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Axcess Int'l, Inc. v. Baker Botts L.L.P.

COURT OF APPEALS FOR THE FIFTH DISTRICT OF TEXAS DALLAS, TEXAS
Apr 2, 2015
NO. 05-14-01151-CV (Tex. App. Apr. 2, 2015)

Opinion

NO. 05-14-01151-CV

04-02-2015

AXCESS INTERNATIONAL, INC. Appellant, v. BAKER BOTTS L.L.P. Appellee.

Respectfully submitted, 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. 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.


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.

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:

Witness

Called by

Court Reporter's Recordlocation

Stipulatedattachment

Michael Marcin

Axcess

Vol. 10B, Page 93, Line 1

tab 1Page/lines6:7 - 25:2

Michael Marcin

Baker Botts

Vol. 10B, Page 93, Line 8

TAB 2

Michael Marcin

Axcess

Vol. 10B, Page 93, Line 13

TAB 3Page/lines89:12 - 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.

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.

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

Q. Good morning, Mr. Marcin.

A. Good morning.

Q. Can you state your name for the record?

A. Michael J. Marcin.

Q. What's your current occupation?

A. I am an attorney.

Q. What kind of attorney are you?

A. I am a patent attorney.

Q. What firm are you currently with?

A. Fay Kaplun & Marcin.

Q. How long have you been with this firm?

A. Since June of 2000.

Q. Could you generally describe what your job responsibilities are as a patent attorney?

A. Generally I prosecute patent applications in front of the United States Patent and Trademark Office, which comprises normally taking a disclosure from an inventor, putting that disclosure into a patent application, filing that patent application with the United States Patent and Trademark Office, and then having a general back-and-forth with the patent office during what we call the prosecution phase in order to hopefully have the patent office allow the patent application as a patent.

Q. We will talk a little bit more about that in a second.

Can you just briefly outline your educational history starting with college?

A. Sure. I went -- I have a bachelor of science in electrical engineering from the University of Pennsylvania, and I have my law degree from Fordham University.

Q. And how long have you been practicing patent prosecution?

A. I started while I was in law school in 1996, and I have been doing it ever since.

Q. How does the electrical engineering degree you got in undergrad play into patent prosecution?

A. Normally when we speak with the inventors, they are typically engineers or other technical people, and so it plays into the fact that we speak the language that they speak, technical language, and it allows us as I said to take what they described to us and write that down in a way hopefully that an ordinary person reading the patent can understand.

Q. What kinds of patents have you helped prosecute in your time at your current firm?

A. I generally focus on the electrical arts and computer science arts. So it could be anything from, you know, RFID technology, radio frequency identification technology, mobile telecommunications technology, computer software, operating systems, networking applications, and also what we call business method patents which are -- generally the best way to describe them would be the Internet applications that most of us are used to.

Q. I would like to talk to you a little bit about the work you did for my client Axcess at this point.

How did you come to represent Axcess International in prosecution matters?

A. So I don't remember exactly how Axcess was initially referred to me, but I recall that my initial contact was with Raj Bridgelall who called me on the phone and interviewed me for approximately a half hour. Part of that interview was to discuss generally what Axcess was looking for and also my experience in their technical field, and as I said, that lasted about half hour and then about a week later Raj called me back and said they decided to retain us for their patent prosecution work.

Q. What was your job relative to Axcess? What were they asking you to do?

A. So Axcess -- I don't remember the exact number, but they had about 12 patent families. Some of these were already issued as patents. Some of them were still in the patent office being prosecuted, and what they wanted us to do was to continue to prosecute those patent applications that were in the patent office and generally advise them on all their patent prosecution matters.

Q. I am going to show you what's previously been marked in this case as Exhibit 165.

Do you recognize that document, sir?

A. I do.

Q. What is it?

A. It's a patent that is owned by Axcess.

Q. And was this one of the patents that you reviewed when Axcess hired you?

A. This is a patent I reviewed. I did not prosecute this patent. It was prosecuted or it was issued as a patent prior to my representation of Axcess.

Q. What significance did that patent play during the prosecutions?

A. So this particular patent was one of the patents that there were -- there was a continuation application filed in this case, and what Axcess had asked me to do was to work on that continuation application and in fact, file a further continuation application to get different claims scope in a new patent.

Q. I would also like to show you what's previously been marked as Exhibit 167 in this case.

Do you recognize this document, sir?

A. Yes, I do.

Q. What is this document?

A. This is another patent that is in the same family, and this is a patent based on an application that was again filed by a different firm that was issued.

Q. Was this part of the patent family that you referenced earlier for Axcess?

A. Yes, it was.

MR. ORMAN: And then I would like to mark this as Exhibit 310.

