CONFIDENTIAL
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MAKO SURGICAL CORP., )
` )
` Petitioner, )
` )
` vs. )Case No.
` )IPR2015-00630
`BLUE BELT TECHNOLOGIES, INC.,)
` )
` Patent Owner. )
`
` ** C O N F I D E N T I A L **
`
` Deposition of DR. BRANISLAV JARAMAZ
` Friday, February 5, 2016
`
` The deposition of DR. BRANISLAV JARAMAZ, called
`as a witness by the Petitioner, pursuant to notice and
`the Rules of the United States Patent and Trademark
`Office pertaining to the taking of depositions, taken
`before me, the undersigned, Lance E. Hannaford, Notary
`Public in and for the Commonwealth of Pennsylvania, at
`the offices of Ronald Law Group, 2740 Smallman Street,
`Suite 2000, Pittsburgh, Pennsylvania 15222,
`commencing at 9:00 o'clock a.m., the day and date
`above set forth.
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`212-279-9424
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`Mako Exhibit 1012 Page 1
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` REDACTED VERSION
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MAKO SURGICAL CORP., )
` )
` Petitioner, )
` )
` vs. )Case No.
` )IPR2015-00630
`BLUE BELT TECHNOLOGIES, INC.,)
` )
` Patent Owner. )
`
` ** C O N F I D E N T I A L **
`
` Deposition of DR. BRANISLAV JARAMAZ
` Friday, February 5, 2016
`
` The deposition of DR. BRANISLAV JARAMAZ, called
`as a witness by the Petitioner, pursuant to notice and
`the Rules of the United States Patent and Trademark
`Office pertaining to the taking of depositions, taken
`before me, the undersigned, Lance E. Hannaford, Notary
`Public in and for the Commonwealth of Pennsylvania, at
`the offices of Ronald Law Group, 2740 Smallman Street,
`Suite 2000, Pittsburgh, Pennsylvania 15222,
`commencing at 9:00 o'clock a.m., the day and date
`above set forth.
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`212-279-9424
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`Veritext Legal Solutions
`www.veritext.com
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`212-490-3430
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`Mako Exhibit 1012 Page 1
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` REDACTED VERSION
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`CONFIDENTIAL
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`Page 2
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`APPEARANCES:
` On behalf of the Petitioner:
` Morrison & Foerster:
` Wesley E. Overson, Esquire
` 425 Market Street
` San Francisco, California 94105
` On behalf of the Patent Owner:
` Gibson Dunn & Crutcher:
` Brian M. Buroker, Esquire
` 1050 Connecticut Avenue, NW, Suite 200
` Washington, D.C. 20036
` - - -
` I-N-D-E-X
`EXAMINATION BY: PAGE:
`Mr. Overson 3, 67
`Mr. Buroker 56
`EXHIBIT: MARKED:
`Exhibit 1018 Web page from Carnegie Mellon
` University for Branislav Jaramaz 17
`Exhibit 1019 "HipNav: Pre-operative Planning and
` Intra-Operative Navigational Guidance
` for Acetabular Implant Placement in
` Total Hip Replacement Surgery" 18
`Exhibit 1020 CAOS Symposium Final Program,
` November 30 - December 2, 1995 19
`Exhibit 1021 "Development and Validation of a
` Navigational Guidance System for
` Acetabular Implant Placement" 21
`Exhibit 2009 2nd CAOS Symposium Final Program,
` November 7-9, 1996 59
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` DR. BRANISLAV JARAMAZ
`called as a witness by the Petitioner, having been
`first duly sworn, as hereinafter certified, was
`deposed and said as follows:
` EXAMINATION
`BY MR. OVERSON:
` Q Good morning. Could you state your full
`name?
` A My name is Branislav Jaramaz.
` Q Mr. Jaramaz, my name is Wesley Overson. I
`represent Mako. And they have been in a lawsuit and
`now an inter partes review proceedings with your
`company Blue Belt.
` So I am here to ask you questions
`specifically for the inter partes review proceeding.
`Have you ever been in a deposition before?
` A No.
` Q You understand the court reporter will take
`down everything we say today?
` A Uh-huh.
` Q Is that a yes?
` A I do.
` MR. BUROKER: I will go ahead and say this.
