ACCEPTED
05-14-01151-CV
FIFTH COURT OF APPEALS
DALLAS, TEXAS
4/2/2015 9:53:55 AM
LISA MATZ
CLERK
NO. 05-14-01151-CV
IN THE COURT OF APPEALS FOR THE FIFTH DISTRICT OF TEXAS
FILED IN
5th COURT OF APPEALS
DALLAS, TEXAS DALLAS, TEXAS
4/2/2015 9:53:55 AM
LISA MATZ
Clerk
AXCESS INTERNATIONAL, INC.
Appellant,
v.
BAKER BOTTS L.L.P.
Appellee.
ON APPEAL FROM COUNTY COURT AT LAW NUMBER FIVE, DALLAS COUNTY, TEXAS
CAUSE NO. CC-13-01301-E
THE HONORABLE MARK GREENBERG PRESIDING
Joint Stipulation Regarding Court Reporter’s Record
TO THE HONORABLE COURT OF APPEALS
Appellant, Axcess International, Inc., and Appellee, Baker Botts L.L.P.,
jointly stipulate as follows:
1. In preparing the official Court Reporter’s Record that has been filed
with the Court, the court reporters did not transcribe certain testimony presented by
video deposition. The parties have agreed to supplement the record by stipulating
to the missing testimony of these witnesses.
1
2. Specifically, the parties stipulate that the deposition excerpts attached
as TABS 1- 6 accurately reflect the deposition testimony that was played for the
jury by video during trial, as indicated below:
Court Reporter’s Record Stipulated
Witness Called by
location attachment
Michael Marcin Axcess Vol. 10B, Page 93, Line 1 TAB 1
Page/lines
6:7 – 25:2
Michael Marcin Baker Botts Vol. 10B, Page 93, Line 8 TAB 2
Michael Marcin Axcess Vol. 10B, Page 93, Line 13 TAB 3
Page/lines
89:12 – 92:4
Wayne Steeves Baker Botts Vol. 14B, Page 18, Line 3 TAB 4
Michael Beber Baker Botts Vol. 14B, Page 21, Line 21 TAB 5
Raj Bridgelall Baker Botts Vol. 14B, Page 24, Line 18 TAB 6
3. The parties further stipulate that Plaintiff’s Exhibits 163-170 and 173-
176 were demonstrative exhibits only and were not admitted into evidence.
2
Dated: April 2, 2015
Respectfully submitted,
/s/ Paul M. Koning
Paul M. Koning
Texas Bar No. 11671300
Brent E. Basden
Texas Bar No. 24047828
KONING RUBARTS LLP
1700 Pacific Avenue, Suite 4500
Dallas, Texas 75201
Tel: (214) 751-7900
Fax: (214) 751-7888
paul.koning@koningrubarts.com
brent.basden@koningrubarts.com
Attorneys for Appellee Baker Botts L.L.P.
/s/ Steven E. Aldous
Steven E. Aldous
Texas Bar No.
Forshey Prostok, LLP
500 Crescent Court, Suite 240
Dallas, TX 75201
saldous@forsheyprostok.com
Jonathan T. Suder
Texas Bar No.
Friedman, Suder & Cooke
Tindall Square Warehouse No.1
604 East 4th Street, Suite 200
Fort Worth, Texas 76102
jts@fsclaw.com
Attorneys for Appellant Axcess
International, Inc.
3
CERTIFICATE OF SERVICE
The undersigned certifies that on the 2nd day of April 2015, a true and
correct copy of the foregoing was delivered to all attorneys of record via electronic
service in accordance with the Texas Rules of Appellate Procedure, as follows:
