Curriculum Vitae of Roy A. Griffin III, P.E.

RGExpert Engineering Services

668 Nenna Ct.

El Paso, Texas 79932-3168

915-613-1450

© 11/17/2016 rg@rgexpert.com

 

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Summary

 

EXPERT WITNESS, PATENT and COPYRIGHT INFRINGEMENT ANALYST with experience in reverse engineering of software and hardware. Over 25 years of industry experience in electrical engineering, product and system design, secure circuits and software, digital logic, microprocessor and microcontroller program development, firmware disassembly, patent analysis, and reverse engineering. I’m a hands-on engineer with special expertise in television, satellite communications systems, DVB, MPEG, CATV systems, access control, smart cards, encryption, scrambling, and anti-piracy.

 

Expert Services in IP, Patent, and Copyright Infringement Cases

 

I have worked for both plaintiffs and defendants in patent and copyright infringement cases, providing consulting services, declarations, expert reports, and expert testimony. I have testified as an expert witness in 3 jury trials; most recently in 2015. In 2 of the jury trials I testified on behalf of the plaintiff, and in one I testified on behalf of the defendant. I have also testified before the ITC. I have reverse-engineered electronic products in support of intellectual property (IP) litigation or licensing efforts, and I have analyzed patent portfolios. Note that due to confidentiality requirements, work performed for clients can only be discussed in general terms.

 

Testimony provided at trial, by deposition, or by expert report within the past 5 years:

 

Sony Corporation v. Pace PLC and Pace Americas, LLC (District of Deleware, Case No. 15-288-SLR-SRF). (2016). Expert consulting for the plaintiff, preparation of a declaration in support of plaintiff’s claim construction, and deposition.

 

NAV-TV, Corp. v. Audionics System, Inc. d/b/a Crux Interfacing Solutions, et al. (E.D. TX, Marshall Division, Case No. 2:15-cv-01467-JRG-RSP). (2016). Expert consulting for the plaintiff and preparation of a declaration in support of plaintiff’s claim construction.

 

Bridgestone Americas Tire Operations LLC, v. TRW Automotive Holdings Corp., et al. (D. Del. Case No. 13-1550-GMS). (2015). Expert non-infringement and invalidity reports, deposition, and trial testimony before a jury.

 

Global Communications, Inc., v. DIRECTV, INC. et al. (N.D. FL. Case No. 4:12-cv-00651-RH-CAS). (2015). Expert infringement report.

 

Cresta Technology Corporation v. MaxLinear, Inc. et al., Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof, U.S.I.T.C. Inv. No. 337-TA-910. (2014). Expert non-infringement reports.

 

British Telecommunications PLC v Coxcom, Inc., Cox Communications, Inc, and Cable One, Inc. Civil Action No. 10-cv-658-SLR, (D.Del.); Comcast Cable Communications, LLC and Comcast Corporation v. British Telecommunications PLC, Civil Action No. 11-cv-843-SLR, (D.Del.) (2013) – Expert Reports, Declaration, and Depositions.

 

Expert Witness for the plaintiff in an infringement action involving patent 6,473,742. The case involved intellectual property (IP) relating to CableCARD technology and set-top boxes. Tasks performed included infringement and validity analysis, writing expert reports, and being deposed as an expert witness.

 

Certain Products Containing Interactive Program Guide and Parental Controls Technology, Inv. No. 337-TA-845 (2013) – Deposition, Testimony at ITC hearing.

 

Expert Witness for Rovi Corporation et al. in Certain Products Containing Program Guide and Parental Control Technology, 337-TA-845 (U.S. International Trade Commission, complaint filed May 1, 2012); Rovi Corporation et al v. Roku, Inc., 4:12-cv-02185 (N.D. Cal.); Rovi Corporation et al v. LG Electronics Inc. et al, 1:12-cv-00545 (D. Del.); Rovi Corporation et al v. VIZIO Inc., 1:12-cv- 00546 (D. Del.); Rovi Corporation et al v. Mitsubishi Electric Corp. et al, 1:12- cv-00547 (D. Del.); Netflix Inc. v. Rovi Corporation et al, 4:11-cv-06591 (N.D. Cal.). The cases involve intellectual property (IP) including patents relating to interactive television program guides and parental control technologies.

 

Certain Products Containing Interactive Program Guide and Parental Controls Technology, Inv. No. 337-TA-820 (2012) – Presented a technology tutorial before the ITC, Deposition

 

Expert Witness for Rovi Corporation et al. in Certain Products Containing Interactive Program Guide and Parental Controls Technology, Inv. No. 337-TA-820; Rovi Corporation et al. v. Vizio, Inc. Case No. 1:11-cv-01129-RGA (D. Del); Rovi Corporation et al. v. Haier Group Corp., et al. Case No. 1:11-cv-01140- UDA (D. Del).The cases involved intellectual property (IP) including patents relating to interactive television program guides and parental control technologies.

