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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GREENEVILLE
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`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
`9:16A.M.
`VOLUME II
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
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`GOLD STANDARD
`2ND SUBSTITUTE EXHIBIT 2002
`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
`9:16A.M.
`VOLUME II
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
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`GOLD STANDARD
`2ND SUBSTITUTE EXHIBIT 2002
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-00632
`
`
`
`2
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`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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`(CALL TO ORDER OF THE COURT AT 9:16 A.M.)
`THE COURT: GOOD MORNING. I HOPE YOU ALL HAD A
`GOOD NIGHT LAST NIGHT. SOMETIMES OUT-OF-TOWN LAWYERS TELL
`ME IT'S SO QUIET IN GREENEVILLE, THEY CAN'T SLEEP.
`HOPEFULLY YOU DIDN'T EXPERIENCE THE SAME PROBLEM.
`ALL RIGHT. I UNDERSTAND THERE'S A PRELIMINARY
`ISSUE BEFORE WE GO FORWARD THIS MORNING?
`MR. GINSBERG: YOUR HONOR, I DO HAVE A COUPLE
`OF PRELIMINARY HOUSEKEEPING MATTERS.
`THE COURT: YES.
`MR. GINSBERG: ONE OF WHICH CONCERNS THE
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`EXHIBITS.
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`GO AHEAD.
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`THE COURT: I GAVE THAT SOME THOUGHT OVERNIGHT,
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`MR. GINSBERG: ONE OF THE THINGS IS I THINK
`YOUR HONOR MOVED 100 TO 127 INTO EVIDENCE, THAT WAS A
`CROSS EXAMINATION BINDER THAT WAS NOT INTENDED TO BE MOVED
`INTO EVIDENCE, SO WE WOULD JUST --
`THE COURT: LET ME TELL YOU WHAT MY THOUGHT IS
`NOW THAT I, I WENT BACK AND LOOKED AT WHAT YOU HAD FILED
`AS ATTACHMENTS TO VARIOUS PLEADINGS AND WHAT'S IN THE
`RECORD AND WHAT'S NOT. AS FAR AS I CAN TELL, THERE ARE --
`WAS IT FOUR OR FIVE THAT I ADMITTED CONDITIONALLY FOR THE
`PLAINTIFFS? EITHER FOUR OR FIVE EXHIBITS.
`MS. MILLER: YEAH, FOUR OR FIVE.
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`THE CLERK: I BELIEVE THERE WAS FIVE, YOUR
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`HONOR.
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`THE COURT: FIVE, AND THERE WAS ONE ON THE
`DEFENDANT'S OFFER. HERE'S WHAT I'D SUGGEST TO YOU, I
`THINK THE SUGGESTION YESTERDAY THAT YOU GIVE ME A CROSS
`REFERENCE, A GUIDE TO FIND THOSE IN THE RECORD, AND THEN
`PUT THAT IN THE RECORD SO THE SIXTH CIRCUIT WILL HAVE THE
`SAME GUIDE IS APPROPRIATE. JUST TELL ME WHERE I WILL FIND
`IN THE RECORD THE DOCUMENT BEHIND TAB 7 IN THIS NOTEBOOK,
`FOR INSTANCE, AND THERE ARE MANY DUPLICATES IN HERE, AND
`THEN THE NOTEBOOKS DON'T NEED TO BE ADMITTED INTO EVI-
`DENCE; AND AS FAR AS THE SIX EXHIBITS THAT WERE NEW THAT
`HAD NOT BEEN DISCLOSED THAT HAD BEEN ADMITTED CONDITION-
`ALLY, BEFORE YOU LEAVE, YOU NEED TO MAKE SURE THAT MS.
`HOPSON HAS EACH OF THOSE, AND WE WILL NUMBER THOSE 1
`THROUGH 6 AS EXHIBITS, HEARING EXHIBITS. DOES THAT MAKE
`SENSE?
`
`MR. GINSBERG: IT DOES, YOUR HONOR. WOULD YOU
`LIKE THE CROSS REFERENCE BEFORE YOU LEAVE OR IS THAT
`SOMETHING --
`THE COURT: NO, THAT'S SOMETHING YOU CAN
`PREPARE. IF THE WEATHER FORECAST IS RIGHT, YOU MAY NEED
`TO BE ANXIOUS TO GET OUT OF TOWN.
`MR. GINSBERG: OR WE MAY HAVE TIME.
`THE COURT: YEAH, OR YOU MAY HAVE TIME.
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`MR. GINSBERG: YOUR HONOR, THERE WAS SOMETHING
`I WANTED TO BRING UP DURING DR. SINCLAIR'S TESTIMONY
`YESTERDAY, SO MAY I APPROACH THE PODIUM?
`THE COURT: YES, YOU MAY.
`MR. GINSBERG: SO THIS CONCERNS DR. SINCLAIR'S
`OPINIONS THAT HE PROVIDED YESTERDAY CONCERNING CLAIMS,
`DEPENDENT CLAIMS OF THE '773 PATENT. NOW, BEFORE
`YESTERDAY DR. SINCLAIR DID NOT PROVIDE AN INFRINGEMENT
`ANALYSIS OF THE '773 PATENT OTHER THAN CLAIM 1. IF YOU
`LOOK AT HIS EXPERT REPORT THAT WAS SUBMITTED, HE SPECIFI-
`CALLY SAID THAT HE WAS FOCUSING HIS ANALYSIS ON CLAIM 1 OF
`THE '773 PATENT, SO THERE WAS NO REASON FOR US ENDODONTICS
`TO PROVIDE ANY ADDITIONAL NON-INFRINGEMENT POSITION OTHER
`THAN CLAIM 1.
`WHAT MR. LIEBERMAN POINTED TO YESTERDAY IN
`PARAGRAPH 32 IS DR. SINCLAIR SAID, "I RESERVE THE RIGHT TO
`ADDRESS ADDITIONAL CLAIMS IN THE FUTURE IF NECESSARY."
