UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`IRN DIGITAL
`
`'ORATION,
`
`Petitioner,
`
`4 TECHNOLOGIES,
`
`INC.,
`
`Patent Owner.
`
`
`
`VVVVVVVVV
`
`CERHFED
`ORIGINAL
`
`:2
`
`U.S. Patent No. 6,088 802
`
`Case IPR2018-00084
`
`U.S. Patent No. 6,003 135
`
`
`
`DEPOSITION OF MARTIN E. KALISKI, PhD
`
`San Luis Obispo, California
`
`Wednesday, July 18, 2018
`
`8:11 a.m. - 12:05 p.m.
`
`-
`_-
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`
`_
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`
`Jeri Cain, CSFEQEle NO . 2 1 '72 450m Reporters - Conference rooms - Videoconferencing
`Ameessmm
`Videotape - Depositions ~ Hearings . Realtime
`‘
`-
`e'.I.t(:c’
`Electronictranscripts - Online scheduling - Online repository
`& Vvfieponlng
`3220 South Higuera Street, Suite 323. San Luis Obispo, CA 93401
`.
`801 South Broadway, Suite 3, Santa Maria, CA 93454
`_
`_
`San Lurs Obrspo - Santa Maria - Santa Barbara
`805-541-0333 . 300.549-3375 . 305.923.7554
`
`p0 Box 1039 . San Luis Ubispo, cAg3405-1039 FAX 805-541-2136 ~ E—mail: info@MeritReporting.com
`
`Western Digital v. SPEX Techr
`Patent Owner’s Exhibit 2002
`
` IPR2018-00082Western Digital v. SPEX Technologies Patent Owner’s Exhibit 2008, Page 1
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`IRN DIGITAL
`
`'ORATION,
`
`Petitioner,
`
`4 TECHNOLOGIES,
`
`INC.,
`
`Patent Owner.
`
`
`
`VVVVVVVVV
`
`CERHFED
`ORIGINAL
`
`:2
`
`U.S. Patent No. 6,088 802
`
`Case IPR2018-00084
`
`U.S. Patent No. 6,003 135
`
`
`
`DEPOSITION OF MARTIN E. KALISKI, PhD
`
`San Luis Obispo, California
`
`Wednesday, July 18, 2018
`
`8:11 a.m. - 12:05 p.m.
`
`-
`_-
`- vv
`
`_
`-'
`
`-
`
`.-
`
`A-
`U
`
`_
`
`-
`
`I
`
`In.
`v
`
`I
`
`D
`
`0
`
`.--
`vv
`
`M
`
`Jeri Cain, CSFEQEle NO . 2 1 '72 450m Reporters - Conference rooms - Videoconferencing
`Ameessmm
`Videotape - Depositions ~ Hearings . Realtime
`‘
`-
`e'.I.t(:c’
`Electronictranscripts - Online scheduling - Online repository
`& Vvfieponlng
`3220 South Higuera Street, Suite 323. San Luis Obispo, CA 93401
`.
`801 South Broadway, Suite 3, Santa Maria, CA 93454
`_
`_
`San Lurs Obrspo - Santa Maria - Santa Barbara
`805-541-0333 . 300.549-3375 . 305.923.7554
`
`p0 Box 1039 . San Luis Ubispo, cAg3405-1039 FAX 805-541-2136 ~ E—mail: info@MeritReporting.com
`
`Western Digital v. SPEX Techr
`Patent Owner’s Exhibit 2002
`
` IPR2018-00082Western Digital v. SPEX Technologies Patent Owner’s Exhibit 2008, Page 1
`
`
`·1· · · · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
`
`·2· · · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`·3
`
`·4· ·WESTERN DIGITAL· · · · · · ·)
`
`·5· ·CORPORATION,· · · · · · · · )
`
`·6· · · · · · · ·Petitioner,· · ·)
`
`·7· ·vs.· · · · · · · · · · · · ·)· Case IPR2018-00082
`
`·8· ·SPEX TECHNOLOGIES, INC.,· · )· U.S. Patent No. 6,088,802
`
`·9· · · · · · · ·Patent Owner.· ·)· Case IPR2018-00084
`
`10· · · · · · · · · · · · · · · ·)· U.S. Patent No. 6,003,135
`
`11· · · · · · · · · · · · · · · ·)
`
`12· ·____________________________)
`
`13
`
`14
`
`15
`
`16· · · · · · · ·DEPOSITION OF MARTIN E. KALISKI, PhD
`
`17· · · · · · · · · · San Luis Obispo, California
`
`18· · · · · · · · · · · Wednesday, July 18, 2018
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`19· · · · · · · · · · · ·8:11 a.m. - 12:05 p.m.
`
`20
`
`21
`
`22
`
`23
`
`24· · ·Reported by:· Lora L. Shoffstall, RPR, CSR 9271
`
`25· · · · · · · · · ·File No. 217245
`
`Exhibit Page 2
`
`
`
`·1· · · · · · THE DEPOSITION OF MARTIN E. KALISKI, PhD
`
`·2· ·was taken at Merit Court Reporting & Video, 3220 South
`
`·3· ·Higuera Street, Suite 323, San Luis Obispo, California,
`
`·4· ·before Lora L. Shoffstall, CSR No. 9271 and Registered
`
`·5· ·Professional Reporter, on Wednesday, July 18, 2018,
`
`·6· ·commencing at 8:11 a.m.
