·1· · ·IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`· · · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
`·2
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`·3· ·LSI CORPORATION and AVAGO· § CASE NO. IPR2017-01068
`· · ·TECHNOLOGIES, U.S., INC.,· § U.S. Patent 5,859,601
`·4· · · · · · · · · · · · · · · §
`· · · · · · · · · · · · · · · · §
`·5· · · · · · ·Petitioners,· · ·§
`· · · · · · · · · · · · · · · · §
`·6· · · ·vs.· · · · · · · · · · §
`· · · · · · · · · · · · · · · · §
`·7· ·REGENTS OF THE UNIVERSITY §
`· · ·OF MINNESOTA,· · · · · · · §
`·8· · · · · · · · · · · · · · · §
`· · · · · · · · · · · · · · · · §
`·9· · · · · · ·Patent Owner.· · §
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`10· ·~~~~~~~~~~~~~~~~~~~~~~~~~
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`11· · · · · · · · · · · DEPOSITION OF
`· · · · · · · · · · · · ·JAEKYUN MOON
`12· · · · · · · · · · CONDUCTED REMOTELY
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`13
`· · · · · · · · · · · · 5:04 a.m. EST
`14· · · · ·Tuesday, the 15th day of September 2020
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`15
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`· · · · ·Blanche J. Dugas, CRR, RPR, CCR No. B-2290
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`LSI Corp. Exhibit 1034
`Page 1
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`· · · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
`·2
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`·3· ·LSI CORPORATION and AVAGO· § CASE NO. IPR2017-01068
`· · ·TECHNOLOGIES, U.S., INC.,· § U.S. Patent 5,859,601
`·4· · · · · · · · · · · · · · · §
`· · · · · · · · · · · · · · · · §
`·5· · · · · · ·Petitioners,· · ·§
`· · · · · · · · · · · · · · · · §
`·6· · · ·vs.· · · · · · · · · · §
`· · · · · · · · · · · · · · · · §
`·7· ·REGENTS OF THE UNIVERSITY §
`· · ·OF MINNESOTA,· · · · · · · §
`·8· · · · · · · · · · · · · · · §
`· · · · · · · · · · · · · · · · §
`·9· · · · · · ·Patent Owner.· · §
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`10· ·~~~~~~~~~~~~~~~~~~~~~~~~~
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`11· · · · · · · · · · · DEPOSITION OF
`· · · · · · · · · · · · ·JAEKYUN MOON
`12· · · · · · · · · · CONDUCTED REMOTELY
`
`13
`· · · · · · · · · · · · 5:04 a.m. EST
`14· · · · ·Tuesday, the 15th day of September 2020
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`15
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`16
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`17
`· · · · ·Blanche J. Dugas, CRR, RPR, CCR No. B-2290
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`LSI Corp. Exhibit 1034
`Page 1
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`·1· · · · ·APPEARANCES OF COUNSEL VIA VIDEOCONFERENCE
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`·2· ·On Behalf of the Petitioners:
`· · · · ·KRISTOPHER L. REED, Esquire
`·3· · · ·Kilpatrick Townsend & Stockton, LLP
`· · · · ·Suite 904, Building E
`·4· · · ·Chamtime Plaza, No. 6, Lane 2889
`· · · · ·Jinke Road Pudong New District
`·5· · · ·Shanghai China· 201203
`· · · · ·kreed@kilpatricktownsend.com
`·6
`· · · · ·EDWARD J. MAYLE, Esquire
`·7· · · ·Kilpatrick Townsend & Stockton, LLP
`· · · · ·Suite 600
`·8· · · ·1400 Wewatta Street
`· · · · ·Denver, Colorado· 80202
`·9· · · ·(303) 405-8536
`· · · · ·(303) 648-6683 (facsimile)
`10· · · ·tmayle@kilpatricktownsend.com
`
`11· ·On Behalf of the Patent Owner:
`· · · · ·PATRICK J. McELHINNY, Esquire
`12· · · ·MARK G. KNEDEISEN, Esquire
`· · · · ·K&L Gates, LLP
`13· · · ·210 Sixth Avenue
`· · · · ·Pittsburgh, Pennsylvania· 15222
`14· · · ·(412) 355-6332
`· · · · ·patrick.mcelhinny@klgates.com
`15· · · ·mark.knedeisen@klgates.com
`
`16
`· · ·Also Present:
`17· ·Huseby Technician
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`18
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`LSI Corp. Exhibit 1034
`Page 2
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`·1· · · · · · · · · · INDEX OF EXAMINATION
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`·2· ·EXAMINATION· · · · · · · · · · · · · ·PAGE
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`·3· ·EXAMINATION· · · · · · · · · · · · · · ·4
`· · ·BY MR. REED
`·4
`· · ·EXAMINATION· · · · · · · · · · · · · · 89
`·5· ·BY MR. McELHINNY
`
`·6
`· · · · · · · · · · · · · · ·- - -
`·7
`· · · · · · · · · · · ·INDEX TO EXHIBITS
`·8
`· · · · ·(No exhibits were marked for identification.)
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`LSI Corp. Exhibit 1034
`Page 3
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`·1· · · · · · · · ·Deposition of Jaekyun Moon
`· · · · · · · · · · · ·September 15, 2020
`·2
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`·3· · · · · · (Counsel for all parties stipulate
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`·4· · · · that the Court Reporter is authorized to
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`·5· · · · swear the witness remotely.)