`WELL, IT WAS NOT NECESSARY BECAUSE IT WAS NEVER RAISED
`BEFORE. SO THIS SHOULD NOT BE A MOVING TARGET. THERE ARE
`17 CLAIMS IN THE '773 PATENT. NOW THEY PICK A FEW DEPEN-
`DENT CLAIMS THAT WE DID NOT HAVE TIME TO ADDRESS. THEY'RE
`SEEKING, THEY'RE ESSENTIALLY SEEKING AN UNUSUAL AND
`EXTREME STEP TO SHUT DOWN US ENDODONTICS, AND THEY SHOULD
`NOT BE ABLE TO CHANGE THE TARGET HERE AT THIS LATE HOUR.
`THE COURT: I ALSO LOOKED AT IT LAST NIGHT.
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`MR. LIEBERMAN, I CAN TELL YOU'RE ON YOUR FEET AND YOU WANT
`TO ADDRESS IT, I'LL LET YOU DO THAT. I READ THE MOTION
`FOR PRELIMINARY INJUNCTION LAST NIGHT. I LOOKED AT THE
`SUPPORTING MEMORANDUM. IT JUST GENERALLY CLAIMS INFRINGE-
`MENT OF THE '773 PATENT AND ASKS FOR AN INJUNCTION. THE
`MEMORANDUM THAT WAS FILED ADDRESSES ONLY CLAIM 1.
`JUST AS MR. GINSBERG JUST POINTED OUT -- EXCUSE
`ME, I'M IN PAIN, IF YOU ALL HAVE NOTICED ME DOING THAT. I
`HAVE A CERVICAL DISK PROBLEM THAT'S CAUSING ME A LOT OF
`PAIN, SO IT HAS NOTHING TO DO WITH YOU, MY FACIAL
`EXPRESSIONS HAVE NOTHING TO DO WITH YOU. DR. SINCLAIR'S
`REPORT, AS MR. GINSBERG JUST NOTED, DID NOT DWELL ON ANY
`OTHER CLAIMS THAN CLAIM 1. WHEN I CAME INTO THE
`COURTROOM, I THOUGHT THAT WAS THE FOCUS OF OUR HEARING.
`I THINK I WOULD PREFER TO HANDLE THAT THIS WAY,
`MR. GINSBERG, I WOULD PREFER YOU FILE A MOTION, ESSEN-
`TIALLY A MOTION IN LIMINE OR A MOTION TO STRIKE OR HOWEVER
`YOU WANT TO STYLE IT, TO DEAL WITH THOSE PORTIONS OF
`DR. SINCLAIR'S TESTIMONY, AND THAT THE PLAINTIFFS THEN
`HAVE A CHANCE TO RESPOND TO THAT, AND THEN I'LL DECIDE
`THAT IN THE COURSE OF DECIDING THE REQUEST FOR AN
`INJUNCTION.
`MR. GINSBERG: WE WILL DO THAT, YOUR HONOR.
`THANK YOU.
`THE COURT: MR. LIEBERMAN, I DON'T MEAN TO CUT
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`YOU OFF, BUT.
`MR. LIEBERMAN: THANK YOU, YOUR HONOR.
`YESTERDAY, YOUR HONOR HAD ADVISED THAT THE
`SCOPE OF THE ISSUES WOULD BE DEFINED BY THE PLEADINGS, THE
`COMPLAINT, THE MOVING PAPERS, ET CETERA, AND THE DEFENDANT
`HAD URGED THE COURT YESTERDAY THAT THERE WAS AN EXPRESS
`LIMITATION IN THE PLEADINGS JUST TO CLAIM 1 OF THE '773
`PATENT. WE TOLD THE COURT THAT WE BELIEVED THAT WAS NOT
`CORRECT.
`
`THE COURT: I DID NOT FIND THAT.
`MR. LIEBERMAN: WE LOOKED EXTENSIVELY, AND WE
`DIDN'T FIND IT EITHER, YOUR HONOR. IN FACT, WE SAW THE
`LANGUAGE WAS QUITE CAREFUL, ALTHOUGH THE FOCUS OF THE
`BRIEFING IS ON CLAIM 1, BECAUSE ALL OF THE ELEMENTS, ALL
`OF THE ELEMENTS ARE IN CLAIM 1, AND THEN CLAIMS 4 AND 5
`RELATE TO THE ATMOSPHERE. THOSE ARGUMENTS ARE THERE
`BECAUSE OF THE ARGUMENTS THAT THE DEFENDANT HAS MADE THAT
`YOUR HONOR SHOULD READ A LIMITATION INTO THE HEAT TREATING
`STEP IN CLAIM 1. IF YOUR HONOR DOESN'T READ THAT HEAT
`LIMITATION CONSTRUCTION IN OR THEIR ARGUMENT REGARDING
`LACK OF SUPPORT, THEN CLAIMS 4 AND 5 ARE IRRELEVANT; BUT
`IF YOUR HONOR WERE TO READ THAT LIMITATION IN, THEN CLAIMS
`4 AND 5 ARE ALTERNATIVE ARGUMENTS.
`NOW, THERE WAS NO LIMITATION IN THE PLEADING,
`THERE WAS NO LIMITATION ON THE MOVING PAPERS, ETC.; AND
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`DR. SINCLAIR DID SAY IN PARAGRAPH 70 OF HIS REPORT, "FOR
`THE SAME REASON IT IS ALSO MY OPINION THAT SEVERAL OF THE
`DEPENDENT CLAIMS OF THE '773 PATENT ARE ALSO INFRINGED."
`NOW, WE DIDN'T GO INTO IT IN ANY DETAIL, BUT THAT'S
`BECAUSE THE FOCUS OF THEIR DEFENSE HAS BEEN NOW URGING THE
`COURT TO READ IN THIS CLAIM 1 LIMITATION, THAT'S WHY IT
`BECAME RELEVANT.
`NOW, OF COURSE, 4 AND 5 ARE ALSO RELEVANT FOR
`DA CLAIM DIFFERENTIATION PURPOSES OF HOW THE COURT SHOULD
`CONSTRUE CLAIM 1, AND -- BUT WE ALSO HAVE INDEPENDENT
`INFRINGEMENT ARGUMENTS WITH RESPECT TO THOSE TWO CLAIMS,
`NOTING THAT THAT WAS NOT THE FOCUS OF THE BRIEF.
