1 

NO. 05-14-01151-CV 

IN THE COURT OF APPEALS FOR THE FIFTH DISTRICT OF TEXAS 

DALLAS, TEXAS 

 

 

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. 

ACCEPTED

05-14-01151-CV

FIFTH COURT OF APPEALS

DALLAS, TEXAS

4/2/2015 9:53:55 AM

LISA MATZ

CLERK

 FILED IN 5th COURT OF APPEALS DALLAS, TEXAS 4/2/2015 9:53:55 AM LISA MATZ Clerk
2 

 2. Specifically, the parties stipulate that the deposition excerpts attached 

as TABS 1- 6 accurately reflect the deposition testimony that was played for the 

jury by video during trial, as indicated below: 

Witness Called by Court Reporter’s Record 

location 

Stipulated 

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. 
3 

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. 

 
4 

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 

 
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
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

 

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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
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

 

 

 

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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
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

 

 

 

 

 

 

 

 

 

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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
Axcess International v. Baker Botts

 08 A Yes. 

8. PAGE 52:02 TO 52:10 (RUNNING 00:00:36.813)

 02 Q When you would make comments -- or would 

 03 you make comments or ask questions from time to 

 04 time with regard to a draft that was prepared? 

 05 A Yeah, of course. And I was very pleased 

 06 with Terry's ability to comprehend the technical 

 07 aspects of what we went over in the specifications. 

 08 So I had very few times when I really had to 

 09 comment or make changes in that side of the 

 10 document, so. 

9. PAGE 52:21 TO 53:05 (RUNNING 00:00:29.871)

 21 Q And when you would raise comments 

 22 regarding the content of the drafts, do you ever 

 23 recall not getting a response? 

 24 A What time period? 

 25 Q Ever. 

 00053:01 A Oh. On the initial submissions? 

 02 Q Yes. On the draft of the patent 

 03 application? 

 04 A No. Terry was responsive. That was a 

 05 big change between Fenwick & West. 

10. PAGE 55:03 TO 55:07 (RUNNING 00:00:14.990)

 03 Q Are you aware of any instance in which 

 04 you alerted Baker Botts to an error or inaccuracy 

 05 to any patent applications which they then didn't 

 06 correct? 

 07 A I can't recall any. 

11. PAGE 63:12 TO 64:03 (RUNNING 00:00:43.900)

 12 Q So is it fair to say by the time that an 

 13 application was filed on one of your Axcess 

 14 patents, you were aware or had a reasonable 

 15 opportunity to become aware of the contents of the 

 16 application? 

 17 A Sure. Yeah. 

 18 Q And you had an opportunity to comment on 

 19 the application and ask questions about it? 

 20 A Throughout the process, I would say. 

 21 Q And before it was filed, you had 

 22 approved the filing of the application? 

 23 A I can't say in every case, but that 

 24 would seem to be a standard procedure. 

 25 Q Are you aware of any case in which you 

 00064:01 didn't approve the filing of an application before 

 02 it was filed? 

 03 A I just don't recall. 

12. PAGE 68:06 TO 68:19 (RUNNING 00:00:39.500)

 06 Q Did you ever complain while you were at 

 07 Axcess -- let me start that again. While you were 

 08 at Axcess, did you ever complain or express 

 09 dissatisfaction to Baker Botts about anything Baker 

 10 Botts did? 

 11 A Not that I recall. 

 12 Q Did you ever express complaints or 

 13 dissatisfaction about Baker Botts to anyone at 

 14 Axcess while you were there? 

 15 A Not that I recall. 

 16 Q Did anyone else at Axcess express 

 17 complaints or dissatisfaction with Baker Botts 

CONFIDENTIAL page 2
Axcess International v. Baker Botts

 18 while you were there? 

 19 A Not that I recall. 

13. PAGE 94:10 TO 94:22 (RUNNING 00:00:39.100)

 10 Q Okay. Now, when you started using Baker 

 11 Botts when you came to Axcess, you knew that Baker 

 12 Botts was a large law firm, right? 

 13 A I had never heard of Baker Botts before, 

 14 but somebody told me it was a large law firm and 

 15 that they occupied one of those skyscrapers 

 16 downtown Dallas, so I assumed they were a large law 

 17 firm. 

 18 Q Did you come to find that they had many 

 19 patent lawyers representing clients all over the 

 20 country? 

