WARREN P. HEIM, P.E.
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` 3 PRAXAIR DISTRIBUTION, INC.
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` 4 Petitioner
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` 5 v.
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` 6 INO THERAPEUTICS, LLC,
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` 7 Patent Owner
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` 8 Case IPR2015-00529
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` 9 U.S. Patent No. 8,846,112 B2
`
`10
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`11 The deposition of WARREN P. HEIM,
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`12 P.E., was held on Tuesday, February 2, 2016,
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`13 commencing at 8:56 a.m., at the Law Offices of
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`14 Latham & Watkins, 330 North Wabash Avenue,
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`15 Suite 2800, Chicago, Illinois, before Janice M.
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`16 Kocek, CSR, CLR, and Notary Public of the
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`17 County of Cook, State of Illinois.
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`18
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`1
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`001
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` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 3 PRAXAIR DISTRIBUTION, INC.
`
` 4 Petitioner
`
` 5 v.
`
` 6 INO THERAPEUTICS, LLC,
`
` 7 Patent Owner
`
` 8 Case IPR2015-00529
`
` 9 U.S. Patent No. 8,846,112 B2
`
`10
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`11 The deposition of WARREN P. HEIM,
`
`12 P.E., was held on Tuesday, February 2, 2016,
`
`13 commencing at 8:56 a.m., at the Law Offices of
`
`14 Latham & Watkins, 330 North Wabash Avenue,
`
`15 Suite 2800, Chicago, Illinois, before Janice M.
`
`16 Kocek, CSR, CLR, and Notary Public of the
`
`17 County of Cook, State of Illinois.
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`1
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`001
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`WARREN P. HEIM, P.E.
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` 1 APPEARANCES:
`
` 2 ON BEHALF OF PRAXAIR DISTRIBUTION, INC.
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` 3 BENJAMIN E. WEED, ESQUIRE
` K&L Gates
` 4 70 West Madison Street
` Suite 3100
` 5 Chicago, Illinois 60602-4207
` 312.372.1121
` 6 benjamin.weed@klgates.com
`
` 7 ON BEHALF OF INO PHARMACEUTICALS, LLC:
`
` 8 LATHAM & WATKINS LLP
` BY: MR. DAVID K. CALLAHAN
` 9 330 North Wabash Avenue
` Suite 2800
`10 Chicago, Illinois 60611
` 312.876.7700
`11 david.callahan@lw.com
`
`12 -and-
`
`13 LATHAM & WATKINS LLP
` BY: MR. ANDREW J. FOSSUM
`14 811 Main Street
` Suite 3700
`15 Houston, Texas 77002
` 713.546.7449
`16 andrew.fossum@lw.com
`
`17 ALSO PRESENT:
`
`18 KENNETH D. GOETZ, Mallinckrodt Pharmaceuticals
` VP, Intellectual Property
`19
` DONALD A. LOHMAN, Mallinckrodt Pharmaceuticals
`20 Associate General Counsel
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`21
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`22
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`23
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`24
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`2
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`002
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`WARREN P. HEIM, P.E.
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` 1 I N D E X
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` 2 WITNESS EXAMINATION
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` 3 WARREN P. HEIM, P.E.
`
` 4 By Mr. Weed 6
`
` 5 DEPOSITION EXHIBITS
`
` 6 NUMBER DESCRIPTION PAGE
`
` 7 Praxair Exhibit 1001A
` United States Patent 8,573,210 B2
` 8 Date of Patent: Nov. 5, 2013
`
` 9 Praxair Exhibit 1001B
` United States Patent 8,776,794 B2
`10 Date of Patent: Jul. 15, 2014
`
`11 Praxair Exhibit 1001C
` United States Patent 8,776,795 B2
`12 Date of Patent: Jul. 15, 2014
`
`13 Praxair Exhibit 1001D
` United States Patent 8,291,904 B2
`14 Date of Patent: Oct. 23, 2012
`
`15 Praxair Exhibit 1001E
` United States Patent 8,573,209 B2
`16 Date of Patent: Nov. 5, 2013
`
`17 Praxair Exhibit 1002A
` Declaration of Robert T. Stone, Ph.D.
`18 U.S. Patent No. 8,776,794
`
`19 Praxair Exhibit 1002B
` Declaration of Robert T. Stone, Ph.D.
`20 U.S. Patent No. 8,573,209
`
`21 Praxair Exhibit 1002C 49
` Declaration of Robert T. Stone, Ph.D.
