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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GRE~NEVILLE
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`DENTSPLY INTERNATIONAL,
`INC. AND TULSA DENTAL
`PRODUCTS LLC D/B/A TULSA
`DENTAL SPECIALTIES,
`
`PLAINTIFFS,
`vs.
`
`US ENDODONTICS, LLC,
`
`DEFENDANT.
`
`DOCKET NO. CV-2-14-196
`
`GREENEVILLE, TN
`NOVEMBER 25, 2014
`9:05 A.M.
`VOLUME I
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
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`GOLD STANDARD EXHffiiT 2001
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-01476
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GRE~NEVILLE
`
`DENTSPLY INTERNATIONAL,
`INC. AND TULSA DENTAL
`PRODUCTS LLC D/B/A TULSA
`DENTAL SPECIALTIES,
`
`PLAINTIFFS,
`vs.
`
`US ENDODONTICS, LLC,
`
`DEFENDANT.
`
`DOCKET NO. CV-2-14-196
`
`GREENEVILLE, TN
`NOVEMBER 25, 2014
`9:05 A.M.
`VOLUME I
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
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`GOLD STANDARD EXHffiiT 2001
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-01476
`
`
`
`2
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`APPEARANCES:
`
`FOR THE PLAINTIFFS: ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
` STEVEN LIEBERMAN, ESQ.
` DEREK F. DAHLGREN, ESQ.
` R. ELIZABETH BRENNER-LEIFER, ESQ.
` 607 14TH STREET, N.W.
` SUITE 800
` WASHINGTON, D.C. 2005
` HUNTER, SMITH & DAVIS
` JIMMIE C. MILLER, ESQ.
` 1212 N. EASTMAN RD.
` P.O. BOX 3740
` KINGSPORT, TN 37664
`
`FOR THE DEFENDANT: KENYON & KENYON LLP
` JEFFREY S. GINSBERG, ESQ.
` MATTHEW G. BERKOWITZ, ESQ.
` ONE BROADWAY
` NEW YORK, NY 10004
` WILSON WORLEY MOORE GAMBLE &
` STOUT, PC
` ROBERT L. ARRINGTON, ESQ.
` P.O. BOX 88
` KINGSPORT, TN 37662
`
`COURT REPORTER: KAREN J. BRADLEY
` RPR-RMR
` U.S. COURTHOUSE
` 220 WEST DEPOT STREET
` GREENEVILLE, TN 37743
`PROCEEDINGS RECORDED BY MECHANICAL STENOGRAPHY, TRANSCRIPT
`PRODUCED BY COMPUTER.
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`THE COURT: ALL RIGHT, THEN IT'S JUST THE
`FINANCIAL INFORMATION THAT'S AT ISSUE?
`MR. GINSBERG: THAT'S CORRECT, YOUR HONOR.
`THE COURT: I WOULD PREFER TO CLOSE THE
`COURTROOM ONLY ONE TIME AND LIMIT IT AS MUCH AS WE CAN.
`I GENERALLY HAVE A VERY STRONG BIAS IN FAVOR OF DOING THE
`PUBLIC'S BUSINESS IN THE PUBLIC EYE; BUT I UNDERSTAND THAT
`THERE IS A PROTECTIVE ORDER IN THIS CASE, I UNDERSTAND
`THAT SOME FINANCIAL INFORMATION MAY BE SENSITIVE, AND SO
`I'LL AGREE TO DO THAT TO A LIMITED BASIS; BUT -- AND YOU
`JUST NEED TO LET ME KNOW WHEN WE GET TO THAT POINT.
`MR. GINSBERG: THANK YOU, YOUR HONOR.
`THE COURT: ALL RIGHT. ANYTHING ELSE AT ALL?
`ALL RIGHT. MR. LIEBERMAN, CALL YOUR FIRST
`WITNESS, DISTRIBUTE YOUR BINDERS, HOWEVER -- NOBODY
`REACTED TO WHAT I SAID ABOUT OPENING STATEMENT. IS THERE
`ANYTHING ELSE YOU NEED TO TELL ME THAT'S NOT IN THE
`PLEADINGS?
`
`MR. LIEBERMAN: NO, YOUR HONOR. WE, WE PUT
`EVERYTHING WE HAD IN THE PAPERS.
`THE COURT: ALL RIGHT.
`MR. GINSBERG: SAME FOR THE DEFENDANT.
`THE COURT: ALL RIGHT. ALL RIGHT. THEN LET'S
`GO STRAIGHT TO THE PROOF THEN.
`MR. LIEBERMAN: PLAINTIFFS CALL DR. NEILL
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`LUEBKE TO THE STAND.
`NEILL LUEBKE, PLAINTIFFS' WITNESS, SWORN
`MR. LIEBERMAN: MAY I APPROACH WITH THE BINDERS
`FOR THE COURT, YOUR HONOR?
`THE COURT: YES, THE CLERK WILL GET THOSE JUST
`IN A MOMENT.
`YOU MAY PROCEED.
`MR. LIEBERMAN: THANK YOU, YOUR HONOR.
`DIRECT EXAMINATION
`BY MR. LIEBERMAN:
`Q.
`COULD YOU PLEASE TELL THE COURT WHO YOU ARE, DR.
`LUEBKE.
`A.
`MY NAME IS NEILL LUEBKE, AND I HAVE BEEN A DENTIST
`FOR 45 YEARS, AND I HAVE TWO PATENTS IN THIS SUIT.
`Q.
`AND WHERE DO YOU LIVE?
`A.
`I LIVE IN BROOKFIELD, WISCONSIN, A SMALL TOWN IN
`WISCONSIN; AND I LIVE THERE WITH MY FRIEND, AND WE'VE BEEN
`MARRIED 45 YEARS. WE HAVE TWO GROWN CHILDREN, JOHN AND
`MICHELLE.
`Q.
`COULD YOU TELL THE COURT A LITTLE BIT ABOUT YOUR
`PROFESSIONAL WORK OVER THE YEARS.
`A.
`WELL, I'VE BEEN A DENTIST SINCE 1969 AND PRACTICED
`DENTISTRY AND THEN BECAME AN ENDODONTIST IN 1980 AND
`BECAME A BOARD CERTIFIED DENTIST IN 1991.
`Q.
`AND HOW MANY YEARS HAVE YOU BEEN PRACTICING, DOCTOR,
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`THE COURT: THAT'S ABOUT AS CLOSE AS I'D LIKE
`
`TO COME.
`Q.
`AND IS THAT A HEAT TREATED FILE OR A NON --
`A.
`NO, IT'S NOT. NO, IT'S NOT. IF I FLICK IT, YOU CAN
`SEE THAT IT GOES RIGHT BACK, SO THAT'S A SUPERELASTIC
`NICKEL-TITANIUM FILE.