 21 A I can't say that I did. I just assumed 

 22 that would be the case. 

14. PAGE 95:09 TO 95:11 (RUNNING 00:00:11.200)

 09 Q To your knowledge did anyone at Axcess 

 10 ask Baker Botts not to represent any client or a 

 11 group of clients? 

15. PAGE 95:13 TO 95:13 (RUNNING 00:00:03.010)

 13 A To my knowledge, I would have to say no. 

16. PAGE 114:13 TO 115:07 (RUNNING 00:01:13.800)

 13 Q When you -- getting back to Savi. You 

 14 said that at some point you heard from a dealer 

 15 about a Savi product, and then you looked it up on 

 16 the Savi website? 

 17 A I don't recall. It could have been a 

 18 press release that he sent to us, it could have 

 19 been a data sheet, it could have been a website. I 

 20 don't recall. Eventually I did look it up on the 

 21 Web, I can tell you that, but. 

 22 Q What else did you do to investigate this 

 23 product? 

 24 A I attempted to dig a little bit deeper. 

 25 I went to the FCC site, I went to -- because I 

 00115:01 wasn't sure that they were infringing. You know, I 

 02 could only state that it sure looked like it. And 

 03 then the product was, the way it operated and 

 04 everything else, was identical, but... So I looked 

 05 at the FCC, I probably checked the USPTO website to 

 06 see if there were any patents filed by Savi. 

 07 Looked at the Savi website. 

17. PAGE 115:08 TO 115:21 (RUNNING 00:00:49.158)

 08 Q Anything else that you can recall? 

 09 A What date was that? That was 2002. 

 10 Q Yeah. May 2002, or earlier. 

 11 A Yeah. There were payment issues and 

 12 that kind of thing with Axcess at the time, so I 

 13 was trying to see if we could buy some Savi 

 14 product. And that didn't work. I probably asked a 

 15 dealer or two to see if they could just send us 

 16 some Savi product, and that didn't work. So none 

 17 of my avenues panned out for further investigation. 

 18 Q So when you say there were payment 

 19 issues, whose payment issues? 

 20 A Axcess was having financial trouble at 

 21 the time. 

CONFIDENTIAL page 3
Axcess International v. Baker Botts

18. PAGE 117:14 TO 118:03 (RUNNING 00:00:59.424)

 14 Q And you say you looked at the USPTO 

 15 website for Savi patents? 

 16 A Mm-hmm. 

 17 Q Did you do that only once? 

 18 A I don't recall. 

 19 Q Do you recall ever looking for Savi 

 20 patents other than when you first saw this 

 21 potential infringement? 

 22 A I believe I -- to the best of my 

 23 recollection, I believe I went to the USPTO site 

 24 and entered Savi as the assignee to see if they had 

 25 any patents issued. Obviously, I either didn't see 

 00118:01 any Savi patents or the Savi patents that existed 

 02 did not disclose any infringement. But I don't, 

 03 you know, I don't recall the details of all that. 

19. PAGE 122:05 TO 123:02 (RUNNING 00:00:58.662)

 05 Q Did you ever discuss, to your 

 06 recollection, with Terry Stalford or anyone else at 

 07 Baker Botts that Baker Botts couldn't afford to 

 08 take on any new matters or do new work for Axcess 

 09 until Axcess cleared up its past due bills? 

 10 A I don't recall. I did discuss with 

 11 Terry at some point, when he made the offer that he 

 12 couldn't do any more work but he would answer quick 

 13 phone calls for me, you know, without incurring any 

 14 charges or fees. 

 15 Q Without charging for it? 

 16 A Yes. 

 17 Q Just as a courtesy? 

 18 A Yeah. 

 19 Q And did he do that for you? 

 20 A He did. 

 21 Q Up to a certain point? 

 22 A I don't know when, but he did. I don't 

 23 know the time frames. It could be 2001 into 2002. 

 24 It could be -- I don't know. 

 25 Q Did -- 

 00123:01 A Could have been a month, four months. 

 02 No idea. 

20. PAGE 123:08 TO 123:10 (RUNNING 00:00:12.500)

 08 Q So tell me all the communications you 

 09 had with anybody at Baker Botts regarding Savi. 