` Try to avoid uh-huh and uh-uh. They don't know
` how to write those down. Say no or yes or
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` whatever your answer is going to be.
` Q And you recall you provided a declaration
`for this matter?
` A I did.
` Q You were one of the founders of Blue Belt?
` A Yes.
` Q Is Blue Belt now owned by Smith and Nephew?
` A Yes.
` Q And did Smith and Nephew pay 275 million
`dollars to acquire Blue Belt?
` MR. BUROKER: Objection. Scope. You can
` answer.
` A That's what I was told.
` Q And were you a shareholder at the time of
`the purchase?
` A Yes.
` Q Do you know has all of the money been
`distributed to the shareholders?
` MR. BUROKER: Objection. Outside of the
` scope of the declaration. I will allow a little
` leeway here. Go ahead.
` A As far as I know, there is some portion
`held in the escrow.
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`Mako Exhibit 1012 Page 4
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` Q And can you tell me then have you been paid
`out your percentage as a result of the purchase?
` A Yes.
` Q And do you know what the percentage of the
`escrow amount is?
` MR. BUROKER: Objection. Scope.
` A No.
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`Mako Exhibit 1012 Page 5
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` Q And is the release of money from the escrow
`tied in any way to the result of the patent litigation
`with Mako?
` MR. BUROKER: Objection. Scope.
` A I don't know. Because the company was
`owned by Healthpoint Capital. So I don't have really
`direct information or direct influence on that.
` Q So as far as you know if the patents are
`declared invalid as a part of this IPR proceeding, IPR
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`Mako Exhibit 1012 Page 6
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`Page 7
`inter partes review proceeding, you would get paid the
`same as if they were held valid?
` MR. BUROKER: Objection. Scope.
` A Yes. I don't know the specifics. I have
`no idea.
` Q It could be that if the litigation and the
`IPR process doesn't go well and the patents are held
`invalid you get less money, that could be the case?
` MR. BUROKER: Objection. Scope.
` A I'm not sure. Maybe.
` Q Can you tell me who is paying for the legal
`fees for the IPR process?
` MR. BUROKER: Objection. Scope.
` A I don't know.
` Q Are you still the chief technology officer
`of Blue Belt?
` A No. Because Blue Belt was sold.
` Q So Blue Belt doesn't exist any more?
` A No.
` Q That was no?
` A Yes. No.
` MR. BUROKER: You will have to speak up so
` he can make sure the record is clear.
` Q Let me ask it another way. Does Blue Belt
`still exist?
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`Mako Exhibit 1012 Page 7
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`Page 8
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` MR. BUROKER: Objection. Scope.
` A No.
` Q Do you have a role at Smith and Nephew now?
` A Yes. I do.
` Q What is that role?
` A I am senior director of research and
`development at Blue Belt Pittsburgh, Blue Belt
`Robotics. I don't know actually what the official
`name is.
` Q Have you ever heard of a professor in
`Germany named Tim Luth?
` A Yes.
` Q And where have you heard about him?
` A I think I have seen some of his papers and
`also seen his patent.
` Q Have you ever met him?
` A No.
` Q Have you ever seen him at a conference or
`anything like that?
` MR. BUROKER: Objection to the scope.
` A No.
` Q What about Professor Robert Howe, do you
`know him?
` A I think I have met him maybe once or twice.
`We don't have any close relationship. But we may have
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`Page 9
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`met a couple times.
` Q And do you know who Kevin Cleary is?
` A Yes.
` Q And how do you know him?
` A I met Kevin also at several occasions.
`Mostly long time ago like more than 15 years ago.
` Q And have you worked with Mr. Cleary in any
`capacity?
` A No.
` Q Okay. I am going to show you your
`declaration in this matter which has been already
`marked as Exhibit 2002.
` MR. BUROKER: I have a copy.
` Q You are still familiar with this
`declaration?
` A Yes.
` Q Can you tell me how much time you spent on
`this declaration?
` A How much time. Portion of one week.
` Q If you look on page 12, it's the signature
`page. Do you see how the numbering on the signature
`page is 1, 2, as opposed to continuation of the
`earlier pages?
` Do you see that?
` A What do you mean?
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`Page 10
` Q Do you see how the paragraph numbers on
`your signature page are 1, 2 as opposed to a
`continuation of the prior pages which was 17?
