James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., MEDTRONIC )
`
`VASCULAR, INC., and )
`
`MEDTRONIC COREVALVE, LLC, )
`
` )
`
` Petitioner, )
`
` )
`
` vs. ) No. IPR2014-00110
`
` ) No. IPR2014-00111
`
`TROY R. NORRED, M.D., )
`
` )
`
` Patent Owner. )
`
` THE DEPOSITION OF JAMES JOSEPH
`
`KERNELL, a Witness, taken on behalf of the
`
`Petitioner, before Alison A. Tracy, Missouri CCR
`
`No. 554, pursuant to Notice on the 9th day of
`
`October, 2014, at the Law Offices of Bartle &
`
`Marcus, 1100 Main Street, Suite 2730, Kansas
`
`City, Missouri.
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`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 1
`
`
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDTRONIC, INC., MEDTRONIC )
`
`VASCULAR, INC., and )
`
`MEDTRONIC COREVALVE, LLC, )
`
` )
`
` Petitioner, )
`
` )
`
` vs. ) No. IPR2014-00110
`
` ) No. IPR2014-00111
`
`TROY R. NORRED, M.D., )
`
` )
`
` Patent Owner. )
`
` THE DEPOSITION OF JAMES JOSEPH
`
`KERNELL, a Witness, taken on behalf of the
`
`Petitioner, before Alison A. Tracy, Missouri CCR
`
`No. 554, pursuant to Notice on the 9th day of
`
`October, 2014, at the Law Offices of Bartle &
`
`Marcus, 1100 Main Street, Suite 2730, Kansas
`
`City, Missouri.
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`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 1
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 2
`
` A P P E A R A N C E S
`
`FOR THE PETITIONER:
`
` Mr. Jack S. Barufka
`
` PILLSBURY WINTHROP SHAW PITTMAN, LLP
`
` 1600 Tysons Boulevard, 14th Floor
`
` McLean, Virginia 22102
`
` 703.770.7900
`
` barufka@pillsburylaw.com
`
` and
`
` Mr. Evan Finkel
`
` PILLSBURY WINTHROP SHAW PITTMAN, LLP
`
` 725 South Figueroa Street, Suite 2800
`
` Los Angeles, California 90017
`
` 213.488.7100
`
` evan.finkel@pillsburylaw.com
`
`ALSO PRESENT:
`
` Mr. Sean Edman
`
` Principal Patent Counsel
`
` MEDTRONIC
`
` 8200 Coral Sea Street NE, MVS76
`
` Mounds View, Minnesota 55112
`
` 763.505.8418
`
` sean.edman@medtronic.com
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
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`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 2
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 3
`
` A P P E A R A N C E S (Continued)
`
`FOR THE PATENT OWNER:
`
` Mr. David L. Marcus
`
` BARTLE & MARCUS, LLC
`
` 1100 Main Street, Suite 2730
`
` Kansas City, Missouri 64105
`
` 816.256.4699
`
` david.marcus@pobox.com
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`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 3
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 4
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` I N D E X
`
`WITNESS: PAGE:
`
` James Joseph Kernell
`
`EXAMINATION BY MR. FINKEL
`
`EXAMINATION BY MR. MARCUS
`
` E X H I B I T S
`
`NO.: DESCRIPTION: PAGE:
`
`1001: 228 Patent 5
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`2094: Kernell declaration in 110 IPR 9
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`2103: Norred conception of
`
` invention document 7
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`2116: 9/22/00 cover letter to Dr.
`
` Norred enclosing draft
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` patent application 41
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`2144: Draft of patent application 41
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`2150: Disclosure 24
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`2191: Contents of CD 35
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`2194: Kernell Declaration in 111 IPR 9
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`7: Check
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`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 4
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 5
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` (The deposition commenced at 9:15 a.m.)
`
` JAMES JOSEPH KERNELL,
`
`a Witness, being first duly sworn, testified
`
`under oath as follows:
`
` EXAMINATION
`
`BY MR. FINKEL:
`
` Q. Please state your full name for the
`
`record, sir.
`
` A. James Joseph Kernell.
`
` Q. I'm handing you a copy of Exhibit 1001
`
`in IPR2014-00111 and also in 00110. This is a
`
`copy of U.S. Patent number 6,482,228. Do you
`
`recognize that patent, sir?
`
` A. Yes, I do.
`
` Q. I'm going to refer to that as the 228
`
`patent, okay?
`
` A. Okay.
