LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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` I N D E X
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`2 WITNESS
` EXAMINATION
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`LOUIS J. DEFILIPPI, Ph.D.
`4
` By Mr. Weiner
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` By Mr. Vander Tuig
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` 157
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` DEPOSITION EXHIBITS
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`NUMBER
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` DESCRIPTION
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` PAGE
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`Exhibit 1001 United States Patent
` 8,329,458 B2
`Exhibit 1003 Declaration of
` Dr. Louis DeFilippi
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` 4
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`Exhibit 1004 United States Patent
` 4,602,987
`Exhibit 1005 United States Patent
` 4,427,416
`
` 64
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` 94
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`Exhibit 1006 "Batch Absorption of 150
` CO2 by Free and
` Micoencapsulated
` Carbonic Anhydrase"
`Exhibit 1009 "Effects of Encapsulation 62
` in Sol-Gel Silica Glass on
` Easterase Activity,
` Conformation. Stability,
` and Unfolding of Bovine
` Carbonic Anhydrase II"
`
`Exhibit 1010 "The Concise Oxford
` English Dictionary"
` (excerpt)
`
` 29
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`Page 4
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` (Witness sworn.)
` LOUIS J. DEFILIPPI, Ph.D.,
`called as a witness herein, having been first
`duly sworn, was examined and testified as
`follows:
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AKERMIN, INC.
`
` Petitioner
`
` vs.
`
` CO2 SOLUTIONS, INC.
`
` Patent Owner
`
` Case No. IPR 2015-00880
`
` Patent No. 8,329,458
`
` THE DEPOSITION OF LOUIS J.
`
`DEFILIPPI, PH.D., taken at the offices of
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`14 Marshall Gerstin Borun, LLP, taken before Janice
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`15 M. Kocek, CSR, CLR, Notary Public and Certified
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`Shorthand Reporter of said State, taken at Willis
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`Tower, 233 South Wacker Drive, Suite 6300,
`
`Chicago, Illinois, on the 2nd day of December,
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`2015, at the hour of 9:00 o'clock a.m.
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`Page 2
`
` APPEARANCES:
` SENNIGER POWERS LLP
` BY: MR. MARC W. VANDER TUIG
` 100 North Broadway
` 17th Floor
` Saint Louis, Missouri 63102
` 314.345.7000
` mvandertuig@senniger.com
` Representing Akermin, Inc.;
` MARSHALL GERSTEIN BORUN LLP
` BY: MR. MICHAEL R. WEINER
` MR. SANDIP H. PATEL
` 233 South Wacker Drive
` 6300 Willis Tower
` Chicago, Illinois 60606-6357
` 312.474.6300
` mweiner@marshallip.com
` spatel@marshallip.com
` Representing CO2 Solutions, Inc.
` ALSO PRESENT:
` Ms. Tina M. Ortman
` Marshall Gerstein Borun LLP
` Litigation Paralegal Manager
`
`Court Reporter: Janice M. Kocek, CSR, CLR
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` EXAMINATION
`BY MR. WEINER:
` Q. Good morning, Dr. DeFilippi. My
`name is Michael Weiner. I represent CO2
`Solutions in an IPR proceeding before the U.S.
`Patent and Trademark Office, Patent Trial and
`Appeal Board.
` Would you state your name, please,
`for the record.
` A. Full name is Louis J. DeFilippi.
` (Exhibit 1003 was marked for
` identification.)
`BY MR. WEINER:
` Q. Dr. DeFilippi, I'd like to hand
`you copy of what's been marked Exhibit 1003. I
`have a copy for counsel.
` Do you recognize this that
`document?
` A. Yes, I believe I do.
` Q. Do you recognize this document as
`CO2 Solutions Inc.
`Exhibit 2017
`Akermin, Inc. v. CO2 Solutions Inc.
