CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`
`1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`DAICEL CORPORATION
`Petitioner,
`v.
`CELANESE INTERNATIONAL CORPORATION
`Patent Owner
`____________________
`Case IPR2015-00170
`Case IPR2015-00171
`Case IPR2015-00173
`____________________
`Washington, D.C.
`Wednesday, October 28, 2015
`CONFIDENTIAL
`DESIGNATED PROTECTIVE ORDER MATERIAL
`
` VIDEOTAPED CROSS EXAMINATION OF HIROYUKI MIURA
`Volume 1
`
`202-220-4158
`
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:24)(cid:16)(cid:19)(cid:19)(cid:20)(cid:26)1
`Henderson Legal Services, Inc.
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`www.hendersonlegalservices.com
`REDACTED VERSION
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`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`2 (Pages 2 to 5)
`4
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`2
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`12
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` C O N T E N T S
`3 THE WITNESS:
`4 HIROYUKI MIURA
`5 By Mr. Krieger.............................. 6
`
`678
`
` E X H I B I T S
`
`9
`10 EXHIBIT
`11
`12 Exhibit P Japanese Patent 3581725............ 37
`13
`14 Exhibit Q Japanese Patent 3306227............ 40
`15
`16 Exhibit R Japanese Patent 3244385............ 40
`17
`18
`19
`20 - - -
`21
`22
`
`1 Videotaped Cross Examination of HIROYUKI
`2 MIURA, a witness herein, called for examination by
`3 counsel for the Patent Owner in the above-entitled
`4 matter, pursuant to notice, the witness being duly
`5 sworn by KAREN YOUNG, a Notary Public in and for the
`6 District of Columbia, taken at the offices of Foley &
`7 Lardner, LLP, 3000 K Street, Northwest, Washington,
`8 D.C., at 8:35 a.m. on Wednesday, October 28, 2015, and
`9 the proceedings being taken down by stenotype by KAREN
`10
`YOUNG, and transcribed under her direction.
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`APPEARANCES:
` On Behalf of the Petitioners:
` MICHAEL R. HOUSTON, PH.D., ESQUIRE
` Foley & Lardner, LLP
` 321 North Clark Street, Suite 2800
` Chicago, Illinois
` mhouston@foley.com
` (312) 832-4378
`
` JEFFREY R. LOMPREY, PH.D., ESQUIRE
` Foley & Lardner, LLP
` 150 East Gilman Street
` Madison, Wisconsin 53703-1481
` jlomprey@foley.com
` (608) 258-4288
`
` On Behalf of the Patent Owner:
`
` JUSTIN L. KRIEGER, ESQUIRE
` JOSHUA B. POND, ESQUIRE
` NICKI M. KENNEDY, ESQUIRE
` Kilpatrick Townsend & Stockton LLP
` 607 14th Street, Northwest, Suite 900
` Washington, D.C. 20005
` jpond@kilpatricktownsend.com
` nkennedy@kilpatricktownsend.com
` jkrieger@kilpatricktownsend.com
` (202) 481-9922
`
` ALSO PRESENT:
`
` Jasmin Rice, Videographer
` Elica Funatsu, Official Interpreter
` Sangmi McHale, Check Interpreter
` Kazuya Katoaka, Daicel
`
`1
`2
`3
`4
`5
`6
`7
`8
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`10
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`12
`13
`14
`15
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`19
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`21
`22
`
`3
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`5
`
`1 P R O C E E D I N G S
`2 (The examination was conducted entirely
`3 through the interpreters.)
`4 THE VIDEOGRAPHER: Here begins Videotape
`5 Number 1 in the cross examination of Hiroyuki Miura,
`6 taken in the matter of Daicel Corporation, petitioner,
`7 versus Celanese International Corporation, patent
`8 owner, case number IPR2015-00170, dash 00171, dash
`9 00173, in patent numbers 8,076,507.
