WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 484

RESPONSE in Opposition re 475 MOTION for Attorney Fees filed by WI-LAN Inc.. (Attachments: # 1 Exhibit A - July 9 PM Tr, # 2 Exhibit B - 2013-03-21 Pre-Trial Hearing Transcript, # 3 Exhibit C - July 10 AM Tr, # 4 Exhibit D - Lanning report excerpt, # 5 Exhibit E - Email from Justin Cohen to Ajeet Pai (June 23, 2013), # 6 Exhibit F - July 12 AM Tr, # 7 Text of Proposed Order)(Weaver, David)

Exhibit F

1
1

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

2
3

WI-LAN, INC.

)

4

DOCKET NO. 6:10cv521
-vs-

)

5

Tyler, Texas
9:01 a.m.
July 12, 2013

6

ALCATEL-LUCENT USA, INC.,
ET AL

7

******************************************************

8

WI-LAN, INC.

)

)
DOCKET NO. 6:13cv252

9
10

-vsHTC CORPORATION,
ET AL

)
)

11
12
13
14
15

TRANSCRIPT OF TRIAL
MORNING SESSION
BEFORE THE HONORABLE LEONARD DAVIS,
UNITED STATES CHIEF DISTRICT JUDGE, AND A JURY

16
17
18
19
20
21
22

COURT REPORTERS:

MS. SHEA SLOAN
MS. JUDY WERLINGER
211 W. Ferguson
Tyler, Texas 75702
[e-mail]

23
24
25

Proceedings taken by Machine Stenotype; transcript was
produced by a Computer.

14
1

participate in 3GPP?

2

ANSWER:

No.

3

QUESTION:

Airspan never asked if it

4

could be part of 3GPP?

5

ANSWER:

6

(End of video clip.)

7

MR. APPLEBY:

8

Your Honor, Defendants call

Mark Lanning.

9
10

Correct.

THE COURT:

All right.

Has he been

sworn, counsel?

11

MR. APPLEBY:

I believe he has.

12

THE WITNESS:

Yes, sir.

13

THE COURT:

14

MR. APPLEBY:

Proceed.
Thank you, Your Honor.

15

MARK LANNING, DEFENDANTS' WITNESS, PREVIOUSLY SWORN

16

DIRECT EXAMINATION

17

BY MR. APPLEBY:

18

Q.

Good morning, Mr. Lanning.

19

A.

Good morning.

20

Q.

Could you tell the jury what you do for a

21

living?

22

A.

I'm a technical communications consultant, and

23

part of my consulting work is doing things like I'm

24

doing today.

25

Q.

And what area do you -- do you do technical

15
1
2
3

consulting in?
A.

Telecommunications in general.

The main

thrust of my work is with cellular telephone networks.

4

Q.

Where do you live, Mr. Lanning?

5

A.

In Greenville, Texas.

6

Q.

Can you tell us a little bit about yourself?

7

A.

Yes.

My wife and I, as I just said, live in

8

Greenville, Texas.

Over the past 38 years, our family's

9

grown to three children and ten grandchildren.

And

10

we're fortunate enough to have them all live in the

11

Dallas area, close to us.

12
13

Q.

Now, have you been retained in this case to

provide an expert opinion?

14

A.

Yes, I have.

15

Q.

And what were you asked to do?

16

A.

I was asked to review the Airspan patents and

17

provide opinions regarding validity of the asserted

18

claims in the Airspan patents.

19
20

Q.

And did you arrive at any opinions after that

analysis?

21

A.

Yes, I did.

22

Q.

So I want to come back to those opinions a

23

bit -- in a few minutes, but for now, I'd like to step

24

back and review your background.

25

Could you tell us when you started your

16
1
2

technical career?
A.

I've -- my technical career, I've designed or

3

developed communication telephone networks and equipment

4

all my adult life.

5

the U.S. Army Signal Corps.

6
7
8

Q.

It started in 1974, when I joined

So what were you doing in the Army that led

you to getting into the area of communications?
A.

Well, after about two years and three

9

different classes that I attended on communications, I

10

felt that was the best way to get my education instead

11

of choosing to go to college.

12

for all three courses.

13

I was the top graduate

After that, I was invited to join a small

14

group that was responsible for upgrading the White House

15

communications worldwide, for all of their encrypted

16

voice and data communications.

17
18
19

Q.

Can you tell us a little bit about -- a little

more about that White House assignment?
A.

Right.

We -- I worked in the -- a security --

20

a top secured NSA building, National Security Agency, in

21

Maryland; and we were responsible for providing all the

22

encrypted equipment for voice and data communications

23

for the White House.

24

So the President, when you see -- in those

25

days, he had the red phone in his office in the Oval

17
1

Office.

2

connections to Russia and different places when he would

3

have conversations.

4
5

We were behind the scenes making those

And one of the common questions I get asked
is, did we ever get in the Oval Office?

6

No, we were behind the scenes hooking the

7

wires up, so I've never been in the Oval Office to do

8

that.

9

But we were actually charged with providing

10

secure communications, which means they were all

11

encrypted.

12

conversations, they wouldn't be able to understand

13

what -- what was being discussed.

If someone were to eavesdrop on those

14

Q.

So how long did you stay in the Army?

15

A.

For three years.

16

Q.

And then what did you do then?

17

A.

Then when I was discharged from the Army, I

18

joined a company called IT&T.

19

competitor of AT&T, and I was part of the five-person

20

development group to develop a large system that would

21

connect all of the U.S. embassies with all of the

22

different federal offices in the U.S.

23

Back then, it was a

Then we called that system a message store and

24

forward system.

Today, we call those e-mail systems.

25

And it's essentially the same thing, but it was back in

18
1
2
3

1977 that we were working on that.
Q.

And did you also go to college during that

time?

4

A.

Yes, I did.

It took me a long time to get my

5

degree.

6

full-time, but I did get a degree.

I worked full-time and went to college

7

Q.

And what was that degree in?

8

A.

It was a Bachelor of Science in computer

9

science at SMU in Dallas.

10

Q.

So after you received that degree, where did

11

you go then?

12

A.

I went to Digital Switch Corporation.

You've

13

heard of DSC or Digital Switch Corporation in Plano,

14

Texas.

15

Q.

And what were you doing for Digital Switch

16

Corporation?

17

A.

That was the beginning of my cellular work on

18

cellular.

That was just the beginning of the

19

first-generation cellular networks; and my team, as well

20

as some other teams, were responsible for converting a

21

telephone switch that was made for fixed-line calls --

22

for a fixed-line code and calls and networks, into a

23

cellular switch for Motorola that they could sell all

24

over the world to use for cellular calls and cellular

25

networks.

19
1

Q.

So this was in 1983.

3

A.

Yes.

4

Q.

So that was quite some time ago.

2

5
6

Is that what you told

us?

What were

cellular phones like back then?
A.

Cellular phones that we started using

7

resembled more of a woman's purse.

As a matter of fact,

8

we called them bag phones.

9

a strap on them and a phone in the bag with the battery.

You actually had a handle or

10

A big improvement came along when they were

11

reduced to the size of a house brick, if you remember

12

some of those phones for some of you.

13

was battery that would burn your hand up when you used

14

it, and the other half was the phone.

Half the phone

15

Q.

Now, how long did you stay at Digital Switch

16

Corporation?

17

A.

'Til 198 -- 1987.

18

Q.

And where -- what did you do after that?

19

A.

Then I was hired by Telecom, a Tandem

20

Telecommunications division, designing more cellular

21

equipment that actually tracks all of us subscribers as

22

we move around the country so the cell phone and

23

cellular networks know how to find us and how to connect

24

calls.

25

When I left Tandem Computers, before I left, I

20
1

was the Vice President of Development and Systems

2

Engineering and had over a hundred engineers working for

3

me on cellular-type systems.

4

Q.

And how long did you stay there?

5

A.

Until 1991.

6

Q.

And what did you do then?

7

A.

I divided -- it was time to start my own

8

consulting business, and I have been consulting for

9

telecommunications providers and equipment manufacturers

10

since 1991.

11

Q.

Sir, I'd like to talk a little bit about your

12

experience as a consultant.

13

MR. APPLEBY:

14
15
16
17
18
19

If we could put the slides

up.
Q.

(By Mr. Appleby) And what are we looking at

here on this slide?
A.

This slide represents the various companies

that I've consulted with.
Up at the top left is Motorola.

That was my

20

first -- my first gig as a consultant, my first client.