`IPR2015-00880
`Page 1 of 70
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`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.DEPO(3376)
`
`1 (Pages 1 to 4)
`
`

`
` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
`
`Page 1
`
`Page 3
`
` I N D E X
`1
` EXAMINATION
`2 WITNESS
`3
`LOUIS J. DEFILIPPI, Ph.D.
`4
` By Mr. Weiner
`5
` By Mr. Vander Tuig
`6
`
` 4
` 157
`
` DEPOSITION EXHIBITS
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`NUMBER
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` DESCRIPTION
`
` PAGE
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`Exhibit 1001 United States Patent
` 8,329,458 B2
`Exhibit 1003 Declaration of
` Dr. Louis DeFilippi
`
` 14
`
` 4
`
`Exhibit 1004 United States Patent
` 4,602,987
`Exhibit 1005 United States Patent
` 4,427,416
`
` 64
`
` 94
`
`Exhibit 1006 "Batch Absorption of 150
` CO2 by Free and
` Micoencapsulated
` Carbonic Anhydrase"
`Exhibit 1009 "Effects of Encapsulation 62
` in Sol-Gel Silica Glass on
` Easterase Activity,
` Conformation. Stability,
` and Unfolding of Bovine
` Carbonic Anhydrase II"
`
`Exhibit 1010 "The Concise Oxford
` English Dictionary"
` (excerpt)
`
` 29
`
`Page 4
`
` (Witness sworn.)
` LOUIS J. DEFILIPPI, Ph.D.,
`called as a witness herein, having been first
`duly sworn, was examined and testified as
`follows:
`
` EXAMINATION
`BY MR. WEINER:
` Q. Good morning, Dr. DeFilippi. My
`name is Michael Weiner. I represent CO2
`Solutions in an IPR proceeding before the U.S.
`Patent and Trademark Office, Patent Trial and
`Appeal Board.
` Would you state your name, please,
`for the record.
` A. Full name is Louis J. DeFilippi.
` (Exhibit 1003 was marked for
` identification.)
`BY MR. WEINER:
` Q. Dr. DeFilippi, I'd like to hand
`you copy of what's been marked Exhibit 1003. I
`have a copy for counsel.
` Do you recognize this that
`document?
` A. Yes, I believe I do.
` Q. Do you recognize this document as
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AKERMIN, INC.
`
` Petitioner
`
` vs.
`
` CO2 SOLUTIONS, INC.
`
` Patent Owner
`
` Case No. IPR 2015-00880
`
` Patent No. 8,329,458
`
` THE DEPOSITION OF LOUIS J.
`
`DEFILIPPI, PH.D., taken at the offices of
`
`1
`
`2
`
`3 4
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`5
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`6
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`7
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`8
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`9
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`14 Marshall Gerstin Borun, LLP, taken before Janice
`
`15 M. Kocek, CSR, CLR, Notary Public and Certified
`
`Shorthand Reporter of said State, taken at Willis
`
`Tower, 233 South Wacker Drive, Suite 6300,
`
`Chicago, Illinois, on the 2nd day of December,
`
`2015, at the hour of 9:00 o'clock a.m.
`
`Page 2
`
` APPEARANCES:
` SENNIGER POWERS LLP
` BY: MR. MARC W. VANDER TUIG
` 100 North Broadway
` 17th Floor
` Saint Louis, Missouri 63102
` 314.345.7000
` mvandertuig@senniger.com
` Representing Akermin, Inc.;
` MARSHALL GERSTEIN BORUN LLP
` BY: MR. MICHAEL R. WEINER
` MR. SANDIP H. PATEL
` 233 South Wacker Drive
` 6300 Willis Tower
` Chicago, Illinois 60606-6357
` 312.474.6300
` mweiner@marshallip.com
` spatel@marshallip.com
` Representing CO2 Solutions, Inc.