`10 Today's date is October 28, 2015, and the
`11 time is approximately 8:35 a.m. My name is Jasmin
`12 Rice, here on behalf of Henderson Legal Services. I'm
`13 the legal videographer. The court reporter is Karen
`14 Young, also on behalf of Henderson Legal Services.
`15 The lead interpreter of this case is Elica Funatsu,
`16 and the check interpreter is Sangmi McHale. Will
`17 counsel please introduce themselves for the record?
`18 MR. KRIEGER: Justin Krieger for patent
`19 owner Celanese International Corporation, and with me
`20 are Nicoletta Kennedy and Joshua Pond.
`21 MR. HOUSTON: Michael Houston of Foley &
`22 Lardner on behalf of petitioner, Daicel Corporation,
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`202-220-4158
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`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`3 (Pages 6 to 9)
`8
`1 them, I'm going to understand that you understand the
`2 question presented.
`3 A. Yes.
`4 Q. So if there at any time is a question that
`5 you feel is unclear, I ask that you let me know so
`6 that I can make sure that you understand the question.
`7 A. Yes, understood.
`8 Q. Is there anything today that impacts your
`9 ability to understand and answer questions today?
`10 A. That impacts my ability?
`11 Q. Yes, that impacts your ability to understand
`12 and answer questions truthfully today.
`13 A. Understood. Then I believe no, not in
`14 particular.
`15 Q. Your counsel may object from time to time
`16 throughout the deposition. Unless your counsel
`17 instructs you not to answer, you may nevertheless
`18 proceed and answer the question that has been
`19 presented. Do you understand?
`20 A. Yes.
`21 Q. You are here today for an IPR proceeding.
`22 You understand?
`
`1 and with me is my colleague, Jeffrey Lomprey, as well
`2 as in-house counsel for Daicel, Mr. Kazuya Katoaka.
`3 THE VIDEOGRAPHER: Will the court reporter
`4 please swear in the interpreters, who will then swear
`5 in the witness.
`6 (The interpreters were duly sworn.)
`7 Whereupon,
`8 HIROYUKI MIURA,
`9 called for examination by counsel for
`10
` the Patent Owner and having been duly
`11
` sworn by the Notary Public, was examined and
`12
` testified as follows:
`13
` - - -
`14
` EXAMINATION BY COUNSEL FOR THE PATENT OWNER
`15
` BY MR. KRIEGER:
`16
` Q. Good morning, Mr. Miura.
`17
` A. Good morning.
`18
` Q. Could you please state your name?
`19
` A. I am Hiroyuki Miura.
`20
` Q. Have you ever been deposed before?
`21
` A. No.
`22
` Q. Have you ever participated in a testimonial
`
`7
`
`9
`
`1 proceeding before?
`2 A. What are some specific examples of a
`3 testimonial proceeding?
`4 Q. A proceeding before a judicial body where
`5 you have spoken to the judicial body.
`6 A. Are you asking about testimony at trial?
`7 Q. I'm asking about testimony at trial or any
`8 other judicial proceeding, including administrative
`9 proceedings, patent office proceedings or other
`10 judicial proceedings.
`11 A. I have never testified before.
`12 Q. Have you ever otherwise spoken before any
`13 such judicial bodies?
`14 A. In other cases?
`15 Q. Yes.
`16 A. I'm not sure what the other cases would
`17 refer to.
`18 Q. Any other cases.
`19 A. Well, to the extent of -- to the extent I
`20 can recall, I don't believe so.
`21 Q. Okay, thank you. So I'm going to ask you
`22 questions today, and to the extent that you answer
`
`1
` A. Yes.
`2
` Q. IPR proceedings are generally public
`3
`proceedings, and the information that is presented in
`4
`IPR proceedings is generally accessible to the public.