`22 U.S. Patent No. 8,573,210
`
`23 Praxair Exhibit 1002D 49
` Declaration of Robert T. Stone, Ph.D.
`24 U.S. Patent No. 8,291,904
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`
`
`
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`3
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`003
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`WARREN P. HEIM, P.E.
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` 1 DEPOSITION EXHIBITS
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` 2 NUMBER DESCRIPTION PAGE
`
` 3 Praxair Exhibit 1002E 49
` Declaration of Robert T. Stone, Ph.D.
` 4 U.S. Patent No. 8,776,795
`
` 5 Praxair Exhibit 1004 74
` United States Patent 7,114,510 B2
` 6 Date of Patent: Oct. 3, 2006
`
` 7 Praxair Exhibit 1006 142
` Demande De Brevet D'Invention
` 8
`
` 9 Heim Exhibit 1021 24
` Resume for Warren P. Heim, P.E.
`10 from TeamMedical.us Website
`
`11 Exhibit 2021A 41
` Declaration of Warren P. Heim, P.E.,
`12 in Support of Patent Owner's Response
` to Petition for Inter Partes Review of
`13 U.S. Patent No. 8,291,904
`
`14 Exhibit 2021B 41
` Declaration of Warren P. Heim, P.E.,
`15 in Support of Patent Owner's Response
` to Petition for Inter Partes Review of
`16 U.S. Patent No. 8,776,795
`
`17 Exhibit 2021C 41
` Declaration of Warren P. Heim, P.E.,
`18 in Support of Patent Owner's Response
` to Petition for Inter Partes Review of
`19 U.S. Patent No. 8,573,210
`
`20 Exhibit 2021D 41
` Declaration of Warren P. Heim, P.E.,
`21 in Support of Patent Owner's Response
` to Petition for Inter Partes Review of
`22 U.S. Patent No. 8,573,209
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`23
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`24
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`4
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`004
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`WARREN P. HEIM, P.E.
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` 1 DEPOSITION EXHIBITS
`
` 2 NUMBER DESCRIPTION PAGE
`
` 3 Exhibit 2021E 41
` Declaration of Warren P. Heim, P.E.,
` 4 in Support of Patent Owner's Response
` to Petition for Inter Partes Review of
` 5 U.S. Patent No. 8,776,794
`
` 6 Exhibit 2022 23
` Curriculum Vitae for Warren P. Heim, P.E.
` 7
` Exhibit 2042A
` 8 Supplemental Declaration of
` Warren P. Heim, P.E., in Support of
` 9 Patent Owner's Response to Petition for
` Inter Partes Review of U.S. Patent
`10 No. 8,291,904
`
`11 Exhibit 2042B 49
` Supplemental Declaration of
`12 Warren P. Heim, P.E., in Support of
` Patent Owner's Response to Petition for
`13 Inter Partes Review of U.S. Patent
` No. 8,776,794
`14
` Exhibit 2042C 49
`15 Supplemental Declaration of
` Warren P. Heim, P.E., in Support of
`16 Patent Owner's Response to Petition for
` Inter Partes Review of U.S. Patent
`17 No. 8,573,209
`
`18 Exhibit 2042D 49
` Supplemental Declaration of
`19 Warren P. Heim, P.E., in Support of
` Patent Owner's Response to Petition for
`20 Inter Partes Review of U.S. Patent
` No. 8,573,210
`21
` Exhibit 2042E 49
`22 Supplemental Declaration of
` Warren P. Heim, P.E., in Support of
`23 Patent Owner's Response to Petition for
` Inter Partes Review of U.S. Patent
`24 No. 8,776,795
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`
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`5
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`005
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`WARREN P. HEIM, P.E.
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` 1 WARREN P. HEIM, P.E.,
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` 2 called as a witness herein, having been first duly
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` 3 sworn, was examined and testified as follows:
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` 4 EXAMINATION
`
` 5 BY MR. WEED:
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`08:56 6 Q. Good morning, Mr. Heim.
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`08:56 7 A. Good morning.
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`08:56 8 Q. Would you please state and spell
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`08:56 9 your name for me?
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`08:56 10 A. Warren P. Heim, W-a-r-r-e-n, middle
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`08:56 11 initial P, as in Paul, H-e-i-m.
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`08:56 12 Q. And you're a professional engineer,
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`08:56 13 correct?
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`08:56 14 A. Yes.
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`08:56 15 Q. Are there any other letters
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`08:56 16 following your name designating other training?