21

And I worked with Motorola in Chicago to build their

22

next generation base station controller.

23

And you've heard a lot about different base

24

site or base station controllers.

It was a lot

25

different than the one that Ericsson brought in to show

21
1

you.

They were a lot bigger and had a lot different

2

type technology back then.

3

art back then.

4

But it was the state of the

After that, I was hired by British Telecom as

5

the network architect and program manager to roll out

6

their second generation cellular network.

7

the GSM network.

8
9
10

It was called

At that time, it was the largest cellular
network in the world, and quite a challenge.

That took

me seven years to complete that task.

11

Q.

What did you do for Nextel?

12

A.

Nextel was after British Telecom, and Nextel

13

called me to come in and work as a network architect to

14

help fix their network.

15

They had been hit with success, and everyone

16

was buying their phones; but they got to a point where

17

they couldn't add any new phones on to their network and

18

had to quit selling phones and didn't know why, and

19

Nortel didn't know why, one of their suppliers.

20

So I was asked to come in and re-architect

21

their networks so they could keep selling phones and

22

stay in business.

23

network and made a lot of changes so that they could

24

grow.

25

Q.

And so we re-architected their

And how about Sprint and Nokia?

What did you

22
1

do for them?

2

A.

3

activities with their CDMA network here in the states.

4
5

Similar type for Sprint, similar type

You've heard of the IS-95 a little bit.

We'll

talk about that a little bit later.

6

Nokia had to deal with their phones and how

7

their phones dialed 911, contacted the 911 and made sure

8

the emergency services worked correctly.

9

Q.

So now we've gone through your background.

10

I'd like to spend just a moment to talk about what we're

11

here to do today.

12

I think you mentioned earlier that you had

13

arrived at some opinions regarding patent validity; is

14

that right?

15

A.

Yes.

16

Q.

So I'd like to talk generally about what that

17

means.

18
19
20

And could you briefly explain what the basic
rules are for receiving a patent.
A.

Well, the basic rules are -- is that two

21

different boxes on the slide say you have to have a new

22

idea.

23

else's idea.

24
25

Can't be an old idea, and it can't be someone

And also that idea can't be obvious to those
that are working in the industry.

And that -- so it has

23
1

to be unique or novel, is the commonly used word.

2

Q.

So focusing on the first aspect that you have

3

to have a new idea, what does that mean?

4

something -- if there is something that is identical to

5

what's covered in the patent in the past, what would be

6

the ramifications of that?

7

A.

If

Then the patentee or the invent -- the alleged

8

inventor or the proposed inventor wouldn't be eligible

9

for a patent, because someone else came up with the idea

10

before they -- they did.

11
12

Q.

And -- and this other concept of obviousness,

what does that mean?

13

A.

Well, that means that their invention might

14

not be exactly the same that was proposed earlier, but

15

any modifications would be obvious to those working in

16

the industry, that any -- just an obvious modification

17

could then be the invention.

18

Q.

So if the United States Patent Office issues a

19

patent, can that -- can the validity of that patent be

20

challenged?

21

A.

Yes, it can.

And that was kind of new news to

22

me.

I haven't been doing this type of work forever.

I

23

just started about 10 years ago.

24

to me, that a patent could be reversible; that it could

25

be invalidated, if it was found after the -- after it

And that was new news

24
1

was issued, that there was indeed prior art that

2

existed, an idea was not indeed new.

3
4
5

Q.

And the -- and the jury in this case is --

would be entitled to find the patent invalid?
A.

Yes, for the asserted claims.

We're just

6

talking about -- it's not the whole patent of each of

7

these patents.

8

the asserted claims.

9

Q.

We're only discussing the validity of

Now, if a patent is found invalid, does that

10

mean that the United States Patent and Trademark Office

11

made a mistake?

12

A.

No.

I believe that the Patent and Trademark

13

Office, the Examiner in charge, looks at the information

14

that's provided by the inventors as potential prior art.

15

They do their own searches for patents.

But

16

they can only make decisions based on the information

17

they have.

18

And what we're going to discuss today is

19

information the Patent Examiner did not have, to make

20

their decision whether these Airspan patents were valid

21

or not.

22

Q.

So let's move to those opinions.

You had --

23

you had mentioned earlier that you had arrived at some

24

opinions in this case.

25

A.

What are those opinions?

My opinions are that the six asserted claims

25
1

of the overlay patents are invalid for various reasons

2

that I'll discuss later.

3

Q.

4

claims.

5

patents is invalid, right?

6

A.

And you've just focused on the asserted
You're not saying that every claim in those

No.

It would just be -- for the overlay

7

patents, there are six claims.

8

patent is Claim 2, Claim 5, Claim 9; for the '211

9

patent, it would be Claim 2 and Claim 5; for the '819

10
11

Specifically the '326

patent, it would be Claim 11.
Q.

So before we get to the reasons that you

12

believe that those claims are invalid, I'd like to --

13

I'd like to talk about what you looked at to make that

14

determination.

15

Sir, could you -- could you summarize for us

16

the materials that you considered in the course of your

17

work in this case.

18

A.

Sure.

As you can see on this slide -- I won't

19

go back through it.

It's similar to the other experts

20

that testified.

21

patents, and I look at all the claims.

22

want to get a good idea about what the whole patent's

23

about.

Of course, I have to look at the
In invalidity, I

24

So it's different for the non-infringement or

25

the infringement experts that just look at the asserted

26
1

claims.

2

for the patents, read the patents.

3

I look at all the claims and get a good feel

I also look at the patent file histories to

4

see what the inventors said about the patents, what they

5

were and what they were not in some cases.

6

have applied the Court's claim construction ruling.

7

And then I

Now, we've discussed that, and again, I'm not

8

that -- I'm somewhat new to this business.

9

know what that was at first.

I didn't

That's essentially a 20-

10

to 30-page document that's issued; and it was signed by

11

Judge Davis that said, for these certain terms, this is

12

the way you'll interpret those.

13

So when we see the Court's claim construction

14

ruling, really it's 20 to 30 pages I have in my hand

15

that tells me, for certain terms, how I should interpret

16

those.

17

Now, my work is a little different in the

18

bottom right-hand corner, because I need to look for

19

prior art.

20

different companies' hardware and software; I'm looking

21

for inventions and different papers.

22

And I just don't need to look at the

And that could include -- it could include

23

publications other than patents.

24

as well.

25

Q.

It can include patents

And what does the term prior art mean?

27
1

A.

Prior art means, as the name implies, that it

2

is documentation that is prior to the patents that we're

3

evaluating.

4

Q.

So let's talk about what patents specifically

5

that you are going to talk about here today.

6

in the slide there's something that you say -- that

7

you're calling the overlay code or the overlay patents.

8

Could you tell -- describe what we're looking

9
10

And I know

at?
A.

Yes.

These are the three patents in the

11

claims that I described.

As you recall, there's a

12

patent missing from this group.

13

These are the patents that I'm referring to as the

14

overlay patents.

It's the '327 patent.

15

Q.

And why is the '327 patent not included?

16

A.

Because I'm not making or providing any

17

invalidity opinions regarding the '327 patent.

18

providing invalidity opinions for these three patents.

19
20

Q.

Okay.

I'm only

So let's kind of drill down and talk

about the basis for your invalidity opinion.

21

First, I'd like to talk about a concept called

22

anticipation.

23

A.

Can you explain what that means?

Anticipation means that these -- that a prior

24

art document only anticipates if it discloses each and

25

every limitation of the claim.

So we have to find in

28
1

that document that it discloses or that it's inherent

2

with the disclosure.

3

Q.

And do you understand that the Defendants bear

4

the burden of proof of clear and convincing evidence for

5

invalidity?

6

A.

Yes.

7

Q.

And have you applied that in your analysis?

8

A.

Yes, I have.

9

Q.

So let's take a look at one of the claims, and

10

this is Claim 2 of the '326 patent.

11
12
13

And can you tell us and describe for us what
we're looking at?
A.

Okay.

I think -- I've been sitting in the

14

courtroom with you all week, and I think you could tell

15

me about these as well as I could, but let me go through

16

them.

17

I've -- I've separated it in three separate

18

groups in three different colors.

19

top group, this is the group that deals with orthogonal

20

code generator and the set of orthogonal codes, as well

21

as the first encoder for encoding those codes.

22
23
24
25

As you can see by the

The second that you see in pink or in the
orange color is the TDM encoder or the TDM techniques.
And then the last group at the bottom in
purple has to deal with the overlay codes and the second

29
1

encoder.