`5
`As a result, we are seeking primarily nonconfidential
`6
`information. Nevertheless, it may be possible that
`7
`you feel that some answers to some of the questions
`8
`that are presented to you require a disclosure of
`9
`confidential information. In such cases, I ask that
`10
`you let us know in advance that your answer requires
`11
`the disclosure of confidential information. Do you
`12
`understand?
`13
` A. Yes.
`14
` Q. I am handing you what has been previously
`15 marked as Exhibit 1006, and which purports to be your
`16
`curriculum vitae. Do you recognize this document?
`17
` A. Yes.
`18
` Q. Mr. Miura, can you read English?
`19
` A. If I have a dictionary and if I spend enough
`20
`time, then I would be able to roughly understand what
`21
`is contained in a document. However, in order to
`22
`understand it precisely, I would need the help of a
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`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`4 (Pages 10 to 13)
`12
`
`10
`
`1 person who is more skilled in English.
`2 Q. Understood. Where did you go to school?
`3 A. For college, I went to --
`4 THE CHECK INTERPRETER: Institute of
`5 Technology.
`6 THE INTERPRETER: Nuroran Institute of
`7 Technology.
`8 BY MR. KRIEGER:
`9 Q. And it indicates here that you have a
`10 master's of science in engineering, correct?
`11 A. Yes.
`12 Q. Was there a particular focus in your
`13 engineering studies?
`14 A. You're asking about the specific field in
`15 engineering?
`16 Q. Yes, did you focus on mechanical
`17 engineering, electrical engineering, chemical
`18 engineering or some other field of engineering?
`19 A. Science of engineering.
`20 Q. Scientific engineering?
`21 THE CHECK INTERPRETER: Chemical
`22 engineering.
`
`1
`consider yourself a chemist?
`2
` A. In terms of definition, when you use the
`3 word "chemist," does that mean a person without
`4
`knowledge of chemical engineering?
`5
` Q. No, I think it's fair to say that a chemist
`6 may have some knowledge of chemical engineering, and a
`7
`chemical engineer may have some knowledge of
`8
`chemistry. Nevertheless, I think it focuses on a
`9
`certain degree in terms of one's background in terms
`10
`of one would consider themselves a chemical engineer
`11
`or a chemist.
`12
` A. Well, I did obtain my degree in chemistry.
`13
`I obtained my master's degree in chemistry. However,
`14 my subsequent engagement in chemical engineering is
`15
`longer, and so I think I would consider myself a
`16
`chemical engineer.
`17
` Q. Thank you. After graduating, you joined
`18 Daicel Corporation, correct?
`19
` A. Yes.
`20
` Q. And how long have you worked with Daicel
`21
`Corporation?
`22
` A. Thirty-two years.
`
`11
`
`13
`
`1
` THE INTERPRETER: That was the first
`2
`question that I asked, which the witness said no.
`3
`It's chemical, but industrial chemical engineering.
`4
` BY MR. KRIEGER:
`5
` Q. I understand. Would you consider yourself a
`6
`chemist?
`7
` A. Well, in college, in higher learning
`8
`institutions as well as after joining the company, I
`9
`did continue on in my research in chemistry. After
`10
`that, I became more involved in chemical engineering,
`11
`so I would consider myself to be experienced in both.
`12
` Q. So my question wasn't whether you're
`13
`experienced in both. My question was whether you
`14
`consider yourself a chemist.
`15
` A. Well, with knowledge in chemistry, one
`16
`engages in the work of chemical engineering, so I
`17 would still say it's both.
`18
` Q. So I have a undergraduate degree in
`19
`chemistry. I have experience working with chemical
`20
`engineering. Nevertheless, I would never consider
`21 myself a chemical engineer. Are you saying here today
`22
`-- in fact, are you testifying today that you would
`
`1
` Q. How long have you worked in the acetic acid
`2
`industry?
`3
` A. During that time, my involvement in acetic
`4
`acid would be approximately 25 years. This may not be
`5
`accurate, but I think somewhere around 25 years.