`
`·6· · · · · · · · · · · ·JAEKYUN MOON,
`
`·7· ·having been first duly sworn, was examined and
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`·8· ·testified as follows:
`
`·9· · · · · · MR. McELHINNY:· I want to confirm.· We
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`10· · · · aren't video recording this?
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`11· · · · · · MR. REED:· That's my understanding.
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`12· · · · Can the reporter confirm, or whoever is the
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`13· · · · tech from Huseby, please.
`
`14· · · · · · TECHNICIAN:· Do you guys need to be
`
`15· · · · recording?· No, I was not told to record
`
`16· · · · this.· If you guys need me to record it, I
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`17· · · · can record it for you.
`
`18· · · · · · MR. McELHINNY:· No, we agreed not to
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`19· · · · record it.
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`20· · · · · · TECHNICIAN:· Yeah, no, this is not
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`21· · · · recorded.
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`22· · · · · · MR. McELHINNY:· Okay.· That's fine.
`
`23· · · · Thank you.
`
`24· ·EXAMINATION
`
`25· ·BY MR. REED:
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`LSI Corp. Exhibit 1034
`Page 4
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`
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`·1· · · ·Q.· ·Good evening, Professor Moon.· Can you
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`·2· ·please state your full name for the record.
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`·3· · · ·A.· ·It's Jaekyun Moon.· J-A-E-K-Y-U-N, M-O-O-N.
`
`·4· ·Jaekyun Moon.
`
`·5· · · ·Q.· ·And, Professor Moon, have you been
`
`·6· ·previously deposed?
`
`·7· · · ·A.· ·No.
`
`·8· · · ·Q.· ·Okay.· So this is your first deposition, let
`
`·9· ·me give you a bit of introduction into what's going to
`
`10· ·happen today.· I'm going to be asking you a series of
`
`11· ·questions to which you're required to provide answers.
`
`12· ·Do you understand that?
`
`13· · · ·A.· ·Yes.· Yes.
`
`14· · · ·Q.· ·And given that we are doing this deposition
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`15· ·virtually today, it's very important that you try to
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`16· ·make your answers as loud and as clear as possible so
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`17· ·that the court reporter, who is very far away from
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`18· ·you, can hear and record your answers.· Can you do
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`19· ·that?
`
`20· · · ·A.· ·I'll do that.· Let me close the door for
`
`21· ·that.
`
`22· · · · · · Yes.
`
`23· · · ·Q.· ·And as you heard earlier, we are not
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`24· ·videotaping this deposition.· As such, we need to be
`
`25· ·very careful that we -- that in your answers, you're
`
`LSI Corp. Exhibit 1034
`Page 5
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`
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`·1· ·responding verbally.· That you don't answer with nods
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`·2· ·of the head or gestures or anything else because those
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`·3· ·will not be captured in the transcript.· Does that
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`·4· ·make sense?
`
`·5· · · ·A.· ·Makes sense.
`
`·6· · · ·Q.· ·Please give your answers to my questions
`
`·7· ·verbal, make them clear and we'll get through this as
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`·8· ·quickly as possible for you.
`
`·9· · · ·A.· ·I'll try.
`
`10· · · ·Q.· ·Now, at any point today, if you do not
`
`11· ·understand one of my questions, I would ask that you
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`12· ·ask me for clarification.· Can you do that?
`
`13· · · ·A.· ·I'll do that.
`
`14· · · ·Q.· ·Is there any reason, Professor Moon, that
`
`15· ·you cannot testify truthfully and accurately today?
`
`16· · · ·A.· ·No reason.
`
`17· · · ·Q.· ·Let's begin by looking at a document that
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`18· ·has been marked as Exhibit 2016 in this investigation
`
`19· ·or in this proceeding.· And, Professor Moon, if you
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`20· ·have your own local copies of any of these documents,
`
`21· ·feel free to reference those during the deposition. I
`
`22· ·will endeavor to bring them up on the screen as we
`
`23· ·discuss them as well, but, again, if you have a local
`
`24· ·electronic copy or hard copy, feel free to reference
`
`25· ·it.
`
`LSI Corp. Exhibit 1034
`Page 6
`
`
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`·1· · · ·A.· ·Yeah.· I'm trying to open them.
`
`·2· · · ·Q.· ·Again, we're not on video so it doesn't
`
`·3· ·matter if you're looking at me or the camera or
`
`·4· ·exactly where you're looking.
`
`·5· · · ·A.· ·Okay.· All right.· Yeah.· I got it.· 2016.
`
`·6· · · ·Q.· ·Professor Moon, do you recognize this
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`·7· ·document?
`
`·8· · · ·A.· ·I do.
`
`·9· · · ·Q.· ·And what is this document, sir?
`
`10· · · ·A.· ·It's my declaration for IPR.
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`11· · · ·Q.· ·And if you would look at the second page of
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`12· ·what's been marked as Exhibit 2016, is that your
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`13· ·signature on that page?
`
`14· · · ·A.· ·Correct.
`
`15· · · ·Q.· ·Professor Moon, why did you submit a
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`16· ·declaration in this particular proceeding?