2

prior art as we go along for these three parts to kind

3

of help us follow along.

4

Q.

And I've color-coded different parts of the

So with -- with other witnesses in this case,

5

we've learned about the claims and the overlay code

6

patents, and they really have these -- these two Airspan

7

solutions.

8

Do you recall that testimony?

9

A.

Yes.

10

Q.

And one of those solutions was CDMA plus TDM

11

techniques.

Is that reflected in Claim 2, as we see

12

here?

13

A.

Yes.

The CDMA would be the first group, as

14

the letters at the top of the box say, CDMA for the

15

orthogonal codes.

16

I think it would be easiest to try to match

17

them up.

18

or vice versa.

19
20
21
22
23

If you see orthogonal code, you can think CDMA

And the TDM encoder and TDM techniques are in
the second box.
Q.

And then the other solution was CDMA plus

overlay codes.
A.

Yes.

Do we also see that here?
So for CDMA plus overlay codes, you

24

would take the first box and the third box, and it would

25

be those techniques together.

30
1
2

Q.

Okay.

Now I want to turn to -- kind of set

the stage for your invalidity analysis.

3

And you had mentioned that we're looking at

4

something called prior art, which is what is known

5

before the patents; is that right?

6

A.

Yes.

7

Q.

So I think the first thing I'd like to do is

8

talk about what that date is when the patents first

9

arrived at the scene.

10

When were the Airspan patents first filed?

11
12

A.

This is the earliest date for the Airspan

patents on the timeline, which is December 1996.

13

Q.

So when we're looking at prior art, we're

14

looking at things that existed prior to December of

15

1996; is that right?

16

A.

Yes, that were published and known.

17

Q.

And what did you do then?

18

A.

I divided -- it was time to start my own

19

consulting business, and I have been consulting for

20

telecommunications providers and equipment manufacturers

21

since 1991.

22

Q.

Sir, I'd like to talk a little bit about your

23

experience as a consultant.

24

MR. APPLEBY:

25

up.

If we could put the slides

31
1
2

Q.

here on this slide?

3
4

(By Mr. Appleby) And what are we looking at

A.

This slide represents the various companies

that I've consulted with.

5

Up at the top left is Motorola.

That was my

6

first -- my first gig as a consultant, my first client.

7

And I worked with Motorola in Chicago to build their

8

next generation base station controller.

9

And you've heard a lot about different base

10

site or base station controllers.

It was a lot

11

different than the one that Ericsson brought in to show

12

you.

13

type technology back then.

14

art back then.

They were a lot bigger and had a lot different

15

But it was the state of the

After that, I was hired by British Telecom as

16

the network architect and program manager to roll out

17

their second generation cellular network.

18

the GSM network.

19

It was called

At that time, it was the largest cellular

20

network in the world, and quite a challenge.

21

That took

me seven years to complete that task.

22

Q.

What did you do for Nextel?

23

A.

Nextel was after British Telecom, and Nextel

24

called me to come in and work as a network architect to

25

help fix their network.

32
1

They had been hit with success, and everyone

2

was buying their phones; but they got to a point where

3

they couldn't add any new phones on to their network and

4

had to quit selling phones and didn't know why, and

5

Nortel didn't know why, one of their suppliers.

6

So I was asked to come in and re-architect

7

their networks so they could keep selling phones and

8

stay in business.

9

network and made a lot of changes so that they could

10

And so we re-architected their

grow.

11

Q.

12

do for them?

13

A.

14

What did you

Similar type for Sprint, similar type

activities with their CDMA network here in the states.

15
16

And how about Sprint and Nokia?

You've heard of the IS-95 a little bit.

We'll

talk about that a little bit later.

17

Nokia had to deal with their phones and how

18

their phones dialed 911, contacted the 911 and made sure

19

the emergency services worked correctly.

20

Q.

So now we've gone through your background.

21

I'd like to spend just a moment to talk about what we're

22

here to do today.

23

I think you mentioned earlier that you had

24

arrived at some opinions regarding patent validity; is

25

that right?

33
1

A.

Yes.

2

Q.

So I'd like to talk generally about what that

3

means.

4
5
6

And could you briefly explain what the basic
rules are for receiving a patent.
A.

Well, the basic rules are -- is that two

7

different boxes on the slide say you have to have a new

8

idea.

9

else's idea.

Can't be an old idea, and it can't be someone

10

And also that idea can't be obvious to those

11

that are working in the industry.

12

to be unique or novel, is the commonly used word.

13

Q.

And that -- so it has

So focusing on the first aspect that you have

14

to have a new idea, what does that mean?

15

something -- if there is something that is identical to

16

what's covered in the patent in the past, what would be

17

the ramifications of that?

18

A.

If

Then the patentee or the invent -- the alleged

19

inventor or the proposed inventor wouldn't be eligible

20

for a patent, because someone else came up with the idea

21

before they -- they did.

22
23
24
25

Q.

And -- and this other concept of obviousness,

what does that mean?
A.

Well, that means that their invention might

not be exactly the same that was proposed earlier, but

34
1

any modifications would be obvious to those working in

2

the industry, that any -- just an obvious modification

3

could then be the invention.

4

Q.

So if the United States Patent Office issues a

5

patent, can that -- can the validity of that patent be

6

challenged?

7

A.

Yes, it can.

And that was kind of new news to

8

me.

I haven't been doing this type of work forever.

9

just started about 10 years ago.

I

And that was new news

10

to me, that a patent could be reversible; that it could

11

be invalidated, if it was found after the -- after it

12

was issued, that there was indeed prior art that

13

existed, an idea was not indeed new.

14
15
16

Q.

And the -- and the jury in this case is --

would be entitled to find the patent invalid?
A.

Yes, for the asserted claims.

We're just

17

talking about -- it's not the whole patent of each of

18

these patents.

19

the asserted claims.

20

Q.

We're only discussing the validity of

Now, if a patent is found invalid, does that

21

mean that the United States Patent and Trademark Office

22

made a mistake?

23

A.

No.

I believe that the Patent and Trademark

24

Office, the Examiner in charge, looks at the information

25

that's provided by the inventors as potential prior art.

35
1

They do their own searches for patents.

But

2

they can only make decisions based on the information

3

they have.

4

And what we're going to discuss today is

5

information the Patent Examiner did not have, to make

6

their decision whether these Airspan patents were valid

7

or not.

8

Q.

9
10
11

So let's move to those opinions.

You had --

you had mentioned earlier that you had arrived at some
opinions in this case.
A.

What are those opinions?

My opinions are that the six asserted claims

12

of the overlay patents are invalid for various reasons

13

that I'll discuss later.

14

Q.

15

claims.

16

patents is invalid, right?

17

A.

And you've just focused on the asserted
You're not saying that every claim in those

No.

It would just be -- for the overlay

18

patents, there are six claims.

19

patent is Claim 2, Claim 5, Claim 9; for the '211

20

patent, it would be Claim 2 and Claim 5; for the '819

21

patent, it would be Claim 11.

22

Q.

Specifically the '326

So before we get to the reasons that you

23

believe that those claims are invalid, I'd like to --

24

I'd like to talk about what you looked at to make that

25

determination.

36
1

Sir, could you -- could you summarize for us

2

the materials that you considered in the course of your

3

work in this case.

4

A.

Sure.

As you can see on this slide -- I won't

5

go back through it.

It's similar to the other experts

6

that testified.

7

patents, and I look at all the claims.

8

want to get a good idea about what the whole patent's

9

about.

Of course, I have to look at the
In invalidity, I

10

So it's different for the non-infringement or

11

the infringement experts that just look at the asserted

12

claims.

13

for the patents, read the patents.

14

I look at all the claims and get a good feel

I also look at the patent file histories to

15

see what the inventors said about the patents, what they

16

were and what they were not in some cases.

17

have applied the Court's claim construction ruling.

18

And then I

Now, we've discussed that, and again, I'm not

19

that -- I'm somewhat new to this business.

20

know what that was at first.

21

to 30-page document that's issued; and it was signed by

22

Judge Davis that said, for these certain terms, this is

23

the way you'll interpret those.

24
25

I didn't

That's essentially a 20-

So when we see the Court's claim construction
ruling, really it's 20 to 30 pages I have in my hand

37
1

that tells me, for certain terms, how I should interpret

2

those.

3

Now, my work is a little different in the

4

bottom right-hand corner, because I need to look for

5

prior art.