`6
` Q. Your C.V. indicates that you found important
`7
`technology, quote, AD removal technology, unquote.
`8 What does AD refer to?
`9
` A. Acetaldehyde.
`10
` Q. The 25 years that you worked in the acetic
`11
`acid industry, was most of that time spent in
`12
`research?
`13
` A. Yes.
`14
` Q. Were there any other aspects of work that
`15
`you performed in the acetic acid industry?
`16
` A. As part of my research, I also was involved
`17
`in development of manufacturing technology, production
`18
`technology.
`19
` Q. Were you involved in marketing?
`20
` A. No.
`21
` Q. Were you involved in sales?
`22
` A. No.
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`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`5 (Pages 14 to 17)
`16
`
`14
`
`1
` Q. Were you involved in managing other
`2
`individuals?
`3
` A. By managing other individuals, do you mean,
`4
`for example, management of labor of, for example, my
`5
`subordinates?
`6
` Q. Yes.
`7
` A. Yes.
`8
` Q. Do people report to you currently?
`9
` A. Yes.
`10
` Q. How many?
`11
` A. If we're talking about those in the same
`12
`team, that would be four.
`13
` Q. You mentioned the same team. What do you
`14 mean by that?
`15
` A. The team engaged in developing technology of
`16
`chemical products, including acetic acid products.
`17
` Q. Your C.V. also mentions that you continue to
`18 work on the improvement of technology at the bench and
`19
`at pilot plant.
`20
` A. Yes.
`21
` Q. What do those terms mean?
`22
` A. Well, from testing done in the laboratory,
`
`1
`degree of impurities, as well as whether those can be
`2
`separated. Also, I think you would also include
`3
`stability in reaction results, and when separating a
`4
`product, what kind of energy would be required as well
`5
`as what kind of equipment would be required, those
`6
`need to be checked.
`7
` Q. So stability of the catalyst may differ
`8
`between bench scale, pilot plant and
`9
`commercialization, correct?
`10
` A. Well, the operation time is different.
`11 While at the pilot plant, examination continues on to
`12
`the point of removal of a product, and the organic
`13
`compounds that are contained in a reaction fluid will
`14
`be collected and then recycled back into a reaction
`15
`liquid. There are times in which impurities may
`16
`accumulate, and that may have an impact on a catalyst,
`17
`and that is why checking needs to be done in several
`18
`stages.
`19
` Q. Is it your experience that stability of the
`20
`catalyst tends to become more of a problem as you
`21
`increase scale?
`22
` A. Some cases are like that, whereas there are
`
`15
`
`17
`
`1
`there is what is called examination of scale-up, which
`2
`takes what is done at the lab to production technology
`3
`that will be used in production plants. So what comes
`4
`after the laboratory would be the bench scale testing.
`5 And then the next stage is the pilot plant.
`6
` Q. And then the next stage would be
`7
`commercialization?
`8
` A. Yes.
`9
` Q. Why is it that research starts small at the
`10
`bench scale and then increases in scale to pilot plant
`11
`and then increases in scale to commercialization?
`12
` MR. HOUSTON: Objection, beyond the scope.
`13
` A. Well, in order to create stable technology
`14
`for a manufacturing plant in industrialization, there
`15
`are various challenges that need to be overcome, and
`16
`simply because one can achieve a result in a flask
`17
`does not necessarily mean that that would be
`18
`successful at the production plant level, and that is
`19 why there are multiple stages.
`20
` Q. What sort of challenges may be faced in
`21
`scaling up?
`22
` A. For example, stability of a catalyst, the
`
`1 some that are not.
`2 Q. You mentioned degree of impurities. Is it
`3 your experience that the degree of impurities tends to
`4 increase as you scale up a process?
`5 A. In Daicel's case, when it comes to bench
`6 scale testing, in many cases that would only be done
`7 in the reaction system, and the reaction liquid is
`8 prepared separately. It is distilled and --
`9 THE CHECK INTERPRETER: Refined.