 10 A None. Even to this day. 

21. PAGE 123:19 TO 123:22 (RUNNING 00:00:11.600)

 19 Q And to your recollection there were no 

 20 oral communications regarding infringement between 

 21 you and Baker Botts? 

 22 A To the best of my recollection, yeah. 

22. PAGE 124:07 TO 124:20 (RUNNING 00:00:35.646)

 07 Q And you never entered into agreement -- 

 08 an agreement with Baker Botts whereby Baker Botts 

 09 agreed to represent Axcess on infringement or 

 10 licensing matters? 

 11 A I can say the answer is no because I 

 12 didn't have the capability or the capacity to enter 

 13 into any agreements of that nature. 

 14 Q Did anyone at Axcess tell you that Baker 

 15 Botts had entered into such an agreement? 

 16 A No. 

CONFIDENTIAL page 4
Axcess International v. Baker Botts

 17 Q Did anyone at Baker Bott -- anyone at 

 18 Axcess ever tell you that Baker Botts had agreed to 

 19 represent Axcess on anything having to do with 

 20 Savi? 

23. PAGE 124:22 TO 124:22 (RUNNING 00:00:02.900)

 22 A Not that I recall. 

24. PAGE 127:17 TO 127:20 (RUNNING 00:00:12.986)

 17 Q You sent an e-mail to Mr. Griebenow 

 18 regarding Savi Technology. And if you'd look at 

 19 what I've marked as Exhibit 252, in the middle of 

 20 the page you'll see that e-mail. 

25. PAGE 127:23 TO 128:09 (RUNNING 00:00:56.400)

 23 Q Do you see it? 

 24 A Yes. 

 25 Q Why did you -- well, let me take a step 

 00128:01 back. It appears that it is a draft of a demand to 

 02 Savi Technology. Am I reading that correctly? 

 03 A This was probably a copy that -- what I 

 04 think this is, is I was asked to write up something 

 05 that we might use to submit to Savi directly or 

 06 something. And then I looked online and got some 

 07 legalese, if you will, and copied that and then 

 08 sent it back to them, and I'm asking them how 

 09 aggressive do you think we should be, you know. 

26. PAGE 129:24 TO 130:01 (RUNNING 00:00:04.347)

 24 Q Right. You didn't send this draft to 

 25 Baker Botts, right? 

 00130:01 A No. 

27. PAGE 130:06 TO 130:09 (RUNNING 00:00:17.200)

 06 Q Okay. And then on June 13th, a couple 

 07 of days later, you sent an e-mail to Mr. Griebenow, 

 08 Mr. Frank, and Ms. Keith, which has been marked as 

 09 Exhibit 253. Please take a look at that. 

28. PAGE 130:12 TO 131:16 (RUNNING 00:01:33.368)

 12 A Yes, I'm looking at it. 

 13 Q All right. And that says in its 

 14 entirety -- it's called "Power of Attorney." I 

 15 have found at least one -- I'm sorry. I have at 

 16 least found one of the power of attorney 

 17 assignments to Baker Botts. They were all the 

 18 same -- they were all of the same form. I intend 

 19 on contacting the patent office and revoking such 

 20 power for all patent submissions related to Baker 

 21 Botts for both video and RFID. Is this still a 

 22 correct course of action? Wayne. 

 23 Now, what prompted you to send this 

 24 e-mail? 

 25 A I don't recall. 

 00131:01 Q Were you asked by Mr. Griebenow or Mr. 

 02 Frank to contact the patent office and revoke Baker 

 03 Botts' powers of attorneys? 

 04 A I don't know if Terry Stalford contacted 

 05 me and said, you know, because of payment issues 

 06 we're -- I'm not going to be able to help you 

 07 anymore, or if it originated from Allan Griebenow 

 08 or Allan Frank. I have no idea. I can't remember. 

 09 I was obviously responding to somebody internally 

CONFIDENTIAL page 5
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 

CONFIDENTIAL page 7
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 

CONFIDENTIAL page 1
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 

CONFIDENTIAL page 2
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. 

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

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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

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1. PAGE 5:20 TO 5:21 (RUNNING 00:00:02.783)

 20 Q. Good morning, Mr. Bridgelall. 

 21 A. Morning. 

2. PAGE 19:02 TO 19:03 (RUNNING 00:00:06.600)

 02 Q. And when did you start at Axcess? 

 03 A. Around August or September of '06. 

3. PAGE 20:19 TO 20:25 (RUNNING 00:00:16.943)

 19 Q. So as part of your job, are you in charge of 

 20 the intellectual property portfolio? 