`
`08:57 17 A. No.
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`08:57 18 Q. Have you been deposed before?
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`08:57 19 A. Yes.
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`08:57 20 Q. How many times?
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`08:57 21 A. Approximately five.
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`08:57 22 Q. Do you remember when the first time
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`08:57 23 that you gave a deposition was?
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`08:57 24 A. Probably would have been about 1995
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`6
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`WARREN P. HEIM, P.E.
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`08:57 1 perhaps. I don't know exactly.
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`08:57 2 Q. Was that first deposition related to
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`08:57 3 a patent matter?
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`08:57 4 A. I don't think so. There were two
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`08:57 5 approximately the same time, distant past. I
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`08:58 6 don't remember the sequence.
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`08:58 7 Q. Have you been deposed in connection
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`08:58 8 with a patent matter before?
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`08:58 9 A. Yes.
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`08:58 10 Q. Was one of the two depositions that
`
`08:58 11 occurred at approximately the same time a
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`08:58 12 patent matter?
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`08:58 13 A. Yes.
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`08:58 14 Q. So would it be fair to say that you
`
`08:58 15 first gave a deposition in a patent matter
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`08:58 16 around 1995 sometime?
`
`08:58 17 A. Around, but you need to remember
`
`08:58 18 that it could be some years after that. I
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`08:58 19 simply don't remember the precise date.
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`08:58 20 Q. No. That's fair. Of the three or
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`08:58 21 so remaining depositions you mentioned, how
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`08:58 22 many of those, if any, were in connection with
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`08:58 23 patent matters?
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`08:59 24 A. One that I recall clearly.
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`7
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`007
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`WARREN P. HEIM, P.E.
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`08:59 1 Q. And do you remember approximately
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`08:59 2 when that one deposition related to a patent
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`08:59 3 matter occurred?
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`08:59 4 A. Would have been about two years ago.
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`08:59 5 Q. And then just so I'm clear, are you
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`08:59 6 testifying that you can't recall whether the
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`08:59 7 other two post-'95 depositions were about
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`08:59 8 patent matters? Is that what you're saying?
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`08:59 9 A. One of them was definitely not a
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`08:59 10 patent matter. And I'm trying to recall the
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`08:59 11 details of the other one. I can't.
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`08:59 12 Q. Okay. Were any of the depositions
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`08:59 13 that you just talked about given as a fact
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`08:59 14 witness as opposed to an expert witness?
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`08:59 15 A. One was a fact witness.
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`08:59 16 Q. Do you remember which one in the
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`08:59 17 continuum was a fact --
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`08:59 18 A. It would have been one of the early
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`08:59 19 ones.
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`08:59 20 Q. What was the nature -- we don't have
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`08:59 21 to go into much detail, but what was the nature
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`09:00 22 of the factual testimony you gave in that case?
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`09:00 23 A. I helped a company design a product
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`09:00 24 that was alleged to infringe on some patents.
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`8
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`008
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`WARREN P. HEIM, P.E.
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`09:00 1 Q. Was that product a medical device?
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`09:00 2 A. Yes.
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`09:00 3 Q. What, what kind of medical device?
`
`09:00 4 A. It was an arthroscopic surgical
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`09:00 5 instrument.
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`09:00 6 Q. Do you know if a lawsuit had been
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`09:00 7 filed in connection with that alleged
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`09:00 8 infringement?
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`09:00 9 A. Yes.
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`09:00 10 Q. And do you know the resolution of
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`09:00 11 that lawsuit?
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`09:00 12 A. I do not know the resolution.
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`09:00 13 Q. Just so I'm clear, you said you were
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`09:00 14 giving fact testimony in that case; is that
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`09:00 15 right?
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`09:00 16 A. Yes. I was a fact witness.
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`09:00 17 Q. Did you also give expert testimony
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`09:00 18 in that case or was it just fact testimony?
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`09:00 19 A. Yeah, I was just a fact witness.
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`09:01 20 Q. Okay. Now, the one other patent
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`09:01 21 deposition you can remember clearly, you have
`
`09:01 22 said that was about two years ago. Do you
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`09:01 23 recall that?
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`09:01 24 A. Yes.
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`9
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`WARREN P. HEIM, P.E.
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`09:01 1 Q. And was that testimony expert
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`09:01 2 testimony?
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`09:01 3 A. Yes.
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`09:01 4 Q. Do you know if your expert testimony
`
`09:01 5 was given on behalf of a patent owner in that
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`09:01 6 case?