 

Datel Holdings Ltd. v. Microsoft Corp. (2011) – Deposition.

 

Expert witness for Datel in a copyright infringement and trade secret case (3:09- cv-05535-EDL US District Court, Northern District of California -San Francisco). The case involved intellectual property (IP) relating to Microsoft’s X-Box 360 gaming systems and accessories. Tasks performed included analysis, writing expert reports, and being deposed as an expert witness.


Some Other Cases of Record:

 

Flashpoint v. LG (2011) – Deposition.

 

Non-infringement expert witness for the defendant in a patent infringement case before the International Trade Commission (ITC Investigation No. 337-TA-726). The case involved intellectual property (IP) relating to camera technology. Tasks performed included analysis, writing expert reports, and being deposed as an expert witness.

 

Freescale Semiconductor, Inc. v. Panasonic (2010) – Deposition.

 

Non-infringement and invalidity expert witness for the defendant in a patent infringement case before the International Trade Commission (ITC Investigation No. 337-TA-709). The case involved intellectual property (IP) relating to television technology. Tasks performed included analysis, writing an expert report, and being deposed as an expert witness.

 

St. Clair Intellectual Property v. Samsung Electronics, et al. (2010) – Deposition.

 

Non-infringement expert witness for defendants Panasonic and JVC in a patent infringement case (U.S. District Ct., D. Del.04-1436-JJF-LPS). The case involved intellectual property (IP) relating to digital cameras. Tasks performed included analysis, writing an expert report, and being deposed as an expert witness.

 

Silicon Image Inc. v. Analogix Semiconductor, Inc. (2008) – Deposition.

 

Expert witness for the plaintiff in a trade secret misappropriation and copyright infringement case (U.S. District Ct., N.D. Cal., No. 3:2007cv00635). The case involved intellectual property (IP) relating to HDMI chips. Tasks performed included analysis of discovery materials, writing an expert report, and being deposed as an expert witness.

 

Comcast Cable Communication Corp., LLC v. Finisar Corp. (2007) – Deposition.

 

Expert for the counterclaim plaintiff Finisar in a patent infringement case involving U.S. patent No. 5,404,505 to Levinson (U.S. District Ct., N.D. Cal, No. 3:2006cv04206). Tasks performed included research, patent infringement analysis, analysis of discovery materials including Comcast documents, writing an expert report regarding infringement and deposition testimony.

 

Finisar v. DirecTV (2005 – 2006) – Jury trial in Beaumont, Texas. Judge Clark presiding.

 

Testifying expert for the plaintiff in a patent infringement case involving U.S. patent No. 5,404,505 to Levinson. Tasks performed included research, patent infringement analysis, analysis of discovery materials including DirecTV specifications, writing expert reports regarding infringement, deposition testimony, and expert testimony in a jury trial.

 

The Chamberlain Group, Inc. v. Lear Corporation and Ford Motor Co. (2005 – 2006).

 

Expert for the defendant in a patent infringement case involving U.S. patent No. 6,154,544 to Farris et al. Tasks performed included analysis of discovery materials, and deposition testimony both as an expert witness and a 30 (b)(6) witness.

 

Motorola Inc. v. Analog Devices, Inc.; and Motorola Inc. v. ST Microelectronics, NV and ST Microelectronics, Inc. (2004)

 

Technical expert for the plaintiff in patent infringement cases involving U.S. patent No. 4,758,945 to Remedi. Tasks performed included research, patent infringement analysis, analysis of discovery materials including specifications and microcontroller core circuitry; preparation of a declaration in support of a Markman Hearing, and preparation of declarations in rebuttal to summary judgment motions.

 

Parental Guide of Texas, Inc. v. Funai Corporation, Inc., et. al. (2002)

 

Expert for 7 defendants in a patent infringement case involving U.S. patent No. 4,605,964 to Chard. Tasks performed included analysis of EIA-608 specifications (VCHIP and XDS), analysis of discovery materials including microcontroller software, and television circuitry, acting on behalf of several defendants as a 30(b)(6) deponent, and writing an expert non-infringement report.

 

IPPV Enterprises v. EchoStar Communications et. al. (1999-2001) – Jury trial in Wilmington, Delaware. Judge McKelvie presiding.

 

Testifying expert for the plaintiff in a patent infringement case involving several patents. Tasks performed included research, patent infringement analysis, analysis of discovery materials including EchoStar and DVB television system specifications, hardware and software analysis, preparing an expert report on infringement, deposition testimony, and expert testimony in a jury trial.