` ALSO PRESENT:
` Ms. Tina M. Ortman
` Marshall Gerstein Borun LLP
` Litigation Paralegal Manager
`
`Court Reporter: Janice M. Kocek, CSR, CLR
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`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.DEPO(3376)
`
`1 (Pages 1 to 4)
`
`Fax: 314.644.1334
`
`Page 2 of 70
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`

`
` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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`the declaration you provided for Akermin, Inc.,
`in connection with the IPR proceeding that I
`referred to?
` A. I believe that's correct, yes.
` Q. Dr. DeFilippi, have you ever had
`your deposition taken before?
` A. Yes, I have.
` Q. And how many times have you had
`your deposition taken?
` A. I didn't look it up, but somewhere
`in the neighborhood of four, five, six.
` Q. Have you ever had a deposition
`taken in connection with a Patent Office
`proceeding?
` A. Yes, but I, I believe it was
`before the inter partes review. It was a patent
`infringement case.
` Q. So that was probably before a
`district court, a patent infringement matter?
` A. Well, I presented it under
`conditions similar to this. So there was no --
`it wasn't a court proceeding directly.
` Q. I understand. So you understand
`that you're testifying under oath today?
` A. Yes.
`
`was at the University of Michigan. There are a
`1
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`couple of extraneous degrees in think which
`really don't count. A master's degree was just a
`3
`formality.
`4
` So the Ph.D. was granted in
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`January of 1976. And then postdoctoral work at
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`7 Michigan for a few months and then in July at
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`Cornell University in Ithaca for two years in the
`9
`laboratory of Quentin Gibson.
` Q. And after your postdoc, you went
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`to work for ULP?
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` A. Exactly, yes.
` Q. Can you briefly describe what kind
`13
`of work you did for ULP?
`14
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` A. Yes. They brought me in to work
`16
`with immobilized enzymes, because they were big
`17
`in immobilized catalysts, and they wanted to then
`18 move into biological catalysts. So I was in a
`19
`program with them to develop commercial products
`20
`involving immobilized enzymes.
` Q. Generally, what types of products
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`were you trying to develop there?
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` A. This was immobilized glucose
`24
`isomerase, and it actually did go commercial to
`25 make high fructose corn syrup. Now that's a
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`Page 6
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` Q. And you understand that the court
`2
`reporter will be taking down all the questions
`3
`and answers today?
` A. Yes.
`4
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` Q. Is there anything you're aware of
`6
`that would interfere with your ability to testify
`7
`completely and truthfully today?
` A. No.
`8
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` Q. If at any time you need to take a
`10
`break today during the deposition, just let me
`11
`know and we'll accommodate that. The only
`12
`exception will be if there's a question pending,
`13
`we try to complete that before we take a break.
` A. Sure.
`14
`15
` Q. Do you understand that the Patent
`16 Office rules prohibit you from discussing your
`17
`testimony with your counsel until after the
`18
`cross-examination deposition is completed?
`19
` A. Yes.
`20
` Q. I know you covered this in your
`21
`declaration, but could you briefly describe your
`22
`educational background?
`23
` A. Bachelor -- BA, Bachelor of Arts,
`24
`in chemistry with honors from Queens college,
`25
`City University of New York, 1971. Graduate work
`
`dirty word. Back then it was nice. And other
`1
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`enzymes, of course, but that was the main one.
` Q. Did you ever do any work for them
`3
`involving carbonic anhyrase?
`4
` A. Not at ULP, no.
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` Q. You did work with carbonic
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`anhydrase at a later time?
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` A. Well, I had to become familiar
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`with carbonic anhydrase in graduate school
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`because I was working with heme proteins and
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`11 metalloproteins and red cells. And besides
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`hemoglobin, the obvious, carbonic anhydrase is
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`one of the major enzymes in the red blood cell.
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` And then at a later date, when I
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`was consulting at ThermoGen, I helped some of the
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`business development and scientists there put
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`together a proposal involving CO2 sequestration
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`involving carbonic anhydrase -- immobilized
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`carbonic anhyrase.