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`09:01 7 A. Yes, it was on behalf of the patent
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`09:01 8 owner.
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`09:01 9 Q. Did you offer opinions in that case
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`09:01 10 with regard to infringement?
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`09:01 11 A. No, I did not.
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`09:01 12 Q. Did you offer opinions in that case
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`09:01 13 with regard to validity?
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`09:01 14 A. No, I did not.
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`09:01 15 Q. What was the nature of your expert
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`09:01 16 testimony on behalf of the patent owner in that
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`09:01 17 case?
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`09:01 18 A. I testified regarding the
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`09:02 19 performance characteristics of some devices.
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`09:02 20 Q. Do you recall what legal issue, if
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`09:02 21 any, that testimony related to?
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`09:02 22 A. No, I do not.
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`09:02 23 Q. What kind of devices were at issue
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`09:02 24 in that case?
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`10
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`WARREN P. HEIM, P.E.
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`09:02 1 A. They were devices used to check the
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`09:02 2 effectiveness of infection control in
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`09:02 3 particular hospital environments.
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`09:02 4 Q. Have you ever heard of the acronym
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`09:02 5 PTAB? It stands for Patent Trial and Appeal
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`09:02 6 Board?
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`09:02 7 A. I've heard of the acronym.
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`09:02 8 Q. And have you heard of the acronym
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`09:02 9 IPR, which stands for inter partes review?
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`09:02 10 A. I've heard of that acronym.
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`09:03 11 Q. Do you know if had there had been
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`09:03 12 inter partes review petitions filed in
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`09:03 13 connection with the case that you testified
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`09:03 14 about a minute ago?
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`09:03 15 A. I do not know.
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`09:03 16 Q. Have you ever served as an expert
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`09:03 17 witness in a patent matter where you did not
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`09:03 18 give a deposition?
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`09:03 19 A. Yes.
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`09:03 20 Q. And how many times have you engaged
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`09:03 21 in that kind of work?
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`09:03 22 A. Once.
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`09:03 23 Q. In that case did you submit a
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`09:03 24 declaration or a report as an expert witness?
`
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`11
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`011
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`WARREN P. HEIM, P.E.
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`09:03 1 A. Yes.
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`09:03 2 Q. And in that case, were you
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`09:03 3 testifying on behalf of the patent owner?
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`09:03 4 A. Yes.
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`09:03 5 Q. Do you recall whether you gave
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`09:03 6 testimony in that case regarding patent
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`09:04 7 validity?
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`09:04 8 A. Yes. I recall that.
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`09:04 9 Q. And so just so the record is clear,
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`09:04 10 did you give testimony in that case regarding
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`09:04 11 validity of the patent?
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`09:04 12 A. Yes.
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`09:04 13 Q. Do you recall whether in that case
`
`09:04 14 you gave testimony about patent infringement as
`
`09:04 15 well?
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`09:04 16 A. Yes, I gave testimony regarding
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`09:04 17 patent infringement.
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`09:04 18 Q. Okay. Do you know if that case had
`
`09:04 19 an associated IPR proceeding?
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`09:04 20 A. It did not.
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`09:04 21 Q. Okay. How long ago was the expert
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`09:04 22 report submitted in that case?
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`09:04 23 A. Probably about two years ago.
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`09:04 24 Q. So around the same time as the
`
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`12
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`012
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`WARREN P. HEIM, P.E.
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`09:04 1 deposition we talked about a few minutes ago?
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`09:04 2 A. Approximately correct.
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`09:04 3 Q. Just so I've got the universe
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`09:05 4 correct here, it sounds like you've given
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`09:05 5 deposition testimony as an expert witness in
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`09:05 6 two patent cases; is that right?
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`09:05 7 A. Would you please repeat that
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`09:05 8 question?
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`09:05 9 Q. From my notes it sounds like you've
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`09:05 10 given deposition testimony as an expert witness
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`09:05 11 in patent cases two times before; is that
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`09:05 12 right?
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`09:05 13 A. Yes, that's correct.
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`09:05 14 Q. And in one additional case you
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`09:05 15 submitted a report but didn't give a
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`09:05 16 deposition; is that right?
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`09:05 17 A. That is correct.
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`09:05 18 Q. So aside from those three cases,
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`09:05 19 have you ever served as an expert witness in
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`09:05 20 connection with a patent case before?
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`09:05 21 A. None that I recall.
