an opinion on this. I
`am not a legal expert. I read the transcript. I
`understand there's a legal issue on this topic. I
`cannot opine because I'm not a legal expert.
` Q You said you read the transcript?
` A I read documents regarding this issue of
`what is module, but I am not a legal expert.
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` Q Right. But you said you read the
`transcript.
` Which transcript are you referring to?
` A Sorry. Not transcript. I read legal
`documents related to modules. I understand that
`module can be a means-plus-function, but I am not a
`legal expert.
` Q Which legal documents related to modules
`did you read?
` MR. TUCKER: Objection to form.
` THE WITNESS: Wikipedia.
`BY MR. McNISH:
` Q Okay. Other than Wikipedia, which legal
`documents related to modules did you read that
`informed your understanding that a module can be a
`means-plus-function term?
` A I -- I've seen it in the past. I cannot
`pinpoint to a specific document.
` Q Dr. Lavian, you have -- you hold a number
`of patents, correct?
` A Yes.
` Q How many?
` A I don't know. I invented over a hundred.
`I don't know the exact numbers.
` Q Okay. How many of those hundred patents
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`did you, personally, prosecute?
` A I prosecute most of them myself.
` Q So you've drafted claims before, correct?
` A Yes.
` Q How many claims have you drafted?
` A I don't know. Usually in a patent, it's
`about 20 patents -- 20 claims, approximately.
` Q So in most of the hundred patents -- let
`me start that over.
` Have you drafted claims with the term
`"module" in them?
` A I don't remember. I don't know.
` Q Okay. Based on your experience drafting
`claims, do you understand mod- -- do you understand
`a communication module, as recited in Claim 7 of the
`'581 patent, to be a means-plus-function limitation?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I'm not a legal expert. I
`don't know if I can tell us about my claims and how
`they're related to this case.
`BY MR. McNISH:
` Q So you just don't know one way or the
`other whether a communication module, as recited in
`Claim 7, is a means-plus-function term, correct?
` MR. TUCKER: Objection. Form.
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` THE WITNESS: I am not a legal expert.
`BY MR. McNISH:
` Q Okay. I understand that you're not a
`legal expert, and because you're not a legal expert,
`you don't know one way or the other whether a
`communication module, as recited in Claim 7, is a
`means-plus-function term, correct?
` MR. TUCKER: Same objection.
` THE WITNESS: In general, I understand
`that the term "module" can be part of
`means-plus-functions. That's a legal issue that I
`don't have an opinion about.
`BY MR. McNISH:
` Q Does the communication module -- let me
`start that over.
` Is the communication module recited in
`Claim 7 of the '581 patent a means-plus-function
`term?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I understand that
`communication module can be module in general -- can
`be a means-plus-function. I don't have opinion of
`the specific one. I need to investigate, research.
`I don't know.
`//
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`BY MR. McNISH:
` Q Okay. So you don't have an opinion one
`way or the other whether Claim 7 of the '581 patent
`is a means-plus-function term, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I don't know. I didn't
`investigate this specific issue. I don't have an
`opinion on this specific one.
`BY MR. McNISH:
` Q Okay. So you don't have an opinion one
`way or the other whether the communication module in
`Claim 7 of the '581 patent is a means-plus-function
`term?
` A Yes.
` Q Okay. And you don't know whether the
`communication module in Claim 7 of the '581 patent
`is a means-plus-function term?
` A Yes.
` Q I'm sorry. I think I got a double
`negative there.
` You -- you don't know whether the
`communication module in Claim 7 of the '581 patent
`is a means-plus-function term, correct?
` A That's a legal issue, and I was not asked
`to opine on this. I don't have an opinion on this
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 19
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`
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`Page 20
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`one.
` Q And, in fact, you don't know whether the
`communication module in Claim 7 of the '581 patent
`is a means-plus-function term, correct?
` A I --
` MR. TUCKER: Objection. Form.
` THE WITNESS: I know that module can be
`means-plus-function. On this specific patent, this
`specific claim -- I didn't opine specifically on
`this one.
`BY MR. McNISH:
` Q You don't know whether the communication
`module in Claim 7 of the '581 patent is a
`means-plus-function term, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I am not a legal expert. I
`was not asked to opine on this specific one. I
`don't have an opinion.
`BY MR. McNISH:
` Q So to jump back to -- let me -- if you
`jump back to paragraph 158 of your declaration,
`Exhibit 1006, paragraph 158 is the first paragraph
`in a section discussing in Claim 7: "A handheld
`device, comprising a communication module configured
`to download a field management program stored in a
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 20
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`
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`Page 21
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`computing device located remotely from the handheld
`device," correct?