Steven E. Aldous
FORSHEY PROSTOK, LLP
500 Crescent Court, Suite 240
Dallas, Texas 75201
Jonathan T. Suder
Michael T. Cooke
Glenn S. Orman
FRIEDMAN, SUDER & COOKE
Tindall Square Warehouse No. 1
604 East 4th Street, Suite 200
Fort Worth, Texas 76102
/s/ Paul M. Koning
4
Page 6
4
7 Q. Good morning, Mr. Marcin. 09:02
8 A. Good morning. 09:02
9 Q. Can you state your name for the record? 09:02
10 A. Michael J. Marcin. 09:02
11 Q. What's your current occupation? 09:02
12 A. I am an attorney. 09:02
13 Q. What kind of attorney are you? 09:02
14 A. I am a patent attorney. 09:02
15 Q. What firm are you currently with? 09:02
16 A. Fay Kaplun & Marcin. 09:02
17 Q. How long have you been with this firm? 09:02
18 A. Since June of 2000. 09:02
19 Q. Could you generally describe what your 09:02
20 job responsibilities are as a patent attorney? 09:02
21 A. Generally I prosecute patent 09:02
22 applications in front of the United States Patent 09:02
23 and Trademark Office, which comprises normally 09:02
24 taking a disclosure from an inventor, putting that 09:02
25 disclosure into a patent application, filing that 09:02
TAB 1
Page 7
1 M. J. Marcin, Esq.
2 patent application with the United States Patent 09:02
3 and Trademark Office, and then having a general 09:02
4 back-and-forth with the patent office during what 09:02
5 we call the prosecution phase in order to hopefully 09:02
6 have the patent office allow the patent application 09:03
7 as a patent. 09:03
8 Q. We will talk a little bit more about 09:03
9 that in a second. 09:03
10 Can you just briefly outline your 09:03
11 educational history starting with college? 09:03
12 A. Sure. I went -- I have a bachelor of 09:03
13 science in electrical engineering from the 09:03
14 University of Pennsylvania, and I have my law 09:03
15 degree from Fordham University. 09:03
16 Q. And how long have you been practicing 09:03
17 patent prosecution? 09:03
18 A. I started while I was in law school in 09:03
19 1996, and I have been doing it ever since. 09:03
20 Q. How does the electrical engineering 09:03
21 degree you got in undergrad play into patent 09:03
22 prosecution? 09:03
23 A. Normally when we speak with the 09:03
24 inventors, they are typically engineers or other 09:03
25 technical people, and so it plays into the fact 09:03
Page 8
1 M. J. Marcin, Esq.
2 that we speak the language that they speak, 09:03
3 technical language, and it allows us as I said to 09:03
4 take what they described to us and write that down 09:04
5 in a way hopefully that an ordinary person reading 09:04
6 the patent can understand. 09:04
7 Q. What kinds of patents have you helped 09:04
8 prosecute in your time at your current firm? 09:04
9 A. I generally focus on the electrical arts 09:04
10 and computer science arts. So it could be anything 09:04
11 from, you know, RFID technology, radio frequency 09:04
12 identification technology, mobile 09:04
13 telecommunications technology, computer software, 09:04
14 operating systems, networking applications, and 09:04
15 also what we call business method patents which are 09:04
16 -- generally the best way to describe them would be 09:04
17 the Internet applications that most of us are used 09:04
18 to. 09:04
19 Q. I would like to talk to you a little bit 09:04
20 about the work you did for my client Axcess at this 09:04
21 point. 09:05
22 How did you come to represent Axcess 09:05
23 International in prosecution matters? 09:05
24 A. So I don't remember exactly how Axcess 09:05
25 was initially referred to me, but I recall that my 09:05
Page 9
1 M. J. Marcin, Esq.
2 initial contact was with Raj Bridgelall who called 09:05
3 me on the phone and interviewed me for 09:05
4 approximately a half hour. Part of that interview 09:05
5 was to discuss generally what Axcess was looking 09:05
6 for and also my experience in their technical 09:05
7 field, and as I said, that lasted about half hour 09:05
8 and then about a week later Raj called me back and 09:05
9 said they decided to retain us for their patent 09:05
10 prosecution work. 09:05
11 Q. What was your job relative to Axcess? 09:05
12 What were they asking you to do? 09:05
13 A. So Axcess -- I don't remember the exact 09:05
14 number, but they had about 12 patent families. 09:05
15 Some of these were already issued as patents. Some 09:05
16 of them were still in the patent office being 09:06
17 prosecuted, and what they wanted us to do was to 09:06
18 continue to prosecute those patent applications 09:06
19 that were in the patent office and generally advise 09:06
20 them on all their patent prosecution matters. 09:06
21 Q. I am going to show you what's previously 09:06
22 been marked in this case as Exhibit 165. 09:06
23 Do you recognize that document, sir? 09:06
24 A. I do. 09:06
25 Q. What is it? 09:06
Page 10
1 M. J. Marcin, Esq.
2 A. It's a patent that is owned by Axcess. 09:06
3 Q. And was this one of the patents that you 09:06
4 reviewed when Axcess hired you? 09:06
5 A. This is a patent I reviewed. I did not 09:06
6 prosecute this patent. It was prosecuted or it was 09:06
7 issued as a patent prior to my representation of 09:06
8 Axcess. 09:06
9 Q. What significance did that patent play 09:06
10 during the prosecutions? 09:06
11
12 A. So this particular patent was one of the 09:07
13 patents that there were -- there was a continuation 09:07
14 application filed in this case, and what Axcess had 09:07
15 asked me to do was to work on that continuation 09:07
16 application and in fact, file a further 09:07
17 continuation application to get different claims 09:07
18 scope in a new patent. 09:07
19 Q. I would also like to show you what's 09:07
20 previously been marked as Exhibit 167 in this case. 09:07
21 Do you recognize this document, sir? 09:07
22 A. Yes, I do. 09:07
23 Q. What is this document? 09:07
24 A. This is another patent that is in the 09:07
25 same family, and this is a patent based on an 09:07
Page 11
1 M. J. Marcin, Esq.
2 application that was again filed by a different 09:07
3 firm that was issued. 09:07
4 Q. Was this part of the patent family that 09:08
5 you referenced earlier for Axcess? 09:08
6 A. Yes, it was. 09:08
7 MR. ORMAN: And then I would like to 09:08
8 mark this as Exhibit 310. 09:08
9 (Exhibit 310, 868 patent, marked for 09:08
10 identification, as of this date.) 09:08
11 Q. Do you recognize this document, sir? 09:08
12 A. Yes, I do. 09:08
13 Q. What is this? 09:08
14 A. This is a further patent from the same 09:08
15 family that I described before, and this is a 09:08
16 patent based on an application that I filed -- our 09:08
17 firm filed for Axcess. 09:08
18 Q. And you mentioned a continuing 09:09
19 application. Can you explain what a continuing 09:09
20 application is? 09:09
21 A. I will try. A continuation application 09:09
22 is an application that is filed after the original 09:09
23 application. Patent applications generally have 09:09
24 three parts to them. The three parts are the 09:09
25 drawings, the description, and the claims. The 09:09
Page 12
1 M. J. Marcin, Esq.
2 drawing -- in a continuation application, the 09:09
3 drawings and the claims remain the same but you are 09:09
4 allowed to file different claims that can look the 09:09
5 same or they look a little bit different to go for 09:09
6 different claim scope. The only rule is that they 09:09
7 must be supported by those original drawings and 09:09
8 those original claims and the give up is that you 09:09
9 have a -- what we call a priority date that goes 09:09
10 back to the original application, and why that is 09:09
11 important is that your patent is good from the day 09:09
12 of issue of the patent until 20 years from the 09:10
13 filing date or the priority date so when you file a 09:10
14 continuation application, you are giving up some 09:10
15 time when you are issued patent -- when a patent 09:10
16 from the continuation application issues. 09:10
17 Q. I will mark what we will call the 868 09:10
18 patent as Exhibit 310. 09:10
19 Was this a continuing application? 09:10
20 A. Yes, it was. 09:10
21 Q. It's one that you processed for Axcess? 09:10
22 A. Yes, it was. 09:10
23 Q. Generally, what are the benefits of 09:10
24 getting a continuing application? 09:10
25
Page 13
1 M. J. Marcin, Esq.
2 A. There are different reasons why 09:10
3 applicants file continuation applications. One 09:10
4 reason could be that they are unhappy with the 09:10
5 claims scope in the original application or any 09:10
6 other continuation applications or not necessarily 09:11
7 unhappy but they would like a different claims 09:11
8 scope in the continuation application. The other 09:11
9 reason is since the continuation application is 09:11
10 normally filed for several years after the original 09:11
11 application, it allows the applicant to understand 09:11
12 how the industry or how the products are -- that 09:11
13 the patent covers are being developed or being used 09:11
14 and it allows them to write claims that are more 09:11
15 directed to the products that are in the 09:11
16 marketplace. 09:11
17 Q. And you mentioned that a client may be 09:11
18 able to write claims directed toward the 09:11
19 marketplace. Why would a client want to do that? 09:11
20
Page 14
1 M. J. Marcin, Esq.
2
3 Q. You can answer. 09:11
4 A. I apologize. Can you repeat the 09:11
5 question? 09:12
6 Q. You mentioned something about being able 09:12
7 to kind of watch the marketplace develop. Why 09:12
8 would a continuation help that for a client? 09:12
9 A. So the client has invented the subject 09:12
10 matter that is in the patent, but the claims may be 09:12
11 written in such a way where it's not entirely clear 09:12
12 that what is in the products in the marketplace -- 09:12
13 the claims are written in such a way as to cover 09:12
14 the products in the marketplace even though the 09:12
15 client has invented that subject matter. So the 09:12
16 rewriting of the claims in the continuation 09:12
17 application allows the client to have more directed 09:12
18 claims at those products, which could allow the 09:12
19 client to do several things such as license the 09:12
20 manufacture of that -- of the product in the 09:12
21 marketplace or sue them for infringement of their 09:12
22 patent. 09:13
23 Q. I believe a little earlier you mentioned 09:13
24 priority date. Can you explain what priority date 09:13
25 is? 09:13
Page 15
1 M. J. Marcin, Esq.
2 A. So in general, we refer to the priority 09:13
3 date as the filing date of the application and that 09:13
4 is generally when your right -- when your right 09:13
5 starts with respect to the patent with respect to 09:13
6 others who may file -- who may file later 09:13
7 applications. So priority dates are important when 09:13
8 there are later filed patents in the same area. 09:13
9 Q. What is the priority date of the 868 09:13
10 patent that's been marked as Exhibit 310? 09:13
11 A. So actually, in a continuation 09:13
12 application, the priority date goes back to the 09:13
13 earliest patent application. So when the 868 09:13
14 patent was filed on October 27, 2009, that is, in 09:13
15 fact, not the priority date for the 868 patent. It 09:13
16 goes back to the filing date of the original parent 09:14
17 application which is the 7,005,985 patent which is 09:14
18 July 20, 1999. 09:14
19 Q. What patents did you review on behalf of 09:14
20 Axcess as part of your representation relative to 09:14
21 this continuing application? 09:14
22 A. Relative to this family of applications? 09:14
23 Q. Yes. 09:14
24 A. So I -- at the point that I took over 09:14
25 representation of this family, the 985 patent was 09:14
Page 16
1 M. J. Marcin, Esq.
2 already issued, and I would have completely read 09:14
3 that and its file history. The second patent in 09:14
4 the family, which is the 886 patent, I took over 09:14
5 the representation of that application after it had 09:14
6 been allowed so I would have read the -- again, the 09:14
7 complete file history of that patent, and then with 09:14
8 respect to the 868 patent, I would have -- since I 09:14
9 prosecuted this application and filed it, I would 09:15
10 have read the complete file -- the complete 09:15
11 specification prior -- prior to filing the 09:15
12 application. 09:15
13 Q. And what's the general subject matter of 09:15
14 the 985 patent? 09:15
15 A. Of the 985 patent? Well, it is radio 09:15
16 frequency identification tags and systems. The 09:15
17 claims -- I would have to look at them exactly, but 09:15
18 I believe the claims are generally directed at the 09:15
19 idea of there being a primary tag and that primary 09:15
20 tag being loaded with identifications of secondary 09:15
21 tags. 09:15
22 Q. And what is your understanding as to 09:15
23 what Axcess was hoping to accomplish in getting the 09:15
24 continued application of the new patent? 09:15
25
Page 17
1 M. J. Marcin, Esq.
2 A. So my recollection is that when I first 09:15
3 came on, Axcess identified this family as an 09:16
4 important family for them, and one of the things 09:16
5 that I did when I initially got it, I read the 09:16
6 entire application and tried to understand it as 09:16
7 best I could. Then I spoke to Raj Bridgelall and 09:16
8 he explained that they did not believe that the 09:16
9 claims that issued in the 985 patent were directed 09:16
10 at the subject matter that they thought was the, in 09:16
11 fact, their invention and/or was the main portion 09:16
12 of their invention. He explained to me what he 09:16
13 thought the invention was and what they would like 09:16
14 the claims to be directed at. I re -- I understood 09:16
15 that, I drafted a set of claims directed toward 09:16
16 that invention. I made sure in conjunction with 09:16
17 them that those claims were supported by the 09:17
18 specification and drawings of the 985 patent or the 09:17
19 originally filed application that led to that 09:17
20 patent, and then after that, we filed the 09:17
21 application that led to the 868 patent and the 09:17
