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PATENT PROSECUTION SENSITIVE
`
`Page 1
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` UNITED STATES DISTRICT COURT
`
` SOUTHERN DISTRICT OF CALIFORNIA
`
`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
`
`Page 1
`
`

`

`PATENT PROSECUTION SENSITIVE
`
`you don't think you're the first person to have recognized
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`Page 50
`10:08
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`that the bigger an implant is, the better it would be, do
`
`you?
`
` A Well, the first person would require somehow that
`
`I would know what every single person who ever lived who
`
`10:08
`
`came before me believed, so I don't know that I would be
`
`in the position to answer that. And am I, as I sit here
`
`now, familiar with somebody advocating for putting in
`
`very, very large implants? I am not. There may be some.
`
`But off the top of my head I don't remember any.
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`10:08
`
` Q My question had to do with sort of the principle
`
`that the bigger the implant you could get in between the
`
`vertebrae, the better it would be.
`
` A No.
`
` MR. DAUCHOT: Hold on. Objection. Foundation.
`
`10:08
`
` THE WITNESS: I don't agree with your statement.
`
` Q BY MR. SCHERKENBACH: What don't you agree with?
`
` A I think that there are so many competing factors
`
`that I've spent much of my professional career trying to
`
`convince everyone to put in bigger implants. And for
`
`10:09
`
`competing reasons people sometimes want to put in less
`
`than bigger implants.
`
` Q Do you recall when you first conceived of the
`
`invention of the '973 patent? And I'm talking about a
`
`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
`
`here, it was approximately two months before my meeting
`
`with Sofamor Danek.
`
` Q And this is the January 1994 meeting you are
`
`referring to?
`
` A No. I met with them in '93. It was either
`
`November or December of '93 I met with them. And I had
`
`already had my second iteration of my translateral
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`instruments and implant by then.
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`Page 51
`10:09
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`10:09
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` Q At the time you conceived of what became the '973
`
`10:10
`
`patent, had you heard of any other spine surgeon doing a
`
`lateral -- direct lateral fusion?
`
` A Not one like the one I was describing, no.
`
` Q My question is different. Regardless of whatever
`
`type of implant they used, at the time you conceived of
`
`10:10
`
`what became the '973 patent had you heard of any other
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`surgeon doing a direct lateral fusion?
`
` A See, I don't know what you mean by direct lateral
`
`fusion. I myself had participated in cases, these
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`tremendous deformity cases where the spine is not just
`
`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.
`
` A Correct.
`
` Q And what is it in your mind that allows you to
`
`place that as the time you conceived of the invention?
`
` A Yes. I had a meeting with Sofamor Danek before I
`
`10:14
`
`had any license agreements with them, and they brought out
`
`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
`
`instruments.
`
` 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
`
`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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`Page 4
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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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`Page 61
`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.
`
` Q The August/September '93 meeting you just talked
`
`about, what did you show the Danek folks at that meeting?
`
`10:28
`
` A You're going to give me at least a month leeway
`
`on that. Right? I do think it's that, but if I'm off a
`
`couple weeks...
`
` 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
`
`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.
`
`But if you actually wanted to know that, you could look at
`
`that document. It will tell you.
`
`10:29
`
` Q Did you show them or tell them about your '973
`
`concept in the August/September '93 meeting?
`
` A No.
`
` Q Had you conceived of the invention at that point?
`
` A No.
`
` Q So it was sometime -- in your view, sometime
`
`between August/September of '93 and maybe
`
`November/December of '93 that you conceived of the
`
`invention?
`
` A Yes.
`
`10:29
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`10:29
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`Page 5
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`

