Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
` FEDEX CORPORATION,
` Petitioner
` v.
` INTELLECTUAL II, LLC,
` Patent Owner
` ____________________
` CASE IPR2017-00859
` U.S. PATENT NO. 9,047,586
`
`****************************************************
` ORAL DEPOSITION OF
` DANIEL W. ENGELS
` FEBRUARY 20, 2018
`****************************************************
`
`Reported by:
`Christy R. Sievert, CSR, RPR
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`CASE IPR2017-00859
`
`February 20, 2018
`
`1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
` FEDEX CORPORATION,
` Petitioner
` v.
` INTELLECTUAL II, LLC,
` Patent Owner
` ____________________
` CASE IPR2017-00859
` U.S. PATENT NO. 9,047,586
`
`****************************************************
` ORAL DEPOSITION OF
` DANIEL W. ENGELS
` FEBRUARY 20, 2018
`****************************************************
`
`Reported by:
`Christy R. Sievert, CSR, RPR
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
`
`2
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` DEPOSITION of DANIEL W. ENGELS,
`produced as a witness at the instance of the
`Petitioner, and duly sworn, was taken in the
`above-styled and numbered cause on the 20th day of
`February, 2018, from 9:23 a.m. to 11:27 a.m., before
`Christy R. Sievert, CSR, RPR, in and for the State
`of Texas, reported by machine shorthand, at the
`offices of Perkins Coit, 500 North Akard Street,
`Suite 3300, Dallas, Texas 75201 pursuant to the
`provisions stated on the record or attached hereto.
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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`3
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` A P P E A R A N C E S
`
`FOR THE PETITIONER:
` MS. ALIZA G. CARRANO
` Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
` 901 New York Avenue, NW
` Washington, DC 20001
` Phone: 202-408-4148
` E-mail: aliza.carrano@finnegan.com
`
`FOR THE PATENT OWNER:
` MR. ADAM D. STEINMETZ
` Desmarais, LLP
` 230 Park Avenue
` New York, New York 10169
` Phone: 212-351-3400
` E-mail: asteinmetz@desmaraisllp.com
`
`ALSO PRESENT:
` MR. JAMES R. HIETALA
` Intellectual Ventures
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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` I N D E X
` PAGE
`Appearances................................... 3
`Exhibits.................................... 5-6
`Proceedings................................... 7
`DANIEL W. ENGELS:
` Examination by Ms. Carrano.................. 7
`
`Reporter's Certification.................. 71-72
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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`5
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` EXHIBITS
`NUMBER DESCRIPTION PAGE
`Exhibit 1 Daniel W. Engles deposition 8
` transcript, Volume 2, 2-12-18
`
` EXHIBITS
`PREVIOUSLY MARKED:
`NUMBER DESCRIPTION
`Exhibit 12 Barcodes 1-4
`Exhibit 14 Document titled Driver
` License Cards - Identification
` Cards
`Exhibit 15 Exhibit 28, Document Titled
` American National Standard
` for Material Handling - Unit
` Loads and Transport Packages,
` Two-Dimensional Symbols, ANSI
` MH10.8.3M-1996, Approved
` July 15, 1996
`Exhibit 16 Exhibit 17 to Dr. Hohberger's
` Opening Expert Report
`Exhibit 20 Shipping Label v1 and v2
`Exhibit 24 FDX Corporation 1999 Annual
` Report
`Exhibit 26 Exhibit 33, Shipping the
` Internet Way, Now There's
` FedEx interNetShip
` FDXIV00028714 - 00028756
`Exhibit 1001 U.S. Patent 9,047,586
`Exhibit 1002 American National Standard
` for Material Handling - Unit
` Loads and Transport Packages,
` Two-Dimensional Symbols
`Exhibit 1003 U.S. Patent 5,298,731
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`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`6
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` EXHIBITS
` (continued)
`PREVIOUSLY MARKED:
`NUMBER DESCRIPTION
`Exhibit 2002 Declaration of Daniel W.