`Q.
`AND ASK YOU TO LOOK AT PLAINTIFFS' EXHIBIT 6 FOR
`IDENTIFICATION.
`A.
`YES.
`Q.
`CAN YOU TELL THE COURT WHAT THAT IS?
`A.
`AND THIS IS -- THESE ARE THE FILES THAT I USED IN MY
`PRACTICE. THESE ARE NICKEL-TITANIUM, BUT I HAVE HEAT
`TREATED THESE; AND SO, YOUR HONOR, WHEN I BEND THESE, THEY
`DON'T GO BACK.
`MR. LIEBERMAN: YOUR HONOR, WE WOULD MOVE THE
`ADMISSION OF PLAINTIFF'S EXHIBITS 5 AND 6.
`THE COURT: THEY'RE ADMITTED.
`MR. GINSBERG: NO OBJECTION.
`NOW, THE PHOENIX FILES, EXHIBIT 6 THAT YOU
`Q.
`MENTIONED --
`A.
`EXCUSE ME.
`Q.
`-- DO YOU SELL THOSE PHOENIX FILES?
`A.
`NO.
`Q.
`AND WHAT DO YOU USE THEM FOR?
`A.
`THEY WERE MADE FOR ME SPECIFICALLY, SO THOSE ARE MY
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`ORIGINALLY THE FIRST ONES WE HAD WERE UNREACTIVE. THE TWO
`IN SUIT HERE ARE NOT IN ANY, IN ANY ATMOSPHERE; AND SINCE
`THIS SUIT HAS COME FORWARD, I HAD ANOTHER ONE JUST A
`COUPLE OF WEEKS WAS GRANTED AS WELL.
`Q.
`THANK YOU. AND SHOWING YOU WHAT HAS BEEN MARKED FOR
`IDENTIFICATION AS PLAINTIFF'S EXHIBIT 1 AND 2, COULD YOU
`TELL THE COURT WHAT THOSE TWO DOCUMENTS ARE.
`A.
`EXHIBIT 1 IS WHAT IS AFFECTIONATELY KNOWN IN THIS
`SUIT AS '773, AND IT'S A PATENT THAT WAS ISSUED IN MAY 20
`OF 2004; AND NUMBER 2 IS KNOWN AS '341, AND IT WAS ISSUED
`ON OCTOBER 22, 2013.
`Q.
`I'M SORRY, I MAY HAVE MISHEARD. THE ISSUE DATE FOR
`THE '773 PATENT IS?
`A.
`MAY 20, 2014.
`Q.
`AND WHEN DID YOU APPLY FOR THAT PATENT?
`A.
`IF IT GOES BACK, IT SHOULD BE JUNE 8 OF 2004, I
`BELIEVE. THAT'S MY ORIGINAL -- THAT'S WHEN I FIRST
`STARTED THIS GAME.
`Q.
`SO TEN YEARS APPROXIMATELY?
`A.
`TEN YEARS, VERY MUCH, VERY MUCH.
`Q.
`COULD YOU DESCRIBE FOR THE COURT THE PROCESS THAT
`YOU WENT THROUGH TO OBTAIN THESE TWO PATENTS?
`A.
`WELL, OBVIOUSLY IT TOOK TEN YEARS, IT TOOK A LOT OF
`TIME. I HIRED MY OWN LAWYER, I GUESS -- I HIRED MY OWN
`LAWYER. THE COST OF THE LAWYER FOR ME OVER THAT PERIOD OF
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`TIME WAS NEARLY $170,000, AND IT WAS $14,000 JUST TO HEAT
`TREAT THE INSTRUMENTS I NEEDED TO DO FOR RESEARCH, SO.
`Q.
`COULD YOU TELL THE COURT A LITTLE BIT ABOUT WHAT YOU
`DO WHEN YOU'RE NOT PRACTICING ENDODONTICS?
`A.
`OH, OKAY. WELL, I'M AN EAGLE SCOUT. WHEN MY SON
`GOT INVOLVED WITH SCOUTS, I BECAME THE DISTRICT CHAIRMAN
`FOR THE BOY SCOUTS; AND I WAS CHAIRMAN OF THE ROTARY CLUB
`PROJECT TO RAISE MONEY FOR A CAMP THAT THE ROTARY HAD FOR
`DISADVANTAGED CHILDREN. I, I ALSO HAVE BEEN INVOLVED WITH
`SPECIAL OLYMPICS, I SAT ON THE BOARD OF SPECIAL OLYMPICS;
`AND I HAVE COACHED A VOLLEY BALL TEAM, AND I REFEREED AT
`THE SPECIAL OLYMPICS WORLD GAMES BOTH IN NORTH CAROLINA
`AND IN IRELAND. AND I'M THE FOUNDER OF THE BADGER REGION
`VOLLEY BALL, AND I'VE HELD SEVERAL POSITIONS IN THE BADGER
`REGION, AND HAD THE GOOD FORTUNE TO REFEREE IN TWO
`OLYMPICS IN VOLLEY BALL.
`Q.
`THANK YOU.
`YOUR HONOR, AT THIS TIME WE'D MOVE THAT DR.
`LUEBKE BE ACCEPTED AS AN EXPERT IN THE FIELDS OF
`ENDODONTICS AND ENDODONTIC EQUIPMENT AND MATERIALS.
`THE COURT: ANY OBJECTION?
`MR. GINSBERG: NO OBJECTION.
`DIRECTING YOUR ATTENTION TO EXHIBIT 4 IN YOUR
`Q.
`BINDER.
`
`AND, YOUR HONOR, THESE ARE DEMONSTRATIVES THAT
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`THAT IS IS NOW WE'VE STRAIGHTENED IT OUT, AND WE'VE PULLED
`THE SIDE OF THAT ROOT. THIS IS ON 4F, YOUR HONOR. AND
`WE'VE PULLED THE SIDE OVER, AND NOW WE -- NOW IT'S BECOME
`PROBLEMATIC FOR FILLING.
`AND THEN THE NEXT ONE IS WHAT WE CALL TRANS-
`PORTATION, AND THE BASIC DIFFERENCE ON TRANSPORTATION IS
`IN FACT WE HAVE VIOLATED THE PERIAPEX, AND SO --
`Q.
`AND WHAT DOES THAT MEAN IN ENGLISH?
`A.
`I'M JUST GOING TO SHOW IT RIGHT HERE.
`THE PERIAPEX IS THIS AREA RIGHT AROUND THE
`BOTTOM, IT'S AT THE BOTTOM OF THE TOOTH; AND IF SOMEBODY
`DOES THAT, THIS IS WHERE YOU WOULD NOT BE HAPPY WHEN YOU
`WENT HOME AFTER SEEING ME, SO.