`
` Q. My understanding is, is that you are the
`
`attorney that prepared, prosecuted the
`
`application that led to the issuance of the 228
`
`patent, is that correct?
`
` A. That's correct.
`
` Q. My understanding is you are lead counsel
`
`for Mr. Troy Norred in a number of IPR
`
`proceedings initiated by Medtronic entities
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 5
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 6
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`regarding the 228 patent, is that correct?
`
` A. That's correct.
`
` Q. That would include the 110 we mentioned,
`
`the 111 we mentioned, and IPR2014-00395, correct?
`
` A. Yes.
`
` Q. Are you also Mr. Norred's counsel in
`
`litigation against Medtronic entities in the
`
`District of Kansas that's presently pending?
`
` A. Yes.
`
` Q. And would I be correct that in your
`
`capacity as an attorney, you have taken many
`
`depositions over the course of your career?
`
` A. Yes, I have.
`
` Q. And defended many depositions as well?
`
` A. Yes.
`
` Q. And have you ever been deposed before?
`
` A. Yes, I have.
`
` Q. Approximately how many times?
`
` A. One time.
`
` Q. So given your experience with
`
`depositions I'm not going to insult you by
`
`instructing on all of the details of the
`
`deposition. But do you have any questions before
`
`we begin?
`
` A. No.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 6
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 7
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` Q. Are you under my medication or
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`influenced by anything that would impact your
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`ability to truthfully and completely answer my
`
`questions today?
`
` A. No.
`
` Q. I would like to hand you a copy of
`
`Exhibit 2103 in the 111 proceeding and ask you if
`
`you recognize it?
`
` A. Yes.
`
` Q. And you know that to be discussed in the
`
`deposition of Mr. Norred what he claims to be his
`
`document indicating conception of his invention?
`
` A. Yes.
`
` Q. And when did you first see that
`
`document?
`
` A. I believe I saw this when he first came
`
`to my office in May of 2000.
`
` Q. Do you have a copy of that in your
`
`files?
`
` A. No.
`
` Q. Was that produced to us in any
`
`proceeding from your files?
`
` A. No. It wasn't from my files. He kept
`
`the original. I didn't have a copy of it.
`
` Q. Is it referred to in your declaration in
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 7
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 8
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`this matter in any way to indicate that he gave
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`it to you?
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` A. No. It is just indicated that we met
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`and he had a disclosure.
`
` Q. As we sit here today, on what basis do
`
`you believe you saw that document when he came to
`
`you initially?
`
` A. I remember seeing that document.
`
` Q. So 14 years ago you remember seeing that
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`document?
`
` A. Yes.
`
` Q. Do you know if there is a copy in your
`
`file?
`
` A. Now there is, yes, there is.
`
` Q. Do you know if there was a copy in the
`
`file at the time these IPR proceedings were
`
`commenced?
`
` A. I don't believe so.
`
` Q. Please tell me what you did to prepare
`
`for your deposition today.
`
` A. I just read through my declaration.
`
` Q. And you were sitting here for the
`
`depositions the last couple of days of Dr.
`
`Catchings, Dr. Norred, correct?
`
` A. Yes.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 8
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 9
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` Q. Did you review any documents in
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`preparation for your deposition today other than
`
`your declaration?
`
` A. No.
`
` Q. I'm going to hand you Exhibit 2194 in
`
`the 111 IPR. Do you recognize that as being your
`
`declaration?
`
` A. Yes.
`
` Q. And is that your signature on Page 19?
`
` A. Yes, it is.
`
` Q. Did you sign the declaration on or about
`
`July 17 as a indicated on Page 19?
`
` A. Yes, I did.
`
` Q. Did you believe all of the statements in
`
`there to be true at the time you signed it?
`
` A. Yes.
`
` Q. Do you believe that to be true as we sit
`
`here today?
`
` A. Everything is correct. Although I saw
`
`that it says I graduated from law school in 2000.
`
`It was actually 1999.
`
` Q. Anything else?
`
` A. That was the only thing I noticed.
`
` Q. And I'm going to hand you Exhibit 2094.
`
` A. This is 2194.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 9
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 10
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` Q. I'm going to hand you 2094 as well which
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`is your declaration in the other IPR proceeding,
`
`although I will say that on the face it says it
`
`is the 110 proceeding and in the legend at the
`
`bottom it says the 111 proceeding. Do you
`
`recognize that declaration as well?
`
` A. Yes.
`
` Q. And that is the declaration you
`
`submitted in the other IPR proceeding?
`
` A. Yes.