` Engels, Ph.D., U.S.
` Patent 9,047,586, June 2, 2015
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`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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` P R O C E E D I N G S
` (Oath administered.)
` THE REPORTER: Would counsel please
`introduce yourselves.
` MS. CARRANO: Aliza George Carrano on
`behalf of the petitioner, FedEx.
` MR. STEINMETZ: Adam Steinmetz on
`behalf of the patent owner, Intellectual Ventures
`II, LLC. With me today is James Hietala, who is
`in-house counsel at Intellectual Ventures II, LLC.
` DANIEL W. ENGELS
` having been first duly sworn,
` testified as follows:
` EXAMINATION
`BY MS. CARRANO:
` Q. Good morning, Dr. Engels.
` A. Good morning, Aliza.
` Q. Can you please state your full name for the
`record?
` A. My name is Daniel Wayne Engels.
` Q. You understand that you're under oath and
`required to answer truthfully just as if the judge
`or jury were in the room with us?
` A. I understand that.
` Q. Is there any reason why you can't give
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
`
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`useful and accurate answers to my questions today?
` A. There is no reason I cannot give full and
`accurate answers today.
` Q. Do you remember that I deposed you last
`week on February 12th in the matter Intellectual
`Ventures II, LLC, vs. FedEx Corp., et al., Case
`No. 2:16-CV-988 in the Eastern District of Texas?
` A. I recall that.
` Q. I'll refer to that proceeding as "the
`Eastern District of Texas lawsuit," if that's okay?
` A. Yes, that's fine.
` Q. Your role in the Eastern District of Texas
`lawsuit, in part, is to provide opinions regarding
`various issues including invalidity and the alleged
`infringement of U.S. Patent No. 9,047,586, correct?
` A. I believe that is correct.
` Q. And I'll refer to U.S. Patent No. 9,047,586
`during this deposition as "the '586 patent," if
`that's okay?
` A. '586 patent is how I know it.
` Q. Great.
` (Exhibit 1 marked.)
`BY MS. CARRANO:
` Q. Dr. Engels, you have been handed what has
`been marked as Engels IPR Exhibit 1. What is Engels
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
`
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`IPR Exhibit 1?
` A. It appears to be the video deposition of
`Daniel W. Engels from Monday, February the 12th,
`taken in New York, New York, beginning at 9:11 a.m.
` Q. So does this appear to be the transcript of
`your deposition that was taken on February 12th?
` A. According to the title page, it would
`appear to be the transcript of my deposition taken
`on February the 12th.
` Q. And do you see that some of the pages in
`Engels IPR Exhibit 1 have been redacted because they
`may have contained confidential information?
` A. If you can point me to them.
` Q. Do you see any blank pages?
` A. (Reviews document.)
` Yes, I see there are blank pages, such as
`page 190, within this transcript.
` Q. Was the testimony that you gave during your
`February 12th deposition in the Eastern District of
`Texas lawsuit truthful?
` A. Yes, it was.
` Q. Can you turn to the second page of Engels
`IPR 1? If you look at the top right corner, it
`says, "2 (Pages 2 to 5)." Do you see a list of
`exhibits on page 4 of the transcript?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
`
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` A. Beginning on page 4 of the transcript,
`exhibits are listed.
` Q. You've been handed what was marked as
`Engels Exhibit 12. Do you see that in the lower
`right-hand corner is a stamp that says Engels
`Exhibit 12 dated 2/12/18?
` A. I see the stamp for Engels 12 dated
`2/12/18.
` Q. Is this a copy of Engels Exhibit 12 that
`was used during your February 12th deposition?
` A. I do not recall the ordering of the
`exhibits, but this appears to be an exhibit, likely
`12, as marked, that was presented to me last week.
` Q. If you can look at page 4 of the transcript
`to verify what was Exhibit 12.
` MR. STEINMETZ: Objection to scope.
