UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`US ENDODONTICS, LLC,
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`Petitioner,
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`v.
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`GOLD STANDARD
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`IPR2015-00632
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`INSTRUMENTS, LLC,
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`Patent 8,727,773 B2
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`Patent Owner.
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`Videotaped deposition of A. JON GOLDBERG, PH.D.
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`NEW YORK, NEW YORK
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`Tuesday, October 20, 2015
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`9:03 a.m.
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`Job No.: 94694
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`Pages: 1 - 90
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`Reported By: Nancy Mahoney
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`GOLD STANDARD EXHIBIT 2034
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-00632
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`-
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`-x
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`1
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`US ENDODONTICS, LLC,
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`Petitioner,
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`v.
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`GOLD STANDARD
`
`IPR2015-00632
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`INSTRUMENTS, LLC,
`
`Patent 8,727,773 B2
`
`Patent Owner.
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`Videotaped deposition of A. JON GOLDBERG, PH.D.
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`NEW YORK, NEW YORK
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`Tuesday, October 20, 2015
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`9:03 a.m.
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`Job No.: 94694
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`Pages: 1 - 90
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`Reported By: Nancy Mahoney
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`GOLD STANDARD EXHIBIT 2034
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-00632
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`
`
`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Deposition of A. JON GOLDBERG, PH.D., held at
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`2
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` the offices of:
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` Patterson, Belknap, Webb & Tyler LLP
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` 1133 Avenue of the Americas
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` New York, New York 10036
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` 212.336.2000
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` Pursuant to agreement, before Nancy Mahoney,
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` Notary Public in and for the State of New York.
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`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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`3
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` A P P E A R A N C E S
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` ON BEHALF OF PETITIONER US ENDODONTICS, LLC:
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` JEFFREY S. GINSBERG, ESQUIRE
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` PATTERSON BELKNAP WEBB & TYLER LLP
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` 1133 Avenue of the Americas
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` New York, New York 10036-6710
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` 212.336.2000
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` ON BEHALF OF PATENT OWNER GOLD STANDARD
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` INSTRUMENTS:
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` DEREK F. DAHLGREN, ESQUIRE
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` JASON M. NOLAN, Ph.D., ESQUIRE
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` ROTHWELL, FIGG, ERNST & MANBECK, P.C.
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` 607 14th Street, N.W.
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` Washington, DC 20005
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` 202.783.6040
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` ALSO PRESENT:
`
` CHARLES BOWMAN
`
` Videographer
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` C O N T E N T S
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`EXAMINATION OF A. JON GOLDBERG, PH.D. PAGE
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`By Mr. Dahlgren 7
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`4
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` E X H I B I T S
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` (Attached to transcript.)
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` GOLD DEPOSITION EXHIBIT PAGE
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` Exhibit 2023 Patent Owner Gold 8
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` Standard Instruments
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` Notice of Cross-Examination
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` Of A. Jon Goldberg, Ph.D.
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` Exhibit 2024 Influence of Structure on 66
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` Nickel-Titanium Endodontic
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` Instruments Failure
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` Exhibit 2025 Transcript of Testimony of 79
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` A. Jon Goldberg, Ph.D.
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` September 30, 2014
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` E X H I B I T S C O N T I N U E D
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` (Attached to transcript.)
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`5
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` PREVIOUSLY MARKED EXHIBIT PAGE
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` Exhibit 1006 (Previously marked.)
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` Optimisation of processing 17
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` and properties of medical
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` grade Nitinol wire
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` Exhibit 1002 (Previously marked.)
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` Declaration of 37
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` A. Jon Goldberg
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` Exhibit 1019 (Previously marked.)
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` Fatigue and Mechanical 46
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` Properties of Nickel-Titanium
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` Endodontic Instruments
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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`6
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` THE VIDEOGRAPHER: Here begins disk
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` number one of the videotaped deposition of A. Jon
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` Goldberg Ph.D, in the matter of US Endodontics, LLC,
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` the Gold Standard Instruments, LLC, in the United
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` States Patent and Trademark Office, before the Patent
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` Trial and Appeal Board, Case No. IPR2015-00632.
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` Today's date is October 20, 2015. The time is
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` approximately 9:03 a.m. The videographer today is
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` Charles Bowman representing Planet Depos. This video
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` deposition is taking place at 1133 Avenue of the
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` Americas, New York, New York.
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` Would counsel please identify yourselves
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` for the record.
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` MR. DAHLGREN: Derek Dahlgren from
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` Rothwell, Figg, Ernst & Manbeck on behalf of Patent
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` Owner Gold Standard Instruments, LLC.
