In The Matter Of:
`
`MEDTRONIC v.
`AGA MEDICAL
`
`LEE MIDDLEMAN
`December 10, 2008
`
`GROSSMAN & COTTER
`117 S CALIFORNIA AVE, SUITE D201
`PALO ALTO, CA 94306
`650.324.1181
`www.gandc.com
`
`

`

`MEDTRONIC v.
`AGA MEDICAL
`
`
`Page 1
`
`LEE MIDDLEMAN
`December 10, 2008
`Page 3
`
` 1 IN THE UNITED STATES DISTRICT COURT
`
` 2 NORTHERN DISTRICT OF CALIFORNIA
`
` 3 SAN FRANCISCO DIVISION
`
` 4
`
` 5 MEDTRONIC INC., a Minnesota
` corporation, MEDTRONIC USA,
` 6 INC., a Minnesota corporation,
` and MEDTRONIC VASCULAR, INC.,
` 7 a Delaware corporation,
`
` 8 Plaintiffs,
`
` 9 vs. CASE NO. C07 00567 MMC
`
`10 AGA MEDICAL CORPORATION, a
` Minnesota corporation,
`11
` Defendant.
`12 /
`
`13
`
`14 DEPOSITION OF LEE M. MIDDLEMAN
`
`15 VOLUME I
`
`16 Wednesday, December 10, 2008
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`17 Pages 1 - 120
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`18
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`19
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`20 Reported by: Shelley M. Sailor, CSR #10254
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`21
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`22
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`23
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`24
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`25
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` 1 I N D E X
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` 2
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` 3 EXAMINATION BY: PAGE
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` 4 MR. HEMMINGER 7
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` 5
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` 6
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` 7 E X H I B I T S
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` 8
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` 9 EXHIBIT NO. DESCRIPTION PAGE
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`10 156 Subpoena, Attachment A, 38
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`11 Stipulated Protective Order
`
`12 and Electronic Discovery
`
`13 Procedures
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`14
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`15 157 Copy of face of file folder 52
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`16 labeled "Jervis Declaration"
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`17 Production No. Middleman 001
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`18
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`19 158 Letter to Sheldon & Mak from 54
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`20 Lee Middleman dated
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`21 February 2, 1998
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`22 Production No. Middleman 002
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`23
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`24 159 U.S. Patent No. 5,231,989 58
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`25 Production Nos. Middleman 060-087
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`Page 2
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`Page 4
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` 1 A P P E A R A N C E S
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` 2
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` 3 FOR THE PLAINTIFFS:
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` 4 DECHERT LLP
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` 5 BY: NOEMI C. (NICKY) ESPINOSA, ESQ.
`
` 6 2440 W. El Camino Real, Suite 700
`
` 7 Mountain View, CA 94040-1499
`
` 8 (650) 813-4800
`
` 9 nicky.espinosa@dechert.com
`
`10
`
`11 FOR THE DEFENDANTS:
`
`12 ALSTON & BIRD LLP
`
`13 BY: STEVE HEMMINGER, ESQ.
`
`14 Two Palo Alto Square
`
`15 3000 El Camino Real, Suite 400
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`16 Palo Alto, CA 94306
`
`17 (650) 838-2000
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`18 steve.hemminger@alston.com
`
`19
`
`20 THE VIDEOGRAPHER:
`
`21 DAN MOTTAZ VIDEO PRODUCTIONS
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`22 BY: LOU MEADOWS
`
`23 182 Second Street, Suite 202
`
`24 San Francisco, CA 94105
`
`25 (415) 624-1300
`
` 1 E X H I B I T S
`
` 2
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` 3 EXHIBIT NO. DESCRIPTION PAGE
`
` 4 160 Kirk-Othmer "Encyclopedia of 79
`
` 5 Chemical Technology," Third
`
` 6 Edition, Volume 20
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` 7 Production Nos. Middleman 048-059
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` 8
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` 9 161 "Medical Devices Incorporating 90
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`10 SIM Alloy Elements" by James E.
