Douglas E. Smith, Ph.D.
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` FLOTEK INDUSTRIES, INC., and TURBECO, INC.
` (d/b/a SPIDLE TURBECO, d/b/a GALLEON TURBECO and
` d/b/a CAVO DRILLING MOTORS), and
` TELEDRIFT COMPANY (d/b/a SPIDLE TURBECO),
` Petitioners,
` v.
` NATIONAL OILWELL DHT, L.P.,
` Patent Owner.
`
` Case IPR2015-01210
` Patent 6,431,294
`
`********************************************************
` ORAL DEPOSITION of DOUGLAS E. SMITH, Ph.D.
` VOLUME 1 of 1
` January 14, 2016
`
`********************************************************
`
`ORAL DEPOSITION of DOUGLAS E. SMITH, Ph.D., produced at
`the instance of the Patent Owner, and duly sworn, was
`taken in the above-styled and numbered cause on the 14th
`day of January, 2016, from 8:59 a.m. until 11:04 a.m.,
`before Brenda Ringuet, CSR, in and for the State of
`Texas, reported by stenographic machine, at the offices
`of Novak Druce + Quigg LLP, Wells Fargo Plaza, 1000
`Louisiana Street, 53rd Floor, Houston, Harris County,
`Texas.
`
` TAXABLE COST: __________
` PAID BY: _______________
` TBA NO.: _______________
` JOB NUMBER: ____________
`
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` FLOTEK INDUSTRIES, INC., and TURBECO, INC.
` (d/b/a SPIDLE TURBECO, d/b/a GALLEON TURBECO and
` d/b/a CAVO DRILLING MOTORS), and
` TELEDRIFT COMPANY (d/b/a SPIDLE TURBECO),
` Petitioners,
` v.
` NATIONAL OILWELL DHT, L.P.,
` Patent Owner.
`
` Case IPR2015-01210
` Patent 6,431,294
`
`********************************************************
` ORAL DEPOSITION of DOUGLAS E. SMITH, Ph.D.
` VOLUME 1 of 1
` January 14, 2016
`
`********************************************************
`
`ORAL DEPOSITION of DOUGLAS E. SMITH, Ph.D., produced at
`the instance of the Patent Owner, and duly sworn, was
`taken in the above-styled and numbered cause on the 14th
`day of January, 2016, from 8:59 a.m. until 11:04 a.m.,
`before Brenda Ringuet, CSR, in and for the State of
`Texas, reported by stenographic machine, at the offices
`of Novak Druce + Quigg LLP, Wells Fargo Plaza, 1000
`Louisiana Street, 53rd Floor, Houston, Harris County,
`Texas.
`
` TAXABLE COST: __________
` PAID BY: _______________
` TBA NO.: _______________
` JOB NUMBER: ____________
`
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`2
`
` INDEX
`
` PAGE
`APPEARANCES ................................ 3
`
`DOUGLAS E. SMITH, Ph.D.
` Examination by Mr. McAughan ........... 4
` Examination by Mr. Levine ............. 63
` Further Examination by Mr. McAughan ... 64
`
`CORRECTION PAGE ............................ 65
`REPORTER'S CERTIFICATION ................... 66
`
` EXHIBITS
` Marked
`Exhibit at
`Number Description Page
` 2000 Notice of Deposition of *
` Dr. Douglas E. Smith
` 2001 J. M. Cleary Figures *
` 2002 W. J. Bielstein Patent 14
` 2003 J. M. Cleary Figures 58
`
` * Exhibits 2000 and 2001 were marked prior
` to the deposition.
