1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GREENEVILLE
`
`DENTSPLY INTERNATIONAL,
`INC. AND TULSA DENTAL
`PRODUCTS LLC D/B/A TULSA
`DENTAL SPECIALTIES,
`
`PLAINTIFFS,
`vs.
`
`US ENDODONTICS, LLC,
`
`DEFENDANT.
`
`DOCKET NO. CV-2-14-196
`
`GREENEVILLE, TN
`NOVEMBER 26, 2014
`9:16 A.M.
`VOLUME II
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`GOLD STANDARD EXHIBIT 2022
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-00632
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GREENEVILLE
`
`DENTSPLY INTERNATIONAL,
`INC. AND TULSA DENTAL
`PRODUCTS LLC D/B/A TULSA
`DENTAL SPECIALTIES,
`
`PLAINTIFFS,
`vs.
`
`US ENDODONTICS, LLC,
`
`DEFENDANT.
`
`DOCKET NO. CV-2-14-196
`
`GREENEVILLE, TN
`NOVEMBER 26, 2014
`9:16 A.M.
`VOLUME II
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`GOLD STANDARD EXHIBIT 2022
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-00632
`
`
`
`2
`
`APPEARANCES:
`
`FOR THE PLAINTIFFS: ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
` STEVEN LIEBERMAN, ESQ.
` DEREK F. DAHLGREN, ESQ.
` R. ELIZABETH BRENNER-LEIFER, ESQ.
` 607 14TH STREET, N.W.
` SUITE 800
` WASHINGTON, D.C. 2005
` HUNTER, SMITH & DAVIS
` JIMMIE C. MILLER, ESQ.
` 1212 N. EASTMAN RD.
` P.O. BOX 3740
` KINGSPORT, TN 37664
`
`FOR THE DEFENDANT: KENYON & KENYON LLP
` JEFFREY S. GINSBERG, ESQ.
` MATTHEW G. BERKOWITZ, ESQ.
` ONE BROADWAY
` NEW YORK, NY 10004
` WILSON WORLEY MOORE GAMBLE &
` STOUT, PC
` ROBERT L. ARRINGTON, ESQ.
` P.O. BOX 88
` KINGSPORT, TN 37662
`
`COURT REPORTER: KAREN J. BRADLEY
` RPR-RMR
` U.S. COURTHOUSE
` 220 WEST DEPOT STREET
` GREENEVILLE, TN 37743
`PROCEEDINGS RECORDED BY MECHANICAL STENOGRAPHY, TRANSCRIPT
`PRODUCED BY COMPUTER.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`10
`
`MATERIAL WILL BE SHIELDED FROM PUBLIC VIEW.
`THERE WILL BE TWO DOCUMENTS BASICALLY. I DON'T
`UNDERSTAND HOW YOU DO THESE THINGS IN CMECF, BUT YOU NEED
`TO FILE THE REDACTED DEPOSITION FOR THE PUBLIC FILE AND
`THE FULL DEPOSITION WILL BE UNDER SEAL.
`ALL RIGHT. ANYTHING ELSE?
`MR. GINSBERG: NO, YOUR HONOR, THAT'S IT.
`THE COURT: ALL RIGHT. CALL YOUR FIRST
`
`WITNESS.
`
`MR. GINSBERG: YOUR HONOR, WE CALL DR. GOLDBERG
`TO THE STAND.
`WE HAVE SOME BINDERS.
`THE COURT: I ASSUME THESE ARE RECYCLABLE, WE
`MAY MAKE UP OUR DEFICIT WITH THESE.
`A. JON GOLDBERG, DEFENDANT'S WITNESS, SWORN
`MR. GINSBERG: YOUR HONOR, FOR THE COURT'S
`CONVENIENCE WE DID PROVIDE YOU WITH A CROSS REFERENCE
`INDEX ON THE FRONT OF THE BINDER, WHICH IDENTIFIES WHERE
`THE EXHIBITS CAN BE FOUND IN THE RECORD.
`THE COURT: ALL RIGHT. THANK YOU.
`DIRECT EXAMINATION
`BY MR. GINSBERG:
`Q.
`GOOD MORNING, DR. GOLDBERG.
`A.
`GOOD MORNING.
`Q.
`SIR, COULD YOU PLEASE STATE YOUR NAME FOR THE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`37
`
`BEEN PREVIOUSLY IDENTIFIED IN PAPERS AS DOCKET ENTRY
`NUMBER 104 EXHIBIT T. IF I DIDN'T SAY IT BEFORE, THE
`WALIA REFERENCE WAS ALSO IDENTIFIED AS ENTRY NUMBER 104
`EXHIBIT S.
`
`WHEN WAS THE -- LET'S TURN TO THE NEXT SLIDE.
`WHEN WAS THE KUHN REFERENCE PUBLISHED?
`A.
`2002.
`Q.
`TURNING TO THE NEXT SLIDE. CAN YOU DESCRIBE
`GENERALLY WHAT KUHN DISCLOSES?
`A.
`YES. HE INVESTIGATED THE MECHANICAL PROPERTIES OF
`NICKEL-TITANIUM AND ENDODONTIC FILES.
`MR. LIEBERMAN: OBJECTION, YOUR HONOR. HE'S
`READING WORD FOR WORD FROM THIS SLIDE.
`A.
`YOUR HONOR, I'M SORRY, I PREPARED THE SLIDE, SO I'LL
`TRY NOT TO LOOK AT THEM.
`Q.
`I'LL JUST ASK THE QUESTION. CAN YOU DESCRIBE
`GENERALLY WHAT KUHN DISCLOSES?
`A.
`YES. KUHN IS INVESTIGATING NICKEL-TITANIUM
`ENDODONTIC FILES AND LOOKING AT HEAT TREATMENTS OF THESE
`FILES DOING BENDING CHARACTERISTICS OF THE FILES, BOTH NEW
`AND USED FILES AND THOSE THAT HAD BEEN HEAT TREATED.
`Q.
`THANK YOU. TURNING TO THE NEXT SLIDE. CAN YOU
`IDENTIFY WHAT'S DISCLOSED ON THIS SLIDE?
`A.
`YES. SO, AGAIN, THIS IS THAT SAME FORMAT. ON THE
`LEFT I'VE LISTED STEP A OF CLAIM 1, AND THEN ON THE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`38
`
`RIGHT -- THAT'S SHOWING STEP A IS PROVIDING THE
`SUPERELASTIC NICKEL-TITANIUM SHANK; AND THEN ON THE RIGHT,
`KUHN AT PAGE 716 AND THEN AT 717 AS WELL IS DESCRIBING
`THAT HE'S WORKING WITH SUPERELASTIC NICKEL-TITANIUM
`ENDODONTIC FILES, AND HE'S LISTED THE MANUFACTURERS DOWN
`ON THE BOTTOM, AND ONE OF THOSE IS THE MANUFACTURER WE
`WERE DISCUSSING YESTERDAY.
