UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`US ENDODONTICS, LLC, :
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` Petitioner, : Case No. IPR2015-00632
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` v. : U.S. Patent No.
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`GOLD STANDARD : 8,727,773 B2
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`INSTRUMENTS, LLC, :
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` Patent Owner. :
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`- - - - - - - - - - - - - X
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` CONFIDENTIAL
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`Videotaped Deposition of NEILL H. LUEBKE, D.D.S., M.S.
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` Washington, DC
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` Wednesday, December 9, 2015
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` 9:05 a.m.
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`Job No.: 98825
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`Pages 1 - 266
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`Reported by: Debra A. Whitehead
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
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`- - - - - - - - - - - - - x
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`US ENDODONTICS, LLC, :
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` Petitioner, : Case No. IPR2015-00632
`
` v. : U.S. Patent No.
`
`GOLD STANDARD : 8,727,773 B2
`
`INSTRUMENTS, LLC, :
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` Patent Owner. :
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`- - - - - - - - - - - - - X
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` CONFIDENTIAL
`
`Videotaped Deposition of NEILL H. LUEBKE, D.D.S., M.S.
`
` Washington, DC
`
` Wednesday, December 9, 2015
`
` 9:05 a.m.
`
`Job No.: 98825
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`Pages 1 - 266
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`Reported by: Debra A. Whitehead
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
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`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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` Videotaped Deposition of NEILL H. LUEBKE, D.D.S.,
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`M.S., held at the offices of:
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`2
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` ROTHWELL, FIGG, ERNST & MANBECK, P.C.
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` 607 14th Street, NW
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` Suite 800
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` Washington, DC 20005
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` (202) 783-6040
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` Pursuant to agreement, before Debra A. Whitehead,
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`an Approved Reporter of the United States District
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`Court and Notary Public of the District of Columbia.
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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`3
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` A P P E A R A N C E S
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` ON BEHALF OF PETITIONER:
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` JEFFREY S. GINSBERG, ESQUIRE
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` PATTERSON BELKNAP WEBB & TYLER LLP
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` 1133 Avenue of the Americas
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` New York, New York 10036-6710
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` (212) 336-2000
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` ON BEHALF OF PATENT OWNER:
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` DEREK F. DAHLGREN, ESQUIRE
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` JASON M. NOLAN, Ph.D., ESQUIRE
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` ROTHWELL, FIGG, ERNST & MANBECK, P.C.
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` 607 14th Street, NW
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` Suite 800
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` Washington, DC 20005
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` (202) 783-6040
`
` ALSO PRESENT:
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` CAROLYN CORREA, Video Specialist
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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`4
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` C O N T E N T S
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`EXAMINATION OF NEILL H. LUEBKE, D.D.S., M.S. PAGE
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` By Mr. Ginsberg 8
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` By Mr. Dahlgren 196
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` By Mr. Ginsberg 237
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` EXHIBITS MARKED IN TODAY'S SESSION
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` (Attached to the Transcript)
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`DEPOSITION EXHIBIT PAGE
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`Exhibit 1031 Petitioner's Notice of 9
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` Cross-Examination of Neill H.
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` Luebke, D.D.S., M.S.
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`Exhibit 1032 Order Denying Motion for 46
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` Preliminary Injunction
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`Exhibit 1033 Acknowledgment of Deponent, 241
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` And Errata Sheet
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`Exhibit 2044 E-Mail String 196
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` EXHIBITS MARKED IN PRIOR SESSIONS
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` (Retained by Counsel)
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`DEPOSITION EXHIBIT PAGE
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`Exhibit 1001 U.S. Patent No. 8,727,773 B2 23
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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` EXHIBITS MARKED IN PRIOR SESSIONS - CONTINUED
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`DEPOSITION EXHIBIT PAGE
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`Exhibit 1006 Article, "Optimisation of 127
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`5
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` Processing and Properties of
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` Medical Grade Nitinol Wire,"
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` by Pelton, et al.