`
`·7
`
`·8· ·APPEARANCES OF COUNSEL:
`
`·9· ·For Petitioner Western Digital Corporation:
`
`10· · · · · · GIBSON, DUNN & CRUTCHER, LLP
`
`11· · · · · · BY:· BRIAN M. BUROKER, ESQ.
`
`12· · · · · · 1050 Connecticut Avenue, N.W.
`
`13· · · · · · Washington, DC 20036-5306
`
`14· · · · · · (202) 955-8541
`
`15· · · · · · bburoker@gibsondunn.com
`
`16· · · · · · - and -
`
`17· · · · · · GIBSON, DUNN & CRUTCHER, LLP
`
`18· · · · · · BY:· FRANK P. COTE, ESQ.
`
`19· · · · · · 3161 Michelson Drive
`
`20· · · · · · Irvine, California 92612-4412
`
`21· · · · · · (949) 451-3800
`
`22· · · · · · fcote@gibsondunn.com
`
`23
`
`24
`
`25
`
`Exhibit Page 3
`
`
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`·1· ·APPEARANCES OF COUNSEL (Continued):
`
`·2· ·For Patent Owner SPEX Technologies, Inc.:
`
`·3· · · · · · BROWN RUDNICK
`
`·4· · · · · · BY:· VINCENT J. RUBINO III, ESQ.
`
`·5· · · · · · Seven Times Square
`
`·6· · · · · · New York, New York 10036
`
`·7· · · · · · (212) 209-4800
`
`·8· · · · · · vrubino@brownrudnick.com
`
`·9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
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`16
`
`17
`
`18
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`19
`
`20
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`21
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`22
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`23
`
`24
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`25
`
`Exhibit Page 4
`
`
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`·1· · · · · · · · · · · · · · I N D E X
`
`·2· ·WITNESS· · · · · · · · · EXAMINED BY· · · · · · · · PAGE
`
`·3· ·MARTIN E. KALISKI, PhD...BY MR. RUBINO...........· · ·5
`
`·4· ·.........................BY MR. BUROKER..........· ·109
`
`·5
`
`·6
`
`·7· · · · · · · · · · ·INFORMATION REQUESTED
`
`·8· · · · · · · · · · · · · · (None)
`
`·9
`
`10· · · · · · · QUESTIONS INSTRUCTED NOT TO ANSWER
`
`11· · · · · · · · · · · · · · (None)
`
`12
`
`13
`
`14· · · · · · · · ·EXHIBITS FOR IDENTIFICATION
`
`15· ·NUMBER· · · · DESCRIPTION· · · · · · · · · · · · · ·PAGE
`
`16· ·Exhibit 1 ... Declaration of Martin Kaliski,
`
`17· ·(Kaliski 1)· ·PhD, in Support of Petition for
`
`18· · · · · · · · ·Inter Partes Review, Case
`
`19· · · · · · · · ·No. IPR2018-00084 [107 pages]......· · 86
`
`20· ·Exhibit 2 ... Declaration of Martin Kaliski,
`
`21· ·(Kaliski 2)· ·PhD, in Support of Petition for
`
`22· · · · · · · · ·Inter Partes Review, "Case
`
`23· · · · · · · · ·No. IPR2017-" [107 pages]..........· · 86
`
`24
`
`25
`
`Exhibit Page 5
`
`
`
`·1· · · · · · · · · ·MARTIN E. KALISKI, PhD,
`
`·2· · · · · · · · ·having first been duly sworn,
`
`·3· · · · · · ·was examined and testified as follows:
`
`·4
`
`·5· · · · · · · · · · · · · EXAMINATION
`
`·6· ·BY MR. RUBINO:
`
`·7· · · ·Q.· ·Good morning, Dr. Kaliski.
`
`·8· · · ·A.· ·Good morning.
`
`·9· · · ·Q.· ·Can you please state your full name for the
`
`10· ·record.
`
`11· · · ·A.· ·Martin Kaliski.
`
`12· · · ·Q.· ·Where do you currently reside?
`
`13· · · ·A.· ·Reside?· Here in San Luis Obispo.· Do you need
`
`14· ·an address?
`
`15· · · ·Q.· ·Sure.
`
`16· · · ·A.· ·2831 El Cerrito -- that's E-l C-e-r-r-i-t-o,
`
`17· ·two words -- Street, in San Luis Obispo, 93401.
`
`18· · · ·Q.· ·For whom do you currently work?
`
`19· · · ·A.· ·For whom do I currently work?· I'm a retired
`
`20· ·professor at Cal Poly here, and I have -- I'm
`
`21· ·self-employed.· I do some consulting work, typically
`
`22· ·intellectual property patent cases.
`
`23· · · ·Q.· ·So you don't have any full-time employment
`
`24· ·right now?
`
`25· · · ·A.· ·No.
`
`Exhibit Page 6
`
`
`
`·1· · · ·Q.· ·So are you aware that we are here today in the
`
`·2· ·context of a proceeding in front of the patent office?
`
`·3· · · ·A.· ·Yes.
`
`·4· · · ·Q.· ·Do you know what proceedings we are here today
`
`·5· ·for a deposition for you for?
`
`·6· · · ·A.· ·I'm not sure what you mean by "what
`
`·7· ·proceedings."