22 general subject matter that they were -- they were 09:17
23 trying to cover was the idea of a dual frequency 09:17
24 radio identification tag. 09:17
25 Q. I would like to show you what's been 09:17
Page 18
1 M. J. Marcin, Esq.
2 previously marked in this case as Exhibit 25. 09:17
3 Can you take a look at that? Do you 09:17
4 recognize this document? 09:17
5 A. Yes, I do. 09:17
6 Q. And what is it? 09:17
7 A. This is a patent that is on its face 09:17
8 owned by Savi Technology. 09:17
9 Q. How do you recognize this document? 09:17
10 A. So when I -- as I was explaining before, 09:17
11 when I was tasked to write the continuation 09:17
12 application with respect to the dual frequency 09:18
13 identification tags, one of the -- one of the other 09:18
14 parameters that was discussed with me was the fact 09:18
15 of covering other people -- other corporations' 09:18
16 technology in the field, and one of the companies 09:18
17 that was mentioned was Savi and they -- the way 09:18
18 they described or the way Axcess described the Savi 09:18
19 technology to me was to give me this patent and say 09:18
20 that this is how they believe the Savi technology 09:18
21 worked as described in this patent, and so one of 09:18
22 the -- one of the tasks was to cover what was 09:18
23 inside this or what was described in this patent. 09:18
24 Q. If you could get the 868 patent back in 09:18
25 front of you, it's what we marked as 310. 09:18
Page 19
1 M. J. Marcin, Esq.
2 A. Yes. 09:18
3 Q. Were you able to get a patent for 09:18
4 Axcess? 09:19
5 A. Yes. 09:19
6 Q. And is it this patent? 09:19
7 A. It is this patent, yes. 09:19
8 Q. What does the 868 patent cover? 09:19
9
10 A. It generally covers the dual frequency 09:19
11 radio identification tags. 09:19
12 Q. And what priority date does the 868 09:19
13 patent have? 09:19
14 A. As I explained before, it has the 09:19
15 priority date of the 985 patent, which is July 20, 09:19
16 1999. 09:19
17 Q. How does that priority date compare to 09:19
18 the Savi 114 patent? 09:19
19 A. So the priority date of the Savi 114 09:19
20 patent, it was filed on April 24, 2001. It claims 09:19
21 priority to a provisional application that was 09:19
22 filed on September 7th of 2000. So the earliest 09:19
23 possible priority date for the Savi patent would be 09:19
24 September 7th of 2000. 09:19
25 Q. And the 868 patent's priority date would 09:19
Page 20
1 M. J. Marcin, Esq.
2 be? 09:20
3 A. July 20, 1999. 09:20
4 Q. So the 868 patent would have an earlier 09:20
5 priority date than the Savi patent? 09:20
6 A. That's -- yes, that is correct. 09:20
7 Q. Now, during the prosecution of this 09:20
8 patent, I believe you mentioned there is a 09:20
9 back-and-forth with the Patent Trademark Office? 09:20
10 A. Yes. 09:20
11 Q. Can you explain a little bit about what 09:20
12 the process was like in terms of getting the 868 09:20
13 patent and your communications with the Patent and 09:20
14 Trademark Office? 09:20
15
16 A. So I could explain to you the typical 09:20
17 path that a patent application goes. I don't 09:20
18 recall all the specifics of the 868 patent. 09:20
19 Q. That's fine. 09:20
20 A. So normally when we file a patent 09:20
21 application, we file it with claims that have a 09:20
22 scope that is probably broader than we will 09:20
23 eventually get in the issued patent, and I think 09:20
24 the way that I always like to describe this to 09:20
25 clients is that the technology in an area is a 09:21
Page 21
1 M. J. Marcin, Esq.
2 brick wall and there is a hole in that brick wall 09:21
3 and your patent is going to be a brick that fills 09:21
4 in that hole and what we like to do is write the 09:21
5 claims such that the brick is a little bit bigger 09:21
6 than the hole and therefore, during prosecution we 09:21
7 will whittle down that brick so it fits in tight to 09:21
8 the hole and fill the entire hole rather than write 09:21
9 a claim that's a very small brick and leave space 09:21
10 in that hole because if you are entitled to fill 09:21
11 that entire hole, you should fill the entire hole. 09:21
12 So the way this normally works is that 09:21
13 you file your application with your claims in the 09:21
14 patent office. The patent examiner will examine 09:21
15 the patent application and the claims and normally 09:21
16 send you what we call a rejection. There is 09:21
17 different types of rejections, but the normal ones 09:21
18 that we deal with are what we refer to as 09:22
19 anticipation or obviousness rejections based on 09:22
20 prior art. Prior art are other applications -- 09:22
21 other patent application publications, other patent 09:22
22 documents or anything that's written in journals or 09:22
23 the newspaper or anything regarding the subject 09:22
24 matter in the patent application. 09:22
25 And then after we receive this 09:22
Page 22
1 M. J. Marcin, Esq.
2 rejection, we will either write an argument to the 09:22
3 patent examiner saying why the examiner is wrong 09:22
4 and our claims should be allowable, or we can also 09:22
5 what we call amend the claims which is change your 09:22
6 scope a little and also make an argument as to why 09:22
7 this changed scope gets us around the prior art. 09:22
8 These objections can come multiple times. It's 09:22
9 very typical in a case to have three or more of 09:22
10 these rejections until ultimately you end up with a 09:23
11 -- with an allowance. 09:23
12 The other thing that happens is 09:23
13 sometimes we will have interviews with the examiner 09:23
14 where we will talk to the examiner about the case 09:23
15 and get his understanding of why he is rejecting 09:23
16 the claims, make our arguments over the phone or in 09:23
17 person with the examiner, and it's basically a 09:23
18 back-and-forth talk with the examiner to attempt to 09:23
19 understand and maybe work out some claim language 09:23
20 that will be allowable. 09:23
21 Q. And just so I understand, you mentioned 09:23
22 a rejection. That's a pretty harsh-sounding word, 09:23
23 but is rejection a common part of the patent 09:23
24 prosecution practice? 09:23
25
Page 23
1 M. J. Marcin, Esq.
2 A. Yes, it is and in fact, as I described 09:23
3 before, we generally find it not in our clients' 09:23
4 best interest to get what we call a first office 09:23
5 action allowance because that usually means that we 09:24
6 drafted the claims too narrow and that we were 09:24
7 entitled to a broader scope of protection. So we 09:24
8 typically would like a rejection so we can figure 09:24
9 out exactly what the client is entitled to. 09:24
10 Q. So if you get a rejection, that doesn't 09:24
11 mean that you can't get a patent? 09:24
12 A. No, it does not. I would say that -- I 09:24
13 don't have the exact statistics, but it would not 09:24
14 shock me that over 99.5 percent of all issued 09:24
15 patents receive a rejection at some point. 09:24
16 Q. And if you would pull out the 868 patent 09:24
17 and go to the last page and look at the claims, can 09:24
18 you describe generally what the subject matter of 09:24
19 the claims of the new Axcess patent are? 09:24
20
21 A. So as I said before, it is generally 09:24
22 directed at -- there are two independent claims. 09:24
23 The first is a method claim, and that's a method of 09:25
24 operation of a radio frequency tag having dual 09:25
25 frequency, and the second independent claim is 09:25
Page 24
1 M. J. Marcin, Esq.
2 directed to a radio frequency identification tag 09:25
3 having dual frequency. 09:25
4 Q. And how do those claims compare to the 09:25
5 Savi patent that you reviewed? 09:25
6 A. The claims, to the best of my 09:25
7 recollection, cover some of the subject matter that 09:25
8 is disclosed in the Savi patent. 09:25
9 Q. And that was one of Axcess's goals in 09:25
10 filing the continuing application that became the 09:25
11 868 patent? 09:25
12
13 A. Yes, it was. 09:25
14 Q. After reviewing the Savi 114 patent and 09:25
15 prosecuting the 868 patent, could your firm have 09:25
16 represented both Axcess and Savi if they came to 09:25
17 you asking to represent these two patents? 09:26
18
19 A. No. I believe it would have been a 09:26
20 conflict. 09:26
21 Q. If Axcess had come to you in 2002 and 09:26
22 asked you to prosecute this kind of continuing 09:26
23 application for them that you ended up doing in 09:26
24 2010, would you have been able to do so for them? 09:26
25
Page 25
1 M. J. Marcin, Esq.
2 A. Yes. 09:26
4
4
4
Axcess International v. Baker Botts
Marcin, Michael (Vol. 01) - 04/01/2014 1 CLIP (RUNNING 00:15:16.801)
Version 2014-04-30-1015
BB-MARCIN 31 SEGMENTS (RUNNING 00:15:16.801)
1. PAGE 26:13 TO 27:03 (RUNNING 00:00:35.167)
13 Do you have any experience in
14 interference proceedings before the Board of Patent
15 Appeals and Interferences?
16 A. I did not.
17 Q. Did your representation for Axcess
18 include any representation regarding the patent
19 interference process?
20 A. Not that I recall.
21 Q. Do you know who represented Axcess
22 regarding those issues if anyone?
23 A. I do not -- no, I don't.
24 Q. Did you recommend another attorney to
25 Axcess to handle potential interference actions?
00027:01 M. J. Marcin, Esq.
02 A. I don't believe that that issue ever
03 arose.
2. PAGE 32:13 TO 33:05 (RUNNING 00:01:06.500)
13 Q. Have you served as counsel in connection
14 with the reexamination of the 963 patent of Axcess?
15 A. Yes, I have.
16 Q. Are you counsel of record in that matter
17 with the patent office?
18 A. Yes, I am.
19 Q. And tell me what that patent was about
20 in general.
21 A. It was also about radio frequency
22 identification tags.
23 Q. What's a reexamination proceeding?
24 A. A reexamination proceeding is a
25 proceeding where a party -- a party files new prior
00033:01 M. J. Marcin, Esq.
02 art against an already issued patent and claims
03 that that prior art invalidates the patent.
04 Q. And in the specific case of the 953
05 patent, who was alleging what?
3. PAGE 33:07 TO 33:14 (RUNNING 00:00:25.800)
07 Q. In the reexamination proceeding?
08 A. A third party filed a reexamination
09 proceeding against the 953 patent.
10 Q. What is the outcome of the reexamination
11 proceeding?
12 A. The reexamination proceeding is ongoing.
13 Q. What did the Patent and Trademark Office
14 examiner conclude?
4. PAGE 33:16 TO 33:24 (RUNNING 00:00:34.650)
16 A. The examiner issued a final office
17 action in the reexamination proceeding.
18 Q. In general, what did the final office
19 action hold?
20 A. That the claims were rejected based on
CONFIDENTIAL page 1
TAB 2
Axcess International v. Baker Botts
21 certain prior arts.
22 Q. So in other words, the 953 patent that
23 Axcess had obtained in the view of the patent
24 examiner was invalid, fair?
5. PAGE 34:02 TO 34:03 (RUNNING 00:00:04.200)
02 A. In view -- in view of the patent
03 examiner, yes.
6. PAGE 48:21 TO 49:03 (RUNNING 00:00:28.100)
21 Q. You had described the significance of
22 the 868 patent being a continuation patent. Let me
23 see if I understand what you said.
24 One thing was that the priority date of
25 a continuation patent was able to reach back in
00049:01 M. J. Marcin, Esq.
02 time and attach to the parent, in this case the 435
03 patent, right?
7. PAGE 49:05 TO 49:10 (RUNNING 00:00:19.200)
05 A. The answer is it could reach back to the
06 parent application. I don't recall the number of
07 the parent.
08 Q. There are several ways in which that can
09 be significant, right, having an early priority
10 date?
8. PAGE 49:12 TO 49:25 (RUNNING 00:00:50.300)
12 A. Yes.
13 Q. One of them is that in the patent
14 prosecution process or the examination process, if
15 it's a continuation patent, the examiner in looking
16 for prior art only looks for prior art before the
17 date of its early priority date, right?
18 A. That's correct.
19 Q. So in terms of the 868 patent, the
20 relevant time period for prior art that the
21 examiner would consider in deciding whether to
22 allow the patent would be the period before July of
23 1999, right?
24 A. I believe that's what the examiner would
25 do, yes.
9. PAGE 51:13 TO 51:22 (RUNNING 00:00:37.400)
13 Q. So back to my original question. What I
14 was trying to get at was assuming you had
15 everything else being equal, if Axcess had come to
16 you in 2004 and asked you to do the same thing and
17 you had done the same thing, you would expect
18 basically the same results from the patent office,
19 right?
20 A. I would say they would search the same
21 prior art and that -- yes. That's what they would
22 do.
10. PAGE 58:25 TO 59:07 (RUNNING 00:00:31.200)
25 Q. Before we took a break, we had talked
00059:01 M. J. Marcin, Esq.
02 about your filing of the application, which was the
03 449 application that turned into the 868 patent,
04 and you filed it I believe on or about October 27,
05 2009. And we have looked at the claims that were
06 originally filed by you and then a preliminary
CONFIDENTIAL page 2
Axcess International v. Baker Botts
07 amendment.
11. PAGE 60:19 TO 60:23 (RUNNING 00:00:17.300)
19 Q. Can you tell me what Exhibit 318 is?
20 A. It's an office action.
21 Q. And by this office action,, the patent
22 office has rejected the claims that you filed for
23 Axcess on the 449 application, true?
12. PAGE 60:24 TO 60:24 (RUNNING 00:00:01.356)
24 A. Yes.
13. PAGE 60:25 TO 61:16 (RUNNING 00:01:04.400)
25 Q. And the patent office explains in its
00061:01 M. J. Marcin, Esq.
02 office action the reasoning behind its rejection,
03 right?
04 A. The patent office typically will cite --
05 well, they will always cite the prior art, and then
06 depending on the examiner, it depends on the level
07 of specificity that it -- that it -- that the
08 examiner calls out in the office action.
09 Q. And this examiner is named Mr. Ott?
10 A. Yes.
11 Q. And he cites numerous prior patents, US
12 patents that he thinks require the rejection of the
13 application that you filed?
14 A. In this case he cited one -- two patents
15 for most of the claims and then a third patent for
16 the Claim 41.