`AND WE CAN LOOK AT H, BUT THIS IS EVERYTHING
`THAT COULD POSSIBLY GO WRONG GOING WRONG. AND I KNOW THAT
`LOOKS UGLY, AND I KNOW YOU THINK THAT CAN'T HAPPEN, BUT I
`CAN'T TELL YOU HOW MANY TIMES I'VE HAD TO DEAL WITH THAT
`AS AN ENDODONTIST, SOMEBODY HAS PRESENTED THAT TO ME.
`Q.
`LET'S TAKE THAT TOOTH PICTURE OFF THE SCREEN.
`A.
`SO I THINK WE DON'T NEED ANY OF MORE OF THOSE
`DEMONSTRATIONS NOW. WE HAVE ANOTHER ONE, WE'LL LOOK AT
`THAT LATER, OKAY.
`Q.
`DR. LUEBKE, DID THERE COME A TIME WHEN THESE
`STAINLESS STEEL FILES WERE REPLACED BY ENDODONTIC FILES
`MADE WITH OTHER MATERIALS?
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`YES, THAT'S WHEN NICKEL-TITANIUM WAS INTRODUCED IN
`A.
`THE EARLY '90'S.
`Q.
`AND HAVE YOU BROUGHT WITH YOU A SAMPLE OF NON-POST
`HEAT TREATED NICKEL-TITANIUM ENDODONTIC FILES?
`A.
`YES. WE SHOWED THAT AS EXHIBIT NUMBER 5, I BELIEVE,
`YOUR HONOR. I DON'T KNOW IF YOU WANT TO PLAY WITH IT OR
`NOT, BUT.
`Q.
`AND WHAT WAS THE REACTION IN THE ENDODONTIC
`PROFESSION TO THESE NICKEL-TITANIUM ENDODONTIC FILES AS
`OPPOSED TO THE STAINLESS STEEL FILES?
`A.
`WELL, I BELIEVE IT WAS ALMOST LIKE A REVOLUTION.
`EVERYBODY IS SAYING, WOW, THIS IS REALLY GREAT.
`MR. GINSBERG: OBJECTION, YOUR HONOR. THIS IS,
`THIS IS HEARSAY.
`MR. LIEBERMAN: HE IS AN EXPERT WITNESS IN THE
`FIELD, YOUR HONOR.
`THE COURT: HE IS. HE CAN TESTIFY.
`MR. GINSBERG: AND JUST ONE OTHER, YOUR HONOR,
`MAY -- IF I MAY. THIS, I THINK THEY'RE GOING TO, DIRECT
`TO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS. THIS WAS
`NEVER DISCLOSED IN ANY OF THEIR PAPERS THAT THEY SUBMITTED
`IN THE CASE, AND WE HAVEN'T HAD AN OPPORTUNITY TO TAKE
`DISCOVERY ON THIS.
`MR. LIEBERMAN: DR. LUEBKE IS A FACT WITNESS AS
`WELL AS AN EXPERT WITNESS. HE WAS MADE AVAILABLE FOR
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`DEPOSITION. THEY QUESTIONED HIM WIDELY ON A WIDE VARIETY
`OF SUBJECTS. IF THERE'S SOME THINGS THEY DIDN'T ASK HIM
`ABOUT, THAT DOESN'T FALL ON US.
`MR. GINSBERG: IN THEIR PAPERS THEY IDENTIFIED
`WHAT SECONDARY CONSIDERATIONS THEY WERE TALKING ABOUT, AND
`THEY NEVER MENTIONED ANY DISCUSSIONS, ANYTHING CONCERNING
`THAT THIS WAS CONSIDERED TO BE A RECOGNIZED --
`THE COURT: IF THEY RAISE ISSUES BEYOND THE
`SCOPE OF THE PLEADINGS FILED, I WILL NOT CONSIDER THEM.
`THE PLEADINGS FRAME THE ISSUES IN THIS CASE, SO -- BUT HE
`MAY TESTIFY.
`MR. LIEBERMAN: THANK YOU, YOUR HONOR.
`DR. LUEBKE, COULD YOU DESCRIBE WHAT CHARACTERISTICS
`Q.
`OF THESE FILES -- WITHDRAWN. WHY WERE -- WITHDRAWN. WERE
`THESE NICKEL-TITANIUM ENDODONTIC FILES VIEWED AS SUPERIOR
`TO THE STAINLESS STEEL FILES; AND IF SO, WHY?
`A.
`YES, THEY WERE. THEY HAD EXCELLENT FLEXIBILITY, AND
`IN THE FIRST PAPER THEY SUGGESTED THEY HAD GOOD TORSIONAL;
`AND THE OTHER THING THAT CHANGED THE PRACTICE OF ENDODON-
`TICS AT THAT POINT IN TIME WAS THAT IT COULD BE USED IN A
`ROTARY INSTRUMENT. UP TO THAT TIME -- NOW, THEY ALSO MADE
`HAND INSTRUMENTS, WHICH IS WHAT THIS NUMBER 5 IS, BUT THEY
`ALSO MADE HAND NICKEL-TITANIUM INSTRUMENTS, BUT NOW THEY
`MADE ROTARY INSTRUMENTS, THAT CHANGED THE BALL GAME.
`Q.
`DO THE NICKEL-TITANIUM FILES HAVE SUPERELASTIC
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`CHARACTERISTICS?
`A.
`YES, THEY DO.
`Q.
`COULD YOU TELL THE COURT WHAT THAT MEANS?
`A.
`WELL, YOUR HONOR, WHEN YOU, WHEN YOU BEND THE
`NICKEL-TITANIUM FILE LIKE THIS, IT SNAPS BACK. IT DOESN'T
`NECESSARILY HAVE TO COME ALL THE WAY BACK, BUT IT HAS
`THAT. IN EARLY TIMES THEY USED TO CALL IT SPRING BACK,
`BUT NOW THEY CALL THAT SUPERELASTICITY.
`Q.
`AND ADDRESSING THE ISSUE OF SUPERELASTICITY, IF YOU
`COULD TURN, PLEASE, TO EXHIBIT 1 IN YOUR BINDER, THE '773
`PATENT.
`A.
`EXHIBIT 1?
`Q.
`EXHIBIT 1. AND LOOK AT FIGURE 6 IN YOUR '773
`PATENT, AND YOU CAN ALSO LOOK AT COLUMN 3, ABOUT TWO-
`THIRDS OF THE WAY DOWN THE COLUMN THERE'S A PARAGRAPH
`WHICH DESCRIBES WHAT FIGURE 6 IS. COULD YOU TELL THE
`COURT WHAT FIGURE 6 REFLECTS.