` A Yes.
` Q You didn't identify any structure in the
`'581 patent specification corresponding to a
`communication module as recited in Claim 7 of the
`'581 patent, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: No. I did -- I don't think
`I identified specific structure here. I -- I
`discuss the communication module. I show the
`specific module. I discuss the -- it, and I show
`the diagram of it, where it appear, but I didn't...
`BY MR. McNISH:
` Q And where do you discuss the communication
`module and show the diagram of it in your
`declaration?
` A This section -- I discuss this in -- the
`communication module is in paragraph 52 and 53.
` Q Okay. Paragraphs 52 and 53 of your
`declaration is where you've identified discussion --
`let me start that over.
` Paragraphs 52 and 53 in your declaration
`have to do with Claim 18, correct?
` A Yes.
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 21
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`Page 22
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` Q Okay. Claim 18 does not recite a
`communication module, correct?
` A Yes, you're right. Claim 18 does not
`recite communication module.
` Q What is your understanding of what a
`communication module is as recited in Claim 7?
` MR. TUCKER: Objection. Form.
` THE WITNESS: Communication module can be
`Figure 3, for example, communication module 42.
`BY MR. McNISH:
` Q Let me just jump back a little bit.
` In your declaration, the only claims that
`you identified as means-plus-function claims in the
`'581 patent are Claims 18 through 24, correct?
` A Yes.
` Q You didn't identify any of Claims 1
`through 17 as containing means-plus-function terms,
`correct?
` THE WITNESS: Yes.
` MR. TUCKER: Objection. Form.
`BY MR. McNISH:
` Q Just returning to paragraph 158 of your
`declaration, you state that the serial port -- I'm
`sorry. Let me start that over.
` Referring back to your declaration,
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 22
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`paragraph 159, you state that Rappaport's handheld
`computer includes a communication module, correct?
` A Yes.
` Q And the communication modules you identify
`in paragraph 159 of your declaration include a
`serial port or other components for transferring
`data in the field over a wired or wireless network
`medium, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: Can I get the Rappaport?
`BY MR. McNISH:
` Q I'm just referring to paragraph 159 of
`your declaration.
` A Yes, but you're referring to specific
`document. I would like to get the document.
` (Exhibit 1002 was introduced.)
` MR. McNISH: Handing the witness what has
`been previously marked in this proceeding as
`Exhibit 1002.
` Q What I've placed in front of you as
`Exhibit 1002 is U.S. Patent 6,971,063 to Rappaport,
`correct?
` A Yes.
` Q All right. I'm going to refer to
`Exhibit 1002 as "Rappaport." Fair?
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 23
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`Page 24
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` A Yes.
` Q Returning to Exhibit 1006, your
`declaration, paragraph 159, you state that
`"... Rappaport discloses examples of such a
`communication module when describing that the
`handheld computer can include a 'serial port 60' or
`other components for 'transferring . . . data in the
`field over a wired or wireless network medium . . ."
`Correct?
` A Yes.
` Q And then you continue, in paragraph 159 of
`your declaration, to state: "One skilled would have
`understood that Rappaport's handheld computer" --
` A Where is that? Oh, 160. Okay.
` Q Let me start that over.
` And paragraph 159 of your declaration
`continues: "One skilled would have understood that
`Rappaport's handheld computer includes a
`'communication module' that is capable of allowing
`Rappaport's handheld computer to communicate over
`one or more of the wired or wireless interfaces
`disclosed in Rappaport," correct?
` A I don't know exactly what you are reading,
`but I believe that, yes.
` Q That's paragraph 159 of your declaration,
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 24
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`Page 25
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`starting at the bottom of page 67 of Exhibit 1006.
` A I believe you read it correctly.
` Q Dr. Lavian, you're a person of ordinary
`skill in the art with respect to the '581 patent,
`correct?
` A Much more.
` Q You're a person of extraordinary skill in
`the art with respect to the '581 patent?
` MR. TUCKER: Object to form.
` THE WITNESS: I'm not sure I understand
`the question.
`BY MR. McNISH:
` Q You have -- let me start that over.
` You have more education and experience
`than a person of ordinary skill in the art with
`respect to the '581 patent, correct?
` A Yes.
` Q And I believe you said "much more,"
`correct?
` A Yes.
` Q How much more?
` A I don't know if you quantify it. I have a
`Ph.D. from UC Berkeley. I'm teaching engineering at
`UC Berkeley. I have over a hundred patents in my
`name that I'm an inventor. I have over 25 academic
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 25
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`publications. I have substantially more than the
`person of ordinary skill in the art at that time.