` A Yes. I do see that.
` Q Do you know whether when you signed the
`signature page that the full rest of the declaration
`was finished or not?
` A As far as I can tell it's the same
`declaration.
` Q So you believe you saw the entirety of the
`declaration before you signed it on page 12?
` A Correct.
` Q Could I ask you to turn to paragraph 6 of
`your declaration?
` A Okay.
` Q In paragraph 6, you list, I guess it's the
`third sentence into it, your team. I will read the
`sentence. It says, quote, "In addition to
`Dr. DiGioia, Dr. Kanade and me, the team included
`David Simon, now Dr. David Simon, Robert O'Toole, now
`Dr. Robert O'Toole, Michael Blackwell, Frederick
`Morgan, Bruce Colgan and Eric Kischell."
` Is that the team that you were working with
`in the fall of 1994?
` A Yes.
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`Mako Exhibit 1012 Page 10
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`Page 11
` Q Where were you all working together?
` MR. BUROKER: Objection. Form.
` A Most of the work was done at Carnegie
`Mellon, part of the work was also done at Shadyside
`Hospital in Pittsburgh. It was between the two
`places.
` Q If you look on paragraph 7 on the next
`page. It says that, quote, "In late 1994, our team
`began working on developing a system that we would
`call the, quote, 'HipNav system' on a day-to-day
`basis."
` It goes on to say, "We worked
`collaboratively to address many of the problems that
`we perceived in the state of the art."
` Would you agree with me this was a team
`effort at that time?
` A Yes.
` Q What were the problems that you worked
`collaboratively on with your team as described in
`paragraph 7?
` A So we worked on addressing the issues with
`state of the art orthopedic surgery. And how it can
`be assisted and helped with the use of computers and
`surgical navigation.
` Q If you look to paragraph 8 of your
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`Mako Exhibit 1012 Page 11
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`Page 12
`declaration, you wrote, "On February 22nd, 1996 we
`created an initial version of our paper entitled,
`quote, 'HipNav preoperative planning and
`intraoperative navigational guidance for acetabular
`implant placement in total hip replacement surgery.'"
` When you wrote on February 22nd, 1996 we
`created an initial version of our paper, is that the
`first time it was written?
` A This was 20 years ago. So this is based on
`the disclosure that we have made at that time. This
`statement was written probably by Dr. DiGioia. So I
`don't really recall the exact date. But I believe
`that it is true.
` Q You said this statement was written by
`Dr. DiGioia. What do you mean? What statement?
` A Disclosure that was made. I am not saying
`the entire disclosure was made by him. But this
`particular statement about the date was not written by
`me.
` Q In your declaration, you wrote that on
`February 22nd, 1996, we created an initial version of
`our paper. Are you saying you don't really know when
`that happened?
` A I am just saying I was quoting the document
`that exists in the file of Carnegie Mellon University.
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`Mako Exhibit 1012 Page 12
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`Page 13
` Q And so you looked at a document that was an
`invention disclosure that is in the file of Carnegie
`Mellon University. Is that correct?
` A Yes.
` Q And the invention disclosure was on
`February 22nd, 1996. Correct?
` MR. BUROKER: Objection. Form.
` A I don't know the date.
` Q So you don't have personal knowledge that
`this initial version of the paper was on February
`22nd, 1996. Correct?
` A No. I don't recall the exact date. No.
` Q In paragraph 8 of your declaration, the
`second sentence says, "See," and then it says A.M.
`DiGioia III, et al. HipNav." Then goes on to list the
`name of an article.
` At the end of that article name it says,
`"Proceedings of the second computer aided orthopedic
`surgery CAOS symposium 1996."
` Did you attend that symposium?
` A No. I didn't.
` Q Do you know whether that paper that is
`listed, the DiGioia HipNav paper was first published
`in 1996?
` MR. BUROKER: Objection. Form.
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`Page 14
` A You are talking about this particular
`paper?
` So I don't know that paper was published.
`I have no record of that. Because I think it was
`submitted to the conference. And as far as I know
`that conference didn't have proceedings in the early
`years. So I don't know this particular paper was ever
`published in the proceeding.
` Q I will show you a document previously
`marked as Mako Exhibit 1005. What I can tell you,
`sir, this document was taken from the file history of
`the patent that we are all involved with here.