` Q. When was that work at ThermoGen?
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` A. ThermoGen, I'm just going to give
`22
`you rough times, was around -- I'm going to say
`23
`1999 to 2000 when I started.
` Q. So that was -- after you left ULP,
`24
`you went to ThermoGen?
`25
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`www.midwestlitigation.com
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`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.DEPO(3376)
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`2 (Pages 5 to 8)
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`Fax: 314.644.1334
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`Page 3 of 70
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`

`
` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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`Page 9
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` A. Well, no. I was -- after ULP,
`1
`there were -- I tell people I worked for six
`2
`companies but never moved my desk. There were
`3
`all these mergers and divestitures. I ended up
`4
`with Allied Signal. And Allied Signal is the
`5
`company that I left.
`6
` I was laid off in 1995. Then they
`7
`hired me back in 1996, then laid me off again in
`8
`1997, then offered to hire me back again around
`9
`2007. I turned them down on the third time.
`10
`So...and then outside of that, I was consulting,
`11
`independent consulting.
`12
`13
` Q. How long were you with ThermoGen?
` A. Well, I was consulting with them,
`14
`not an employee.
`15
`16
` Q. I see.
` A. Again, I was with ThermoGen,
`17
`18 MediChem, and DeCode Genetics. MediChem bought
`19
`out ThermoGen. DeCode bought out MediChem. So,
`20
`again, I'm -- I had the same desk.
`21
` Q. You went through a lot of
`22
`corporate changes?
`23
` A. Three different companies. Yeah,
`24
`and I, I -- if I remember right, around 2003 is
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`when I stopped consulting for that group of
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`companies.
` Q. When you did the work for
`ThermoGen on CO2 sequestration, what kind of
`technology were you using for that sequestration?
` A. Immobilized enzymes in a reactor,
`in an immobilized enzyme reactor.
` Q. With carbonic anhyrase?
` A. Yes.
` Q. And was that with a triphasic
`reactor?
` A. It would have to be. It would
`have to be, because you have the gaseous phase,
`carbon dioxide. You have the solid immobilized
`enzyme and then the aqueous phase. So it would
`have to be three phases.
` Q. And that was around 1999 or 2000
`when you began?
` A. Exactly, yes.
` Q. Was that the first time you did
`work for the triphasic reactor?
` A. I worked with triphasic reactors a
`number of times previously but not with a
`suspended bed. I worked mostly with a packed
`bed, if you understand the difference.
` Q. Okay. Well, can you explain what
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`you mean by a packed bed?
` A. Packed bed, the bottom line is
`that the support is not moving. It's, it's held
`in place in a reactor.
` Q. And by "support," are you
`referring to what the catalyst is attached to?
` A. Exactly. Some people call that
`the substrate, and I don't like using that term
`because the substrate is the molecule that the
`enzyme acts on, and it's a great way to be
`confusing. I can call it substratum to
`differentiate from substrate. But I don't.
`Otherwise, it's just confusing.
` Q. So in connection with CO2
`sequestration, you refer to CO2 as the substrate?
` A. That would be one of the
`substrates.
` Q. And you refer to -- but
`sometimes -- it's referred to in documents that
`have come up in this case. But sometimes it's
`been referred to as a substrate. You generally
`refer to that as a support for what --
` A. Either a support or substratum.
`Usually support. Otherwise, it's confusing.
` Q. Prior to this engagement, have you
`
`Page 12
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`ever done any work for Akermin, Inc.?
` A. No.
` Q. Referring to your declaration
`that's been handed to you before, Exhibit 1003,
`are you aware of any errors that should be
`corrected in your testimony?
` A. I do not believe there are any or
`not that I'm aware of.
` Q. Are you aware of any information
`that may be inconsistent with views expressed in
`your declaration?
` A. No.
` Q. In paragraph 6 of your deposition
`
`--
`
` A. To which page are you referring?