`
`11 Jervis
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`12 Production Nos. Middleman 088-110
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`13
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`14 162 U.S. Patent No. 4,512,338 108
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`15 Production Nos. Middleman 028-033
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`16
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`17 163 U.S. Patent No. 4,485,805 115
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`18 Production Nos. Middleman 041-047
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`19
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`20 164 Office Action Summary 117
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`21 Serial No: 08/483,291
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`22 Production Nos. Middleman 021-027
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`23
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`24
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`25
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`Lombard Exhibit 1015, p. 2
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`MEDTRONIC v.
`AGA MEDICAL
`
`
`Page 5
`
`LEE MIDDLEMAN
`December 10, 2008
`Page 7
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` 1 INSTRUCTIONS NOT TO ANSWER: PAGE LINE
` 2 56 20
` 3 94 21
` 4 113 25
` 5 116 6
` 6 116 24
` 7
` 8
` 9 REQUESTS FOR PRODUCTION: PAGE LINE
`10 41 12
`11 41 25
`12 88 20
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
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`25
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` 1 The court reporter is Shelley Sailor.
` 2 Counsel, would you please identify
` 3 yourselves and state whom you represent.
` 4 MR. HEMMINGER: Steve Hemminger from Alston
` 5 & Bird LLP for defendant AGA Medical, Incorporated.
` 6 MS. ESPINOSA: Nicky Espinosa for Dechert
` 7 LLP for plaintiff Medtronic and for the witness,
` 8 Dr. Middleman.
` 9 THE VIDEOGRAPHER: Thank you. If there are
`10 no stipulations, the court reporter may administer
`11 the oath.
`12 LEE M. MIDDLEMAN,
`13 called as a witness by the Defendant and who, having
`14 been by me duly sworn, was thereupon examined and
`15 testified as hereinafter set forth.
`16 EXAMINATION BY MR. HEMMINGER:
`17 Q. Will you tell us your full name.
`18 A. Lee Mark Middleman.
`19 Q. Will you describe for us, including the
`20 date you graduated from high school, your
`21 educational experience since you graduated from high
`22 school?
`23 A. Okay. Let's see, I went to Johns Hopkins
`24 University where I got a Bachelor of Arts degree in
`25 physics. I graduated in 1962, I think. And then I
`
`Page 6
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`Page 8
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` 1 BE IT REMEMBERED that, pursuant to Notice
` 2 of Taking Deposition, and on Wednesday, December 10,
` 3 2008 commencing at the hour of 9:20 a.m. thereof at
` 4 Alston & Bird, Two Palo Alto Square, 3000 El Camino
` 5 Real, Suite 400, Palo Alto, California, before me,
` 6 SHELLEY M. SAILOR, a Certified Shorthand Reporter,
` 7 there personally appeared
` 8 THE VIDEOGRAPHER: Good morning. This
` 9 marks the beginning of Volume I, videotape one in
`10 the deposition of Lee Middleman in the matter of
`11 Medtronic, Inc., et al. versus AGA Medical Corp. in
`12 the United States District Court for the Northern
`13 District of California, Case No. C07 00567 MMC.
`14 Today's date is December 10th, 2008, and the time is
`15 9:20 a.m.
`16 The location of this deposition is Alston &
`17 Bird, Two Palo Alto Square, 3000 El Camino Real,
`18 Suite 400 in Palo Alto, California. This deposition
`19 was noticed by counsel for the defendants. The
`20 videotape is being produced on behalf of the same.
`21 The video operator is Lou Meadows, a
`22 California Notary Public for the County of Santa
`23 Clara contracted by Dan Mottaz Video Productions
`24 LLC, 182 Second Street, Suite 202 in San Francisco,
`25 California 94105.
`
` 1 came to Stanford University -- no, I'm sorry, I
` 2 graduated in '65. I came to Stanford University in
` 3 '65 and received my Master's and my Ph.D. in physics
` 4 around 1970.
` 5 Q. And you graduated from high school?
` 6 A. Yes.
` 7 Q. At what year?
` 8 A. '62. From the Baltimore Polytechnic
` 9 Institute in Baltimore, Maryland.
`10 Q. And you entered Johns Hopkins in 1962?
`11 A. Yes.
`12 Q. And you got your B.S. in three years?