14. PAGE 64:17 TO 64:25 (RUNNING 00:00:30.706)
17 Q. But in any event, in the office action
18 attached to Exhibit 321, the patent examiner issued
19 a final rejection of the patent application, and
20 that would be the amended one that you filed,
21 right?
22 A. It would have been a rejection of the
23 amended claims that we filed, yes.
24 Q. So this is now the second rejection that
25 the patent examiners made?
15. PAGE 65:03 TO 65:09 (RUNNING 00:00:14.100)
03 A. It is the second office action that is
04 issued in this application, yes.
05 Q. Well, it's a rejection, right?
06 A. Excuse me?
07 Q. It's a rejection?
08 A. Yes.
09 Q. And they rejected every claim?
16. PAGE 65:10 TO 65:10 (RUNNING 00:00:02.381)
10 A. It appears that that's correct.
17. PAGE 67:19 TO 67:25 (RUNNING 00:00:26.000)
19 Q. So as I see this process moving forward,
20 the examiner rejects claims, you try to change
21 them, add to them, take away from them, or
22 otherwise modify them in a way that you hope the
23 examiner will see in a different light and allow,
24 right, and if the examiner rejects those, then you
25 are going back and try to change it some more?
CONFIDENTIAL page 3
Axcess International v. Baker Botts
18. PAGE 68:03 TO 68:17 (RUNNING 00:00:56.000)
03 A. So in this particular case, it appears
04 that yes, we have along the way continued to amend
05 the claims. It doesn't always mean that we will
06 amend the claims. In some cases we will not, but
07 in this case it appears that we do. We have.
08 Q. So far it hasn't worked with the
09 examiner, right?
10 A. Well, I would say that the -- I think
11 one of the things that I would point out is that
12 the examiner changed the prior art between the
13 rejection, so our arguments I believe did overcome
14 some of the prior art but the examiner found new
15 pieces of prior art to assert against us.
16 Q. So Exhibit 324 is another rejection by
17 the examiner, right?
19. PAGE 68:20 TO 69:02 (RUNNING 00:00:25.100)
20 A. Yes. It appears that the examiner again
21 changed the prior art that he asserted against us
22 from the previous office action.
23 Q. The patent office has now rejected all
24 of the claims that you are asserting now again for
25 the third time?
00069:01 M. J. Marcin, Esq.
02 A. Yes, that's correct. Very typical.
20. PAGE 74:15 TO 74:16 (RUNNING 00:00:05.100)
15 Did you do your very best for Axcess on
16 this 868 patent?
21. PAGE 74:18 TO 75:10 (RUNNING 00:00:55.000)
18 A. I always try my very best for all my
19 clients.
20 Q. So that's a yes?
21 A. That's a yes.
22 Q. Did you do everything you could think of
23 to attempt to get a patent that would be broad
24 enough to cover the Savi patents as they have been
25 described to you?
00075:01 M. J. Marcin, Esq.
02 A. Different clients have differing views
03 as to, you know, where we are in a -- in the
04 prosecution scheme and so I -- I don't recall what
05 the specific calculus was at the time that we
06 submitted these claims.
07 Q. Well, did you do your best to try to get
08 as broad of a patent as the patent office would
09 allow with regard to the claims that Axcess was
10 interested in obtaining?
22. PAGE 75:12 TO 76:06 (RUNNING 00:01:10.400)
12 A. Again, I can't tell you specifically
13 that what we ended up with would be the broadest
14 possible claims that we could have gotten. I don't
15 recall specifically the prior art that was cited.
16 I don't remember if the examiner -- if I thought
17 the examiner was correct or if the examiner is
18 incorrect. It's very typical that clients make
19 business decisions as to how far to push a
20 particular patent and the claims. We may have
21 thought that it was that Axcess was entitled to
22 broader claims than, in fact, issued in the 868
23 patent, but we thought that we would have to go
CONFIDENTIAL page 4
Axcess International v. Baker Botts
24 through appeal, which typically takes about three
25 years these days to get these broader claims, and
00076:01 M. J. Marcin, Esq.
02 it may have been we decided to just take these
03 claims that were allowable, rather than continue to
04 fight the longer process for broader claims. So I
05 would say that I did my best with respect to the
06 desires of the client at the time.
23. PAGE 78:08 TO 78:19 (RUNNING 00:00:40.000)
08 So this patent, the 868 patent was filed
09 as an application in 2009, right?
10 A. That's correct.
11 Q. And it went through the examination
12 process over three years and was finally issued as
13 a patent in 2012, correct?
14 A. That's correct.
15 Q. When the claims were originally filed by
16 you on behalf of Axcess, they were very broad and
17 clearly would have encompassed the Savi patents
18 that you had reviewed in connection with your
19 representation of Axcess, correct?
24. PAGE 78:21 TO 79:18 (RUNNING 00:01:26.619)
21 A. I don't know if they clearly would have
22 encompassed. That was the intention.
23 Q. Right. That was your intention when you
24 filed those broad claims to begin with?
25 A. That is correct.
00079:01 M. J. Marcin, Esq.
02 Q. And through the examination process on
03 this application, the examiner repeatedly rejected
04 the original applications and then -- the original
05 claims rather and then the amended claims until the
06 final six claims were presented that were allowed
07 in 2012, right?
08 A. Yes.
09 Q. And each of the six claims that were
10 allowed in the 868 patent has as a required element
11 that there be a wake-up signal signature wherein
12 the wake-up signal signature is a digital
13 bitstream; is that true?
14 A. That's what the claims say, yes.
15 Q. So if a device or product by another
16 company does not use a wake-up signal signature
17 which is a digital bitstream, it does not infringe
18 this patent, true?
25. PAGE 79:21 TO 80:03 (RUNNING 00:00:30.900)
21 A. So those are the words of the claim, and
22 so to infringe this claim, you would have to do,
23 either directly or by equivalence, all the words of
24 these claims.
25 Q. And do you know now or did you know at
00080:01 M. J. Marcin, Esq.
02 the time that no Savi product uses a digital
03 bitstream wake-up signal signature?
26. PAGE 80:05 TO 80:07 (RUNNING 00:00:04.910)
05 A. I am not aware.
06 Q. You have never been aware of that?
07 A. I am not aware of that.
CONFIDENTIAL page 5
Axcess International v. Baker Botts
27. PAGE 80:08 TO 80:11 (RUNNING 00:00:10.700)
08 Q. If no Savi product uses a digital
09 bitstream wake-up signature, then Savi products
10 don't infringe on this patent unless there is some
11 argument about equivalence, right?
28. PAGE 80:14 TO 80:17 (RUNNING 00:00:13.600)
14 A. So again, I think I answer in the same
15 way is that in order to infringe these claims, you
16 have to practice each and every element of the
17 claims or their equivalence.
29. PAGE 88:22 TO 88:24 (RUNNING 00:00:13.277)
22 Q. Have you been asked by Axcess to assert
23 any claims or demands based on any of Axcess's
24 patents against any other companies?
30. PAGE 89:03 TO 89:05 (RUNNING 00:00:15.100)
03 A. No.
04 Q. Are you aware whether Axcess has ever
05 asserted the 868 patent against any other party?
31. PAGE 89:08 TO 89:08 (RUNNING 00:00:01.335)
08 A. No.
TOTAL: 1 CLIP FROM 1 DEPOSITION (RUNNING 00:15:16.801)
CONFIDENTIAL page 6
Page 89
4
12 Q. Just a few questions, Mr. Marcin. I 11:12
13 will try and be quick. 11:12
14 Mr. Koning talked to you about a 11:12
15 reexamination procedure that's ongoing in one of 11:12
16 the Axcess patents. That procedure has not been 11:12
17 completed yet, has it? 11:12
18 A. No. 11:12
19 Q. Mr. Koning also talked to you a lot 11:12
20 about office actions and rejections specifically 11:12
21 involving the prosecution of the 868 patent. 11:12
22 Are office actions and rejections a 11:12
23 fairly common procedure in patent prosecution? 11:12
24 A. They are very common. It's basically 11:12
25 what I do, day in and day out, is respond to office 11:12
TAB 3
Page 90
1 M. J. Marcin, Esq.
2 actions. That is very typical -- you know, the 11:13
3 prosecution of the 868 patent I would call as a 11:13
4 very typical path through the patent prosecution 11:13
5 procedure. 11:13
6 Q. So just because the patent examiner 11:13
7 rejected certain claims doesn't mean that Axcess 11:13
8 wasn't able to get a patent in the end? 11:13
9 A. No. As I said in my initial testimony, 11:13
10 it's very typical. In fact, we would find it an 11:13
11 affront if we did not receive any objections of the 11:13
12 claim because we probably should have drafted the 11:13
13 claims to be broader than they were. 11:13
14 Q. And I just want to recap real quickly 11:13
15 what your representation was for Axcess and what 11:13
16 you did relative to the prosecution of the 868 11:13
17 patent. 11:13
18 What was your understanding of what 11:13
19 Axcess wanted to do relative to the prosecution of 11:13
20 what became the 886 patent? 11:13
21 A. My understanding was as I described that 11:13
22 they wanted to cover other competitors' products. 11:14
23 The one that I specifically recall was Savi, and 11:14
24 how that was described to me was by reading the 11:14
25 Savi patent that we referred to before and also to 11:14
Page 91
1 M. J. Marcin, Esq.
2 get -- I think I said before to sort of the heart 11:14
3 of what the invention -- what Axcess thought their 11:14
4 invention was which was the dual frequency aspect 11:14
5 of the -- of the invention, and therefore, we were 11:14
6 drafting claims with that in mind also. 11:14
7 Q. And part of the heart of the Savi 114 11:14
8 patent was also dual frequency RFID technology? 11:14
9 A. I believe that the title of that patent 11:14
10 is method apparatus for tracking items using dual 11:14
11 frequency tags. 11:14
12 Q. Just to be clear, you mentioned Savi's 11:14
13 products but you never actually saw one of Savi's 11:15
14 products? 11:15
15 A. Not that I recall. 11:15
16 Q. So when you were looking at the Savi 114 11:15
17 patent, were you looking at the claims of that 11:15
18 patent? 11:15
19 A. I was looking at the entire patent. I 11:15
20 was looking at the description and the claims. 11:15
21 Q. Is it your opinion that you were able to 11:15
22 meet your client's goal in this case of getting 11:15
23 them a patent that would read on Savi's 114 patent? 11:15
24
25 A. I have not gone back and specifically 11:15
Page 92
1 M. J. Marcin, Esq.
2 reviewed the claims but that was the goal of -- one 11:15
3 of the goals of the prosecution of this 11:15
4 application. 11:15
4
Axcess International v. Baker Botts
Steeves, Wayne (Vol. 01) - 07/12/2012 1 CLIP (RUNNING 00:19:53.921)
Version 2014-05-08-1330
BB-STEEVES 43 SEGMENTS (RUNNING 00:19:53.921)
1. PAGE 9:12 TO 9:14 (RUNNING 00:00:05.600)
12 Could you please state your full name
13 and address for the record?