`
`·8· · · ·Q.· ·I'll withdraw the question.
`
`·9· · · · · · Do you know the number of the proceedings, the
`
`10· ·identification number, IPR dash --
`
`11· · · ·A.· ·I don't know.· I don't -- I know there are two
`
`12· ·separate IPRs.· I don't have the numbers memorized.
`
`13· · · ·Q.· ·Do you recall what patents were challenged in
`
`14· ·the IPRs?
`
`15· · · ·A.· ·I do.· I can tell you one patent number in full
`
`16· ·because it's right in front of me.· The 6,088,802
`
`17· ·patent.· All I can tell you about the other one is that
`
`18· ·it ends in '135.
`
`19· · · ·Q.· ·So to refresh your recollection, I believe you
`
`20· ·are here to discuss IPR proceedings IPR2018-00082 and
`
`21· ·00084.· Does that sound familiar?
`
`22· · · ·A.· ·I -- if you say those are the numbers, I have
`
`23· ·no reason to believe otherwise.· On the copies you gave
`
`24· ·me, there's no markings as to what the number is.
`
`25· · · ·Q.· ·What party are you working with in this case?
`
`Exhibit Page 7
`
`
`
`·1· · · ·A.· ·I'm working on behalf of Western Digital.
`
`·2· · · ·Q.· ·Are you working on behalf of any other parties
`
`·3· ·in this case?
`
`·4· · · ·A.· ·Not that I'm aware of.
`
`·5· · · ·Q.· ·Are you working with Western Digital only in
`
`·6· ·the patent office portion of this case, or are you also
`
`·7· ·working with Western Digital in a co-pending district
`
`·8· ·court case?
`
`·9· · · ·A.· ·I have not been asked to work on the district
`
`10· ·court case, although one of the attorneys for Western
`
`11· ·Digital involved with the district court case has been
`
`12· ·talking to me over the past week.· But I -- my
`
`13· ·understanding is I am only providing expertise relative
`
`14· ·to the IPR.
`
`15· · · ·Q.· ·So thus far, it's your understanding that
`
`16· ·you're only providing expert services with regard to the
`
`17· ·IPR proceedings?
`
`18· · · ·A.· ·Yes.
`
`19· · · ·Q.· ·Did you submit any declarations in the IPR
`
`20· ·proceedings on behalf of Western Digital?
`
`21· · · ·A.· ·Yes.
`
`22· · · ·Q.· ·How many declarations?
`
`23· · · ·A.· ·Three.
`
`24· · · ·Q.· ·So there are two proceedings and three
`
`25· ·declarations.· Can you explain why?
`
`Exhibit Page 8
`
`
`
`·1· · · ·A.· ·Yes.· For one of the patents, the '802 patent,
`
`·2· ·I submitted two declarations.· For the '135 patent, I
`
`·3· ·submitted one declaration.
`
`·4· · · ·Q.· ·So for the '802 patent proceedings, which I'll
`
`·5· ·refer to as either the '802 patent proceeding or as the
`
`·6· ·00082 proceeding, you're saying you provided two
`
`·7· ·declarations.· Is that right?
`
`·8· · · ·A.· ·That is correct.
`
`·9· · · ·Q.· ·And was one of them an initial declaration
`
`10· ·provided with the petition?
`
`11· · · ·A.· ·I believe so.· I can't say exactly what it was
`
`12· ·provided with, but I wrote it back in September or
`
`13· ·October of last year.· That was the time frame.
`
`14· · · ·Q.· ·And so that declaration that you provided for
`
`15· ·the '82 proceeding that you say you wrote some time ago,
`
`16· ·is that Exhibit 1015 that is in front of you right now?
`
`17· · · ·A.· ·Well, assuming that you've faithfully copied
`
`18· ·this, this appears to be a copy of my declaration
`
`19· ·submitted in conjunction with the '802 patent.
`
`20· · · ·Q.· ·Can you take a look at Exhibit 1015 for me?
`
`21· ·And go to the page marked 99 of 109.
`
`22· · · ·A.· ·I'm there.
`
`23· · · ·Q.· ·Is that your signature affixed to the bottom of
`
`24· ·page 109 -- or 99?
`
`25· · · ·A.· ·It's a copy of my signature, yes.
`
`Exhibit Page 9
`
`
`
`·1· · · ·Q.· ·And the date, October 16, 2017, is that the
`
`·2· ·date you signed this declaration?
`
`·3· · · ·A.· ·I would assume so.· It's consistent with what I
`
`·4· ·said to you a moment ago.· This was done last fall, and
`
`·5· ·when the signature sheet was there for me to sign, I
`
`·6· ·signed it.
`
`·7· · · ·Q.· ·So if you look at this document, after page 99,
`
`·8· ·it says "Appendix A, Curriculum Vitae of Dr. Martin
`
`·9· ·Kaliski."· Do you see that?
`
`10· · · ·A.· ·I do see a page marked 100, which has on it
`
`11· ·"Appendix A, Curriculum Vitae of Dr. Martin Kaliski."
`
`12· · · ·Q.· ·So pages 100 through 109, is that an accurate
`
`13· ·copy of your CV?
`
`14· · · ·A.· ·As of that point in time, yes.
`
`15· · · ·Q.· ·And you remember providing that?