`13 A. Yes.
`14 MS. ESPINOSA: I think he said B.A.
`15 THE WITNESS: I think it was a B.A. It's
`16 strange, you could get a Bachelor's of Art degree in
`17 physics and a Bachelor of Science degree in some
`18 liberal things. It was confusing.
`19 BY MR. HEMMINGER:
`20 Q. It's just based upon the various
`21 educational -- actually, I'm just going to clear
`22 that up to see if you misspoke. It truly was a B.A.
`23 in physics.
`24 A. Uh-huh.
`25 Q. What was your dissertation of?
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`Lombard Exhibit 1015, p. 3
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`

`MEDTRONIC v.
`AGA MEDICAL
`
`
`Page 9
`
`LEE MIDDLEMAN
`December 10, 2008
`Page 11
`
` 1 A. Boy, that's a long time ago. It was on --
` 2 I'm trying to think of how to describe it. It was
` 3 x-rays produced by high-energy electron interactions
` 4 with elemental materials. We were looking for
` 5 unusual distributions of those x-rays.
` 6 Q. Was there any potential commercial
` 7 applications of that research?
` 8 A. No. No.
` 9 Q. It was all theoretical in nature?
`10 A. It was all experimental in nature. It was
`11 to better understand the phenomenon.
`12 Q. You said you got your Ph.D. around 1970.
`13 Can you do any better than that?
`14 A. I don't remember. I would have to look at
`15 my diploma. Because I actually finished my thesis
`16 and then did some work before I submitted it, so I
`17 don't remember when.
`18 Q. Will you tell us who you first were
`19 employed with after you -- well, let's put it this
`20 way. Who were you first professionally employed
`21 with using your, if you will, your physics degrees?
`22 The reason I say it that way, you may have
`23 gotten your Ph.D. subsequent to beginning
`24 employment.
`25 A. Right. Right. The first company I worked
`
` 1 Raychem?
` 2 A. I honestly don't remember.
` 3 Q. What division did you work in at Raychem?
` 4 A. I worked in what they called -- I believe
` 5 it was central technology or corporate technology.
` 6 Q. Did you have anybody reporting to you?
` 7 A. I probably had a technician not very long
` 8 after I started.
` 9 Q. Was this central or corporate technology
`10 division the R&D division of Raychem?
`11 A. Yes.
`12 Q. And R&D being research and development?
`13 A. Yes.
`14 Q. And how long were you with Raychem?
`15 A. Well, let's see, I think in about '83 I
`16 left central R&D and moved to a startup or a spinout
`17 that Raychem called Taliq, and I was there for a
`18 couple of years. And then I returned to Raychem
`19 around 1985 and was with the company until 1990 or
`20 '91.
`21 Q. During the time period that you were in the
`22 central or corporate technology division of Raychem
`23 from '76 to '83, can you identify or tell me the
`24 projects you were working on in that time period?
`25 A. Yes, let's see. Primarily it was working
`
`Page 10
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`Page 12
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` 1 for was called Nuclear Semiconductor. I think we
` 2 were in San Carlos. Changed the name later to
` 3 United Scientific.
` 4 Q. And you were a cofounder?
` 5 A. Yes.
` 6 Q. What was the business of Nuclear
` 7 Semiconductor, Inc.?
` 8 A. We primarily produced analytical
` 9 instruments that were used to look at x-rays that
`10 were produced -- if you bombard a material, you will
`11 excite x-rays, and you can look at those x-rays and
`12 identify the elemental constituents of the material.
`13 And we also made detectors that were sold to
`14 universities and colleges for doing research.
`15 Semiconductor detectors.
`16 Q. When did you leave Nuclear Semiconductor?
`17 A. I think it's 1976.
`18 Q. And where did you go upon leaving Nuclear
`19 Semiconductor?
`20 A. I joined Raychem.
`21 Q. Why did you leave Nuclear Semiconductor?
`22 A. We merged with another company, I believe,
`23 or were acquired, and I decided it was time to move
`24 on.
`25 Q. What was your first title or position at
`
` 1 with what we called conductive polymers. These were
` 2 carbon-filled polymeric systems that had electrical
` 3 properties. I did work a little bit with the
` 4 shape-memory alloys, but I never really did much
` 5 with them.