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` MR. NOLAN: Jason Nolan of Rothwell, Figg,
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` Ernst & Manbeck.
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` MR. GINSBERG: Jeff Ginsberg of Patterson
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` Belknap on behalf of Petitioner US Endo and the
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` witness.
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` THE VIDEOGRAPHER: The court reporter today
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` is Nancy Mahoney representing Planet Depos. Would
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` the court reporter please swear in the witness.
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` A. JON GOLDBERG, PH.D.,
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` after having been first duly sworn or affirmed to
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` testify to the truth, was examined and
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` testified as follows:
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` EXAMINATION BY COUNSEL FOR THE PATENT OWNER
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` DEREK DAHLGREN:
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` Q Good morning, Dr. Goldberg.
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` A Good morning.
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` Q As I said before, my name is Derek
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` Dahlgren. I'm representing Patent Owner in this
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` proceeding. Could you please state your name and
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` address for the record, please.
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` A Yes. A. Jon Goldberg, 30 Berwyn Road, West
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` Hartford, Connecticut.
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` Q You're the same Dr. Goldberg that submitted
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` a declaration in support of US Endo's petition for
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` inter partes review of U.S. Patent No. 8,727,773?
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` A I'm not sure exactly what the number is,
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` but I did submit a declaration for this case.
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` Q And you understand that you're appearing
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` here on behalf of Petitioner pursuant to a Notice of
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` Cross-Examination?
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` A I don't know the details. I know that I'm
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` here to be questioned about the case.
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` (GOLDBERG Deposition Exhibit 2023 marked
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` for identification and was attached to the
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` transcript.)
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` Q I'll just ask the question again. You
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` understand that you're appearing here on behalf of
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` Petitioner pursuant to a Notice of Cross-Examination?
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` A Yes, the Petitioner is --
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` MR. GINSBERG: US Endo.
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` A US Endo, okay.
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` Q So Dr. Goldberg, have you ever been deposed
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` before or testified at trial?
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` A Yes.
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` Q Can you tell me those circumstances?
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` A Yes, the most recent was last year in a
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` deposition related to this case and there was also a
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` hearing in Tennessee.
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` Q And so with respect to the hearing in
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` Tennessee, are you referring to litigation between US
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Endo and Dentsply?
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` A Yes.
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` Q And you testified at a hearing in federal
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` court regarding a preliminary injunction. Is that
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` correct?
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` A Correct.
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` Q And you were testifying on behalf of US
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` Endo at that hearing?
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` A Yes.
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` Q And you referred to a deposition in the
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` same litigation. Is that right?
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` A Yes.
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` Q And you were testifying at that deposition
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` on behalf of US Endo. Is that right?
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` A Yes.
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` Q Have you been deposed at any other time?
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` A Yes, maybe ten years or so ago there was a
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` case that I was assisting with, and I was deposed in
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` that case.
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` Q Any other instances where you were deposed?
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` A I don't recall.
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` Q And what about testifying at trial, have
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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`10
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` you testified in court?
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` A Yes, maybe 15 years ago there was a case in
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` the Hartford area that I testified in.
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` Q And did either of those cases involve
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` endodontic files?
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` A Not endodontic files.
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` Q Did they have anything -- excuse me, did
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` either of those cases have anything to do with
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` endodontics?
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` A Yes, one of those cases had to do with
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` fiber-reinforced composites, one of the clinical
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` applications is endodontic posts.
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` Q Okay. And is it correct that neither of
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` those cases involved nickel-titanium alloys?
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` A Correct.
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` Q And how were you retained by counsel for
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` this matter?
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` A I received a call in my office. They asked
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` me a couple preliminary questions about my
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` background. After that I talked to a couple
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` different attorneys and we decided to -- they decided
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` to retain me for the case.
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Q So I know you were deposed recently but I
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` just want to go over a few ground rules just to --
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` A Sure.
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` Q -- make sure that we're all on the same
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` page. You've been doing a great job, but it's
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` important to keep giving verbal answers and avoid
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` u-hu and nodding your head. Do you understand?
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` A Yes.
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` Q And you also need to answer my questions
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` truthfully. You understand that as well?
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` A Yes.
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` Q And it's also important that we not talk
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` over each other so the court reporter can write down
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` and get a clean record. So if you'd just let me kind
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`09:08:26
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` of finish asking my question and I'll try to let you
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` finish your answer. But if I interrupt you, please
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` let me know that you weren't finished. Okay?
