John L. Smith, Ph.D.
`6460 Slug Gulch Road
`Fair Play, CA 95684
`cell 530-957-0586
`john.smith@starband.net
`
`
`
`PROFESSIONAL EXPERIENCE
`
`Consultant
`
`1998-2004, 2006-Present
`
`Independent consultant in the areas of analytical chemistry, clinical chemistry, blood glucose monitoring,
`noninvasive blood measurements, grape growing, winemaking, patent prosecution and litigation.
`Performed technological evaluations for invasive and noninvasive monitoring of blood glucose. Qualified
`in U.S. Federal Court as an expert witness in the fields of Clinical Chemistry, Blood Glucose Monitoring,
`Cholesterol Testing, Dry Chemistry Test Strip Technology and the Chemistry of Wine. Participated as
`expert witness in patent infringement litigation, including consulting, expert reports, depositions, and court
`testimony in Markman hearings, arbitrations, bench trials and jury trials.
`
`
`
`
`Fovioptics, Inc. Santa Clara, CA
`
`2003-2004
` Consultant
`2004-2005
`
`President and CEO
`2005-2006
`
`Sr. VP and Chief Technical Officer
`Exited retirement to become early-stage CEO for a startup company developing a noninvasive glucose
`monitor. Obtained Series B financing ($4.35M), relocated company to Santa Clara from Lexington, KY,
`completed feasibility and proof of principle studies, hired professional CEO and professional staff,
`assisted in obtaining Series C financing ($19.7M). Returned over $17M to investors when the technology
`was found not to be commercially viable.
`
`2003-2006
`
`
`LifeScan. Inc. (Johnson & Johnson) Milpitas, CA
`
`1995-1998
` Vice President and Chief Scientific Officer
`1994-1995
` Worldwide Vice President, R, D & E
`1987-1994
` Vice President, R, D & E
` Responsible for the invention, research and development of novel technology for the world market leader in
`blood glucose monitoring. Directed the activities of 180 professionals in applied and advanced research and
`in product development. Conducted fundamental research into noninvasive techniques for measurement of
`blood glucose, both in-house and through research contracts worldwide. Evaluated over 100 technologies
`intended for noninvasive measurement of blood glucose. Managed research and development efforts for
`new products and technology to enable diversification of LifeScan’s product line. Responsible for the
`establishment and maintenance of LifeScan’s patent portfolio, and liaison with corporate and outside
`counsel for all patent infringement litigation. Retired in 1998.
`
`1987-1998
`
`
`Baker Instruments Corporation Allentown, PA
`
` Vice President, R, D & E - Responsible for entire development process, from conception to pilot production
`of new instruments for clinical chemistry and hematology; development and implementation of new
`analytical procedures, improved clinical methods, and reagent formulations. Directed the activities of 30
`professionals, including engineers, chemists, and scientists from technician to Ph.D. level. Responsible for
`
`1984-1987
`
`
`
`
`
`1
`
`LIFESCAN SCOTLAND LTD. EXHIBIT 2009
`
`

`
`negotiation of research contracts and licensing arrangements for new technology in physicians' office test
`kits, allergy research, and novel immunoassay techniques. Budget responsibility for $4.5 million annual
`expense budget, including administration of research contracts. Planning, scheduling and cost estimation for
`new projects.
`
`
`Technicon Instruments Corporation (now Siemens) Tarrytown, NY
`
`1978-1984
`
`
`
`Staff Systems Engineer (1978-1982) - Directed a research and engineering group to extract revenue-
`producing products from proprietary but unexploited technology. Developed fundamentals which led to the
`development of the RA-1000 Analyzer, led the team which conceived and demonstrated feasibility of the
`Chem-1 Analyzer.
` Director, Decentralized Testing Technology (1982-1984) - Responsibility for about fifty percent of the
`Applied Research program, including semiconductor biosensors, dry chemistry technology, and colorimetric
`methods for sodium and potassium. Technical member of negotiating team to develop a joint venture with a
`major Japanese chemistry company. Extensive contact with and administration of academic research
`programs and contract research projects.