(Exhibit 310, 868 patent, marked for identification, as of this date.)

Q. Do you recognize this document, sir?

A. Yes, I do.

Q. What is this?

A. This is a further patent from the same family that I described before, and this is a patent based on an application that I filed -- our firm filed for Axcess.

Q. And you mentioned a continuing application. Can you explain what a continuing application is?

A. I will try. A continuation application is an application that is filed after the original application. Patent applications generally have three parts to them. The three parts are the drawings, the description, and the claims. The drawing -- in a continuation application, the drawings and the claims remain the same but you are allowed to file different claims that can look the same or they look a little bit different to go for different claim scope. The only rule is that they must be supported by those original drawings and those original claims and the give up is that you have a -- what we call a priority date that goes back to the original application, and why that is important is that your patent is good from the day of issue of the patent until 20 years from the filing date or the priority date so when you file a continuation application, you are giving up some time when you are issued patent -- when a patent from the continuation application issues.

Q. I will mark what we will call the 868 patent as Exhibit 310.

Was this a continuing application?

A. Yes, it was.

Q. It's one that you processed for Axcess?

A. Yes, it was.

Q. Generally, what are the benefits of getting a continuing application?

A. There are different reasons why applicants file continuation applications. One reason could be that they are unhappy with the claims scope in the original application or any other continuation applications or not necessarily unhappy but they would like a different claims scope in the continuation application. The other reason is since the continuation application is normally filed for several years after the original application, it allows the applicant to understand how the industry or how the products are -- that the patent covers are being developed or being used and it allows them to write claims that are more directed to the products that are in the marketplace.

Q. And you mentioned that a client may be able to write claims directed toward the marketplace. Why would a client want to do that?

Q. You can answer.

A. I apologize. Can you repeat the question?

Q. You mentioned something about being able to kind of watch the marketplace develop. Why would a continuation help that for a client?

A. So the client has invented the subject matter that is in the patent, but the claims may be written in such a way where it's not entirely clear that what is in the products in the marketplace -- the claims are written in such a way as to cover the products in the marketplace even though the client has invented that subject matter. So the rewriting of the claims in the continuation application allows the client to have more directed claims at those products, which could allow the client to do several things such as license the manufacture of that -- of the product in the marketplace or sue them for infringement of their patent.

Q. I believe a little earlier you mentioned priority date. Can you explain what priority date is?

A. So in general, we refer to the priority date as the filing date of the application and that is generally when your right -- when your right starts with respect to the patent with respect to others who may file -- who may file later applications. So priority dates are important when there are later filed patents in the same area.

Q. What is the priority date of the 868 patent that's been marked as Exhibit 310?

A. So actually, in a continuation application, the priority date goes back to the earliest patent application. So when the 868 patent was filed on October 27, 2009, that is, in fact, not the priority date for the 868 patent. It goes back to the filing date of the original parent application which is the 7,005,985 patent which is July 20, 1999.

Q. What patents did you review on behalf of Axcess as part of your representation relative to this continuing application?

A. Relative to this family of applications?

Q. Yes.

A. So I -- at the point that I took over representation of this family, the 985 patent was already issued, and I would have completely read that and its file history. The second patent in the family, which is the 886 patent, I took over the representation of that application after it had been allowed so I would have read the -- again, the complete file history of that patent, and then with respect to the 868 patent, I would have -- since I prosecuted this application and filed it, I would have read the complete file -- the complete specification prior -- prior to filing the application.

Q. And what's the general subject matter of the 985 patent?

A. Of the 985 patent? Well, it is radio frequency identification tags and systems. The claims -- I would have to look at them exactly, but I believe the claims are generally directed at the idea of there being a primary tag and that primary tag being loaded with identifications of secondary tags.

Q. And what is your understanding as to what Axcess was hoping to accomplish in getting the continued application of the new patent?

A. So my recollection is that when I first came on, Axcess identified this family as an important family for them, and one of the things that I did when I initially got it, I read the entire application and tried to understand it as best I could. Then I spoke to Raj Bridgelall and he explained that they did not believe that the claims that issued in the 985 patent were directed at the subject matter that they thought was the, in fact, their invention and/or was the main portion of their invention. He explained to me what he thought the invention was and what they would like the claims to be directed at. I re -- I understood that, I drafted a set of claims directed toward that invention. I made sure in conjunction with them that those claims were supported by the specification and drawings of the 985 patent or the originally filed application that led to that patent, and then after that, we filed the application that led to the 868 patent and the general subject matter that they were -- they were trying to cover was the idea of a dual frequency radio identification tag.