`
`16· · · ·A.· ·Yeah.· I don't remember when I provided it, but
`
`17· ·it was -- at the time we were putting the declaration
`
`18· ·together, it's -- I provided a CV, and this is a CV I
`
`19· ·provided a copy of.
`
`20· · · ·Q.· ·And if you look back to the remainder of the
`
`21· ·document, pages 1 through 98, you see 188 paragraphs of
`
`22· ·declaration.· Right?
`
`23· · · ·A.· ·Well, let me see.· The last paragraph that's
`
`24· ·numbered, it says 188.· There's material before the
`
`25· ·first numbered paragraph and some material after the
`
`Exhibit Page 10
`
`
`
`·1· ·first numbered paragraph, but the last numbered
`
`·2· ·paragraph is 188.
`
`·3· · · ·Q.· ·So for paragraphs 1 through 188, did you write
`
`·4· ·all of those paragraphs?
`
`·5· · · · · · MR. BUROKER:· Objection.· Form.
`
`·6· · · · · · THE WITNESS:· And I need to just clarify from
`
`·7· ·you what you mean by "write."· I mean, we all have a
`
`·8· ·general idea, but I want to make sure I answer your
`
`·9· ·question properly.· What exactly do you want to know?
`
`10· ·BY MR. RUBINO:
`
`11· · · ·Q.· ·You've submitted declarations in connection
`
`12· ·with patent proceedings before, haven't you?
`
`13· · · ·A.· ·Many times.
`
`14· · · ·Q.· ·About how many declarations have you submitted?
`
`15· · · ·A.· ·I have no idea.
`
`16· · · ·Q.· ·More than five?
`
`17· · · ·A.· ·No doubt.
`
`18· · · ·Q.· ·More than ten?
`
`19· · · ·A.· ·I've probably been on, oh, 3-, 400 cases over
`
`20· ·the past 20 years.· I can't tell you how many
`
`21· ·declarations I submitted.· Sometimes I've submitted
`
`22· ·expert reports.
`
`23· · · ·Q.· ·You've been asked this question before, haven't
`
`24· ·you?
`
`25· · · ·A.· ·Many times.
`
`Exhibit Page 11
`
`
`
`·1· · · ·Q.· ·So you know what I'm asking you?
`
`·2· · · · · · MR. BUROKER:· Objection.· Form.
`
`·3· · · · · · THE WITNESS:· I don't want to speculate.· Are
`
`·4· ·you asking me -- you know, I just want to make sure.
`
`·5· ·Are you asking me did I physically type things here?
`
`·6· ·Did I create the words?· Is it --
`
`·7· ·BY MR. RUBINO:
`
`·8· · · ·Q.· ·Sure.
`
`·9· · · ·A.· ·I mean, what do you want to know?
`
`10· · · ·Q.· ·All of that.
`
`11· · · · · · MR. BUROKER:· Objection.· Compound.
`
`12· · · · · · THE WITNESS:· My approach with declarations is
`
`13· ·to let the attorneys do the wordsmithing because they
`
`14· ·have a particular way they like to do it and to make
`
`15· ·sure that the positions that are stated in there
`
`16· ·accurately reflect my views on the case.· That's my
`
`17· ·answer to you.
`
`18· ·BY MR. RUBINO:
`
`19· · · ·Q.· ·So you didn't physically type out this
`
`20· ·declaration, paragraphs 1 through 188.· Right?
`
`21· · · ·A.· ·No.
`
`22· · · ·Q.· ·What materials did you review in connection
`
`23· ·with preparing this declaration?
`
`24· · · ·A.· ·That's a hard question to answer because a lot
`
`25· ·of different things were sent my way, but obviously I
`
`Exhibit Page 12
`
`
`
`·1· ·reviewed the patent in question, the '802 patent. I
`
`·2· ·reviewed the various items of prior art that I cited to.
`
`·3· ·I may have reviewed some other documents as well. I
`
`·4· ·wasn't involved in the district court case or in any
`
`·5· ·claim construction briefs, but no doubt some material
`
`·6· ·came my way.· But my -- I viewed basically my job here
`
`·7· ·as to look at the cited prior art in view of the patent.
`
`·8· · · ·Q.· ·You're familiar with the concept of a
`
`·9· ·"materials considered" section in an expert report or
`
`10· ·declaration.· Right?
`
`11· · · ·A.· ·I'm familiar with that term, yes.
`
`12· · · ·Q.· ·Did you put a "materials considered" section
`
`13· ·into your declaration here?
`
`14· · · ·A.· ·I don't believe there is in this declaration a
`
`15· ·"material considered" section.
`
`16· · · ·Q.· ·So how would we know what you considered in
`
`17· ·rendering your opinion here?
`
`18· · · · · · MR. BUROKER:· Objection.· Form.
`
`19· · · · · · THE WITNESS:· I think in the absence of that,
`
`20· ·you would use common sense and assume that what I
`
`21· ·considered is what I referred to or what I stated I was
`
`22· ·informed about, such as claim construction terms and so
`
`23· ·on.
`
`24· ·BY MR. RUBINO:
`
`25· · · ·Q.· ·So you have considered some documents.
`
`Exhibit Page 13
`
`
`
`·1· ·Correct?