`Q.
`YOU WERE HERE FOR DR. LUEBKE'S TESTIMONY YESTERDAY;
`CORRECT?
`A.
`YES.
`Q.
`I ASKED DR. LUEBKE WHETHER OR NOT THE NICKEL-
`TITANIUM FILE WOULD CONDUCT HEAT; DO YOU RECALL THAT?
`A.
`YES.
`Q.
`HE SAID HE DIDN'T KNOW; RIGHT?
`A.
`YES.
`Q.
`DOES NICKEL-TITANIUM ALLOY CONDUCT HEAT?
`A.
`YES.
`Q.
`THANK YOU. OKAY. TURNING TO THE NEXT SLIDE.
`WHAT'S SHOWN HERE?
`A.
`SO THIS IS KUHN TEACHING STEP B. STEP B, AGAIN, IS
`THE HEAT TREATING STEP AT 400 DEGREES UP TO BUT NOT
`INCLUDING THE MELTING POINT. AND KUHN ON PAGE 717 IS
`LISTING THE TEMPERATURES, THE HEAT TREATING TEMPERATURES
`THAT HE'S USED, AND THOSE INCLUDE 400, 450, 510, UP TO, I
`THINK IT WAS, 700 DEGREES, AND SO THOSE ARE ALL IN THE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`39
`
`CLAIMED RANGE.
`Q.
`TURN TO THE NEXT SLIDE, PLEASE. WHAT'S DISCLOSED
`HERE?
`A.
`WHAT'S DISCLOSED HERE IS THE WHEREIN CLAUSE, WHEREIN
`KUHN IS BEING ABLE TO PERMANENTLY DEFORM. SO KUHN DID
`BENDING TESTING OF HIS SAMPLES, AND HE REPORTED THAT DATA,
`AND ON THIS CURVE IT SHOWS THAT THE SAMPLE HEAT TREATED AT
`400 DEGREES C AFTER THE HEAT TREATMENT EXPERIENCED
`PERMANENT DEFORMATION.
`Q.
`CAN YOU EXPLAIN HOW FIGURE 6A DEMONSTRATES THAT THE
`HEAT TREATED FILES WERE PERMANENTLY DEFORMED AFTER BENDING
`AND THESE WERE THE ONES THAT WERE HEAT TREATED TO 400
`DEGREES C?
`A.
`YES, I'M GLAD TO DO THAT.
`CAN I LOOK AT THE FIGURE WHILE I'M DOING THAT?
`PLEASE.
`CAN I MARK THIS ON HERE, IF I TOUCH IT? YES, OKAY.
`SO THIS IS BASICALLY A BENDING CURVE. A FILE
`IS BEING HELD AT ONE END AND THE SHANK IS BEING DEFLECTED.
`SO ON THE BOTTOM AXIS, THIS IS THE SHANK BEING DEFLECTED,
`IT GOES ALONG TO THE RIGHT; AND AS THE SHANK IS DEFLECTED,
`IT EMBARKS A FORCE, AND THAT'S WHAT'S MEASURED UP HERE ON
`THE RIGHT. SO THIS IS PLOTTING THE FLEXION OF THE SHANK
`AGAINST THE FORCE. SO YOU START DEFLECTING THE SHANK,
`AND, AS YOU EXPECT, THE FORCE STARTS GOING UP, AND THAT'S
`
`Q.
`A.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`40
`
`WHY THESE CURVES GO UP INTO THE RIGHT; AND THEN AT 8
`MILLIMETERS, THE TEST IS REVERSED. IT IS UNLOADING, AND
`THE, AND THE SHANK, REVERSE CURVE DOESN'T COME DOWN ON THE
`UNLOADING CURVE, THE UNLOADING CURVE IS A LITTLE BIT BELOW
`IT, SO IT KEEPS COMING DOWN AND COMING DOWN. I'M GOING TO
`FOLLOW THIS DOWN HERE. THIS WAS THE SHANK THAT WAS HEAT
`TREATED AT 400 DEGREES C, AND AS IT'S DEFLECTING AT 8, 7,
`6 MILLIMETERS. IT'S STILL IMPARTING A FORCE THAT CAN BE
`MEASURED SOMEWHERE AROUND ONE HALF BELOW ONE NEWTON; BUT
`DOWN RIGHT AROUND TO JUST BELOW 2, IT HITS THE X AXIS. SO
`WHAT THAT MEANS IS I'M STILL RUNNING THE TEST, AND I'M
`RETURNING TO THE ORIGINAL, BUT THE SHANK ITSELF IS NOT.
`IT'S NO LONGER IMPARTING A FORCE AT ABOUT 2 MILLIMETERS.
`IT MEANS IT'S BEEN PERMANENTLY BENT, SO I DEFLECTED AT 8
`MILLIMETERS, IT WAS ABLE TO APPLY A FORCE DOWN TO ABOUT 2.
`AT THAT POINT IT'S A PERMANENTLY BENT SHANK, SO THERE'S NO
`FORCE BEING IMPARTED AS I CONTINUE THE TEST.
`Q.
`NOW, THE LOAD IS REMOVED UNTIL HE REACHES ZERO;
`CORRECT?
`A.
`CORRECT.
`Q.
`IS IT STILL YOUR OPINION THAT FIGURE 6A FOR THE FILE
`THAT WAS HEAT TREATED AT 400 DEGREES STILL SHOWS PERMANENT
`DEFORMATION?
`A.
`YES.
`Q.
`HAS IT RETURNED TO ITS ORIGINAL STATE?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`41
`
`NO.
`A.
`WHERE DOES IT HIT THE X AXIS?
`Q.
`RIGHT AROUND 2.
`A.
`NOW, LET'S TALK ABOUT SOME OF THE CRITICISMS THAT
`Q.
`DR. LUEBKE EXPRESSED REGARDING YOUR RELIANCE ON THE KUHN
`REFERENCE. WOULD YOU TURN TO THE NEXT SLIDE.
`OKAY. WHAT THIS DOES THIS SLIDE DISCUSS?
`YES, SO DR. LUEBKE WAS CONCERNED BECAUSE HE SAID
`A.
`THAT IF THE SAMPLES RECOVERED THEIR ORIGINAL STATE, THAT
`THEY WOULD NOT BE CAPABLE OF MAINTAINING A 10 DEGREE
`PERMANENT DEFORMATION. HE SAID, NO, THEY RETURNED TO THE
`ORIGINAL STATE, SO, THEREFORE, THEY WEREN'T PERMANENTLY
`DEFORMED.
`Q.