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` A Yes.
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` Q If you don't hear a question, you can ask
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` me to repeat it or you can ask the court reporter to
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` repeat it. Do you understand?
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` A Yes.
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Q Your attorney may object from time to time
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`09:08:43
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`12
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` but unless he specifically instructs you not to
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` answer, you're supposed to answer my question. Do
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` you understand?
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` A Yes.
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`09:08:45
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`09:08:50
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` Q Okay. Do you have any questions before we
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`09:08:50
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` get started?
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` A No.
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` Q Okay. Is there any reason today why you
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` can't provide truthful and accurate testimony?
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` A No.
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` Q Okay. And because this is a
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` cross-examination before the Patent Trial and Appeal
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` Board, there are a couple special rules that apply,
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` and I just wanted to read two paragraphs from the
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` Patent Trial guidelines just to make sure we're on
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` the same page. So in Paragraph 6 of Appendix D it
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` says, Once the cross-examination of a witness has
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` commenced and until cross-examination of the witness
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` has concluded, counsel offering the witness on direct
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`09:09:23
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` examination shall not, A, consult or confer with the
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` witness regarding the substance of the witness's
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`09:09:27
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`09:09:30
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`Conducted on October 20, 2015
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` testimony already given or anticipate to be given
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` except for the purpose of conferring on whether to
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` answered.
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` Do you understand that paragraph?
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` A Can you explain that -- something about
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` asserting privilege?
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` Q So that's one of the limited bases for
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` conferring with your counsel regarding expected
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` testimony, is for ascertaining whether or not the
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` answer is privileged.
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` A Can you explain that a little more?
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` Q Sure, sure. So if I'm asking you a
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` question, you can't confer with your counsel
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` determine whether or not it involves privileged
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` material.
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` Do you understand?
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` A Oh, do you mean confidential material?
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Q The attorney-client privileged material and
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` in some cases potentially confidential material as
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` well.
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` A Okay, I understand that.
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` Q Okay. And paragraph 7 of the same
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` guideline says, An attorney for a witness shall not
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` is pending except for the purpose of determining
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` Do you understand that?
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` A So let me just see if I understand, when
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` you say privilege, again, this is like confidential
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` information or things that I shouldn't be disclosing
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` to you?
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` Q If you think the answer involves
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` confidential information, you can say you think it
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` involves confidential information and we'll try to
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` deal with it.
`
` A Okay.
`
` Q Any questions?
`
` A I've asked them.
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Q Okay. So to start off, I had some general
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` questions about nickel-titanium alloys. So you would
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` agree that nickel-titanium alloys can have different
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` crystal structures at the same time?
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` MR. GINSBERG: Objection to the form.
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` A I -- let me think about that a second.
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` Under certain circumstances, yes, they could have two
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` different crystal structures.
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` Q And you would agree that nickel-titanium
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` alloys can be biphasic, correct?
`
` A Yes.
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` Q And when nickel-titanium alloy is at a
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` temperature between its austenite start temperature
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` and austenite finish temperature, you would agree it
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` can be biphasic?
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` MR. GINSBERG: Objection to form.
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` A Between the austenitic start and the
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` austenitic -- it's possible.
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` Q Between the austenitic start temperature
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` and austenitic finish temperature, is it possible for
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` it to not be biphasic?
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`09:12:36
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` A I could imagine that if those temperatures
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`09:12:38
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` are very close it would go from one phase to another.
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` Q And so when nickel-titanium alloy is at a
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` temperature between its austenitic start temperature
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` and austenitic finish temperature, you would agree it
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` can exhibit superelastic behavior, correct?
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` A No. Can you repeat that question?
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` Q Sure. Sure. So when nickel-titanium alloy
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` is at a temperature between its austenite start
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` temperature and austenite finish temperature, you
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` would agree that it can exhibit superelastic
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` behavior, correct?
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` MR. GINSBERG: Objection to form.
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` A I -- I wouldn't agree with that.
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` Q So it's your position that when a
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` nickel-titanium alloy is between its austenite start
`
` temperature and austenite finish temperature it is
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` impossible for it to behave in a superelastic manner?
`
` MR. GINSBERG: Objection to form.
`
` A In the way that I've been using
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` superelastic, correct.
`
` Q How do you define superelastic?
`
` A It's when a material is deformed, it can go
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`Conducted on October 20, 2015
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` through a plateau region which gives it a particular
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` large amount of deflection, and then when the load is
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` removed it goes back to its original size and shape.
