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` UNITED STATES DISTRICT COURT
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` SOUTHERN DISTRICT OF CALIFORNIA
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`WARSAW ORTHOPEDIC, INC.,
`
` Plaintiff,
`
` vs. Case No.
` 3:08-CV-1512 MMA (AJB)
`NUVASIVE, INC.,
`
` Defendant.
` /
`NUVASIVE, INC.,
`
` Counterclaimant,
`
` vs.
`
`MEDTRONIC SOFAMOR DANEK USA,
`INC.; WARSAW ORTHOPEDIC, INC.;
`MEDTRONIC PUERTO RICO OPERATIONS
`CO.; and MEDTRONIC SOFAMOR DANEK
`DEGGENDORF, GmbH,
`
` Counterclaim Defendants.
`
` /
`AND RELATED COUNTERCLAIM.
` /
`
` CONFIDENTIAL, PATENT PROSECUTION SENSITIVE
`
` Deposition of
`
` GARY MICHELSON, M.D.
`
` November 19, 2010
`
`Reported by LAURY WASOFF, CSR NO. 10995, RPR
`
` SHARI MOSS & ASSOCIATES
` Certified Shorthand Reporters
` 1838 El Camino Real, Suite 108
` Burlingame, California 94010
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`WARSAW2001
`NuVasive, Inc. v. Warsaw Orthopedic, Inc.
`Case IPR2013-00206
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`Page 1
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`PATENT PROSECUTION SENSITIVE
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`you don't think you're the first person to have recognized
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`10:08
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`that the bigger an implant is, the better it would be, do
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`you?
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` A Well, the first person would require somehow that
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`I would know what every single person who ever lived who
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`10:08
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`came before me believed, so I don't know that I would be
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`in the position to answer that. And am I, as I sit here
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`now, familiar with somebody advocating for putting in
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`very, very large implants? I am not. There may be some.
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`But off the top of my head I don't remember any.
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`10:08
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` Q My question had to do with sort of the principle
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`that the bigger the implant you could get in between the
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`vertebrae, the better it would be.
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` A No.
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` MR. DAUCHOT: Hold on. Objection. Foundation.
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`10:08
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` THE WITNESS: I don't agree with your statement.
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` Q BY MR. SCHERKENBACH: What don't you agree with?
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` A I think that there are so many competing factors
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`that I've spent much of my professional career trying to
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`convince everyone to put in bigger implants. And for
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`10:09
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`competing reasons people sometimes want to put in less
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`than bigger implants.
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` Q Do you recall when you first conceived of the
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`invention of the '973 patent? And I'm talking about a
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`time, time frame.
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`10:09
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`PATENT PROSECUTION SENSITIVE
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` A While I can't give you a specific date as I sit
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`here, it was approximately two months before my meeting
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`with Sofamor Danek.
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` Q And this is the January 1994 meeting you are
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`referring to?
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` A No. I met with them in '93. It was either
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`November or December of '93 I met with them. And I had
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`already had my second iteration of my translateral
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`instruments and implant by then.
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`10:09
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`10:09
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` Q At the time you conceived of what became the '973
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`10:10
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`patent, had you heard of any other spine surgeon doing a
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`lateral -- direct lateral fusion?
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` A Not one like the one I was describing, no.
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` Q My question is different. Regardless of whatever
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`type of implant they used, at the time you conceived of
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`10:10
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`what became the '973 patent had you heard of any other
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`surgeon doing a direct lateral fusion?
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` A See, I don't know what you mean by direct lateral
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`fusion. I myself had participated in cases, these
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`tremendous deformity cases where the spine is not just
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`10:10
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`curved, it's rotated and curved. So all you can look at
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`in portions of a thoracolumbar junction, lumbar spine are
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`the sides of the spine. There is nothing else showing
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`because it's twisted around so hard.
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` And I can remember cases where the surgeon
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`10:11
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`PATENT PROSECUTION SENSITIVE
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`Page 54
`10:14
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`December of 1993.
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` A Correct.