`DO YOU BELIEVE THE HEAT TREATED ENDODONTIC FILE THAT
`WAS HEATED TO 400 DEGREES RETURNED TO ITS ORIGINAL STATE
`AFTER THE BEND TEST?
`A.
`NO.
`Q.
`LET'S TAKE A LOOK AT THE NEXT SLIDE. WHAT IS
`DISCLOSED ON THIS SLIDE?
`A.
`SO I'D BE GLAD TO EXPLAIN WHAT IS GOING ON. SO
`THERE'S TWO FIGURES IN THE KUHN PAPER. KUHN TESTED THREE
`TYPES OF FILES. HE TESTED NEW FILES, HE TESTED FILES THAT
`HAD BEEN USED CLINICALLY, AND THEN HE ALSO TESTED FILES
`THAT HAD BEEN HEAT TREATED; AND I THINK THESE -- THE
`RESULTS WERE SHOWN IN FIGURES 5 AND 6. AND WHAT DR.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`42
`
`LUEBKE WAS REFERRING TO IS THE DATA IN FIGURE 5, AND THE
`DATA IN FIGURE 5 WHERE THE FILES DO RETURN TO THEIR
`ORIGINAL STATE ARE THE NEW FILES AND THOSE THAT HAVE BEEN
`USED CLINICALLY, BUT THOSE HAVE NOT BEEN HEAT TREATED.
`THE ONES THAT WERE HEAT TREATED WERE REPORTED IN FIGURE 6,
`WHERE IT SHOWS THAT THE HEAT TREATING AT 400 DEGREES C
`RESULTED IN PERMANENT DEFORMATION.
`Q.
`THANK YOU, DR. GOLDBERG. AND THE KUHN REFERENCE
`THAT WE JUST DISCUSSED, THAT HAS BEEN PREVIOUSLY
`IDENTIFIED AS DOCUMENT ENTRY NUMBER 104 EXHIBIT R.
`AND EARLIER I DISCUSSED WITH DR. GOLDBERG AN
`AMENDMENT THAT WAS FILED BACK IN APRIL OF 2011, AND THAT
`WAS PREVIOUSLY IDENTIFIED AS COURT DOCUMENT NUMBER 104X.
`AND CAN WE TURN TO THE NEXT SLIDE. GO TO --
`ACTUALLY, WHY DON'T WE TURN TO THE FOLLOWING SLIDE. NEXT
`SLIDE, PLEASE. LET'S GO TO SLIDE 53. MOVE AHEAD, MOVE
`THINGS ALONG.
`OKAY. ON SLIDE 53, DR. GOLDBERG, DO YOU SEE
`THERE'S A REFERENCE TO MCSPADDEN?
`A.
`YES, I DO.
`Q.
`DO YOU HAVE AN OPINION AS TO WHETHER THIS REFERENCE
`IS RELEVANT TO THE CLAIM 1 OF THE '773 PATENT?
`A.
`YES, I DO.
`Q.
`WHAT IS YOUR OPINION?
`A.
`MY OPINION IS IT DESCRIBES THE '773 PATENT.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`43
`
`OKAY. LET'S TAKE A LOOK AT TAB 11 IN YOUR BINDER.
`Q.
`DO YOU RECOGNIZE THIS DOCUMENT?
`A.
`YES, THIS IS THE MCSPADDEN PATENT APPLICATION.
`Q.
`AND WHAT IS THE PUBLICATION DATE OF THE MCSPADDEN
`PUBLICATION?
`A.
`SEPTEMBER 26, 2002.
`Q.
`CAN YOU GENERALLY DESCRIBE WHAT MCSPADDEN DISCLOSES?
`A.
`YES. HE'S DESCRIBING A METHOD FOR MAKING ENDODONTIC
`FILES THAT HAVE CUTTING EDGES AND DESCRIBES ALSO THE IDEA
`OF HEAT TREATING THESE, HEAT TREATING THE FILES.
`Q.
`LET'S TAKE A LOOK AT THE NEXT SLIDE, WHAT'S
`DISCLOSED HERE?
`A.
`SO, AGAIN, THIS IS THE FORMAT I'VE BEEN USING, AND
`ON THE LEFT STEP A IS PROVIDING AN ELONGATED SHANK OF A
`SUPERELASTIC NICKEL-TITANIUM ALLOY, AND ON THE RIGHT IT'S
`SHOWING MCSPADDEN'S TEACHING. HE'S PROVIDING AN
`ENDODONTIC FILE THAT'S FABRICATED FROM A SUPERELASTIC
`ALLOY THAT'S NICKEL-TITANIUM, AND THAT'S IN PARAGRAPH 52
`OF MCSPADDEN.
`Q.
`LET'S TAKE A LOOK AT THE NEXT SLIDE, PLEASE. WHAT'S
`DISCLOSED HERE?
`A.
`RIGHT. SO THIS AGAIN NOW IS STEP B, THE HEAT
`TREATING STEP, AND THE RESULT IS THE PERMANENT
`DEFORMATION; AND ON THE RIGHT IS MCSPADDEN DESCRIBING
`THIS, THAT THE ENDODONTIC FILE WAS HEAT TREATED, AND THE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`44
`
`RESULT OF THAT HEAT TREATMENT WAS THAT THE FILE CAN BE
`PRE-CURVED; AND AS I'VE TALKED ABOUT BEFORE, THAT MEANS
`THAT IT COULD BE PERMANENTLY DEFORMED, AND THIS IS
`DESCRIBED IN PARAGRAPH 52 OF MCSPADDEN.
`MR. GINSBERG: FOR THE COURT'S INFORMATION,
`MCSPADDEN HAS BEEN PREVIOUSLY IDENTIFIED AS DOCKET ENTRY
`NUMBER 104 EXHIBIT U.
`THE COURT: DR. GOLDBERG, DO YOU EQUATE
`PRE-CURVED WITH PERMANENTLY DEFORMED, IS THAT WHAT YOU'RE
`DOING?
`A.
`YES, THE PRE-CURVING IS THE CLINICAL -- WE WANT TO
`BE ABLE TO FOLLOW IT DOWN THE SHAPE OF THE CURVED CANAL.
`TO BE ABLE TO PRE-CURVE THE MATERIAL IN ENGINEERING TERMS
`MEANS IT IS TO BE PERMANENTLY DEFORMED, SO PERMANENTLY
`DEFORMED IS THE ENGINEERING TERM FOR BEING ABLE TO
`PRE-CURVE A FILE, WOULD BE THE CLINICAL EXPRESSION.
`THE COURT: OKAY.
`NOW, DR. GOLDBERG, DOES THE MCSPADDEN REFERENCE
`Q.
`DISCLOSE A TEMPERATURE AT WHICH THE HEAT TREATMENT SHOULD
`OCCUR?
`A.
`NO, IT DOES NOT.
`Q.
