`
`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
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`GOLD STANDARD
`SUBSTITUTE EXHffiiT 2002
`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.
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`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
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`37
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`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
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`38
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`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
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`39
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`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.
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`40
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`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?
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`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.
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`42
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`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.
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`43
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`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
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`44
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`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.
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`45
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`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.
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`46
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`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.
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`47
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`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
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`48
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`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
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`
`
`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
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`11
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`
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`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
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`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
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`
`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
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`
`
`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
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`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
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`
`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
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`
`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?
`
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`
`
`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
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`
`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?
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`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
`
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`
`
`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.
`
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`
`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
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`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
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`131
`
`CAN YOU EXPLAIN WHAT'S ON SLIDE 9?
`Q.
`SURE. AND IT TAKES A LITTLE BIT OF EXPLAINING TO
`A.
`UNDE