` Q Sticking with communication module and
`with continuing reference to paragraph 159 of your
`declaration, you were able to map -- let me start
`that over.
` You mapped disclosure in Rappaport to the
`limitation communication module in Claim 7, correct?
` A Yes.
` MR. TUCKER: Objection. Form.
` THE WITNESS: Oh, sorry.
`BY MR. McNISH:
` Q And you were able to map the disclosure of
`Rappaport to the limitation communication module in
`Claim 7 of the '581 patent without referring to the
`specification of the '581 patent, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I'm not sure I understand
`the question.
`BY MR. McNISH:
` Q You were able to map the disclosure of
`Rappaport to the limitation communication module in
`Claim 7 of the '581 patent without referring to the
`specification of the '581 patent, correct?
` MR. TUCKER: Same objection.
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 26
`
`
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`Page 27
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` THE WITNESS: As I said before, the
`communication module is the -- the communication
`module as it's mentioned in the -- the '581 patent
`in the description related to Figure 3. And usually
`it's -- most of it's in column 6 of the '581 patent.
`It's the same product. It's the same connection.
`It's identical Palm IIIC. Identical same
`connection.
`BY MR. McNISH:
` Q So you understood a -- let me start that
`over.
` You understood the communication module in
`Claim 7 to connote sufficiently definite structure
`that you knew what disclosure in Rappaport to map to
`that limitation, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I'm not sure I understand
`the question.
`BY MR. McNISH:
` Q You understood how to map Rappaport's
`disclosure to the communication module in Claim 7 of
`the '581 patent, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: '581 patent and Rappaport
`both are the same product, the same device, the same
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 27
`
`
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`Page 28
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`communication module, the same operating system, the
`same connection.
` In Rappaport -- in '581, fig- -- Figure 3
`discusses the communication module. In column 6 of
`'581, you can see several references to the word
`"communication module," element 42, and on my
`declaration, I discuss exactly the same elements of
`the same physical device, Palm III.
`BY MR. McNISH:
` Q So you understood the structure of
`communication module, as recited in Claim 7, well
`enough to map the disclosure of Rappaport to that
`limitation, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: I'm not sure I can answer
`this type of question.
`BY MR. McNISH:
` Q Why not?
` A What is your question? What is your
`question?
` Q Well, my question is: You understood the
`structure of a communication module, as recited in
`Claim 7, well enough to find disclosure in Rappaport
`that corresponds to that limitation, correct?
` A Rappaport -- the '581 patent disclose
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 28
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`communication module in Figure 4 -- 3, and the
`description of Figure 3 more specifically in
`column 6 of the '581 patent. This is exactly the
`same product that I discussed in Claim 7.
` Q You didn't treat communication module, as
`recited in Claim 7 of the '581 patent, as a
`means-plus-function limitation in your analysis in
`your declaration, correct?
` A No.
` MR. TUCKER: Objection. Form.
` THE WITNESS: Sorry.
`BY MR. McNISH:
` Q And "no," you did not treat the
`communication module, as recited in Claim 7 of the
`'581 patent, as a means-plus-function limitation in
`your declaration?
` MR. TUCKER: Objection. Form.
` MR. McNISH: Let me ask that a little
`differently.
` Q Your declaration -- let me start that over
`again.
` The analysis in your declaration with
`respect to Claim 7 assumes that communication module
`is not a means-plus-function term, correct?
` MR. TUCKER: Objection. Form.
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 29
`
`
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`Page 30
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` THE WITNESS: The analysis on my
`declaration -- I think it was clear that
`communication module is in diagram -- diagram --
`Figure 3, as identified in the text related to -- to
`Figure 3.
`BY MR. McNISH:
` Q The analysis in your declaration with
`respect to Claim 7 assumes that communication module
`is not a means-plus-function term, correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: Yes.
`BY MR. McNISH:
` Q And the analysis in your declaration with
`respect to Claim 7 assumes that the term "position
`module" is also not a means-plus-function term,
`correct?
` MR. TUCKER: Objection. Form.
` THE WITNESS: For me, I assume that it's
`the same device. I have analysis -- discussion
`in par- -- in paragraph 52 and 53 of my declaration.
`It's my position it's the same -- similar analysis
`in this paragraph as well.
`BY MR. McNISH:
` Q Okay. Again, paragraphs 52 and 53 of your
`declaration have to do with Claim 18, correct?
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`
`Exhibit 2007 Page 30
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`Page 31
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` A Yes.
` Q Not Claim 7?
` A Yes.
` Q Just to be clear for the record,
`paragraphs 52 and 53 of your declaration exclusively
`relate to Claim 18, correct?
` A Under Claim 18, it might be
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