`I got it. Page 7 in the lower right.
` Q. We're at page 7. So there's two
`different sets of numbering on here. There's
`page 7 that's in the lower right-hand corner,
`paragraph 6.
` A. Right.
` Q. You refer to a number of documents
`that you reviewed in preparing your declaration;
`is that correct?
` A. Yes.
`
`www.midwestlitigation.com
`
`MIDWEST LITIGATION SERVICES
`Phone: 1.800.280.DEPO(3376)
`
`3 (Pages 9 to 12)
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`Page 4 of 70
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`

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` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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` Q. Other than the items listed there,
`is there anything else that you reviewed in
`preparing your declaration?
` A. Nothing that I based my opinion
`on. Of course, you look at a number of other
`things, which I didn't see as being necessary to
`refer to. It didn't change my opinion. It
`didn't improve it or disprove it.
` Q. Nothing you reviewed that was
`inconsistent with your opinions?
` A. Yes. Correct.
` Q. Now, paragraph 6 says that you
`reviewed a number of things. And in the second
`line of paragraph 6, it says you reviewed
`Exhibits 1004 to 1015, correct?
` A. That's what it states, yes.
` Q. Did you realize your declaration
`actually refers to some additional exhibits
`numbered 1016 to 1020?
` A. I do know that. As a matter of
`fact, I found two that were 1018s in my files,
`yes. So I'm assuming one is a 1018 and one is a
`1019.
` Q. Now, your declaration refers up
`through Exhibit 1020.
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`Page 14
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` A. Does it? All right.
`1
` Q. So I'm assuming you reviewed those
`2
`as well in addition to 1004 to 1015?
`3
` A. I'd have to see them to confirm
`4
`that.
`5
` Q. Okay. We may have some questions
`6
`on those specific exhibits and we can kind of
`7
`hold those until later.
`8
` A. Good.
`9
` (Exhibit 1001 was marked for
`10
` identification.)
`11
`BY MR. WEINER:
`12
` Q. Let me give another exhibit to
`13
`you. This is what has been marked as 1001. Do
`14
`you recognize 1001?
`15
` A. Yes. This is what I've been
`16
`referring to as the '458 patent.
`17
` Q. You understand this is the patent
`18
`that's being reviewed by the Patent Office in the
`19
`IPR proceeding?
`20
` A. Yes, that's my understanding.
`21
` Q. Prior to being engaged for this
`22
`23 matter by Akermin, were you familiar with the
`'458 patent?
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` A. I was not.
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` Q. Are you familiar with Carmen
`Parent -- I probably didn't get the right French
`pronunciation on that -- or the other listed
`inventor of the '458 patent?
` A. Carmen Parent.
` Q. That sounds better.
` A. Too many years of French. I'm not
`familiar with them. Frédéric Dutil from Quebec,
`no.
` Q. I'd like to direct your attention
`to paragraph 43 of your declaration. That's page
`24 in the lower right-hand corner.
` A. Got it. Yes.
` Q. Now, paragraph 43 states that "a
`person of ordinary skill in the art at the time
`of the alleged invention of the '458 patent would
`have had at least a Bachelor of Science degree in
`chemical engineering, chemistry or biochemistry,
`and at least five years' experience in research
`or development in fields or industries pertinent
`to the art (e.g. immobilized biocatalysis.)"
` Did I read that correctly?
` A. I believe you did.
` Q. How did you come up with this
`statement of the level of skill in the art?
`
`Page 16
`
` A. I've used similar or it has been
`used similar to this for other programs I've been
`on, other projects where I've been deposed. I've
`seen the other parties use that. So it's just a
`general set of -- or a general level of
`experience.
` Q. And you understand that, in the
`context of patent law, that the person of
`ordinary skill in the art is the perspective from
`which a number of things were evaluated,
`including what would be understood in a
`reference?