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`17· · · ·A.· ·I am an inventor of this patent technology,
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`18· ·and I was asked by -- about the background of the
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`19· ·invention of this technology.· So I put together what
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`20· ·happened.
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`21· · · ·Q.· ·And when were you first contacted with
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`22· ·respect to this IPR proceeding or the underlying
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`23· ·litigation?
`
`24· · · · · · MR. McELHINNY:· Object to form.
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`25· · · · · · THE WITNESS:· When did you say?
`
`LSI Corp. Exhibit 1034
`Page 7
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`·1· · · ·Q.· ·(By Mr. Reed)· When, yes.
`
`·2· · · ·A.· ·Yeah, it's years back.· As you recall, this
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`·3· ·took really long time.· So probably, I don't know,
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`·4· ·five, six years.· Five years.· I don't know.· Roughly
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`·5· ·a few years back.
`
`·6· · · ·Q.· ·And who first contacted you to assist in
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`·7· ·this?· I assume it would have been in litigation at
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`·8· ·that time; is that correct?
`
`·9· · · ·A.· ·I think so.· I -- you know, I don't remember
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`10· ·who first, but I usually talked to the university
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`11· ·contact person.· So it must be him.
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`12· · · ·Q.· ·And who was that person, Professor Moon?
`
`13· · · ·A.· ·I think it was -- it was him -- if that's
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`14· ·true, it's Eric, Eric Olson.
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`15· · · ·Q.· ·And he's your contact person at the
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`16· ·University of Minnesota; is that correct?
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`17· · · ·A.· ·Yeah, I talked to him occasionally.· But if
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`18· ·it's important who contact me first, I don't remember
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`19· ·exactly.
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`20· · · ·Q.· ·Professor Moon, with respect to
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`21· ·Exhibit 2016, approximately how much time did you
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`22· ·spend preparing that declaration?
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`23· · · ·A.· ·A few hours, I think.
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`24· · · ·Q.· ·You said a few hours.· On the order of five
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`25· ·to ten?
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`LSI Corp. Exhibit 1034
`Page 8
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`·1· · · ·A.· ·Yeah, probably.
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`·2· · · ·Q.· ·And with whom did you work on that
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`·3· ·declaration, if anyone?
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`·4· · · ·A.· ·Pardon me?
`
`·5· · · ·Q.· ·Did you work with anyone on that
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`·6· ·declaration?
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`·7· · · ·A.· ·Yeah, I gave contents -- the lawyers -- our
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`·8· ·attorneys helped put together documents form -- in
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`·9· ·document form.
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`10· · · ·Q.· ·Other than attorneys, did you work with
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`11· ·anyone else in preparing your declaration?
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`12· · · ·A.· ·No.
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`13· · · ·Q.· ·Did you have any conversations, for
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`14· ·instance, with your co-inventors on the '604 patent,
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`15· ·Mr. Brickner -- or Dr. Brickner.
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`16· · · ·A.· ·No.· No.
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`17· · · ·Q.· ·Have you ever drafted a declaration for a
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`18· ·legal proceeding previously?
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`19· · · ·A.· ·No, I have not.
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`20· · · ·Q.· ·Professor Moon, I'm going to bring up what's
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`21· ·been marked previously as Exhibit 1001.· Won't you
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`22· ·take a minute to find that.
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`23· · · ·A.· ·1001.· Oh, okay.· Yeah.· Sure.· Sure.· Yes.
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`24· · · ·Q.· ·Professor Moon, do you recognize the
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`25· ·document that's been marked as Exhibit 1001?
`
`LSI Corp. Exhibit 1034
`Page 9
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`·1· · · ·A.· ·Okay.· Yeah, I do.
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`·2· · · ·Q.· ·And what is this document, sir?
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`·3· · · ·A.· ·This is the MTR patent, so-called '601
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`·4· ·patent.
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`·5· · · ·Q.· ·And you are the same Jaekyun Moon who is
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`·6· ·mentioned as an inventor on the '601 patent; correct?
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`·7· · · ·A.· ·Correct.
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`·8· · · ·Q.· ·And during the course of our deposition
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`·9· ·today, if I refer to the '601 patent, can we have an
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`10· ·understanding that I'm referring to Exhibit 1001?
`
`11· · · ·A.· ·Yes.
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`12· · · ·Q.· ·Let's turn back to Exhibit 2016, if we can.
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`13· ·And if you could turn to Paragraph 76, please.
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`14· · · ·A.· ·Yes.· I'm looking at it.
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`15· · · ·Q.· ·In Paragraph 76, you state, "I am not being
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`16· ·compensated for making this declaration, although I
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`17· ·have an economic interest in any amounts recovered
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`18· ·through assertion of the '601 patent."
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`19· · · · · · Do you see that?
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`20· · · ·A.· ·Yes.· I see that.
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`21· · · ·Q.· ·Professor Moon, what specifically is your
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`22· ·economic interest in any amounts recovered through
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`23· ·assertion of the '601 patent?
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`24· · · ·A.· ·As an inventor of any university patent,
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`25· ·there is a specific rule that allocates certain shares
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`LSI Corp. Exhibit 1034
`Page 10
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`·1· ·to all of the inventors involved.· I think that's what
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`·2· ·it means here.· Economic interest.
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`·3· · · ·Q.· ·And what is your share as it pertains to any
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`·4· ·recovery for assertion of the '601 patent?