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`Exhibit 1008 Prosecution History, 116
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` Continuation of Prior
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` Application No. 13/336,579
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`Exhibit 1009 Prosecution History, 132
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` Application No. 11/628,933
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`Exhibit 1010 Article, Study of Mechanical, 213
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` Fatigue and Corrosion Properties
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` Of the Supereleastic Ni-Ti Alloy,
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` By Vojtech, et al.
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`Exhibit 1016 ISO Standard 3630-1, 251
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` First Edition
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`Exhibit 1017 ISO Standard 3630-1, 251
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` Second Edition
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
` EXHIBITS MARKED IN PRIOR SESSIONS - CONTINUED
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`DEPOSITION EXHIBIT PAGE
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`Exhibit 1019 Article, "Fatigue and 68
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`6
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` Mechanical Properties of
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` Nickel-Titanium Endodontic
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` Instruments," by Kuhn, et al.
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`Exhibit 1022 U.S. Patent Application 69
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` Publication No.
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` US 2002/0137008 A1
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`Exhibit 1023 U.S. Patent No. 7,137,815 B2 69
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`Exhibit 1030 Prosecution History, 124
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` Application No. 13/455,841
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`Exhibit 2027 Declaration of Neill H. 64
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` Luebke, D.D.S., M.S.
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`Exhibit 2029 Article, "Torsional and 80
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` Stiffness Properties of
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` Nickel-Titanium K Files,"
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` By Camps, et al.
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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` P R O C E E D I N G S
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`7
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` VIDEO SPECIALIST: Here begins Tape Number
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`09:05:27
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`1 in the videotaped deposition of Dr. Neill Luebke in
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`09:05:28
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`the matter of US Endodontics, LLC, versus Gold
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`09:05:34
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`Standard Instruments, LLC; in the United States Patent
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`09:05:39
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`and Trademark Office; Case Number IPR 2015-00632.
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`09:05:45
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` Today's date is December 9, 2015. The time
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`09:05:54
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`on the video monitor is 9:05 a.m. The videographer
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`today is Carolyn Correa, representing Planet Depos.
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` This video deposition is taking place at
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`607 14th Street, Northwest, Washington, DC.
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` Would counsel please voice-identify
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`themselves and state whom they represent.
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` MR. GINSBERG: Jeff Ginsberg of Patterson
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`Belknap, representing the petitioner.
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`09:05:58
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`09:06:03
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`09:06:16
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`09:06:20
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`09:06:24
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` MR. DAHLGREN: Derek Dahlgren of Rothwell,
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`09:06:25
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`Figg, Ernst & Manbeck, representing patent owner. I'm
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`09:06:30
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`also joined with my colleague Jason Nolan.
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`09:06:31
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` VIDEO SPECIALIST: The court reporter today
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`09:06:34
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`is Debbie Whitehead, representing Planet Depos.
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` Would the reporter please swear in the
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`witness.
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`09:06:35
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`09:06:39
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`09:06:41
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
` NEILL H. LUEBKE, D.D.S., M.S.,
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` having been duly sworn, testified as follows:
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`8
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` EXAMINATION BY COUNSEL FOR PETITIONER
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`BY MR. GINSBERG:
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` Q Good morning, Dr. Luebke.
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` A Good morning, Mr. Ginsberg.
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` Q Can you state your full name, for the
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`record?
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` A Sure. I'm Neill Hamilton Luebke, D.D.S.,
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`M.S.
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` Q And, Dr. Luebke, do you understand that
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`today I'll be cross-examining you in connection with
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`certain opinions that you have provided concerning
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`your U.S. Patent Number 8,727,773?
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` A I understand that.
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`09:06:41
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`09:07:15
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` Q Is it okay if I refer to that patent as the
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`09:07:16
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`'773 patent?
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` A I -- I -- you caught me for a moment
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`because I've always heard it as '773. So now I know
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`all the other numbers as well.