`THE COURT: WELL, AND THOSE ARE ALL KINDS OF
`THINGS THAT YOU SHOULD POINT OUT TO ME IN YOUR RESPONSIVE
`PLEADING. AS A GENERAL RULE, THERE IS A WAIVER OF AN
`ARGUMENT THAT'S ONLY REFERRED TO AS A PERFUNCTORY MATTER
`OR NOT LAID OUT IN THE BRIEFS. I DON'T KNOW HOW THAT WILL
`PLAY OUT HERE, BUT IT'S CLEAR TO ME THAT ANY FOCUS OTHER
`THAN ON CLAIM 1 HAS JUST BEEN IN PASSING AND A VERY MUCH
`PERFUNCTORY APPROACH TO IT, BUT I'D RATHER HAVE YOUR
`ARGUMENTS IN WRITING ON THAT.
`MR. LIEBERMAN: THANK YOU, YOUR HONOR.
`THE COURT: ALL RIGHT. ANYTHING ELSE THIS
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`MORNING?
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`THE COURT: ALL RIGHT. MR. GINSBERG, ONE LAST
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`THING, WE DO HAVE CROSS DESIGNATIONS FOR MR. BENNETT'S
`TRANSCRIPT. JUST MAKE SURE YOU GET ALL THAT TO THE CLERK
`TODAY.
`
`MR. GINSBERG: JUST ONE LAST DEFENSE TO THAT,
`THEY QUOTED TESTIMONY THAT WOULD FALL WITHIN THE SENSITIVE
`FINANCIAL INFORMATION, SO WE WOULD LIKE AN OPPORTUNITY TO
`IDENTIFY THOSE PORTIONS TO YOU WHICH WE BELIEVE ARE
`CONFIDENTIAL PURSUANT TO THE PROTECTIVE ORDER. WE
`UNDERSTAND IF YOU'RE GOING TO RELY ON THAT, IT WILL BE IN
`YOUR OPINION.
`THE COURT: I DON'T INTEND TO DISCUSS DETAILS
`OF YOUR FINANCIAL INFORMATION, BUT THE OPINION WILL NOT BE
`SEALED.
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`MR. GINSBERG: SO IT WOULD JUST BE OKAY IF WE
`IDENTIFIED TO YOU THE PAGES AND LINES THAT WE BELIEVE TO
`BE PURSUANT TO THE PROTECTIVE ORDER?
`THE COURT: WHOSE DEPOSITION IS THIS?
`MR. GINSBERG: THE DEPOSITION OF US ENDO'S
`CHIEF OPERATING OFFICER, MR. BOBBY BENNETT.
`THE COURT: OKAY. WHAT I WOULD PREFER THAT YOU
`DO IS FILE BOTH AN UNREDACTED AND A REDACTED COPY OF THE
`DEPOSITION, WITH THE UNREDACTED COPY BEING SEALED, MS.
`HOPSON.
`
`MR. GINSBERG: PERFECT, YOUR HONOR.
`THE COURT: AND THAT WAY ONLY THE CONFIDENTIAL
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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
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`WITNESS.
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`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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`RECORD.
`A.
`A. JON GOLDBERG.
`Q.
`DR. GOLDBERG, CAN YOU PLEASE SUMMARIZE YOUR
`EDUCATION FOR THE COURT.
`A.
`YES. I RECEIVED A BACHELOR'S DEGREE IN
`METALLURGICAL ENGINEERING FROM DREXEL UNIVERSITY AND A
`MASTER'S DEGREE IN METTALLURGICAL ENGINEERING FROM THE
`UNIVERSITY OF MICHIGAN, AND THEN A PH.D. FROM THE
`UNIVERSITY OF MICHIGAN IN DENTAL MATERIALS AND
`METALLURGICAL ENGINEERING IN A COMBINED PROGRAM BETWEEN
`THE DENTAL SCHOOL AND THE ENGINEERING SCHOOL.
`Q.
`IN WHAT YEAR DID YOU OBTAIN YOUR PH.D.?
`A.
`1977.
`Q.
`DID YOU WRITE A THESIS IN ORDER TO OBTAIN YOUR
`DOCTORATE?
`A.
`YES, I DID.
`Q.
`AND WHAT WAS THE SUBJECT MATTER OF YOUR THESIS?
`A.
`IT WAS THE USE OF POLYURETHANES FOR MAXILLOFACIAL
`RECONSTRUCTION.
`Q.
`DR. GOLDBERG, WHAT IS YOUR CURRENT OCCUPATION?
`A.
`I'M A PROFESSOR AT THE DENTAL SCHOOL AT THE
`UNIVERSITY OF CONNECTICUT.
`Q.
`AND FOR HOW LONG HAVE YOU HELD THAT POSITION?
`A.
`SINCE 1975.
`Q.
`ARE YOU CURRENTLY A FULL PROFESSOR?
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`YES, I AM. I STARTED AS -- IN 1975 AS AN ASSISTANT
`A.
`PROFESSOR, WAS PROMOTED TO ASSOCIATE AND THEN PROMOTED TO
`FULL PROFESSOR I THINK SOMETIME IN THE LATE, MID TO LATE
`1980'S.
`Q.
`AND WHAT ARE YOUR RESPONSIBILITIES AS A PROFESSOR IN
`THE CONNECTICUT SCHOOL OF DENTISTRY?
`A.
`YES. I'M RESPONSIBLE FOR TEACHING DENTAL MATERIALS.
`I'M THE PERSON WHO TEACHES THE DENTAL STUDENTS ABOUT THE
`MATERIALS THEY'RE GOING TO BE USING. I ALSO TEACH THE
`DENTAL RESIDENTS, THESE ARE DENTISTS THAT ARE BACK FOR
`SPECIALTY TRAINING AND ORTHODONTICS, ENDODONTICS OR
`PROSTHODONTICS.
`COURT REPORTER: EXCUSE ME?
`PROSTHODONTICS, P-R-O-S-T-H-O-DONTICS.
`A.
`DO YOU HOLD ANY POSITIONS WITH THE UNIVERSITY OF
`Q.
`CONNECTICUT OTHER THAN BEING A PROFESSOR?
`A.
`YES. I'M ON THE GRADUATE FACULTY OF THE MATERIAL
`SCIENCE AND ENGINEERING PROGRAM. IN THE ENGINEERING
`SCHOOL, I'M ON THE ADVISORY BOARD OF THE INSTITUTE OF
`MATERIAL SCIENCE. THOSE ARE BOTH THROUGH THE ENGINEERING
`SCHOOL.