`
`1974-1978
`
`
`Princeton Applied Research Corporation (EG&G) Princeton, NJ
`
` Manager, Product Development - Directed a group of 14 engineers in the development of electrochemical
`analytical instruments for research, quality control, corrosion and chromatography. Inventor of the static
`mercury drop electrode which allowed significant increases in sensitivity of electrochemical analysis.
`Developed the first microprocessor-controlled electroanalytical instrument and wrote the assembly-language
`software for the user interface, calculation and presentation of results.
`
`
`Union Carbide Corporation Tarrytown, NY
`
`
` Analytical Chemist - Developed methods and performed analysis for organic functional groups, trace
`metals, silicones, and polymers for research support, competitive products, and technical support for
`customers.
`
`
`Additional Full-time Positions Held Prior to or During Graduate School:
`
`
` Hospital laboratory chemist and computer systems analyst; supervisor of raw material quality control for a
`pharmaceutical company; chief technician for a feed and fertilizer analytical laboratory; delivery truck
`driver; sales clerk.
`
`1970-1974
`
`
`EDUCATION:
`
`
`
`
`
`Ph.D. Analytical Chemistry, University of Illinois, Urbana, IL 1970. Thesis topic:
` Analysis of Polymers via Photolysis-Gas Chromatography (R.S. Juvet)
`
` B.S. Chemistry, Butler University, Indianapolis, IN 1966.
`
`U.S. PATENTS (most with foreign counterparts):
`
`4,142,944 Apparatus and Method for Effluent Stream Analysis (Liquid Chromatography Detector)
`4,260,467 Static Mercury Drop Electrode (Analytical system for electrochemistry)
`4,422,773 Apparatus and Method for the Non-Invasive Mixing of a Flowing Stream (mixing coil for
`blood analyzers)
`4,515,753 Integral Reagent Dispenser (Reagent Container for Technicon Chem-1)
`4,602,995 Liquid Level Adjusting and Filtering Device (Sample tube for blood serum)
`
`2
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`4,853,336 Apparatus for Random-Access Continuous-Flow Analysis (Technicon Chem-1 system)
`5,526,120 Test Strip with an Asymmetrical End Insuring Correct Insertion for Measuring (SureStep
`Blood Glucose Test Strip)
`5,753,452 Reagent Test Strip for Blood Glucose Determination (One Touch Test Strip)
`5,972,294 Reagent test strip for determination of blood glucose (One Touch Test Strip)
`
`
`
`
`PUBLISHED U.S. PATENT APPLICATIONS:
`
`
`20050010091A1: Non-invasive measurement of blood glucose using retinal imaging (use of regeneration
`rate of visual pigments in the retina to measure blood glucose), and continuations 20050245796A1,
`US20060020184A1, US20050267344A1, 20050267343A1
`
`
`MEMBERSHIPS AND ASSOCIATIONS:
`
` American Chemical Society
` Greiner Instruments Scientific Advisory Board, Langenthal, Switzerland
` Adjunct Professor of Chemistry, San José State University
`
`El Dorado Winery Association
`Fair Play Winery Association (President, 2000-2001)
`Member, El Dorado County Agricultural Commission:
`
`
`OTHER ACTIVITIES
`
`
` 1964 - 1998
`1986 - 1987
`1991 - 1997
`1993-2012
`1997-2012
`2009-present
`
`
`
`Founder, Oakstone Winery, Inc. and Obscurity Cellars, Fair Play, CA
`Owner, Oakstone Vineyards
`Instructor, San José State University: Advanced Analytical Chemistry, Patents in Chemistry, and The
`Chemistry of Wine
`United Way Campaigns—Company and community chairman.
`Pioneer Fire Protection District—member, long-range planning committee, ordinance committee
`Book: The Pursuit of Noninvasive Glucose: “Hunting the Deceitful Turkey” (2nd Edition, 2011).