 

General Instrument v. S.E.E. Electronics (1991 – 1993)

 

Expert witness in a Canadian patent and copyright infringement case. Tasks performed included reverse engineering of microcontroller software, patent and copyright infringement analysis, preparation of reports and declarations, and deposition testimony.

 

Some Law Firm Clients:

 

·        Workman Nydeggar - Research, analysis of discovery  materials, patent infringement analysis, expert reports, deposition testimony, expert witness in a jury trial.

·        Burns, Doane, Swecker & Mathis, L.L.P. - Research, reverse engineering, patent infringement analysis, expert report, deposition testimony, expert witness in a jury trial.

·        Jones, Day, Reavis & Pogue - Research, reverse engineering, patent infringement analysis, analysis of discovery materials, declarations.

·        Schulte, Roth & Zabel LLP - Analysis of discovery materials. 30(b)(6) depositions covering 9 days. Patent infringement analysis. Expert Report.

·        Reed Smith - Patent and claims analysis. Expert declaration in support of a Markman brief.

·        Spotts Fain - Patent and claims analysis.

·        Brooks Kushman - Patent and claims analysis. Expert declaration and deposition both as an expert witness and as a 30(b)(6) witness.

·        Foley & Lardner - Analysis of discovery materials, Deposed as a 30(b)(6) witness.

·        Blakely, Sokoloff, Taylor & Zafman, L.L.P. - Research, patent claims analysis, expert declaration.

·        Banner and Witcoff , L.T.D. - Research, reverse engineering, analysis of discovery materials, patent infringement analysis.

·        Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. - Analysis of discovery materials.

·        Morgan, Lewis & Bockius LLP. - Analysis of discovery materials.

·        Thomas L. Hunt & Associates, P.C. - Analysis of discovery materials.

·        Osterlenk, Faber, Gerb & Soffen, L.L.P. - Research, reverse engineering.

·        Fulbright and Jaworski, L.L.P. - Research, claims analysis.

·        Covington and Burling - Research and analysis.

 

Some Technological Areas of Expertise:

 

  • Television and Video: Digital Television, Cable Television (CATV), Direct to Home (DTH) satellite television systems, television program guide systems, Vchip, XDS, digital set top box circuits and systems, cable TV converters, cable TV head end equipment, satellite receiver cards, analog and digital video, DVB, MPEG-2, ATSC, HDMI, HDCP. PC based video multiplexer/switcher card.
  • Data Communications: RS-232 data tap, serial communications monitoring software, microcontroller based MODbus diagnostic reply unit, microcontroller based diagnostic monitors for cable TV out-of-band (OOB) communication channels, satellite TV in-band (IB) auxiliary channel monitor.
  • Internet technologies: IP encapsulation (tunneling) for satellite delivery of internet content. ADSL modem technology.
  • Cameras: Digital camera circuit technology, focus lens motor, camera flash, JPEG and EXIF file formats, red light camera systems.
  • Security and surveillance systems: Security camera systems including surveillance systems used in banking and retail applications.
  • Computer and circuit technologies: Digital circuitry, microprocessors and microcontrollers, microprocessor core circuitry and peripheral circuitry, microprocessor clocking circuitry, microcontroller firmware and software, software/firmware code disassembly and decompiling.
  • Automotive Electronics: Testers for automobile and diesel engine components such as fuel injectors and electronic control modules (ECM), controller area network (CAN) bus, automobile garage door opener technology, automotive sound systems.
  • Telecommunications: Telephone technology, central office equipment, telephone based personal alert response system, telephone line testers, ADSL modem technology.
  • Access Control Systems: Development and analysis of access control systems, smart cards, cryptography, encryption, scrambling, security, anti-piracy.
  • Consumer Electronic Products: Heating pads and blankets with temperature monitoring and automatic thermal control. Rival Recipe Crockpot. Brewing appliances.
  • Remote Controls: RF (wireless) and infrared (IR) remote controls, including a "learning" remote control.
  • Home Automation Control Systems: CEBus protocol on-off keying RF remote control transmitter, RF remote control receiver and PC keyboard protocol converter, microcontroller for controlling a frequency agile TV modulator.
  • Radio controlled billboard lighting and status reporting system: Remote control and scheduling software coded in C language. Hardware and firmware for monitoring and reporting loss of illumination via packet radio.
  • Special function microcontrollers: microcontroller based electronic pressure, counter, and torque force gauges used in deep sea exploration.
  • Systems Design: New product development, engineering management.
  • Software Development: C, Pascal, assembly languages for many processors, LabWindows CVI, Allen Bradley PLC Ladder Logic.
  • Other Technologies: Test equipment, barcode scanners, a blood glucose meter.