` A. Exhibit 12, barcodes 1 through 4, yes.
`BY MS. CARRANO:
` Q. Dr. Engels, you were just handed what was
`previously stamped as Engels Exhibit 14 dated
`2/12/18. Is this a copy of Engels Exhibit 14 that
`was used during your February 12th deposition for
`the Eastern District of Texas lawsuit?
` MR. STEINMETZ: Objection; scope.
` A. It's a photocopy of the front page that
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
`
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`appears to have the stamp Engels 14 dated 2/12/18.
`And according to page 4 of my transcript, Exhibit 4
`is a document titled "Driver License Card -
`Identification Cards," which is the title on this
`document.
`BY MS. CARRANO:
` Q. So would this be a copy of Engels
`Exhibit 14?
` A. This appears to be a copy of Engels
`Exhibit 14.
` Q. Dr. Engels, you've handed what was marked
`as Engels Exhibit 15 with the stamp that has the
`date 2/12/18. Is this a copy of Engels Exhibit 15
`that was used during your February 12th deposition
`for the Eastern District of Texas lawsuit?
` MR. STEINMETZ: Objection; scope.
` A. This has a copy of the stamp Engels 15
`dated 2/12/18. The title page is Exhibit 28. A
`subsequent page says, "American National Standard
`for Material Handling" -- "Handling Unit Loads and
`Transport Packages - Two-Dimensional Symbols."
`Exhibit 15, a document titled, "American National
`Standard for Material Handling - Unit Loads and
`Transport Packages - Two-Dimensional Symbols ANSI
`MH-10.8.3M - 1996, Approved July 15th, 1996," is
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
`
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`what is in page 4 of my transcript. So this would
`appear to be a copy of Exhibit 15 -- Engels
`Exhibit 15.
` Q. Dr. Engels, you have just been handed what
`was stamped Engels Exhibit 16 dated 2/12/18. Is
`this a copy of Engels Exhibit 16 that was used
`during your February 12th deposition for the Eastern
`District of Texas lawsuit?
` MR. STEINMETZ: Objection to the
`scope.
` A. There is a copy of the stamp titled Engels
`16, dated 12/12/18. The title page says
`"Exhibit 17." On page 4 of my transcript,
`Exhibit 16 is titled, "Exhibit" -- "Exhibit 17 to
`Dr. Hohberger's Opening Expert Report." And this
`is -- appears to be a copy of Exhibit 17 to
`Dr. Hohberger's report.
`BY MS. CARRANO:
` Q. Dr. Hohberger -- I'm sorry. Dr. Engels,
`you were just handed what was marked as Engels
`Exhibit 20 dated 2/12/18. Is this a copy of Engels
`Exhibit 20 that was used during your February 12th
`deposition for the Eastern District of Texas
`lawsuit?
` MR. STEINMETZ: Objection to the
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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`scope.
` A. There's a copy of the stamp titled Engels
`20 dated 2/12/18 on this. On page 5 of my
`transcript, Exhibit 20 is labelled, "Shipping Label
`v1 and v2." On this page, there's two shipping
`labels, one labelled v1 and v2. This would appear
`to be a copy of Exhibit 20 from Engels.
`BY MS. CARRANO:
` Q. Dr. Engels, you have just been handed
`Engels Exhibit 24 that's dated with the stamp
`2/12/18. Is this a copy of Engels Exhibit 24 that
`was used during your February 12th deposition in the
`Eastern District of Texas lawsuit?
` MR. STEINMETZ: Objection to the
`scope.
` A. There's a copy of the stamp titled
`Engels 24 dated 2/12/18. Page 5 of my transcript
`refers to "FDX Corporation 1999 Annual Report." The
`title page says, "FDX Corporation 1999 Annual
`Report." This would appear to be a copy of Engels
`Exhibit 24.
`BY MS. CARRANO:
` Q. Last one. Dr. Engels, you have been handed
`what was stamped as Engels Exhibit 26 dated 2/12/18.