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`PATENT PROSECUTION SENSITIVE
`
` Q Does anything stick in your mind as sort of a
`
`signpost that allows you to state that that's the window
`
`within which your conception happened?
`
` A Yes.
`
` Q What is it?
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`Page 62
`10:29
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`10:29
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` A I demonstrated these things to the people from
`
`Sofamor Danek at the meeting that these contracts were
`
`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
`
`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
`
`morning of, so I had them before the meeting because I had
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`10:30
`
`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,
`
`again, give me a few weeks one way or another.
`
` Q And are there any notes or any other document you
`
`can think of that reflect the conception of the '973
`
`10:30
`
`happening at that time, September-ish, October-ish of '93?
`
` A Well, I don't believe I have anything. But
`
`Dezider Imre may have had some machine notes. And at some
`
`point -- his custom and practice is that once I was
`
`actually satisfied with something, he would invoice us for
`
`10:31
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`Page 6
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`

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`PATENT PROSECUTION SENSITIVE
`
`marking as Exhibit 721. This is an invoice to Karlin
`
`Technology from Mr. Imre, production numbers MNUV0005459.
`
` A I'm sorry. What number did you just read me?
`
` Q There's multiple numbers on it. The one that
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`Page 65
`10:34
`
`applies to this case is the one at the extreme lower
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`10:34
`
`right.
`
` A Oh, I'm sorry. You're just talking about -- oh,
`
`I apologize.
`
` Q Just an identification number is all.
`
` A I apologize.
`
`10:34
`
` (Exhibit 721 marked for identification.)
`
` Q BY MR. SCHERKENBACH: Have you seen this document
`
`before today?
`
` A I've seen this before.
`
` Q When is the last time you saw it?
`
`10:34
`
` A A couple of days ago.
`
` Q This is one of the ones you looked at in prep for
`
`your deposition?
`
` A Yeah.
`
` Q And does this, in your view, relate to what you
`
`10:35
`
`call the second generation of implants?
`
` A I think -- it would be yes on that.
`
` Q How can you tell?
`
` A Well, that's what it is. The dimensions are 24
`
`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
`
`had made. And my actual -- I guess common name for these
`
`were jumbo implants because they were clearly jumbo'd in
`
`comparison to anything that was in existence before.
`
`There were never implants that were 42 millimeters long or
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`Page 66
`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.
`
` Q Do you recall using the phrase "jumbo" in the
`
`second meeting with Danek in L.A., November/December '93?
`
`10:36
`
` A I don't recall.
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` Q The first iteration of the implant and
`
`instruments that you referred to, was it the same size as
`
`the second iteration? So 24 millimeters in diameter,
`
`42 millimeters in length?
`
`10:36
`
` A That's my best recollection, yes.
`
` Q Do you recall what the changes were between the
`
`first iteration and the second?
`
` A I'm just trying to see if there was something
`
`here that reminds me. One of the things I do recall is
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`10:36
`
`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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`

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`PATENT PROSECUTION SENSITIVE
`
` 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.
`
` Q And you did a procedure again for the Danek folks
`
`when they visited?
`
` A Yes.
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`Page 68
`10:38
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`10:38
`
` 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?
`
`10:39
`
` 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."
`
` Q And they subsequently did?
`
` A Yes.
`
`10:39
`
` Q Is it your understanding that today Medtronic or
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`Medtronic Sofamor Danek owns the '973 patent?
`
` MR. DAUCHOT: Objection. Foundation.
`
` Q BY MR. SCHERKENBACH: If you know.
`
` A Well, I really don't have any independent
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`10:39
`
`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?
`
` A As far as I know, no.
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`10:39
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`

`

`1 STATE OF CALIFORNIA
`
`2 COUNTY OF LOS ANGELES
`
`3 I, Laury Wasoff, Certified Shorthand Reporter
`
`4 No. 10995, declare:
`
`5 That prior to being examined, the witness named in the
`
`6 foregoing deposition was by me duly sworn to testify to
`
`7 the truth, the whole truth, and nothing but the truth;
`
`8 That said deposition was taken before me at the time
`
`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.
`
`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
`
`21 this 29th day of November, 2010.
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`Page 10
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`

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