`A.
`YOUR HONOR, WHAT I'D LIKE TO DO IS I'D LIKE TO POINT
`OUT TO YOU THAT -- I'D LIKE TO READ THE FIGURE TO YOU --
`NOT READ IT TO YOU, BUT I WANT YOU TO UNDERSTAND THAT WHAT
`WE DID IS WE USED AN ISO STANDARD. IT'S CALLED 3630-1.
`WE ALL HAVE OUR NUMBERS AND STUFF. IT'S CALLED GENERAL
`REQUIREMENTS, AND IN IT THERE ARE THREE TESTS. ONE OF
`THOSE TESTS WITHIN THAT WAS BENDING, AND THE BENDING IS
`SPECIFIC; AND THIS IS THE BENDING -- WHAT YOU'RE LOOKING
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`32
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`DO?
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`MR. LIEBERMAN: YES, IT IS.
`THE COURT: ALL RIGHT. GO AHEAD.
`
`SO --
`A.
`FOR THE RECORD DR. LUEBKE HAS PLAINTIFFS' EXHIBIT 7.
`Q.
`COULD YOU TELL THE COURT WHAT PLAINTIFFS EXHIBIT 7 IS
`AND --
`THIS IS JUST A TYPICAL DENTAL HAND PIECE. THAT'S
`A.
`WHAT WE CALL IT, OKAY. YOU MIGHT REFER TO IT AS A DRILL,
`BUT WE REFER TO IT AS A HAND PIECE; AND I PLACE MY ROTARY
`IN THERE, AND I'M GOING TO USE A SIMULATED CANAL. I --
`MR. GINSBERG MAY NOT KNOW WHAT I'M USING, I DON'T KNOW;
`BUT ANY RATE, SO IF I'M -- WE HAVE TO IMAGINE THAT THIS IS
`TURNING; AND SO AS A DENTIST THEN I TAKE THIS DOWN THE
`CANAL -- IF I CAN FIND THIS, THERE IT IS -- I TAKE IT DOWN
`THE CANAL. NOW, IT'S ROTATING AS I WORK, AND SO I'D HAVE
`TO HAVE VERY MINOR MOVEMENTS WHILE IT'S WORKING. SO
`THAT'S HOW A HAND PIECE, THAT'S HOW A ROTARY WORKS.
`Q.
`THANK YOU, DR. LUEBKE. AND I KNOW YOU USED THE TERM
`"ROTARY", IS THIS WHAT MOST PATIENTS WILL REFER TO AS A
`DRILL?
`A.
`YES, SIR.
`Q.
`OKAY.
`A.
`BUT MAY --
`Q.
`NOW, YOU'VE TOLD US WHAT OTHER DENTISTS IN THE FIELD
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`33
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`THOUGHT OF NICKEL-TITANIUM SUPERELASTIC FILES, WHAT DID
`YOU THINK OF THEM WHEN THEY CAME OUT?
`A.
`WELL, WHENEVER I'D GO TO A CONFERENCE, WHEREVER I'D
`TALK TO PEOPLE AT CONTINUING EDUCATION, THEY WERE BREAKING
`THEM, THEY WERE BREAKING THEM IN THE TOOTH; AND I'M GOING,
`THAT'S NOT WHAT I WANT TO DO. AT THAT POINT IN TIME 30
`YEARS INTO PRACTICE, I HAD ONLY BROKEN 5 FILES IN MY
`ENTIRE LIFE, SO -- AND THEY WERE ALL SMALL. SO I
`CONTINUED TO USE THE NICKEL-TITANIUM BY HAND; AND IF I
`MIGHT DEMONSTRATE, IT'S A LITTLE DIFFERENT PROCEDURE.
`YOU LITERALLY IF YOU'RE GOING -- YOU HAVE, YOU
`HAVE TO USE YOUR HAND; AND IF YOU'RE GOING TO DO ANY
`TWISTING AT ALL, YOU HAVE TO DO IT WITH YOUR FINGERS. SO
`THAT'S HOW THIS IS DONE AS OPPOSED TO THE ROTARY. SIMPLE
`PROCEDURE, BUT THAT'S THE WAY IT'S PLAYED. SO I DIDN'T
`USE ROTARY, I DIDN'T WANT TO USE ROTARY BECAUSE I WAS
`CONCERNED OF THEM BREAKING.
`Q.
`AND DID YOU SHARE YOUR CONCERNS ABOUT THE BREAKAGE
`OF THE NICKEL-TITANIUM FILES WITH SOME OF YOUR FELLOW
`ENDODONTISTS?
`A.
`OH, YEAH, RELUCTANTLY, BUT, YES, I DID. I'D GET
`KIDDED, AND I THINK THEY ALL THOUGHT I WAS A LITTLE
`IDIOSYNCRATIC; BUT, YES, I DID.
`Q.
`IDIOSYNCRATIC BECAUSE?
`A.
`I WASN'T USING -- THEY KEPT ASKING ME, WHAT SYSTEM
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`34
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`ARE YOU USING? I SAID, I'M NOT, SO.
`Q.
`HOW BIG OF A PROBLEM WAS IT THAT FILES WERE BREAKING
`OFF IN THE TOOTH CANAL WHEN YOU WERE USING THESE FILES?
`A.
`WELL, THE THING ABOUT IT IS BETWEEN 70 AND 80
`PERCENT OF THE ROOT CANALS ARE PERFORMED BY A GENERAL
`DENTISTS; AND IF THE GENERAL DENTIST SEPARATES OR BREAKS
`OR FRACTURES A FILE IN THE TOOTH, THEY'RE ON THEIR WAY TO
`THE ENDODONTIST; AND WHEN THEY GO TO THE ENDODONTIST, THEN
`THAT'S WHEN THEY HAVE TO DEAL WITH THAT; AND I THINK --
`DON'T WE HAVE SOME PICTURES OF --
`Q.
`YEAH. IF YOU TURN TO DOCUMENT 4I IN YOUR BINDER.
`A.
`4 --
`Q.
`4I. AND IF YOU COULD TELL THE COURT WHAT THAT
`SHOWS. IT'S ALSO UP ON THE SCREEN.
`A.
`SO AS YOU CAN SEE, THE CURVE IS HERE, AND WE HAVE A
`FILE THAT'S, THAT'S BLOCKING THE END OF THE TOOTH. THIS
`ONE IS MORE IN THE MIDDLE OF THE TOOTH, BUT IT'S STILL
`BLOCKING THE TOOTH.