6

different companies' hardware and software; I'm looking

7

for inventions and different papers.

8
9
10

And I just don't need to look at the

And that could include -- it could include
publications other than patents.

It can include patents

as well.

11

Q.

And what does the term prior art mean?

12

A.

Prior art means, as the name implies, that it

13

is documentation that is prior to the patents that we're

14

evaluating.

15

Q.

So let's talk about what patents specifically

16

that you are going to talk about here today.

17

in the slide there's something that you say -- that

18

you're calling the overlay code or the overlay patents.

19

Could you tell -- describe what we're looking

20
21

And I know

at?
A.

Yes.

These are the three patents in the

22

claims that I described.

As you recall, there's a

23

patent missing from this group.

24

These are the patents that I'm referring to as the

25

overlay patents.

It's the '327 patent.

38
1

Q.

And why is the '327 patent not included?

2

A.

Because I'm not making or providing any

3

invalidity opinions regarding the '327 patent.

4

providing invalidity opinions for these three patents.

5
6

Q.

Okay.

I'm only

So let's kind of drill down and talk

about the basis for your invalidity opinion.

7

First, I'd like to talk about a concept called

8

anticipation.

9

A.

Can you explain what that means?

Anticipation means that these -- that a prior

10

art document only anticipates if it discloses each and

11

every limitation of the claim.

12

that document that it discloses or that it's inherent

13

with the disclosure.

14

Q.

So we have to find in

And do you understand that the Defendants bear

15

the burden of proof of clear and convincing evidence for

16

invalidity?

17

A.

Yes.

18

Q.

And have you applied that in your analysis?

19

A.

Yes, I have.

20

Q.

So let's take a look at one of the claims, and

21

this is Claim 2 of the '326 patent.

22
23
24
25

And can you tell us and describe for us what
we're looking at?
A.

Okay.

I think -- I've been sitting in the

courtroom with you all week, and I think you could tell

39
1

me about these as well as I could, but let me go through

2

them.

3

I've -- I've separated it in three separate

4

groups in three different colors.

5

top group, this is the group that deals with orthogonal

6

code generator and the set of orthogonal codes, as well

7

as the first encoder for encoding those codes.

8
9

As you can see by the

The second that you see in pink or in the
orange color is the TDM encoder or the TDM techniques.

10

And then the last group at the bottom in

11

purple has to deal with the overlay codes and the second

12

encoder.

13

prior art as we go along for these three parts to kind

14

of help us follow along.

15

Q.

And I've color-coded different parts of the

So with -- with other witnesses in this case,

16

we've learned about the claims and the overlay code

17

patents, and they really have these -- these two Airspan

18

solutions.

19

Do you recall that testimony?

20

A.

Yes.

21

Q.

And one of those solutions was CDMA plus TDM

22

techniques.

Is that reflected in Claim 2, as we see

23

here?

24
25

A.

Yes.

The CDMA would be the first group, as

the letters at the top of the box say, CDMA for the

40
1

orthogonal codes.

2

I think it would be easiest to try to match

3

them up.

4

or vice versa.

5
6
7
8
9

If you see orthogonal code, you can think CDMA

And the TDM encoder and TDM techniques are in
the second box.
Q.

And then the other solution was CDMA plus

overlay codes.
A.

Yes.

Do we also see that here?
So for CDMA plus overlay codes, you

10

would take the first box and the third box, and it would

11

be those techniques together.

12
13

Q.

Okay.

Now I want to turn to -- kind of set

the stage for your invalidity analysis.

14

And you had mentioned that we're looking at

15

something called prior art, which is what is known

16

before the patents; is that right?

17

A.

Yes.

18

Q.

So I think the first thing I'd like to do is

19

talk about what that date is when the patents first

20

arrived at the scene.

21
22
23
24
25

When were the Airspan patents first filed?
A.

This is the earliest date for the Airspan

patents on the timeline, which is December 1996.
Q.

So when we're looking at prior art, we're

looking at things that existed prior to December of

41
1

1996; is that right?

2

A.

Yes, that were published and known.

3

Q.

Okay.

4

Have you seen that combination that Dr.

Wells asserts in the prior art?

5

A.

Yes, I have.

6

Q.

And where have you seen that?

7

A.

One of the references would be in the

8
9
10
11

Tiedemann reference.
Q.

So let's talk about that.

And who is

Tiedemann?
A.

Tiedemann is a Qualcomm employee.

And what

12

I've shown here is a picture of Qualcomm and what this

13

picture is, is the co-founders are celebrating their

14

10th anniversary, and this occurred in 1985.

15

Qualcomm had been around since 1975.

16

I've included this picture, to show that Qualcomm has

17

been around a long time.

18
19

Q.

And that's why

So let's talk specifically about this

Tiedemann reference, which is Defendants' Exhibit 124.

20
21

So

Can you tell us what we're looking at?
A.

Yes.

This is a document that Mr. Tiedemann

22

presented at a telecommunications conference that was

23

held in Boston in 1994.

24

if you look at the top right, shows that it's Edward G.

25

Tiedemann, Jr., and he is employed by Qualcomm out of

And as I mentioned, the name,

42
1

San Diego.

2
3

Now, the title of the -- of the document that
he provided was CDMA for Cellular and PCS.

4

In the bottom right-hand corner, you see in

5

the highlighting that Mr. Tiedemann is explaining that

6

his solution for PCS, this personal communications

7

system, is an extension to IS-95.

8
9

Q.

in this Tiedemann paper.

10
11

So I'd like to talk about what you found here

Did you find that Tiedemann describes CDMA
using orthogonal codes and orthogonal code generators?

12

A.

Yes, I did.

13

Q.

Can you explain that?

14

A.

As shown on this slide, you see the text

15

that's highlighted, and it says the orthogonal covering

16

codes are a set -- are the set of 64-ary Walsh

17

functions.

18

squared, or they're a square box of 64, and that's the

19

same 64 Walsh codes that I showed you on the slide.

20
21
22
23

In English, that means that there are 64

So that 64-ary is probably not a common word
many of us use, but that's what is meant by that.
Q.

And did you also find that TDM -- or that

Tiedemann described TDM techniques?

24

A.

Yes, I did.

25

Q.

And could you explain that?

43
1

A.

Yes.

And if this looks similar, this is very

2

similar to the language that I showed you for the

3

IS-95-A specification.

4

Mr. Tiedemann is describing the paging channel that I

5

talked about.

6

milliseconds' duration.

7

And here at the top,

It's divided into slots of 80

So this is the interval of time, are those

8

80-millisecond slots.

9

is a period of repetition, and that would be the frame.

10

And then he describes that there

And those are assigned slots.

11

And then he discusses that there's hash

12

functions that are used on the paging channel for a

13

specific slot that the mobile and the base station are

14

to use.

15
16
17

The mobile is to monitor.
So you can see -- and that is almost the exact

language out of the IS-95-A specification.
Q.

And so did you find that the Tiedemann

18

document itself described TDM techniques under the

19

Court's construction?

20

A.

Yes.

21

Q.

And did you also find that Tiedemann described

22

overlay codes?

23

A.

Yes.

24

Q.

And could you explain that?

25

A.

As you can see -- as you can see, it's pretty

44
1

easy to find.

2

called overlay encoding, and overlay encoding adds

3

additional orthogonal channels.

4

It actually says there is a technique

And then he actually refers to an overlay

5

encoder block to show how he's modifying IS-95, or

6

extending it to support these new PCS system

7

requirements.

8

Q.

9
10

4-2.

And so there is a diagram in Tiedemann, Figure

Can you explain what we're looking at?
A.

Yes.

Mr. Tiedemann provided this block

11

diagram in his paper on the left.

12

attention first to the top box on the blue -- it's here

13

(indicating) -- that says Walsh Code generator.

14

those are those Walsh codes.

15

codes are generated.

16

whole page.

17

And I draw your

And

That's where the Walsh

Those 64-ary Walsh codes are that

He also then shows where the overlay encoder

18

and generator is at.

19

page a figure, Figure 7A, from the overlay patents.

20

And now I've also included on the

As you can see, I've colored-coded to show

21

that the overlay code of patents have overlay code

22

generator.

That's in purple.

23

And we also have the RW code generator here.

24

The RW, remember it stands for Rademacher-Walsh codes.

25

Those are the Walsh codes that match the Walsh codes on

45
1

the left, and the encoder.

2

Q.