`Q.
`AND HAVE YOU TAUGHT ANY CLASSES REGARDING THE
`MATERIAL NICKEL-TITANIUM?
`A.
`YES. WELL, ALL OF MY COURSES THAT I TEACH IN DENTAL
`MATERIALS INCLUDE THAT TOPIC.
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`AND HAS ANY OF YOUR RESEARCH INVOLVED THE STUDY OF
`Q.
`NICKEL-TITANIUM?
`A.
`YES. WE'VE DONE WORK ON TITANIUM ALLOYS AND ON
`FIBER REINFORCED COMPOSITES, AND IN BOTH OF THOSE AREAS WE
`COMPARED TO NICKEL-TITANIUM ALLOYS.
`Q.
`HAVE YOU AUTHORED ANY PAPERS ON DENTAL MATERIALS?
`A.
`YES. I HAVE ABOUT 70 PUBLICATIONS AND ALL OF THEM
`ARE ON DENTAL MATERIALS.
`Q.
`HAVE YOU EVER OBTAINED ANY PATENTS RELATING TO YOUR
`WORK ON DENTAL MATERIALS?
`A.
`YES. I HAVE SIX PATENTS. THEY'RE ALL ON DENTAL
`MATERIALS.
`Q.
`DR. GOLDBERG, A BINDER HAS BEEN PLACED IN FRONT OF
`YOU. CAN YOU TAKE A LOOK AT TAB 4 OF YOUR BINDER WITH ME.
`A.
`OKAY.
`Q.
`YOU RECOGNIZE THIS DOCUMENT, SIR?
`A.
`YES. THIS IS MY CURRICULUM VITAE.
`Q.
`THIS INCLUDES YOUR CURRENT POSITION AT THE
`UNIVERSITY OF CONNECTICUT, SOME OF YOUR PUBLICATIONS AND
`YOUR EXPERIENCE?
`A.
`YES. YES, IT DOES.
`MR. GINSBERG: YOUR HONOR, WE WOULD LIKE TO
`PROFFER DR. GOLDBERG AS AN EXPERT IN THE FIELD OF DENTAL
`MATERIALS, AS WELL AS NICKEL-TITANIUM ALLOYS, AS WELL AS
`THE MECHANICAL PROPERTIES ASSOCIATED WITH THESE ALLOYS.
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`MR. LIEBERMAN: NO OBJECTION.
`THE COURT: ALL RIGHT. HE MAY TESTIFY.
`DR. GOLDBERG, YOU'VE BEEN RETAINED BY US ENDO TO
`Q.
`PROVIDE EXPERT TESTIMONY IN THIS CASE; CORRECT?
`A.
`CORRECT.
`Q.
`WHAT WERE YOU ASKED TO DO IN THIS REGARD?
`A.
`I WAS ASKED TO GIVE -- TO REVIEW THE PATENTS,
`PARTICULARLY THE '773 PATENT, AND TO GIVE OPINIONS AS FAR
`AS WHETHER OR NOT US ENDO'S PRODUCTS INFRINGE ON THAT
`PATENT AND WHETHER OR NOT THAT PATENT IS VALID.
`Q.
`NOW, BEFORE WE DISCUSS THOSE OPINIONS, DID YOU
`PREPARE SLIDES TODAY TO DISCUSS -- TO HELP ASSIST WITH
`YOUR TESTIMONY?
`A.
`YES, I DID.
`Q.
`OKAY. NOW, IF WE LOOK TO THE BEGINNING OF THE
`BINDER THAT'S IN FRONT OF YOU.
`A.
`OKAY.
`Q.
`IS A DOCUMENT BEHIND THE FIRST TAB A SET OF YOUR
`SLIDES?
`A.
`YES.
`Q.
`OKAY. AND IF IT WILL HELP, WE'LL ALSO HAVE THE
`SLIDES ON THE SCREEN NEXT TO YOU AS WELL.
`A.
`OKAY.
`Q.
`CAN WE TURN TO SLIDE 2, TITLED "SUMMARY OF
`OPINIONS", CAN YOU DESCRIBE TO THE COURT WHAT'S DISCLOSED
`
`1 2 3 4 5 6 7 8 9
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`ON THIS SLIDE?
`A.
`YES. THIS WAS MY SUMMARY THAT US ENDO'S METHOD DOES
`NOT INFRINGE ON CLAIM 1 BECAUSE THE PROCESS THAT US ENDO
`USES DOES NOT SATISFY THE HEAT TREATING STEP IN THAT
`CLAIM, AND ALSO THAT CLAIM 1 OF THE '773 PATENT IS INVALID
`AS ANTICIPATED OR WOULD BE OBVIOUS OVER THE PRIOR ART.
`Q.
`OKAY. CAN WE MOVE TO THE NEXT SLIDE.
`NOW, WHAT DID YOU RELY ON TO FORM YOUR
`
`OPINIONS?
`A.
`I RELIED ON THE '773 PATENT ITSELF, ITS PROSECUTION
`HISTORY, A DECLARATION FROM BOBBY BENNETT, WHO IS
`US ENDO'S CHIEF OPERATING OFFICER, AS WELL AS THE PRIOR
`ART.
`Q.
`
`NEXT SLIDE, PLEASE.
`NOW, DID YOU PERFORM YOUR ANALYSIS FROM THE
`PERSPECTIVE OF A PERSON SKILLED IN THE ART AT THE TIME OF
`THE INVENTION?
`A.
`YES.
`Q.
`OKAY. TURN TO THE NEXT SLIDE. WHAT'S BEFORE YOU
`NOW IS A COPY OF CLAIM 1 OF THE '773 PATENT. DO YOU SEE
`THAT?
`A.
`YES, I DO.
`Q.
`COULD YOU GENERALLY DESCRIBE WHAT CLAIM 1 IS
`DIRECTED TO.
`A.