`WHEN I RECEIVE THIS AS AN ENDODONTIST, I HAVE
`THREE CHOICES, YOUR HONOR. ONE IS CAN I REMOVE THE
`TOOTH -- OR CAN I REMOVE THE FILE FROM THE TOOTH. NOW,
`HERE'S WHERE THE PROBLEM IS, IF I'M GOING TO TRY AND
`REMOVE THIS ONE, I'M GOING TO DESTROY THE TOOTH, SO I --
`SO THIS ONE IN THE DRAWING, I CAN'T GET OUT. THIS ONE
`PERHAPS, BUT I'M STILL GOING TO DESTROY THE TOOTH. SO I'M
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`35
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`PROBABLY GOING TO TRY TO GET AROUND IT, LITERALLY TAKE
`SMALL FILES AND TRY TO GET TO THE PERIAPEX. BECAUSE
`REMEMBER WHEN WE LOOKED AT THE OTHER ONE, IT WAS FILLED TO
`THE END, AND THAT'S WHERE WE WANT TO BE. BUT IF WE CAN'T
`DO THAT, THEN WE HAVE TO TRY AND GET AROUND. IF WE CAN'T
`GET AROUND, THEN WHAT WE HAVE TO DO IS FILL IT AS BEST WE
`CAN, SEND THE PATIENT HOME AND MAKE SURE THAT WE DON'T GET
`THAT RADIOLUCENCY, THE DARK SPOT AROUND THE END. WE DON'T
`WANT TO SEE ANY, WE DON'T WANT TO SEE ANY CHANGES. WE
`CALL THAT THE PERIAPEX, OR THE APICAL AREA, WE DON'T WANT
`TO SEE ANY CHANGES ON THAT AREA.
`IF WE SEE CHANGES ON THAT AREA, WHAT WE HAVE TO
`DO THEN, AND I'M GOING TO USE THIS ONE AS MY EXAMPLE, I'M
`GOING TO HAVE TO COME IN HERE, AND I'M GOING TO HAVE TO
`CUT THE END OF THAT ROOT OFF SURGICALLY TO SAVE THAT
`TOOTH.
`Q.
`ALL RIGHT. DR. LUEBKE, LOOKING AT EXHIBIT 4D, COULD
`YOU TELL THE COURT IN YOUR OPINION WHY THE NICKEL-TITANIUM
`FILES WERE BREAKING DURING THE ROOT CANAL PROCEDURES WHEN
`USED WITH ROTARIES?
`A.
`SO IF WE GO BACK TO 4D, REMEMBER, WE HAD THE THREE
`ARROWS GOING ONE WAY AND THREE ARROWS GOING THE OTHER WAY,
`YOUR HONOR. BETWEEN THAT SPOT, BETWEEN THAT SPOT, THE
`FILE HAS TO GO INSIDE OUTSIDE, INSIDE OUTSIDE WHILE IT'S
`BENT. SO IF I TAKE MY -- BEND MY FINGER AND TURN IT
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`36
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`AROUND, THIS THING IS GOING IN AND OUT AND IN AND OUT, AND
`THAT'S A GREAT DEAL OF STRESS. THAT'S USUALLY WHERE THE
`STRESS OCCURS, AND THAT'S USUALLY WHERE THE FRACTURE
`OCCURS.
`Q.
`HOW DID THE DENTAL INDUSTRY, THE ENDODONTIC INDUSTRY
`DEAL WITH THESE PROBLEMS OF FILE BREAKAGE?
`A.
`WELL, WHAT THEY DID IS THEY CHANGED WHAT WE CALL --
`WELL, THEY MADE THEM BIGGER, AND THEY DID IT A NUMBER OF
`WAYS. ONE OF THE WAYS IS THEY THOUGHT THAT IF THEY COULD
`INCREASE THE CORE OF THE -- IN OTHER WORDS, WE'VE GOT
`FLUTES, FILES, THE SHARP EDGES, AND WE'VE GOT THE MIDDLE.
`IF WE COULD INCREASE THE MIDDLE AND LEAVE THE EDGES A
`LITTLE, LITTLE -- NOT SO HIGH, MAYBE WE COULD DO THAT, OR
`THEY CAN DO SOMETHING WHICH WE CALL INCREASED TAPER.
`SO THE FILES THAT I HAVE DEMONSTRATED FOR YOU
`ARE WHAT WE CALL STANDARD FILES, ISO, WE CALL THEM
`STANDARD, AND THEY HAVE WHAT IS CALLED A 2 PERCENT TAPER.
`WHAT THEY WERE DOING THEN IS INSTEAD OF A 2 PERCENT TAPER,
`YOUR HONOR, THEY WOULD GO 2 PERCENT, THEN THEY'D GO 4
`PERCENT, THEN THEY'D GO 6 PERCENT, THEY'D GO 8 PERCENT AND
`THEY'D GO UP TO 10 PERCENT, AND THE INCREASE OF THE TAPER
`THEN WAS SUPPOSED TO HELP THE FILES FROM NOT FRACTURING.
`Q.
`WERE THERE ANY CONSEQUENCES TO INCREASING THE TAPER
`AND INCREASING THE SIZE OF THE CORE OF THE FILES?
`A.
`WELL, FIRST OF ALL, IT DIDN'T SOLVE THE PROBLEM;
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`37
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`AND, SECOND OF ALL, YOU CAN IMAGINE IF WE -- IF YOU -- IF
`WE GO BACK TO THE, TO THE ORIGINAL DRAWING ON THE 4A,
`THOSE ARE DELICATE ROOTS; AND IF YOU START TAKING A LOT OF
`STRUCTURE OUT OF THERE BECAUSE YOU WANT IT LARGER, YOU'RE
`GOING TO START TO COMPROMISE THE TOOTH, AND THAT'S WHAT
`HAPPENED. AND THE ENDODONTIC SOCIETY SAID, WAIT A MINUTE,
`WE'RE TAKING OUT TOO MUCH, WE'VE GOT TO STOP, THESE
`GREATER TAPERS ARE KILLING THESE TEETH.
`Q.
`NOW, DR. LUEBKE, IN YOUR PRACTICE WERE YOU STILL
`GETTING -- WITHDRAWN. DR. LUEBKE, WERE DENTISTS STILL
`GETTING ZIPPING, LEDGING AND PERFORATING WITH THE
`NICKEL-TITANIUM FILES?
`A.
`WELL, SURE, BECAUSE THE THING ABOUT THE
`NICKEL-TITANIUM, IT'S -- I'M GOING TO USE SOME TERMS --
`IT'S A SHAPE MEMORY ALLOY.
`COURT REPORTER: IT'S A WHAT?
`A SHAPE MEMORY ALLOY, S M A. AND WHAT THAT MEANS IS
`A.