`
`·2· · · ·A.· ·One of the problems with this line of
`
`·3· ·questioning is what "considered" means.· I can look at a
`
`·4· ·document and decide it's not really important and I've
`
`·5· ·considered it.· I can look at a document carefully and
`
`·6· ·analyze it, and that's also been considered.· So I've
`
`·7· ·been sent a number of documents.· This -- we're talking
`
`·8· ·now about something that goes back to last summer,
`
`·9· ·almost a year ago.· And the documents that are important
`
`10· ·for my analysis are all cited here.
`
`11· · · ·Q.· ·So in formulating your analysis, you have
`
`12· ·considered at least the documents cited in this
`
`13· ·declaration.· Is that correct?
`
`14· · · ·A.· ·Except where my understanding comes from the
`
`15· ·attorneys and there are citations to specific cases in
`
`16· ·the federal circuit and so on.· As I said to you
`
`17· ·earlier, the documents that you can view myself as
`
`18· ·having considered are the ones that are mentioned here,
`
`19· ·yes.
`
`20· · · ·Q.· ·Did you review all of the documents that were
`
`21· ·provided as exhibits in this IPR proceeding?
`
`22· · · · · · MR. BUROKER:· Objection.· Form.
`
`23· · · · · · THE WITNESS:· I have no idea what all of the
`
`24· ·documents that are provided as exhibits were.· Again,
`
`25· ·I'm sent documents.· I will glance at them to see
`
`Exhibit Page 14
`
`
`
`·1· ·whether they're relevant to what I need to do and move
`
`·2· ·on.
`
`·3· ·BY MR. RUBINO:
`
`·4· · · ·Q.· ·So is it fair to also say that you've based
`
`·5· ·your opinion on your own personal expertise in this
`
`·6· ·field along with documents you've considered?
`
`·7· · · ·A.· ·Well, I don't know about what's fair or what's
`
`·8· ·not fair.· But I can tell you that in any expert witness
`
`·9· ·matter I'm involved in, I -- I identify certain
`
`10· ·documents that I feel are germane to my arguments, and
`
`11· ·of course, I bring in my expertise and experience.
`
`12· ·That's why I'm engaged on the case, because I have the
`
`13· ·expertise and experience and a perspective that I can
`
`14· ·bring into the matter.
`
`15· · · ·Q.· ·So in formulating your opinions here, you have
`
`16· ·considered only the documents cited and also your
`
`17· ·expertise.· Is that fair?
`
`18· · · · · · MR. BUROKER:· Objection.· Form.
`
`19· · · · · · THE WITNESS:· Right.· And as you well
`
`20· ·understand, in developing and maintaining, keeping my
`
`21· ·expertise up to date, there will always be things I look
`
`22· ·at as well.· But I think what is fair to say is that the
`
`23· ·documents that formed the basis of this opinion are
`
`24· ·cited here.
`
`25· ·//
`
`Exhibit Page 15
`
`
`
`·1· ·BY MR. RUBINO:
`
`·2· · · ·Q.· ·Now, earlier you said that you had had
`
`·3· ·discussions with attorneys about some proceedings or
`
`·4· ·documents.· Is that right?
`
`·5· · · ·A.· ·We could refer back to exactly what I said. I
`
`·6· ·don't remember the exact words I used.· I've talked to
`
`·7· ·attorneys in this matter since I was first brought on.
`
`·8· · · ·Q.· ·Were you provided with any of the information
`
`·9· ·you used to render your opinions by the attorneys in
`
`10· ·this case?
`
`11· · · · · · MR. BUROKER:· Objection.· Vague.
`
`12· · · · · · THE WITNESS:· I'm not sure what that even
`
`13· ·means.· Of course, the attorneys provided me with
`
`14· ·information that helped me form my opinion.
`
`15· ·BY MR. RUBINO:
`
`16· · · ·Q.· ·So for example, are there any documents you
`
`17· ·refer to in your declaration that you had not personally
`
`18· ·reviewed but had been summarized for you by attorneys?
`
`19· · · ·A.· ·Only in the context of district court claim
`
`20· ·construction, for example, because I really wasn't
`
`21· ·involved in that, and they said we're basing our claim
`
`22· ·construction -- we're going along with certain claim
`
`23· ·constructions that arose during the district court
`
`24· ·matter, and I didn't -- I asked them what they were.
`
`25· ·But in terms of --
`
`Exhibit Page 16
`
`
`
`·1· · · · · · MR. BUROKER:· Caution the witness not to reveal
`
`·2· ·the substance of our communications.· So just answer the
`
`·3· ·question without doing so.
`
`·4· · · · · · THE WITNESS:· Yeah, I don't remember the
`
`·5· ·communication.
`
`·6· · · · · · MR. RUBINO:· Counsel, if he's -- if he's saying
`
`·7· ·this is the basis of his opinion, I think he has to
`
`·8· ·answer the question.
`
`·9· · · · · · MR. BUROKER:· He didn't say that.
`
`10· · · · · · And so I would urge you not to reveal
`
`11· ·substantive attorney-client communications.
`
`12· · · · · · THE WITNESS:· I don't -- it was never my intent
`
`13· ·to do that.· I can't really remember most of my
`
`14· ·discussions with the attorneys frankly, but any analysis
`
`15· ·here done on the documents that I've cited to in prior
`
`16· ·art are done based on my own review.
`
`17· ·BY MR. RUBINO:
`
`18· · · ·Q.· ·So I'd like to step back a second and talk to
`
`19· ·you about your prior experience again.· You had said
`
`20· ·that you had been involved in many, many patent
`
`21· ·litigation and patent proceeding matters.· Is that
`
`22· ·right?