14 A Wayne E. Steeves.
2. PAGE 31:13 TO 31:22 (RUNNING 00:00:30.072)
13 Q Okay. And when you joined Axcess the
14 president was a gentleman named Harry Budow?
15 A That's correct.
16 Q Did Axcess at that time have any
17 experience or work in the RFID area?
18 A Not to my knowledge. They were more
19 involved in dye sublimation printing of cards,
20 which may have contained RFID from somebody like
21 HID or something like that. That would be the
22 extent.
3. PAGE 32:19 TO 32:22 (RUNNING 00:00:18.700)
19 Q And how long did you continue to work at
20 Axcess?
21 A I believe, and I've declared it here,
22 that I left in early 2003.
4. PAGE 38:20 TO 38:22 (RUNNING 00:00:06.282)
20 Q Which Baker Botts lawyers did you have
21 dealings with?
22 A Terry Stalford.
5. PAGE 39:12 TO 39:23 (RUNNING 00:00:32.500)
12 Q And did you get along okay with Terry
13 Stalford?
14 A I did.
15 Q Did you have any problems communicating
16 with him, or did you think he understood what you
17 were trying to say?
18 A Terry was very good about that. We'd
19 sit around the conference table and I would
20 disclose the concept of the various inventions, and
21 then they would ask some questions. And then they
22 would go away and write up a description, and the
23 description was usually pretty accurate.
6. PAGE 40:17 TO 40:20 (RUNNING 00:00:11.200)
17 Q Did you ever have any interactions with
18 anyone at Baker Botts other than on matters
19 relating to patents?
20 A Not that I recall.
7. PAGE 44:04 TO 44:08 (RUNNING 00:00:17.700)
04 Q When you did have questions about
05 various matters relating to the patent process or
06 your patent applications, was Terry Stalford
07 responsive, in general?
CONFIDENTIAL page 1
TAB 4
Axcess International v. Baker Botts
08 A Yes.
8. PAGE 52:02 TO 52:10 (RUNNING 00:00:36.813)
02 Q When you would make comments -- or would
03 you make comments or ask questions from time to
04 time with regard to a draft that was prepared?
05 A Yeah, of course. And I was very pleased
06 with Terry's ability to comprehend the technical
07 aspects of what we went over in the specifications.
08 So I had very few times when I really had to
09 comment or make changes in that side of the
10 document, so.
9. PAGE 52:21 TO 53:05 (RUNNING 00:00:29.871)
21 Q And when you would raise comments
22 regarding the content of the drafts, do you ever
23 recall not getting a response?
24 A What time period?
25 Q Ever.
00053:01 A Oh. On the initial submissions?
02 Q Yes. On the draft of the patent
03 application?
04 A No. Terry was responsive. That was a
05 big change between Fenwick & West.
10. PAGE 55:03 TO 55:07 (RUNNING 00:00:14.990)
03 Q Are you aware of any instance in which
04 you alerted Baker Botts to an error or inaccuracy
05 to any patent applications which they then didn't
06 correct?
07 A I can't recall any.
11. PAGE 63:12 TO 64:03 (RUNNING 00:00:43.900)
12 Q So is it fair to say by the time that an
13 application was filed on one of your Axcess
14 patents, you were aware or had a reasonable
15 opportunity to become aware of the contents of the
16 application?
17 A Sure. Yeah.
18 Q And you had an opportunity to comment on
19 the application and ask questions about it?
20 A Throughout the process, I would say.
21 Q And before it was filed, you had
22 approved the filing of the application?
23 A I can't say in every case, but that
24 would seem to be a standard procedure.
25 Q Are you aware of any case in which you
00064:01 didn't approve the filing of an application before
02 it was filed?
03 A I just don't recall.
12. PAGE 68:06 TO 68:19 (RUNNING 00:00:39.500)
06 Q Did you ever complain while you were at
07 Axcess -- let me start that again. While you were
08 at Axcess, did you ever complain or express
09 dissatisfaction to Baker Botts about anything Baker
10 Botts did?
11 A Not that I recall.
12 Q Did you ever express complaints or
13 dissatisfaction about Baker Botts to anyone at
14 Axcess while you were there?
15 A Not that I recall.
16 Q Did anyone else at Axcess express
17 complaints or dissatisfaction with Baker Botts
CONFIDENTIAL page 2
Axcess International v. Baker Botts
18 while you were there?
19 A Not that I recall.
13. PAGE 94:10 TO 94:22 (RUNNING 00:00:39.100)
10 Q Okay. Now, when you started using Baker
11 Botts when you came to Axcess, you knew that Baker
12 Botts was a large law firm, right?
13 A I had never heard of Baker Botts before,
14 but somebody told me it was a large law firm and
15 that they occupied one of those skyscrapers
16 downtown Dallas, so I assumed they were a large law
17 firm.
18 Q Did you come to find that they had many
19 patent lawyers representing clients all over the
20 country?
21 A I can't say that I did. I just assumed
22 that would be the case.
14. PAGE 95:09 TO 95:11 (RUNNING 00:00:11.200)
09 Q To your knowledge did anyone at Axcess
10 ask Baker Botts not to represent any client or a
11 group of clients?
15. PAGE 95:13 TO 95:13 (RUNNING 00:00:03.010)
13 A To my knowledge, I would have to say no.
16. PAGE 114:13 TO 115:07 (RUNNING 00:01:13.800)
13 Q When you -- getting back to Savi. You
14 said that at some point you heard from a dealer
15 about a Savi product, and then you looked it up on
16 the Savi website?
17 A I don't recall. It could have been a
18 press release that he sent to us, it could have
19 been a data sheet, it could have been a website. I
20 don't recall. Eventually I did look it up on the
21 Web, I can tell you that, but.
22 Q What else did you do to investigate this
23 product?
24 A I attempted to dig a little bit deeper.
25 I went to the FCC site, I went to -- because I
00115:01 wasn't sure that they were infringing. You know, I
02 could only state that it sure looked like it. And
03 then the product was, the way it operated and
04 everything else, was identical, but... So I looked
05 at the FCC, I probably checked the USPTO website to
06 see if there were any patents filed by Savi.
07 Looked at the Savi website.
17. PAGE 115:08 TO 115:21 (RUNNING 00:00:49.158)
08 Q Anything else that you can recall?
09 A What date was that? That was 2002.
10 Q Yeah. May 2002, or earlier.
11 A Yeah. There were payment issues and
12 that kind of thing with Axcess at the time, so I
13 was trying to see if we could buy some Savi
14 product. And that didn't work. I probably asked a
15 dealer or two to see if they could just send us
16 some Savi product, and that didn't work. So none
17 of my avenues panned out for further investigation.
18 Q So when you say there were payment
19 issues, whose payment issues?
20 A Axcess was having financial trouble at
21 the time.
CONFIDENTIAL page 3
Axcess International v. Baker Botts
18. PAGE 117:14 TO 118:03 (RUNNING 00:00:59.424)
14 Q And you say you looked at the USPTO
15 website for Savi patents?
16 A Mm-hmm.
17 Q Did you do that only once?
18 A I don't recall.
19 Q Do you recall ever looking for Savi
20 patents other than when you first saw this
21 potential infringement?
22 A I believe I -- to the best of my
23 recollection, I believe I went to the USPTO site
24 and entered Savi as the assignee to see if they had
25 any patents issued. Obviously, I either didn't see
00118:01 any Savi patents or the Savi patents that existed
02 did not disclose any infringement. But I don't,
03 you know, I don't recall the details of all that.
19. PAGE 122:05 TO 123:02 (RUNNING 00:00:58.662)
05 Q Did you ever discuss, to your
06 recollection, with Terry Stalford or anyone else at
07 Baker Botts that Baker Botts couldn't afford to
08 take on any new matters or do new work for Axcess
09 until Axcess cleared up its past due bills?
10 A I don't recall. I did discuss with
11 Terry at some point, when he made the offer that he
12 couldn't do any more work but he would answer quick
13 phone calls for me, you know, without incurring any
14 charges or fees.
15 Q Without charging for it?
16 A Yes.
17 Q Just as a courtesy?
18 A Yeah.
19 Q And did he do that for you?
20 A He did.
21 Q Up to a certain point?
22 A I don't know when, but he did. I don't
23 know the time frames. It could be 2001 into 2002.
24 It could be -- I don't know.
25 Q Did --
00123:01 A Could have been a month, four months.
02 No idea.
20. PAGE 123:08 TO 123:10 (RUNNING 00:00:12.500)
08 Q So tell me all the communications you
09 had with anybody at Baker Botts regarding Savi.
10 A None. Even to this day.
21. PAGE 123:19 TO 123:22 (RUNNING 00:00:11.600)
19 Q And to your recollection there were no
20 oral communications regarding infringement between
21 you and Baker Botts?
22 A To the best of my recollection, yeah.
22. PAGE 124:07 TO 124:20 (RUNNING 00:00:35.646)
07 Q And you never entered into agreement --
08 an agreement with Baker Botts whereby Baker Botts
09 agreed to represent Axcess on infringement or
10 licensing matters?
11 A I can say the answer is no because I
12 didn't have the capability or the capacity to enter
13 into any agreements of that nature.
14 Q Did anyone at Axcess tell you that Baker
15 Botts had entered into such an agreement?
16 A No.
CONFIDENTIAL page 4
Axcess International v. Baker Botts
17 Q Did anyone at Baker Bott -- anyone at
18 Axcess ever tell you that Baker Botts had agreed to
19 represent Axcess on anything having to do with
20 Savi?
23. PAGE 124:22 TO 124:22 (RUNNING 00:00:02.900)
22 A Not that I recall.
24. PAGE 127:17 TO 127:20 (RUNNING 00:00:12.986)
17 Q You sent an e-mail to Mr. Griebenow
18 regarding Savi Technology. And if you'd look at
19 what I've marked as Exhibit 252, in the middle of
20 the page you'll see that e-mail.