`10
` THE INTERPRETER: -- produced -- refined
`11
`separately. Then that would be collected and in some
`12
`cases used as raw material of a reactor at the bench
`13
`scale. With that method, it is not a continuous
`14
`operation. Also, the time is shorter, so that may not
`15
`be an accurate evaluation. And so one would need to
`16
`carry out recirculation operations for a longer
`17
`duration of time at the pilot plant where there is
`18
`both the reaction liquid as well as the production
`19
`system. Therefore, I believe evaluation at the pilot
`20
`plant is more accurate.
`21
` Q. More accurate than what?
`22
` A. More accurate than bench test results.
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`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`6 (Pages 18 to 21)
`20
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` Q. My question related to the degree of
`impurities, and so specifically I was asking in your
`experience, does the degree of impurities tend to
`increase as you scale up a process?
` A. Well, in the case in which through
`recycling, impurities increase through consecutive
`reaction, then when at a pilot plant, the duration of
`time is longer, so one would be able to see that
`result, so then the answer would be yes.
` Q. Does the degree of impurities continue to
`increase in your experience when you scale up from
`pilot plant to commercialization?
` A. No, I believe it remained pretty much the
`same.
` Q. You mentioned impurities originally. What
`do you mean by impurities?
` A. In relation to a product that is the
`objective, I'm referring to compounds that are created
`through a by reaction -- a side reaction. Sorry.
` Q. Can you give me some examples?
` A. In the case of synthesizing acetic acid, an
`impurity would be acetaldehyde, which would be created
`
`1 Q. But not hydrogen.
`2 A. Well, in the case of synthesizing
`3 acetaldehyde that we talked about earlier, hydrogen
`4 can have a negative effect, but in the case of a
`5 carbonylation reaction of acetaldehyde, it can work
`6 positively.
`7 Q. Carbonylation reaction of acetaldehyde?
`8 THE INTERPRETER: Interpreter may have
`9 misspoken. I believe the witness said acetic acid.
`10
` BY MR. KRIEGER:
`11
` Q. Could you ask him to clarify please on that?
`12
` A. Carbonylation reaction to synthesize
`13
`acetaldehyde. Excuse me. To synthesize acetic acid.
`14
` Q. Thank you. Are there any other impurities?
`15
` A. Methane is created, methane.
`16
` Q. Any others?
`17
` A. Methyl acetate is also created.
`18
` Q. Would you consider methyl acetate an
`19
`impurity?
`20
` A. No.
`21
` Q. Are there any other impurities?
`22
` A. There are iodides.
`
`19
`
`21
`
`1
`through a side reaction.
`2
` Q. Are there any others?
`3
` A. Yes.
`4
` Q. Could you please tell me?
`5
` A. From acetaldehyde through consecutive
`6
`reaction, there is what is called crotonaldehyde that
`7
`is created.
`8
` Q. Are there any others?
`9
` A. Other than acetic acid, there is proprionic
`10
`acid that is created.
`11
` Q. Any others?
`12
` A. The raw material CO may react with water in
`13
`a reactor, and that reaction will produce water as
`14 well as carbon dioxide.
`15
` (The check interpreter spoke in Japanese.)
`16
` THE INTERPRETER: Sorry. The raw material
`17
`CO may react with water in a reactor, and that
`18
`reaction will produce hydrogen as well as carbon
`19
`dioxide.
`20
` Q. So you would consider hydrogen and carbon
`21
`dioxide as impurities?
`22
` A. Carbon dioxide would be an impurity.
`
`1 Q. Such as?
`2 A. Iodides with carbon number of 6.
`3 THE CHECK INTERPRETER: Hexyl.
`4 THE INTERPRETER: Hexyl iodides.
`5 Q. Is there any acetic anhydride formed?
`6 A. A very small amount.
`7 Q. And that's because the carbonylation
`8 processes that you are familiar with include water in
`9 the reactor, correct?