` So this was submitted by Blue Belt's
`attorneys as part of the patent process.
` Do you see at the top of the page it says
`"to appear in proceedings of CAOS," then there is a
`"'96 - Bern, Switzerland."
` Do you see that?
` A I see that.
` Q Do you see there is a handwritten "6"
`there?
` A Yes.
` Q Do you know who did that?
` A No.
` Q What do you know about the CAOS proceedings
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`Page 15
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`in Switzerland?
` A CAOS was I think it still is meeting of
`computer assisted orthopedic surgery. So that meeting
`was started in either '95 or '96 by Professor Nolte
`from Bern. This was one of the first years I attended
`the meeting in '97.
` As far as I remember, in '97 there were
`still no proceedings of the meeting. So at least in
`'97 there was no published book of proceedings.
` Q So in '97 when you went there, were there
`speakers who gave presentations on topics?
` A Yes.
` Q And did the speakers hand out materials
`relating to those --
` A No.
` Q They just gave an oral presentation and
`that was it?
` A Yes. Before to present at the meeting you
`have to submit an abstract. You submit an abstract to
`the conference. And then you present, if the abstract
`is accepted. In '97 I attended, as far as I recall
`there were no proceedings of the meeting.
` Q When you use the word "proceedings," you
`mean there was no actual compilation of the papers
`that later was distributed?
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`Page 16
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` A Yes.
` Q There was in fact a meeting that happened
`where people submitted abstracts and then they
`presented to the group?
` A Yes.
` Q The group certainly saw the abstracts of
`the presentations, didn't they?
` A I don't know that. So when you present,
`you present -- you give a talk and support it with
`slides. But you don't distribute the abstract.
` In modern conferences, pretty much most
`conferences the submitted abstracts get published in
`proceedings. There is compilation book of all
`submitted, accepted and presented abstracts.
` This was, like I said, the early years of
`this particular meeting, and as far as I can recall in
`'97 there was no proceeding book. I don't know about
`'96.
` Q So this paper that was submitted to the
`patent office with a handwritten "96" at the top.
`This paper was in fact written already in 1995. Was
`it not?
` MR. BUROKER: Objection. Form.
` A No. I don't think so.
` Q I will mark as our Exhibit 1018 a document
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`Page 17
`that is the Carnegie Mellon Institute Robotics --
`Carnegie Mellon University, The Robotics Institute.
`It's a list of publications on Dr. Jaramaz's website.
` (Thereupon, Exhibit No. 1018 was marked for
` identification.)
` Q I am being conservative marking one out
`from where we were before.
` MR. BUROKER: I have to object to documents
` as they are admitted. Let me give you my
` objections.
` Objection to foundation and relevance. You
` can go ahead.
` Q Sir, I handed you what I printed off of the
`Carnegie Mellon University, The Robotics Institute
`website. And there is a personal website for you. Do
`you recognize this?
` A I probably have seen this.
` Q And there is a list of your publications on
`your website. Is that right?
` A Yes.
` Q And if you will go back to the time period
`of 1995. It's the bottom of page 8 of 10, last entry.
` A Yes.
` Q You will see, "HipNav preoperative planning
`and intraoperative navigational guidance for
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`Mako Exhibit 1012 Page 17
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`Page 18
`acetabular implant placement in total hip replacement
`surgery."
` And then you are listed as one of the
`authors there. Do you see that?
` A I do.
` Q It is listed as November 1995. Correct?
` A That's correct.
` Q Also, you will see on your website there is
`a PDF of each of the articles or at least certainly of
`this article.
` A Uh-huh.
` Q I clicked on that. And I will show you
`what came up. It needs to be marked 1019.
` (Thereupon, Exhibit No. 1019 was marked for
` identification.)
` Q And you will see that on the PDF I printed
`out from your website on the publications list, at the
`top it says "PROC," I assume that is short for
`proceedings, "of the computer assisted orthopedic
`surgery symposium, Bern, Switzerland, November 1995."
` Do you see that?
` A Yes. I do.
` Q Does this refresh your recollection that
`this paper actually was done for the proceedings in
`1995?
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`Mako Exhibit 1012 Page 18
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`Page 19
` MR. BUROKER: Objection. Foundation --
` form, sorry.
