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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner,
`
`v.
`
`GROOVE DIGITAL, INC.,
`Patent Owner.
`____________
`
`Cases IPR2019-00050 and IPR2019-00193
`Patent 9,454,762 B2
`____________
`
`**CONFIDENTIAL PROCEEDINGS**
`Record of Oral Hearing
`Held February 4, 2020
`____________
`
`Before BRYAN F. MOORE, NORMAN H. BEAMER, and
`STACY B. MARGOLIES, Administrative Patent Judges.
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`NON-PUBLIC VERSION – PROTECTIVE ORDER MATERIAL
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`Paper No. 62
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner,
`
`v.
`
`GROOVE DIGITAL, INC.,
`Patent Owner.
`____________
`
`Cases IPR2019-00050 and IPR2019-00193
`Patent 9,454,762 B2
`____________
`
`**CONFIDENTIAL PROCEEDINGS**
`Record of Oral Hearing
`Held February 4, 2020
`____________
`
`Before BRYAN F. MOORE, NORMAN H. BEAMER, and
`STACY B. MARGOLIES, Administrative Patent Judges.
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`Patent 9,454,762 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`KEVIN D. RODKEY, ESQUIRE
`DAN KLODOWSKI, ESQUIRE
`DANIEL G. CHUNG, ESQUIRE
`FINNEGAN, HENDERSON, FARABOW
`GARRETT & DUNNER, LLP
`271 17th Street NW, Suite 1400
`Atlanta, Georgia 30363
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`KEVIN GREENLEAF, ESQUIRE
`JOEL BLOCK, ESQUIRE
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, California 94304
`
`
`
`
`
`
`The above-entitled matter came on for hearing on February 4, 2020,
`commencing at 1:00 p.m., at the U.S. Patent and Trademark Office, Madison
`Building, 600 Dulany Street, Alexandria, Virginia, 22314.
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` (Proceedings begin at 12:00 p.m.)
` JUDGE MARGOLIES: Good afternoon, and welcome.
` We are here for a final hearing in IPR2019-00050,
`and IPR2019-00193, captioned Fidelity Information Services v.
`Groove Digital.
` Let me introduce the panel. I am Judge Margolies,
` and I am joined here in Alexandria by Judge Moore. Judge
` Beamer is appearing via video from our Silicon Valley
` Regional Office.
` Let's get the parties' appearances. Who do we have
` appearing on behalf of petitioner?
` MR. RODKEY: Your Honors, Kevin Rodkey on behalf of
`petitioner, FIS.
` With me is Jeff Berkowitz, Dan Klodowski is Daniel
`Chung. We're from Finnegan.
` And from the client we have Debbie Segers, Chief IP
`counsel, and Chris Winter, patent counsel.
` JUDGE MARGOLIES: Okay. Welcome, everybody.
` MR. RODKEY: Thank you.
` JUDGE MARGOLIES: Who do we have appearing on behalf
`of patent owner?
` MR. GREENLEAF: Good afternoon, Your Honor. I'm
`Kevin Greenleaf. With me is Joel Bock as cocounsel.
` And then we also have the inventor, Sam Gaidemak,
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`and we also have our client, Fred Argir.
` JUDGE MARGOLIES: Okay. Welcome, everyone.
` We set forth the procedure for today's hearing in
` our January 9th order, and as a reminder, petitioner and
` patent owner will have one hour -- will each have one hour
` of total time to present arguments as to both IPRs,
` including arguments regarding petitioner's motion to
` exclude, and to take testimony of one of the named inventors
` of the '762 patent, Mr. Gaidemak.
` We will first have a confidential session closed to
` the public. During that confidential session, we will begin
` with the testimony of Mr. Gaidemak.
` Patent owner will begin with direct examination and
` is limited to the five topics previously identified.
` Petitioner will then have the opportunity for cross
` examination.
` The time for the testimony taken by petitioner shall
` not exceed the time taken by patent owner.
` After the testimony is completed, we will hear
` arguments regarding the invention date for the challenged
` claims.
` Petitioner has the burden of proof as to whether the
` challenged claims are unpatentable and will go first.
` Patent owner will then present opposition arguments.