` 6 Q. Okay. You gave the technology you were
` 7 working in. What projects, if you recall any of
` 8 their names?
` 9 A. The major one became known as Polyswitch.
`10 Q. That was with conductive polymers?
`11 A. Yes. Yes.
`12 Q. And did that become a commercial product?
`13 A. It did.
`14 Q. Any other conductive polymer projects you
`15 worked on that you recall?
`16 A. You know, I probably looked at heaters, and
`17 I certainly was associated with other people who
`18 were working on things, and we would talk about
`19 them, but they were primarily -- they were all
`20 related to conductive polymers, but 98 percent of my
`21 time was with Polyswitch.
`22 Q. You said you did some work with
`23 shape-memory alloys. What work do you recall
`24 doing --
`25 A. Just becoming acquainted with the material.
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`MEDTRONIC v.
`AGA MEDICAL
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`Page 13
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`LEE MIDDLEMAN
`December 10, 2008
`Page 15
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` 1 Q. This was still in the 1976 to '83 time
` 2 frame?
` 3 A. Yes.
` 4 Q. And a couple of things, I'll get into a
` 5 little bit of background so maybe we can forestall
` 6 some issues like just happened here.
` 7 Have you ever been deposed before?
` 8 A. Yes.
` 9 Q. How many times?
`10 A. I don't know. More than once.
`11 Q. More than ten times?
`12 A. No. No.
`13 Q. More than five?
`14 A. No.
`15 Q. More than two?
`16 A. I don't recall.
`17 Q. Tell me the subject matter of the
`18 depositions you've testified in.
`19 A. They were associated with Polyswitch, with
`20 conductive polymers.
`21 Q. Were they patent infringement cases?
`22 A. Yes.
`23 Q. And were you named an inventor on any of --
`24 A. Yes.
`25 Q. -- the Polyswitch patents?
`
` 1 try not to speak over me as well?
` 2 A. Yes.
` 3 Q. The other important thing is with regard to
` 4 making sure you understand the questions that I ask.
` 5 If I ask you a question that you do not understand,
` 6 will you let me know?
` 7 A. Yes.
` 8 Q. Finally, to the extent that you need a
` 9 break or would like a drink or something, please let
`10 me know, and I will do my best to take a break as
`11 quickly as I can after you request that. Is that
`12 okay?
`13 A. Yes.
`14 Q. In the 1976 to 1983 time frame, you said
`15 you were doing a little work with shape-memory
`16 alloys, and I think you said getting acquainted with
`17 them; is that right?
`18 A. Yes.
`19 Q. What exactly were you doing with
`20 shape-memory alloys in that time period?
`21 A. I think I was -- you know, people showed me
`22 the metal, showed me how it responded to heat or
`23 things like that. And there were -- I think there
`24 may have been some projects in R&D associated with
`25 it, and I would talk to those people. But I really
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`Page 14
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`Page 16
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` 1 A. Uh-huh.
` 2 Q. What time period did those depositions take
` 3 place?
` 4 A. I believe it was after I left Raychem. But
` 5 I can't be sure.
` 6 Q. So that would have been sometime after
` 7 1991?
` 8 A. I think so.
` 9 Q. Are you taking any drugs or medication
`10 today?
`11 A. Let's see, I take I think it's called
`12 PROSCAR for enlarged prostate.
`13 Q. Are you aware of any reason why you would
`14 not be able to answer the questions that I ask you
`15 today truthfully?
`16 A. No.
`17 Q. One of the common occurrences in a
`18 deposition, and it's happened a couple of times.
`19 Everyone, the person asking the questions as well as
`20 the person answering, falls into this category which
`21 is you begin to talk over somebody else. And the
`22 court reporter, while she's fantastic, really is a
`23 serial processor and can only take one of us
`24 speaking at a time. So I'm going to do my best to
`25 try not to speak over you. Will you do your best to
`
` 1 didn't have any projects myself.
` 2 Q. So it was just idle curiosity?