`
` Q. Just to facilitate matters, it is my
`
`understanding that the declarations are the same
`
`except for the IPR numbers and Exhibit numbers
`
`that are referenced.
`
` A. That's correct.
`
` Q. So if we refer to one declaration, it is
`
`the same for all purposes we are referring to the
`
`other declaration?
`
` A. Yes.
`
` Q. Are you being compensated with respect
`
`to the time you spent preparing for your
`
`deposition today?
`
` A. No.
`
` Q. Are you being compensated for the time
`
`you spent preparing the declaration?
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 10
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 11
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` A. No.
`
` Q. Did you draft the declaration yourself?
`
` A. Yes, I did.
`
` Q. With any assistance from anyone else?
`
` A. I had assistance from my secretary that
`
`helped identify documents during this time
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`period.
`
` Q. Anybody else?
`
` A. No.
`
` Q. I want to focus on the period of time
`
`between May 3, when I believe Mr. Norred first
`
`came to see you, and November 20 when the 228
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`application was filed. Okay?
`
` A. Okay.
`
` Q. During this period of time, what was
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`your practice with respect to how you billed
`
`clients for patent prosecution matters?
`
` A. For patent prosecution matters they were
`
`billed a fixed fee. Well, I'm sorry, if there
`
`was preparation of a patent, it is a fixed fee.
`
`For prosecution, they were billed on an hourly
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`rate.
`
` Q. So for amendments and the like it would
`
`be an hourly rate?
`
` A. Yes.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 11
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 12
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` Q. But for the patent application it would
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`be a fixed fee?
`
` A. Yes.
`
` Q. How was the fixed fee determined?
`
` A. It is based on whether it is a simple
`
`mechanical, moderate complexity, complex or
`
`electrical, software, it just depended on what
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`the subject matter of the patent was.
`
` Q. Who determined how much the client would
`
`be billed for the application of that type?
`
` A. At that time we had a fee sheet
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`basically, but it would be one of the partners
`
`that would have the ultimate say.
`
` Q. In your case would that be, in
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`connection with the 228 application, would that
`
`be Mr. --
`
` A. Yakimo.
`
` Q. Mr. Yakimo?
`
` A. Yes, Mike Yakimo.
`
` Q. Do you recall how much -- do you recall
`
`during, again we are talking about just this time
`
`period, May 3, 2000 to November 14, 2000, do you
`
`recall what the fixed fee schedule included at
`
`the time with respect to a patent application?
`
` A. I believe for a simple mechanical it was
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 12
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 13
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`around $5,000. And then it went up to, I think
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`about the time it was about 8,000 was the most we
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`would charge for a patent application. Although
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`that could -- again, if it got much more
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`complicated, more involved, then we could charge
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`more.
`
` Q. Do you bill the clients during this
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`period on an ongoing basis or how do you submit
`
`your fees?
`
` A. Initially we would get a retainer from
`
`them to begin work, and usually we would ask for
`
`approximately half to begin work on the patent
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`application. Then when the application is
`
`complete and we get their signature documents
`
`back for filing the patent application, they
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`would be, they would actually be given an invoice
`
`when they approved the patent application and
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`they would pay before we filed it.
`
` Q. Would there be any invoices in between
`
`those two?
`
` A. No, not typically. There were
`
`occasions, if the application was ongoing, that
`
`we would have more billings. But that was
`
`unusual.
`
` Q. And with respect to other types of
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 13
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 14
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`matters that are described in your declaration,
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`non-prosecution, non-patent application
`
`preparation and prosecution, how were the clients
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`typically billed in this period of time?
`
` A. Hourly.
`
` Q. They would get monthly invoices?
`
` A. Yes.
`
` Q. And would you record your time on a time
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`sheet of some sort?
`
` A. It would be in the -- well, a couple of
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`places. Either on my calendar or directly into
`
`the software we were using at the time.
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` Q. So when a client got an invoice for a
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`non-patent prosecution matter, what would the
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`invoice reflect?
`
` A. It would reflect what work was done and
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`the amount of time and then the rate, then add
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`everything up to what the total bill was for that
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`month for that client.
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` Q. It would also reflect the number of
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`hours worked and the days worked, right?
`
` A. Yes.
`
` Q. That would be the same for patent
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`prosecution as opposed to the initial drafting of
`
`the application as well?
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 14
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 15
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` A. I'm sorry?
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` Q. In other words, clients would get
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`similar type invoices monthly for patent
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`managers' work as opposed to a patent
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`application?
`
` A. Correct. The other typical fixed fees
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`would be preparation of a trademark application,
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`that was a set fee for that also.