25. PAGE 127:23 TO 128:09 (RUNNING 00:00:56.400)
23 Q Do you see it?
24 A Yes.
25 Q Why did you -- well, let me take a step
00128:01 back. It appears that it is a draft of a demand to
02 Savi Technology. Am I reading that correctly?
03 A This was probably a copy that -- what I
04 think this is, is I was asked to write up something
05 that we might use to submit to Savi directly or
06 something. And then I looked online and got some
07 legalese, if you will, and copied that and then
08 sent it back to them, and I'm asking them how
09 aggressive do you think we should be, you know.
26. PAGE 129:24 TO 130:01 (RUNNING 00:00:04.347)
24 Q Right. You didn't send this draft to
25 Baker Botts, right?
00130:01 A No.
27. PAGE 130:06 TO 130:09 (RUNNING 00:00:17.200)
06 Q Okay. And then on June 13th, a couple
07 of days later, you sent an e-mail to Mr. Griebenow,
08 Mr. Frank, and Ms. Keith, which has been marked as
09 Exhibit 253. Please take a look at that.
28. PAGE 130:12 TO 131:16 (RUNNING 00:01:33.368)
12 A Yes, I'm looking at it.
13 Q All right. And that says in its
14 entirety -- it's called "Power of Attorney." I
15 have found at least one -- I'm sorry. I have at
16 least found one of the power of attorney
17 assignments to Baker Botts. They were all the
18 same -- they were all of the same form. I intend
19 on contacting the patent office and revoking such
20 power for all patent submissions related to Baker
21 Botts for both video and RFID. Is this still a
22 correct course of action? Wayne.
23 Now, what prompted you to send this
24 e-mail?
25 A I don't recall.
00131:01 Q Were you asked by Mr. Griebenow or Mr.
02 Frank to contact the patent office and revoke Baker
03 Botts' powers of attorneys?
04 A I don't know if Terry Stalford contacted
05 me and said, you know, because of payment issues
06 we're -- I'm not going to be able to help you
07 anymore, or if it originated from Allan Griebenow
08 or Allan Frank. I have no idea. I can't remember.
09 I was obviously responding to somebody internally
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Axcess International v. Baker Botts
10 and asking them if they were really sure that they
11 wanted to revoke the power of attorney. That's
12 what this was saying. That's all I know.
13 Q It says: Is it still a correct course
14 of action? Had someone decided earlier that that
15 would probably be the correct course of action?
16 A Well, that's what it implies.
29. PAGE 142:03 TO 143:03 (RUNNING 00:01:36.432)
03 Q All right. Well, turning the clock back
04 a little bit into 2002, do you recall that the --
05 because of the payment problems getting so severe,
06 Axcess was taking back -- taking in-house the
07 patent files that Baker Botts had?
08 A I'm sure I had some awareness of that
09 but I don't recall.
10 Q Okay. I'm going to show you a couple of
11 things --
12 A I just read on -- yes. September 4th,
13 2002, on Exhibit 254. Right? 254? Yeah. Page 3
14 on 7102 I guess is the reference, on the bottom of
15 the second category, it says, "Baker Botts has
16 agreed to provide us with all correspondence and
17 has done so. They have also agreed to provide
18 telephone advice free of charge and have requested
19 that we keep their dockets up to date with any
20 responses on our behalf."
21 Q So what did that mean to you?
22 A This would be related to the
23 conversation I might have had with Terry that he
24 says, yeah, just if you got questions, give me a
25 call and I'll help you out whenever I can.
00143:01 Q But they weren't actually going to be
02 doing substantive work?
03 A No substantive work.
30. PAGE 150:23 TO 150:25 (RUNNING 00:00:09.299)
23 Q Is it true that the only lawyers you
24 ever spoke with about potential infringement by
25 Savi are the lawyers at Haynes and Boone?
31. PAGE 151:02 TO 151:10 (RUNNING 00:00:28.000)
02 A Spoke with.
03 Q Spoke with.
04 A Not e-mailed --
05 Q Right.
06 A -- spoke with. Obviously I had a
07 meeting with Haynes and Boones, from what's been
08 described here, but I have no recollection of it.
09 So I would say from a -- from that time frame, that
10 would be the only attorneys I spoke to.
32. PAGE 151:18 TO 151:23 (RUNNING 00:00:19.000)
18 Q And while you were at Axcess, was there
19 anyone else inside the company who had as much
20 familiarity with RFID patents and patent
21 applications for Axcess as you did?
22 A I would have to say that I carried the
23 brunt of that knowledge.
33. PAGE 190:02 TO 190:04 (RUNNING 00:00:06.300)
02 Q Is this an e-mail regarding -- from you
03 to Mr. Griebenow regarding the Savi contract?
04 A It appears to be.
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34. PAGE 190:07 TO 190:18 (RUNNING 00:00:37.825)
07 Q Did you tell Mr. Griebenow that you
08 suggested Axcess acquire a compliant -- I'm sorry.
09 You suggest that Axcess acquire compliant-Savi
10 equipment for analysis if possible.
11 A Do I say that in here? Let's see.
12 Q Second paragraph.
13 A Yes.
14 Q Did you ever obtain Savi equipment?
15 A No.
16 Q Did Axcess ever follow your suggestion
17 and obtain Savi equipment?
18 A No.
35. PAGE 190:20 TO 190:20 (RUNNING 00:00:01.367)
20 A Not to my knowledge.
36. PAGE 196:08 TO 196:12 (RUNNING 00:00:18.375)
08 Q Let me show you what's already been
09 marked as Exhibit 208 to the deposition of Mr.
10 Griebenow. Is this an e-mail from you to Mr.
11 Griebenow, dated July 26th, 2004?
12 A Yes.
37. PAGE 196:20 TO 197:05 (RUNNING 00:00:41.700)
20 Q And do you see in the second paragraph
21 you're -- in the second-to-last sentence you say,
22 "While Savi may still be arrogant and not see such
23 advantages, Axcess could use the patent violations
24 as a lever to get invited in."
25 A I see that.
00197:01 Q And do you recall having any reaction
02 from Mr. Griebenow about this additional e-mail
03 about Savi's patent violations?
04 A I don't recall Allan getting excited
05 about any of this DoD work.
38. PAGE 197:12 TO 197:20 (RUNNING 00:00:28.535)
12 Q So you've continued, as we've seen in
13 the past couple of exhibits that you're writing him
14 about patent infringement but you're not getting
15 any response from him?
16 A I'm writing him about the potential of
17 using that to gain some momentum in the market.
18 Q Well, for whatever use, he didn't
19 respond to you about Savi's patent infringements?
20 A I don't know if he did or didn't.
39. PAGE 201:04 TO 201:08 (RUNNING 00:00:16.400)
04 Q Were you aware at any time prior to
05 today that Axcess entered into a license agreement
06 with Savi?
07 A I was not aware of it even up to this
08 minute.
40. PAGE 222:19 TO 222:21 (RUNNING 00:00:17.661)
19 Q To the best of your knowledge, did Baker
20 Botts make any mistake in connection with the
21 handling of the 603 patent?
41. PAGE 222:23 TO 223:08 (RUNNING 00:00:23.208)
23 A To the best of my knowledge, I don't
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Axcess International v. Baker Botts
24 know of any mistakes on -- obviously, I'm not with
25 the organization, I'm not evaluating their patents,
00223:01 I'm not looking at things of that nature. So, you
02 know.
03 Q Well, you dealt with Baker Botts,
04 though --
05 A I was --
06 Q You were the inventor --
07 A As I testified earlier, I was very happy
08 with Terry Stalford's work in the time frame.
42. PAGE 229:04 TO 229:07 (RUNNING 00:00:09.790)
04 Q To the best of your recollection, every
05 time you asked Baker Botts to draft a patent
06 application on one of your invention, they did it?
07 A Yeah.
43. PAGE 229:14 TO 229:18 (RUNNING 00:00:11.600)
14 Q And you reviewed the patents -- patent
15 applications both before and after, or at least you
16 had an opportunity to do so?
17 A I would have been given the opportunity
18 to do so, yeah.
TOTAL: 1 CLIP FROM 1 DEPOSITION (RUNNING 00:19:53.921)
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1. PAGE 5:20 TO 6:02 (RUNNING 00:00:22.511)
20 Q. Good morning, Mr. Beber. My name is Paul
21 Koning and I represent Baker Botts law firm in this case
22 that's been filed by Axcess.
23 Could you, for the record, please state your
24 name and your home address.
25 A. My name is Michael Henry Beber. I live at
00006:01 3101 Forester Way, Plano, Texas, 75075.
02 Q. Thank you.
2. PAGE 11:21 TO 11:24 (RUNNING 00:00:10.994)
21 Q. What have your job titles been at Axcess?
22 A. Senior engineer, engineering manager.
23 Q. And are you still employed by Axcess today?
24 A. Yes, I am.
3. PAGE 24:10 TO 24:18 (RUNNING 00:00:24.600)
10 At any time during your employment at Axcess,
11 did you ever have any complaints about Baker Botts?
12 A. Any complaints?
13 Q. Yes.
14 A. Did I complain to them or did they complain to
15 me?
16 Q. No. Did you have any complaints about the way
17 Baker Botts did its job?
18 A. I don't recall any complaints.
4. PAGE 27:08 TO 27:10 (RUNNING 00:00:14.507)
08 Q. Were you aware that in 2002, Baker Botts told
09 the company that, We can't take any more work for you
10 until you pay our bills?
5. PAGE 27:12 TO 27:12 (RUNNING 00:00:02.416)
12 A. I believe so.
6. PAGE 29:16 TO 29:20 (RUNNING 00:00:22.741)
16 Q. To your knowledge, Mike Beber, did Baker Botts
17 ever do a single thing related to Savi?
18 A. Unaware of any.
19 Q. And to your knowledge, did Baker Botts ever
20 agree to do anything related to Savi?
7. PAGE 29:22 TO 29:22 (RUNNING 00:00:01.721)
22 A. Unaware of any.
8. PAGE 46:11 TO 46:17 (RUNNING 00:00:34.194)
11 Q. Let me show you what's been marked Exhibit
12 130. Is this your e-mail -- I'm sorry. Is this your
13 letter dated February 17th to Mr. Stalford?
14 A. Again, it has my name on the bottom.
15 Q. And do you recall that on or around February
16 17th, you retained Mr. Stalford at Baker Botts for the
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17 three patent applications that are listed there?