` 3 A. Well, I think Raychem wanted us to be
` 4 exposed to all of their technologies. This was
` 5 central technology, and they were always looking for
` 6 ideas.
` 7 Q. Who showed you the shape-memory alloy
` 8 materials?
` 9 A. The only name I can remember is Jack
`10 Harrison.
`11 Q. When did you first meet Jack Harrison?
`12 A. I don't recall.
`13 Q. Was it when you first joined Raychem?
`14 A. Probably not long afterwards.
`15 Q. Was he in the corporate or central
`16 technology division of Raychem?
`17 A. I don't recall.
`18 Q. Who were you reporting to?
`19 A. Wells Whitney.
`20 Q. W-e-l-l-s?
`21 A. Yes.
`22 Q. Whitney, W-h-i-t-n-e-y?
`23 A. Yes.
`24 Q. How many people -- how many other people
`25 reported to Wells Whitney?
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`MEDTRONIC v.
`AGA MEDICAL
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`Page 17
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`LEE MIDDLEMAN
`December 10, 2008
`Page 19
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` 1 A. I don't know. More than ten.
` 2 Q. When you were in the corporate or central
` 3 technology division, did you have occasion to access
` 4 the technical library at Raychem?
` 5 A. Yes.
` 6 Q. How is that organized? Was that available
` 7 to all people at Raychem, or is that limited to the
` 8 R&D group?
` 9 A. I think it was available to all people.
`10 Q. Did the central technical library, did it
`11 have a name?
`12 A. Not that I recall.
`13 Q. Was there public information as well as
`14 internal confidential information maintained in that
`15 library?
`16 A. I know there were public books there, yeah.
`17 Uh-huh.
`18 Q. Were there also confidential internal
`19 materials maintained in that library?
`20 A. I don't recall.
`21 Q. So is this a physical library with actual
`22 books, or was it digital?
`23 A. It was mostly a physical library in those
`24 days.
`25 Q. And we're talking about the '76 to '83 time
`
` 1 Q. Do you recall something called betalloy,
` 2 b-e-t-a --
` 3 A. Yeah, uh-huh.
` 4 Q. -- l-l-o-y?
` 5 A. Yes.
` 6 Q. Do you recall what alloy it was, what
` 7 component materials were included in that?
` 8 A. No.
` 9 Q. Did you ever do any work with brass alloys?
`10 A. No.
`11 Q. So when you were playing around with this
`12 shape-memory alloys, was it only nitinol that you
`13 played around with?
`14 A. I believe so.
`15 Q. What was the form of the material you were
`16 playing around with?
`17 A. I'm sure some of it was in the form of a
`18 wire, but I can't recall any others.
`19 Q. Anybody else other than Jack Harrison that
`20 you have any recollection of talking about with
`21 regard to nitinol in the '76 to '83 time frame?
`22 A. Yeah. Bill Link.
`23 Q. Can you spell that?
`24 A. Well, B-i-l-l and L-i-n-k.
`25 Q. Was he in the R&D group?
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`Page 18
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`Page 20
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` 1 frame?
` 2 A. Uh-huh. Yes.
` 3 Q. Did you ever hear of a database called
` 4 Kiwi?
` 5 A. I don't recall that, no.
` 6 Q. Do you recall at some point there was an
` 7 effort to take the paper copies of articles and
` 8 publications and put them online in a digital
` 9 format?
`10 A. No, I don't recall that.
`11 Q. What was your involvement with Jack
`12 Harrison in the '76 to '83 time frame?
`13 A. He was -- I think he may have been in the
`14 building. I don't know if he was part of R&D or not
`15 at the time. He was just a nice guy that
`16 occasionally I talked to.
`17 Q. Anybody else you can recall who you may
`18 have interacted with with regard to shape-memory
`19 alloys?
`20 A. In that time frame, no.
`21 Q. What shape-memory alloys did you try to
`22 become familiar with in the '76 to '83 time frame?
`23 A. Well, the nitinol, and I believe they had
`24 one other non-nickel-titanium alloy that they were
`25 looking at, but I don't remember its composition.
`
` 1 A. I believe he was a consultant.
` 2 Q. He consulted to the R&D group?
` 3 A. Yes.