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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` A-P-P-E-A-R-A-N-C-E-S
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` COUNSEL FOR PETITIONERS:
` MR. AARON M. LEVINE
` - and -
` MR. JAMES MURPHY
` NOVAK DRUCE + QUIGG LLP
` WELLS FARGO PLAZA
` 1000 LOUISIANA STREET, 53RD FLOOR
` HOUSTON, TEXAS 77002
`
` COUNSEL FOR PATENT OWNER:
` MR. ROBERT McAUGHAN
` TBA NO. 24013141
` SUTTON McAUGHAN DEAVER, PLLC
` THREE RIVERWAY,SUITE 900
` HOUSTON, TEXAS 77056
` - and -
` MS. JL JENNIE SALAZAR
` JL SALAZAR LAW FIRM
` 1934 WEST GRAY, SUITE 401
` HOUSTON, TEXAS 77019-4828
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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` DOUGLAS E. SMITH, Ph.D.,
`having been first duly sworn, testified on his oath
`as follows:
` EXAMINATION
`BY MR. McAUGHAN:
` Q. Dr. Smith, I've placed before you what we've
`previously marked as NOV Exhibit 2000. It's a copy of
`the notice of deposition of Dr. Douglas E. Smith for Case
`IPR 2015-01210 concerning U.S. Patent Number 6,431,294.
`Can you confirm that you are appearing today to testify
`in response to this notice?
` A. Yes, I am.
` Q. And can you also confirm that you are the same
`Dr. Douglas Smith who has submitted a declaration in
`connection with the IPR concerning the 294 patent?
` A. Yes, I am.
` MR. LEVINE: I'm sorry, Bob; I don't mean to
`interrupt --
` MR. McAUGHAN: Sure.
` MR. LEVINE: -- but I notice on this notice,
`this might be the first notice. It lists the location as
`the office of Sutton McAughan Deaver.
` MR. McAUGHAN: Okay. And, for the record,
`we're taking this deposition at the offices of Novak
`Druce pursuant to an agreement between the parties. What
`
`Ross Reporting Services, Inc.
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`281-484-0770
`
` NOV
`Exhibit 2004
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`
`Douglas E. Smith, Ph.D.
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`I wanted to just confirm is that this is the deposition
`of Dr. Smith in the IPR 2015-01210 concerning the 294
`patent. I think we're all in agreement on that.
`Correct?
` MR. LEVINE: I'm in agreement. I just
`wanted to make sure that you had marked the right
`exhibit.
` MR. McAUGHAN: That's fine.
` Q. (BY MR. McAUGHAN) Dr. Smith, have you been
`deposed before?
` A. Yes, I have.
` Q. So, you understand that I'll ask you questions.
`If you don't understand any part of the question, you'll
`let me know, okay?
` A. Yes, sir.
` Q. And if you need to take a break at any time,
`just let me know and we can do that.
` A. Okay.
` Q. Now, I would like to ask if you would turn to
`what's been marked in front of you as Flotek Exhibit
`1001. It's a copy of the 294 patent. Have you studied
`this patent before?
` A. Yes, I have.
` Q. And approximately how much time have you spent
`reviewing and studying the 294 patent?
`
`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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` A. Oh, let's see. In terms of hours, 40 to 50
`hours, maybe.
` Q. Okay. Now, there's another exhibit in front of
`you; I think it's the one -- the bottom one of the stack,
`Flotek Exhibit Number 1010; it's a copy of U.S. Patent
`Number 3,270,822 to Cleary. Do you see that?
` A. Oh, yes, uh-huh.
` Q. Have you studied the Cleary patent?
` A. Yes, I have.
` Q. Again, how much time have you spent reviewing
`and studying the Cleary patent?
` A. Well, I may have misspoken. Collectively, it's
`probably been somewhere in the 40 to 50-hour range.
` Q. Okay.
` A. Out of that, you know, a majority of it would
`have been on 294, probably; and then, I don't know, 10 to
`15 hours. I mean, that's an estimate.
` Q. Okay, great. And if you can turn in the 294
`patent to Column 5 where the claims begin --
` A. Yes.
` Q. -- I would like to direct your attention to
`Claim 1, which begins at approximately Line 15 of Column
`5.
` A. Yes.
` Q. Do you see that Claim 5 includes as a claim
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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`element, "A mass movable relative to the body for
`impacting on the drill bit support"?
` A. Claim 5?
` Q. Claim 1.
` A. Claim 1.
` Q. Yes.
` A. Yes, okay. And would you say that again,
`please?
` Q. Sure. Do you see that Claim 1 includes a
`limitation requiring "A mass movable relative to the body
`for impacting on the drill bit support"?
` A. Yes I see that, uh-huh.
` Q. And do you believe that that limitation is met
`by the device disclosed in the Cleary reference?
` A. "Mass movable relative" -- yes, I do.