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`·5· · · ·A.· ·Something very small.· I don't know.· They
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`·6· ·divide it -- they have, like, 20, 30 percent
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`·7· ·inventors, and then there are two of us that's half of
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`·8· ·that.· So this is important, I can look it up.
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`·9· · · ·Q.· ·As you sit here today, your best estimate is
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`10· ·10 to 15 percent of any recovery on the '601 patent;
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`11· ·is that correct?
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`12· · · ·A.· ·It's -- let's see.· Yeah, something in that
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`13· ·range, I believe.
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`14· · · ·Q.· ·And to date, have you received any
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`15· ·compensation based on this share due to assertion of
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`16· ·the '601 patent?
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`17· · · ·A.· ·Let me see.· You know, I don't recall,
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`18· ·although it's possible there could be -- there was
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`19· ·a -- some small license fee generated sometime back.
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`20· ·It's possible that we might have received a share of
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`21· ·it, but it's -- I don't remember exactly.· The
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`22· ·university should have a record.
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`23· · · ·Q.· ·(Inaudible.)
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`24· · · ·A.· ·Your voice is not getting through. A
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`25· ·connection issue.· Can you hear me?
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`LSI Corp. Exhibit 1034
`Page 11
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`·1· · · ·Q.· ·(Inaudible.)
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`·2· · · ·A.· ·You sound like -- you don't sound human.
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`·3· · · · · · MR. McELHINNY:· Your voice is being
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`·4· · · · modulated.
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`·5· · · · · · THE WITNESS:· You sound like a robot.
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`·6· · · · I can understand everyone else but you,
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`·7· · · · Mr. Reed.
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`·8· · · · · · MR. McELHINNY:· Is the tech on and can
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`·9· · · · help us out?
`
`10· · · · · · (A recess was taken.)
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`11· · · ·Q.· ·(By Mr. Reed)· Professor Moon, I was asking
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`12· ·before the interruption about whether you have any
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`13· ·documents that would confirm to you what exactly your
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`14· ·share is with respect to any recovery if an assertion
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`15· ·of the '601 patent.
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`16· · · ·A.· ·Yeah, I remember seeing it.· It's a matter
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`17· ·of going through the file and finding it.· If it's
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`18· ·important, I can -- is it important?· I can look it
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`19· ·up.
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`20· · · ·Q.· ·I can get it from counsel after the fact.
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`21· ·Let's move forward.
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`22· · · ·A.· ·Yeah.· I mean, it's a fixed -- fixed rule
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`23· ·they have, the university has.
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`24· · · ·Q.· ·And when you said the university, you're
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`25· ·referring to the University of Minnesota?
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`LSI Corp. Exhibit 1034
`Page 12
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`·1· · · ·A.· ·Yeah.
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`·2· · · ·Q.· ·And that's a standard percentage for any
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`·3· ·inventor who assigns a patent to the university; is
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`·4· ·that correct?
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`·5· · · ·A.· ·That's what I believe.· It's a general
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`·6· ·university rule.
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`·7· · · ·Q.· ·And so in addition to you, then, Dr.
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`·8· ·Brickner also would be in line for some share of any
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`·9· ·recovery on the '601 patent; correct?
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`10· · · ·A.· ·Yeah.· I think he gets equal share, same as
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`11· ·mine.· His share is same as mine, I believe.· That, I
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`12· ·remember.
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`13· · · ·Q.· ·During your time at the University of
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`14· ·Minnesota, did this create an incentive to have fewer
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`15· ·people listed as inventors on a given patent?
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`16· · · ·A.· ·That usually doesn't come into my mind.
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`17· ·Anybody who is involved gets on the list.· Back then,
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`18· ·it's just Brickner and myself who worked on it.
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`19· · · ·Q.· ·Have you received compensation from the
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`20· ·University of Minnesota based on their assertion of
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`21· ·other of your patents in the past?
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`22· · · ·A.· ·No, I don't remember getting any money from
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`23· ·the university other than my salary.· No.
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`24· · · ·Q.· ·Aside from your share of any recovery, do
`
`25· ·you have any obligations with respect to the
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`LSI Corp. Exhibit 1034
`Page 13
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`·1· ·university to participate in any assertion of your
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`·2· ·patent?
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`·3· · · ·A.· ·No obligation, I don't think so.
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`·4· · · ·Q.· ·So you're not compelled by contract or
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`·5· ·otherwise to participate in this IPR proceeding; is
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`·6· ·that correct?
`
`·7· · · ·A.· ·No.· Nobody is forcing me.
`
`·8· · · ·Q.· ·Back when you applied for the -- originally
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`·9· ·applied for the '601 patent, did you receive any
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`10· ·compensation from the university or anyone else for
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`11· ·your invention disclosure that led to the '601 patent?
`
`12· · · ·A.· ·No compensation.
`
`13· · · ·Q.· ·For instance, a number of companies have a
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`14· ·program where if you submit an invention disclosure
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`15· ·for potential patenting, you get a particular sum for
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`16· ·doing so.· Is there any such program at the University
`
`17· ·of Minnesota?
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`18· · · ·A.· ·No.· The university doesn't have it
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`19· ·unfortunately.
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`20· · · ·Q.· ·What about when the patent was filed?· Did
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`21· ·you receive any compensation from the university?