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` Q And what is it in your mind that allows you to
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`place that as the time you conceived of the invention?
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` A Yes. I had a meeting with Sofamor Danek before I
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`10:14
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`had any license agreements with them, and they brought out
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`a number of people with them. And I did a demonstration
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`on a sawbones model. I actually used the instruments,
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`inserted one of these translateral implants. And I
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`remember that I did it with the second iteration of the
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`10:15
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`instruments.
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` At the time I had a gentleman doing the machine
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`work for me named Dezider Imre. And he had I think a
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`full-time job somewhere else at the time, so he could only
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`do so much work for me at the time. He was actually
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`10:15
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`working on a number of projects. And I remember that it
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`took about a month or so to get the first iteration, and
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`then I made changes, and it probably took three or four
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`weeks to get the second iteration. And then I had those
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`things in hand several weeks before the meeting with
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`10:15
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`Sofamor Danek because I did these procedures on the
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`sawbones and stuff.
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` So that would place it at least two months before
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`that meeting date. And I don't know the specific date,
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`but it was at the end of '93.
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`10:15
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`PATENT PROSECUTION SENSITIVE
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`into the other room where the lawyers were. And then that
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`10:28
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`went on through the entire night up to the next day. And
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`then we ended up signing these agreements.
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` Q The August/September '93 meeting you just talked
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`about, what did you show the Danek folks at that meeting?
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`10:28
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` A You're going to give me at least a month leeway
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`on that. Right? I do think it's that, but if I'm off a
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`couple weeks...
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` You know, all these things were shown under
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`nondisclosure agreements, confidentiality agreements. And
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`10:28
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`I do recall them executing that. And it listed on there
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`specifically what was shown. So if you want me to try to
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`simply remember what was shown, I'll be glad to do that.
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`But if you actually wanted to know that, you could look at
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`that document. It will tell you.
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`10:29
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` Q Did you show them or tell them about your '973
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`concept in the August/September '93 meeting?
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` A No.
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` Q Had you conceived of the invention at that point?
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` A No.
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` Q So it was sometime -- in your view, sometime
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`between August/September of '93 and maybe
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`November/December of '93 that you conceived of the
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`invention?
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` A Yes.
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`10:29
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`10:29
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`PATENT PROSECUTION SENSITIVE
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` Q Does anything stick in your mind as sort of a
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`signpost that allows you to state that that's the window
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`within which your conception happened?
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` A Yes.
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` Q What is it?
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`10:29
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`10:29
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` A I demonstrated these things to the people from
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`Sofamor Danek at the meeting that these contracts were
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`negotiated. And I know that the instruments that I
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`demonstrated were the second iteration because the ones
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`that were the first iteration were around at the same time
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`10:30
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`the second ones were.
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` So whatever time it was for Dezider Imre to make
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`the first set of instruments, make the second set of
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`instruments. And I knew that I had them other than the
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`morning of, so I had them before the meeting because I had
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`10:30
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`done numerous procedures with them. So it puts it in that
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`time frame of being I guess September/October. You know,
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`again, give me a few weeks one way or another.
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` Q And are there any notes or any other document you
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`can think of that reflect the conception of the '973
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`10:30
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`happening at that time, September-ish, October-ish of '93?
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` A Well, I don't believe I have anything. But
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`Dezider Imre may have had some machine notes. And at some
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`point -- his custom and practice is that once I was
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`actually satisfied with something, he would invoice us for
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`10:31
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`Page 6
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`PATENT PROSECUTION SENSITIVE
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`marking as Exhibit 721. This is an invoice to Karlin
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`Technology from Mr. Imre, production numbers MNUV0005459.
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` A I'm sorry. What number did you just read me?
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` Q There's multiple numbers on it. The one that
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`applies to this case is the one at the extreme lower
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`10:34
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`right.
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` A Oh, I'm sorry. You're just talking about -- oh,
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`I apologize.
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` Q Just an identification number is all.
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` A I apologize.
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`10:34
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` (Exhibit 721 marked for identification.)