` 4 Q. Do you recall there being a metals division
` 5 in Raychem in the '76 to '83 time frame?
` 6 A. I think so. I mean, I know that -- during
` 7 my tenure at Raychem, there was a metals division.
` 8 Whether it was in those years, I'm not sure.
` 9 Q. Prior to your work at Raychem, did you ever
`10 do any research with regard to shape-memory alloys?
`11 A. No.
`12 Q. Had you ever heard of shape-memory alloys
`13 prior to your employment at Raychem?
`14 A. No.
`15 Q. When you left Raychem in 1983, how would
`16 you characterize your experience with shape-memory
`17 alloys?
`18 A. Very little.
`19 Q. No expertise at all?
`20 A. None.
`21 Q. In the '76 to '83 time frame, did you ever
`22 talk to Jim Jervis?
`23 A. I can't tell you. I mean, I know who Jim
`24 Jervis is, and I know I have interacted with him
`25 over the years, but I couldn't say I had interaction
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`MEDTRONIC v.
`AGA MEDICAL
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`Page 21
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`LEE MIDDLEMAN
`December 10, 2008
`Page 23
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` 1 with him during that time.
` 2 Q. What about Mary Quin, do you recall talking
` 3 with her in the '76 to '83 time frame?
` 4 A. Again, I recognize her name, but I couldn't
` 5 tell you when.
` 6 Q. Have you ever looked at any patents that
` 7 were issued where Mary Quin was listed as the
` 8 inventor?
` 9 A. I don't recall.
`10 Q. You have looked at some of the Jim Jervis
`11 patents, though, haven't you?
`12 A. Yes.
`13 Q. When was the first time you became aware
`14 that there were patents that were obtained with Jim
`15 Jervis as the named inventor?
`16 A. I think that probably was when I returned
`17 to Raychem in '85.
`18 Q. What was Taliq? T-a-l-l-i-q?
`19 A. T-a-l-i-q.
`20 Q. One L, okay.
`21 A. It was a spinoff from Raychem. They had
`22 acquired the rights to some liquid crystal
`23 technology, and we were looking at thin film
`24 displays.
`25 Q. Was it tantalum-based?
`
` 1 Q. What projects -- well, did you remain in
` 2 central technology, then, from 1985 to 1991?
` 3 A. No. I left central technology, I'm
` 4 guessing, the late '80s and worked for Fred Grafton
` 5 in -- I think it was called Medical Ventures.
` 6 Q. Was Medical Ventures a division of Raychem?
` 7 A. I don't know how it was categorized.
` 8 Q. Was it a subsidiary?
` 9 A. I don't think so. You know, it was more a
`10 program.
`11 Q. Do you recall when you began working with
`12 Fred Grafton in the Medical Ventures group?
`13 A. I don't know an exact date, but it was
`14 late -- be the late '80s.
`15 Q. '88?
`16 A. I don't know.
`17 Q. '89?
`18 A. That's the time frame.
`19 Q. The reason I ask you these things is not to
`20 be a pain in the neck, but sometimes when you hear a
`21 date, it will trigger a memory. So if you're saying
`22 you don't remember, I may throw out dates or numbers
`23 just to see if I jog your memory in that regard.
`24 A. Okay.
`25 Q. It was before 1990, though?
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`Page 22
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`Page 24
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` 1 A. Huh?
` 2 Q. Was it tantalum-based?
` 3 A. Tantalum?
` 4 Q. Tantalum, the element tantalum.
` 5 A. No.
` 6 Q. T-a, I was thinking maybe that's where it
` 7 came from.
` 8 A. No.
` 9 Q. Who did they acquire the liquid crystal
`10 display technology from?
`11 A. It was from a small company in -- the
`12 president was Jim Ferguson. The company was in
`13 Ohio. I don't remember the city.
`14 Q. Did you relocate to Ohio?
`15 A. No. No. We brought Jim to California, and
`16 we set up Taliq in Mountain View, I think.
`17 Q. Did Taliq have anything to do with
`18 shape-memory alloys?
`19 A. No.
`20 Q. When you came back to Raychem in 1985, what
`21 was your position?