`10 MR. HOUSTON: Objection, foundation.
`11 A. When producing acetic acid anhydrides --
`12 MR. KRIEGER: Acetic anhydrides.
`13 THE INTERPRETER: Acetic anhydrides, thank
`14 you. That is done in a waterless system, and if there
`15 is a lot of water, then it would be difficult to
`16 produce acetic anhydride.
`17 Q. Very good, thank you. Are there any other
`18 impurities?
`19 A. For example, there would be hydrocarbons,
`20 those with a greater carbon count than methane.
`21 Q. Are there any others?
`22 A. In terms of aldehydes, I have already listed
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`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`7 (Pages 22 to 25)
`24
`1 MR. HOUSTON: Hold on. You're asking him to
`2 answer even though he said it's going to involve
`3 confidential information; is that correct?
`4 MR. KRIEGER: That's correct.
`5 MR. HOUSTON: So we're going to have to
`6 invoke the default protective order at a minimum, and
`7 if the witness feels that this involves highly
`8 sensitive business information of Daicel, then we may
`9 have to discuss the attorneys' eyes only provision
`10 that the parties have been discussing through e-mail
`11 communications.
`12 MR. KRIEGER: I would be willing to agree
`13 with respect to the default protective order. As
`14 we've obviously discussed, we would not agree with
`15 anything beyond the default protective order. So with
`16 that being said, I would like to ask the witness to
`17 answer.
`18 MR. HOUSTON: Well, you want to translate?
`19 And I would say that if it's basic confidential
`20 information of Daicel, if the witness feels that
`21 that's what this answer calls for, he may answer if he
`22 wants. If it calls for highly sensitive business
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`acetaldehyde as well as crotonaldehyde, but other than
`those, there are butyl aldehydes, 2-ethyl
`crotonaldehydes. Those would be some other aldehydes.
` Q. Are there any other impurities?
` A. Though it's a small amount, there is
`carbonylic acid that is created, which have a higher
`carbon count than acetic acid, proprionic acid.
` THE CHECK INTERPRETER: In addition to.
` THE INTERPRETER: Other than the acetic acid
`and proprionic acid that I have already listed, there
`is carbonylic acid, which has a higher carbon count.
` Q. Any others?
` A. Other than methanol, there are other
`alcohols that have a high carbon count.
` Q. Are there any others?
` A. There are carbonic acid esters, which is an
`esterization of carbonylic acid with alcohol.
` Q. Okay. The subject matter of this proceeding
`involves dimethyl ether, DME. You're familiar with
`that, correct?
` A. Yes.
` Q. Would you consider DME an impurity?
`
`23
`
`25
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`1
` A. No, I don't think so because it is raw
`2 material for acetic acid.
`3
` Q. For the same reason that you would not
`4
`consider methanol a impurity, correct?
`5
` A. Right.
`6
` Q. Your C.V. also mentions that you are working
`7
`on feasibility studies for a new overseas acetic acid
`8
`plant. Could you describe that please?
`9
` A. Okay. Well, one would look into the cost of
`10
`raw material procured at that location where the
`11
`overseas plant will be, as well as the cost necessary
`12
`for production, as well as the sales price of acetic
`13
`acid, and after making a comprehensive evaluation to
`14
`see if there would be profit yielded, and also examine
`15
`if there is -- if there's a meaning to carrying out
`16
`the plan.
`17
` Q. What do you mean by overseas plant?
`18
` A. Manufacturing plants at locations outside of
`19
`Japan.
`20
` Q. Such as?
`21
` A. I believe that will be confidential.
`22
` Q. You may answer.
`
`1
`information of Daicel that he would not want revealed
`2
`to competitors, then I would instruct him not to
`3
`answer. I would further pose an objection as to
`4
`relevance.