9. PAGE 46:19 TO 46:20 (RUNNING 00:00:04.500)
19 A. According to the patent, yes -- according to
20 the e-mail, yes.
10. PAGE 47:03 TO 47:05 (RUNNING 00:00:04.951)
03 Q. Did you ask them to do anything else other
04 than these three patents at this time?
05 A. I'm unaware of that.
11. PAGE 48:05 TO 48:08 (RUNNING 00:00:09.708)
05 Q. So the record is clear, you were in charge of
06 patents at Axcess between the time Mr. Steeves left and
07 the time Mr. Bridgelall arrived?
08 A. Yes, sir.
12. PAGE 66:25 TO 67:19 (RUNNING 00:01:13.713)
25 Q. All right. Let me show you what's been marked
00067:01 as Exhibit 182, ask if this is an e-mail you wrote to
02 Mr. Frank on December 9th, 2004?
03 A. That's what the e-mail states.
04 Q. And it says that you've been speaking with a
05 group -- appears to be the Nerac group that provides
06 searches, prior art, technical, patent as a service.
07 They provide one free to demonstrate the service. I
08 wondered if there was some benefit to run our RFID
09 against other patents (Savi) to find specific
10 infringements.
11 Did you ever have any further communications
12 about your proposal to use the Nerac service to search
13 for specific infringements?
14 A. Yes.
15 Q. What was -- what communications did you have?
16 A. We hired them, Nerac, for a short term.
17 Q. And so you not only did the free service, you
18 actually hired them?
19 A. Yes.
13. PAGE 83:08 TO 83:13 (RUNNING 00:00:33.900)
08 Q. (BY MR. KONING) Okay. Mr. Beber, I'm going
09 to hand you what's marked as Exhibit 192. It's an
10 e-mail from you to Mr. Griebenow dated October 24th,
11 2005 with some attachments to it, and the attachment is
12 called ASIC worksheet. Do you see that?
13 A. Yes.
14. PAGE 84:13 TO 85:12 (RUNNING 00:01:15.700)
13 Q. Under the item that says Multi Frequency Tag,
14 there's a listing of various frequencies. Do you see
15 that?
16 A. Yes.
17 Q. 315 megahertz, 433 megahertz and 126
18 kilohertz?
19 A. Yes.
20 Q. Under 433 megahertz, it says that the
21 advantages -- that it's the standard frequency in use
22 throughout most of the world.
23 Do you see that?
24 A. Yes.
25 Q. Do you agree with that statement?
00085:01 A. To the best of my knowledge, yes.
02 Q. And under the 126 kilohertz -- let me ask you
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Axcess International v. Baker Botts
03 about the 126 kilohertz. Was Axcess using the 126
04 kilohertz as its low frequency -- for low frequency
05 communications on its tags?
06 A. For the low frequency wake-up, yes.
07 Q. Wake-up.
08 Did Axcess use 132 kilohertz for low frequency
09 wake-up on its tags?
10 A. At one time, yes.
11 Q. And when did that change?
12 A. I don't recall specific dates.
15. PAGE 85:22 TO 86:13 (RUNNING 00:01:03.274)
22 Q. And do you remember why you made that change?
23 A. Due to clock frequencies requiring it to be
24 closer to 126 than 132.
25 Q. You're going to have to help me. What do you
00086:01 mean "clock frequencies"?
02 A. The processor clock frequency. The division
03 process -- the processor itself has its own clock, and
04 the divisions in the clock came down to a frequency that
05 was closer to 126 kilohertz than it was to 132
06 kilohertz.
07 Q. I see. And where did the processor come from?
08 A. The processor was an off-the-shelf device.
09 Q. So is it fair to say that the decision to use
10 126 kilohertz as the low frequency wake-up was driven by
11 the characteristics of the off-the-shelf processor that
12 you decided to use for the tags?
13 A. Yes.
16. PAGE 87:02 TO 87:05 (RUNNING 00:00:11.495)
02 Q. It's simply a matter of matching the clock
03 speed of the processor that you decide to buy off the
04 shelf to put in the chip?
05 A. In our case, yes.
17. PAGE 94:08 TO 94:10 (RUNNING 00:00:06.700)
08 Q. Now, did you have anything to do with the
09 hiring of Raj Bridgelall?
10 A. I did not.
18. PAGE 94:18 TO 94:22 (RUNNING 00:00:13.585)
18 Q. What did you understand his job to be?
19 A. Vice president of engineering.
20 Q. Was he then to be in charge of you and others
21 in the engineering department?
22 A. Yes.
19. PAGE 95:01 TO 95:13 (RUNNING 00:00:50.300)
00095:01 Q. Do you know why he left?
02 A. Not getting paid.
03 Q. Did you transfer to Mr. Bridgelall your patent
04 portfolio administration duties when he came aboard?
05 A. Yes, I did.
06 Q. Let me show you what's been marked already as
07 Exhibit 137, and this, I'll represent to you, is pretty
08 soon after Mr. Bridgelall came on board. And you can
09 see by your e-mail at the bottom of the page, it says,
10 Hi Brian, we have been very busy here and now have added
11 a CTO.
12 And the CTO is Mr. Bridgelall?
13 A. Yes, it is.
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20. PAGE 97:23 TO 98:02 (RUNNING 00:00:28.249)
23 Q. Did you ever mention to Baker Botts that for
24 Axcess to continue representing -- did you ever mention
25 to Mr. Oaks or anybody else at Baker Botts that for
00098:01 Axcess to continue employing Baker Botts, Baker Botts
02 would have to agree not to represent certain companies?
21. PAGE 98:04 TO 98:06 (RUNNING 00:00:08.349)
04 A. No, sir.
05 Q. Did you ever provide a list of prohibited
06 representations to Baker Botts?
22. PAGE 98:08 TO 98:11 (RUNNING 00:00:12.700)
08 A. I don't recall any.
09 Q. Did anyone at Axcess, to your knowledge, do
10 so?
11 A. I wouldn't know.
23. PAGE 99:16 TO 99:17 (RUNNING 00:00:05.714)
16 Q. Did you think that in your dealings with Baker
17 Botts, they did a good job?
24. PAGE 99:19 TO 99:20 (RUNNING 00:00:04.156)
19 A. They did what they were supposed to for Axcess
20 at the time.
25. PAGE 101:16 TO 101:18 (RUNNING 00:00:09.527)
16 Q. Are you aware of any facts that would suggest
17 that Baker Botts' representation of Savi harmed Axcess
18 in any way?
26. PAGE 101:20 TO 101:22 (RUNNING 00:00:11.305)
20 A. I personally am unaware.
21 Q. To your knowledge, did Baker Botts make any
22 mistakes in writing any of Axcess' patent applications?
27. PAGE 101:24 TO 101:25 (RUNNING 00:00:05.570)
24 A. Again, to my knowledge I have not experienced
25 anything.
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1. PAGE 5:20 TO 5:21 (RUNNING 00:00:02.783)
20 Q. Good morning, Mr. Bridgelall.
21 A. Morning.
2. PAGE 19:02 TO 19:03 (RUNNING 00:00:06.600)
02 Q. And when did you start at Axcess?
03 A. Around August or September of '06.
3. PAGE 20:19 TO 20:25 (RUNNING 00:00:16.943)
19 Q. So as part of your job, are you in charge of
20 the intellectual property portfolio?
21 A. Yes.
22 Q. Keeping track of what was in it?
23 A. Yes.
24 Q. And if there was going to be new patents
25 applied for, that would go through you?
4. PAGE 21:02 TO 21:02 (RUNNING 00:00:00.900)
02 A. Yes.
5. PAGE 21:07 TO 21:10 (RUNNING 00:00:10.935)
07 Q. Are you aware of any patents that were applied
08 for by Axcess while you were there other than the ones
09 that went through you?
10 A. While I was there, no.
6. PAGE 23:10 TO 24:01 (RUNNING 00:01:06.100)
10 Q. And was it your job to recommend what
11 direction the company should go in from a technological
12 standpoint?
13 A. From -- yes, technological standpoint.
14 Q. Was it your job to review the existing
15 technology that the company had as part of that
16 evaluation?
17 A. Yes.
18 Q. Was it your job to review proposed technology?
19 A. I felt it was my job.
20 Q. What about proposed patents?
21 A. Proposed from whom?
22 Q. Anybody at Axcess. Somebody said, here's an
23 invention, I'd like Axcess to patent it, was that part
24 of your job to evaluate whether Axcess should incur the
25 expense of attempting to patent an invention?
00024:01 A. My job was to evaluate the proposal, yes.
7. PAGE 27:25 TO 28:10 (RUNNING 00:00:54.581)
25 Q. Okay. Now, you left Axcess when?
00028:01 A. In 2010.
02 Q. Do you remember what --
03 A. September or October 2010.
04 Q. And why did you leave?
05 A. I was offered a position with the university,
06 and in addition to that, there was a period of lack of
CONFIDENTIAL page 1
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07 payment, salaries, and it became difficult so I left.
08 Q. For how long were you unpaid by Axcess?
09 A. Oh, let's see. Probably about a couple of
10 months. Six weeks, couple of months.
8. PAGE 41:24 TO 42:08 (RUNNING 00:00:36.807)
24 Q. Did you ever talk about anything having to do
25 with AeroScout or Savi with anyone at Baker Botts?
00042:01 A. No.
02 Q. Okay. Did -- let's put aside the AeroScout
03 complaint and what discussions you had about the
04 AeroScout complaint with Mr. Griebenow or anybody else
05 at Axcess.
06 Other than that, did anyone at Axcess ever
07 tell you that Baker Botts had made a mistake or had not
08 done what it was asked to do?
9. PAGE 42:13 TO 42:25 (RUNNING 00:00:37.841)
13 Q. Anytime before the filing of the lawsuit in
14 this case.
15 A. No, I don't remember that.
16 Q. Did you ever reach that conclusion on your own
17 that Baker Botts had made a mistake?
18 A. I never concluded anything.
19 Q. Well, you worked with Baker Botts on getting
20 new patents for the company, right?
21 A. Yes.
22 Q. And in your observation, did they ever make a
23 mistake on anything they did for you?
24 A. Not to my knowledge anything they did for me,
25 no.
10. PAGE 43:01 TO 43:17 (RUNNING 00:00:56.100)
00043:01 Q. And I think you said this already, but I just
02 want to make sure. You never told or suggested to
03 anybody at Baker Botts that Baker Botts had made any
04 sort of a mistake?
