                                                                                               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

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                                      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.


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                                      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.

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                                      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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                                      Axcess International v. Baker Botts

       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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                                      Axcess International v. Baker Botts



   Beber, Michael (Vol. 01) - 06/20/2012                                        1 CLIP (RUNNING 00:09:27.080)


      Version 2014-05-11-1215

       BB-BEBER                          27 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


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                                                                                                       TAB 5
                                      Axcess International v. Baker Botts

                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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                                      Axcess International v. Baker Botts

       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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                                      Axcess International v. Baker Botts



   Bridgelall, Raj (Vol. 01) - 06/19/2012                                       1 CLIP (RUNNING 00:16:22.715)


      Version 2014-05-11-1215

       BB-BRIDGELALL                     40 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

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                                      Axcess International v. Baker Botts

                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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                                        Axcess International v. Baker Botts

       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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                                      Axcess International v. Baker Botts

       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.




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CONFIDENTIAL                                                                                                  page 6