` A. Yes.
` Q. And you understand that that's the
`perspective that's relevant for interpreting the
`language of patent claims as well, right?
` A. Yes.
` Q. In that statement in paragraph 43,
`what did you mean by "fields or industries
`pertinent to the art"?
` A. Anything involving, for example,
`processes that employ biological catalysts.
` Q. In your view, is experience in
`immobilized biocatalysis required for a person to
`have ordinary skill?
`
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` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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`Page 17
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`Page 19
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` A. I would say it's advantageous but
`1
`2
`not necessarily required.
` Q. Is that the reason why you
`3
`preceded that term by "e.g."?
`4
` A. Yeah. That's for example.
`5
` Q. Okay. That's one example.
`6
` Is there any particular experience
`7
`that you think would be required for a person to
`8
`have ordinary skill in this art?
`9
` A. Well, they would have to
`10
`understand enzymatic catalysis. That would be
`11
`the most important. Or biocatalysis you could
`12
`call it. And also have a feel for the physical
`13
`nature of how liquids and gases interact. Those
`14
`would be two relatively important.
`15
` Q. Would a person of ordinary skill
`16
`need to have experience in designing chemical
`17
`reactors?
`18
` A. Since this does involve the design
`19
`of a chemical reactor or biochemical reactor, it
`20
`would be, again, advantageous.
`21
` Q. "Advantageous," by that do you
`22
`23 mean not necessarily required?
`24
` A. Not necessarily required because
`25
`you could work with other similar things, for
`
`The "physically trapped" was expanded to include
`1
`2
`the concept caught in a cage. And that was in
`the Bonaventura patent. So you look at a number
`3
`of sources to get the most appropriate
`4
`definition.
`5
` Q. Okay. And I'll have some more
`6
`specific questions about some of those terms in a
`7
`little bit.
`8
` A. Sure.
`9
` Q. How did you identify -- well, let
`10
`11 me strike that.
` You understand these are terms
`12
`that appear in the claims of the patent that's
`13
`under review, right?
`14
`15
` A. Yes. Yes.
` Q. How did you identify which terms
`16
`required explanation under construction?
`17
`18
` A. Well, each claim is going to have
`19
`a number of elements, and you have to understand
`20
`what the elements mean. And in order to
`21
`understand those, you have to know your
`22
`definitions. So anything that looked like it was
`23
`important.
` Q. So you reviewed the claims that
`24
`were going to be reviewed, and you determined
`25
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`example, chromatography columns, and you would
`learn through that, through the physical
`interactions there.
` Q. Do you think a person of ordinary
`skill would need to have experience in operating
`chemical or biochemical reactors?
` A. I would not say so.
` Q. Moving ahead to paragraph 48 in
`your declaration, I'm referring to the table in
`that paragraph with proposed constructions for a
`number of terms.
` Do you see that there?
` A. Yes.
` Q. How did you arrive at the claim
`constructions as set forth in that table in
`paragraph 48?
` A. These are standard scientific or
`dictionary definitions.
` Q. And specifically did you look at
`dictionaries to find all these definitions?
` A. A number of them. Either
`dictionaries or there would be a number of
`articles that explain what these mean. They,
`they line it out and explain.
` For example, the -- excuse me.
`
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`which ones you thought needed some explanation as
`to their meaning?
` A. Yes, yes. And it also appears in
`the description or the invention in other
`locations.
` Q. In your view, the other language
`that's in the claims but doesn't appear in this
`table in paragraph 48, you think that doesn't
`require construction?
` A. I don't know if it requires
`construction or not, but it doesn't require
`understanding.
` Specifically, you're talking
`about -- are you talking about the summary of the
`invention? Is that what you're referring to?
` Q. I was just referring generally to
`other language that may be in the claims but
`doesn't appear in this table in 48.
` A. Well, the claims are what matter
`in a sense. You really have to know all the
`understanding of the terms in the claims.