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` Q BY MR. SCHERKENBACH: Have you seen this document
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`before today?
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` A I've seen this before.
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` Q When is the last time you saw it?
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`10:34
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` A A couple of days ago.
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` Q This is one of the ones you looked at in prep for
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`your deposition?
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` A Yeah.
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` Q And does this, in your view, relate to what you
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`10:35
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`call the second generation of implants?
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` A I think -- it would be yes on that.
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` Q How can you tell?
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` A Well, that's what it is. The dimensions are 24
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`times 42. That was the original translateral implant I
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`10:35
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`Page 7
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`PATENT PROSECUTION SENSITIVE
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`had made. And my actual -- I guess common name for these
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`were jumbo implants because they were clearly jumbo'd in
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`comparison to anything that was in existence before.
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`There were never implants that were 42 millimeters long or
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`10:35
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`24 millimeters in diameter. So I think the biggest
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`10:35
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`threaded implants that we had before were either 18 or 20,
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`and we never had anything I think that was longer than 28.
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`So this thing was absolutely jumbo.
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` Q Do you recall using the phrase "jumbo" in the
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`second meeting with Danek in L.A., November/December '93?
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`10:36
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` A I don't recall.
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` Q The first iteration of the implant and
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`instruments that you referred to, was it the same size as
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`the second iteration? So 24 millimeters in diameter,
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`42 millimeters in length?
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`10:36
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` A That's my best recollection, yes.
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` Q Do you recall what the changes were between the
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`first iteration and the second?
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` A I'm just trying to see if there was something
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`here that reminds me. One of the things I do recall is
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`10:36
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`that one of the original distracters that was made weighed
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`so much I couldn't lift it. It was just this big long rod
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`of steel. And I remember saying to Dezider "Do you think
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`you could hollow this out a little bit?" You couldn't
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`lift it.
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`10:37
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`PATENT PROSECUTION SENSITIVE
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` So I did a bunch of these procedures just to make
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`sure that everything was doing what I wanted it to do, and
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`it seemed to work very, very well.
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` Q And you did a procedure again for the Danek folks
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`when they visited?
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` A Yes.
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`10:38
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`10:38
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` Q Was there any -- from your perspective any
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`visible or verbal reaction from the Danek people at this
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`November/December '93 meeting when you showed them the
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`procedure using your jumbo implants?
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`10:39
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` A Well, what I recall was at the time they had not
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`seen it before, they were very excited about it, and they
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`said "We want to acquire that technology."
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` Q And they subsequently did?
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` A Yes.
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`10:39
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` Q Is it your understanding that today Medtronic or
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`Medtronic Sofamor Danek owns the '973 patent?
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` MR. DAUCHOT: Objection. Foundation.
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` Q BY MR. SCHERKENBACH: If you know.
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` A Well, I really don't have any independent
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`10:39
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`knowledge about that.
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` Q Do you still own it?
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` A I do not.
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` Q Does Karlin own it?
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` A As far as I know, no.
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`10:39
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`Page 9
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`1 STATE OF CALIFORNIA
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`2 COUNTY OF LOS ANGELES
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`3 I, Laury Wasoff, Certified Shorthand Reporter
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`4 No. 10995, declare:
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`5 That prior to being examined, the witness named in the
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`6 foregoing deposition was by me duly sworn to testify to
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`7 the truth, the whole truth, and nothing but the truth;
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`8 That said deposition was taken before me at the time
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`9 and place therein set forth and was taken down by me in
`10 shorthand and thereafter transcribed under my direction
`11 and supervision, and I hereby declare that the foregoing
`12 deposi tion is a true and correct transcript of my
`13 shorthand notes so taken.
`14 I further declare that I am neither counsel for nor
`15 related to any party to said action nor in any way
`16 interested in the outcome thereof.
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`17 I declare under penalty of perj ury under the laws of
`18 the State of California that the foregoing is true and
`19 correct.
`20 In witness whereof, I have hereunto subscribed my name
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`21 this 29th day of November, 2010.
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