Free Motion in Limine - District Court of Arizona - Arizona

Case 2:04-cv-00400-PGR

Document 177-7

Filed 04/13/2007

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

HYPERCOM CORPORATION, Plaintiff, vs. OMRON CORPORATION, Defendant.

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No. CV 04-0400 PHX PGR

DEPOSITION OF CHARLES BERMAN, taken on behalf of the Plaintiff, at 2450 Colorado Avenue, Suite 400E, Santa Monica, California, commencing at 9:08 a.m., on Thursday, June 22, 2006, pursuant to Notice, before ISABEL H. PEREZ, CSR No. 12631, a Certified Shorthand Reporter, in and for the County of Los Angeles, State of California. ***

JONNELL AGNEW & ASSOCIATES (800) 524-DEPO
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APPEARANCES: For the Plaintiff: SNELL & WILMER BY: SID LEACH, ESQ. One Arizona Center Phoenix, Arizona 85004-2202 (602) 382-6000 [email protected] For the Defendant:

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BAKER & DANIELS BY: DAVID P. IRMSCHER, ESQ. 111 East Wayne Street Suite 800 Fort Wayne, Indiana 46802 (260) 424-8000 [email protected]

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I WITNESS Charles Berman

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EXAMINATION By Mr. Leach

E X H I B I T S PLAINTIFF'S 1 2 Expert Witness Report of Charles Berman United States Patent No. 5,012,077 Amendment or Official Action Multiple Benefits for Multi-Lane Pet Store Chain 341 Patent 895 Patent PAGE 5 18 22 67 70 73

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QUESTIONS INSTRUCTED NOT TO ANSWER None.

INFORMATION REQUESTED None.

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infringement case as lead attorney; correct? A. Q. Correct. In looking at your expert report, the

infringement analysis that you performed is specifically for the Hypercom ICE 5000/5500 series point-of-sale terminal; correct? A. Q. Correct. How did you go about picking the ICE Or maybe I

5000/5500 terminal for your analysis? should ask you more specifically.

What was the basis for your picking the -- what was the basis for your picking the Hypercom ICE 5000/5500 series point terminal for your infringement analysis? A. I was given the assignment to review In light of three patents in Hypercom products.

investigating the products, it appeared to me that the most information that was available to me for their products was the 5000/5500 series. Q. Your expert report does not contain any specific analysis for the ICE 6000 terminal Hypercom has; correct? A. Q. Correct. Your infringement analysis did not

include any specific analysis for the Hypercom T8

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POS terminal, does it? A. Q. Correct. And your infringement analysis does not

include any specific analysis for the Hypercom T7 POS terminal; correct? A. Q. Correct. If you would, look at Exhibit 1 in I think it appears on page 10 of The last sentence refers to "Such

paragraph 10. your exhibit.

an analysis is part of my standard prefiling claim interpretation and investigation." Would you, please, describe to me what your standard prefiling claim interpretation of investigation does? A. As part of my work assignments, if I have a project which would relate to patent prosecution strategy or analysis or finding, we would do research which generally would include prior OT analysis. If we were concerned with validity issues, and we would use that analysis or understanding in crafting patent claims. In certain situations, we may be looking at competitive products to help us determine appropriate strategies. Q. So when you talk about prefiling, are you referring to filing a patent application as

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opposed to filing a lawsuit? A. In the sense that was used in paragraph 10, it was more in the light of finding patents, but I have also been involved in claim analysis in regard to infringement issues and assisted others in filing of lawsuits. Q. When you say that you've assisted others in filing lawsuits, have you ever been listed as an attorney of record in a patent infringement action in federal court in the United States? A. Q. Yes. When you do a claim analysis in regard

to infringement, do you review the file history for the patents whose claim you were analyzing? A. Q. A. Q. Yes. Is that standard practice? Yes. Do you consider that, an important part

of claim construction, so that you know whether there's any prosecution history estoppel issues or issues of claim construction that can be resolved by review of the file history? A. Q. Yes. Do you know what this standard prefiling

investigation is, that should be done prior to

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filing a patent infringement lawsuit, accusing someone of patent infringement? A. Q. A. Generally, yes. What is it? To be reasonably certain that the accused

product infringes the patent claim based on information that is given to the lawyer, and to make sure that the accused product has the elements of the claim. Q. If the accused product is readily available and can be readily procured for an amount less than $300 per product, would you, typically, obtain one to perform testing of the patent involved, the features or functionality of the product? A. If that is essential to determine the characteristics and operational aspects of the product, and there's no other information available, ideally one would like to have the product. Q. If you have a case where -- let me ask If you have hypothetically a case where someone comes to you with an expired patent, they want you to file a lawsuit based on it, and the patent covers some product, would a prefiling you this question in the form of a hypothetical.

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Q.

So if the United States Supreme Court

has so held that a patentee is obligated to plead and prove marking in a patent case, you're not aware of any such decision by the U.S. Supreme Court? A. Q. Correct. And I know it is a very complex area of patent law. Can you describe in more detail the standard or typical steps that you would go through in performing a claim construction as part of a prefiling investigation prior to filing a patent infringement lawsuit? A. Initially one will read the patent. One We would likely read the patent claims many times. would look at all the file history and review the file history. We would develop a claim chart, itemizing different elements of the claim. We would ensure a fair understanding of the claimed subject matter. We would then consider the accuse product and the elements features and methodology of that product in the light of the claims as we understood them. Q. If sufficient information is available in the public domain to determine whether or not an accused product infringed a patent, would

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someone who failed to investigate or consider that material meet the minimum standards required for prefiling investigation prior to filing a lawsuit for alleging patent infringement? A. Q. I really don't know. If someone filed a patent infringement

lawsuit without ordering or obtaining a copy of the file history and reviewing it in order to perform a proper claim construction, would that meet the minimum requirements for prefiling investigation prior to filing a patent infringement also? A. Q. I don't know. Now, in connection with the infringement

analysis you did in connection with your expert report, when specifically did you perform that analysis, you can give me dates? A. Q. analysis? A. frame. Q. Prior to your work for Omron Corporation In that time frame I was retained, my law firm may have been involved at a different time Approximately in the April 2006 time frame. When were you first retained by Omron

Corporation to perform this infringement

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