`NOW, WOULD A PERSON SKILLED IN THE ART HAVE KNOWN
`THE TEMPERATURE TO HEAT TREAT A FILE TO ALLOW IT TO BE
`PRE-CURVED?
`A.
`YES.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`45
`
`IS THAT'S WHAT'S DISCLOSED ON THIS SLIDE, SIR?
`Q.
`YES. SO THESE ARE EXAMPLES OF OTHER PRIOR ART. IT
`A.
`REFERENCES MIURA, AND AT PAGE 4 MIURA GIVES THE
`TEMPERATURES IN THE SAME RANGE, 200 TO 600 DEGREES. THE
`REFERENCE BY KHIER SPECIFICALLY SAYS SUPERELASTICITY WAS
`LOST WHEN HEAT TREATING AT 600 DEGREES. SO FROM THESE
`EXAMPLES YOU WOULD KNOW YOU NEED TO BE SOMEWHERE IN THIS
`TEMPERATURE RANGE OF ABOUT 400 DEGREES.
`Q.
`YOU MENTIONED THE KHIER REFERENCE. I BELIEVE THAT'S
`LOCATED AT TAB 14 OF YOUR BINDER. DO YOU SEE IT THERE?
`A.
`YES. WELL, I'LL GET THERE, SORRY.
`YES.
`AND WHEN WAS THE KHIER REFERENCE PUBLISHED?
`KHIER WAS PUBLISHED IN 1991.
`MR. GINSBERG: AND THIS HAS BEEN PREVIOUSLY
`IDENTIFIED IN SUBMISSIONS OF THIS CASE AS DOCKET ENTRY
`NUMBER 104 EXHIBIT AC.
`IN YOUR BINDER, DR. GOLDBERG, THERE'S ALSO
`REFERENCE TO THE GIL PUBLICATION, DO YOU SEE THAT? IT'S
`IN TAB 16 OF YOUR BINDER.
`A.
`YES.
`Q.
`IF YOU'D LOOK AT THE FIRST PAGE OF GIL.
`A.
`YES.
`Q.
`YOU SEE THAT THIS REFERENCE IN THE TOP PORTION SAYS,
`"NITI SHAPE MEMORY ALLOYS SHOWING PSEUDOELASTIC BEHAVIOR
`
`Q.
`A.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`46
`
`HAVE GREAT POTENTIAL IN DENTAL AND ORTHOPEDIC
`APPLICATIONS," DO YOU SEE THAT?
`A.
`YES, I DO.
`Q.
`GOING DOWN TO THE LAST SENTENCE OF THAT ABSTRACT, IT
`SAYS, "THE AIM OF THIS WORK IS TO STUDY THE THERMAL AND
`MECHANICAL AGING OF A PSEUDOELASTIC NITI SHAPE MEMORY
`ALLOY," DO YOU SEE THAT?
`A.
`YES. I WOULD JUST ADD THAT PSEUDOELASTIC IS THE
`SAME AS SUPERELASTIC.
`Q.
`IF WE TURN TO PAGE 405 OF THE GIL REFERENCE AND TAKE
`A LOOK AT THE SECOND COLUMN.
`A.
`UH-HUH.
`Q.
`GET THERE IN A MINUTE ON THE SCREEN.
`YOU SEE A LITTLE MORE THAN HALFWAY DOWN OF THAT
`REFERENCE IT SAYS, "HEAT TREATMENT AT 500 DEGREES C AND
`600 DEGREES" -- ARE YOU --
`A.
`NO, I'LL READ THE SENTENCE.
`Q.
`THAT'S OKAY.
`A.
`THE SLIDE WAS ON PAGE 404.
`Q.
`LET'S GO TO PAGE 405. WE WERE AT A DIFFERENT SPOT.
`IN THE NEXT PARAGRAPH THAT'S SHOWN -- WELL, DO YOU SEE
`THERE'S A PARAGRAPH THAT BEGINS "AT LOW ANNEALING
`TEMPERATURES," DO YOU SEE THAT?
`A.
`YES.
`Q.
`IF YOU'LL GO DOWN A LITTLE MORE THAN HALFWAY.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`47
`
`I CAN FOLLOW IT IN MY BOOK.
`A.
`HERE YOU GO, THE SENTENCE THAT SAYS, "AFTER 6H HEAT
`Q.
`TREATMENT AT 500 DEGREES C AND 600 DEGREES C" -- WITHDRAW.
`THE STATEMENT STATES, "AFTER 6H HEAT TREATMENT AT 500
`DEGREE C AND 600 DEGREE C, THE SAMPLES LOST THE SHAPE
`MEMORY AND PSEUDOELASTIC EFFECTS." DO YOU SEE THAT?
`A.
`YES.
`Q.
`ARE 500 DEGREES C AND 600 C DEGREES IN THE SAME
`RANGE AS THE '773 PATENT?
`A.
`YES.
`Q.
`DID THE NICKEL-TITANIUM ALLOY EXPOSED IN GIL LOSE
`ITS PSEUDOELASTIC EFFECT?
`A.
`YES.
`Q.
`AND PSEUDOELASTIC IS THE SAME AS SUPERELASTIC?
`A.
`YES.
`MR. GINSBERG: THAT WAS 104 SLIDE AE.
`GOING NEXT TO THE SLIDE. CAN YOU SUMMARIZE YOUR
`Q.
`OPINION REGARDING WHETHER THE MCSPADDEN REFERENCE RENDERS
`CLAIM 1 INVALID?
`A.
`YES. MCSPADDEN TEACHES THE USE OF THE, TAKING A
`SUPERELASTIC NICKEL-TITANIUM FILE, AND IT CAN BE
`PRE-CURVED; AND HE WOULD -- IF YOU WANTED TO KNOW THE
`PARTICULAR TEMPERATURES, YOU CAN GO TO REFERENCES WHICH
`WE'VE BEEN CITING.
`Q.
`NOW, DR. LUEBKE ALSO HAD SOME CRITICISMS OF YOUR
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`48
`
`RELIANCE ON THE MCSPADDEN REFERENCE; CORRECT?
`A.
`YES.
`Q.
`WHAT'S SHOWN ON THIS SLIDE?
`A.
`YES. THIS WAS ONE OF DR. LUEBKE'S CRITICISMS. HE
`IS SAYING THAT MCSPADDEN REALLY WAS DIRECTED TOWARDS
`TAKING SUPERELASTIC ALLOYS AND MAKING THEM HARDER AND
`STIFFER.
`Q.
`TURNING TO THE NEXT SLIDE. DO YOU AGREE WITH DR.
`LUEBKE'S CRITICISM?
`A.
`NO.
`Q.
`AND WHY NOT?
`A.