`5
` BY MR. KRIEGER:
`6
` Q. And I would also object to the instruction
`7
`given to the witness with respect that is inconsistent
`8 with PTAB, P-T-A-B, rules, and inconsistent with the
`9
`default protective order, but with that said, can you
`10
`answer the question?
`11
` A. Well, it's difficult for me to make that
`12
`determination, and so if possible, I would like to
`13
`avoid answering.
`14
` Q. So are you -- are you refusing to answer on
`15
`advice of counsel?
`16
` A. Well, there's that too, but in this case,
`17
`this concerns a confidential matter to Daicel, and so
`18
`I'd prefer not to answer.
`19
` Q. I understand that you would prefer, but just
`20
`so I am clear, I need to understand the reason for
`21
`your refusal to answer, because the parties are in
`22
`agreement -- Mike, correct me if I'm wrong -- that at
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`REDACTED VERSION
`000007
`
`

`
`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`8 (Pages 26 to 29)
`28
`1 THE INTERPRETER: And the interpreter would
`2 like to make a correction. The transcript says plant,
`3 but in that testimony, the witness said overseas
`4 plans, overseas plans for locations outside of Japan.
`5 MR. KRIEGER: Thank you.
`6 MR. HOUSTON: And I will repeat my
`7 instruction to the witness to not answer the question
`8 if he feels the answer would involve highly sensitive
`9 confidential business information of Daicel.
`10 THE CHECK INTERPRETER: Your question was --
`11 had to do with a plant, so he's not asking the witness
`12 to answer about the plans, but the plant. Is that
`13 correct?
`14 MR. KRIEGER: That was my understanding
`15 based on what was in his -- his C.V., which mentions
`16 plant.
`17 THE INTERPRETER: So may I hear the
`18 question?
`19 BY MR. KRIEGER:
`20 Q. What does he mean by overseas plant.
`21 MR. HOUSTON: And I'd like to clarify what
`22 the interpreter -- I understand he may be asking one
`
`26
`1 a minimum, the default protective order would be in
`2 place, so to the extent that you disclose confidential
`3 information here today, the default protective order
`4 would preclude the dissemination of any information
`5 that is ultimately deemed by the patent office to
`6 constitute confidential information from being
`7 disclosed beyond the attorneys who are handling this
`8 case, including in-house attorneys and outside
`9 counsel.
`10 MR. HOUSTON: For a complete list, I need to
`11 add that the protective order also provides for
`12 disclosure of confidential information to retained
`13 experts regardless of what other work those experts
`14 may be doing for a given party, and I will repeat my
`15 instruction to the witness not to answer the question
`16 if he feels that it involves highly sensitive
`17 confidential business information of Daicel. We
`18 attempted to work out this issue ahead of time, and I
`19 was told on two occasions by counsel that they would
`20 not seek such confidential information from our
`21 witness, and so that is how we've ended up where we
`22 are right now.
`
`27
`
`29
`
`1 MR. KRIEGER: And to clarify the record,
`2 Mike, I have to make sure that the record is clear
`3 that we sent you an e-mail yesterday suggesting that
`4 we proceed with a call with the board to address this
`5 issue in the event that confidential information would
`6 come up in this deposition, so I object to your
`7 previous characterization.
`8 MR. HOUSTON: And the board responded that
`9 the parties should try to work out this particular
`10 issue, which I'm happy to do on a break or off the
`11 record or on the record for that matter if you'd like.
`12 BY MR. KRIEGER:
`13 Q. Understood, and I think that's a good idea,
`14 to discuss this over break. However, based on the
`15 current protective order, the question still remains
`16 pending to you, Mr. Miura. Will you answer the
`17 question today or not?
`18 A. What's the pending question?
`19 Q. I asked you, "What do you mean by overseas
`20 plant?" You responded, "Manufacturing plants at
`21 locations outside of Japan," and I asked, "Such as
`22 what?"
`
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`11
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`question. I thought what you were trying to clarify
`for the record was the witness' answer used a word
`other than "plant."