                                                                                       

Some Additional Consulting

 

  • Scientific Atlanta - Conducted an anti-piracy seminar and provided related consulting and security analysis services.
  • ComStream - Developed the design concept and protocols for implementation of a conditional access control system for a DVB receiver. Provided security consulting services.
  • TeleTV - Assisted in TeleTV's analysis of competitive bids for a multi-billion dollar digital MMDS TV system.
  • Pacific Telesis, MPAA, SBCA, General Instrument - Consulting regarding TV security.

 

Employment History

 

RGExpert Engineering Services , 668 Nenna Ct., El Paso, TX 79932

Engineering Consultant (06/2006 - Present)

 

Engineering consulting, reverse engineering of hardware and software, intellectual property support services, claims and patent infringement analysis, research, prior art searches, analysis of discovery materials, drafting of reports and declarations, depositions, and expert testimony.

Sherwood Engineering Design Services, Inc. , 1155 C. Larry Mahan Dr., El Paso, TX, 79925.

Senior Electrical Design Engineer/Consultant (12/1993 - 06/2006)

 

Intellectual property support services including reverse engineering of hardware and software, claims and patent infringement analysis, research, prior art searches, analysis of discovery materials, drafting of reports and declarations, depositions, and expert testimony.

Security analysis services.

Electronic product design and development including system design, digital design, microcontroller development, and software development. A sampling of products I have developed or in which I have played a major development role include:

 

·        Combination RF/universal learning IR remote control for a smart house application.

·        Frequency agile TV modulator for a smart house application.

·        Custom keyboard for a boat navigation system.

·        Software and firmware for a radio based billboard lighting and status reporting system.

·        Several factory testers for diesel engine electronic control modules.

·        Factory testers for various automotive system components.

·        Electronic pressure, counter, and torque force gauges used in deep sea exploration.

·        Personal emergency response system.

·        Multi-line telephone line tester.

·        Video multiplexer board for a PC.

·        MODBus diagnostic reply unit for a major natural gas pipeline company.

·        Slow cooker with a recipe menu display system.

 

Roy Griffin Consulting, 668 Nenna Ct. , El Paso, TX, 79932.

Consultant (03/1991 - 12/1993)

 

Technical expert and expert witness as described above in “General Instrument v. S.E.E. Electronics Engineering”.

 

Performed security analysis services for several clients in the cable TV and satellite TV industries.

 

General Instrument, VideoCipher Division, 6262 Lusk Blvd., San Diego, CA, 92121.

Engineering Manager (05/1989 - 03/1991), Sr. Electrical Engineer (01/1987 - 04/1989)

 

Analyzed the security of microprocessor smart cards, investigated patents and ISO standards, established interface requirements for VideoCipher's "TV Pass Card" security program. Performed technical analysis and cost comparisons between several proposed architectures.

 

Developed assembly language software for a high volume satellite TV descrambler.

 

Performed detailed security analysis and verification of secure cryptosystems, software, and VLSI and microcontroller hardware incorporating the DES encryption algorithm and a patented key hierarchy.

 

Managed engineers assigned to analyze and compromise the security of new microcontroller and VLSI based security products. Conceived, designed, and developed specialized test equipment and fixtures.

 

Supervised the activities of engineers, technicians, and consultants working in Security Engineering.

 

M/A-COM Cable Home Group, El Paso, Texas

Sr. Project Engineer (08/1983 - 12/1986)

 

Developed several addressable cable TV descrambling converters and headend support products. Participated in the system design and wrote both microprocessor assembly language software, and 'C' software.

 

GTE Sylvania, El Paso, Texas

Digital Design Engineer (06/1982 - 08/1983)

 

Participated in development of a two-way addressable cable TV converter.

 

GTE Lenkurt, El Paso, Texas

Product Support Engineer (03/1979 - 05/1982)

 

Provided electrical engineering support for telecommunications product manufacturing.

 

Education

 

Bachelor of Science in Electrical Engineering
University of Texas at El Paso, 1981.

Registration and Patents

 

Texas Registered Professional Engineer

US Patent #5,151,938, “Security enhancement in a data processor through use of dynamic parameter authentication”. Issued Sept. 29, 1992.

US Patent #5,249,294, “Determination of time of execution of predetermined data processing routing in relation to occurrence of prior externally observable event”. Issued Sept. 28, 1993.

US Patent #7,006,001, “Speech-emitting celebration device”. Issued Feb. 28, 2006.

US Patent #7,109,445, “Cooking apparatus with electronic recipe display”. Issued Sept. 19, 2006.

US Patent #7,412,347, “Method and apparatus for measuring physical parameters”. Issued Aug. 12, 2008.