`WELL, BECAUSE MCSPADDEN ALSO TEACHES MAKING THEM
`MORE FLEXIBLE, SO HE TEACHES BOTH DIRECTIONS, HOW TO MAKE
`IT HARDER AND STIFFER, AS WELL AS HOW TO MAKE IT MORE
`FLEXIBLE.
`Q.
`NOW, DR. GOLDBERG, YOU'VE TESTIFIED THAT A NUMBER OF
`REFERENCES MEET THE PERMANENT DEFORMATION OF THE WHEREIN
`CLAUSE OF THE '773 PATENT; CORRECT?
`A.
`YES.
`Q.
`DID ANY OF THOSE REFERENCES SPECIFICALLY DISCLOSE 10
`DEGREES OF PERMANENT DEFORMATION AFTER APPLICATION OF THE
`ISO 3630-1 BEND TEST?
`A.
`NO.
`Q.
`DOES THE FACT THAT THE REFERENCES DO NOT
`SPECIFICALLY DISCLOSE 10 DEGREES OF PERMANENT DEFORMATION
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`49
`
`MEASURED BY THE ISO 3630-1 BEND TEST AFFECT YOUR OPINIONS
`REGARDING THE PRIOR ART?
`A.
`NO.
`Q.
`AND WHY NOT?
`A.
`THAT'S BECAUSE THE ISO 3630 IS -- DOES NOT ACTUALLY
`INCLUDE A TEST FOR MEASURING PERMANENT DEFORMATION, IT'S A
`TEST FOR MEASURING STIFFNESS AND FLEXIBILITY; SO IF SOME-
`ONE WAS GOING TO FOCUS ON MEASURING PERMANENT DEFORMATION,
`THERE'S NO REAL MOTIVATION TO USE 3630. IT DOESN'T, IT
`DOESN'T CALL FOR THAT; AND MOST OF THE OTHER REFERENCES
`POINT OUT THAT YOU CAN, AS A RESULT OF THE HEAT TREATING,
`YOU CAN PRE-CURVE OR PERMANENTLY DEFORM THE SAMPLES.
`Q.
`AND IF YOU ARE ABLE TO PRE-CURVE THE SAMPLE, WOULD
`THAT MEET THE WHEREIN CLAUSE LIMITATION OF PERMANENT
`DEFORMATION?
`A.
`YES.
`Q.
`OKAY. LET'S TAKE A LOOK AT THE NEXT SLIDE. NOW,
`WE -- I'M SORRY, WE CAN GO TO SLIDE 65. MOVE AHEAD, MOVE
`THINGS ALONG.
`NOW, WE'VE DISCUSSED A NUMBER OF PRIOR ART
`REFERENCES. IN YOUR OPINION WOULD A PERSON SKILLED IN THE
`ART HAVE BEEN MOTIVATED TO COMBINE THE PRIOR ART
`REFERENCES THAT YOU JUST DISCUSSED IN CLAIM 1 OF THE '773
`PATENT?
`A.
`YES.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`50
`
`AND LET'S TURN TO THE NEXT SLIDE. WHY IS THAT?
`Q.
`WELL, IT WAS KNOWN AT THIS POINT WHAT THE PROBLEMS
`A.
`WERE WITH THE ENDODONTIC FILES, AND THAT MAINLY HAD TO DO
`WITH HOW YOU'RE GOING TO INSTRUMENT OR DEAL WITH THE
`CURVED CANALS. SO IT WAS KNOWN THAT ONE WAY TO OVERCOME
`THAT IS TO PRE-CURVE THE FILES, AND THAT WAS TAUGHT IN A
`COUPLE OF THE REFERENCES. AND IT WAS ALSO KNOWN THAT YOU
`COULD ELIMINATE THE SUPERELASTICITY OF THE ENDODONTIC
`FILES BY THE PROPER HEAT TREATMENT. SO ONE WOULD BE
`MOTIVATED, KNOWING THE PROBLEM AND KNOWING THAT YOU, HOW
`YOU CAN ELIMINATE THE SUPERELASTICITY, TO COMBINE THAT AND
`DO WHAT WAS KNOWN AT THE TIME.
`MR. GINSBERG: AND, YOUR HONOR, DEFENDANTS SEEK
`TO, SEEKS TO MOVE THESE SLIDES THAT ARE BEHIND TAB 1 OF
`DR. GOLDBERG'S BINDER INTO EVIDENCE.
`THE COURT: ALL RIGHT.
`MR. LIEBERMAN: WE OBJECT TO THE SLIDES BEING
`ADMITTED INTO EVIDENCE. THEY'RE DEMONSTRATIVE FOR THE
`COURT TO LOOK AT.
`THE COURT: THEY'LL BE MARKED FOR ID AS
`DEMONSTRATIVE EXHIBITS.
`MR. GINSBERG: JUST LIKE PLAINTIFFS'?
`THE COURT: JUST LIKE PLAINTIFFS'.
`ONE LAST QUESTION FOR YOU, DR. GOLDBERG, IS YOUR
`Q.
`COMPENSATION FOR YOUR WORK ON THIS MATTER DEPENDENT IN ANY
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`51
`
`WAY UPON THE OUTCOME OF THIS CASE?
`A.
`NO.
`Q.
`DO YOU HAVE A FINANCIAL INTEREST IN THE OUTCOME OF
`THIS LITIGATION?
`A.
`NO.
`
`MR. GINSBERG: THANK YOU, DR. GOLDBERG. I HAVE
`NO FURTHER QUESTIONS AT THIS TIME.
`THE COURT: WHY DON'T WE TAKE A SHORT RECESS
`BEFORE CROSS EXAMINATION.
`(RECESS AT 10:22 A.M., UNTIL 10:35 A.M.)
`THE COURT: OKAY. MR. LIEBERMAN, ARE YOU CROSS
`EXAMINING?
`MR. LIEBERMAN: I AM, YOUR HONOR.
`THE COURT: ALL RIGHT. YOU MAY PROCEED.
`MR. LIEBERMAN: THANK YOU.
`YOUR HONOR, I HAVE A BINDER OF CROSS
`DOCUMENTS.
`THE COURT: ALL RIGHT.
`CROSS EXAMINATION
`BY MR. LIEBERMAN:
`Q.
`GOOD MORNING, DR. GOLDBERG.
`A.
`GOOD MORNING.
`Q.
`I'D LIKE TO START WITH JUST AN OVERVIEW OF A COUPLE
`OF POINTS THAT I THOUGHT YOU HAD MADE. I WANT TO MAKE
`SURE THAT I UNDERSTAND IT.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`55
`
`WITHDRAWN. OTHER THAN ALAPATI AND GAO, DID YOU IDENTIFY
`IN YOUR DIRECT TESTIMONY ANY REFERENCES THAT YOU TESTIFIED
`ANTICIPATE CLAIM 1?
`A.
`I'D HAVE TO HONESTLY ANSWER THAT I JUST DON'T
`RECALL.