`Is this a copy of Engels Exhibit 26 that was used
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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`during your February 12th deposition for the Eastern
`District of Texas lawsuit?
` MR. STEINMETZ: Object to the scope.
` A. There's a stamp -- a copy of a stamp which
`says Engels 26, dated 2/12/18. The title page says
`"Exhibit 33." Page 6 of my transcript refers to
`Exhibit 26, document titled, "Shipping the Internet
`Way, Now There's FedEx interNetShip Bates No. --" I
`won't read the Bates number. On the second page
`there is a title called, "Shipping the Internet Way,
`Now There's FedEx interNetShip," and the Bates
`number ending in 28714. For Engels Exhibit 26 on
`page 6 of my transcript, 28714, ending in 28756.
`And ending in 28756, the document you gave me, and
`this would appear to be a copy of Engels Exhibit 26.
`BY MS. CARRANO:
` Q. Did you prepare for today's deposition?
` A. I did.
` Q. What did you do to prepare for today's
`deposition?
` A. Preparation for today's deposition, I read
`my opening and rebuttal reports for IPR and reviewed
`the ANSI and Ett documents.
` Q. Did you meet with anyone to prepare for
`today's deposition?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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` A. I met with my attorney, Adam Steinmetz.
` Q. How long did you spend meeting with Adam to
`prepare for today's deposition?
` A. I met with him for about seven hours.
` Q. When did you meet with Adam to prepare for
`today's deposition?
` A. I met with him yesterday, on the 19th of
`February.
` Q. Did you view any other documents in
`preparation for this deposition other than your
`declarations, the ANSI reference and the Ett
`reference?
` A. Reviewed the -- I'm trying to remember the
`expert used in the IPR case.
` Q. That would be Mark Reboulet.
` A. Mark Reboulet. Thank you.
` I reviewed his declaration and his
`deposition transcript, and I may have reviewed other
`documents as well. But did not review any of the
`documents that you have placed before me.
` Ah, yes, I definitely reviewed the '586
`patent too.
` Q. I'm handing you what's been marked as
`Petitioner's Exhibit 1001 that was submitted in this
`proceeding. Can you identify what is Petitioner's
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`Exhibit 1001?
` A. FedEx Exhibit 1001 is the -- it appears to
`be a copy of the patent, 9,047,586, or the '586
`patent.
` Q. Let's look at Claim 7 of the '586 patent.
`I want to focus on the term "barcodes" as are cited
`in Claim 7 of the '586 patent. Is there any
`limitation on what type of barcode symbology would
`fall within the scope of barcodes as recited in
`Claim 7 of the '586 patent?
` A. Barcodes are recited in the limitations.
`(As read:) So creating a document having a plural-
`-- plurality of barcodes wherein the plurality of
`barcodes encode, et cetera, as well as sending
`electronic document for decoding of a first one of
`the plurality of barcodes. The claim does not limit
`the barcodes. It simply says "barcodes."
` Q. So you would agree that any barcode
`symbology would fall within the scope of barcodes as
`recited in Claim 7 of the '586 patent?
` MR. STEINMETZ: Objection; form.
` A. The claim language simply recites
`"barcodes" and does not put a limitation on the type
`of barcode.
`BY MS. CARRANO:
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
`
`February 20, 2018
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` Q. Another term that is recited in Claim 7 of
`'586 patent is "electronic document." Is there any
`requirement that the electronic document, as recited
`in Claim 7 of the '586 patent, requires that the
`electronic document include human readable text?
` MR. STEINMETZ: Objection; form.
` A. The -- Claim 7 simply refers to an
`electronic document having a plurality of barcodes
`and sending the electronic document for decoding.
`It does not limit the type of electronic document
`other than those containing plurality of barcodes.
`BY MS. CARRANO:
` Q. Does that mean that "electronic document,"
`as recited in Claim 7 of the '586 patent, does not
`require the electronic document to include human
`readable text?