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` Then, to the extent petitioner has reserved
` time, petitioner will present rebuttal arguments.
` And then, to the extent patent owner has reserved
` time, patent owner will present surrebuttal arguments.
` The rebuttal and surrebuttal time may not be more
` than half of the party's total argument time.
` We will then have the public session. Again,
` petitioner has the burden of proof and will go first.
` Patent owner will then present opposition arguments.
` Then, to the extent petitioner has reserved time,
` petitioner will present rebuttal arguments.
` And then, to the extent patent owner has reserved
` time, patent owner will present surrebuttal arguments.
` The rebuttal and surrebuttal time may not be more
` than half of the party's total argument time.
` For clarity in the transcript, and for the benefit
` of Judge Beamer, who is participating remotely, when you
` refer to an exhibit on the screen, please identify the
` exhibit number and page number. And when you refer to your
` demonstrative slides, please identify the slide number.
` We reviewed the joint statement of the parties
` identifying patent owner's objections to petitioner's
` Demonstrative Slides 6, 25, and 31. We will allow
` petitioner to use those slides because petitioner's citation
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` to the Coleman case in its reply brief is sufficient for
` notice purposes.
` Are there any questions on behalf of patent owner at
` this time?
` MR. GREENLEAF: No. Thank you, Your Honor.
` JUDGE MARGOLIES: Are there any questions on behalf
`of petitioner at this time?
` MR. RODKEY: No. Thank you, Your Honor.
` JUDGE MARGOLIES: Okay. All right. Well, let's
`have the witness come up and have the court reporter swear in
`the witness.
` And who will be conducting the direct examination?
` Okay, thank you.
` MR. GAIDEMAK: Do I sit or stand?
` JUDGE MARGOLIES: You can sit.
` MR. GAIDEMAK: Okay.
` JUDGE MARGOLIES: I just want to confirm. Judge
`Beamer --
` So there is a camera that is going to be focuses on
`you, and Judge Beamer will be able to see you --
` MR. GAIDEMAK: Okay.
` JUDGE MARGOLIES: -- from the camera.
` Judge Beamer, I just want to confirm that you do see
` the witness? Just give Judge Beamer a minute. Let me
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` just -- just one minute, please. I'm just confirming --
` MR. GAIDEMAK: Yeah.
` JUDGE MARGOLIES: -- that everything is working --
` MR. GAIDEMAK: It's all good.
` JUDGE MARGOLIES: -- so just give us a minute,
`please.
` (Pause in the proceedings)
` JUDGE MARGOLIES: Okay. We've communicated with
`Judge Beamer, and he can, indeed, see you.
` MR. GAIDEMAK: All right.
` JUDGE MARGOLIES: So can you please swear in the
`witness?
` COURT REPORTER: Sir, would you please raise your
`hand?
` SAMUEL R. GAIDEMAK,
`called as a witness, having been duly sworn or affirmed to
`tell the truth, the whole truth, and nothing but the truth,
`testified as follows:
` DIRECT EXAMINATION BY COUNSEL FOR THE PATENT
`OWNER
`BY MR. GREENLEAF:
` Q. Good afternoon, Mr. Gaidemak.
` A. Good afternoon.
` Q. Would you please state your full name for the
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`record?
` A. Samuel Robert Gaidemak.
` Q. And are you feeling well and able to give
`truthful testimony today?
` A. I am.
` Q. Do you recall in your prior deposition
`testimony in the related District Court litigation
`concerning the '762 patent and petitioner taking your
`deposition in that proceeding?
` A. I do.
` Q. Do you recall testifying regarding your work
`experience?
` A. I do.
` JUDGE MOORE: I'm going to interrupt for just a
`moment. If we could get the mic closer to the witness. I
`think --
` MR. GAIDEMAK: Like an academy award. Sorry.
` JUDGE MOORE: The remote judge relies on the
`microphones to hear people.
` MR. GREENLEAF: Sorry about that. Thank you, Judge
`Moore.
` JUDGE MOORE: Certainly. Go ahead.
`BY MR. GREENLEAF:
` Q. And do you recall your declaration in this
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`proceeding, Exhibit 2030?
` A. I do.
` Q. And do you recall Exhibits 2003, 2004, and
`2005 from this proceeding?