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`09:07:18
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`09:07:20
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`09:07:22
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`09:07:27
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` Q I'm going to hand you what has been marked
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`09:07:29
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`Exhibit 1031.
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`09:07:31
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`9
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` (Exhibit 1031 was marked for identification
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`09:07:32
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`ans is attached to the transcript.)
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`09:07:32
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` MR. GINSBERG: This is Petitioner's Notice
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`09:07:37
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`of Cross-Examination of Neill H. Luebke.
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` Have you seen that document before?
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` A Yes, I have.
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`09:07:38
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`09:07:41
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`09:07:45
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` Q And you understand, as I mentioned before,
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`09:07:45
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`that I'll be cross examining you?
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` A Yes.
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` Q And this is a notice identifying that
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`you'll be appearing here for cross-examination.
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` Correct?
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` A Yes, sir.
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` Q Now, Dr. Luebke, you're listed as the
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`inventor of the '773 patent. Correct?
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` A Yes, I am.
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` Q Let me just step back a bit. You
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`understand that you are required to answer my
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`questions truthfully today, and that you're under
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`oath. Correct?
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` A That's what I understand.
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`09:08:12
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`09:08:13
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` Q And your attorney may object to some of my
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`09:08:15
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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`questions from time to time. But unless you are
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`specifically instructed not to answer, you are
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`expected to provide answers to each of my questions.
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` Do you understand that?
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` A I've been instructed that way, yes.
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` Q Is there any reason why you cannot provide
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`09:08:29
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`accurate and truthful testimony here today?
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` A None that I'm aware of.
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` Q Now, Dr. Luebke, you assigned the '773
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`patent to Gold Standard Instruments. Correct?
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` A Yes, I did. Assignee, yes.
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` Q You are the president of Gold Standard?
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` Correct?
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`09:08:31
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`09:08:37
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`09:08:49
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` A I am the president of Gold Standard, that's
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`09:09:03
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`correct.
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` Q Does Gold Standard have any employees?
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`09:09:05
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`09:09:06
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` A I believe we had this question before, and
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`09:09:12
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`the answer is it's a family grouping of our two
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`children and my wife.
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` Q And that's the entirety of the company.
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` Correct?
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` A That would be the entirety, yes.
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`09:09:14
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`09:09:25
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`09:09:26
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`09:09:28
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`09:09:28
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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` Q Now, in addition to licensing the '773
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`patent to Gold Standard, you have licensed other of
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`your patents to Gold Standard. Correct?
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` MR. DAHLGREN: Objection. Form.
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` A Licensed or assigned?
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` Q I misspoke. Let me rephrase that. I'll
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`start again.
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` In addition to assigning the '773 patent to
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`09:09:47
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`Gold Standard, you have assigned other patents to Gold
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`09:09:50
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`Standard. Correct?
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` A That I will agree with.
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` Q One of those other patents is U.S. Patent
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`Number 8,876,991. Correct?
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` A The '991 patent, that -- that's the newer
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`patent?
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` Q Yes, it is.
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` A Yes.
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` Q That has been assigned to Gold Standard.
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` Correct?
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` A Yes, I believe it has.
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` Q You're aware that in a pending District
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`Court litigation, a licensee of yours has accused US
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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`Endo of infringing claims of the '773 patent.
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` Correct?
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` A Yes, I believe that's correct as well.
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` Q And the licensee that Gold Standard
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`licensed the '773 patent to is Dentsply. Correct?
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` MR. DAHLGREN: Objection. Form.
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` A Not to create ill will or whatever, but I
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`think it's -- isn't it Dentsply and Tulsa Dental? And
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`09:10:56
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`if we could conglomerate all of those together, then I
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`09:11:02
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`would say yes.
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` Q It's your testimony that Gold Standard
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`licensed the '773 patent to both Dentsply and Tulsa
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`Dental. Correct?
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` A Yes, we did.
