PA Advisors, LLC v. Google Inc. et al

Filing 447

RESPONSE in Opposition re #418 MOTION in Limine and Daubert Motion to Exclude Testimony of Gerald Mossinghoff filed by Google Inc., Yahoo! Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit B, #3 Text of Proposed Order)(Perlson, David)

PA Advisors, LLC v. Google Inc. et al

Doc. 447 Att. 1

EXHIBIT A

Dockets.Justia.com

Mossinghoff, Gerald [FINAL]

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IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

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PA ADVISORS, LLC Plaintiff
Civil Action No. 2-07CV480-RRR

GOOGLE, INC., et al.

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Defendants

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15 DEPOSITION OF

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HON. GERALD J. MOSSINGHOFF

VOLUME 1 OF 1

Friday, February 12, 2010 11:09 A.M. TO 2:48 P.M.

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PA Advisors v. Googie

held at Washington, District of Columbia

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Mossinghoff, Gerald [FINAL]

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that was set forth in Mr. Peters' -- and that the reasonable examiner would want to know about these cases; and also the second standard that, if, as he said, the missing documents --- the

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documents that the patentee's attorney knew about, but didn ' t-cite to the Patent and Trademark Office, that that would have rendered obvious the claims of the 1067 patent. So really , I applied both standards: and the

The prima facie case of unpatentability , reasonable examiner ' s test. Q.

Do you have any opinion on whether the

patentee refuted or was inconsistent before the PTO? That prong of the test? MS. ROBERTS : A. Objection, form.

I think the answer is yes. By urging

the allowance of claims which would otherwise be determined as being obvious , I think the attorney

satisfied both tests of what a reasonable examiner would want to know, and the question of whether the missing references would have been inconsistent with positions they took. And I use as my basis for that the actual Digital Control case , something like that , which actually said

that by urging the allowance
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of a claim, which an attorney does when he includes a claim in an application supported by a declaration and submits it to the office, that that attorney is urging the allowance of that claim; that the prima facie case of unpatentability is satisfied, and the test of whether or not the lack of submitting the documents was inconsistent with positions that the examiner --- or that the applicant took.
(DEPOSITION EXHIBIT 3 MARKED FOR IDENTIFICATION)

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W,

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MR. GIZA: Exhibit 3. report.
BY MR. GIZA:

The witness has been handed

It is a copy of the Mossinghoff

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Q.

Mr. Mossinghoff, can you confirm what

that document is?
A. This is the first part of my expert

report in this case. I now have Exhibits E and D. There is A, B and C missing at this point. Q. So, can you point out for me where in

your report you make the argument that the

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applicant was either refuted or was.inconsistent in-the positions it took before the PTO?
MR. YOVITS: Objection to the form of
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AFTERNOON SESSION 12:44 P.M. THE VIDEO OPERATOR: This begins

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videotape number 2 in the deposition of Gerald J.
Mossinghoff. The time is now 12:44 P.M. We are

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back on the record.
BY MR. GIZA:

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Q. A. Q.

Good afternoon. Good afternoon. Right before we broke for lunch, we --

you articulated a new opinion about the undisclosed prior art being inconsistent with or refuting a position that the applicant took. Was there any reason why -MR. YOVITS: BY MR. GIZA: Objection -- sorry.

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Q.

-- the opinion was not in your report? MR. YOVITS: Objection to the form of

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the question.

A.
opinion.

Yeah, I wouldn't say it's a new
I think it's inherent in my report.

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The fact is by quoting Mr. Peters, and by quoting and referring to the Digital Control case, think it's there.
BY MR. GIZA:
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Q. A.

So where exactly in your report is it? Well, I just -MS. ROBERTS: Objection to form.

A.

Just the fact that they're -- my

paragraph 18, I point out that they breached their Duty of.Candor and Good Faith after I've outlined that duty being defined in the original Rule 56, and in the 1992 amended Rule 56.

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So I point out what the duty is, but very specifically. And I said, I believe in my

opinion that the -- Mr. Geller and his attorney Mr. Edkin breached their Duty of Candor and Good Faith in failing to do it. So I think a fair reading of my report is that, having defined what the duty is, under Digital Control, and I said they breached the duty, that I was applying both the pre and the post--rule as I articulated that rule in the earlier parts of my report. Now, you indicated that you didn't think that was the case, and I wanted to be sure that this record was clear that I do believe that the two aspects of the 1992 rule were breached, and I used Digital Control, in effect, as authority for saying that, if you are urging the
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allowance of a claim, as you are when you file it in the Patent and Trademark Office, and the material not disclosed is inconsistent with that, that that does breach the Duty of Candor and Good Faith. So I wouldn't characterize as anew
position, but I want to make sure that that is my position, and articulate that at this deposition. BY MR. GIZA:

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Q.

So is there anywhere in your report

that you expressly discuss that the undisclosed prior art refutes, or is inconsistent with a position that the applicant took?
MS. ROBERTS: Objection, form.

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A.

I believe it's inherent in my report

where I do talk about the Digital Control case, which is where they make that.statement. And I quote, in my paragraph 11 on page 8, that, "Under the section information is material to patentability, when it is cumulative to information --- when it is not cumulative to information already of record, and it establishes by itself or in combination with other information a prima facie case of unpatentability

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or it refutes or is inconsistent with a position
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that the applicant takes in opposing an argument of unpatentability" -- I don't think he's done that -- "or asserting an argument of patentability." I think under Digital Control, they say that urging the allowance of a claim which you do when you file it in a patent application that has an oath and declaration with it, you're

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doing that.

So I'd say asserting an argument of

patentability is covered, and it's covered under Digital Control. That's why they say that

Digital Control has both -- the new and the old rule are still applicable.

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BY MR. GIZA:
Q. Okay. I understand your current

belief that it is inherent in your report. Is there anywhere that the argument that the undisclosed prior art refutes or is inconsistent with the position that the applicant took, expressly made in your report?
MS. ROBERTS: A. Objection, form.

I'd say yes, and it's expressly made

in the quotation of Mr. Stanley Peters, where he says, "The prior art patents cited in the 1067 patent in combination with Dasan and Siefert
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