` A. It requires the electronic document to have
`plurality of barcodes.
` Q. So you would agree that there's no
`requirement to include anything other than a
`plurality of barcodes in the term "electronic
`document" as recited in Claim 7?
` MR. STEINMETZ: Objection; form.
` A. Claim 7 simply requires the electronic
`document to have a plurality of barcodes.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`BY MS. CARRANO:
` Q. Would your answer to my question be that
`there is no requirement that the term "electronic
`document" require that there be human readable text
`in the electronic document?
` A. Claim 7 requires only that the electronic
`document have a plurality of barcodes.
` Q. Does human readable text need to be
`included in the electronic document as recited in
`Claim 7?
` A. So the electronic document requires a
`plurality of barcodes. The barcode standards may
`require human readable text.
` Q. Is there any limitation referencing barcode
`standards in Claim 7?
` A. Claim 7 requires only an electronic
`document to -- to have a plurality of barcodes.
` Q. So your answer to my question would be
`there is no limitation referencing barcode standards
`in Claim 7?
` A. It simply -- Claim 7 simply says "barcodes"
`and does not limit the type of barcodes.
` Q. What about with respect to human readable
`text, there's no requirement that Claim 7 requires
`human readable text to be in the electronic
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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`document; is that correct?
` MR. STEINMETZ: Objection; form.
` A. Claim 7 requires only that the electronic
`document contain plurality of barcodes.
`BY MS. CARRANO:
` Q. You submitted two declarations for the IPR
`proceeding; is that correct?
` A. I submitted two declarations, correct.
` Q. In both declarations, you provided opinions
`about U.S. Patent No. 5,298,731 to Ett; is that
`correct?
` A. The Ett patent, I -- I do not recall the
`patent number, but I refer to them as "Ett."
` Q. Dr. Engels, you have been handed what was
`submitted in this proceeding as Petitioner's
`Exhibit 1003. Can you identify what is Petitioner's
`Exhibit 1003?
` A. FedEx Exhibit 1003 is -- appears to be a
`copy of Patent No. 5,298,731, which has been
`referred to as the "Ett patent" in this case.
` Q. I'll refer to Petitioner's Exhibit 1003 as
`the "Ett reference" or "Ett," if that's okay?
` A. Thank you. That's how I know it.
` Q. Have you reviewed the Ett reference?
` A. I have reviewed the Ett reference.
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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` Q. Have you read every single word in the Ett
`reference?
` A. I believe at one time or another I have
`read every single word of the Ett reference.
` Q. How many times have you read the Ett
`reference thoroughly?
` MR. STEINMETZ: Objection.
` A. Unknown.
`BY MS. CARRANO:
` Q. Do you have any estimate?
` A. How many times have I read it cover to
`cover? I would have read it cover to cover, likely,
`just the first time that I read it, which would have
`been about a year ago in preparation for the first
`declaration in this case. Since then I've probably
`reviewed different aspects of it or different
`portions thereof, but I don't know that I've sat
`down and read it cover to cover since that first
`reading.
` Q. Earlier you testified that you read Ett in
`preparation for your deposition today. Is that
`right?
` A. I have reviewed Ett in preparation for
`today.
` Q. In both declarations that you submitted for
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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`this IPR proceeding, you have included citations to
`certain portions of Ett; is that correct?
` A. I believe, yes, I've referred to different
`aspects -- or different locations within Ett within
`my declarations.
` Q. Are those portions of Ett that you cite in
`your declarations the disclosures that you rely on
`in formulating your opinions about Ett?
` MR. STEINMETZ: Objection to the form
`of the question.
` A. Those portions are specifically portions
`within Ett that I called out, but I rely upon the
`entirety of Ett plus other knowledge, including the
`'586 patent and other general knowledge that I have
`in this space, in forming my opinions.