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`22· · · ·A.· ·No, none whatsoever.
`
`23· · · ·Q.· ·And when the patent -- I'm sorry, I didn't
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`24· ·mean to interrupt.
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`25· · · · · · Today, given the delay in my questions and
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`LSI Corp. Exhibit 1034
`Page 14
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`·1· ·your responses, we're going to have to work hard not
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`·2· ·to talk over each other.· So I apologize.· I will give
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`·3· ·you as much time as I can to respond, and please allow
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`·4· ·me to finish my question before you respond as well.
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`·5· ·Thank you.
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`·6· · · · · · And finishing that line of thought with
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`·7· ·respect to issued patents, when a patent issued that
`
`·8· ·is assigned to the university, did you receive any
`
`·9· ·compensation -- any compensation by virtue of the fact
`
`10· ·that the patent issued?
`
`11· · · ·A.· ·No.
`
`12· · · ·Q.· ·So your only compensation or potential
`
`13· ·compensation with respect to the '601 patent is your
`
`14· ·estimated 10 to 15 percent share of any recovery of
`
`15· ·any assertion; correct?
`
`16· · · ·A.· ·Monetarywise, yes.· Correct.
`
`17· · · ·Q.· ·Why did you caveat your answer to
`
`18· ·monetarywise?· Is there some other benefit you're
`
`19· ·receiving?
`
`20· · · ·A.· ·Well, the recognition, my technology is
`
`21· ·being used in the industry.
`
`22· · · ·Q.· ·I see.· So the satisfaction of seeing your
`
`23· ·invention being afoot in the industry is its own
`
`24· ·reward; is that what you're saying?
`
`25· · · ·A.· ·Yes, and getting the recognition.
`
`LSI Corp. Exhibit 1034
`Page 15
`
`
`
`·1· · · ·Q.· ·And so other than that recognition and other
`
`·2· ·than any potential reward, based on your share of any
`
`·3· ·recovery from an assertion, do you receive any other
`
`·4· ·benefit from the '601 patent?
`
`·5· · · ·A.· ·No, nothing else.
`
`·6· · · ·Q.· ·And other than your potential share of any
`
`·7· ·recovery, are you receiving any compensation for
`
`·8· ·appearing for your deposition here today?
`
`·9· · · ·A.· ·No, no.· No.
`
`10· · · ·Q.· ·And did you receive any compensation --
`
`11· ·sorry.· Please go ahead.
`
`12· · · ·A.· ·I'm not charging any of my time for this
`
`13· ·procedure.
`
`14· · · ·Q.· ·And did you charge any for your time or
`
`15· ·receive any compensation for preparing your
`
`16· ·declaration in this IPR proceeding?
`
`17· · · ·A.· ·No.· Nobody asked and I didn't ask either.
`
`18· · · ·Q.· ·Professor Moon, if you can look back at
`
`19· ·Exhibit 1001, the '601 patent, please.
`
`20· · · ·A.· ·Yeah.
`
`21· · · ·Q.· ·Professor Moon, what exactly, in your view,
`
`22· ·is the invention of the '601 patent?
`
`23· · · · · · MR. McELHINNY:· Object to form.
`
`24· · · · · · THE WITNESS:· That's -- I mean, that's
`
`25· · · · really broad question.· If you can be a
`
`LSI Corp. Exhibit 1034
`Page 16
`
`
`
`·1· · · · little bit more specific, that would be
`
`·2· · · · nice.
`
`·3· · · ·Q.· ·(By Mr. Reed)· Well, the question wasn't
`
`·4· ·intended to be broad.· I'm asking you, in your view,
`
`·5· ·what did you invent?
`
`·6· · · ·A.· ·It's a maximum transition run code, as the
`
`·7· ·name implies.· This is to be used in magnetic coding
`
`·8· ·to limit particular patterns of writing to prevent
`
`·9· ·from particular patterns to be written so that you can
`
`10· ·get some gains out of it.
`
`11· · · ·Q.· ·Professor Moon, you filed the application
`
`12· ·that ultimately issued as the '601 patent on
`
`13· ·October 15th, 1996; correct?
`
`14· · · ·A.· ·Yes.
`
`15· · · ·Q.· ·And before that, you filed a provisional
`
`16· ·application to which the '601 patent claims priority
`
`17· ·on April 5th, 1996; correct?
`
`18· · · · · · I'm sorry, I couldn't hear your answer.
`
`19· ·Could you say it again.
`
`20· · · ·A.· ·Did you get it?· Yes.
`
`21· · · ·Q.· ·Yes.· Thank you.
`
`22· · · · · · If we can turn back to Exhibit 2016, your
`
`23· ·declaration, and in particular Paragraph 44.· In
`
`24· ·Paragraph 44, you state, "Under these grants, Brickner
`
`25· ·and I sought to develop coding schemes to improve
`
`LSI Corp. Exhibit 1034
`Page 17
`
`
`
`·1· ·sequence detection performance for HDDs.· In the
`
`·2· ·course of our research and by the spring of 1995, we
`
`·3· ·developed, invented, conceived, and reduced to
`
`·4· ·practice the MTR codes claimed in the '601 patent."
`
`·5· · · · · · Do you see that, Dr. Moon?
`
`·6· · · ·A.· ·I see that.