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` Q And is it okay if I collectively refer to
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`them as Dentsply?
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` A If -- if no one else objects, that's fine
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`with me as well.
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` Q You testified in the pending District Court
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`09:11:26
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`action both at deposition at -- and at a preliminary
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`injunction hearing. Correct?
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` A That would be correct.
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`09:11:27
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`09:11:35
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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` Q You testified as an expert on behalf of
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`Gold Standard's licensee as to the validity of the
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`'773 patent in view of prior art that was identified
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`by Petitioner US Endodontics. Correct?
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`13
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`09:11:36
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`09:11:38
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`09:11:40
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`09:11:44
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` A For the -- you're asking about the District
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`09:11:52
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`Court proceedings?
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` Q Yes. Yes, I am.
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` A Okay. Yes.
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` Q The District Court denied your licensee's
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`motion for a preliminary injunction after a full
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`hearing on the merits. Correct?
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`09:11:53
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`09:11:54
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`09:11:55
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`09:12:01
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` A I don't know what the definition of a full
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`09:12:06
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`hearing is, but they denied a preliminary injunction
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`at this point in time, yes.
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`09:12:07
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`09:12:11
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` Q The District Court found that your licensee
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`09:12:12
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`would unlikely succeed on the merits in demonstrating
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`09:12:16
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`that the '773 patent is valid in light of several
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`09:12:19
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`prior art references, including references that are at
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`09:12:23
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`issue in this proceeding. Correct?
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` A It's fair to say I did not read the
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`09:12:25
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`09:12:29
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`decision. So if -- if that is correct, I would agree
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`09:12:31
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`with it. If it's incorrect, then I would disagree
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`09:12:39
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`with it.
`
` Q You have a financial interest in the
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`outcome of the pending District Court litigation.
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` Correct?
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` A According to the license I signed with
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`Dentsply, that would be correct.
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` Q I believe your counsel has characterized
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`your interest in the outcome of the litigation as
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`having a dog in the hunt.
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` Do you recall that?
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` A Yeah, I think that was -- yes, I think that
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`09:13:01
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`was stated in the District Court, I believe.
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`09:13:03
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` Q And you agreed with that analogy during the
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`09:13:05
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`District Court proceeding. Correct?
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` A I think I did.
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` Q If Dentsply recovers a monetary award in
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`the litigation with Petitioner US Endodontics, you
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`will receive a portion of that award. Correct?
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` MR. DAHLGREN: Objection. Form.
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` A I -- that's muddy water, and I honestly,
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`without legal counsel, I cannot tell you that.
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`09:13:08
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`09:13:09
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`09:13:14
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`Because there's -- it's -- they have to recover their
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`09:13:33
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`costs. And so after all of that accounting and one
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`thing or another, then possibly I could receive some
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`benefit from that. That's all I know about that.
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` Q If the damages award -- if any damages
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`award exceeds your licensee's costs, then you will
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`share in that award. Correct?
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`15
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`09:13:38
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` A I -- I -- I believe that's what the wording
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`09:14:00
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`is. I have to trust that you've looked at it and --
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`and I have not.
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` Q You have not looked at it? You have not
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`looked at the agreement?
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` MR. DAHLGREN: Objection. Form.
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` A I have not looked at that agreement for
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`years. I -- I -- those agreements, candidly, are
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`dealt with by my wife, not by me.
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`09:14:03
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`09:14:23
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` Q Do you recall looking at them in connection
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`09:14:26
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`with your deposition that took place in November --
`
`I'm sorry, of October of 2014?
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` A Perhaps.
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` Q Your licensee Dentsply pays royalties to
`
`you on certain products that it sells. Correct?
`
` A That is correct.
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
` Q Which ones?
`
`16
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`09:14:52
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` MR. DAHLGREN: I think we are getting into
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`09:14:57
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`potentially confidential information, Jeff.
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` If you're going to proceed with this line
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`09:14:58
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`09:15:01
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`of questioning, I want to designate this confidential.