`BY MS. CARRANO:
` Q. In your opinion, is there any disclosure in
`Ett that you relied on that contradicts any of your
`opinions on Ett?
` A. I'm sorry, I don't understand the question.
` Q. Is there any disclosure in Ett, in your
`opinion, in which you relied on in formulating your
`opinions in your declarations that contradict any of
`your opinions regarding Ett?
` A. If I understand your question correctly,
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`you're asking if I have found any -- referenced any
`portions of Ett which contradict my opinions
`regarding Ett or. . .
` Q. I can rephrase the question.
` Is there any part of the disclosure in Ett
`that contradicts any of your opinions that you've
`provided on Ett?
` A. Again, are you asking if anything in Ett
`contradicts what I have said about Ett?
` Q. Yes.
` A. I'm not aware of any anything in Ett that
`would contradict any of the opinions I have put
`forth regarding Ett.
` Q. Have you read the file history of Ett?
` A. I have reviewed the file history in Ett,
`but that would have been a long time ago.
` Q. How did you obtain the file history of Ett?
` A. It would have been provided by the
`attorneys.
` Q. So it's your testimony under oath that you
`have read the entire file history of Ett?
` A. I believe I have reviewed the file history
`of Ett, assuming it was provided. I know I have
`reviewed the file history of the '586, but I've --
`in reviewing file histories, I unlikely would have
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`read every single word. But I believe that Ett was
`one of those provided. I -- I would not have read
`it any -- within the last year after providing the
`initial declaration.
` Q. But it is your testimony that you have read
`the file history of Ett?
` A. I believe that I have reviewed the file
`history of Ett.
` Q. Ett discloses using a general purpose
`computer to generate the barcodes disclosed in Ett;
`is that correct?
` A. I'm sorry, would you repeat that question?
` Q. Ett discloses using a general purpose
`computer to generate the barcodes disclosed in Ett;
`is that correct?
` A. Ett discloses using a general purpose
`computer, and that computer is used as part of the
`process to generate what is ultimately a printed
`barcode.
` Q. Ett discloses that Code 39 symbology can be
`used in the practice of the invention disclosed in
`Ett; is that correct?
` MR. STEINMETZ: Objection.
` A. I believe that Ett refers to Code 39 and
`Code 128 symbologies, and I believe that those were
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`base symbologies that were used or Ett had suggested
`their use as the foundational symbologies for the
`invention.
`BY MS. CARRANO:
` Q. If you look at column 4 of Ett, line 61
`through 63, is it true that Ett discloses that there
`are many applicable barcode systems for the practice
`of the invention, including Code 39 and Code 128?
` A. I'm sorry, what lines?
` Q. Column 4, lines 61 through 63. So I'll
`re-ask the question.
` Is it true that Ett discloses that there
`are many applicable barcode systems for the practice
`of the invention, including Code 39 and Code 128?
` A. Column 4, 61 through 63, the sentence says,
`"Figure 2 illustrates two of many applicable barcode
`systems for the practice of this invention, Code 39
`and Code 128."
` So it gives two specific examples.
` Q. To confirm, Ett provides two specific
`examples of barcode symbologies that can be used in
`the practice of the invention disclosed in Ett; is
`that correct?
` MR. STEINMETZ: Objection;
`mischaracterizes his prior testimony and the
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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`document.
` A. Ett gives two examples that he says can be
`used for the practice of the invention,
`specifically, Code 39 and Code 128.
`BY MS. CARRANO:
` Q. Ett discloses that other barcodes can be
`used in the practice of the Ett invention; is that
`correct?
` MR. STEINMETZ: Same objection.
` A. I believe Ett discusses other barcodes but
`only gives examples of Code 39 and Code 128,
`particularly in the section you've referenced,
`column 4, 61 through 63.
`BY MS. CARRANO:
` Q. If you turn to column 5 of Ett, lines -- at
`line 30, do you see that Ett discloses other
`barcodes that can be used in the practice of the Ett
`invention?