`Q.
`OKAY. NOW, IN YOUR REPORT AND YOUR DECLARATION, YOU
`TALKED ABOUT KUHN ANTICIPATING; CORRECT?
`A.
`YES.
`Q.
`BUT YOU DID NOT SAY EARLIER THIS MORNING THAT KUHN
`ANTICIPATES; CORRECT?
`A.
`I, I DON'T RECALL WHAT WE DISCUSSED ON KUHN.
`Q.
`ALL RIGHT. YOU WOULD RELY ON WHATEVER THE
`TRANSCRIPT IS OF YOUR TESTIMONY ON THAT POINT?
`A.
`YES.
`Q.
`YOU JUST DON'T REMEMBER WHETHER YOU TESTIFIED THAT
`ANYTHING ELSE ANTICIPATES?
`A.
`CORRECT.
`Q.
`OKAY. NOW, IN RESPONSE TO THE COURT'S QUESTION, AND
`I BELIEVE YOU WERE TALKING ABOUT MCSPADDEN, YOU SAID THAT
`YOU EQUATED PRE-CURVED WITH PERMANENT DEFORMATION; DO YOU
`REMEMBER THAT?
`A.
`YES.
`Q.
`NOW, YOU WERE HERE WHEN DR. SINCLAIR TESTIFIED
`YESTERDAY; CORRECT?
`A.
`YES.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`56
`
`AND HE GAVE A LITTLE DEMONSTRATION WITH A WIRE THAT
`Q.
`HAD BEEN SHAPE SET TO BE IN THE SHAPE OF A COIL;
`CORRECT?
`A.
`YES.
`Q.
`AND THEN HE PULLED THE COIL APART AND SHOWED THE
`DEFORMATION; CORRECT?
`A.
`YES.
`Q.
`AND THEN HE PUT THE FORMED COIL INTO HOT WATER, AND
`IT RESUMED ITS PRIOR SHAPE; CORRECT?
`A.
`YES.
`Q.
`AND THAT WAS, AS DR. SINCLAIR TESTIFIED, AN EXAMPLE
`OF WHAT'S CALLED SHAPE SETTING; CORRECT?
`A.
`YES. I THINK ABOUT IT AS SHAPE MEMORY.
`Q.
`SHAPE SETTING IS WHAT HE CALLED IT; CORRECT?
`A.
`I DON'T RECALL WHAT HE CALLED IT. AS I SAID, I
`THINK OF THAT CONCEPT AS SHAPE MEMORY.
`Q.
`AND YOU UNDERSTAND THAT WITH RESPECT TO ENDODONTIC
`INSTRUMENTS AND OTHER SORTS OF THINGS MADE OUT OF METAL,
`YOU CAN DO WHAT'S CALLED SHAPE SETTING; CORRECT?
`A.
`WELL, AGAIN, THEY'RE CALLED SHAPE MEMORY ALLOYS,
`SMA'S, SO I USE THAT PHRASE IN DESCRIBING WHAT WAS
`DEMONSTRATED IN THE DEMONSTRATION THAT YOU DESCRIBED.
`Q.
`AND YOU UNDERSTAND THAT YOU CAN TAKE SUPERELASTIC
`MATERIAL AND SHAPE THAT SUPERELASTIC MATERIAL INTO A
`PARTICULAR SHAPE, SO THAT THAT'S THE SHAPE AT REST BEFORE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`57
`
`ANY FORCES ACT ON IT; CORRECT?
`A.
`WELL, AGAIN, IF YOU'RE ASKING ME THE WAY I THINK
`ABOUT IT, I SEPARATE THE SUPERELASTICITY FROM THE SHAPE
`MEMORY EFFECT. IT CAN HAVE SUPERELASTIC EFFECTS, IT CAN
`HAVE SHAPE MEMORY, SO YOUR DESCRIPTION COMBINED THOSE
`TERMS.
`Q.
`YEAH, I'D LIKE YOU, IF YOU CAN, TO TRY TO ANSWER MY
`QUESTION.
`A.
`OKAY.
`Q.
`YOU KNOW WHAT SUPERELASTIC MATERIALS ARE; CORRECT?
`A.
`YES.
`Q.
`OKAY, AND YOU KNOW, FOR EXAMPLE, IN THIS CASE
`THERE'S SOME FILES THAT ARE SUPERELASTIC; CORRECT?
`A.
`YES.
`Q.
`AND BY THE WAY, DR. SINCLAIR -- WELL, LET'S TAKE HIS
`LITTLE COIL.
`A.
`OKAY.
`Q.
`YOU AGREE THAT THE, THE, THE LITTLE COIL WAS MADE
`OUT OF SUPERELASTIC MATERIALS; CORRECT?
`A.
`WELL, IN THAT DEMONSTRATION I WOULD REFER TO THOSE
`AS IN THEIR SHAPE MEMORY, AS USING THE SHAPE MEMORY
`EFFECT; THAT WAS THE WHOLE POINT OF PUTTING IT IN THE
`WATER, AND THAT'S HOW THAT'S COMMONLY REFERRED TO.
`Q.
`LET'S DO IT THIS WAY, LET'S TALK ABOUT ENDODONTIC
`FILES; BUT BEFORE WE JUMP INTO THAT, I JUST WANT TO MAKE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`99
`
`UH-HUH.
`A.
`COULD YOU TELL THE COURT WHAT AN ISO STANDARD IS IN
`Q.
`THE CONTEXT OF ENDODONTICS INSTRUMENTS?
`A.
`SURE. IT'S AN INTERNATIONAL STANDARDS ORGANIZATION,
`THERE'S A COUPLE OF SUCH ORGANIZATIONS, AND THEIR JOB IS
`TO BRING UNIFORMITY ACROSS THE LABORATORIES AND MANU-
`FACTURERS FOR DOING EVALUATIONS OR JUST GETTING UNIFORMITY
`IN THE INDUSTRY TO, I GUESS, MAKE IT EASIER FOR EVERYBODY,
`THE CONSUMERS AND THE MANUFACTURERS.
`Q.
`AND ISO STANDARDS ARE LOOKED TO BY DENTISTS AND
`ENDODONTISTS AS SORT OF THE STANDARD WAY OF DOING THINGS
`IN THE INDUSTRY; CORRECT?
`A.
`WELL, I WOULD ALSO INCLUDE IN THAT CATEGORY IN THE
`INDUSTRY THE AMERICAN DENTAL ASSOCIATION STANDARDS, THE
`AMERICAN SOCIETY FOR TESTING AND MATERIALS, THEIR
`STANDARDS; BUT THEY ALL HAVE THE SAME GOAL OF TRYING TO
`MAKE UNIFORM METHODS SO THAT PROPERTIES CAN BE COMPARED.