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`09:06 22 Q. Your consulting rate in this case is
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`09:06 23 $500 an hour, correct?
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`09:06 24 A. That is correct.
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`13
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`WARREN P. HEIM, P.E.
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`09:06 1 Q. And does that rate apply regardless
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`09:06 2 of the task you were doing in the case? In
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`09:06 3 other words, is it the same rate to prepare
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`09:06 4 the, the reports as it is to give a deposition?
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`09:06 5 A. That rate is for everything that is
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`09:06 6 done.
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`09:06 7 Q. Okay. Is that rate the same rate
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`09:06 8 you would charge for other nonlitigation
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`09:06 9 consulting services?
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`09:06 10 A. No.
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`09:06 11 Q. Is it higher?
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`09:06 12 A. Yes.
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`09:06 13 Q. How much higher?
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`09:06 14 A. It depends upon the project.
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`09:06 15 Q. Can you give me a range of hourly
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`09:06 16 rates you charge for nonlitigation consulting
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`09:06 17 services?
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`09:06 18 A. Between $175 and $500 an hour.
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`09:06 19 Q. Okay. So there are some consulting
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`09:06 20 services that are nonlitigation services where
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`09:06 21 you charge $500 an hour?
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`09:06 22 A. For rates that I've quoted.
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`09:06 23 Q. Do you know what the highest rate
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`09:06 24 you've ever charged a client for nonlitigation
`
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`14
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`014
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`WARREN P. HEIM, P.E.
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`09:07 1 consulting work is?
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`09:07 2 A. I don't remember.
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`09:07 3 Q. Closer to the 175 or to the 500?
`
`09:07 4 A. Maybe closer to the 175.
`
`09:07 5 Q. Have you ever had any of the
`
`09:07 6 testimony you've offered as an expert witness
`
`09:07 7 challenged by an opposing party for legal
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`09:07 8 sufficiency to your knowledge?
`
`09:07 9 A. It has never been challenged.
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`09:07 10 Q. It's never been challenged or you're
`
`09:07 11 not aware that it's been challenged?
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`09:07 12 A. I've never heard of it being
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`09:07 13 challenged.
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`09:07 14 Q. Would it surprise you if an opponent
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`09:07 15 had challenged the legal sufficiency of some of
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`09:07 16 your testimony?
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`09:07 17 A. I don't quite understand your
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`09:07 18 question.
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`09:07 19 Q. If I were to tell you that somebody
`
`09:07 20 had challenged the legal sufficiency of your
`
`09:07 21 testimony, would you be surprised to hear that?
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`09:08 22 A. I don't understand the term "legal
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`09:08 23 sufficiency."
`
`09:08 24 Q. Have you ever heard of the phrase or
`
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`15
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`015
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`WARREN P. HEIM, P.E.
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`09:08 1 the word Daubert in connection with expert
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`09:08 2 testimony?
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`09:08 3 A. I've heard of it.
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`09:08 4 Q. Okay. Would it surprise you if I
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`09:08 5 told you that someone has challenged the --
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`09:08 6 challenged your testimony in the form of a
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`09:08 7 Daubert challenge before?
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`09:08 8 A. That would surprise me.
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`09:08 9 Q. Have you ever offered expert
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`09:08 10 testimony that a patent is invalid?
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`09:08 11 A. None that I recall.
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`09:08 12 Q. Have you ever offered expert
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`09:09 13 testimony on behalf of a party that was not a
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`09:09 14 patent owner as far as you can remember?
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`09:09 15 A. Would you please repeat that
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`09:09 16 question?
`
`09:09 17 Q. Have you ever offered expert
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`09:09 18 testimony on behalf of a party that was not a
`
`09:09 19 patent owner as far as you can remember?
`
`09:09 20 A. Yes.
`
`09:09 21 Q. And in which, in which case was
`
`09:09 22 that?
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`09:09 23 A. That would have been the nonpatent
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`09:09 24 cases that I described earlier.
`
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`16
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`016
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`WARREN P. HEIM, P.E.
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`09:09 1 Q. Understood. Okay. Have you ever
`
`09:09 2 offered expert testimony in a patent case on
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`09:09 3 behalf of a party that wasn't a patent owner?
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`09:09 4 A. Not that I recall.
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`09:09 5 Q. And I don't want to go into a lot of
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`09:09 6 details on this, but can you generalize the
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`09:09 7 kind of testimony you've given in nonpatent
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`09:09 8 cases?