` Q. Okay. And 48 includes the terms
`that you thought needed some explanation?
` A. Yes.
` Q. Now, in paragraph 49, you've
`
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` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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`identified some documents that you referred to as
`supporting your constructions; is that right?
` A. Yes.
` Q. Other than those cite exhibits,
`did you review any other reference materials to
`determine the proper construction for each of the
`terms?
` A. I read other materials, but I
`don't recall having involved them in determining
`the construction. What you see here is what was
`used.
` Q. Did you review anything else that
`you thought might have been pertinent to the
`construction of the terms?
` A. Again, I used these items. I did
`review other items. It could have been
`duplicates or explained the same thing, so they
`were not presented.
` Q. Do you recall specifically what
`else you reviewed --
` A. No.
` Q. -- in connection with claim
`construction?
` A. No. No. Sorry.
` Q. Was there anything you saw that
`
` A. Right, a reviewed paper or a
`1
`2
`dictionary example, a standard dictionary.
` Q. Do you typically use the Concise
`3
`4 Oxford English Dictionary?
`5
` A. Not typically. I use that. I use
`6 Webster's and also Funk & Wagnalls, which I --
`7
`goes back to my college days. I probably
`8 mispronounced it.
` Q. Okay. And why is it that in your
`9
`constructions you cite or rely on the Oxford
`10
`Dictionary for some terms but not others? And
`11
`specifically you cite the Oxford Dictionary for
`12
`"suspension," "porous," and "filter" but not for
`13
`the terms "entrap," "filtration,"
`14
`"ultrafiltration," "microfiltration"?
`15
`16
` A. It's where I came across the
`17 meaning. I was not cherry-picking. I looked for
`18
`something which I believe was a good and an
`19
`appropriate description of the term.
` Q. So you looked for something that
`20
`you felt was consistent with your understanding
`21
`of what the term was?
`22
`23
` A. To a certain degree; although if I
`24
`found something that I didn't expect, I would
`25
`look at a number of different references to
`
`Page 22
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`Page 24
`
`1 might have been inconsistent with the
`constructions you proposed?
`2
`3
` A. You're talking from these
`4
`references?
` Q. I mean from other references that
`5
`6 might not be listed in paragraph 49.
`7
` A. No, I did not.
` Q. In your experience, if you come
`8
`across a technical term for which you're unsure
`9
`of the meaning, how would you go about
`10
`determining the meaning of the term?
`11
`12
` A. Quite often, I'd do a search on
`13
`the Internet to find some other reviewed papers
`14
`or texts that involved that term and, from that,
`15
`deduce the proper meaning.
` Q. And in connection with the
`16
`Internet search, what kinds of references would
`17
`you be looking for?
`18
`19
` A. As I said, it would be -- reviewed
`20
`papers would be the most important as opposed to
`21
`something like Wikipedia, which, as far as I
`22
`understand, is not reviewed.
` Q. So when you review something
`23
`that's a reviewed paper, it would have more
`24
`authority than other types of references?
`25
`
`correct myself accordingly.
`1
`2
` Q. All the terms that are mentioned
`3
`in paragraph 48, were those terms that you were
`4
`previously familiar with before working on this
`5
`case?
` A. Let me see. I would say yes.
`6
`7
` Q. In what circumstances would you
`8
`use a technical dictionary or reference book
`9
`rather than a general dictionary?
` A. Well, use the technical if it's
`10
`11 more technical. That's answering the question
`12
`with a question. But if it -- you would use it
`13
`if it's -- if you needed a more in-depth
`14
`understanding.
`15
` Q. But in your view, you thought the
`16
`general dictionary was appropriate for the terms
`17
`"suspension," "porous," and "filter"?
`18
` A. Yes.
`19
` Q. And in paragraph 46, you
`20
`acknowledge that claim terms should be given
`21
`their broadest reasonable construction in light
`22
`of the specification; is that correct?