` A. I do.
` Q. Okay. I'm going to pass you those exhibits
`now.
` MR. GREENLEAF: Would Your Honors like paper copies?
`They're just exhibits that are in the record. Okay.
` JUDGE MARGOLIES: We're fine.
`BY MR. GREENLEAF:
` Q. So Mr. Gaidemak, would you please tell me what
`the documents are that I just handed to you?
` A. So the documents are my original conception
`documents, Exhibit 2003.
` 2004 and 2005, a contract between D&D Interactive
`and Datagence dated Wednesday, September 29th, 2004.
` An Excel spreadsheet, Exhibit 2021 dated in 2005.
` And Exhibit 2030, Case No. IPR2019-00050.
` Q. And do you understand Exhibits 2003, 2004,
`2005?
` A. I do.
` Q. And what past work experience qualifies you to
`understand Exhibits 2003 through 5?
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` A. So from 1998 to the present, I've been
`involved in database marketing and digital marketing.
` In 1998, I was hired by Consumer Net to build some
`of the first cooperative opt-in email databases.
` And as such, I had to ensure that data was
`transferred from the partners that I was structuring the
`agreement with to the Consumer Net servers and databases.
` And in order to do so, I had to work directly with
`the developers, and the coders, and the IT team to ensure
`that that data was accurate in terms of the table
`structures, as well as the comma delimited format to the
`pipe delimited formats.
` In 2000 to 2003, as working as a general manager of
` the Email Marketing Division and Music Vision, I was
` directly responsible for, really, evaluating the technology
` that we were going to use for the business, and as such, I
` personally evaluated and demoed all of the leading
` technologies of the day.
` We used the platform to validate tests and deploy
` all electronic alerts. And it was important, because I had
` to have extreme proficiency, and I had hands-on knowledge
` working within the GUIs of the platforms of the day to
` really understand how everything was rendering. How the
` data was rendering. How the advertising and the campaign
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` specifics were rendering at.
` Because failure to render would be lost revenue, and
` so I had to understand those technologies.
` And in one aspect of that, specifically working in a
` Mercedes Benz campaign, I remember working directly with the
` coders and the developers, as well as the ad serving teams
` of Music Vision, to ensure that we were -- making sure that
` the pop-ups of the artists' websites that we were
` representing were not impeding or disrupting the user
` registration path, because we needed people to download
` their data and information on the registration.
` And so I worked with them directly to create an
` ease-of-use workflow with radio dial buttons and drop-down
` menus above the fold of the websites so that we could align
` the advertising campaign to the specifics of the database
` and the information that we were collecting.
` When I worked at Datagence, starting in 2003, again,
` I was building some of the largest cooperative databases.
` And then, as I moved throughout my career, when I
` got to Epsilon, I had moved into larger specifics, working
` with loyalty and database management, working with some of
` the largest transactional and marketing and demographic
` databases, working with retargeting.
` And so for my whole career, I've been involved in
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` digital marketing, and this is, you know, my experience that
` is prep -- relevant here today.
` Q. Mr. Gaidemak, do you -- how do you understand
`Exhibits 2003 to 2005 as demonstrating that you
`conceived a second database limitation of the '762
`patent?
` MR. RODKEY: Your Honor, we object to this question.
`It's outside the scope of the deposition testimony that was
`previously relied on by petitioner. None of the deposition
`testimony relied on refers to Exhibits 2003, 4, or 5.
` JUDGE MARGOLIES: Okay.
` MR. GREENLEAF: Your Honor, Your Honor's order says
`that the conception of second databases, particular at
`instance -- at issue in this proceeding. And petitioner
`relied on prior deposition testimony to allege that Sam
`Gaidemak did not conceive of the second database limitation.
`Therefore, his understanding of his conception of the second
`database -- of the second database limitation is directly
`relevant to petitioner's use of Mr. Gaidemak's prior
`deposition testimony.
` MR. RODKEY: Your Honor, that testimony was only as
`to his credentials, not as to the documents themselves.
` JUDGE MARGOLIES: What we will do is, one of the
`topics in our hearing order is conception of the second
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`database limitation. We will allow the testimony.
` As you know, we are -- we don't have a jury here.