`
`23· · · ·A.· ·I did.
`
`24· · · ·Q.· ·And in the context of those other matters, had
`
`25· ·you ever -- let me rephrase that.
`
`Exhibit Page 17
`
`
`
`·1· · · · · · In the context of those other matters, did you
`
`·2· ·have an understanding as to what the claim construction
`
`·3· ·portion of a proceeding entails?
`
`·4· · · ·A.· ·I can't cite to specific cases, but often it
`
`·5· ·would come up that I would always, as a matter of
`
`·6· ·course, general rule, say to the attorneys with whom I'm
`
`·7· ·working, what claim constructions are we using here?
`
`·8· ·Has there been a Markman ruling?· And so on.· And often
`
`·9· ·they would provide those claim constructions for me.
`
`10· · · ·Q.· ·Have you ever been asked in the context of any
`
`11· ·of your prior cases -- I'm only asking about prior
`
`12· ·cases.· Have you ever been asked in the context of any
`
`13· ·of your prior cases to render an opinion about claim
`
`14· ·construction?
`
`15· · · ·A.· ·I have certainly been asked in a number of
`
`16· ·cases to attach declarations to claim construction
`
`17· ·briefings that were filed with the court.· I've
`
`18· ·testified at several Markman hearings on claim
`
`19· ·construction terms.
`
`20· · · ·Q.· ·So you generally understand what is involved in
`
`21· ·the process of construing a claim for claim
`
`22· ·construction.· Right?
`
`23· · · ·A.· ·I generally understand it, both at the district
`
`24· ·court level and at the IPR level.
`
`25· · · ·Q.· ·Have you ever been asked to provide your
`
`Exhibit Page 18
`
`
`
`·1· ·opinion as to what the proper or appropriate
`
`·2· ·construction of a claim term should be in the context of
`
`·3· ·a patent office proceeding, other than this case?
`
`·4· · · ·A.· ·I can't remember exactly.· It seems to me I've
`
`·5· ·written declarations on claim constructions for IPR
`
`·6· ·matters, but I can't say that with a hundred percent
`
`·7· ·certainty.
`
`·8· · · ·Q.· ·So let's take a look at your declaration again,
`
`·9· ·Exhibit 1015, that's in front of you.· Is there a
`
`10· ·section in your declaration that discusses claim
`
`11· ·construction?
`
`12· · · ·A.· ·There's a section called "claim construction"
`
`13· ·on page 15.
`
`14· · · ·Q.· ·Is there also a section on claim construction
`
`15· ·starting on page 8 of 109?
`
`16· · · ·A.· ·Page 8?
`
`17· · · ·Q.· ·I'm referring to the page numbers at the bottom
`
`18· ·in the footer that govern this proceeding.· It may be
`
`19· ·page 5 of the declaration.
`
`20· · · ·A.· ·There's a -- yes, there's another section there
`
`21· ·on claim constructions and how they -- how they are
`
`22· ·handled relevant to proceedings before the board.
`
`23· · · ·Q.· ·Do you see in paragraph 19 --
`
`24· · · ·A.· ·I do.
`
`25· · · ·Q.· ·-- you say, "I understand that patent owner has
`
`Exhibit Page 19
`
`
`
`·1· ·asserted the '802 patent in parallel litigation and has
`
`·2· ·proposed constructions for the terms of the
`
`·3· ·'802 patent"?
`
`·4· · · ·A.· ·I do see that sentence.
`
`·5· · · ·Q.· ·And then the next sentence, it says "I also
`
`·6· ·understand that petitioner has applied patent owner's
`
`·7· ·claim construction positions as well as tentative
`
`·8· ·constructions proposed by the district court for
`
`·9· ·purposes of this petition"?
`
`10· · · ·A.· ·I see that sentence as well.
`
`11· · · ·Q.· ·How did you come to understand these things?
`
`12· · · ·A.· ·From counsel that I was working with.
`
`13· · · ·Q.· ·Did they tell you the constructions verbally?
`
`14· · · ·A.· ·Did they tell me what?
`
`15· · · ·Q.· ·Did they write a document for you that listed
`
`16· ·the constructions?· How did they communicate the
`
`17· ·constructions to you?
`
`18· · · ·A.· ·I don't remember specifically.· But where the
`
`19· ·constructions are used, they're in this declaration, so
`
`20· ·I assume some of it may have been in writing.
`
`21· · · ·Q.· ·Did they provide you with the documents from
`
`22· ·the parallel litigation?
`
`23· · · ·A.· ·The documents?· Which documents?
`
`24· · · ·Q.· ·Any documents that reflect your understanding.
`
`25· · · ·A.· ·I've -- all I can tell you is I asked how we
`
`Exhibit Page 20
`
`
`
`·1· ·were going to proceed relative to claim constructions.
`
`·2· ·This is what I was advised, what we just read here.· And
`
`·3· ·information about those claim constructions was provided
`
`·4· ·to me in some form.· I was not involved in the claim
`
`·5· ·construction process in the district court litigation.
`
`·6· ·I may have been sent various briefings relative to claim
`
`·7· ·construction, but all I really was interested in was the
`
`·8· ·end result at this point.