`YES. IT'S A METHOD FOR MANUFACTURING AN ENDODONTIC
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`INSTRUMENT WHICH WOULD BE USED FOR ROOT CANAL THERAPY, AND
`WHAT IS DONE IS INITIALLY, AN ELONGATED SHANK, WHICH IS
`THE CUTTING PORTION OF THAT INSTRUMENT, IS PROVIDED, AND
`THAT'S PROVIDED AS A SUPERELASTIC NICKEL-TITANIUM ALLOY.
`THEN IN STEP B THAT SHANK IS HEAT TREATED AT A TEMPERATURE
`OF 400 DEGREES UP TO BUT NOT INCLUDING ITS MELTING POINT,
`AND THE RESULT OF THAT HEAT TREATMENT IS THAT THAT SHANK
`CAN BE DEFORMED.
`Q.
`LET'S GO TO THE NEXT SLIDE. THAT'S A PICTURE OF THE
`SHANK. YOU MENTIONED THAT THE SHANK IS THE PORTION OF THE
`FILE THAT HAS THE CUTTING GROOVES; IS THAT RIGHT?
`A.
`YES. ON THIS PICTURE, IT'S THE POINTED SECTION ON
`THE RIGHT THAT HAS THOSE FLUTES OR GROOVES, THAT'S THE
`CUTTING EDGE; AND THEN AT THE OTHER END IS THE HANDLE FOR
`THE ENDODONTIST TO HOLD.
`Q.
`NEXT SLIDE.
`NOW, YOU TESTIFIED THAT IN YOUR OPINION
`US ENDO'S METHOD OF MANUFACTURING ITS FILES DOES NOT
`INFRINGE CLAIM 1 OF THE '773 PATENT; CORRECT?
`A.
`CORRECT.
`Q.
`WHY IS THAT?
`A.
`THAT'S BECAUSE I THINK STEP B SHOULD BE INTERPRETED
`AS THE HEAT TREATING BEING DONE IN AN ATMOSPHERE THAT'S
`UNREACTIVE WITH THE NICKEL-TITANIUM ALLOY.
`Q.
`AND ARE YOU AWARE OF US ENDO'S PROCESS OF MAKING ITS
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`X1, X5 AND X7 FILES?
`A.
`YES, I AM.
`Q.
`DO YOU UNDERSTAND THAT THAT PROCESS INCLUDES A HEAT
`TREATING STEP?
`A.
`YES, I DO.
`Q.
`WHY THEN IS IT YOUR OPINION THAT THE STEP OF
`US ENDO'S MANUFACTURING PROCESS DOES NOT MEET THE HEAT
`TREATING STEP OF CLAIM 1 OF THE '773 PATENT?
`A.
`YES. WELL, AS I JUST SAID, THAT STEP, THAT HEAT
`TREATING STEP, SHOULD BE INTERPRETED AS MEANING IN AN
`UNREACTIVE ATMOSPHERE. US ENDO DOES ITS PROCESS IN AIR,
`WHICH IS REACTIVE.
`Q.
`AIR REACTS WITH NICKEL-TITANIUM; IS THAT CORRECT?
`A.
`YES, IT DOES.
`Q.
`NOW, THIS SLIDE SHOWS THE BASIS FOR YOUR OPINION;
`CORRECT?
`A.
`YES. IT'S, TO REPEAT, IT'S JUST THAT THE HEATING IN
`THE CLAIM, THAT STEP SHOULD BE LIMITED TO AN ATMOSPHERE
`THAT'S UNREACTIVE WITH NICKEL-TITANIUM, AND THAT'S
`EXPLAINED IN BOTH THE SPECIFICATION AS WELL AS THE
`PROSECUTION HISTORY; BUT THE US ENDO EDGEFILES, X1, X5 AND
`X7, ARE HEAT TREATED IN AIR, WHICH IS REACTIVE.
`Q.
`WOULD YOU TURN TO THE NEXT SLIDE. WHAT IS IT IN
`THE '773 PATENT THAT SHOWS THAT?
`A.
`YES. IT OCCURS IN SEVERAL PLACES. SO, FIRST IN
`
`1 2 3 4 5 6 7 8 9
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`SLIDE -- IT'S A QUOTE FROM THE SUMMARY, AND IT
`SPECIFICALLY SAYS THAT. THE HEAT TREATMENT SHOULD BE DONE
`"IN AN ATMOSPHERE CONSISTING OF A GAS UNREACTIVE", OR
`"ESSENTIALLY OF A GAS UNREACTIVE WITH THE SHANK."
`Q.
`THANK YOU. LET'S TURN TO THE NEXT SLIDE.
`WHAT'S SHOWN ON THIS SLIDE?
`THIS IS FROM THE ABSTRACT OF THE '773 PATENT, AND
`A.
`AGAIN, IT SPECIFICALLY SAYS THAT THE HEAT TREATMENT SHOULD
`BE DONE "IN A ATMOSPHERE CONSISTING ESSENTIALLY OF A GAS
`UNREACTIVE WITH THE SHANK."
`Q.
`AND THAT'S IN THE ABSTRACT OF THE PATENT?
`A.
`YES, THE ABSTRACT.
`Q.
`LET'S TURN TO THE NEXT SLIDE. THIS IS FROM THE
`DETAILED DESCRIPTION OF THE '773 PATENT?
`A.
`YES. THE DETAILED DESCRIPTION FURTHER GOES ON TO
`SAY THAT THE HEAT TREATING OF THE SHANK SHOULD BE DONE IN
`AN ATMOSPHERE CONSISTING ESSENTIALLY OF A GAS UNREACTIVE
`WITH THE SHANK; AND THEN IT GOES ON TO GIVE SOME EXAMPLES
`AND SAYS, THIS COULD BE DONE WITH PREFERABLY HELIUM OR
`NEON OR ARGON, MOST PREFERABLY WITH ARGON, AND THESE WOULD
`ALL BE UNREACTIVE ENVIRONMENTS.
`Q.
`THEY'RE INERT GASES; IS THAT RIGHT?
`A.
`YES.
`Q.
`LET'S TAKE A LOOK AT THE NEXT SLIDE.
`A.
`SO THIS IS THE EXAMPLE -- AND ALL OF THE EXAMPLES
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`1 2 3 4 5 6 7 8 9
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`CITE THAT THE HEAT TREATMENT SHOULD BE DONE IN AN ARGON
`ATMOSPHERE, WHICH WOULD BE AN UNREACTIVE ATMOSPHERE.