`We -- we're judges, and we can look at this testimony later
`and determine its weight. So I will allow some leeway to let
`this testimony in.
` MR. RODKEY: Thank you, Your Honor. May I put the
`other objections on the record, just so they're preserved?
` JUDGE MARGOLIES: Of course. Yes.
` MR. RODKEY: We object to this as also new argument
`because it was not before his declaration before.
` And we object to it as an APA violation for
`introducing new argument at the oral hearing.
` JUDGE MARGOLIES: Thank you.
` MR. RODKEY: Thank you.
`BY MR. GREENLEAF:
` Q. So Mr. Gaidemak, how do you understand
`Exhibits 2003 through 5 as demonstrating that you
`conceived as to the second database limitation of the
`claims of the '762 patent?
` A. Yeah. So I'm going to rely on my original
`conception documents, 2003, 2004, and 2005, and I'm
`going to specifically point to elements that support
`the concept of a second database.
` If you look at Exhibit 2005, page 1 at the bottom,
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` "Toaster Content Input 1(c)", let me read, "These creatives
` are then uploaded to the toaster. The administrator will
` have the ability to validate and test the campaign within
` the toaster. We will need functionality that will allow us
` to test all campaigns with clients."
` So what I'm talking about here right now is pre
` campaign deployment testing. And in order to have pre
` campaign deployment testing, you need to house and store the
` data, and you need to do it in a database so that everything
` renders properly.
` I'd like to move forward to page 4 of Exhibit 2005,
` please, Your Honors.
` Exhibit 2005, page 4 at the top. "Reporting and
` Analytics. Section sub 4(a). "Reporting is flexible and
` can be customized based on what clients' needs are."
` What I'm really talking about here is an organized
` structure, structure data, again, that relies on being able
` to pull data and to generate reports. And reports are the
` underpinning of ad serving technology. It's really what you
` validate and verify all revenue being based on. So this
` further supports this conversation.
` So first I talked about pre campaign deployment
` testing, now I'm talking about post campaign report --
` reporting.
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` Now I'd like to direct your attention, please, to
` Exhibit 2005, page 2 at the top. "Toaster Campaign
` Specifications 1(d)".
` This is really talking about the data and the things
` that are stored in the database.
` So, again, in context, we talked about the pre
` campaign deployment testing, which presumes you need to
` house and store data in the second database. The post
` campaign reporting, which pulls that data. The contents.
` And now let me specifically show you where the
` database is referenced in Exhibit 2005, page 3, subsection
` "Toast, 3(a)".
` If we look at the second paragraph, please. "In
` order for toast to work, it must be installed on the hard
` drive of a user. Once installed, the application then
` communicates with the toaster database."
` The database is the toaster database.
` Q. Mr. Gaidemak, just to be clear, when you say
`that the database is a toaster database, you're saying
`that the -- are you saying that the toaster database is
`the second database?
` A. The second database is the toaster database.
`I'm sorry. Let me be explicitly clear. Yes. That's
`where I reference it.
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` Q. Okay. And why, in your opinion, do
`Exhibits 2003 through 5 demonstrate that you conceived
`of the independent of or in conjunction with limitation
`of the '762 patent?
` A. Yes. Specifically, I want to reference
`Exhibit 2003, page 1, in the section "Summary", the
`second paragraph, about six or seven lines down.
` "The execution of an ascending movement followed by
` a descending movement or a series of movements is called
` toasting. Toasting will not disrupt the workflow of the
` user or compromise the virtual environment which they are
` interacting in unless or if a user clicks on a piece of
` toast. The act will cause a microbrowser to launch on the
` virtual desktop."
` So the equation here is: Microbrowser plus click is
` independent of. And the reason why, a microbrowser -- in
` order to visualize HTML code, you need a browser to
` visualize the code.
` Moving to Exhibit 2003, bottom of page 1, "Delivery
` Applet Toast", about three lines up.
` "A piece of toast displays a logo of a product or
` brand offer for advertising messages of goods and services.
` However, the logo displayed on a toast may also integrate
` any of the following: HTML."
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` So toast, with an integrated HTML, infers that we
` need a browser to view the HTML. This is an example of in
` conjunction with.