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` Q. But with respect to patent application
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`amendments and prosecution, a client would get an
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`invoice each month for whatever work you did on
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`the matter?
`
` A. That's correct.
`
` Q. Would it be showing your hours, what
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`services you provided, the date and so forth?
`
` A. That's correct.
`
` Q. During the period of time between May 3
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`and November 14, 2000, can you recall
`
`approximately how many hours was a typical work
`
`week for you?
`
` A. It was between 50 and 60 hours.
`
` Q. And this may be a difficult question
`
`obviously to answer, but can you recall how much
`
`vacation you took during that same period?
`
` A. At that time, because it was right as I
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 15
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 16
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`was out of law school, I don't think I took any
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`vacation. I recall there was a Cub Scout or
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`Webelos outing, but that was over a weekend. But
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`we didn't take a vacation that summer.
`
` Q. Now, in paragraph 1 of your declaration
`
`you say, I believe, that you reviewed your work
`
`load and correspondence from the date you first
`
`met Mr. Norred until the date the application was
`
`filed. Do you see that?
`
` A. Yes.
`
` Q. Did you review any -- you mentioned
`
`calendar entries, for example, where you might
`
`put down your time. Did you review anything like
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`that?
`
` A. No. I don't have any of those records
`
`anymore.
`
` Q. Did you review any form of time sheets
`
`at all?
`
` A. No.
`
` Q. Did you review any billing records?
`
` A. No.
`
` Q. Any invoices?
`
` A. No.
`
` Q. I think I asked you this but I will ask
`
`it again, make sure I got it covered. Calendars
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 16
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 17
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`or day timers?
`
` A. No.
`
` Q. Did you speak to anyone, such as
`
`Mr. Yakimo?
`
` A. No, I didn't talk to Mr. Yakimo.
`
` Q. Any of your other partners?
`
` A. No.
`
` Q. Any of your other associates?
`
` A. No.
`
` Q. Mr. Norred?
`
` A. No.
`
` Q. Anyone else?
`
` A. My secretary. That was the only -- she
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`would have been -- and I spoke to I guess two of
`
`the secretaries that were with us at that time.
`
`There were no other associates in the firm except
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`for me.
`
` Q. Just so the record is clear, you spoke
`
`to the secretaries to help you do what?
`
` A. To help me find documents that reflected
`
`what I was working on in that time period.
`
` Q. So you would be referring to files of
`
`matters that you were working on at the time?
`
` A. Correct.
`
` Q. With respect to the things we discussed
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 17
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 18
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`that you did not consult, such as time sheets,
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`billing records, invoices, calendars and day
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`timers and so forth, would it be correct to say
`
`you just don't have those anymore?
`
` A. That's correct. It is 14 years ago.
`
`Although I did have time records back to 2001,
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`believe it or not. One more year, but.
`
` Q. Did you ask -- you are obviously a fine
`
`attorney so I'm not going to caution you about
`
`attorney/client privilege information, but to the
`
`extent you can answer, did you ask Mr. Norred
`
`whether he had any invoices that he could
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`provide?
`
` A. Well, not at the time I was preparing
`
`this, because at the time we pretty much had all
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`of the documents that Mr. Norred or Dr. Norred
`
`had produced for the litigation and so I was
`
`aware of everything that he had.
`
` Q. To the best of your knowledge he
`
`wouldn't have any invoices and they haven't been
`
`produced in the case?
`
` A. That's correct.
`
` Q. And I noticed there was one cancelled
`
`check. Strike that. I know there was one check
`
`marked yesterday in Mr. Norred's deposition
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 18
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 19
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`marked as Norred Exhibit 7 that was produced
`
`yesterday. Do you see that?
`
` A. Yes.
`
` Q. Do you know where that came from?
`
` A. This came from my file.
`
` Q. So it didn't come from Mr. Norred; it
`
`came from you?
`
` A. That's correct.
`
` Q. Did you look for a check with respect to
`
`any further work done on the patent application
`
`that led to the 228 patent?
`
` A. Well, I looked in the file, in his file,
`
`and there wasn't any other check.
`
` Q. Do you know how much you billed
`
`Mr. Norred for preparation of his application?
`
` A. Not exactly. But knowing that we
`
`charged him $2,000 to begin work, that my
`
`assumption would be that we would have charged
`
`him between 5 and $6,000 total for this.
`
` Q. I think you said before, just so I'm
`
`clear, your retainer was typically about 50
`
`percent or half?