I would now like to go through the claims of

3

the asserted patents and see if we can find each one of

4

the elements, and I have some boards to do that.

5
6

MR. APPLEBY:

Your Honor, may I set up

one of the boards?

7

THE COURT:

8

MR. APPLEBY:

9

microphone, so I can come up to the board.

10

Q.

Yes, you may.
And I will wear the

(By Mr. Appleby) With regard to the Tiedemann

11

reference itself, did you find that the Tiedemann

12

reference disclosed what we call the preamble of Claim

13

1?

14
15

We're looking at Claim 2, and you understand
Claim 2 is dependent on Claim 1?

16

A.

That's correct.

17

Q.

And what does that mean?

18

A.

That's a shorthand way, that's another one of

19

those things I had to learn.

20

all the claims as independent claims.

21

Why didn't they just write

Well, it's a shorthand way of writing a claim.

22

So if you see a dependent claim, like we have here in

23

Claim 2, you just include everything with Claim 1, like

24

it was all written for Claim 2, and then add the part

25

for Claim 2.

At least that's the easiest way I use to

46
1

remember it.

2

It's just so they don't use a lot of pages, is

3

the way I figure it of rewriting the same text over and

4

over.

5
6

So if you have a dependent claim, we have to
first look at the components of the claim it depends on.

7
8

And it says it depends on Claim 1, so that's
what we'll look at first.

9

Q.

10

in Tiedemann?

11

A.

Yes, I did.

12

Q.

And could you explain that?

13

A.

Tiedemann is -- has -- you need to turn it a

14

little more.

15

Q.

Sorry, Mr. Lanning.

16

A.

I'm struggling to stay at the microphone and

17
18

Okay.

So did you find the preamble of Claim 1

seeing the slide.

There you go.

Tiedemann describes a transmission controller

19

for processing the data items transmitted over the

20

wireless link.

21

paging channel.

22
23
24
25

Well, that would be at least for the

And then to the subscriber terminal, that's to
the mobile phone.
And then a single frequency channel, the CDMA
system that he's describing uses a single frequency

47
1

channel, and it's transmitting data items pertaining to

2

the plurality of frames, meaning to the different cell

3

phones.

4

Q.

5

So can I check this that was found in the

preamble?

6

A.

Yes.

7

Q.

So did you find an orthogonal code generator

8
9

in the Tiedemann reference?
A.

Yes, and I pointed to it.

10

again.

11

I'll point to it

That would be the Walsh code generator that you

see right there in blue.

12

Q.

So can I check the orthogonal code generator?

13

A.

Yes.

14

Q.

And did you find a first encoder?

15
16

This is the

first encoder element in the Tiedemann reference?
A.

Yes.

And I'll circle this one, and it is a

17

circle with a plus in it.

18

the arrow that goes from the Walsh code generator,

19

that's where it goes down and it's encoded with other

20

codes.

21

That's the encoder.

You see

That's what that means.
Specifically, it's an exclusive -- or a gate,

22

but we did put a circle with a plus in there.

23

means it's included.

24

Q.

And may I check that element?

25

A.

Yes.

That

48
1

Q.

And did you find a TDM encoder arranged to

2

apply time division multiplexing techniques in the

3

Tiedemann reference?

4

A.

Yes.

As I explained earlier, this slide shows

5

that this is the TDM techniques that they're explaining

6

here; that it has all three components.

7

It has -- it has the interval of time; it has

8

the predetermined frame; and it has one or more

9

characteristics associated with the data item, which

10

would be the actual identification of the cell phone.

11

Q.

And so can I check that off?

12

A.

Yes.

13

Q.

Now, moving down the Claim 2, did you find --

14
15
16
17
18

MR. APPLEBY:

Can I have the slide back

up?
Q.

(By Mr. Appleby) Did you find an overlay code

generator in the Tiedemann reference?
A.

19

One more slide.
Yes.

There it is.

If we can look -- if we look at this box

20

in purple, it actually says overlay code encoder as

21

required by the claim.

22

Q.

So may I check that box?

23

A.

Yes.

24
25

I should be clear.

This box has both the

overlay code generator, which is the first part of Claim

49
1

2, and it has the second encoder, which is the overlay

2

encoder.

3

Q.

So I can check both of those?

4

A.

Yes.

5

Q.

And Claim 2 is a preamble, a transmission

6
7
8

controller as claimed in Claim 1.
A.

Do we have that?

Yes, because we have the same transmission

controller in Claim 1 that I described.

9

Q.

So I may check that?

10

A.

Yes.

11

Q.

And in the Tiedemann reference, are the -- is

12

the overlay code -- is the overlay encoding done on the

13

same channels that the TDM techniques are done?

14

A.

No, they're not.

15

Q.

So they are on separate channels?

16

A.

Yes.

They're all orthogonal channels, but

17

because the way a cellular system needs to work, you

18

have two different types of channels, at least two.

19

type are the control channels and paging channel is part

20

of the control channels.

Then you have what we refer to

21

as the traffic channels.

The traffic channels are used

22

to carry the voice conversation.

23

One

And so there's two different types of

24

channels.

And so the overlay encoder is used in

25

Tiedemann for the traffic channels, and the TDM encoder

50
1
2

is used for the paging channel.
Q.

And looking back at our figure, did you -- did

3

you compare Figure 4-2 from Tiedemann that we see from

4

the overlay patents?

5

A.

Yes, I did.

And you can see there the

6

comparisons with the color codes for the relevant

7

portions of each diagram.

8
9

Q.

And we see the overlay code generator and

second encoder in that comparison?

10

A.

Yes.

11

Q.

Where is that?

12

A.

The overlay encoder with the -- in the purple

13

box here, and you see the overlay code generator and

14

encoder here in the pink.

15
16
17

Q.

And we also see the orthogonal code generator

and first encoder in that comparison?
A.

Yes.

Here is the overlay code generator.

18

Here's the overlay code encoder.

19

code generator.

20

(indicating).

21

Q.

Here is the overlay

Here is the overlay code encoder

So now I'd like to -- so now that we've

22

checked all of Claim 2, what is your opinion as to

23

whether Claim 2 is anticipated by the Tiedemann

24

reference?

25

A.

The '326 patent, Claim 2 is anticipated,

51
1

because I've shown you that it actually describes each

2

and every limitation of Claim 2, which includes Claim 1.

3
4
5

So my opinion is that Tiedemann anticipates
Claim 2.
Q.

Okay.

6

claim.

7

So now I'd like to move to another

Asserted claim?

patent, Claim 2.

8
9
10
11

I'm going to move to the '211

And could you tell us what's different -- what
difference, if any, exists between the '211 patent,
Claim 2 and the Claim 2 we just saw in the '326 patent?
A.

I realize you've heard this before, but if you

12

can think of the '326 as the transmitter or the base

13

station.

14

mobile phone.

The '211 claims are the receiver for the
And that's why you see a difference.

15

Instead of an encoder, there's a decoder.

16

has to do the reverse function at the mobile phone.

17
18
19
20

Q.

Okay.

It

So did you find the preamble of Claim 1

in -- of the '211 patent in Tiedemann?
A.

Yes, I did, for the same reasons I specified

earlier for the '326, Claim 2.

21

Q.

So may I check that?

22

A.

Yes.

23

Q.

And did you find the orthogonal code generator

24

and decoder elements of Claim 2 in the Tiedemann

25

reference?

52
1
2

A.

Yes, I did.

And, again, to remind you that's

that Walsh code generator and the encoder right there.

3

Q.

And so may I check those?

4

A.

Yes.

5

Q.

And did you find a TDM decoder disclosed in

6
7
8
9
10

the Tiedemann reference?
A.

Yes, I did, for the same reasons.

Again,

that's the paging channel.
Q.

And the Tiedemann reference discusses both the

base station and the mobiles --

11

A.

Yes.

12

Q.

-- is that correct?

13

A.

Yes.

14

Q.

And so '211 would be directed to the mobiles,

15

and the '326 is directed to the base station?

16

A.

That's correct.

Yes.

17

Q.

So moving down to Claim 2, do we find a

18

reception controller as in Claim 1 in the Tiedemann

19

reference?

20

A.

Yes.

21

Q.

And why is that?

22

A.

Tiedemann describes it, and this would be the

23

same controller that we discussed earlier.

24

block diagram is the controller, essentially.

25

Q.

This whole

And did we -- did you find an overlay code

53
1

generator and second decoder in Tiedemann for Claim 2 of

2

the '211 patent?

3
4

A.