Q. I would like to show you what's been previously marked in this case as Exhibit 25.

Can you take a look at that? Do you recognize this document?

A. Yes, I do.

Q. And what is it?

A. This is a patent that is on its face owned by Savi Technology.

Q. How do you recognize this document?

A. So when I -- as I was explaining before, when I was tasked to write the continuation application with respect to the dual frequency identification tags, one of the -- one of the other parameters that was discussed with me was the fact of covering other people -- other corporations' technology in the field, and one of the companies that was mentioned was Savi and they -- the way they described or the way Axcess described the Savi technology to me was to give me this patent and say that this is how they believe the Savi technology worked as described in this patent, and so one of the -- one of the tasks was to cover what was inside this or what was described in this patent.

Q. If you could get the 868 patent back in front of you, it's what we marked as 310.

A. Yes.

Q. Were you able to get a patent for Axcess?

A. Yes.

Q. And is it this patent?

A. It is this patent, yes.

Q. What does the 868 patent cover?

A. It generally covers the dual frequency radio identification tags.

Q. And what priority date does the 868 patent have?

A. As I explained before, it has the priority date of the 985 patent, which is July 20, 1999.

Q. How does that priority date compare to the Savi 114 patent?

A. So the priority date of the Savi 114 patent, it was filed on April 24, 2001. It claims priority to a provisional application that was filed on September 7th of 2000. So the earliest possible priority date for the Savi patent would be September 7th of 2000.

Q. And the 868 patent's priority date would be?

A. July 20, 1999.

Q. So the 868 patent would have an earlier priority date than the Savi patent?

A. That's -- yes, that is correct.

Q. Now, during the prosecution of this patent, I believe you mentioned there is a back-and-forth with the Patent Trademark Office?

A. Yes.

Q. Can you explain a little bit about what the process was like in terms of getting the 868 patent and your communications with the Patent and Trademark Office?

A. So I could explain to you the typical path that a patent application goes. I don't recall all the specifics of the 868 patent.

Q. That's fine.

A. So normally when we file a patent application, we file it with claims that have a scope that is probably broader than we will eventually get in the issued patent, and I think the way that I always like to describe this to clients is that the technology in an area is a brick wall and there is a hole in that brick wall and your patent is going to be a brick that fills in that hole and what we like to do is write the claims such that the brick is a little bit bigger than the hole and therefore, during prosecution we will whittle down that brick so it fits in tight to the hole and fill the entire hole rather than write a claim that's a very small brick and leave space in that hole because if you are entitled to fill that entire hole, you should fill the entire hole.

So the way this normally works is that you file your application with your claims in the patent office. The patent examiner will examine the patent application and the claims and normally send you what we call a rejection. There is different types of rejections, but the normal ones that we deal with are what we refer to as anticipation or obviousness rejections based on prior art. Prior art are other applications -- other patent application publications, other patent documents or anything that's written in journals or the newspaper or anything regarding the subject matter in the patent application.

And then after we receive this rejection, we will either write an argument to the patent examiner saying why the examiner is wrong and our claims should be allowable, or we can also what we call amend the claims which is change your scope a little and also make an argument as to why this changed scope gets us around the prior art. These objections can come multiple times. It's very typical in a case to have three or more of these rejections until ultimately you end up with a -- with an allowance.

The other thing that happens is sometimes we will have interviews with the examiner where we will talk to the examiner about the case and get his understanding of why he is rejecting the claims, make our arguments over the phone or in person with the examiner, and it's basically a back-and-forth talk with the examiner to attempt to understand and maybe work out some claim language that will be allowable.

Q. And just so I understand, you mentioned a rejection. That's a pretty harsh-sounding word, but is rejection a common part of the patent prosecution practice?

A. Yes, it is and in fact, as I described before, we generally find it not in our clients' best interest to get what we call a first office action allowance because that usually means that we drafted the claims too narrow and that we were entitled to a broader scope of protection. So we typically would like a rejection so we can figure out exactly what the client is entitled to.

Q. So if you get a rejection, that doesn't mean that you can't get a patent?

A. No, it does not. I would say that -- I don't have the exact statistics, but it would not shock me that over 99.5 percent of all issued patents receive a rejection at some point.

Q. And if you would pull out the 868 patent and go to the last page and look at the claims, can you describe generally what the subject matter of the claims of the new Axcess patent are?

A. So as I said before, it is generally directed at -- there are two independent claims. The first is a method claim, and that's a method of operation of a radio frequency tag having dual frequency, and the second independent claim is directed to a radio frequency identification tag having dual frequency.