`Q.
`ARGON IS UNREACTIVE TO NICKEL-TITANIUM; CORRECT?
`A.
`YES.
`Q.
`DOES THE SPECIFICATION OF THE '773 PATENT REFER TO
`HEAT TREATMENT OF THE NICKEL-TITANIUM SHANK OCCURRING AT
`ANY ATMOSPHERE OTHER THAN AN ATMOSPHERE THAT'S UNREACTIVE
`WITH NICKEL-TITANIUM?
`A.
`NO.
`Q.
`DID YOU ALSO LOOK AT THE SPECIFICATION OF THE OTHER
`PATENT APPLICATIONS OF THE SAME -- IN THE SAME FAMILY AS
`THE '773 PATENT?
`A.
`YES, I DID.
`Q.
`DO ANY OF THOSE SPECIFICATIONS DISCLOSE HEAT
`TREATING OTHER THAN HEAT TREATING IN AN ATMOSPHERE
`UNREACTIVE WITH NICKEL-TITANIUM?
`A.
`NO.
`Q.
`OKAY. LET'S TAKE A LOOK AT THE NEXT SLIDE.
`YOU ALSO REFERRED TO THE PROSECUTION HISTORY AS
`SUPPORTING YOUR OPINION REGARDING THE MEANING OF THE HEAT
`TREATING STEP. CAN YOU DESCRIBE WHAT IN THE PROSECUTION
`HISTORY SUPPORTS YOUR OPINION?
`MR. LIEBERMAN: OBJECTION, YOUR HONOR.
`YES.
`MR. LIEBERMAN: WHAT APPEARS TO BE HAPPENING IS
`
`A.
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`THAT THE WITNESS HAS A PRESENTATION IN FRONT OF HIM, THE
`RELEVANT PAGES PUT IN FRONT OF HIM, THEN HE'S ASKED THE
`QUESTION AND THEN HE READS HIS TESTIMONY LARGELY FROM
`WHAT'S IN THE PRESENTATION. WE WOULD OBJECT TO THAT MODE
`OF QUESTIONING.
`MR. GINSBERG: YOUR HONOR, MR. LIEBERMAN AND
`HIS COCOUNSEL LED THEIR WITNESSES THROUGH THEIR TESTIMONY.
`THESE ARE TAKEN FROM THE DOCUMENTS THAT ARE CITED. THERE
`ARE REFERENCES TO EVERYTHING ON THIS SLIDE IN THE RECORD.
`THIS IS THE PROSECUTION HISTORY OF THE '773 PATENT.
`MR. LIEBERMAN: IF YOU LOOK AT SLIDE 13, YOUR
`HONOR, WHICH IS IN FRONT OF THE WITNESS, THE QUESTION HAS
`BEEN ASKED, IT'S IN FRONT OF THE WITNESS, SLIDE 13 ISN'T
`SAYING, HERE'S A QUOTE THAT SUPPORTS MY OPINION, HERE'S A
`QUOTE THAT SUPPORTS MY OPINION, IT CONTAINS HIS OPINION.
`THIS PRESENTATION, THIS POWER -- THIS EXAMINATION IS
`ESSENTIALLY A POWER POINT PRESENTATION BY THE WITNESS,
`WHICH IS NOT THE WAY THE QUESTIONS SHOULD BE. IT SHOULD
`BE QUESTIONS AND ANSWERS.
`THE COURT: I TEND TO AGREE WITH MR. LIEBERMAN
`HERE, IT'S NOT PROPER FOR THE WITNESS TO READ HIS
`TESTIMONY.
`MR. GINSBERG: WELL, WE CAN CALL UP THE
`INDIVIDUAL DOCUMENTS AND GO THROUGH THOSE. IT'S GOING TO
`TAKE --
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`THE COURT: THAT'S NOT -- I DON'T SEE ANY OF
`THESE THAT ARE PROBLEMATIC UNTIL YOU GET TO SLIDES LIKE
`NUMBER 13. NUMBER 13 IS PROBLEMATIC. THE OTHERS ARE
`QUOTING FROM THE PATENT OR FROM THE EXAMPLES OR FROM OTHER
`DOCUMENTS, I THINK THAT'S APPROPRIATE THERE; BUT IF ALL
`THIS IS GOING TO BE IS THE WITNESS READING THE SLIDES TO
`ME, I CAN READ THEM.
`MR. GINSBERG: OKAY, WELL, THEN WE WILL SHOW
`YOU -- WE'LL SHOW THE DOCUMENTS, IF THAT'S SOMETHING THAT
`THE COURT --
`THE COURT: I'M NOT INSISTING THAT YOU SHOW THE
`DOCUMENTS. HE CAN REFER TO THE DOCUMENT. I'VE GOT THE
`CITATION OF THE DOCUMENT HERE. I THINK IF ALL YOU'RE
`GOING TO DO IS ASK HIM QUESTIONS AND HE READS TO ME WHAT'S
`ON THE SLIDE PRESENTATION, THAT'S NOT VERY HELPFUL.
`Q.
`WELL, DR. GOLDBERG, YOU DID REFER TO THE PROSECUTION
`HISTORY AS SUPPORTING YOUR OPINION REGARDING THE MEANING
`OF HEAT TREATED; CORRECT?
`A.
`YES.
`Q.
`AND LET'S TAKE A LOOK AT SLIDE 15. WHAT IS IN THE
`PROSECUTION HISTORY SUPPORTING YOUR OPINION REGARDING THE
`PROPER MEANING THAT SHOULD BE APPLIED TO THE HEAT TREATING
`STEP?
`A.
`YES. THERE WAS A PROSECUTION HISTORY OF AN EARLIER
`PATENT APPLICATION IN THIS FAMILY. THE PATENT OFFICE WAS
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`OBJECTING TO THE FACT CONCERNING THE ATMOSPHERE, SO DR.
`LUEBKE SUBMITTED AN AMENDMENT THAT ALSO INCLUDED A DECLAR-
`ATION WHERE BASICALLY THE AMENDMENT AND THE DECLARATION,
`WHICH WAS BY A DR. DAVID BERZINS, WENT ON TO DEMONSTRATE
`THAT THE INVENTION AT THAT TIME SPECIFICALLY WAS ONE THAT
`NEEDED TO BE HEAT TREATED IN AN UNREACTIVE ATMOSPHERE.