` A It doesn't refresh my recollection. It is
`just a different mark on this paper. It appears to be
`the same paper. So I think one way of finding out
`when this was done would be to find out when this
`meeting was called.
` Because this was probably marked at some
`point when the web page was organized. And I don't
`recall when that was done. So what I'm trying to say,
`it was done from memory at some point.
` I think best way to find out is to find out
`when this meeting was held in Bern.
` Q Let me mark as next in order an exhibit.
`And it has "CAOS - symposium" at the top.
` (Thereupon, Exhibit No. 1020 was marked for
` identification.)
` MR. BUROKER: Objection. Foundation.
` Hearsay. Go ahead.
` Q What I handed you, Dr. Jaramaz, is a
`printout from the CAOS International.org website
`showing a final program that occurred from November
`30th, 1995 to December 2nd, 1995.
` Do you see that?
` A I do.
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`Mako Exhibit 1012 Page 19
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` Q Is this the same organization that is
`listed as the organization where the HipNav article on
`Exhibit 1019 was published?
` MR. BUROKER: Objection. Form.
` A Yes.
` Q And do you recall this meeting occurred?
` A I wasn't present at the meeting. But yes,
`I do.
` Q If you look at the -- unfortunately there
`is no page numbers on this. It's the third to last
`page. It has a session 5, clinical experience with
`hip CAS.
` A Yes.
` Q Do you see the second entry on session 5 is
`for computer assisted planners and execution systems
`for total hip replacement surgery A.M. DiGioia; do you
`see that?
` A I do.
` Q And that subject is the same as the subject
`in the Article 1019, is it not?
` MR. BUROKER: Objection. Form.
` A You can say that the general subject is the
`same. The title is not the same.
` Q I will mark as next in order an article
`entitled "Development and validation of a navigational
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`Mako Exhibit 1012 Page 20
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`Page 21
`guidance system for acetabular implant placement."
` (Thereupon, Exhibit No. 1021 was marked for
` identification.)
` Q So Exhibit 1021 is an article where you are
`coauthor. And I just wanted to point out --
` MR. BUROKER: Pause one second. Objection.
` Foundation. Relevance. And hearsay. Go ahead.
` Q Were you a coauthor on this article?
` A I was.
` Q If you look at the references section at
`the end, can you read for us the third reference in
`that section?
` A "A.M. DiGioia, preoperative planning
`intraoperative navigation, navigational guidance for
`acetabular implant placement in total hip replacement
`surgery in proceedings care symposium, Bern, November
`1995."
` Q So in your own article you cited this
`HipNav article as coming from November 1995. True?
` A Yes.
` Q If you look at paragraph 8 again of your
`declaration where you wrote that, "On February 22nd,
`1996 we created an initial version of our paper
`entitled 'HipNav preoperative planning and
`intraoperative navigational guidance for acetabular
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`Mako Exhibit 1012 Page 21
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`Page 22
`implant placement in total hip replacement surgery.'"
`That's not correct.
` Is it?
` MR. BUROKER: Objection. Form.
` A That's true.
` Q It's not correct?
` A It's not correct.
` Q Because the paper was actually created in
`1995. Correct?
` MR. BUROKER: Objection. Form.
` A It appears like that, yes.
` Q If you look at the patent. I will hand you
`what has been marked as Mako Exhibit 1001. You will
`see in column 9 of the patent -- actually you are
`looking at the front of it.
` We might as well make clear what it is. We
`are looking at the '411 patent. That's the patent at
`issue in this inter partes review.
` You will see in the other publications
`listing on the front of the '411 patent, it shows the
`paper as being in 1996. Correct?
` A Correct.
` Q If you look on column 9 of the patent.
`It's further in. Where the columns start is where the
`text starts.
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`Mako Exhibit 1012 Page 22
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`Page 23
`
` A Yes.
` Q At line 33 it says, "Additional details of
`the methods and apparatuses are presented in, quote,
`'HipNav preoperative planning and intraoperative
`navigational guidance for acetabular implant placement
`in total hip replacement surgery,' DiGioia, et al.,
`second CAOS symposium, Bern, Switzerland, 1996. Which
`is incorporated herein by reference."
` A Yes.
` Q So again, in the patent, this article is
`listed as 1996, but in your own writings and
`publication list, it's listed as 1995.