`
`·7· · · ·Q.· ·What exactly was your personal contribution,
`
`·8· ·if any, to the inventions of the '601 patent?
`
`·9· · · · · · MR. McELHINNY:· Object to form.
`
`10· · · · · · THE WITNESS:· Well, I developed and
`
`11· · · · invented the coding scheme that improves
`
`12· · · · detection performance of HDDs, and I -- and
`
`13· · · · along the way, I named the name.· I named
`
`14· · · · the MTR code.
`
`15· · · ·Q.· ·(By Mr. Reed)· If that was your
`
`16· ·contribution, then what exactly was Dr. Brickner's
`
`17· ·contribution to the inventions in the '601 patent?
`
`18· · · ·A.· ·Yeah, he did simulation.· He and I talked.
`
`19· ·Usually, when two people invent something, there's
`
`20· ·exchange of, you know, thoughts and discussions and
`
`21· ·sometimes very hard to separate who did what.· But
`
`22· ·generally speaking, he did a lot of simulation, and,
`
`23· ·you know, I gave an idea and he confirmed it .· That
`
`24· ·sort of exchange is usual and which is also what
`
`25· ·happened here.
`
`LSI Corp. Exhibit 1034
`Page 18
`
`
`
`·1· · · ·Q.· ·Did you personally first conceive of the
`
`·2· ·idea of MTR?
`
`·3· · · ·A.· ·Yes, I think so.
`
`·4· · · ·Q.· ·Not Dr. Brickner?
`
`·5· · · ·A.· ·Well, again, as I said, he co-developed it
`
`·6· ·by simulating performance and -- simulating
`
`·7· ·performance and confirming some of my ideas.
`
`·8· · · ·Q.· ·So you had the ideas and then he confirmed
`
`·9· ·your ideas using simulation; is that accurate?
`
`10· · · · · · MR. McELHINNY:· Object to form, asked
`
`11· · · · and answered.
`
`12· · · · · · THE WITNESS:· I think I answered your
`
`13· · · · question.· It was a co-development and
`
`14· · · · sometimes very hard to separate roles, but
`
`15· · · · generally, yeah, he and I developed ideas
`
`16· · · · together.· But usually I would give idea to
`
`17· · · · him and he would run the simulation and
`
`18· · · · we'd talk and go back, that sort of
`
`19· · · · exchange.· So that's why we are
`
`20· · · · co-inventors.
`
`21· · · ·Q.· ·(By Mr. Reed)· Looking back at Paragraph 44
`
`22· ·of Exhibit 2016 --
`
`23· · · ·A.· ·Yeah.
`
`24· · · ·Q.· ·-- you state, "By the spring of 1995, we
`
`25· ·developed, invented, conceived, and reduced to
`
`LSI Corp. Exhibit 1034
`Page 19
`
`
`
`·1· ·practice the MTR codes claimed in the '601 patent."
`
`·2· ·Do you see that?
`
`·3· · · ·A.· ·Yes, I see that.
`
`·4· · · ·Q.· ·When exactly did you and Dr. Brickner first
`
`·5· ·conceive of the inventions of the '601 patent?
`
`·6· · · ·A.· ·I think it's sometime April or May of 1995.
`
`·7· · · ·Q.· ·And in what way did you conceive of the
`
`·8· ·inventions of the '601 patent in April or May of 1995?
`
`·9· · · ·A.· ·What was the question again, please?
`
`10· · · ·Q.· ·You said you conceived of the invention in
`
`11· ·April or May of 1995, and I'm asking you what do you
`
`12· ·mean by you conceived of the invention at that time?
`
`13· · · ·A.· ·Well, specific way of making the code.· In
`
`14· ·other words, specific way of mapping input to output
`
`15· ·such that you eliminate, you are able to eliminate
`
`16· ·certain patterns in the recording waveform.
`
`17· · · ·Q.· ·So take me back to April or May of 1995.
`
`18· ·What were you working on and what was Dr. Brickner
`
`19· ·working on that you arrived at the proceeding of this
`
`20· ·invention?
`
`21· · · ·A.· ·What was the question again?
`
`22· · · ·Q.· ·So I want you to take me back to spring of
`
`23· ·1995 when you conceived of this invention.· What were
`
`24· ·you working on that led to the conception of this
`
`25· ·invention?
`
`LSI Corp. Exhibit 1034
`Page 20
`
`
`
`·1· · · ·A.· ·Yeah, I was working with Seagate engineers
`
`·2· ·and also we would go to sourcing locationally.· And,
`
`·3· ·you know, I was working on various research projects
`
`·4· ·actually.· Mostly most of them involving data storage.
`
`·5· ·Most of them hard disc drivers.
`
`·6· · · · · · And coding is one -- one of the various
`
`·7· ·projects that I was working on.· And when I look back,
`
`·8· ·he -- at that time we were struggling to -- we knew
`
`·9· ·that limiting -- eliminating these consecutive
`
`10· ·transitions is a good thing to do, but the question
`
`11· ·was how.· How to do it.· And back then, it was -- it
`
`12· ·was a often problem and nobody knew how to do it.
`
`13· · · · · · We were the ones who probably the first ones
`
`14· ·who knew that eliminating these sequences will be good
`
`15· ·thing to do, but it's possible that other people also
`
`16· ·realized that doing so would be good.· But, again, you
`
`17· ·know, the hardest thing to do is can you actually do
`
`18· ·it with a high enough rate, high enough rate for the
`
`19· ·code, meaning that you overhead for coding is not
`
`20· ·much.