` And finally, I'd like to refer to Exhibit 2003,
` page 3, about -- almost three-quarters of the way down under
` "Description of Terminology", subsection "Content".
` "For the purpose of this document, "content" refers
` to the icons that may appear on the toast, and also to the
` advertising and goods and services and other offers
` displayed in the microbrowser and coupon deployment system."
` In this example, I'm explaining, a microbrowser is
` in conjunction with you need a browser, and then you
` really -- with coupon deployment system, that is an example
` of independent of.
` MR. RODKEY: Your Honor, we object to that as new
`argument. It was not made before, specifically by
`Mr. Gaidemak. It is also outside the scope --
` JUDGE MARGOLIES: Okay, wait. Can you -- so couple
`things.
` First of all, I believe that's the mic. The mic at
`the podium is the one that Judge Beamer can hear, and the
`court reporter. So if you could just be courteous and let
`petitioner go to the mic to do the objection.
` And just -- I'll let this objection in, but next
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`time, try to get your objection in right after the question.
` And the witness, if you could pause to give the time
`a little bit before you answer from now on to give the
`petitioner a little opportunity. But --
` MR. RODKEY: Thank you, Your Honor.
` JUDGE MARGOLIES: -- petitioner, please state your
`objection.
` MR. RODKEY: We object to it as new argument. This
`was not previously discussed by Mr. Gaidemak.
` It is also not mentioned in the patent owner's
`reply, therefore making it new argument and improper under
`(inaudible) Dell v. Acceleron, and also Intelligent
`Biosystems v. Illumina.
` We object to it as outside the scope of the order.
`There was no prior deposition testimony relied upon for, and
`independent of, or in conjunction with limitation. That
`makes it new and outside the scope of the order. On page 5
`of the order it says they cannot exceed that scope.
` Thank you, Your Honor.
` JUDGE MARGOLIES: Thank you.
` And again, for now, we will let this testimony in,
`again, and we will consider this as we're working on the
`final for a decision.
` MR. RODKEY: Thank you, Your Honor.
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` MR. GREENLEAF: And just a point of clarification,
`Your Honor. I'll get into more detail later. But all of
`these citations are in Mr. Gaidemak's declaration and were
`referred to in the surreply, but we can talk more about that
`later.
` And Mr. Rodkey, you can --
` JUDGE MARGOLIES: I --
` MR. GREENLEAF: I'm worried about losing some time
`here, so --
` MR. RODKEY: I apologize. As a point of
`clarification, can we just put those as standing orders -- or
`standing objections?
` JUDGE MARGOLIES: I'd -- I'm hesitant to do that --
` MR. RODKEY: We're trying not to interrupt --
` JUDGE MARGOLIES: Interrupt --
` MR. RODKEY: -- the proceeding too much is why we're
`offering standing objections.
` JUDGE MARGOLIES: I think I'm going to say "no" for
`now, because I imagine that there are some that you would
`agree are within the contours that were set forth in our
`hearing order. So I'm --
` I mean, you can do it more shorthand what your
`objections are, but I do want to do it question-by-question
`basis --
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` MR. RODKEY: Thank you, Your Honor.
` JUDGE MARGOLIES: -- okay, for now.
` JUDGE MOORE: Right. Something along the lines of
`"same objections", and then we can move forward that way.
` MR. RODKEY: Thank you.
`BY MR. GREENLEAF:
` Q. So Mr. Gaidemak, you have Exhibit 2020 before
`you?
` A. I do.
` Q. And what is Exhibit 2020?
` A. Exhibit 2020 is a contract between Datagence
`and D&D Interactive dated Wednesday, September 29th,
`2004.
` Q. And do you recall your prior testimony in the
`District Court litigation deposition stating that you
`could not confirm or deny whether work was actually
`performed according to the proposed schedule in
`Exhibit 2020?
` A. I do.
` Q. And why did you make that testimony?
` A. I didn't have the opportunity really to review
`in detail all of the documents.
` And since reviewing the documents, I've been able
`to review Exhibit 2021 in detail, and this shows a diligent
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`payment structure that refers to the contract of 2020.
` And so --
` MR. RODKEY: Your Honor, may I object to this as
`outside the scope before he continues to testify? It's 2021.