` True?
` MR. BUROKER: Objection. Form.
` A Looks like that.
` Q I will talk with you a little bit about the
`contributions of the members of the team since you
`covered that in your declaration.
` A Go ahead.
` Q You list here that you worked with
`Dr. Kanade?
` A Yes.
` Q Is Dr. Kanade a relatively senior professor
`at Carnegie Mellon?
` A Yes. He was director of Robotics Institute
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`
`at the time.
` Q And did Dr. Kanade contribute to the HipNav
`preoperative planning article?
` A Which one?
` Q Let's use the one in the patent office. So
`let's use Exhibit 1005.
` A Yes. Dr. Kanade contributed to a general
`idea of this HipNav project. So he was with
`Dr. DiGioia, the one that framed the project.
` Because the original intention, the
`original plan when we submitted the proposal to the
`NSF Foundation was to do a robotic preparation of the
`acetabulum. And then combine that by mechanical based
`planning.
` Dr. Kanade and Dr. DiGioia in their
`conversation planning came up with the idea of
`basicness on navigation, surgical navigation instead
`of robotics.
` So they kind of framed the entire project
`and direction, overall direction of the project. So
`he was not listed in this paper because this paper was
`more about specifics of implementation of that idea.
`And he was not really directly involved in day-to-day
`work other than through the advisement of David Simon.
` Q Is it the normal practice in academic
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`publications to have the person who oversees the work
`on a big level be listed last as an author?
` MR. BUROKER: Objection. Form. Scope.
` A It is not unusual.
` Q For example, Deposition Exhibit 1021, an
`article you are coauthor on, lists a long list of
`authors, and Dr. Kanade is listed last. Do you see
`that?
` A I do.
` Q Was his participation in some way different
`for that article?
` A I would have to read the entire article to
`recall that.
` Q Do you know who decided to not list
`Dr. Kanade on the HipNav article? Do you know who
`made that decision?
` A No.
` Q Was it you?
` A No. It wasn't me.
` Q You haven't spoken with anyone who made the
`decision to determine why they did it, have you?
` A Not that I recall. No.
` Q If you didn't make the decision yourself
`and you haven't spoken to anyone who did make the
`decision and you are not sure who made the decision,
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`you can't really tell us why he was left off.
`Correct?
` MR. BUROKER: Objection. Form.
` A I can tell you my opinion, if that is worth
`anything. I cannot tell you the exact reasons.
` Q There is a listing here of Mr. Colgan, I
`see him listed a few times in your declaration.
` Do you recall who he was?
` A Yes.
` Q Can you describe for me what his role was
`on your team?
` A Mr. Colgan was clinical technician. That's
`probably the best way to describe it. So his role was
`in preparing the data for cases which consisted of
`getting the CT scans from the radiology and processing
`them so they are ready to be input in the planning
`software.
` He was also working on preparing
`instrumentation for surgery. So everything that was
`related to our development that was used in surgery he
`would take care of that instrumentation, sterilized
`and ready for every case.
` Q And did he report to anybody in particular?
` A I think he reported to Dr. DiGioia as
`director of the center for orthopedic research.
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` Q Can you tell me with any more specificity
`how he managed the taking of the CT scan data and then
`converted it so you could use it with your system that
`is described in the HipNav article?
` A Yes. The CT scans were done at the
`radiology department. They would be copied on a CD.
`And then he would take that CD, import it to our
`computer. And he would use the software that was
`developed by Eric Kischell to perform what is called
`segmentation.
` So you delineate the bones of interest, the
`femur and the pelvis. And create 3D models of those
`bones.
` Q Could you go out and buy that kind of
`software in order to do that?
` A At that time, no.
` Q You had to make it yourself?
` A Yes.
` Q What was the difference between the
`available software that you could use from the public
`and what you did with your software?
` A At that time, the software was used -- was
`tied to imaging device, imaging machines.
` So you could only use it as a part of your
`CT scanner. You could -- there was a software that
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`was included that would perform similar procedure.
` There was no, as far as I recall, there was
`no available commercial software you could buy and
`just use.
` Q And Mr. Kischell developed that software
`for your project?
` A Yes.
` Q You wrote that his -- Mr. Kischell's main
`focus related to developing a user interface. User
`interface, do you mean what the surgeon woul
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