` Q. And where do you believe that element is found
`in the Cleary reference?
` A. The mass is -- let me just make sure. I don't
`have the numbers memorized. Let me see. I believe it's
`Item 19, but let me just make sure. Yeah, Cleary calls
`it the hammer; but Item 19 is also the mass.
` Q. Okay. Now, I would like to direct your
`attention in the 294 patent to Claim 5. Do you see --
` A. Oh, wait a minute.
` Q. Okay.
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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` A. I'm sorry. I just want to make sure I've got
`the right number.
` Q. Sure.
` A. I might have it better outlined in my
`disclosure, but let's see. Oh, I'm sorry, he does call
`the hammer 17. 19 is the upper surface. So, hammer, 17,
`which is the mass.
` Q. Just so we're clear, I'm going to put in front
`of you what I've marked as NOV Exhibit 2001; it's a copy
`of the figures from the Cleary patent. And let me ask if
`you can just highlight or identify with a colored
`pencil -- you can pick what color -- what you understand
`to be the mass of Claim 1 that's found in the Cleary
`reference.
` MR. LEVINE: I'm sorry. Could I get that
`question read back to me?
` (The reporter reads back requested portion.)
` MR. LEVINE: Okay. So, are you asking him
`to do it in a -- was there a particular figure or --
` Q. (BY MR. McAUGHAN) You can pick whatever figure
`you're most comfortable with.
` A. (Witness complies.)
` Q. And, for the record, you've identified the mass
`as the element in Figure 7 that you've labeled a mass,
`correct?
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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` A. That's correct.
` Q. Now, I would like for you to look in the 294
`patent at Claim 5; and Claim 5 depends from Claim 1 and
`it refers to a valve that comprises two portions each
`defining the fluid port. Do you see that?
` A. Claim 5?
` Q. Yes.
` A. Yes, uh-huh.
` Q. Do you believe that Cleary discloses a valve
`comprising two portions, as recited in Claim 5?
` A. Yes, I do.
` Q. Can you identify one of the portions in Cleary
`that you believe makes up the valve of Claim 5? And,
`again, you may want to use a -- if you're going to
`identify it, it may be helpful to use a different color.
` A. Okay. I'm color-blind, so the colors don't
`matter to me. Again, I just want to make sure of the
`numbers. (Witness complies.) Okay.
` Q. So, for the record, you've identified in
`Figure 9 an element that you labeled valve member,
`correct?
` A. That's correct.
` Q. And you believe what you've identified in the
`valve member is one of the two portions of the valve
`required by Claim 5, correct?
`
`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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` A. Yes.
` MR. LEVINE: Objection. Sorry.
` Q. (BY MR. McAUGHAN) Can you identify what you
`believe to be the other of the two portions of the valve
`required by Claim 5 in the Cleary reference?
` A. (Witness complies.)
` Q. And can you describe for the record what you've
`identified?
` A. The item in Figure 7, Item Number 17, which also
`serves as the mass.
` Q. So, in your view, in Cleary, the same structure
`that forms one of the portions of the valve is also the
`mass movable relative to the body; is that correct?
` A. That's correct.
` Q. Okay. Now, if we look in Claim 5, Claim 5 goes
`on to recite that each of the two portions of the valve
`defines a fluid port. Do you see that?
` A. Yes.
` Q. With respect to one of the portions, which you
`said was also the movable mass, can you identify where
`you find the fluid port of Claim 5?
` A. Let me just make sure what this says. There's
`more than one fluid port. Do you want me to identify
`one, or can you clarify that?
` Q. I think it may be helpful if you identify all of
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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`the fluid ports that you believe are found with what you
`identified to be the first portion -- or one of the two
`portions of the valve recited in Claim 5.
` A. And you want me to label this fluid flow port?
` Q. Actually, you can just label it fluid port. I
`think that's what Claim 5 refers to.
` A. (Witness complies.)
` Q. Now, you've identified in green in Figure 7 an
`item as a fluid port. Is that port formed in the Movable
`Mass 17?
` A. It is formed in the mass.
` Q. And what do you understand the claim to mean
`when it refers to a fluid port?
` A. An opening where fluid can pass through.