`
` Q And you're saying that is impossible when a
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` nickel-titanium alloy is between its austenite start
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` and austenite finish temperature?
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` MR. GINSBERG: Objection to the form of the
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` question.
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` A Yes, that's the definition that I had just
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` given, that in that situation it wouldn't have that
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` superelastic as I've defined it.
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` Q Handing what's previously been marked as
`
` Exhibit 1006.
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` (PREVIOUSLY MARKED Deposition Exhibit 1006
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` marked for identification and was attached to the
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` transcript.)
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`09:13:43
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` Q It's an article entitled Optimisation of
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`09:14:51
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` Processing and Properties of Medical-Grade Nitinol
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` Wire. The first author is AR Pelton. Are you
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` familiar with this article?
`
` A Yes.
`
` Q I'd like to direct you to Page 5 of 12 in
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
`
` Exhibit 1006, left column, under Effects of Test
`
`18
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` Temperature.
`
` A Um-hum.
`
` Q And the second sentence says, In these
`
` tests, wires with an As of negative 22 degrees C and
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` an Af of 11 degrees C were pulled a 6 percent strain,
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` unloaded to zero stress and were then pulled to
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` failure.
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` Do you see that?
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` A Yes, if I can just have a minute to look at
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` that.
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` Q Sure.
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` A Okay.
`
` Q And the preceding sentence says, The
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` tensile curves shown in Figure 5 illustrates that the
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` mechanical behavior of nitinol varies greatly from
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` negative 100 degrees Celsius to 150 degrees Celsius.
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` Do you see that?
`
` A Yes.
`
` Q So I'd like to have you turn to the next
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` page of Exhibit 1006 and to Figure 5.
`
` A Um-hum.
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
`
` Q And you see that there are graphs showing
`
` the results of the -- or excuse me, showing the
`
` tensile curves.
`
` A Yes.
`
` Q And if you look at the top right corner,
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` the graph at 0 degrees Celsius, do you see that?
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` A Um-hum, yes.
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` Q And you would agree that 0 degrees Celsius
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`09:16:39
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` is between negative 22 degrees Celsius and 11 degrees
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`09:16:45
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` Celsius, correct?
`
` A Yes.
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`09:16:51
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`09:16:52
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` Q And you would agree that the stress strain
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`09:16:52
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` graph in Figure 5 on the top right corner, 0 degrees
`
` Celsius, is exhibiting superelastic behavior,
`
` correct?
`
` MR. GINSBERG: Objection to form.
`
` A According to the definition that I am
`
` using, they didn't return it -- they didn't release
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` the load and return it to its original position, but
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` let me just take a look at this again. Okay. Can
`
` you please repeat your question?
`
` Q You would agree that the stress strain
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
`
`20
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` graph in Figure 5 on the top right corner for 0
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` degrees Celsius exhibits superelastic behavior,
`
` correct?
`
` MR. GINSBERG: Objection, form.
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` A That's the way that Pelton is describing it
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` in this paper. It's not the way we've been routinely
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` using the definition in this case.
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` Q How is the 0 degrees Celsius stress-strain
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` curve in Pelton in Figure 5 not showing superelastic
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` behavior?
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` A It looks to me like when they're releasing
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` the stress, it's not coming completely back to the
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` 0/0 axis, the origin.
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` Q You're aware that superelastic nitinol can
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` have something called permanent set?
`
` MR. GINSBERG: Objection to form.
`
` A Well, again, that's the definition we've
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` been using is if it's superelastic, then it doesn't
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` permanently deform.
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` Q So it's your interpretation that
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` superelastic behavior means it has to come back to
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` 100 percent of its original shape?
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` A Yes.
`
` Q And you're aware in the literature that
`
` scientists commonly refer to superelastic materials
`
` having some amount of permanent set, correct?
`
` MR. GINSBERG: Objection to form, lack of
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` foundation.
`
` A In some cases like here Pelton has referred
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` to it as superelastic. In other cases, even
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` Dr. Sinclair, you know, uses that definition that it
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` comes back to its original position.
`
` Q So going back to Page 5 of 12 of Exhibit
`
` 1006, the fourth sentence from about 0 degrees
`
` Celsius --
`
` A Which page?
`
` Q Under Effects of Test Temperature, fourth
`
` sentence, from about 0 degrees Celsius to 100 degree
`
` Celsius the tensile curves exhibit superelastic flags
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` -- sorry, bottom left corner.
`
` A Which page?
`
` Q 5 of 12.
`
` A Okay.