Q. And how do those claims compare to the Savi patent that you reviewed?

A. The claims, to the best of my recollection, cover some of the subject matter that is disclosed in the Savi patent.

Q. And that was one of Axcess's goals in filing the continuing application that became the 868 patent?

A. Yes, it was.

Q. After reviewing the Savi 114 patent and prosecuting the 868 patent, could your firm have represented both Axcess and Savi if they came to you asking to represent these two patents?

A. No. I believe it would have been a conflict.

Q. If Axcess had come to you in 2002 and asked you to prosecute this kind of continuing application for them that you ended up doing in 2010, would you have been able to do so for them?

A. Yes.

Axcess International v. Baker Botts

Marcin, Michael (Vol. 01) - 04/01/20141 CLIP (RUNNING 00:15:16.801) Version 2014-04-30-1015 BB-MARCIN31 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

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

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?

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

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.

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)

Q. Just a few questions, Mr. Marcin. I will try and be quick.

Mr. Koning talked to you about a reexamination procedure that's ongoing in one of the Axcess patents. That procedure has not been completed yet, has it?

A. No.

Q. Mr. Koning also talked to you a lot about office actions and rejections specifically involving the prosecution of the 868 patent.

Are office actions and rejections a fairly common procedure in patent prosecution?

A. They are very common. It's basically what I do, day in and day out, is respond to office actions. That is very typical -- you know, the prosecution of the 868 patent I would call as a very typical path through the patent prosecution procedure.

Q. So just because the patent examiner rejected certain claims doesn't mean that Axcess wasn't able to get a patent in the end?

A. No. As I said in my initial testimony, it's very typical. In fact, we would find it an affront if we did not receive any objections of the claim because we probably should have drafted the claims to be broader than they were.

Q. And I just want to recap real quickly what your representation was for Axcess and what you did relative to the prosecution of the 868 patent.

What was your understanding of what Axcess wanted to do relative to the prosecution of what became the 886 patent?

A. My understanding was as I described that they wanted to cover other competitors' products. The one that I specifically recall was Savi, and how that was described to me was by reading the Savi patent that we referred to before and also to get -- I think I said before to sort of the heart of what the invention -- what Axcess thought their invention was which was the dual frequency aspect of the -- of the invention, and therefore, we were drafting claims with that in mind also.

Q. And part of the heart of the Savi 114 patent was also dual frequency RFID technology?

A. I believe that the title of that patent is method apparatus for tracking items using dual frequency tags.

Q. Just to be clear, you mentioned Savi's products but you never actually saw one of Savi's products?

A. Not that I recall.

Q. So when you were looking at the Savi 114 patent, were you looking at the claims of that patent?

A. I was looking at the entire patent. I was looking at the description and the claims.

Q. Is it your opinion that you were able to meet your client's goal in this case of getting them a patent that would read on Savi's 114 patent?

A. I have not gone back and specifically reviewed the claims but that was the goal of -- one of the goals of the prosecution of this application.

Axcess International v. Baker Botts

Steeves, Wayne (Vol. 01) - 07/12/20121 CLIP (RUNNING 00:19:53.921) Version 2014-05-08-1330 BB-STEEVES43 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?

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

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.

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.

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

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.

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

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)

Axcess International v. Baker Botts

Beber, Michael (Vol. 01) - 06/20/20121 CLIP (RUNNING 00:09:27.080) Version 2014-05-11-1215 BB-BEBER27 SEGMENTS (RUNNING 00:09:27.080)

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

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

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.

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.

TOTAL: 1 CLIP FROM 1 DEPOSITION (RUNNING 00:09:27.080)

Axcess International v. Baker Botts

Bridgelall, Raj (Vol. 01) - 06/19/20121 CLIP (RUNNING 00:16:22.715) Version 2014-05-11-1215 BB-BRIDGELALL40 SEGMENTS (RUNNING 00:16:22.715)

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

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.

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.

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.

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.

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)


Summaries of

Axcess Int'l, Inc. v. Baker Botts L.L.P.

COURT OF APPEALS FOR THE FIFTH DISTRICT OF TEXAS DALLAS, TEXAS
Apr 2, 2015
NO. 05-14-01151-CV (Tex. App. Apr. 2, 2015)
Case details for

Axcess Int'l, Inc. v. Baker Botts L.L.P.

Case Details

Full title:AXCESS INTERNATIONAL, INC. Appellant, v. BAKER BOTTS L.L.P. Appellee.

Court:COURT OF APPEALS FOR THE FIFTH DISTRICT OF TEXAS DALLAS, TEXAS

Date published: Apr 2, 2015

Citations

NO. 05-14-01151-CV (Tex. App. Apr. 2, 2015)