` Q. And what do you understand the claim to mean
`when it says that each of the two portions of the valve,
`"define -- or defining a fluid port"?
` A. That there's a collective opening that's formed
`between two parts of the valve through which fluid can
`flow.
` Q. Okay. So, do you believe that each portion of
`the valve -- each portion of the valve, which would be an
`element, would define an opening; is that correct?
` A. Each portion of the valve would have an opening.
` Q. Okay. Now, you've identified an opening in one
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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`of the portions that you said was also the Movable Mass
`17. Can you identify what you believe to be a fluid port
`in the other portion of the valve, which I believe you
`identified in Figure 9?
` A. Uh-huh. And what, should I just -- you want me
`to call it what, if you could clarify.
` Q. Sure.
` A. Just the fluid port?
` Q. I believe the claim calls it a fluid port.
` A. (Witness complies.)
` Q. And what you've identified is an opening in the
`structural element, 31, correct?
` A. Yeah the Valve Member 31, yes.
` Q. Okay. And, again, what you identified as a
`fluid port is an opening in that element, correct?
` A. Yes.
` Q. Now, I would like to ask similar questions with
`respect to another exhibit in front of you, which is
`Exhibit Number 1 -- Flotek Exhibit 1006, which is the
`Bielstein 956 patent. Do you have that in front of you?
` A. Yes, I do.
` Q. Do you believe that the Bielstein 956 patent
`discloses a mass movable relative to the body for
`impacting on the drill bit support as recited in Claim 1
`of the 294 patent?
`
`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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` A. Yes, I do.
` Q. And what do you believe to be the mass in the
`Bielstein 956 patent?
` A. (Marking on document.)
` Q. Okay. And for the record, you've identified on
`the exhibit with a purple label something labeled mass,
`which is the Element 21; is that correct?
` A. That's correct.
` Q. Now, if we look at Claim 5, Claim 5, again,
`recites this valve comprising two portions, each defining
`a fluid port. Do you see that?
` A. In Claim 5?
` Q. Yes, sir.
` A. Yes, uh-huh.
` Q. Do you believe the Bielstein 956 discloses a
`valve comprising two portions, each defining a fluid
`port?
` A. Let's see. Did you want me to -- I'm writing on
`something that's --
` Q. That's fine; we'll remark that.
` A. Okay.
` MR. McAUGHAN: If that's okay with you,
`Mr. Levine.
` MR. LEVINE: Yeah, that's fine.
` A. I don't have anything. It's only the figures
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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`out of Bielstein.
` Q. (BY MR. McAUGHAN) Okay. Since you've marked
`the exhibit, we'll go ahead and remark it as NOV Exhibit
`2001. If you could just put the sticker in the -- here,
`let me go ahead and do it.
` MR. LEVINE: Didn't we already have 2001?
` MR. McAUGHAN: Okay, yeah, 2002. I'm going
`to mark that as NOV 2002.
` (Exhibit Number NOV 2002 was marked for
` identification and is attached hereto.)
` Q. (BY MR. McAUGHAN) So, Exhibit 2002 is the copy
`of the Bielstein 956 patent that you've written on,
`correct?
` A. Uh-huh, yes.
` Q. Now, again, looking at Claim 5 of the 956
`patent, do you believe that Bielstein discloses a valve
`that comprises two portions, each defining a fluid port?
` A. I'm sorry. You said Claim 5 of two fifty --
` Q. Claim 5 of the 294 patent.
` A. Oh, okay. I'm sorry. You said 9- --
` Q. Right, Claim 5 of the 294 patent recites a valve
`comprising two portions, each defining a fluid port. Do
`you see that?
` A. Yes, uh-huh.
` Q. Do you believe that Bielstein 956 discloses a
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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`valve comprising two portions, each defining a fluid
`port?
` A. Yes, I do.
` Q. And where do you believe that's shown?
` A. It's shown here in Figure 2, Figure 3 and Figure
`4.
` Q. What I would like to ask is if we could look at
`Figure 2 -- if you could, take one colored pencil,
`perhaps -- pick one of your choosing.
` A. Okay, I'm trying to keep the colors.