`
`·9· · · ·Q.· ·Do you recall whether you reviewed the claim
`
`10· ·construction briefing in the parallel district court
`
`11· ·litigation?
`
`12· · · ·A.· ·If I did, it was at most a cursory glance
`
`13· ·because it wasn't my role to provide feedback or my
`
`14· ·views on those claim constructions, but to simply adopt
`
`15· ·those as my claim constructions.
`
`16· · · ·Q.· ·How about the Markman hearing?· Did you read a
`
`17· ·transcript of that proceeding?
`
`18· · · ·A.· ·I may have seen a few pages, excerpts of
`
`19· ·certain things.· I don't recall reading the full
`
`20· ·transcript of the Markman hearing.
`
`21· · · ·Q.· ·How about the preliminary Markman ruling?· Did
`
`22· ·you see that?
`
`23· · · ·A.· ·I may have just seen the end result as to what
`
`24· ·the preliminary constructions were on the disputed
`
`25· ·terms.· I don't recall whether or not I read the whole
`
`Exhibit Page 21
`
`
`
`·1· ·document.
`
`·2· · · ·Q.· ·Have you ever read the final order regarding
`
`·3· ·claim construction submitted in this case in the
`
`·4· ·parallel district court case?
`
`·5· · · · · · MR. BUROKER:· Objection.· Vague.
`
`·6· · · · · · THE WITNESS:· I may have been sent it, but
`
`·7· ·again, my declarations were based on the tentative
`
`·8· ·constructions proposed by the district court.
`
`·9· ·BY MR. RUBINO:
`
`10· · · ·Q.· ·And those tentative constructions were the
`
`11· ·tentative constructions proposed by SPEX in the district
`
`12· ·court.· Is that right?
`
`13· · · ·A.· ·What it says here, yeah, the patent owner.
`
`14· · · ·Q.· ·Has that been your role in every case, to get
`
`15· ·the claim constructions from the attorneys and simply
`
`16· ·apply them?
`
`17· · · ·A.· ·You know as well as me it's never one size fits
`
`18· ·all.· It depends on the case.· In some cases I've been a
`
`19· ·very active participant in the claim construction
`
`20· ·process.· In this matter, I was -- my starting point
`
`21· ·were a set of proposed claim constructions; that, in
`
`22· ·light of those constructions, to evaluate whether or not
`
`23· ·certain prior art identified here read on various claims
`
`24· ·of the two patents.
`
`25· · · ·Q.· ·And you had no opinion here about whether the
`
`Exhibit Page 22
`
`
`
`·1· ·constructions you were adopting were the appropriate
`
`·2· ·constructions.· Right?
`
`·3· · · ·A.· ·I was never asked to provide an opinion on
`
`·4· ·those constructions.· I accepted them at face value.
`
`·5· · · ·Q.· ·Do you have an opinion on those constructions?
`
`·6· · · ·A.· ·I have no opinion on those constructions.
`
`·7· · · ·Q.· ·So sitting here today, you can't tell me
`
`·8· ·whether you think SPEX's proposed constructions in the
`
`·9· ·district court were the appropriate constructions.· Is
`
`10· ·that right?
`
`11· · · ·A.· ·I have not been asked to evaluate those
`
`12· ·constructions.· Certainly SPEX has not asked me to do
`
`13· ·that, and so I have no opinion.
`
`14· · · ·Q.· ·Has Western Digital asked you to do that?
`
`15· · · ·A.· ·Excuse me?
`
`16· · · ·Q.· ·Has Western Digital asked you to do that?
`
`17· · · ·A.· ·No.
`
`18· · · ·Q.· ·Do you intend to provide an opinion in this
`
`19· ·case regarding the appropriateness of any of the
`
`20· ·constructions, whether they be the district court's
`
`21· ·proposed constructions or the patent office's
`
`22· ·constructions adopted in this proceeding?
`
`23· · · · · · MR. BUROKER:· Objection.· Vague.
`
`24· · · · · · THE WITNESS:· I've not been asked to provide an
`
`25· ·opinion.· If and when that happens, I can give you an
`
`Exhibit Page 23
`
`
`
`·1· ·answer to your question.
`
`·2· ·BY MR. RUBINO:
`
`·3· · · ·Q.· ·So you don't have an opinion about the claim
`
`·4· ·constructions in either the district court case or the
`
`·5· ·patent office proceeding.· Is that right?
`
`·6· · · · · · MR. BUROKER:· Objection.· Asked and answered.
`
`·7· · · · · · THE WITNESS:· That is correct.
`
`·8· ·BY MR. RUBINO:
`
`·9· · · ·Q.· ·You were just asked to apply several
`
`10· ·constructions that were provided to you by counsel.· Is
`
`11· ·that right?
`
`12· · · · · · MR. BUROKER:· Same objection.
`
`13· · · · · · THE WITNESS:· It's not so much that they were
`
`14· ·provided by counsel.· They didn't just come out of a
`
`15· ·vacuum.· They arose in the context of other processes
`
`16· ·going on, and counsel provided them to me.
`
`17· ·BY MR. RUBINO:
`
`18· · · ·Q.· ·If they had come out of a vacuum, would you
`
`19· ·have still applied them?
`
`20· · · · · · MR. BUROKER:· Objection.· Vague.
`
`21· · · · · · THE WITNESS:· That's a hypothetical question.