Yes.

This right here would be that box.

It

performs both of those functions.

5

Q.

And may I check those?

6

A.

Yes.

7

Q.

So what is your opinion as to whether Claim 2

8
9
10
11
12

of the '211 patent is anticipated by Tiedemann?
A.
Claim 2.
Q.

Okay.

So let me move to another claim.

Let

me go to the '211 patent, Claim 5.

13
14

The Tiedemann indeed does anticipate the '211,

And this is -- the '211 patent is directed to
a subscriber terminal or mobile unit, right?

15

A.

Yes.

16

Q.

So let's go through this.

17
18

Did you find a subscriber terminal of the
wireless communication system in Tiedemann?

19

A.

Yes, I did.

20

Q.

And why is that?

21

A.

It essentially is this whole block diagram

22

that it's describing.

23

Q.

So may I check that?

24

A.

Yes.

25

Q.

And did you find the orthogonal code generator

54
1

and first decoder of Claim 5?

2

different from what we saw before?

3

A.

No.

4

Claim 2.

5

Are these elements any

They're the same elements as the '211,

the same.

6
7
8
9
10
11

So they should look familiar to you.

They are

So I believe we should check those as well.
Q.

And is the TDM decoder element any different

in Claim 5 from the element we saw in Claim 2?
A.

No.

It's the same as Claim 2.

So we should

check that as well.
Q.

And is -- the overlay code generator and

12

second decoder elements, are they any different than

13

what we saw in Claim 2?

14
15
16

A.

No.

So, again, we should be able to check

those.
Q.

Now, this last element we see is a different

17

color.

18

element?

19

A.

Is that because Claim 5 has added another

Yes.

This essentially is the only difference

20

between Claim 2 and Claim 5.

21

Rademacher-Walsh codes.

22
23
24
25

Q.

Claim 5 adds the use of

And did you find those in the Tiedemann

reference?
A.

Yes.

As the box actually says, there's the

Walsh codes that are used for that.

And Walsh codes and

55
1

Rademacher-Walsh codes are the same.

Some people just

2

call them by both names or just one name for short.

3

Q.

So in -- can I check that?

4

A.

Yes.

5

Q.

And so what is your opinion as to whether

6

Claim 5 of the '211 patent is -- is anticipated by the

7

Tiedemann reference?

8

A.

9

patent.

10

Q.

Tiedemann anticipates Claim 5 of the '211

Okay.

Now I'd like to move to another claim.

11

And this is the '326 patent, Claim 5.

12

these elements that we see in Claim 5 the same as the

13

elements that we saw in the '326 patent, Claim 2?

14

A.

Yes.

And are any of

If you look at the -- from the

15

beginning, it's referred to as the preamble, to the

16

limitations all the way down the blue, the orange, and

17

the purple.

18

the same, if not exactly the same, as the '326, Claim 2.

19

Q.

All of those limitations are essentially

And so have we found those elements in the

20

Tiedemann reference for the same reasons that you gave

21

previously?

22

A.

Yes.

So I believe we can check all the way

23

down until you get to the last two colors.

24

be different.

25

Q.

Those will

And with respect to the last two, I'd actually

56
1

like to start with the last one, the green one:

2

the set of orthogonal codes comprise a set of

3

Rademacher-Walsh codes.

4
5

Wherein

Did you find that in Tiedemann?
A.

Yes, I did.

As I just discussed for the '211,

6

Claim 5, that the Rademacher-Walsh codes are there,

7

again, as described in this box.

8

Q.

So may I check that?

9

A.

Yes.

10

Q.

Now, the last element that we have yet to

11
12

check is storage.
A.

What is that directed to?

This limitation requires that the set of

13

orthogonal codes -- and what it means by the set of

14

orthogonal codes -- in this case, it would be those 64

15

orthogonal codes that are 64-bits long -- are stored.

16

And those are stored in this Walsh code generator.

17
18
19

Q.

And why do you believe that the Tiedemann

reference discloses storage?
A.

Because the 64 Walsh functions are fixed.

20

It's very straightforward, and it's the only feasible

21

way to actually use the 64 Walsh code functions, is to

22

just simply store them in memory and pull them out.

23

It's a very small amount of memory.

It's

24

only -- it only takes 512 bytes of memory to store all

25

64 of these codes.

57
1

To give you an idea -- you probably don't have

2

anything to relate that to.

3

on your smartphone or your computer or one of the kids

4

have it stored, it uses at least 3 million bytes for one

5

of those songs.

6

If you have a song stored

To store these Walsh codes would be only 512

7

bytes.

So if you were to play 512 bytes, that's

8

3/100ths of a second, to give you a comparison of how

9

small it is to store this chip.

10

Q.

Okay.

11

A.

Yes.

12

Q.

So what is your opinion as to whether the

13

So may I check that?

'326, Claim 5 is anticipated by Tiedemann?

14

A.

15

patent.

16

Q.

Tiedemann anticipates Claim 5 of the '326

Okay.

Sir, I think we've gone through four of

17

the six asserted claims, and we've found those to be

18

anticipated by Tiedemann.

19

in the timeframe, can we explain what we have on this

20

slide?

21

A.

And just to put -- put this

This shows -- we've already looked at and saw

22

where IS-95 came out in 1993, and IS-95-A in 1995.

Now,

23

I've added Tiedemann on the timeline to show that it was

24

published in 1994, the middle of 1994, which is more

25

than two years, two-and-a-half years before the Airspan

58
1

patents.

2

Q.

3

obviousness.

4

you explain that for us?

5

A.

Okay.

So I want to move to your opinions on

What does -- what does obviousness -- can

Obviousness is different than anticipation.

6

If you recall, for anticipation, the document has to

7

disclose each and every limitation.

8
9

For obviousness, there's -- there's two tests.
And obviousness can be for one document or one

10

publication, and it would be obvious to a person of

11

ordinary skill in the art that you could make extensions

12

or that the modification could be made to meet the same

13

requirements listed by the invention.

14

Or there's another way to show obvious (sic),

15

and that's where I can combine two or more references

16

together to show that those two references would be

17

obvious to be combined together that would then disclose

18

or describe the invention that's in the claims.

19
20
21

Q.

So do you have an opinion as to who a person

of ordinary skill in the art would be?
A.

A person of ordinary skill in the art is a

22

legal definition that I need to use.

It's for a

23

hypothetical person.

24

means a person that's knowledgeable, has an appropriate

25

education, working in the industry looking at these

But typically, just in English, it

59
1

documents.

2

I've provided the specific type of degree and

3

education that they need to have, in my mind, and the

4

type of experience.

5

In the second bullet, you'll see that I

6

explain that they need to have two or more years

7

experience in the design and configuration of cellular

8

networks.

9

cellular network is like.

10

They need to have some knowledge of what a

And they also need to be familiar with the

11

second-generation and third-generation cellular --

12

cellular networks.

13

ordinary skill also has access to all the prior art.

14
15
16
17

And this hypothetical person of

It's like that they have a knowledge and know
that that prior art exists.
Q.

So let's turn to Claim 9 and -- of the '326

patent and Claim 11 of the '819 patent.

18

And are those dependent claims?

19

A.

Yes.

20

Q.

And Claim 9 of the '326 patent depends on

21

Yes, they are.

Claim 5?

22

A.

That's correct.

23

Q.

And we've already found that Claim 5 has all

24

the elements that Tiedemann shows, all the elements of

25

Claim 5; is that right?

60
1

A.

That's correct.

2

Q.

So what does Claim 9 require?

3

A.

Claim 9 requires that a -- that the control

4

channel, or the acquisition channel, as specifically

5

listed here, includes overlay codes instead of time

6

slots, or TDM encoders, or that TDM techniques as we

7

describe.

8

Q.

And is that disclosed by Tiedemann?

9

A.

No, it's not.

10

Q.

And why do you say that?

11

A.

Tiedemann applies the overlay codes only to

12

the traffic channels for increasing the data-rate or

13

slowing the data-rate down on the traffic channels that

14

I described that were used for either data connections

15

or voice connections.

16

applying overlay codes to a paging channel.

17

Q.

Tiedemann does not describe

Why do you believe Claim 9 -- I should say do

18

you believe that Claim 9 would be obvious in light of

19

Tiedemann?

20

A.

Yes.

This is the first test.

This would be

21

just a single reference, obviousness.