` Q. You've selected the brown one. Let me ask if
`you can highlight in brown in Figure 2 what you believe
`to be one of the two portions of the valve in the
`Bielstein reference.
` A. In Figure 2?
` Q. Yes.
` A. (Witness complies.)
` Q. Okay. And for the record, you've identified
`Structural Element 28; is that correct?
` A. Yes. Let's see. Let me make sure I did pick
`28. Yeah. There's others here, by the way, in Figure
`8 --
` Q. Okay.
` A. -- as well. Figure 8 is a separate embodiment
`that also has a valve member.
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`Ross Reporting Services, Inc.
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`281-484-0770
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` NOV
`Exhibit 2004
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`Douglas E. Smith, Ph.D.
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` Q. Okay. Perhaps you could identify what you
`understand to be another portion of the valve as shown in
`the embodiment of Figure 8.
` MR. LEVINE: Objection. Can I get that
`question read back?
` MR. McAUGHAN: I'll rephrase it.
` Q. (BY MR. McAUGHAN) You've identified in Figure 2
`what you believe to be one of the two portions of the
`valve required by Claim 5 of the 294 patent, correct?
` A. Yes, I have.
` Q. Let me ask then: Focusing on Figure 2, can you
`take another colored pencil and identify what you believe
`to be the other of the two portions of the valve required
`by Claim 5?
` MR. LEVINE: Objection. Can I -- I'm sorry.
`Can I get that back? I missed --
` MR. McAUGHAN: I'll rephrase it if it's
`unclear.
` Q. (BY MR. McAUGHAN) You understand that Claim 5
`of the 294 patent requires a valve that comprises two
`portions, each defining a fluid port, correct?
` A. Yes.
` Q. And I've asked you to identify one of those two
`portions in what you believe to be the valve of Bielstein
`956 and you've done so with respect to the embodiment of
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`17
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`Figure 2, correct?
` A. Yes, I have.
` Q. And you believe the embodiment of Figure 2 of
`Bielstein 956 also includes the second portion of the
`valve required by Claim 5, correct?
` A. Yes, I do.
` Q. Okay. Can you identify and note what you
`believe to be the second portion of the valve in the
`Bielstein 956 reference, Figure 2?
` A. For Figure 2 only?
` Q. Yes, sir.
` A. Okay. So, nothing in Figure 8?
` Q. Not now.
` A. There's really two parts. Either one of these
`would serve as the valve member. I'll just mark them
`that way.
` Q. And you've identified two parts. Are those two
`separate parts, or are those simply two portions of a
`single structural element?
` A. Well, they are -- there is -- the best I can
`tell from this drawing, okay, as he depicts it, it looks
`like a single structural element.
` Q. And that's the Structural Element 26; is that
`correct?
` A. Let me make -- 26, yes, uh-huh.
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`18
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` Q. And as I understand your opinion of Figure 2 of
`the Bielstein 956 patent, it discloses a valve that has
`two portions, one portion being the Structural Element 28
`and the other portion being the Structural Element 26.
`Is that correct?
` A. 28 and 26, yes.
` Q. Okay. Now, you mentioned that there's another
`valve embodiment in the Bielstein 956 patent, correct?
` A. Yes.
` Q. And that's the embodiment of Figure 8?
` A. Yes.
` Q. Do you believe that the embodiment of Figure 8
`also includes two structural portions as required by
`Claim 5?
` A. Well, Claim 5 doesn't say structural, so can you
`clarify that?
` Q. Sure. Let me ask: Claim 5 of the 294 patent
`requires a valve that comprises two portions, each
`defining a fluid port, correct?
` A. Yes.
` Q. Do you believe that the valve in embodiment --
`in the embodiment of Figure 8 of the Bielstein 956 patent
`includes a valve that comprises two portions, each
`defining a fluid port?
` A. Yes.
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`19
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` Q. I would like to ask if we could do the same
`exercise we did with Figure 2 and see if you can
`highlight for us one of the two valve portions that you
`believe is shown in the embodiment of Figure 8 of
`Bielstein 956.
` A. (Witness complies.)
` Q. Okay. So, you've identified one of the portions
`of the valve in Figure 8 of Bielstein 956 as the element
`identified as Element 52; is that correct?
` A. Yes, I have.