`
`22· ·That's hard for me to ask [sic].· If counsel had come to
`
`23· ·me and said, here are some hypothetical constructions;
`
`24· ·what do you think now about whether certain patents read
`
`25· ·on certain claims, I might well have done that as well.
`
`Exhibit Page 24
`
`
`
`·1· ·BY MR. RUBINO:
`
`·2· · · ·Q.· ·So you would have applied whatever
`
`·3· ·constructions were provided to you by counsel.· Is that
`
`·4· ·right?
`
`·5· · · · · · MR. BUROKER:· Objection.· Vague.
`
`·6· · · · · · THE WITNESS:· That's too broad.· If they had
`
`·7· ·said "A" meant, you know, Donald Duck, I probably would
`
`·8· ·have questioned it.
`
`·9· · · · · · But again, my role in this case was -- my
`
`10· ·starting point were certain constructions for these
`
`11· ·terms.· I'm as aware as the next person that if
`
`12· ·constructions change or are different, things could
`
`13· ·change.· That's the nature of this -- whole nature of
`
`14· ·patent litigation.· But these were the constructions I
`
`15· ·was provided with.· That was my starting point.
`
`16· ·BY MR. RUBINO:
`
`17· · · ·Q.· ·So there's at least some level where you might
`
`18· ·question what the attorneys are providing as a starting
`
`19· ·point.· Is that right?
`
`20· · · ·A.· ·I have no idea how you got to that sentence. I
`
`21· ·was not asked -- I didn't question what the attorneys
`
`22· ·were providing me with.· I accepted those constructions.
`
`23· · · ·Q.· ·And that's because they at least seemed
`
`24· ·reasonable on their face.· Right?
`
`25· · · · · · MR. BUROKER:· Objection.· Form.
`
`Exhibit Page 25
`
`
`
`·1· · · · · · THE WITNESS:· I was not really even asked to
`
`·2· ·judge whether they were reasonable or not, but these
`
`·3· ·constructions were provided, and they obviously were
`
`·4· ·germane to the patents.· They weren't off-the-wall
`
`·5· ·constructions that had nothing to do with the patent.
`
`·6· ·And what I was asked to do was, based on those
`
`·7· ·constructions, how did I view things as expressed in my
`
`·8· ·declaration.
`
`·9· ·BY MR. RUBINO:
`
`10· · · ·Q.· ·So you at least thought the constructions were
`
`11· ·germane to the patent and not off-the-wall.· Right?
`
`12· · · ·A.· ·But it wasn't a conscious process, you know.
`
`13· ·If the constructions they provided me were talking about
`
`14· ·buried treasure or shoe size or something like that, I
`
`15· ·might have said, what did these have to do with the
`
`16· ·case?· But the constructions were -- they were tentative
`
`17· ·constructions proposed by the district court.· They were
`
`18· ·based on patent owner's claim constructions position.
`
`19· ·So that was my starting point.
`
`20· · · ·Q.· ·So earlier you said you adopted the proposed
`
`21· ·constructions of patent owner.· Is that right?
`
`22· · · · · · MR. BUROKER:· Objection.· Vague.
`
`23· · · · · · THE WITNESS:· I said what's in my declaration.
`
`24· ·Okay?· The petitioner has applied patent owner's claim
`
`25· ·constructions position as well as tentative
`
`Exhibit Page 26
`
`
`
`·1· ·constructions proposed by the district court.
`
`·2· ·BY MR. RUBINO:
`
`·3· · · ·Q.· ·So there's a difference between patent owner's
`
`·4· ·claim construction positions and the tentative
`
`·5· ·constructions proposed by the district court.· Is that
`
`·6· ·right?
`
`·7· · · ·A.· ·There could be.· Maybe the district court
`
`·8· ·accepted all the patent owner's constructions.· I was
`
`·9· ·given a set of constructions.· Okay?· I was told that
`
`10· ·they came from either the district court or from the
`
`11· ·patent owner.· I didn't go into, in my own analysis,
`
`12· ·what the source of each construction was.· All I needed
`
`13· ·to do my analysis was, for every claim element, to know
`
`14· ·how to interpret the claim element.
`
`15· · · ·Q.· ·So if there was a claim term that was proposed
`
`16· ·by the petitioner but not construed according to
`
`17· ·petitioner's construction -- I'm sorry.· Let me rephrase
`
`18· ·that question.
`
`19· · · · · · So if there was a claim term that was proposed
`
`20· ·by a patent owner in the district court proceeding but
`
`21· ·then not adopted by the district court in the tentative
`
`22· ·constructions, would you have known which of those
`
`23· ·constructions you were applying in this proceeding?
`
`24· · · ·A.· ·Not necessarily.
`
`25· · · ·Q.· ·Would knowing that information have affected
`
`Exhibit Page 27
`
`
`
`·1· ·your opinions in any way?
`
`·2· · · ·A.· ·Hypothetically speaking, any time an assumed
`
`·3· ·construction is -- would that have changed it if I -- if
`
`·4· ·I knew where it came from?· No.· I mean, why would it
`
`·5· ·have changed it?
`
`·6· · · ·Q.· ·Would you have liked to know whether the
`
`·7· ·district court had agreed with or not agreed with any of
`
`·8· ·petitioner's or patent owner's constructions that you
`
`·9· ·were applying here?
`
`10· · · · · · MR. BUROKER:· Objection.·
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