One of ordinary

22

skill in the art, reading Claim 9 in Tiedemann, would

23

understand that it would be obvious to modify Tiedemann

24

to just apply the overlay codes to the paging channel,

25

because that -- or instead of the TDM encoder because

61
1

overlay codes are already being used.

2

is there.

3

diagram.

4
5

Q.

All the circuitry

As you saw, that circuitry was in the block

And so is it your conclusion that Claim 9 is

obvious in light of the Tiedemann reference?

6

A.

Yes.

7

Q.

So let me move to Claim 11 of the '819 patent.

8
9

And Claim 11 depends from Claim 7 of that
patent; is that right?

10

A.

Yes, that's correct.

11

Q.

Now, looking at Claim 7, are -- the elements

12

in Claim 7, have we seen those elements already today?

13
14

A.

These are all of the elements -- these

elements are in Claim 5 of the '326, I believe.

15
16

Yes.

Q.

Yes.

And we have already found all of those

elements in the Tiedemann reference; is that right?

17

A.

That's correct, yes.

18

Q.

And Claim 11, what does Claim 11 add to Claim

A.

Claim 11 is like the opposite of Claim 9.

19
20

7?

21

And if we can read it, it says:

A TDM encoder

22

arranged to apply time division multiplexing techniques,

23

TDM techniques, to data items sent over the traffic

24

channel.

25

Well, remember Tiedemann puts TDM on the

62
1

paging channel, but he doesn't put TDM on the traffic

2

channels.

3
4
5
6

He put overlay codes.
So this is somewhat just the reverse of Claim

9.
Q.

And so did you find Claim 11 disclosed by

Tiedemann?

7

A.

No, I did not.

8

Q.

And why not?

9

A.

Because Tiedemann does not have a TDM encoder

10

that would be used for the traffic channels.

11

just the overlay encoder.

12
13

Q.

He uses

Do you believe that Claim 11 would have been

obvious in light of Tiedemann?

14

A.

Yes, I do.

15

Q.

And why is that?

16

A.

Because, again, the same circuitry is all

17

there.

18

add that TDM functionality, all those slots that we saw

19

on the paging channel, if they wanted to just add slots

20

on the traffic channels, they would just simply use the

21

same circuitry to do that.

22

Q.

If one of ordinary skill in the art wanted to

And what would the motivation or purpose of

23

one of ordinary skill in the art have for modifying

24

Tiedemann that way?

25

A.

If they wanted to actually divide the traffic

63
1

channels into different slots so that they could support

2

different users for each overlay code, that would be the

3

motivation to --

4

Q.

And --

5

A.

-- make that modification.

6

Q.

If Tiedemann shows that TDM encoder on a

7

control channel, why would it have been obvious to one

8

of skill in the art to use that on a traffic channel?

9

A.

Again, for the same reasons you have the TDM

10

encoder on the paging channel, so that you can actually

11

divide that orthogonal channel up into multiple time

12

slots.

13

Q.

If -- would one of ordinary skill in the art

14

recognize that if you could use a Tiedemann -- TDM

15

encoder on a paging channel, that you could also use it

16

on a traffic channel?

17

A.

18

essentially.

19

this encoder or this encoding circuitry for my traffic

20

channels.

21

Q.

Yes.

It's -- everything is the same

It's just the choice, do I want to engage

In looking back at Claim 9, would one of

22

ordinary -- Claim 9 of the '326 patent, would one of

23

ordinary skill in the art recognize that if you did

24

overlay coding on a traffic channel, you could also use

25

that on a control channel?

64
1

A.

Again, it's all the same circuitry.

Tiedemann

2

has described how you do it on a traffic channel.

3

there was a reason that I wanted to divide up the

4

channel for the paging channel using overlay codes, I

5

could do the same thing with the same circuitry, same

6

block diagram.

7
8

Q.

Okay.

11

So now I'd like to move to another

reference.

9
10

If

Can you describe what we're looking at here on
Slide 28?
A.

This was a patent that was -- the inventor is

12

Gitlin, Richard Gitlin.

13

Gitlin.

14

I should say Lucent.

15

He was an employee of Bell Labs.

16

pioneers.

17
18
19

You've heard of Dr. Richard

He was part of the Bell Labs or the Alcatel -I think it was in the Lucent days.
He's one of the

And this is a patent that describes how
CDMA -- how to combine CDMA with TDM.
Q.

20

So let's look forward -- move ahead one slide.
And can you describe what Gitlin -- what

21

Gitlin disclosure exists, if any, about CDMA plus TDM

22

techniques?

23

A.

All right.

If we look -- so the CDMA or the

24

orthogonal codes, the CDMA, is shown here.

And it's

25

labeled code space and it's C0 through C7.

Those refer

65
1

to 7 -- 8 different codes.

2

8 different codes.

3

Since we start at 0, there's

Then he also has time slots going sideways on

4

the horizontal from S0 to S6.

So he's combining codes

5

with slots.

6

Q.

7

by the Court?

8

A.

Yes.

9

Q.

Could you explain that?

10

A.

You have TDM techniques.

CDMA plus TDM.

And did you find TDM techniques as construed

So there's a frame.

11

So we need three pieces, right?

12

we need this slot, or we need the increment of time.

13

We need a --

And we see all kinds of different slots.

This

14

would be the slots (indicating) that are shown from S0

15

to S6.

16

through S6.

17

And then the frame period would be from S0
That's the frame period.

And the third thing we need for that

18

construction -- for the Court's construction for TDM

19

techniques is a characteristic of the data.

20

you look down at the bottom of Gitlin, you'll see that

21

the characteristics of data have to do with whether you

22

have high-speed users, medium-speed users, or low-speed

23

users, and also the user ID.

24
25

Well, if

So there's two different characteristics
associated with the data item.

66
1

Q.

And why would the users need different speeds?

2

A.

Users have different speeds, want to pay

3

different amounts, or they may only want to send a fax

4

part of the time, and then want lower speed for voice

5

calls or lower speed data connections at other times.

6

Q.

Okay.

So let's look quickly at the claim --

7

actually, yeah, let's look quickly at the claim

8

language.

9

And did you find a -- the preamble satisfied

10

by -- actually, it says Gitlin plus Tiedemann.

11

would you combine Gitlin and Tiedemann?

12

A.

Why

Because Gitlin doesn't have the overlay codes.

13

So, essentially, for at least the reason -- there's two

14

different reasons; but the main reason is that Gitlin

15

doesn't describe overlay codes.

16

earlier, Tiedemann does.

17

But as I showed you

So in combining Gitlin with Tiedemann, Gitlin

18

gives us the CDMA plus TDM; Tiedemann gives us the

19

overlay codes.

20

Additionally, Tiedemann also gives us the

21

Walsh codes, if we need to show for the orthogonal codes

22

or CDMA.

23

Tiedemann gives it -- gives us the orthogonal codes.

24
25

Q.

I have it in two places.

Okay.

Both Gitlin and

So does the Gitlin plus Tiedemann

combination disclose the preamble of Claim 1?

67
1

A.

Yes.

2

Q.

And may I check that?

3

A.

Yes.

4

Q.

And does -- did you find in Gitlin an

5

orthogonal code generator -- let me start over.

6

Did you find in a combination of Gitlin and

7

Tiedemann an orthogonal code generator and a first

8

encoder?

9

A.

Yes.

10

Q.

And can you explain that?

11

A.

That -- well, we can look at it two ways, but

12

it's at least in Tiedemann.

13

that there is an orthogonal code generator and the first

14

encoder.

15

As I've already explained,

And if you remember, it's the box with Walsh

16

encoder or Walsh generator, and then the circle with the

17

plus in it.

18

Q.

And we saw C -- CDMA in Gitlin, right?

19

A.

Yes.

20

Q.

Okay.

21

A.

Yes.

22

Q.

And did we find a TDM encoder arranged to

23
24
25

And Gitlin is for CDMA as well.
May I check those?

apply time division multiplexing techniques in Gitlin?
A.

Yes, we did.
As you can see with the slots that are here,

68
1

this would be the TDM encoder.

We also find a TDM

2

encoder in Tiedemann for the paging channels.

3

doubled up there as well for the TDM encoder.

So we've

4

Q.

And may I check that?

5

A.

Yes.

6

Q.

And the elements of Claim 2, the overlay code

7

generator and the second encoder, where do we find

8

those?

9

A.

Those are found in Tiedemann and not Gitlin.

10

Q.

Okay.

11
12
13

And why would it have been obvious in

your mind to combine Gitlin and Tiedemann?
A.