` Q. Okay. Can you now identify using the same color
`that you used with respect to Figure 2 what you believe
`to be the second portion of the valve in Figure 8 of
`Bielstein 956?
` A. (Witness complies.)
` Q. And, again, for the record, you've identified
`with purple lines and notations an element which is
`Element 50 in Figure 8 as being the other portion of the
`valve, correct?
` A. Yes.
` Q. Now, looking at Claim 5, Claim 5 goes on to
`recite that each portion of the valve defines a fluid
`port. Do you see that?
` A. Okay, yes. So, each percussion drill according
`to any -- to 8 -- I think there's a typo there, but
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`20
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`preceding Claim 1 wherein said valve comprises two
`portions, each defining a fluid port.
` Q. Can you explain for us why you believe, focusing
`on Figure 2, the Element 26 that you've identified as
`being one of the valve member defines a fluid port?
` A. Because it has an Opening 34.
` Q. And why do you believe an Opening 34 is a fluid
`port that is defined by one of the valve members?
` A. Well, it's a component or it's formed by the
`valve member. It's an opening. Fluid passes through
`that opening from one side to the other.
` Q. Now, if we look at Figure 8 in the embodiment
`there, can you explain why you believe the Element 50
`defines a fluid port of the valve, as required by
`Claim 5?
` A. Well, 50 is the valve member. Yeah, 50 forms
`the valve -- a valve member. The port is 65.
` Q. Okay. What distinction are you drawing between
`the valve member itself, 50, and the Fluid Port 65?
` A. The fluid port is a passageway, an opening that
`allows fluid to pass through. Valve Member 50 is a
`structure that encompasses or actually includes in it the
`opening itself.
` Q. Okay. So, the structure defines the opening?
` A. The -- well, let's see. The structure -- can
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`21
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`you clarify that?
` Q. Sure. If we look at Claim 5, Claim 5 says that
`each of the valve portions -- it refers to the valve
`portions and it says, "Each defining a fluid port." Do
`you see that?
` A. Yes, uh-huh.
` Q. And in terms of the difference between the port
`and the structure, what do you understand the claim to
`mean when it says that each of the two valve portions
`defines a fluid port?
` A. That the geometry is such that -- well, in order
`to have a place for material to pass through, for fluid
`to pass through, that inherently says that there's some
`structure where material does not pass through. So, what
`I view here as a fluid flow port is the portion of the
`structure that is opposite the actual solid structure or
`that part that is -- that allows fluid to flow through.
` Q. Okay. So, just so it's clear on the record --
`and, again, let's focus on the embodiment of Figure 2 of
`Bielstein 956. As I understand it, your opinion is that
`the valve disclosed in Figure 2 of Bielstein 956 includes
`two portions, each defining a fluid port, with those
`portions being Element 26 and Element 28. Is that
`correct?
` A. 26 and 28, yes.
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`22
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` Q. And with respect to the embodiment in Figure 8
`of Bielstein 956, is it correct that, in your opinion, it
`discloses a valve including two portions, each defining a
`fluid port, with those portions being Element 50 and 52?
` MR. LEVINE: Objection.
` A. Could you repeat that, please?
` Q. (BY MR. McAUGHAN) Sure. Is it also your
`opinion that with respect to the valve shown in Figure 8
`of Bielstein 956 that it discloses a valve including two
`portions each, defining a fluid port, with those portions
`being Elements 50 and 52?
` A. 50 and 52, yes.
` Q. Now, I would like to go back to Claim 1 of the
`294 patent. And, in particular, do you see the language
`in the claim at the bottom of the claim requiring, "a
`valve motor for driving said valve"?
` A. Yes, I see that.
` Q. What do you understand the claim to require
`there when it requires a valve motor?
` A. It's not -- this particular claim is not very
`specific. A valve motor, in my opinion, is a device or
`some -- yeah, a device, for lack of a better word, that
`would be used to create motion in a valve.
` Q. Now, in that language, it refers to the valve
`motor; but it specifically says that the valve motor is,
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`23
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`
`quote, for driving said valve. Do you see that?
` A. Yes, I see that.
` Q. What do you understand the claim to require when
`it says you have a valve motor for driving said valve?