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`09:15:02
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`And you would have to seek a protective order to use
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`this transcript as an exhibit.
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`09:15:04
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`09:15:07
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` MR. GINSBERG: The entire transcript you're
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`09:15:10
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`designating as confidential?
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`09:15:11
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` MR. DAHLGREN: For now. We can go back and
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`09:15:14
`
`revisit it if there's some way to redact. But for now
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`09:15:17
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`I would like to designate the entire thing, and then
`
`we can revisit that.
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` MR. GINSBERG: We'll take that under
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`advisement. There are procedures in IPR proceedings
`
`as to how to go about doing that, and we'll follow
`
`those guidelines.
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` MR. DAHLGREN: Okay. So you'll seek --
`
`just to clarify, you'll seek a protective order if
`
`you're going to submit the transcript?
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`09:15:20
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`09:15:29
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`09:15:31
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`09:15:32
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`09:15:34
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` MR. GINSBERG: I'll -- I will discuss with
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`09:15:36
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`you the portions that we intend to submit in advance
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`09:15:37
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`CONFIDENTIAL
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`17
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`and have your agreement or disagreement as to whether
`
`09:15:41
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`or not those portions are confidential or not
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`confidential, and proceed accordingly.
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` MR. DAHLGREN: Okay.
`
` MR. GINSBERG: And if I could just step
`
`back, I haven't -- I actually want to put on the
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`record that during the public preliminary injunction
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`09:15:43
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`09:15:45
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`09:15:47
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`09:16:11
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`09:16:12
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`09:16:14
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`hearing, these questions were asked and answered in a
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`09:16:16
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`public forum. So I don't understand how this
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`information is confidential.
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`09:16:19
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`09:16:21
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` MR. DAHLGREN: I don't think the exact same
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`09:16:23
`
`questions were asked and all the same information came
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`09:16:25
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`out that you're trying to elicit right now. I think
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`09:16:27
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`it's a little bit more detailed than what came out in
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`09:16:29
`
`the hearing.
`
`BY MR. GINSBERG:
`
` Q Dr. Luebke, which royalties does Dentsply
`
`pay you royalties for?
`
` MR. DAHLGREN: Objection. Form.
`
` MR. GINSBERG: I -- I misspoke.
`
`09:16:31
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`09:17:01
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`09:17:02
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`09:17:05
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`09:17:08
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`09:17:12
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` Q Which products that Dentsply sells does it
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`09:17:14
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`pay royalties for?
`
`09:17:18
`
`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`MR. DAHLGREN:
`
`Same objection about
`
`18
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`confidentiality.
`
`But you can answer.
`
`A
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`Can you be specific as to which patent
`
`you're referring to?
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`Q All of your patents.
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`MR. DAHLGREN: Objection. Relevance.
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`A What -- what is -- this is an IPR for a
`
`particular patent?
`
`Q
`
`Can you answer my question, Dr. Luebke, yes
`
`or no?
`
`A What was the question again, please?
`
`Q What products that Dentsply sells do they
`
`pay you royalties for?
`
`A Well, let me qualify it, then.
`
`For the '773 patent, the Vortex Blue.
`
`Q
`
`A
`
`Q
`
`Any other products?
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`Does Dentsply pay you royalties for any
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`other patents that you have licensed to it?
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`A
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`CONFIDENTIAL
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`09:18:24
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`•
`•
`
`19
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`Q
`
`How about the ProFile brand series of
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`files?
`
`•
`
`Q
`
`How about the GT Series of files that
`
`Dentsply sells?
`
`MR. DAHLGREN: Objection. Relevance.
`
`•
`
`Q
`
`You understand that if any claims of the
`
`patents that you licensed to Dentsply are determined
`
`to be invalid, the royalties that Dentsply is
`
`obligated to pay you would be reduced. Correct?
`
`A
`
`Q
`
`A
`
`I believe that's what the license says.