`Q.
`AND DID THAT DECLARATION POINT OUT ISSUES THAT COULD
`RESULT IF YOU HEAT TREATED THE NICKEL-TITANIUM FILES IN AN
`ATMOSPHERE THAT WAS REACTIVE WITH NICKEL-TITANIUM?
`A.
`YES.
`MR. LIEBERMAN: OBJECTION, LEADING.
`THE COURT: I'M GOING TO ALLOW SOME LEADING ON
`THIS. OVERRULED.
`Q.
`YOU MAY ANSWER.
`A.
`YES. THEY POINTED OUT WHAT WAS KNOWN IN THE ART
`THAT THESE ELEVATED HEAT TREATING TEMPERATURES, IF YOU
`HAVE A REACTIVE ENVIRONMENT, IT'S GOING TO FORM AN OXIDE
`ON THE FILE, AND THAT OXIDE CAN GROW THICK AT THOSE HIGH
`TEMPERATURES. IT COULD DETERIORATE THE SURFACE. IT COULD
`POTENTIALLY AFFECT THE PROPERTIES AND TRANSFORMATIONS; SO
`THEY WERE DIFFERENTIATING THEIR INVENTION BY SAYING, AND I
`THINK THIS WAS THE '933 APPLICATION, SPECIFICALLY THAT
`THEIR INVENTION WAS DIFFERENT THAN HEATING IN A REACTIVE
`ATMOSPHERE, IT WAS IN AN UNREACTIVE ATMOSPHERE. I'LL ADD
`THAT THEY WENT ON AND ACTUALLY DID EXPERIMENTS TO
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`DEMONSTRATE THE IMPORTANCE OF THIS DIFFERENCE.
`Q.
`AND YOU MENTIONED THE DECLARATION OF DAVID
`BERZINS?
`A.
`YES.
`Q.
`AND IF YOU REFER TO THE TAB IN FRONT OF YOU, EXCUSE
`ME, THE BINDER IN FRONT OF YOU, TAB 6, IS THAT THE
`DECLARATION THAT YOU'RE REFERRING TO?
`A.
`YES, IT IS.
`Q.
`AND FOR THE COURT'S REFERENCE THAT HAS BEEN
`INTRODUCED OR CITED PREVIOUSLY AS COURT DOCUMENT NUMBER
`104 EXHIBIT L.
`NOW, IN RESPONSE TO AN OFFICE ACTION, ARE YOU
`AWARE THAT DR. LUEBKE ALSO SUBMITTED AN AMENDMENT CITING
`DR. BERZINS' DECLARATION?
`A.
`YES.
`Q.
`I BELIEVE IF YOU TAKE A LOOK AT TAB 7 IN YOUR
`BINDER, CAN YOU IDENTIFY THAT DOCUMENT FOR US, SIR?
`A.
`YES. THIS IS THE MEMO.
`Q.
`AND THIS IS THE MEMO THAT WAS ASSOCIATED IN NUMBER
`11/628,933?
`A.
`YES.
`Q.
`AND THAT'S AN APPLICATION IN THE SAME FAMILY AS
`THE '773 PATENT; CORRECT?
`A.
`CORRECT.
`Q.
`NOW, IF YOU GO TO PAGE 11 OF THAT AMENDMENT.
`
`1 2 3 4 5 6 7 8 9
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`
`OKAY.
`A.
`AT THE BOTTOM OF THAT PAGE DO YOU SEE THAT DR.
`Q.
`LUEBKE IS REFERENCING THAT HE WAS ATTACHING THE
`DECLARATION OF DR. BERZINS' THAT YOU JUST DISCUSSED?
`A.
`YES.
`Q.
`AND THIS AMENDMENT WAS SUBMITTED TO THE PATENT
`OFFICE IN ORDER TO OVERCOME THE PRIOR ART REJECTION;
`RIGHT?
`A.
`YES.
`Q.
`LET'S GO TO SLIDE 16, AND WE'RE GOING TO SWITCH
`TOPICS A BIT NOW. YOU TESTIFIED EARLIER THAT IN YOUR
`OPINION CLAIM 1 OF THE '773 PATENT IS INVALID DUE TO THE
`PRIOR ART; CORRECT?
`A.
`CORRECT.
`Q.
`WHAT DOES SLIDE 16 SHOW?
`A.
`YES. IT SHOWS EXAMPLES OF THE PRIOR ART THAT I
`IDENTIFIED AND EXAMINED, SHOWING THAT THE -- BASICALLY
`THIS INVENTION HAD ALREADY BEEN TAUGHT IN THE LITERATURE.
`Q.
`NOW, ON THIS SLIDE YOU DIFFERENTIATE BETWEEN PRIOR
`ART DATED BEFORE 2004 AND PRIOR ART DATED AFTER 2004. CAN
`YOU EXPLAIN WHY YOU SEPARATED THE PRIOR ART BASED ON THAT
`DATE?
`A.
`YES. THE FIRST PATENT APPLICATION IN THIS FAMILY OF
`PATENTS WAS FILED IN 2004, SO I FIRST LOOKED FOR PRIOR ART
`THAT WAS PRIOR TO 2004; BUT THEN I ALSO LOOKED AT PRIOR
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`ART FROM 2004 UP TO THE ACTUAL FILING OF THE '773, WHICH
`WOULD HAVE BEEN 2012, SO I DIVIDED IT INTO THOSE TWO
`CATEGORIES.
`Q.
`NOW, DID YOUR OVERALL OPINION THAT CLAIM 1 IS
`INVALID DEPEND ON WHETHER THE POST 2004 REFERENCES ARE IN
`FACT PRIOR ART?
`A.
`NO.
`Q.
`LET'S TAKE A LOOK AT THE NEXT SLIDE. NOW, ARE YOU
`AWARE THAT THE '773 PATENT WAS FILED ON APRIL 25, 2012?
`A.
`YES.
`Q.
`NOW, DO YOU HAVE AN OPINION AS TO WHETHER CLAIM 1 OF
`THE '773 PATENT IS ENTITLED TO A PRIORITY DATE EARLIER
`THAN APRIL 25, 2012?