`THAT IT'S SUPERELASTIC AND IT HAS SHAPE MEMORY. WHAT IT
`WANTS TO BE IS IT WANTS TO BE STRAIGHT; AND AS I DEMON-
`STRATED BEFORE, WE BEND THE FILE, IT STILL WANTS TO BE
`STRAIGHT. SO WHEN I ENTER A CANAL, EVEN THOUGH IT'S MORE
`FLEXIBLE THAN A STAINLESS STEEL, IT STILL WANTS TO BE
`STRAIGHT. SO YOU CAN STILL LEDGE, YOU CAN STILL ZIP, YOU
`CAN STILL STRIP, YOU CAN STILL DO ALL THE THINGS THAT YOU
`DID, AND WITH A ROTARY YOU CAN DO IT FASTER.
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`38
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`AND IN ADDITION TO USING THE NICKEL-TITANIUM FILES
`Q.
`ONLY BY HAND IN YOUR PRACTICE, DID YOU DO ANYTHING TO TRY
`TO ADDRESS THIS PROBLEM?
`A.
`WELL, I APPROACHED IT AS A RESEARCH PROJECT AGAIN,
`AND SO I -- IN 1995 I STARTED TO TAKE THE NICKEL-TITANIUM,
`AND AGAIN I USED THE -- I ALREADY MENTIONED THE ISO
`3630-1, I STARTED TO TEST THE FILES IN 1985 DOWN AT ADA
`AND TRIED TO SEE WHAT WAS GOING ON WITH THEM. I HAD A
`PROJECT THAT I WAS WRITING A PAPER FOR, SO IN '98 I WENT
`OVER TO SWITZERLAND TO THE MAILLEFER COMPANY, WHICH I HAD
`WORKED AT DOING RESEARCH THERE BEFORE; AND I WORKED IN '98
`ON THE NICKEL-TITANIUM TRYING TO DETERMINE WHAT WAS GOING
`ON, AND I WASN'T GETTING WHERE I WANTED TO GET TO. THERE
`HAD TO BE A PARADIGM SHIFT SOMEWHERE.
`Q.
`WHAT ADDITIONAL WORK DID YOU DO TO TRY TO ADDRESS
`THE PROBLEM WITH THE UNHEATED NICKEL-TITANIUM BREAKING IN
`THE TEETH?
`A.
`MY FIRST THOUGHT WAS THAT MAYBE THEY WEREN'T SHARP
`ENOUGH AND WHAT WAS HAPPENING IS THEY WERE DULLING; AND AS
`THEY WERE WORKING AND WORKING AND WORKING, THEY WERE
`BREAKING, SO THEY WERE IN TOO LONG, THEY WEREN'T CUTTING
`AND GETTING OUT. SO MY FIRST THOUGHTS WERE WHAT IF I WERE
`TO DIAMOND COAT THAT. WELL, THERE'S SEVERAL PROBLEMS WITH
`DIAMOND COATING THE INSTRUMENTS AFTER I MET WITH THE
`DIAMOND COATERS, AND I SOON ABANDONED THAT; AND I'M TRYING
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`39
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`TO MODIFY THE INSTRUMENT, CUTTING WITH -- OKAY, LET'S CUT
`IT. NO, THAT DIDN'T WORK, BUT I KNOW -- I STILL THINK
`SHARPNESS IS THE IDEA. SO THERE'S A HEAT TREATING COMPANY
`IN MY LITTLE TOWN, AND I DON'T KNOW IF YOU'VE BEEN TO THE
`HARDWARE STORE AND YOU SEE THESE GOLD COATED DRILLS THAT
`CUT BETTER, AND THEY TALK ABOUT IT, THEY COAT THAT WITH
`SOMETHING CALLED TIN, AND THAT'S SHORT FOR TITANIUM
`NITRIDE; AND THE PROCESS -- I'LL TRY NOT TO BORE YOU, BUT
`THE PROCESS IS THEY PUT IT IN A HEATED CHAMBER. THEY PUT
`NITROGEN AROUND THE INSTRUMENT THEY'RE WORKING ON, IN THIS
`CASE IT'S MY DENTAL INSTRUMENT, AND THEN THERE'S A
`TITANIUM ROD THAT THEY PUT A CURRENT ACROSS AND ATOMIZE
`IT, AND THE NITROGEN AND THE TITANIUM GLOB ONTO
`THE WHATEVER IS INSIDE. THAT MAKES IT SHARP. SO I DID
`THAT, AND I WENT DOWN TO THE AMERICAN DENTAL ASSOCIATION,
`THE ADA, AND I TESTED THEM AGAIN, 3630-1. WOW, THEY WERE
`STARTING TO, STARTING TO DO ALL RIGHT; AND SO I THEN
`CONTACTED MAILLEFER AND SAID, I'M GOING TO SEND YOU SOME
`FILES, LET'S TEST THESE OVER AT YOUR PLACE; AND I KIND OF
`LIKE TO THINK MAYBE I HAD -- I HAD SOME PROBLEMS WITH THE
`TIN COATING, SO I SAID, WHY DON'T WE JUST REMOVE THE TIN
`AND WHY DON'T WE JUST DO THE HEAT.
`Q.
`DID YOU HAVE AN NDA WITH MAILLEFER AT THIS TIME?
`A.
`YES, I HAD A NDA WITH MAILLEFER.
`Q.
`AND WHERE IS MAILLEFER LOCATED?
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`40
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`MAILLEFER IS IN BALLAIGUES, SWITZERLAND. SO I
`A.
`TRAVELED THERE WITH FRAN, AND WE, WE TESTED SOME, SOME
`FILES; AND WHEN WE TESTED THE, THE NON-COATED FILES, THE
`HEAT TREATED FILES, HOLY COW, IT WAS, IT WAS REALLY SOME-
`THING ELSE. I GOT THE HEAD OF THE R&D, FRANCOIS BEE (PH),
`AND I GOT HIM, I SAT -- HE'S NOT A DENTIST, BUT I HAD HIM
`SIT DOWN WITH THE ROTARY AND START PLAYING ON A PLASTIC
`BLOCK JUST LIKE THIS; AND HE WENT, WOW; AND THEN I GOT IN
`HIS LAB, AND WE TRIED TO MAKE A LEDGE. WE COULDN'T MAKE A
`LEDGE WITH THE HEAT TREATED ONES WHERE WE COULD WITH THE
`OTHERS. SO WE REALLY THOUGHT WE HAD SOMETHING THERE.
`Q.
`AND DID YOU HAVE A VIEW AS TO WHETHER THIS WAS ANY
`DIFFERENT THAN THE NON-HEAT TREATED NICKEL-TITANIUM FILES
`THAT HAD BEEN IN USE?