`
`How much has Dentsply paid you to date?
`
`How much has Dentsply paid me to date?
`
`Q Correct.
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`A
`
`Q
`
`For what?
`
`For anything. Total monies that Dentsply
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`has paid you to date.
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`CONFIDENTIAL
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`09:20:05
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`A
`
`To date. Well
`
`MR. DAHLGREN:
`
`Same objection about
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`20
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`confidentiality.
`
`But you can answer.
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`THE WITNESS: Okay.
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`A Well, they paid $250,000 for a due
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`diligence. And that was to cover my expenses of
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`research and
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`and experimentation that I had done
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`previous.
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`And then when they signed the license, they
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`gave a $200,000 minimum per year.
`
`Q
`
`A
`
`Q
`
`A
`
`1111111111• has been paid for 1111111111?
`
`Yes.
`
`Any other additional payments?
`
`We received a payment in November. And the
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`number I'm going to give you is going to be wrong
`
`because I don't know the number. Okay?
`
`09:20:07
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`09:20:09
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`09:20:10
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`09:20:11
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`09:20:12
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`09:20:13
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`09:20:50
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`09:20:50
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`09:21:05
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`09:21:08
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`And let
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`09:21:11
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`me give you a number, and it will be wrong.
`
`Q
`
`So the 111111111111 payments that you
`
`previously testified about, those were for 111111111111
`
`09:21:17
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`09:21:23
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`09:21:30
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`CONFIDENTIAL
`PLANET DEPOS I 888.433.3767 I WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`21
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`11111111111111 sales of the products that are
`
`attributed to the '773 patent?
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`MR. DAHLGREN: Objection. Form.
`
`A
`
`Q
`
`That's the way I understand it, yes.
`
`And the license agreement has certain
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`minimums that need to be reached. Correct?
`
`MR. DAHLGREN: Objection. Form.
`
`A
`
`Yeah,
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`I think that's what the $200,000 is
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`for. Once it reaches over $200,000, then there's a--
`
`there's an additional payment.
`
`Q
`
`Have the --have sales of Dentsply's
`
`products that purportedly are covered by the '773
`
`patent ever exceeded the minimal threshold amount set
`
`forth in the license agreement?
`
`A
`
`That's what the lllllllllllldid with the--
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`09:21:33
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`09:21:40
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`09:21:43
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`09:22:00
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`09:22:06
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`09:22:07
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`09:22:09
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`09:22:13
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`09:22:18
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`09:22:23
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`the 11111111111111111111111111111111111111111111111, in
`
`09:22:28
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`November.
`
`09:22:33
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`09:22:35
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`Q
`
`And those sales did not pertain to the '773
`
`09:22:38
`
`patent. Correct?
`
`A
`
`They do not pertain to the '773 patent.
`
`Q
`
`Did sales of the Dentsply products that it
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`CONFIDENTIAL
`PLANET DEPOS I 888.433.3767 I WWW.PLANETDEPOS.COM
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`09:22:40
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
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`sells that are allegedly covered by the '773 patent
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`ever exceed the minimal amounts set forth in the
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`22
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`license?
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`•
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`Q
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`Do you recall submitting a declaration in
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`connection with this IPR proceeding, Dr. Luebke?
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`A
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`Q
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`Yes, I
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`I submitted a -- a declaration.
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`In the declaration you mentioned a meeting
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`with Bobby Bennett in June of 2010. Correct?
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`A
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`I don't have one in front of me.
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`If -- if
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`it's there, yes, I did.
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`I -- I did-- I met with him
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`in 2010.
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`If it's in the declaration, then, yes, I
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`did.
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`Q
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`Do you recall that at the time of that
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`meeting the only patent application that you had
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`pending was an application that you had filed well
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`before your June 2010 meeting with Mr. Bennett?
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`A Was there only one? Perhaps there was one.
`
`I thought maybe there might have been two. But, yes,
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`for sure there was one.