`
` Q Under Effects of Test Temperature, fourth
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
`
`22
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` sentence down. From about 0 degrees Celsius to 100
`
` degrees Celsius the tensile curves exhibit
`
` superelastic flags, and we note that it becomes more
`
` difficult to stress-induce martensite as the test
`
` temperature increases.
`
` Do you see that?
`
` A Yes.
`
` Q So you would agree that Pelton is referring
`
` to the 0 degrees Celsius stress-strain curve as
`
` exhibiting superelastic behavior, correct?
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` MR. GINSBERG: Objection to the form.
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` A That's how he's using superelastic.
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` Q Do you think Pelton is not competent to
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` comment on the definition of superelasticity?
`
` A Can you repeat that?
`
` Q Do you think Pelton is not competent to
`
` comment on the definition of superelasticity?
`
` A No, I think he's competent and able to
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` define it the way that he wants to use it.
`
` Q And you relied on Exhibit 1006 in your
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` declaration, correct?
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` A Yes.
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
`
`23
`
` Q So you agree that the information that
`
` Pelton reported in Exhibit 1006 is correct?
`
` A Well, the information I was relying on had
`
` to do with different figures, so I wouldn't
`
` generalize that everything in here was exactly the
`
` way that we're using those terms routinely in this
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` case.
`
` Q So in your declaration you were picking and
`
` choosing portions of Exhibit 1006 that you wanted to
`
` rely on. Is that correct?
`
` MR. GINSBERG: Objection to form.
`
` A Well, I was using the ones that were
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` relevant to the arguments that I was making.
`
` Q And ignoring the sections of Pelton in
`
` Exhibit 1006 that were contrary to the arguments you
`
` were trying to make?
`
` MR. GINSBERG: Objection to form.
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` A No. I wasn't ignoring. I was -- it was a
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` fair amount of data in here. I was asking to give --
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` I was developing opinions about particular issues and
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` was using the data that would help me make that
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` argument.
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` Q If the Patent Trial and Appeal Board
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` determined that superelasticity did not require
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` nickel-titanium to return to its exact original
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` state, you would agree that Figure 5 in Pelton and
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` the 0 degrees C stress-strain curve would exhibit --
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` was demonstrating superelasticity?
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` MR. GINSBERG: Objection to form.
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` A Yeah, so I'm not sure if the Board makes a
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`09:22:35
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` more what -- what that would mean, but I would agree
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` that superelasticity can be defined the way that
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` Pelton is using it. It's one way, but it's not the
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` way we've been using it in this case.
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` Q Just to understand, it's not the way that
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` you've been using superelasticity in this case,
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` correct?
`
` A Or Dr. Sinclair.
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` Q You're aware that Dr. Sinclair testified
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` that superelasticity does not require the
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` nickel-titanium alloy to return to its 100 percent
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` original state, correct?
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` MR. GINSBERG: Objection to form.
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` A I don't recall that. I mean, I would look
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`25
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` at that. My -- my recollection was there was
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` something in his reports or declaration that
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` established that, and that's what I had been using.
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` Q But are you aware whether he testified that
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` superelasticity also encompassed a material returning
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` to its near original shape?
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` A I don't recall that.
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` Q Would you agree that when nickel-titanium
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` is biphasic and specifically partially R-phase and
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` partially austenite, it can exhibit superelastic
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` behavior as Pelton defines that term?
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` MR. GINSBERG: Objection to form.
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` A Well, I -- I guess I would have to ask you
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` to clarify how Pelton is defining it.
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` Q Allowing for some minimal amount of
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` deformation known as permanent set.
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` MR. GINSBERG: Objection to form.
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` A So when you say minimal -- I guess I'm just
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` trying to clarify how you're now defining
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` superelasticity.
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` Q The amounts shown in Figure 5 for the
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`PLANET DEPOS
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`Videotaped Deposition of A. Jon Goldberg, Ph.D.
`Conducted on October 20, 2015
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` stress-strain curves zero through 60 degrees Celsius.
`
` A All right, well, I mean, I would say the
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` one at 10 degrees does come back to the origin. The
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`26
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` one at 0 degrees and 22 does not.
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` Q And you would agree -- sorry.
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` A No, go ahead. I'm sorry, I was --
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` Q Sorry, I did not mean to interrupt you.
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` A So what's the question?
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` Q You would agree that -- so you were just
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` saying that the 10 degrees Celsius curve goes back to
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` its original shape. Is that right?
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` A Yes.
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` Q And 10 degrees is between 11 degrees
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` Celsius a
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