`22 A. You know, I don't recall.
`23 Q. Do you recall what division you were
`24 employed in?
`25 A. Yeah. It was in central technology again.
`
` 1 A. I believe so.
` 2 Q. What projects did you work on when you were
` 3 in the R&D or central technology division from '85
` 4 to the late '80s?
` 5 A. Oh, boy. I think, you know, in that time
` 6 frame I was a manager, so a director of technology.
` 7 So I managed other groups who actually did technical
` 8 work. I would assume conductive polymers was
` 9 involved in that, ceramics. It was an inorganic
`10 chemistry group. For awhile the analytical group
`11 reported to me. That's what I can remember. Oh,
`12 fiberoptics was another.
`13 Q. Any of the projects involve shape-memory
`14 alloys? This is when you were in the central
`15 technology division from '85 to the late '80s.
`16 A. I don't think so, no.
`17 Q. So up until the late '80s, your only
`18 involvement with shape-memory alloys was the little
`19 bit of getting yourself familiar with nitinol
`20 somewhere in the '76 to '83 time period?
`21 A. That's what I can recollect, yes.
`22 Q. When you moved to the Medical Ventures
`23 program, what was your role in that program?
`24 A. It was a couple different things. I worked
`25 with Fred in assessing potential acquisitions for
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`MEDTRONIC v.
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`LEE MIDDLEMAN
`December 10, 2008
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` 1 Raychem in the medical marketplace. Looking at
` 2 technologies outside of Raychem, and then looking at
` 3 Raychem technologies with the idea of how might they
` 4 be used in medical products.
` 5 Q. Was the entirety of the effort in the
` 6 Medical Ventures program to find ways to utilize
` 7 nitinol in medical products?
` 8 A. That was one of the things we looked at.
` 9 Q. What were the others?
`10 A. Conductive polymers, gels. I think that
`11 was primarily it.
`12 Q. When you were working in the Medical
`13 Ventures program, did you -- and this would have
`14 been in the late 1980s to '91 when you left, did you
`15 have occasion to work with Jim Jervis?
`16 A. No.
`17 Q. Why not?
`18 A. I didn't -- I think I had some
`19 conversations with him, but I didn't work with him,
`20 no.
`21 Q. At the time you began working in the
`22 Medical Ventures program in the late '80s through
`23 1991, did you become aware that some patents had
`24 issued for Raychem using shape-memory alloy products
`25 in the medical devices?
`
` 1 closely."
` 2 A. We talked about -- he's an orthopedic
` 3 surgeon. So we talked about potential applications
` 4 for materials in terms of surgeries.
` 5 Q. You say orthopedic surgeon. What does that
` 6 mean in layman's terms?
` 7 A. He was doing repair to the bones.
` 8 Q. So you basically talked to him about
` 9 potential uses of Raychem's technology with regard
`10 to orthopedic issues and devices?
`11 A. Yes.
`12 Q. Did you ever talk to any doctors in the '89
`13 to '91 -- or '88 to '91 time period with regard to
`14 potential uses of Raychem's technologies in the
`15 cardiovascular area?
`16 A. I might have. I don't recall.
`17 Q. You don't recall ever having a consultant
`18 that was, in fact, a cardiovascular surgeon or a
`19 doctor in cardiology?
`20 A. No, I don't recall.
`21 Q. Who is Fred Grafton?
`22 A. Fred was a senior manager at Raychem. I
`23 think he had managed various divisions. I had known
`24 Fred for, I don't know, awhile. And when he had the
`25 Medical Venture division, he approached me about
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` 1 A. Yes.
` 2 Q. How did you become aware of that?
` 3 A. Well, I did a survey for myself of Raychem
` 4 technologies. You know, I had looked at what
` 5 materials we had available, what patents we had, the
` 6 properties of the materials, and then I worked with
` 7 a physician to think about how we might utilize
` 8 those materials in finished product form.
` 9 Q. What physician?
`10 A. Walter Pyka.
`11 Q. Can you spell that?
`12 A. P-y-k-a.
`13 Q. And he was an M.D.?
`14 A. Yes.
`15 Q. Do you know which hospital or university he
`16 was working out of?