`
` A. About. It wasn't a set rule. It was
`
`just get some money up front and more than 50
`
`bucks, you know. Something substantial so that
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 19
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 20
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`we know that they want to go forward with the
`
`application.
`
` Q. So your best estimate today is it was
`
`about 5,000 or $6,000 total?
`
` A. Yes. Then there would have been the
`
`filing fee and the drawing fees.
`
` Q. With respect to your work on the
`
`application itself or the firm's work on the
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`application itself, it would be between 5 and
`
`$6,000?
`
` A. That's correct.
`
` Q. We mentioned Mr. Yakimo a couple of
`
`times. Do you recall that?
`
` A. Yes.
`
` Q. That would be Michael Yakimo, Jr., is
`
`that correct?
`
` A. That's correct.
`
` Q. And is Mr. Yakimo presently an attorney
`
`with your firm?
`
` A. He is Of Counsel with our firm.
`
` Q. Just so I can clarify something. The
`
`firm back when you were prosecuting Mr. Norred's
`
`application was Chase & Yakimo?
`
` A. That's correct.
`
` Q. And the firm has a different name
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 20
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 21
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`obviously today. Is it the same firm with
`
`different name change or is it a different firm?
`
` A. We merged. The progression went from
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`Chase & Yakimo and Dan Chase and Mike Yakimo,
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`Mr. Yakimo then went Of Counsel and the firm name
`
`changed to Chase Law Firm. And then in 2008
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`Chase Law Firm merged with the Erickson & Kleypas
`
`firm and the name was changed to Erickson,
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`Kernell, Derusseau & Kleypas, with Chase Law Firm
`
`retaining its name but being a member of the
`
`firm.
`
` Q. Thank you. I'm going to be reading some
`
`paragraphs in your declaration and ask you a
`
`series of questions with respect to that just to
`
`get clarification. In paragraph 3 of your
`
`declaration you say that the application for the
`
`228 patent took approximately 80 hours to
`
`prepare.
`
` A. Yes.
`
` Q. What do you base that 80 hour figure on?
`
` A. I'm just basing it on the, somewhat the
`
`complexity of this patent application and not so
`
`much the complexity of the device, as the
`
`terminology and knowing what it took. I recall
`
`this application taking longer than a typical
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 21
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 22
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`application.
`
` Q. Other than that, is it based on anything
`
`else?
`
` A. Well, no. I mean it is just -- I recall
`
`that this one seemed to have taken longer than
`
`most.
`
` Q. Is there any document you are referring
`
`to in coming up with that estimate?
`
` A. Only the documents I looked at, because
`
`there were more than one, there was a couple of
`
`drafts I believe, and we don't -- typically you
`
`produce the patent application, you send the
`
`draft to the client, you get the comments, you
`
`incorporate them in and then you produce or you
`
`file the patent application. This one had, I
`
`believe, an intermediate draft.
`
` Q. Intermediate draft meaning that there
`
`were two initial drafts and then a final, is that
`
`what you are suggesting?
`
` A. There was at least one draft that I
`
`referred to that I had sent to him and then got
`
`that back, and then in talking to him on the
`
`phone and working through some of the comments
`
`that he had on it.
`
` Q. I believe from what I have seen in
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 22
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 23
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`testimony and in your declarations there was an
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`initial draft sent, we will go through it,
`
`though, if you want to go through it now, we can,
`
`but my only point is I believe those initial
`
`drafts were sent on or about September 22 and
`
`then there was a final. I don't recall any other
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`drafts being mentioned.
`
` A. Right. There would have been an
`
`internal draft with Mr. Yakimo, because being a
`
`new attorney at that time all patent applications
`
`would have been reviewed by a partner and he
`
`would have reviewed that. And so there was an
`
`initial draft that he would have reviewed, and
`
`then subsequent draft that would have been sent
`
`to Dr. Norred.
`
` Q. But as I understand, that was your
`
`normal practice, right?
`
` A. Yes.
`
` Q. So I'm just trying to understand the
`
`implication that this was somehow different. It
`
`seems to me that what you have testified to is
`
`you worked internally to get a draft, you
`
`prepared a draft, it was sent to the client, they
`
`provided comments, you sent them a final, and
`
`that was the end of it?
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 23
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 24
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` A. That's correct.
`
` Q. And that wasn't atypical for how you
`
`handled applications?
`
` A. No, it wasn't atypical. It was just
`
`part of this process.
`
` Q. In paragraph 4 of your declaration I
`
`believe you discussed a meeting with Mr. Norred
`
`on May 3, 2000?