`Q.
`OKAY. AND THE ISO 3630 STANDARD IS ONE OF THE
`STANDARD WAYS OF CONDUCTING BENDING TESTS; CORRECT?
`A.
`CORRECT.
`Q.
`AND THIS IS ONE OF THE BIG THINGS THAT PEOPLE LOOK
`AT TO DETERMINE HOW YOU DO A BENDING TEST; CORRECT?
`A.
`WELL, FOR ENDODONTIC FILES, YES.
`Q.
`AND I BELIEVE YOU TESTIFIED ON YOUR DIRECT THAT NONE
`OF THE REFERENCES UPON WHICH YOU RELY DISCLOSE A BENDING
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`100
`
`TEST CONDUCTED IN ACCORDANCE WITH THIS ISO STANDARD; IS
`THAT RIGHT?
`A.
`YES.
`Q.
`AND YOU CAN SEE FROM THE CLAIM -- IF I MIGHT
`APPROACH THE POSTER, YOUR HONOR.
`THE COURT: YOU MAY.
`-- THAT THERE'S ACTUALLY A CLAIM ELEMENT WITH
`Q.
`RESPECT TO THIS ISO STANDARD; CORRECT?
`A.
`CORRECT.
`Q.
`AND KUHN DIDN'T DISCLOSE TESTING ACCORDING TO THAT
`STANDARD; CORRECT?
`A.
`NO.
`Q.
`NOW, THE KUHN REFERENCE THAT YOU TALKED ABOUT, IT
`DOESN'T TELL US ANYTHING ABOUT WHAT KIND OF BENDING
`MACHINE WAS USED AT ALL; CORRECT?
`A.
`CORRECT.
`Q.
`IT DOESN'T TELL US ANYTHING ABOUT WHAT KIND OF
`PROTOCOL WAS USED TO DO THE BENDING; CORRECT?
`A.
`CORRECT.
`Q.
`AND KUHN TESTED ONE SAMPLE, N EQUALS 1; RIGHT?
`A.
`I DON'T RECALL THAT, I HEARD THAT; AND IF THAT'S
`WHAT IT IS, THEN THAT'S WHAT IT IS.
`Q.
`AND YOU'RE AWARE THAT THE KUHN TEST, THAT KUHN
`DESCRIBED HIS OWN TESTING METHODS AS QUALITATIVE AND NOT
`QUANTITATIVE; CORRECT?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`101
`
`YES, HE -- YES, I REMEMBER THAT THAT'S IN HIS
`A.
`PAPER.
`Q.
`HE SAID THE RESULTS OF HIS TESTING ARE DISCUSSED
`ONLY IN A QUALITATIVE ANALYSIS AND NOT A QUANTITATIVE
`ANALYSIS; CORRECT?
`A.
`THAT WAS IN THE TEXT, BUT HE DID PRESENT THE DATA,
`WHICH HE WAS OF COURSE -- SORRY.
`Q.
`I JUST WANT TO FOCUS ON WHAT HE SAID.
`A.
`OKAY.
`Q.
`LET'S TAKE A LOOK. THIS IS AT EXHIBIT 20 IN YOUR
`CROSS BINDER. IT'S THE KUHN REFERENCE.
`A.
`EXHIBIT 20, OKAY.
`Q.
`AND I'M GOING TO PUT IT UP ON THE SCREEN HERE.
`A.
`OKAY.
`Q.
`KUHN SAYS --
`A.
`I'M SORRY.
`Q.
`SORRY. IF YOU'LL LOOK AT PAGE 717 OF THE KUHN
`REFERENCE.
`A.
`I'M WITH YOU, OKAY.
`Q.
`THIS IS IN THE METHODOLOGY SECTION OF THE PAPER;
`CORRECT?
`A.
`YES.
`Q.
`AND A GOOD SCIENTIFIC PAPER OFTEN DESCRIBES THE
`METHODOLOGY FIRST SO YOU KNOW HOW TO, HOW TO READ WHAT
`COMES AFTER IT?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`102
`
`RIGHT, BUT I FOUND KUHN A LITTLE DEFICIENT THAT
`
`A.
`WAY.
`AND IN THE METHODOLOGY SECTION OF THE BENDING TESTS,
`Q.
`HE DESCRIBES THE BENDING TESTS AND WHAT ONE CAN TAKE AWAY
`FROM THOSE BENDING TESTS; CORRECT?
`A.
`YES.
`Q.
`AND WHAT HE SAYS IS THE RESULTS ARE DISCUSSED ONLY
`IN A QUALITATIVE ANALYSIS AND NOT A QUANTITATIVE ANALYSIS
`BECAUSE OF THE SHAPE OF THE INSTRUMENTS, RANGE AND MACHIN-
`ING DESIGN, WHICH PREVENTS ANY CALCULATION. YOU SEE THAT?
`A.
`YES.
`Q.
`SO HE'S TELLING US THAT HIS TEST RESULTS, YOU CAN'T
`ATTRIBUTE ANY QUANTITATIVE ASPECT TO HIS TEST RESULTS;
`CORRECT?
`A.
`WELL, WHAT HE'S SAYING IS THE REASON THAT HE'S
`TALKING ABOUT THE RANGE AND THE MACHINE DESIGN IS THAT THE
`SHAPE OF THE FILES IS COMPLEX, SO TYPICALLY YOU'D HAVE TO
`MEASURE A CROSS SECTIONAL AREA; SO HE SAID THAT PREVENTED
`HIM FROM DOING THE CALCULATIONS, SO AS A RESULT HE WAS
`DESCRIBING THINGS QUALITATIVELY.
`Q.
`RIGHT, AND THIS MORNING I BELIEVE YOU TESTIFIED WHEN
`YOU LOOKED AT, WHAT WAS IT -- IS IT FIGURE 6A --
`A.
`YES.
`Q.
`-- THIS MORNING, THAT YOU THOUGHT THAT THAT LINE HIT
`THE X AXIS AT ABOUT 2?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`103
`
`CORRECT.
`A.
`REMEMBER IN YOUR DEPOSITION YOU SAID AT ONE POINT IT
`Q.
`WAS ONE AND A HALF?
`A.
`WELL, THE, THE --
`Q.
`PLEASE JUST TRY AND ANSWER MY QUESTION.
`A.
`I'M SORRY. MY RECOLLECTION IS THAT THERE WAS MUCH
`DISCUSSION ABOUT WHERE IT HIT THE AXIS, AND I DON'T
`REMEMBER EXACTLY WHICH, I THINK I GOT CLARIFIED TOWARDS
`THE END OF THE DEPOSITION.
`Q.
`RIGHT. BUT AT ONE POINT IN THE DEPOSITION, YOU SAID
`IT WAS .5, AND THEN ANOTHER POINT YOU SAID IT WAS MAYBE 1,
`AND THEN YOU SAID MAYBE IT WAS 1.5; IS THAT RIGHT?