`A.
`YES, IT DID. YES, IT DID. AND WE FILED A PATENT
`TO, FOR THAT PROCESS, YES, WE DID.
`Q.
`NOW, YOU FILED BOTH THE PROVISIONAL AND THEN A
`NON-PROVISIONAL APPLICATION?
`A.
`YEAH, I BELIEVE THAT'S CORRECT. THOSE ARE TERMS
`THAT YOU GUYS HAVE TO EDUCATE ME ON; BUT, YES, WE FILED A
`PATENT.
`Q.
`AND COULD YOU DESCRIBE FOR THE COURT WHAT YOU
`BELIEVED TO BE YOUR INVENTIONS REFLECTED IN THE TWO
`PATENTS THAT ARE IN SUIT HERE TODAY?
`A.
`WELL, WHAT I THINK I'VE DONE IS I'VE, I'VE TAKEN --
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`41
`
`I LESSENED THE SUPERELASTIC ASPECT OF IT SO THAT A NICKEL,
`A NICKEL-TITANIUM ENDODONTIC FILE CAN ENTER A -- CAN WORK
`INSIDE OF A TOOTH AND FOLLOW THE NATURAL CURVE OF THE
`CANAL.
`Q.
`AND, AND HOW IS THIS DIFFERENT THAN THE
`NICKEL-TITANIUM FILES THAT HAD BEEN USED PREVIOUSLY FOR
`ENDODONTIC PROCEDURES?
`A.
`WELL, I HEAT TREATED. IT'S -- YEAH, IT'S, IT'S HEAT
`TREATED, THE OTHERS ARE NOT HEAT TREATED.
`Q.
`WHAT WAS THE RESULT OF THE HEAT TREATMENT WITH
`RESPECT TO THE SUPERELASTICITY PROPERTIES IN THE
`NICKEL-TITANIUM FILES?
`A.
`WELL, AT THE TEMPERATURES WE'RE TALKING ABOUT, WE'VE
`LOST -- WE CAN GET WHAT'S CALLED PERMANENT DEFORMATION.
`WE CAN ACTUALLY BEND IT, AND IT WILL STAY BENT.
`Q.
`NOW, WHEN YOU FIRST CAME UP WITH THE IDEA OF HEAT
`TREATED NICKLE-TITANIUM FILES AND YOU GOT YOUR SAMPLES
`BACK FROM MAILLEFER, WHAT REACTION DID OTHERS HAVE TO
`THOSE FILES?
`A.
`WELL, I WAS A LITTLE DISAPPOINTED. I HAD SOME
`COLLEAGUES IN CHICAGO THAT WERE AT MY ENDO STUDY CLUB, AND
`I PROCESSED SOME FILES FOR THEM, TOOK THEM DOWN TO THEM;
`AND THE ONE SAID, I DON'T LIKE IT; AND THE OTHER ONE SAID,
`NAH, IT'S OKAY; AND THE COMPANY AT MAILLEFER WHO
`MANUFACTURES FILES FOR NEUR (PH) SAID, THEY'RE TOO SOFT.
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`42
`
`WELL, I HAD A GOOD RELATIONSHIP WITH MAILLEFER,
`SO I KIND OF PRESSED THEM, AND I SAID, PLEASE, WE NEED TO
`DO THIS; AND THEY SAID, OKAY. WE'LL DO A FOCUS GROUP. SO
`THEY, THEY SELECTED DENTISTS WHO THEY'RE FAMILIAR WITH,
`AND THEY TOOK THESE FILES TO THEM, AND THE RESULTS THEY
`GOT BACK WERE THEY WERE TOO SOFT, THEY WERE TOO WEAK, THEY
`WERE TOO -- THEY MIGHT -- THEY'RE TOO EASY TO BIND UP, IN
`OTHER WORDS, TO UNWIND; AND THEY DIDN'T SEE THE, THE, THE
`ABILITY, THE, THE ABILITY TO FOLLOW THE CANAL AS
`NECESSARILY A POSITIVE, AND SO THEY DIDN'T WANT TO DO IT.
`SO I WAS, I WAS MET WITH SOME SKEPTICISM.
`Q.
`BY THE WAY, THE HEAT TREATMENT THAT YOU DID, WHEN
`DID THAT OCCUR IN THE PROCESS, BEFORE OR AFTER THE
`MACHINING OF THE FILES?
`A.
`OH, I DID IT AFTER THE FILES WERE MADE. YEAH, I
`DIDN'T GET INVOLVED WITH THE MANUFACTURE OF THE FILES
`THEMSELVES, THE FILES WERE MADE FOR ME.
`Q.
`SO COULD YOU DESCRIBE YOUR FURTHER EFFORTS TO
`COMMERCIALIZE OR YOUR EFFORTS TO COMMERCIALIZE YOUR HEAT
`TREATED NICKEL-TITANIUM FILES?
`A.
`WELL, PLEASE UNDERSTAND THAT AS AN INDIVIDUAL
`DENTIST TRYING TO CONVINCE THE MANUFACTURER TO MAKE ME
`FILES IS NOT THE EASIEST THING, SO IT TOOK A WHILE; BUT
`FINALLY IN 2008 I FOUND A MANUFACTURER WHO WOULD ACTUALLY
`MANUFACTURE THE FILES THAT YOU SEE HERE. AND SO I WOULD
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`43
`
`TAKE THEM TO MEETINGS, AND SO IN 2008 I STARTED MY LITTLE
`DOG-AND-PONY SHOW TO SEE IF I COULD CONVINCE PEOPLE THAT
`THIS WAS A GOOD THING.
`Q.
`AND HOW DID THAT GO?
`A.
`WELL, OBVIOUSLY NOT AS WELL AS I WOULD HAVE LIKED
`IT; BUT I MET IN 2008 WITH COLTENE, AND THEY SEEMED --
`Q.
`WHAT'S --
`A.
`COLTENE/WHALEDENT, IT'S A BIG DENTAL COMPANY -- AND
`THEY SEEMED TO BE INTERESTED, AND WE SIGNED WHAT THEY CALL
`A SECRECY AGREEMENT, WHICH I CALL AN NDA; AND I MET WITH
`THEM AGAIN, SO OBVIOUSLY THEY WERE INTERESTED, IN FEBRUARY
`OF 2009; AND THEN I MET WITH THEM AGAIN IN, IN APRIL, I
`THINK IT WAS; AND AT THAT TIME THEY SEEMED VERY
`INTERESTED, AND THEY WANTED, THEY WANTED MY FILES. THEY
`WANTED ME TO GIVE THEM A FILE SO THEY COULD LOOK AT IT, SO
`I DID. AND JUST --
`Q.