`
` A. Yes.
`
` Q. And you say there at this meeting Dr.
`
`Norred provided initial disclosure of his
`
`inventions and some sketches?
`
` A. Yes.
`
` Q. And you refer to Exhibit 2150.
`
` A. That's correct.
`
` Q. I'm going to hand you Exhibit 2150. Do
`
`you have any record of Mr. Norred giving you
`
`anything else at this initial meeting other than
`
`2150?
`
` A. No. This is the disclosure he gave me.
`
` Q. To the best of your knowledge sitting
`
`here today, 2150 is the only physical document
`
`Mr. Norred gave you at the first meeting?
`
` A. That he gave me a copy of, that's
`
`correct.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 24
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 25
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` Q. You say there in paragraph 4 that the
`
`meeting lasted approximately two hours.
`
` A. That's correct.
`
` Q. And I know it has been a long time so I
`
`understand you can't recall things well. What do
`
`you base that two-hour meeting on?
`
` A. Based on the dealings with Dr. Norred,
`
`that he tends to go into a lot of detail when he
`
`describes things, and asks a lot of questions.
`
`And I mean I have a vision of meeting him for the
`
`first time at that meeting and going -- and
`
`typically a client will say okay, now what's the
`
`process; and he wanted to know the details as to
`
`how is it filed, what happens to it then. And I
`
`just recall going into a lot of detail with him.
`
` Q. So then in paragraph 5 of your
`
`declaration you refer to the receipt of a
`
`retainer check on May 11, 2000. Do you see that?
`
` A. Yes.
`
` Q. Now is that the check that was
`
`previously marked and we referred to as Norred
`
`Exhibit 7?
`
` A. That's correct.
`
` Q. So that would have been the start of
`
`your authorization to move forward with the
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 25
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 26
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`application?
`
` A. Yes.
`
` Q. So you wouldn't have started preparing
`
`the application before then?
`
` A. No.
`
` Q. Turning to paragraph 12 of your
`
`declaration, you discuss the weeks of May 29 and
`
`June 5, 2000, some research you did in connection
`
`with the physiology of the heart valve and so
`
`forth and you say you spent approximately 20
`
`hours conducting background research. Do you see
`
`that?
`
` A. Yes, I do.
`
` Q. What do you base the dates referred to
`
`therein?
`
` A. You are saying May 29, June 5, those
`
`weeks?
`
` Q. Yes, sir.
`
` A. It would have been, once I received
`
`authorization, then I would have started
`
`collecting background information about the
`
`patent application for the disclosure and it
`
`would just be in that time period sometime. I
`
`can't say specifically this was, but it was
`
`approximately in that time period.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 26
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 27
`
`1
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` Q. You say you would have done this. What
`
`if you had other work -- let me rephrase it. I
`
`know in your declaration you talk about taking
`
`things in turn, it also having to move out of
`
`turn sometimes and so forth. How do you know
`
`that you did anything on the Norred work in those
`
`two weeks?
`
` A. Well, like I said, it could be a week
`
`different, or in that time frame. But I do
`
`recall getting or looking at a physiology book, I
`
`still have on my shelf, having to do with the
`
`heart and hemodynamics and electrophysiology of
`
`the heart. Part of that was then be able to
`
`provide instruction to the draftsperson to get
`
`drawings made. Because even though you take a
`
`patent application and basically in chronological
`
`order as they come in, unless they are taken out
`
`of line, you have to get it prepared to start to
`
`write it, and the preparation is typically
`
`meeting with a draftsman, providing instructions
`
`to them as to what drawings you want done. And
`
`then once the drawings come in, then you are
`
`prepared to start writing the application.
`
` Q. And you referred to 20 hours. What do
`
`you base that on?
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`Medtronic, Medtronic Vascular,
`and Medtronic CoreValve
`Exhibit 1025 - Page 27
`
`
`
`James Joseph Kernell
`
`Kansas City, MO
`
`October 9, 2014
`
`Page 28
`
`1
`
`2
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` A. It is approximately the amount of time
`
`it would have taken to get background
`
`information, something like this.
`
` Q. You didn't refer to any specific
`
`document? That's just an estimate?
`
` A. That's an estimate.
`
` Q. Sitting here today?
`
` A. Yes.
`
` Q. Now, let's turn to paragraph 13 of your
`
`declaration where you state that during the weeks
`
`of June 12 and June 19, 2000 you began preparing
`
`the Norred application. Do you see that?
`
` A. Yes.
`
` Q. What do you
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