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`09:09 9 A. One case was a business dispute that
`
`09:10 10 had to do with the -- an error in a securities
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`09:10 11 financing to fund a startup company.
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`09:10 12 Q. And in that case, what was the
`
`09:10 13 nature of your expert testimony?
`
`09:10 14 A. I described the medical device
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`09:10 15 product development process.
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`09:10 16 Q. Okay. Are there any other cases
`
`09:10 17 where you've given expert testimony in a
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`09:10 18 nonpatent context?
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`09:10 19 A. Yes.
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`09:10 20 Q. And can you describe one of those
`
`09:10 21 for me?
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`09:10 22 A. It was a business dispute regarding
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`09:11 23 an attempt to monopolize a market.
`
`09:11 24 Q. What do you mean "an attempt to
`
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`17
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`017
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`WARREN P. HEIM, P.E.
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`09:11 1 monopolize a market"?
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`09:11 2 A. There is an allegation that a
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`09:11 3 company engaged in unfair business practices.
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`09:11 4 Q. Do you remember what practices were
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`09:11 5 alleged to be unfair business practices?
`
`09:11 6 A. I don't remember the details of
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`09:11 7 that.
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`09:11 8 Q. Did the activity alleged to be an
`
`09:11 9 unfair business practice relate to medical
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`09:11 10 devices?
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`09:11 11 A. Yes.
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`09:11 12 Q. And what kind of expert testimony
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`09:11 13 did you give in that matter?
`
`09:12 14 A. I examined the design and function
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`09:12 15 of a medical device.
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`09:12 16 Q. Were you representing the party
`
`09:12 17 alleging unfair business practices?
`
`09:12 18 A. Yes, I was working with the party
`
`09:12 19 that was alleging the unfair business
`
`09:12 20 practices.
`
`09:12 21 Q. And do you remember if the unfair
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`09:12 22 business practices related in any way to
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`09:12 23 patents?
`
`09:12 24 A. I do not recall that patents were
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`18
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`018
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`WARREN P. HEIM, P.E.
`
`09:12 1 involved in the litigation.
`
`09:12 2 Q. I think we've talked about two
`
`09:12 3 expert engagements outside of the patent
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`09:12 4 context. Are there any more that you can
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`09:13 5 remember?
`
`09:13 6 A. Those are the ones that I remember
`
`09:13 7 sitting here.
`
`09:13 8 Q. I've looked through your C.V. and I
`
`09:13 9 think it would be fair to say that you had kind
`
`09:13 10 of a career before medical devices; is that
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`09:13 11 fair?
`
`09:13 12 A. I did work before medical devices.
`
`09:13 13 Q. Okay. And just so that we're clear,
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`09:13 14 were any of the expert engagements that you
`
`09:13 15 just talked about before you got into the
`
`09:13 16 medical device field?
`
`09:13 17 A. None of those engagements were
`
`09:13 18 before I was in the medical device field.
`
`09:13 19 Q. So prior to your involvement in the
`
`09:13 20 medical device field, you had not served as an
`
`09:13 21 expert witness before; is that right?
`
`09:13 22 A. That is correct. Before I was
`
`09:13 23 involved in the medical device field, I did not
`
`09:13 24 serve as an expert witness.
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`19
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`019
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`WARREN P. HEIM, P.E.
`
`09:13 1 Q. It's kind of an extended background
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`09:14 2 but I do want to go over a couple ground rules.
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`09:14 3 I do want to make sure we're on the same page
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`09:14 4 for the day today.
`
`09:14 5 First of all, you've been doing a
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`09:14 6 great job of letting me ask my questions and
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`09:14 7 then answering after I'm done. That's an
`
`09:14 8 important thing so the court reporter can write
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`09:14 9 down what we're saying.
`
`09:14 10 Do you understand that?
`
`09:14 11 A. Yes.
`
`09:14 12 Q. And it hasn't happened yet, but I'm
`
`09:14 13 sure it will happen that your attorney will
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`09:14 14 interpose objections to my questions. So it
`
`09:14 15 may be worth pausing after I ask a question to
`
`09:14 16 let him do that, again, so the record is clear.
`
`09:14 17 Is that fair?
`
`09:14 18 A. I understand.
`
`09:14 19 Q. If he makes an objection, you still
`
`09:14 20 do have to answer the question, unless he
`
`09:14 21 instructs you not to answer the question.
`
`09:14 22 Do you understand that?
`
`09:14 23 A. I understand that.