`
`Q
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`Let me just hand you what has been
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`previously marked as Exhibit 101.
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`CONFIDENTIAL
`PLANET DEPOS I 888.433.3767 I WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`23
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` (Exhibit 1001, previously marked, retained
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`09:24:47
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`by counsel.)
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`09:24:48
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` MR. GINSBERG: I'm sorry, Exhibit 1001 in
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`09:24:48
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`this IPR proceeding.
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` THE WITNESS: Okay.
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`09:24:50
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`09:24:53
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` Q Do you recognize Exhibit 1001, Dr. Luebke?
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`09:24:54
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` A Yeah, this is -- this is the '773 patent
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`09:25:01
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`you're referring to. Yes.
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`09:25:03
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` Q That's the patent that's at issue in this
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`09:25:04
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`IPR proceeding. Correct?
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`09:25:06
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` A Yes, that's what -- yeah, I believe that's
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`09:25:08
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`the one we're referring to. Yes.
`
` Q And if you look on the first page of
`
`Exhibit 1001, the first column, you'll see under
`
`Related U.S. Application Data that there was
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`09:25:10
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`09:25:12
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`09:25:15
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`09:25:19
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`Application Number 11/628,933 that was filed on June
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`09:25:23
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`7, 2005.
`
` Do you see that?
`
` A I haven't yet, so ...
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`09:25:30
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`09:25:31
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`09:25:34
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` Q So it's in the first column, under Related
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`09:25:38
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`U.S. Application Data.
`
` A Okay. Right. And?
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`09:25:40
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`09:25:42
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
` Q Do you see that there's an Application
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`Number 11/628,933?
`
` A I do. I found that.
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` Q And that was filed on June 7th, 2005.
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` Do you see that?
`
` A I do.
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` Q That was the only pending application that
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`09:25:57
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`you had on file at the time that you met with
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`Mr. Bennett --
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` A Okay.
`
` Q -- in June of 2010. Correct?
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`09:26:01
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`09:26:04
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`09:26:05
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` A Thank you for the clarification. I -- I --
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`09:26:08
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`this is -- I'm a novice at this. So, yes, okay.
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`Fine. This is the one I had.
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` Q That application that was pending on
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`09:26:12
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`09:26:16
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`09:26:17
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`June -- as of June 2010 was the only application that
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`09:26:21
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`you had pending at the time that you met with
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`Mr. Bennett. Correct?
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`09:26:25
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`09:26:27
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` A Under the circumstance you have presented,
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`09:26:31
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`yes.
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`09:26:34
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` Q What do you mean by, under the circumstance
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`09:26:34
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`I have presented?
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`09:26:36
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`CONFIDENTIAL
`PLANET DEPOS | 888.433.3767 | WWW.PLANETDEPOS.COM
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`IPR2015-00632 – Ex. 1038
`US ENDODONTICS, LLC, Petitioner
`
`
`
`Confidential Videotaped Deposition of Neill H. Luebke, D.D.S., M.S.
`Conducted on December 9, 2015
`
`25
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` A Well, I -- I have to agree with what you've
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`09:26:37
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`got here. Okay? Because at some point in time I
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`remember we split -- I don't know whether we split
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`09:26:39
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`09:26:42
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`this one. I don't know when we did it. We made one a
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`09:26:47
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`product and one a process. And I don't know what the
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`09:26:50
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`date was. And I don't know whether that occurred then
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`09:26:53
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`or whatever. So that's -- that's why I'm confused.
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`Okay?
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`09:26:57
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`09:27:01
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` Q Sure. Let's see -- let's see if I can help
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`09:27:01
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`clarify that.
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` A Okay.
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` Q So do you see that the very next
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`application that you filed was dated December 23rd,
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`2010? That's Application Number 12/977,625 --
`
` A Okay.
`
` Q -- that issued as U.S. Patent Number
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`8,083,873?
`
` A Okay. I see that.
`
` Q So that application was filed after
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