 21 A. Yes. 

 22 Q. Keeping track of what was in it? 

 23 A. Yes. 

 24 Q. And if there was going to be new patents 

 25 applied for, that would go through you? 

4. PAGE 21:02 TO 21:02 (RUNNING 00:00:00.900)

 02 A. Yes. 

5. PAGE 21:07 TO 21:10 (RUNNING 00:00:10.935)

 07 Q. Are you aware of any patents that were applied 

 08 for by Axcess while you were there other than the ones 

 09 that went through you? 

 10 A. While I was there, no. 

6. PAGE 23:10 TO 24:01 (RUNNING 00:01:06.100)

 10 Q. And was it your job to recommend what 

 11 direction the company should go in from a technological 

 12 standpoint? 

 13 A. From -- yes, technological standpoint. 

 14 Q. Was it your job to review the existing 

 15 technology that the company had as part of that 

 16 evaluation? 

 17 A. Yes. 

 18 Q. Was it your job to review proposed technology? 

 19 A. I felt it was my job. 

 20 Q. What about proposed patents? 

 21 A. Proposed from whom? 

 22 Q. Anybody at Axcess. Somebody said, here's an 

 23 invention, I'd like Axcess to patent it, was that part 

 24 of your job to evaluate whether Axcess should incur the 

 25 expense of attempting to patent an invention? 

 00024:01 A. My job was to evaluate the proposal, yes. 

7. PAGE 27:25 TO 28:10 (RUNNING 00:00:54.581)

 25 Q. Okay. Now, you left Axcess when? 

 00028:01 A. In 2010. 

 02 Q. Do you remember what -- 

 03 A. September or October 2010. 

 04 Q. And why did you leave? 

 05 A. I was offered a position with the university, 

 06 and in addition to that, there was a period of lack of 

CONFIDENTIAL page 1
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. 

CONFIDENTIAL page 2
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. 

CONFIDENTIAL page 3
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. 

CONFIDENTIAL page 4
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. 

CONFIDENTIAL page 5
Axcess International v. Baker Botts

 04 Q. To function as a communications conduit to 

 05 other tags -- 

 06 A. Yeah. 

35. PAGE 156:15 TO 156:18 (RUNNING 00:00:16.309)

 15 Q. Do you know whether Axcess ever sold any 

 16 products that incorporated the tag-to-tag communications 

 17 function? 

 18 A. I do not think so. 

36. PAGE 157:18 TO 158:04 (RUNNING 00:00:38.484)

 18 Q. Was the basic concept underlying the 

 19 tag-to-tag patent the ability to extend the range of the 

 20 reader so that tags outside of the reader's range could 

 21 report back to the reader? 

 22 A. That was one benefit. 

 23 Q. What was the other benefit? 

 24 A. Power consumption, not having to plug into a 

 25 separate power source. 

 00158:01 Q. Meaning that a tag would actually -- 

 02 A. Could be placed anywhere. 

 03 Q. And wouldn't have to be plugged in? 

 04 A. Yeah. 

37. PAGE 170:21 TO 170:23 (RUNNING 00:00:09.581)

 21 Q. Was the fact that Axcess did not sell any 

 22 products to the government or the military at all the 

 23 result of Savi? 

38. PAGE 170:25 TO 171:01 (RUNNING 00:00:05.907)

 25 A. In my opinion, there were no relationship 

 00171:01 between one or the other. 

39. PAGE 173:10 TO 173:16 (RUNNING 00:00:25.700)

 10 Are you aware of or have you seen any evidence 

 11 that Baker Botts pulled any punches when it represented 

 12 Axcess at the same time it represented Savi? 

 13 A. No. 

 14 Q. Are you aware of any evidence or indication 

 15 that Baker Botts shared any confidential Axcess 

 16 information with Savi? 

40. PAGE 173:18 TO 173:20 (RUNNING 00:00:04.729)

 18 A. No, I'm not aware. 

 19 Q. No? 

 20 A. I'm not aware of anything. 

TOTAL: 1 CLIP FROM 1 DEPOSITION (RUNNING 00:16:22.715)

CONFIDENTIAL page 6