`http://www.mendosa.com/noninvasive_glucose.pdf
`
`
`
`
`
`3
`
`

`
`Expert Witness Filings and Testimony in Federal Court for John L. Smith (all in patent infringement
`litigation)
`
`LifeScan, Inc., v. Home Diagnostics, Inc., and MIT Development Corporation, United States District Court
`for Northern California, case #5:92cv20811 (for plaintiff). Filed expert reports, deposition testimony as
`expert and percipient witness. Judgment of infringement for LifeScan after a CAFC ruling against lower
`court claim interpretation.
`
`LifeScan, Inc. v. Can-Am Care Corp Diagnostic Solutions, Inc., United States District Court for Northern
`California, case #5:93cv20430 (for plaintiff). Filed expert report, court testimony on hearing for permanent
`injucntion. Matter settled out of court
`
`LifeScan, Inc. v. Polymer Technology International, Issaquah, WA. United States District Court for the
`Western District of Washington, Case #93-6983 (for Plaintiff). Filed expert reports, provided deposition and
`trial testimony, LifeScan was awarded a judgment of willful infringement, a permanent injunction and
`attorney’s fees.
`
`LifeScan, Inc., v. Home Diagnostics, Inc., and MIT Development Corporation, United States District Court
`for the District of Delaware, Civil Action 96-597JJF (for Plaintiff). Deposition and trial testimony, March,
`1999. LifeScan was awarded jury verdict of ~$6 million; overturned on a JMOL.
`
`Abbott Laboratories, Inc., v. LifeScan, Inc., and SelfCare, Inc. United States District Court for the District of
`Massachussetts, Civil Action #98-CV12053EFH (for Defendant). Expert report, deposition testimony, July,
`2000. Matter settled under seal.
`
`Home Diagnostics, Inc., v. LifeScan, Inc., United States District Court for the Northern District of California,
`Case #99-21269JW (for Defendant). Deposition testimony (evidentiary deposition to establish qualification
`under a protective order), March, 2001. Matter settled out of court.
`
`LifeScan, Inc., v. Diagnostics Solutions, Inc., American Arbitration Association Case #801330004900,
`Irvine, CA, March - May, 2001 (for Plaintiff). Fact witness deposition, 30(b)(6) deposition, expert
`deposition, arbitration testimony, May 2001. Arbitration award in favor of LifeScan, including attorney’s
`fees.
`
`LifeStream Diagnostics, Inc. v. Polymer Technology Systems, Inc., United States District Court for the
`District of Idaho, Coeur D’Alene Division, Case No. CV 00-0300-N-MHW (for defendant). Two Expert
`reports, expert deposition, Markman hearing court testimony, January 2003. Favorable Markman ruling
`obtained, judgment of noninfringement entered for LifeStream.
`
`Abbott Diabetes Care, Inc. and Abbott Laboratories v. AgaMatrix, Inc., United States District Court for the
`Northern District of California, San Jose Division, Case #C 06 07268-JF (for defendant),. Filed expert
`reports re claim interpretation, deposition testimony. Case settled out of court (2007-2009).
`
`Becton Dickenson and Company v. Insulet, United States District Court, District of New Jersey, Case# 10-
`04371-PGS –ES (for defendant). Retained as expert (2011)
`
`Medtronic, et al. v Insulet, United States District Court for Central California, Case No. 2:12-CV-8048-PA-
`CWx (for defendant). Retained as expert, filed declarations on claim
`constuction, expert report on noninfringement (2013). Matter settled 9/18/13. (2013)
`
`
`
`4
`
`

`
`
`Masimo Corp. v. Philips Electronics North American Corporation and Philips
`Medizin Systeme Böblingen GmbH, Civil Action No. 1:09-cv-00080-JJF-MPT
`United States District Court for the District of Delaware. For Plaintiff, retained as expert. (2013)
`
`Masimo Corporation (“Masimo”) and Cercacor Laboratories, Inc. (“Cercacor”) arbitration against Nova
`Biomedical Corporation, JAMS Reference # 1220045324, for Masimo, retained as consultant. (2013)
`
`Pharmatech Solutions, Inc inter partes review of U.S. Patent No. 7,250,105, assigned to LifeScan Scotland
`Ltd. For LifeScan, retained as consultant. filed declaration before the USPTO Patent Trial and Appeal Board,
`(2013).
`
`
`
`
`5