`23
` A. Yes.
`24
` Q. So you're familiar with that
`25
`standard from patent law?
`
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`

`
` LOUIS J. DEFILIPPI, Ph.D. 12/2/2015
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` A. Well, I'm not a legal expert, but
`1
`-- so as a nonlegal expert, I have an
`2
`understanding. That's the honest answer.
`3
` Q. But you've done consulting work on
`4
`patent cases before?
`5
` A. Yes, I have. So I'm practicing
`6
`law without a license. Whatever term you want to
`7
`use.
`8
` Q. I understand you also have a
`9
`number of patents for which you're a named
`10
`inventor, right?
`11
` A. Oh, absolutely, yes.
`12
` Q. In connection with those patents,
`13
`were you actively involved in the patent
`14
`prosecution process before the Patent Office?
`15
` A. On occasion, yes. I would say
`16
`17 more often than not, no. But, yes, on occasion,
`18
`yes.
` Q. Referring back to that phrase in
`19
`paragraph 46 about "claim terms should be given
`20
`their 'broadest reasonable construction in light
`21
`of the specification,'" what do you understand to
`22
`be meant by the phrase "in light of the
`23
`specification"?
`24
`25
` A. Now we're getting a little on the
`
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` Q. -- to explain what the meaning is?
` A. Yes.
` Q. In your opinion, are the
`constructions identified in paragraph 48 the
`broadest reasonable constructions for each of the
`terms?
` A. I would say yes. May I look at it
`really quickly?
` Q. Sure. Please take all the time
`you need.
` A. I mean, you can always refine some
`of these. For example, where it says "porous
`substrates," you're talking about liquid or air.
`And I think air is generally taken as a gas, so
`you could substitute it out. But the meaning
`wouldn't be changing. This is for porous
`substrates. So I would say they're okay as they
`are.
` Q. Okay. So you don't have any
`corrections to make, as you sit here, to these
`constructions?
` A. No. I think anybody with
`experience in the field would understand when you
`say air, it would also be a gas.
` Q. Okay. For porous substrates,
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`legal side. You have to understand the
`specification in order to determine what the
`broadest reasonable construction should be.
` Q. You understand that the
`specification is the proper context in which the
`term should be construed, right?
` A. Yes, yes.
` Q. And then in paragraph 47 you
`acknowledge that "claim terms, unless a special
`and particular definition is provided, should be
`afforded their ordinary and accustomed meaning
`that they would have to a person of ordinary
`skill in the art," right?
` A. Yes.
` Q. And what's your understanding of
`that -- portion of that phrase, "ordinary and
`accustomed meaning"?
` A. It's always been my understanding,
`if it's not given a special definition or a
`description in the patent, then it's what someone
`who's got -- who has some experience in the field
`would ordinarily use, independent of the patent.
` Q. For example, you could rely on
`your own experience from working in the field --
` A. Yes.
`
`you're saying?
`1
` A. Right.
`2
` Q. Liquid or air or other gases --
`3
` A. Yes, right.
`4
` Q. -- would be a little more precise?
`5
` A. Yes, right.
`6
` Q. But in context, in your view, that
`7
`would be understood? When you refer to air,
`8
`that's understood by someone with skill in the
`9
`art?
`10
` A. Yes.
`11
` Q. For these terms, are you aware of
`12
`other reasonable constructions for the terms that
`13
`14 might be not as broad as your constructions?
`15
` A. Not that I'm aware of.
` Q. Okay. Well, let's go to some
`16
`specific terms, and I have some more specific
`17
`questions for you.
`18
` Let's start with "in suspension,"
`19
`which is the first term listed in paragraph 48.
`20
`In 48, you state that "'in suspension should be
`21
`construed as a mixture in which particles are
`22
`heterogeneously dispersed throughout the bulk of
`23
`a fluid."
`24
` Did I read that correctly?
`25
`
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