Because both of these patents are in regard to

cellular systems, specifically, CDMA wireless systems.

14

And Gitlin was from Bell Labs, AT&T Bell Labs.

15

Tiedemann was from Qualcomm.

16

the early 1990s, they were working together on CDMA

17

solutions.

18

And as you've heard, in

So there's multiple reasons why one of

19

ordinary skill in the art would combine Gitlin with

20

Tiedemann.

21

Q.

Okay.

So may I check the elements of Claim 2?

22

A.

Yes.

23

Q.

And so what is your conclusion about whether

24

Claim 2 of the '326 patent is obvious over Gitlin plus

25

Tiedemann?

69
1
2
3

A.

The combination of Gitlin plus Tiedemann

invalidates Claim 2 of the '326 patent.
Q.

And if we look at Claim 5 of the '326, we

4

found all of these elements in Gitlin and Tiedemann

5

already; is that correct?

6

A.

Yes, that's correct.

7

Q.

And would your opinion of obviousness,

8

combining Tiedemann and Gitlin, be to render obvious

9

Claim 5 of the '326 patent?

10
11

A.

Yes.

The combination of Gitlin plus Tiedemann

invalidates Claim 5 of the '326 patent.

12

Q.

For all the reasons you've already given?

13

A.

Yes, that's correct.

14

Q.

And with respect to -- with respect to the

15

'211 patent, Claim 2, we found all these elements in

16

Gitlin plus Tiedemann; is that correct?

17

A.

That's correct.

18

Q.

And so what's your opinion as to whether

19

Gitlin plus Tiedemann would render obvious Claim 2 of

20

the '211 patent?

21

A.

That the combination of Gitlin plus Tiedemann

22

renders obvious or invalidates Claim 2 of the '211

23

patent.

24

Q.

25

And with respect to Claim 5 of the '211

patent, we've found all those elements in Gitlin plus

70
1

Tiedemann already, as well, have we not?

2

A.

That's correct.

3

Q.

And what would your opinion be as to whether

4

Claim 5 of the '211 patent would be rendered obvious by

5

Gitlin plus Tiedemann?

6

A.

That Claim 5 of the '211 patent is rendered

7

obvious or invalid, based on the combination of Gitlin

8

plus Tiedemann.

9

Q.

And what's your opinion as to whether Claims 9

10

and -- of the '326 patent and Claim 11 of the '819

11

patent would be rendered obvious by Gitlin plus

12

Tiedemann?

13
14
15

A.

That both of those claims would be rendered

obvious by the combination of Gitlin plus Tiedemann.
Q.

16

Okay.

So let me talk about one more thing.

Now, you heard Dr. Wells point to OVSF codes

17

in the -- as evidence of overlay codes in the accused

18

systems.

You've heard that testimony, right?

19

A.

Yes.

20

Q.

Were OVSF codes known before the Airspan

21

patents?

22

A.

Yes, they definitely were.

23

Q.

And where were they known before the Airspan

24
25

patents?
A.

This is a reference that you've seen at least

71
1

a couple of times, at least I remember seeing it a

2

couple of times, from Qualcomm, co-founder Klein

3

Gilhousen.

4

Q.

And this describes OVSF codes.

And could you explain how Gilhousen

5

describes -- how the Gilhousen OVSF codes relate to what

6

we see in the W-CDMA standard?

7

A.

Yes.

Again, this is another slide that you've

8

seen a couple of times, so I won't spend too much time

9

on it.

But you can see that the mapping of the OVSF

10

tree, what's on the left is Figure 2 from the Gilhousen

11

patent.

12

1993.

And Dr. Gilhousen had defined these codes in

13

You'll see a very similar tree from the W-CDMA

14

standard.

15

look, you can see the same number of bits on each

16

respective layer as you go down, just like the standard.

17
18
19
20
21

We've rotated it 90 degrees.

But if you'll

And so it was Dr. Gilhousen that came up with
this OVSF concept, at least as early as 1993.
Q.

Now, does Gilhousen also describe storing OVSF

codes in a base station?
A.

Yes.

For storage, looking at this second

22

highlighted portion, Dr. Gilhousen is describing in his

23

patent that the control processor will include a table

24

of orthogonal Walsh code sequences.

25

that -- a type of table of these Walsh code sequences.

That's the table

72
1

Now, these are various length sequences, so

2

this table actually has the different variable rate of

3

sequences ranging from 2 to 1,024.

4

a fixed table.

5

specification.

6
7
8
9
10
11

Q.

It's just no longer

It's 64 like you saw in the IS-95-A

And -- and the Qualcomm patent was -- was

filed in 1993; is that right?
A.

That's correct.

he's way to the left.

As you can see by this slide,

Gilhousen is way to the left in

1993 for these OVSF codes.
Q.

And the Gitlin patent -- I don't know if I

12

asked you this -- but that was filed in 1994; is that

13

right?

14

A.

That's correct.

15

Q.

Now, you understand that Dr. Wells is

16

asserting that these OVSF codes contain an orthogonal

17

code and an overlay code.

You understand that?

18

A.

Yes.

19

Q.

Now -- and the jury will have to decide

20

whether an OVSF code, a single OVSF code, is an

21

orthogonal code and an overlay code.

22

that?

You understand

23

A.

Yes.

24

Q.

If the jury were to conclude that a single

25

OVSF code was both an orthogonal code and an overlay

73
1

code, do you have an opinion as to whether Gitlin, in

2

combination with Gilhousen, would disclose all of the

3

elements of the asserted claims?

4

A.

5

Yes.

So let me go through it just briefly.

If you agree with Dr. Wells that the OVSF tree

6

meets the limitations of the claims, then you also have

7

to reconcile in your own mind who really defined it

8

first.

9

before the Airspan patents.

10

And this was three years, at least three years

And then when you look at Dr. Gitlin from AT&T

11

Bell Labs, he has the CDMA plus the TDM here.

12

again, he's years before the Airspan patents.

13

And,

And, again, you have the combination of AT&T

14

Bell Laboratories and of Qualcomm, when they were

15

working together.

16

cellular systems.

17
18
19

Q.

Okay.

And both of these are wireless

So, Mr. Lanning, can you just quickly

summarize your opinions?
A.

All right.

As you can see, the first four

20

claims, as on this table, which are specifically the

21

'326, Claim 2; the '211, Claim 2; the '211, Claim 5;

22

'326, Claim 5 are all anticipated by at least Tiedemann.

23
24
25

And they're also obvious based on other
references, as I described.
However, if you look at '326, Claim 9 and the

74
1

'819, Claim 11, you'll see that I have not put

2

anticipated there.

Instead, I've said they're obvious

3

as I've described.

And they're obvious by at least

4

Tiedemann and other combinations that I've described.

5

MR. APPLEBY:

6

THE COURT:

7

Cross-exam?

8

MR. BORGMAN:

9
10

No further questions.

Thank you.

Yes, Your Honor.

CROSS-EXAMINATION
BY MR. BORGMAN:

11

Q.

Good morning, Dr. Lanning.

12

A.

Good morning.

13

Q.

Happy Friday.

14

A.

I think someone else probably likes that idea

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16
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a lot more than me.
Q.

I'm sure someone else enjoys that idea a lot

more than you and me.

Absolutely.

18

A.

Oh, and I do remember you as well.

19

Q.

Thank you.

I think.

I'm sorry.

It's taking me a little bit to get

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settled here.

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23
24
25

All right.

Dr. Lanning, let's first see if we

can focus what we ought to talk about.
A.

For the doctors in the room, you probably

ought to call me Mr. Lanning.

I guess I'm not -- I

75
1

don't have a Ph.D.

2

Q.

I apologize.

3

A.

To them more than me.

4

Q.

Well, my father had a Ph.D.; and I was taught

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from a very early age to call everyone Doctor, because I

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realize, just like you, some people stand on it; many do

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not.

8

A.

Thank you.

9

Q.

So I do apologize.

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And you're right.

We've

had a lot of doctors in and out.

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Now, you have not offered us any opinions on

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infringement of any of the accused products in this

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case, correct?

14

A.

That's correct.

15

Q.

And you've -- as you've said, you're not

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offering any opinions today on the validity or

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invalidity of the '327 patent?

18

A.

That's correct.

19

Q.

And you haven't offered us any other opinions

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about any of the accused products, like how they work,

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correct?

22

A.

That's correct.

23

Q.

And -- and Mr. Appleby took you through the

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claims of the patent in doing your analysis today,

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right?