` A. Well, in a valve, there -- and as it's described
`here and what I understand, in my opinion, about a valve,
`that there are two parts, at least, that move relative to
`each other and that for the valve to operate that a
`motion has to occur to move one part relative to the
`other and a valve motor is a device that would create the
`motion to get one part of the valve to move relative to
`the other.
` Q. And I want to explore your answer just a little
`bit. You indicated that you felt that a valve had to
`have, I think, "two parts, at least." Why do you believe
`that?
` A. A valve is a device for opening and closing,
`allowing fluid to flow through, allowing fluid to be
`stopped. I'm trying to think in a more general term
`but -- so, to have one part move, one part not move, to
`create the starting and stopping of fluid flow.
` Q. And so, in your opinion, a valve would have to
`have at least two parts that can move relative to each
`other; is that correct?
` A. Yeah, I believe so.
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`24
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` Q. Okay. Now, you talked a little bit about a
`valve motor. The limitation at issue refers to a valve
`motor; and then it refers to the fact that that valve
`motor is for driving said valve, correct?
` A. Yes.
` Q. What do you understand the claim to mean when it
`said the motor is for driving the valve?
` A. That -- I would believe that to be that the
`motion of one part of the valve relative to the other,
`that to induce that motion, that's what's considered to
`be driving of the valve and the valve motor is a device
`for providing that motion.
` Q. Now, if we look at the Bielstein 956 patent,
`Flotek Exhibit 1006, do you believe it discloses a valve
`motor for driving a valve, as required by Claim 1?
` A. Could you say that -- repeat that, please?
` Q. Sure. If we look at Bielstein 956 patent, do
`you believe that it discloses a valve motor for driving a
`valve, as recited in Claim 1 of the 294 patent?
` A. Yes, I do.
` Q. And where do you believe that valve motor is
`shown?
` A. It's in Figure 8, generally speaking, the device
`that's attached to the shaft that is attached to the
`valve.
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`25
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`
` Q. And by that, are you referring to the Helical
`Member 57 that's attached by Shaft 54?
` A. Well, the device would include, yes, 57; but it
`would also require that Plate 58 is also part of that
`assembly.
` Q. Okay. Now, does Helical Member 57 move during
`operation of the embodiment shown in Figure 8?
` A. Could you clarify that?
` Q. Sure. Generally, can you explain for me what
`you understand the operation of what you've identified to
`be the valve motor in Figure 8 of Bielstein 956 to be?
` A. Yes. In Figure 8, there is a helical vane
`that's 57. As the mass moves, that's Mass 21 -- moves up
`and down, longitudinally, it takes with it the valve,
`which is attached -- the valve assembly, which is
`attached at the top of the mass, actually becomes part --
`in that case, part of the mass. There's a shaft that's
`involved, Shaft 54; that then also moves with the mass
`and, in turn, Helical Vane 57 moves longitudinally with
`the mass. So, as the mass articulates longitudinally,
`the helical vane also moves longitudinally.
` There is a plate that is 58. It has a
`rectangular slot. The slot is affixed or provides us a
`sliding groove, or slot, for the helical vane that also
`has a rectangular cross section that forms the helix. As
`
`Ross Reporting Services, Inc.
`
`281-484-0770
`
` NOV
`Exhibit 2004
`
`
`
`Douglas E. Smith, Ph.D.
`
`26
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`the helical vane is moved longitudinally, it passes
`through that slot. The slot is not allowed to rotate
`because it's pinned with Ball Key 60. Since it can't
`move, then the helical vane, in order for it to traverse
`in the longitudinal direction, it is forced to turn
`to -- for the helical vane itself to accommodate the
`grooved, rectangular opening in Plate 58.
` So, as the mass moves down, so does the
`Helical Vane 57. It then is forced to turn to
`accommodate the rectangular groove. That turning motion
`then is the motion that drives the valve.
` Q. Now, in your answer, you indicated that you
`believe that the valve disclosed in Figure 8 of Bielstein
`956 was "part of the mass." What did you mean by that?
` A. There is -- what's identified in the patent,
`what I identified earlier as Item Number 21, is
`identified as the mass or the hammer. However, when you
`look at a mechanical object and what is actually moving
`here, all of the components of that
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