`
`21· · · · · · So that was a tough problem to look at.· And
`
`22· ·if I look back, though -- look back at the records,
`
`23· ·you know, we submitted the record -- you probably have
`
`24· ·it -- to Seagate in April.· Now, April records, we
`
`25· ·specifically, you know, asked this question, how to
`
`LSI Corp. Exhibit 1034
`Page 21
`
`
`
`·1· ·eliminate these -- these sequences through a coding.
`
`·2· ·That's the question.· I'm rephrasing it, but there
`
`·3· ·was -- there was that specific question in the record.
`
`·4· · · · · · So that -- that record was dated early
`
`·5· ·April.· So from that time on, until in May where we --
`
`·6· ·the record shows that we have -- we have a written,
`
`·7· ·you know, coding scheme, specific coding scheme
`
`·8· ·implemented and simulation was run -- ran, simulation
`
`·9· ·was run to get promising results.· So that's why I'm
`
`10· ·saying it's got to be April and May, between April and
`
`11· ·May.· Sometime in April and May when we devised the
`
`12· ·specific method code, MTR code.
`
`13· · · ·Q.· ·Now, you mentioned that the problem was
`
`14· ·eliminating consecutive transitions.· Had others
`
`15· ·devised ways of addressing this problem prior to MTR?
`
`16· · · ·A.· ·Not that I know.· Well, I mean, I know that
`
`17· ·for sure because when we came up with this idea,
`
`18· ·people were confused in the beginning.· But very
`
`19· ·soon -- very soon this work got -- I mean, this work
`
`20· ·became very, very well-known.· So, I mean, everyone in
`
`21· ·the industry knows about this MTR code, and anyone
`
`22· ·who -- who are serious processing code -- coding
`
`23· ·engineers at the time should know this invention, MTR
`
`24· ·code.· It's very widely known at that time.· Quickly,
`
`25· ·you know, became a well-known idea.
`
`LSI Corp. Exhibit 1034
`Page 22
`
`
`
`·1· · · ·Q.· ·For example, RLL codes, did those work to
`
`·2· ·eliminate consecutive transitions?
`
`·3· · · ·A.· ·RLL code was devised for different reasons,
`
`·4· ·different purposes.· RLL code was developed, like,
`
`·5· ·probably 10, 20 years earlier.· It's been around.· The
`
`·6· ·purpose of RLL code was to separate physical distance
`
`·7· ·between transitions so that you have well-separated
`
`·8· ·transitions.
`
`·9· · · · · · Now, MTR code is not.· The goal is not to
`
`10· ·separate transitions -- transitions, but sometimes you
`
`11· ·allow transitions, but you don't allow too many
`
`12· ·transitions happening at the same time.· So that's, I
`
`13· ·believe, from the MTR.
`
`14· · · ·Q.· ·So employing RLL would avoid the problem of
`
`15· ·too many detected transitions; correct?
`
`16· · · ·A.· ·Yeah, it does that, but it also creates
`
`17· ·other problems.· Its rate of the code is fundamentally
`
`18· ·very, very low.· So it became not useful for
`
`19· ·high-density recording like magnetic distance.
`
`20· · · ·Q.· ·Now, turning back to Paragraph 44 of your
`
`21· ·declaration, Exhibit 2016, you also say that by the
`
`22· ·spring of 1995 , you had reduced to practice the MTR
`
`23· ·codes claimed in the '601 patent.
`
`24· · · · · · Do you see that?
`
`25· · · ·A.· ·Yes, I see that.
`
`LSI Corp. Exhibit 1034
`Page 23
`
`
`
`·1· · · ·Q.· ·And what do you mean in that paragraph?
`
`·2· ·What reduction to practice had you performed by the
`
`·3· ·spring of 1995?
`
`·4· · · ·A.· ·By reduction to practice, I mean computer
`
`·5· ·simulation based on synthesized waveforms and
`
`·6· ·synthesized noise samples added to it, to them, and
`
`·7· ·you basically run computer-simulated -- you basically
`
`·8· ·run your algorithm using computer and actually count
`
`·9· ·the errors, random sequence -- random inputs, data
`
`10· ·patterns gets injected into the model and random noise
`
`11· ·samples get added to it and you actually count the
`
`12· ·errors to see the performance of your code.· And
`
`13· ·that's what we did.· And in this industry, that's even
`
`14· ·in industry, not just academia, even in this industry,
`
`15· ·that's a very common practice.
`
`16· · · · · · You probably have -- I don't know if you --
`
`17· ·you're probably familiar with the storage industry.
`
`18· ·If you are, then you would know what black box
`
`19· ·synthesized waveform is.· So that's what companies do
`
`20· ·too.
`
`21· · · ·Q.· ·As of the spring of 1995, had you
`
`22· ·implemented your invention of MTR codes in an actual
`
`23· ·physical device?