` THE INTERPRETER: Correct.
` MR. HOUSTON: So there just may be some
`disconnect between the question and the answer. Is
`that what you're saying?
` THE INTERPRETER: Correct, yes.
` MR. HOUSTON: Thank you.
` A. The word "plant" used there in the C.V. does
`not refer to a specific plant that is in existence.
`The images -- facility.
` Q. I understand, but as the term is used in
`your C.V., Mr. Miura, I'm just inquiring what you mean
`by feasibility studies for a new overseas acetic acid
`plant. Can you clarify what you mean by overseas
`acetic acid plant?
` A. Well, what is meant there is examination of
`economic feasibility to a plan associated with
`building an acetic acid plant, a new acetic acid plant
`overseas as part of Daicel's business.
` Q. And what do you mean by overseas?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`REDACTED VERSION
`000008
`
`

`
`CASE IPR2015-00170; 2015-00171; 2015-173
`Miura, Hiroyuki - Vol. I CONFIDENTIAL
`October 28, 2015
`9 (Pages 30 to 33)
`32
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`
`I believe there was a patent that related to the
`temperature of a reactor to remove acetaldehyde.
` (The check interpreter spoke in Japanese.)
` A. I don't recall the number of the patent, but
`I believe there was a patent that related to the
`temperature of an extractor to remove acetaldehyde.
` Q. You're referring to JP2000-72712 on which
`you are a named inventor; is that correct?
` A. I don't have a precise recollection of the
`number.
` Q. Okay, that's fine. What else did you
`review?
` A. I saw a patent that relates to the
`concentration of compounds in a reactor as part of a
`carbonylation reaction and in part side reaction. I
`also saw a patent that relates to HI concentration
`inside a distillation column.
` Q. Do you have copies of these patents with
`you?
` A. Yes.
` Q. Okay. Could you please look in your
`documents that you have with you and provide me the
`
`33
`
`patent numbers for those patents?
` A. Right now?
` Q. Yes, please.
` A. May I leave this room?
` Q. They're not in this room?
` A. No, it's not.
` Q. Okay, we will do that during break. Thank
`you. What else did you review?
` A. Analysis tables, those are tables on which
`the table in my declaration is based on.
` Q. Are these analysis tables different than the
`information that is provided in your declaration?
` A. It contains some different information.
` Q. Such as what?
` A. The tables contain analysis values that I
`did not include in the process that I indicated in my
`table.
` Q. Do you have those analysis tables in the
`other room as well?
` A. Yes.
` Q. Are there any other documents you reviewed
`in preparation for your deposition?
`
`30
`1 A. Overseas here means a country outside of
`2 Japan.
`3 Q. I understand. Can you give me the location
`4 of what you mean by overseas? And if you refuse to
`5 answer, just say so please.
`6 MR. HOUSTON: And I repeat my instruction to
`7 the witness to not answer if he feels that such an
`8 answer would reveal highly sensitive confidential
`9 business information of Daicel.
`10 A. I prefer not to answer it today because this
`11 involves Daicel's business plan, our strategy.
`12 Q. Thank you. Daicel has a plant in Japan
`13 currently, correct?
`14 A. There is a plant run by Daicel.
`15 Q. In Japan.
`16 A. Yes.
`17 Q. And Daicel sells acetic acid in Japan,
`18 correct?
`19 A. Yes.
`20 Q. Does Daicel sell acetic acid in the United
`21 States?
`22 A. To the extent I recall, I do not believe we
`31
`
`1 sell in the United States.
`2 Q. What did you review in preparing for your
`3 deposition today?
`4 A. I looked through my declaration.
`5 Q. What else?
`6 A. I saw specifications of relevant patents.
`7 Q. Such as?
`8 A. The '095.
`9 Q. And -- Mr. Miura, when I ask a question
`10 about what you've reviewed, if you could provide me
`11 everyth