`17 A. At the point that I worked with him, I
`18 don't remember.
`19 Q. How much involvement did you have with
`20 Dr. Pyka?
`21 A. We worked closely together for a number of
`22 months. He was a consultant. So I was the
`23 technologist, and he was the fellow who really
`24 understood medicine and surgery.
`25 Q. Define more clearly when you say "we worked
`
` 1 joining him. And it sounded good, sounded very
` 2 interesting.
` 3 Q. So he headed up the Medical Ventures group?
` 4 A. Yes.
` 5 Q. How many other people were there in the
` 6 Medical Ventures group in the '88 through '91 time
` 7 period?
` 8 A. Well, there was an admin. I had a couple
` 9 of technicians, and at least one engineer, and
`10 Walter was a consultant. And we had other
`11 physicians who were consultants as well.
`12 Q. Did you generate reports on a regular basis
`13 during that time period you were with Raychem in the
`14 Medical Ventures group?
`15 A. I generated documents, yeah. I wrote memos
`16 regarding maybe surgeries I observed or conferences
`17 I went to. Things like that.
`18 Q. What did you do to familiarize yourself
`19 with the shape-memory alloy technology of Raychem
`20 when you started working with -- or working in the
`21 Medical Ventures group?
`22 A. There was a metals division at that time,
`23 and so I spent time over there with some of their
`24 technical people. Tom Duerig for one. That's the
`25 one name I can recall.
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`Min-U-Script®
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`GROSSMAN & COTTER
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`Lombard Exhibit 1015, p. 8
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`MEDTRONIC v.
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`LEE MIDDLEMAN
`December 10, 2008
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` 1 Q. You think Tom Duerig was at Raychem from
` 2 '89 to '91?
` 3 A. I believe so.
` 4 Q. Other than just talking to people in the
` 5 metals division, what else did you do to familiarize
` 6 yourself with shape-memory alloy products?
` 7 A. Well, I talked to them about the things
` 8 that we were interested in, and they would supply me
` 9 with samples, like wire or tubing, things like that.
`10 Q. Did you ask for specific types of
`11 shape-memory alloys?
`12 A. I don't recall if I asked for specifics. I
`13 mean, I might have asked for certain diameter wire,
`14 certain length. They were the experts in terms of
`15 material properties. So as a result of discussions
`16 with them, they would supply me with some samples,
`17 and I would try them out and see if they met my
`18 needs.
`19 Q. When did you first learn about a
`20 characteristic called SIM?
`21 A. SIM? Remind me --
`22 Q. You don't know what SIM is as you sit here
`23 now?
`24 A. I don't.
`25 Q. Was one of the main goals of Medical
`
` 1 A. I don't recall.
` 2 Q. Was this a royalty bearing license or a
` 3 fully paid-up license?
` 4 A. I don't recall.
` 5 Q. Was it exclusive or nonexclusive?
` 6 A. I don't remember.
` 7 Q. Who also negotiated the license with U.S.
` 8 Surgical on behalf of Raychem?
` 9 A. I believe Ken Frederick and there was a
`10 woman, but I don't remember her name.
`11 Q. Was it Mary Quin?
`12 A. No.
`13 Q. When did you negotiate this license with
`14 U.S. Surgical?
`15 A. Well, if I left Raychem in '91, it must
`16 have been in '90 or '91.
`17 Q. In '91 did Raychem abandon its efforts to
`18 commercialize and create intellectual property
`19 relating to medical devices?
`20 A. I don't remember.
`21 Q. Why did you leave Raychem?
`22 A. I really wanted to be a part of a business
`23 that was in the medical business, and Raychem had
`24 clearly made the decision that my work was going to
`25 be developed by a separate company. They wanted me
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` 1 Ventures to come up with ideas that could be
` 2 submitted to the patent office with the hope to get
` 3 patents on the ideas you came up with?
` 4 A. And to commercialize them, yes.
` 5 Q. How many medical device products did
` 6 Raychem commercialize from the Medical Ventures
` 7 group?
` 8 A. From our group, none. The decision was
` 9 made about the time that Fred retired. We proposed
`10 a spinout venture,