`A.
`I WAS TRYING TO --
`Q.
`COULD YOU PLEASE JUST TRY TO ANSWER MY QUESTION.
`A.
`I DON'T REMEMBER WHAT EXACTLY IT WAS, I DO REMEMBER
`THAT I WAS AGREEING WITH THE QUESTIONS FROM THE ATTORNEY
`AND TRYING TO -- WE WERE HAVING DIFFERENCES OF OPINION
`ABOUT WHERE THAT ACTUALLY WAS, SO WE WERE DISCUSSING WHERE
`IT MIGHT -- WHERE IT WAS ACTUALLY TAKEN.
`Q.
`RIGHT, BECAUSE IT'S ACTUALLY VERY HARD TO TELL FROM
`THIS DIAGRAM EXACTLY WHERE THE LINE HITS?
`A.
`WELL, I DISAGREE WITH THAT, AND THAT'S THE POINT I
`WAS TRYING TO MAKE IN MY DEPOSITION.
`Q.
`BY THE WAY, AS A SCIENTIST, WHEN YOU'RE DEALING WITH
`A EXPERIMENT THAT'S DESCRIBED BY THE AUTHOR AS QUALITATIVE
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`104
`
`RATHER THAN QUANTITATIVE --
`A.
`YES.
`Q.
`-- AND THE N EQUALS 1 -- AND, BY THE WAY, THERE ARE
`NO ERROR BARS HERE; ARE THERE?
`A.
`NO.
`Q.
`NORMALLY THERE ARE ERROR BARS IN A QUANTITATIVE
`ANALYSIS?
`A.
`YES.
`Q.
`AND CERTAINLY KUHN DOESN'T SAY ANYTHING ABOUT THE
`ISO STANDARD; CORRECT?
`A.
`CORRECT.
`MR. LIEBERMAN: YOUR HONOR, COULD I HAVE A
`MOMENT TO CONSULT WITH MY COLLEAGUES TO SEE IF I CAN
`STREAMLINE THIS.
`THE COURT: YOU MAY.
`MR. LIEBERMAN:
`Q.
`LOOKING AT THE MCSPADDEN REFERENCE THAT YOU TALKED A
`LITTLE BIT ABOUT THIS MORNING, YOU WILL AGREE THAT THERE
`ARE MANY PLACES IN THE MCSPADDEN REFERENCE THAT TOUT THE
`DESIRABILITY OF A STIFFER SUPERELASTIC NICKEL-TITANIUM
`ENDODONTIC FILE; CORRECT?
`A.
`CORRECT.
`Q.
`AND YOU AGREE THAT THAT IS THE OPPOSITE OF DR.
`LUEBKE'S INVENTION; CORRECT?
`A.
`CORRECT.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`105
`
`AND YOU'VE SEEN IN MANY OF THE PRIOR ART REFERENCES
`Q.
`UPON WHICH THE DEFENDANTS HAVE RELIED THAT THERE'S THE
`SPECIFIC PRAISE FOR AND TOUTING OF THE DESIRABILITY OF
`SUPERELASTICITY; CORRECT?
`A.
`CORRECT.
`Q.
`AND THAT IS THE OPPOSITE OF DR. LUEBKE'S INVENTION,
`WHICH IS TO DECREASE SUPERELASTICITY IN ENDODONTIC FILES
`TO FIX A PARTICULAR PROBLEM; CORRECT?
`A.
`CORRECT.
`MR. LIEBERMAN: I HAVE NO FURTHER QUESTIONS,
`YOUR HONOR.
`THE COURT: REDIRECT?
`MR. GINSBERG: I HAVE NOTHING FURTHER FROM THIS
`
`WITNESS.
`
`THE COURT: ALL RIGHT. DR. GOLDBERG, THANK YOU
`VERY MUCH. YOU MAY BE EXCUSED.
`A.
`THANK YOU.
`THE COURT: ALL RIGHT, MR. GINSBERG, LET'S GET
`STARTED WITH YOUR NEXT WITNESS.
`MR. GINSBERG: I'M GOING TO TURN IT OVER TO MR.
`BERKOWITZ.
`THE COURT: ALL RIGHT, MR. BERKOWITZ.
`MR. BERKOWITZ: YOUR HONOR, THE DEFENDANT CALLS
`DR. JEFFREY STEC.
`JEFFREY STEC, DEFENDANT'S WITNESS, SWORN
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`129
`
`WELL, IT'S MY UNDERSTANDING THAT THERE ARE AT LEAST
`A.
`A COUPLE OF NON-FRINGING ALTERNATIVES, AND I'VE PREPARED A
`SLIDE TO GO THROUGH THOSE IN GREATER DETAIL, BUT I'LL
`EXPLAIN WHAT I MEAN BY NON-INFRINGING ALTERNATIVE. IT'S
`BASICALLY A FILE THAT ALLOWS EDGEENDO TO CONTINUE TO SELL
`A PARTICULAR, OR THIS PARTICULAR FILE WITHOUT INFRINGING
`THE PATENT IN SUIT.
`Q.
`CAN WE GO TO SLIDE 8.
`IS THIS WHAT YOU WERE REFERRING TO, DR. STEC?
`YES. THIS WAS THE SUMMARY SLIDE I WAS THINKING
`
`A.
`OF.
`OKAY, SO CAN YOU EXPLAIN THIS, WHAT'S SHOWN HERE?
`Q.
`SURE. IN THE FIRST BULLET POINT I MENTION TWO
`A.
`PARTICULAR FILES THAT I UNDERSTAND THAT US ENDO MANU-
`FACTURES AND THAT EDGEENDO SELLS. IT'S MY UNDERSTANDING
`BOTH THE X3 FILE AND THE XR FILE ARE NON-ACCUSED
`ALTERNATIVES. THE X3 FILE OPERATES IN THE MARKETPLACE
`ALONG WITH THE X1 FILE, THE X5 FILE, THE X7 FILE; AND
`BASED ON MY UNDERSTANDING, IT'S A COMPARABLE FILE IN THE
`SENSE THAT IT COULD REPLACE THE X5 OR X7 FILE FOR AT LEAST
`SOME OF THE CUSTOMERS.
`Q.
`OKAY. WHAT IS THE RELEVANCE OF THE EXISTENCE OF
`AVAILABLE NON-INFRINGING ALTERNATIVES IN THE ANALYSIS THAT
`YOU DID?
`A.
`WELL, IN MY MIND THE EXISTENCE OF NON-INFRINGING
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`131
`
`CAN YOU EXPLAIN WHAT'S ON SLIDE 9?
`Q.
`SURE. AND IT TAKES A LITTLE BIT OF EXPLAI
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