`A.
`YES, YES I DO; AND THAT IS THAT '773 WAS THE FIRST
`TIME THAT THE PROCESSES ARE DESCRIBED AS BEING DONE IN A
`REACTIVE ATMOSPHERE. EVERYTHING PRIOR TO THAT WAS
`UNREACTIVE.
`Q.
`LET ME JUST INTERRUPT YOU. WHEN YOU SAY
`"DESCRIBED", YOU MEAN IN THE CLAIMS?
`A.
`YES.
`Q.
`OKAY. PLEASE GO FORWARD.
`A.
`EVERYTHING PRIOR TO THAT WAS DONE IN AN UNREACTIVE
`ATMOSPHERE; AND AS I MENTIONED, IN THE AMENDMENT THAT DR.
`LUEBKE SUBMITTED WITH THE BERZINS' DECLARATION, THEY
`REALLY WENT OUT OF THEIR WAY TO DIFFERENTIATE AND SAY, NO,
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`THEIR INVENTION WAS IN AN UNREACTIVE ATMOSPHERE. SO THE
`FIRST TIME THAT A REACTIVE ATMOSPHERE IS BROUGHT IN IS
`WITH THE FILING OF THE '773.
`Q.
`IT'S BROUGHT IN BY THE CLAIMS OF THE '773 PATENT
`THAT WAS FILED IN APRIL 2012?
`A.
`YES.
`MR. LIEBERMAN: OBJECTION, YOUR HONOR, WAY
`OVER, HE'S OVER LEADING.
`THE COURT: THAT WAS BEYOND. SUSTAINED.
`DR. GOLDBERG, WHEN WAS THE FIRST APPLICATION FILED
`Q.
`IN THE '773 FILE HISTORY THAT INCLUDED CLAIMS THAT WERE
`NOT SPECIFICALLY LIMITED TO HEAT TREATING AND UNREACTIVE
`ATMOSPHERE?
`A.
`2012.
`Q.
`OKAY. DR. GOLDBERG, LET'S GO TO THE NEXT SLIDE AND
`FOCUS ON SOME OF THE PRIOR ART. ONE OF THE FIRST -- ONE
`OF THE REFERENCES THAT'S BOLDED ON THIS SLIDE IS A GAO
`REFERENCE. DO YOU HAVE AN OPINION AS TO WHETHER THE GAO
`REFERENCE RENDERS CLAIM 1 OF THE '773 INVALID?
`A.
`YES, I DO.
`Q.
`WHAT IS YOUR OPINION?
`A.
`IN MY OPINION THE GAO ANTICIPATES AND DESCRIBES
`THE '773 PATENT.
`Q.
`THE GAO REFERENCE IS IDENTIFIED IN TAB 12 OF YOUR
`BINDER. IT'S BEEN PREVIOUSLY IDENTIFIED IN THE COURT AS
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`DOCUMENT 104 EXHIBIT X. WE'LL CALL THAT UP ON THE SCREEN,
`IF WE GO TO THE NEXT SLIDE. A LITTLE BIT BLURRY, SO IF
`YOU NEED TO REFER TO THE TAB IN YOUR BINDER, FEEL FREE TO
`DO THAT.
`
`WHEN WAS THE GAO REFERENCE PUBLISHED?
`IN 2011.
`A.
`OKAY. AND THIS APPLICATION WAS PUBLISHED BEFORE THE
`Q.
`APPLICATION THAT LED TO THE '773 PATENT THAT WAS FILED;
`CORRECT?
`A.
`CORRECT.
`Q.
`NOW, TURNING TO THE NEXT SLIDE, CAN YOU PLEASE
`DESCRIBE GENERALLY WHAT THE GAO REFERENCE DISCLOSES.
`A.
`YES. IT GENERALLY DESCRIBES MAKING A
`NON-SUPERELASTIC NICKEL-TITANIUM ENDODONTIC FILE.
`Q.
`NEXT SLIDE, PLEASE.
`WHAT'S SHOWN ON THIS SLIDE, DR. GOLDBERG?
`YEAH. SO WHAT I'VE PREPARED IN THESE SLIDES IS
`A.
`GOING TO BE A SERIES OF SLIDES, YOUR HONOR, AND ON THE
`LEFT IS THE CLAIM OF '773, AND I'VE HIGHLIGHTED THE
`DIFFERENT STEPS; AND ON THE RIGHT I'VE IDENTIFIED QUOTES
`FROM THESE DIFFERENT REFERENCES THAT DESCRIBE THOSE
`DIFFERENT STEPS.
`SO IN THIS FIRST ONE, GAO, STEP A, IS PROVIDING
`THE ELONGATED SHANK, WHICH IS A SUPERELASTIC NICKEL-
`TITANIUM ALLOY; AND IN THE ABSTRACT OF GAO HE SPECIFICALLY
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`POINTS OUT THAT HE'S PROVIDING A SUPERELASTIC ROTARY FILE,
`AND THEN IN PARAGRAPH 21 GOES ON TO SAY THAT THIS IS A
`NICKEL-TITANIUM. SO GAO IS TEACHING PROVIDING AN ELON-
`GATED SHANK WHICH IS A SUPERELASTIC NICKEL-TITANIUM ALLOY.
`Q.
`THANK YOU.
`WOULD YOU TURN TO THE NEXT SLIDE, PLEASE, AND
`DESCRIBE THIS.
`A.
`YES. SO THE SECOND STEP IS THE HEAT TREATING STEP
`WHICH CALLS FOR HEAT TREATING OF UP TO 400 DEGREES UP TO
`THE MELTING POINT; AND IN PARAGRAPH 31 OF GAO HE SAYS THAT
`THE METHOD OF HEAT TREATMENT CAN BE DONE, AND HE GIVES
`TEMPERATURE RANGES FROM 300 UP TO ABOUT 600 DEGREES. SO
`GAO TEACHES HEAT TREATMENT IN THE CLAIM RANGE.
`Q.
`OKAY. AND LET'S TAKE A LOOK AT THE NEXT SLIDE.
`A.
`YES. AND THEN FINALLY THE RESULTS OF THE HEAT
`TREATMENT ARE THAT THE FILE CAN BE PERMANENTLY DEFOR
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