`
`09:14 24 Q. And, again, you're doing a great job
`
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`20
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`020
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`WARREN P. HEIM, P.E.
`
`09:14 1 of this so far, but everything that's being
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`09:14 2 said is being written down and there's no
`
`09:14 3 video, so it's important that you give verbal
`
`09:14 4 responses when possible.
`
`09:14 5 Is that fair?
`
`09:14 6 A. I understand.
`
`09:14 7 Q. And I'll try to remind you of that,
`
`09:14 8 too, if we're not -- if that's not happening.
`
`09:14 9 The court reporter will also remind us if
`
`09:14 10 that's not happening. Okay?
`
`09:14 11 A. I understand.
`
`09:14 12 Q. If I ask you a question you don't
`
`09:14 13 understand, please let me know and I'll try to
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`09:15 14 rephrase it. It's important that you
`
`09:15 15 understand what I'm asking. So if there's any
`
`09:15 16 point where I ask something and you don't get
`
`09:15 17 what I'm driving at, please ask me and I'll
`
`09:15 18 rephrase it. Okay?
`
`09:15 19 A. I understand.
`
`09:15 20 Q. And then last of all, this is not
`
`09:15 21 meant to be an endurance contest. If you want
`
`09:15 22 a break at any point, that's fine with me. I
`
`09:15 23 would just ask if a question is pending, you
`
`09:15 24 answer the question and we take a break.
`
`
`21
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`021
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`
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`WARREN P. HEIM, P.E.
`
`09:15 1 Is that fair?
`
`09:15 2 A. I understand.
`
`09:15 3 Q. Looking through your CV, it appears
`
`09:15 4 to me that you are the inventor on several U.S.
`
`09:15 5 patents; is that right?
`
`09:15 6 A. I am the inventor on multiple U.S.
`
`09:15 7 patents.
`
`09:15 8 Q. I think the number that's sticking
`
`09:15 9 out in my head is somewhere around 25. Is that
`
`09:15 10 consistent with your understanding?
`
`09:15 11 A. It's approximately 25.
`
`09:15 12 Q. Do you know if you own some or all
`
`09:15 13 of those patents as we sit here today?
`
`09:15 14 A. Yes, I know that.
`
`09:15 15 Q. And how many of those patents do you
`
`09:16 16 own?
`
`09:16 17 A. I don't know the exact number.
`
`09:16 18 Q. Are there some, though, that you
`
`09:16 19 don't own?
`
`09:16 20 A. Yes.
`
`09:16 21 Q. Would you say that you own more than
`
`09:16 22 half of the patents you're listed as an inventor of?
`
`09:16 23 A. I would need to look at the list to
`
`09:16 24 give a reasonable estimate of that number.
`
`
`22
`
`022
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`
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`WARREN P. HEIM, P.E.
`
`09:16 1 Q. Why don't I get the list out.
`
`09:16 2 I'll hand you what's been marked in
`
`09:16 3 this proceeding already as Exhibit 2022. And
`
`09:16 4 feel free to take a look through it, but I'm
`
`09:16 5 just going to ask you if this is your CV.
`
`09:17 6 A. Yes, this is my CV.
`
`09:17 7 Q. Okay. The document on the front
`
`09:17 8 page, and actually each page, is dated November
`
`09:17 9 20th, 2015.
`
`09:17 10 Do you see that?
`
`09:17 11 A. Yes, I see what you're talking
`
`09:17 12 about.
`
`09:17 13 Q. Does that reflect the date on which
`
`09:17 14 this document was created?
`
`09:17 15 A. Yes, that would be the date that
`
`09:17 16 this document was created.
`
`09:17 17 Q. Was it created for this case?
`
`09:17 18 A. This document was created for this
`
`09:17 19 case.
`
`09:17 20 Q. Was any material added to this
`
`09:17 21 document that's not on your standard CV?
`
`09:17 22 A. None that I see.
`
`09:18 23 Q. If you flip to page 3 of 6 of
`
`09:18 24 Exhibit 2022, there is a section at the top
`
`
`23
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`023
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`
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`WARREN P. HEIM, P.E.
`
`09:18 1 called "Publications."
`
`09:18 2 Do you see that?
`
`09:18 3 A. Yes, I see what you're talking
`
`09:18 4 about.
`
`09:18 5 Q. The third sentence of that paragraph
`
`09:18 6 says, "Many of the medical devices developed
`
`09:18 7 incorporated pressurized fluid flow and
`
`09:18 8 control."