05 A. No.
06 Q. Or that Axcess was unhappy with Baker Botts?
07 A. No.
08 Q. Did you ever ask Baker Botts who else in the
09 RFID area the firm represented?
10 A. Never discussed with Baker Botts anything
11 related to this.
12 Q. Did you ever tell Baker Botts that Axcess
13 wouldn't use the firm if the firm represented anybody
14 else who did RFID?
15 A. I don't remember anything like that, no.
16 Q. When you worked with other lawyers in the
17 past, have you ever made that sort of a request?
11. PAGE 43:19 TO 43:21 (RUNNING 00:00:08.424)
19 A. No.
20 Q. Did you ever give Baker Botts a list of
21 companies that Axcess didn't want it to represent?
12. PAGE 43:23 TO 44:03 (RUNNING 00:00:15.100)
23 A. No.
24 Q. Did you ever reject any invoice that Baker
25 Botts sent?
00044:01 A. Did I ever --
02 Q. Reject an invoice.
03 A. No.
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13. PAGE 44:16 TO 45:02 (RUNNING 00:00:47.100)
16 Q. During your employment with Axcess, at any
17 time did you mention Savi to Baker Botts?
18 A. No.
19 Q. Now, you knew some people that worked at Savi,
20 right?
21 A. Yes.
22 Q. And soon after you joined the company, you
23 advocated to Mr. Griebenow that the company should
24 consider looking at licensing some technology from Savi.
25 Do you remember that?
00045:01 A. I probably -- I don't remember specifically
02 recommending that, but I probably did.
14. PAGE 45:07 TO 45:09 (RUNNING 00:00:04.950)
07 Q. And eventually Axcess entered into a license
08 with Savi, right?
09 A. Yes.
15. PAGE 45:14 TO 45:16 (RUNNING 00:00:09.400)
14 Q. You never talked with Baker Botts about
15 licensing from Savi, did you?
16 A. Never talked to Baker Botts about that.
16. PAGE 68:02 TO 68:04 (RUNNING 00:00:11.513)
02 Q. Were you ever told by anyone at Axcess that
03 Baker Botts had ever provided any representation to
04 Axcess in any way related to Savi?
17. PAGE 68:06 TO 68:10 (RUNNING 00:00:17.116)
06 A. No. I don't remember that.
07 Q. Are you aware of a single shred of evidence,
08 either e-mails or notes or conversations, that indicates
09 that anyone at Axcess ever mentioned Savi to Baker
10 Botts?
18. PAGE 68:12 TO 68:12 (RUNNING 00:00:10.100)
12 A. No, not aware.
19. PAGE 69:12 TO 69:13 (RUNNING 00:00:07.476)
12 Q. Did anyone ever tell you why Axcess didn't
13 follow Haynes and Boone's advice?
20. PAGE 69:15 TO 69:15 (RUNNING 00:00:01.073)
15 A. No.
21. PAGE 81:01 TO 81:08 (RUNNING 00:00:21.900)
00081:01 Q. Did Axcess try to get into the military market
02 or the defense market when you were there?
03 A. I remember Axcess trying to sell to any market
04 available. I don't remember particularly going after
05 military market specifically.
06 Q. You don't recall that that was any kind of a
07 focus of the company?
08 A. That was not necessarily a focus.
22. PAGE 82:11 TO 82:14 (RUNNING 00:00:12.600)
11 Q. Do you have any reason to believe that Axcess
12 had anything to do whatsoever with Savi getting any
13 government contracts?
14 A. I don't think so.
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23. PAGE 83:07 TO 83:12 (RUNNING 00:00:25.200)
07 Q. Who did Axcess consider to be its major
08 competitor while you were there?
09 A. Major competitor for Axcess while I was there?
10 A company by the name of RF Code.
11 Q. That was the primary competitor?
12 A. As I can recall, yes.
24. PAGE 112:11 TO 112:14 (RUNNING 00:00:11.684)
11 Q. Now, let me ask you about frequencies as they
12 relate to RFID technologies. Is it fair to say that
13 throughout the world, frequency bands are tightly
14 regulated?
25. PAGE 112:16 TO 112:18 (RUNNING 00:00:13.988)
16 A. Frequency bands are regulated by the -- their
17 respective governments. Tightly, I'm not sure what that
18 means. They're regulated.
26. PAGE 114:22 TO 115:05 (RUNNING 00:00:27.458)
22 Q. And you have as a low frequency 126 kilohertz.
23 Is that what Axcess was using at this time?
24 A. Yes.
25 Q. Did Axcess ever sell products with 132?
00115:01 A. I don't think so.
02 Q. So as far as you knew, all the time that you
03 were working there, the low frequency employed within
04 the Axcess products was 126 kilohertz?
05 A. Yes.
27. PAGE 124:03 TO 124:10 (RUNNING 00:00:23.900)
03 Q. And did you -- and you knew at this time that
04 Axcess also had low frequency wake-up patents, right?
05 A. Yes.
06 Q. And when you received this or other
07 information about the Savi license on the 18185 ISO
08 standard, did you review the Savi patents that are
09 listed here?
10 A. Yes.
28. PAGE 125:25 TO 126:02 (RUNNING 00:00:19.044)
25 Q. Let me show you what's been marked as Exhibit
00126:01 146 and ask if you can identify this as an e-mail that
02 you sent on or about May 17th, 2007. Is that an e-mail
29. PAGE 126:03 TO 127:05 (RUNNING 00:01:36.200)
03 that you sent on May 17th, 2007?
04 A. Yes.
05 Q. Who did you send it to?
06 A. Looks like I sent it to Allan Griebenow and
07 Allan Frank.
08 Q. And this is called a Savi licensing program
09 details, right?
10 A. Yes.
11 Q. And there were two attachments to the e-mail,
12 two zip files?
13 A. Okay.
14 Q. Yes?
15 A. Apparently looks like it was, yes.
16 Q. And the bottom of the e-mail, it reflects that
17 Mr. Burns sent you information regarding the licensing
18 program on May 17th as well?
19 A. Yes.
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Axcess International v. Baker Botts
20 Q. So all of the attachments to Exhibit 146 were
21 transmitted by you to Mr. Griebenow and to Mr. Frank?
22 A. Yes.
23 Q. Now, if you look at the e-mail itself, you
24 appear to summarize points that peaked your interest,
25 right?
00127:01 A. Yes.
02 Q. The second thing you note is that they cite
03 four LF wake-up patents and then you say you've
04 downloaded them, attached.
05 A. Yes.
30. PAGE 127:16 TO 127:23 (RUNNING 00:01:23.300)
16 Q. And the four Savi patents that are attached to
17 this e-mail, could you identify which ones those are?
18 And you can identify them just by the last three numbers
19 of the patent number.
20 A. Okay. Looks like we have '392, '888, '484 and
21 '114.
22 Q. So '392, '888, the '114 and the '484?
23 A. Yes.
31. PAGE 130:14 TO 130:18 (RUNNING 00:00:14.700)
14 Q. There's no question in anybody's mind,
15 including yours, about what patents were being licensed
16 if you were going to enter into a license with Savi on
17 the 18185 standard, right?
18 A. They were clear patent numbers.
32. PAGE 141:06 TO 141:24 (RUNNING 00:01:09.948)
06 Q. Now let me show you what's been marked as
07 Exhibit 150. It's an e-mail from you to Brian Oaks with
08 a copy to Mr. Frank, right?
09 A. Okay.
10 Q. And the third paragraph says, As you may also
11 be aware, Axcess will be transitioning the work to
12 another firm. As such, please discontinue all appeals
13 and filings.
14 A. Yes, I see that.
15 Q. I know we talked about this briefly before,
16 and I think you testified that you didn't remember why
17 Axcess was terminating Baker Botts, right?
18 A. Correct.
19 Q. Does this e-mail refresh your recollection in
20 any way about --
21 A. I still don't -- no.
22 Q. Okay. No one told you, We're mad at Baker
23 Botts or we think they're scoundrels or anything like
24 that?
33. PAGE 142:01 TO 142:01 (RUNNING 00:00:03.300)
00142:01 A. I don't remember that at all.
34. PAGE 155:19 TO 156:06 (RUNNING 00:00:36.941)
19 Q. And then you've got the '985 and the '727
20 patents, and you refer to those as tag-to-tag
21 communications, correct?
22 A. Yes.
23 Q. And basically the -- those two patents, is it
24 fair to characterize them as involving a tag that could
25 serve both as a normal tag and also operate as a reader
00156:01 to communicate with other tags?
02 A. More of a communications conduit, not
03 necessarily reader.
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Axcess International v. Baker Botts
04 Q. To function as a communications conduit to
05 other tags --
06 A. Yeah.
35. PAGE 156:15 TO 156:18 (RUNNING 00:00:16.309)
15 Q. Do you know whether Axcess ever sold any
16 products that incorporated the tag-to-tag communications
17 function?
18 A. I do not think so.
36. PAGE 157:18 TO 158:04 (RUNNING 00:00:38.484)
18 Q. Was the basic concept underlying the
19 tag-to-tag patent the ability to extend the range of the
20 reader so that tags outside of the reader's range could
21 report back to the reader?
22 A. That was one benefit.
23 Q. What was the other benefit?
24 A. Power consumption, not having to plug into a
25 separate power source.
00158:01 Q. Meaning that a tag would actually --
02 A. Could be placed anywhere.
03 Q. And wouldn't have to be plugged in?
04 A. Yeah.
37. PAGE 170:21 TO 170:23 (RUNNING 00:00:09.581)
21 Q. Was the fact that Axcess did not sell any
22 products to the government or the military at all the
23 result of Savi?
38. PAGE 170:25 TO 171:01 (RUNNING 00:00:05.907)
25 A. In my opinion, there were no relationship
00171:01 between one or the other.
39. PAGE 173:10 TO 173:16 (RUNNING 00:00:25.700)
10 Are you aware of or have you seen any evidence
11 that Baker Botts pulled any punches when it represented
12 Axcess at the same time it represented Savi?
13 A. No.
14 Q. Are you aware of any evidence or indication
15 that Baker Botts shared any confidential Axcess
16 information with Savi?
40. PAGE 173:18 TO 173:20 (RUNNING 00:00:04.729)
18 A. No, I'm not aware.
19 Q. No?
20 A. I'm not aware of anything.
TOTAL: 1 CLIP FROM 1 DEPOSITION (RUNNING 00:16:22.715)
CONFIDENTIAL page 6
Axcess International, Inc. v. Baker Botts, L.L.P.
Combined Opinion