` A. Column 5, line 31, beginning on line 31,
`"Other barcode structures which might be used in the
`practice of this invention include, but are not
`limited to, Code 205, Code 93, Codabar and
`variations of the UPC code."
` So it identifies one, two, three -- four
`other barcode structures which he claims might be
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Engels, Daniel W.
`
`CASE IPR2017-00859
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`February 20, 2018
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`used in the practice of the invention.
` Q. The barcodes that we have just identified
`in Ett, such as Code 39, Code 128, Code 205, Code
`93, Codabar, are those generally classified as
`one-dimensional or 1D barcodes?
` A. Code 205, Code 93, Codabar and the UPC code
`are linear or one-dimensional barcodes.
` Q. What about Code 39 and Code 128, are those
`also considered one-dimensional barcodes?
` A. Code 39 and Code 128 are considered
`one-dimensional or linear barcodes.
` Q. Ett generally describes linear barcodes as
`having a horizontal or width modulation; is that
`correct?
` MR. STEINMETZ: Objection.
` A. If you'll point me to the specific
`description within Ett that refers to them as a
`horizontal.
`BY MS. CARRANO:
` Q. If you could go to column 7, line 27, does
`Ett generally describe linear barcodes as having
`horizontal or width modulation?
` MR. STEINMETZ: Objection.
` A. Column 7, beginning at 27, it reads,
`"Figure 8 illustrates most of the horizontal or
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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`width modulation barcodes which are applicable for
`the practice of the invention," and he lists a
`number. He is simply referring to those cited as
`horizontal or width modulation barcodes.
`BY MS. CARRANO:
` Q. Ett describes Code 39 as having horizontal
`or width modulation as a -- I'll restart.
` Ett discloses Code 39 as having horizontal
`or width modulation; is that correct?
` A. Ett refers to Code 39 as the horizontal or
`width modulation barcode. Code 39 is one of the
`examples given as a horizontal or width modulation
`barcode.
` Q. And Ett describes Code 128 as having a
`horizontal or width modulation barcode; is that
`correct?
` A. In that same sentence on column 7,
`beginning at 27, horizontal or width modulation
`barcodes, in the list is included Code 128.
` Q. Is it your opinion that Ett provides no
`disclosure teaching how its system could be used to
`print a Code 39 barcode?
` A. Would you repeat that question?
` Q. Is it your opinion that Ett provides no
`disclosure teaching how its system could be used to
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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`print a Code 39 barcode?
` A. Ett describes the use or foundation of a --
`potentially, of a Code 39 barcode that encodes two
`different data streams. He has not given an example
`of how you would print a base Code 39 barcode that
`does not encode two different data streams.
` Q. Is it your opinion that Ett requires that
`two data streams be encoded?
` MR. STEINMETZ: Objection; form.
` A. The invention of Ett is how to encode two
`data streams into a single linear barcode, and all
`of the examples given are in reference to encoding
`two different data streams within a single linear
`barcode.
`BY MS. CARRANO:
` Q. Is it your opinion that Ett discloses that
`two data streams be encoded?
` A. The invention of Ett is encoding two data
`streams within a single linear barcode.
` Q. Ett discloses the concept of vertical or
`height modulation; is that correct?
` A. Ett discloses the use of a vertical code,
`that is, a height varying code for the encoding of
`one of the data streams within an otherwise linear
`barcode.
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`202-220-4158
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`Henderson Legal Services, Inc.
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`
`
`
`Engels, Daniel W.
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`CASE IPR2017-00859
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`February 20, 2018
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` Q. What is the other data stream that ends up
`getting encoded in the Ett system?
` MR. STEINMETZ: Objection; form.
` A. So Ett discusses encoding two separate data
`streams. First, as we just mentioned, is encoded
`using vertical encoding. The second would be
`encoded using horizontal encoding.
`BY MS. CARRANO:
` Q. If there was no vertical encoded data
`stream, would the barcode result be simply a
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