`
`09:18 9 Do you see that?
`
`09:18 10 A. Yes.
`
`09:18 11 Q. Was that added for this case?
`
`09:18 12 A. I don't remember.
`
`09:18 13 Q. I'm going to hand you a document
`
`09:18 14 that I'm going to mark as Exhibit 1021.
`
`09:19 15 (Heim Deposition Exhibit 1021
`
`09:19 16 was marked for identification.)
`
`09:19 17 BY MR. WEED:
`
`09:19 18 Q. Do you recognize Exhibit 1021?
`
`09:19 19 A. Yes, I recognize this.
`
`09:19 20 Q. What is it?
`
`09:19 21 A. This looks to be a printout of some
`
`09:19 22 information on a Web site called
`
`09:19 23 TeamMedical.us.
`
`09:19 24 Q. Is the TeamMedical.us Web site
`
`
`24
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`024
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`
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`WARREN P. HEIM, P.E.
`
`09:19 1 associated with you in some way?
`
`09:19 2 A. Yes, it is associated with me.
`
`09:19 3 Q. How is it associated with you?
`
`09:20 4 A. I am the manager of Team Medical US
`
`09:20 5 and one of the owners.
`
`09:20 6 Q. Starting on the second page of the
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`09:20 7 document I handed you, which is actually
`
`09:20 8 numbered at page 1 of 2, is that page the
`
`09:20 9 beginning of your CV from your Web site?
`
`09:20 10 A. Yes, that is the first page of what
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`09:20 11 I call a resume on the Web site.
`
`09:20 12 Q. Okay. In your mind, is there a
`
`09:20 13 distinction between a resume and a CV?
`
`09:20 14 A. I'm not aware of any distinction
`
`09:20 15 that is commonly used.
`
`09:20 16 Q. Does looking at Exhibit 1021 refresh
`
`09:21 17 your memory about whether the sentence in 2022
`
`09:21 18 related to pressurized fluid flow and control
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`09:21 19 was added for this case?
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`09:21 20 A. It, it, it does not.
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`09:21 21 Q. Okay. Do you see language in 1021
`
`09:21 22 similar to pressurized fluid flow and control?
`
`09:21 23 A. No.
`
`09:21 24 Q. You had mentioned before that to
`
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`25
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`025
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`
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`WARREN P. HEIM, P.E.
`
`09:21 1 answer some questions about your patents you
`
`09:21 2 would need to see a listing of the patents.
`
`09:22 3 And I think now you have at least one listing
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`09:22 4 in Exhibit 2022; is that right?
`
`09:22 5 A. Yes, that is correct.
`
`09:22 6 Q. And is that listing current as of
`
`09:22 7 November 20th of 2015, to the best of your
`
`09:22 8 knowledge?
`
`09:22 9 A. To the best of my knowledge, this is
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`09:22 10 current.
`
`09:22 11 Q. So it's current as of today?
`
`09:22 12 A. I don't know if it's current as of
`
`09:22 13 today.
`
`09:22 14 Q. Do you know if any patents have
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`09:22 15 issued in your name since November 20th, 2015?
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`09:22 16 A. I don't know of any that have
`
`09:22 17 issued.
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`09:22 18 Q. Are there any patents that you're a
`
`09:22 19 named inventor of, and feel free to use that
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`09:22 20 document however you'd like, but are there any
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`09:22 21 patents where you're a named inventor that
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`09:22 22 relate to pressurized fluid flow and control?
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`09:23 23 A. Yes.
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`09:23 24 Q. Which ones?
`
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`26
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`026
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`WARREN P. HEIM, P.E.
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`09:23 1 A. Patent 5,478,211 would be an
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`09:24 2 example.
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`09:24 3 Q. And that's listed on page 6 -- I'm
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`09:24 4 sorry. No, it's not -- yeah, it's on page 6 of
`
`09:25 5 Exhibit 2022?
`
`09:25 6 A. Yes, that is on page 6.
`
`09:25 7 Q. Okay. Are there any other patents
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`09:25 8 that relate to pressurized fluid control and
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`09:25 9 control?
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`09:25 10 A. Patent 5,551,850 is another example.
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`09:25 11 Q. Okay. Any others?
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`09:25 12 A. Patent 5,554,172 is another example.
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`09:25 13 Q. Any more?
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`09:25 14 A. Patent 5,630,710 is another example.
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`09:25 15 Q. So now we'r
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