`
`24· · · ·A.· ·We implemented in computer systems.· So it's
`
`25· ·a software implementation, but we still call it
`
`LSI Corp. Exhibit 1034
`Page 24
`
`
`
`·1· ·implementation because it's exactly like what we would
`
`·2· ·do in discretized digital chip.· Remember computer is
`
`·3· ·a discrete system.· It's a digital system.· So it
`
`·4· ·deals with the logics same as VLSI architecture.· It's
`
`·5· ·just that VLSI is a designated, dedicated hardware.
`
`·6· ·Computer is a more general hardware, but it's a
`
`·7· ·hardware.· You run software in a generalized hardware
`
`·8· ·setup.· That's what computer simulation is.
`
`·9· · · ·Q.· ·I appreciate what computer simulations are,
`
`10· ·Dr. Moon.· And I want to get you out of this
`
`11· ·deposition as quickly as possible.· So I'm going to
`
`12· ·ask you to just answer the questions I ask without
`
`13· ·further elaboration, if you would, please.
`
`14· · · · · · So with respect to -- my question was:· As
`
`15· ·of that point, spring of 1995, had you implemented it
`
`16· ·in an actual physical device beyond computer
`
`17· ·simulations?
`
`18· · · · · · MR. McELHINNY:· Object to form, asked
`
`19· · · · and answered.
`
`20· · · · · · THE WITNESS:· Well, my answer to you
`
`21· · · · is we implemented in computer systems but
`
`22· · · · not in VLSI digital hardware.
`
`23· · · ·Q.· ·(By Mr. Reed)· Let me fast-forward to
`
`24· ·January 31st of 1996.· By January 31st of 1996, would
`
`25· ·your answer be the same in terms of had you
`
`LSI Corp. Exhibit 1034
`Page 25
`
`
`
`·1· ·implemented it in hardware beyond computer
`
`·2· ·simulations?
`
`·3· · · · · · MR. McELHINNY:· Object to form.
`
`·4· · · · · · THE WITNESS:· Yeah, we -- we ran
`
`·5· · · · different computer simulations, different
`
`·6· · · · setups, more simulations.· Yeah.· But it's
`
`·7· · · · computer-based implementation.
`
`·8· · · ·Q.· ·(By Mr. Reed)· Not in any VLSI hardware;
`
`·9· ·correct?
`
`10· · · ·A.· ·Not VLSI hardware.
`
`11· · · ·Q.· ·And when you refer to "we implemented it in
`
`12· ·computer systems," you're referring to computer
`
`13· ·simulations; correct?
`
`14· · · ·A.· ·Computer simulations, correct.
`
`15· · · ·Q.· ·Let's pull up Exhibit 2035.· As cited in
`
`16· ·your declaration?
`
`17· · · ·A.· ·That's my invention disclosure.
`
`18· · · ·Q.· ·That's the one.· Professor Moon, at the top
`
`19· ·of the first page -- actually, let me stop.
`
`20· · · · · · Do you have that in front of you, sir?
`
`21· · · ·A.· ·Yes.
`
`22· · · ·Q.· ·And I have it up on the screen also if you
`
`23· ·care to look at it that way as well.
`
`24· · · ·A.· ·Okay.
`
`25· · · ·Q.· ·On the top of the first page of
`
`LSI Corp. Exhibit 1034
`Page 26
`
`
`
`·1· ·Exhibit 2035, the number 96025 is written.· Do you see
`
`·2· ·that?
`
`·3· · · ·A.· ·96025.· Where is that?· Yes, I see that.
`
`·4· · · ·Q.· ·Does that number represent the invention
`
`·5· ·disclosure number that was assigned to your
`
`·6· ·disclosure?
`
`·7· · · ·A.· ·I don't know what it is.· In fact, I -- I
`
`·8· ·never recognized that number before.
`
`·9· · · ·Q.· ·We'll see that number a few times today.· So
`
`10· ·keep it in mind for me, if you would.
`
`11· · · ·A.· ·Okay.
`
`12· · · ·Q.· ·If you can describe for me, please,
`
`13· ·Professor Moon, the process of submitting invention
`
`14· ·disclosures at the University of Minnesota during the
`
`15· ·time period of Exhibit 2035.
`
`16· · · ·A.· ·The process?
`
`17· · · ·Q.· ·Yes.
`
`18· · · ·A.· ·Well, you write up key information about
`
`19· ·your invention and file it to the university.· I don't
`
`20· ·know.· Is that the answer you're looking for?
`
`21· · · ·Q.· ·You say you write up key information about
`
`22· ·your invention.· Were you given a template or given a
`
`23· ·form to fill out?
`
`24· · · ·A.· ·What you see here, that's the form.· It's
`
`25· ·like a -- it's a letterhead.· And other than that, I
`
`LSI Corp. Exhibit 1034
`Page 27
`
`
`
`·1· ·think it's just a -- you can just write any text you
`
`·2· ·want.
`
`·3· · · ·Q.· ·And did you personally serve as the author
`
`·4· ·of the disclosure marked as Exhibit 2035?
`
`·5· · · ·A.· ·I believe so.
`
`·6· · · ·Q.· ·And as part of your employment at the
`
`·7· ·University of Minnesota, were you required to assign
`
`·8· ·any inventions to the university?
`
`·9· · · ·A.· ·Required to what?· Assign?
`
`10· · · ·Q.· ·Assign any inventions or patents issued from
`
`11· ·inventions to the university?
`
`12· · · ·A.· ·As university, you mean -- you mean assign
`
`13· ·it to -- yo
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