`There is no deposition testimony on that from before.
` JUDGE MARGOLIES: I'm going to -- so what is the
`basis of your objection?
` MR. RODKEY: This is outside the scope of the prior
`testimony because he has not previously testified on 2021 in
`the prior exhibits -- or in the prior deposition.
` JUDGE MARGOLIES: And what -- patent owner's
`counsel, what -- can you please just respond to that? What
`topic from the hearing order and what deposition testimony
`does this pertain to?
` MR. GREENLEAF: So this pertains to the topic of
`diligence in the Court's order, and also to --
` JUDGE MARGOLIES: And just to be clear, the Court --
`our order said, "Mr. Gaidemak's prior statement that he was
`not aware of additional documents evidencing diligence
`towards reduction of practice." So it's about the awareness
`of additional documents.
` MR. GREENLEAF: Mm-hmm. Mm-hmm. And that's exactly
`what he's testifying on right now, the awareness of
`Exhibit 2021 and how it corroborates his payments to
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`Datagence, which is directly at issue in the testimony that
`petitioner elicited in the District Court litigation.
` I'm looking at petitioner's reply here. It said
`that, "Mr. Gaidemak admitted that he did not know and did not
`have documents that show if the proposed schedule was met,"
`and cites Mr. -- and I'm reading from the reply at page 26 --
`cites -- citing Mr. Gaidemak's testimony from the District
`Court litigation in Exhibit 1041 as directly -- exactly what
`Mr. Gaidemak is testifying to right now.
` MR. RODKEY: May I respond briefly?
` The order says, "Not exceeding the scope of the
` deposition testimony of the inventor relied upon by
` petitioner."
` We don't object to him talking about awareness, we
` object to him talking about this particular document.
` JUDGE MARGOLIES: Okay. We're going to let it for
`now, because I think a full response to that topic would
`encompass what documents he is aware of.
` We are -- again, as with all of these rulings, the
`witness is here, we're allowing the witness to testify in
`front of us Judges, and we will revisit -- and whether we
`want to revisit this issue in our final written decision, we
`will. Thank you.
` And I do have a question for patent owner's counsel.
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` Is this in the declaration of Mr. Gaidemak?
` MR. GREENLEAF: Yes, Your Honor. I'll pull that up.
` So, for example, paragraph 33, he discusses this
`Exhibit 2021, and his testimony here is consistent with that
`prior direct testimony in his declaration.
` JUDGE MARGOLIES: Okay. Just give us a minute,
`please.
` MR. GREENLEAF: Sure.
` (Pause in the proceedings)
` JUDGE MARGOLIES: Can you -- I believe you're -- can
`you just repeat -- we're going to allow it for now.
` I do want to remind you that you have an hour total
`time, and you've already spent 20 minutes, and I think you
`should anticipate objections because of the limited topics.
` MR. GREENLEAF: Okay.
` JUDGE MARGOLIES: So, please, you can -- I -- I want
`to give the opportunity, and we'll allow the testimony right
`now, knowing the objections. Thank you.
`BY MR. GREENLEAF:
` Q. So Mr. Gaidemak, Exhibit 2021 has creation
`dates and last modified dates around late 2005 to early
`2006.
` Why does it have those dates when you conceived and
` constructively reduced your invention to practice in late
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` 2004, early 2005?
` MR. RODKEY: I would just state the same objections.
` MR. GAIDEMAK: This is a list of all expense that I
`incurred. I -- I relentlessly work on this day in and day
`out. It was my single-minded focus. So in reviewing and
`refreshing my memory on all these documents, it's how I'm
`coming to make these statements today.
`BY MR. GREENLEAF:
` Q. Okay. Regarding alpha testing, do you recall
`during -- in your prior deposition that you said -- you
`were discussing a presentation that said, "Alpha
`testing occurred in later 2005 and early 2006?"
` A. I do.
` Q. When did testing of the UpNow product occur?
` A. We were -- we were doing pre alpha testing
`from the inception. It was constant. It was ongoing.
`It was iterative.
` Q. And do you recall your prior deposition
`testimony concerning Dot Net?
` A. I do.
` Q. Do you recall testifying tha
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