`AND THE FILES THAT YOU GAVE TO COLTENE/WHALEDENT
`WERE THE PHOENIX FLEX FILES?
`A.
`YEAH, I AFFECTIONATELY -- MY WIFE GAVE THESE THE
`NAMES. THEY'RE CALLED PHOENIX FLEX BECAUSE THEY RISE OUT
`OF THE ASHES, AND SO.
`Q.
`OKAY, AND THAT'S EXHIBIT 6 THAT YOU'VE ALREADY SHOWN
`THE COURT?
`A.
`YEAH. YES.
`Q.
`IF YOU COULD TURN, PLEASE, TO EXHIBIT 12 IN YOUR
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`44
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`BINDER. AND TELL US WHAT EXHIBIT 12 IS.
`A.
`WELL, THAT'S AN AGREEMENT FOR -- FROM
`COLTENE/WHALEDENT.
`Q.
`THE SECRECY AGREEMENT?
`A.
`YEAH, THEY CALL IT SECRECY, YES.
`MR. GINSBERG: YOUR HONOR, I DON'T BELIEVE THIS
`AGREEMENT HAS BEEN PRODUCED BEFORE.
`THE COURT: ALL RIGHT. YOU NEED SOME TIME TO
`
`LOOK AT IT?
`A.
`AM I SUPPOSED TO BE ABLE TO --
`THE COURT: JUST A MINUTE. HE SAID HE DIDN'T
`BELIEVE THIS HAD BEEN PRODUCED BEFORE.
`A.
`OKAY.
`MR. GINSBERG: WE HAVEN'T HAD A CHANCE TO LOOK
`AT IT BEFORE. I'M NOT SURE WHY IT HADN'T BEEN PRODUCED IN
`DISCOVERY.
`MR. LIEBERMAN: THE REASON IT HAS NOT BEEN
`PRODUCED IN DISCOVERY IS TWO-FOLD: FIRST, AS THE COURT IS
`AWARE, DISCOVERY IN THIS CASE WAS VERY, VERY LIMITED FOR
`THE PRELIMINARY INJUNCTION, AND TO CERTAIN NARROW AREAS WE
`AGREED ON AREAS IN WHICH DOCUMENTS WOULD BE PRODUCED.
`THIS WAS OUTSIDE THAT AREA; AND, SECOND, IT'S NOT A
`DENTSPLY DOCUMENT, IT'S DR. LUEBKE'S DOCUMENT. HE'S AN
`INDEPENDENT INDIVIDUAL, HE HAS A CONTRACTUAL RELATIONSHIP
`WITH DENTSPLY.
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`45
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`MR. GINSBERG: IF THEY'RE RELYING ON THESE
`DOCUMENTS, YOUR HONOR, THEY SHOULD HAVE PRODUCED THEM TO
`US, AND WE'D HAVE AN OPPORTUNITY TO EXAMINE THIS CLOSELY
`AND --
`
`COURT REPORTER: I'M SORRY, YOU'RE GOING TO
`HAVE TO SPEAK UP.
`THE COURT: COUNSEL, THE MICROPHONES DON'T PICK
`IT UP SOMETIMES IF YOU'RE VERY FAR AWAY FROM THEM, SO YOU
`MIGHT SLIDE THAT MICROPHONE TOWARD YOU JUST A LITTLE BIT.
`I WILL ADMIT THIS DOCUMENT CONDITIONALLY. IF
`THERE IS AN OBJECTION TO IT, YOU MAY FILE A WRITTEN
`OBJECTION TO IT.
`MR. GINSBERG: THANK YOU, YOUR HONOR.
`THE COURT: BUT I'LL HEAR THE TESTIMONY.
`MR. LIEBERMAN: THANK YOU, YOUR HONOR.
`DR. LUEBKE, DID YOU END UP DOING A DEAL WITH
`Q.
`COLTENE/WHALEDENT?
`A.
`NO, WE DID NOT.
`Q.
`DID YOU MEET WITH ANYBODY ELSE IN ADDITION TO
`COLTENE/WHALEDENT?
`A.
`YES. I GOT A PHONE CALL FROM BOBBY BENNETT WHEN HE
`WORKED WITH D&S DENTAL.
`Q.
`THAT'S MR. BENNETT WHO IS THE CHIEF OPERATING
`OFFICER OF THE DEFENDANT, US ENDODONTICS?
`A.
`YES, THAT'S CORRECT.
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`46
`
`AND AT THAT TIME HE WAS WORKING FOR A COMPANY CALLED
`Q.
`D&S DENTAL?
`A.
`THAT'S CORRECT.
`Q.
`OKAY, AND WHEN DID YOU GET THIS PHONE CALL?
`A.
`ON MAY 18 OF 2010.
`Q.
`DIRECTING YOUR ATTENTION TO PLAINTIFFS' EXHIBIT 13.
`THE COURT: MR. BERKOWITZ {SIC}, BEFORE YOU GO
`INTO THAT, IT LOOKS TO ME LIKE THE ONLY SIGNIFICANCE OF
`EXHIBIT 12 HERE IS THAT IT'S JUST ONE STEP IN THE PROCESS
`HE WENT THROUGH. IN YOUR VIEW DOES IT HAVE ANYTHING TO DO
`WITH THE SPECIFIC ISSUES HERE?
`MR. LIEBERMAN: IT DOES NOT. 13, 14 AND 15 DO,
`BUT I DIDN'T WANT THERE -- SOMETIMES DEFENDANTS IN PATENT
`SUITS WILL ARGUE, YOUR HONOR, THAT THERE'S BEEN SOME
`PUBLIC DISCLOSURE; SO I JUST WANTED TO CUT THAT OFF AT THE
`PASS AND SAVE THREE MONTHS OF FIGHTS AND DISCOVERY SINCE
`WE HAVE A NDA, AND THERE OBVIOUSLY COULDN'T BE A PUBLIC
`DISCLOSURE IF IT'S AN NDA.
`THE COURT: SO IT APPEARS TO ME THIS DOCUMENT
`IS OFFERED FOR A VERY LIMITED PURPOSE; BUT, IN ANY EVENT,
`IF THE DEFENDANT HAS A FORMAL OBJECTION TO IT, THEY CAN
`MAKE IT IN WRITING.
`ALL RIGHT. NOW MOVE ON TO 13.
`CAN YOU TELL US, DR. LUEBKE, WHAT PLAINTIFFS'
`Q.
`EXHIBIT 13 IS?
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`47
`
`MR. GINSBERG: AND, YOUR HONOR, JUST FOR THE
`RECORD, AGAIN, THESE ARE, EXHIBITS 13, 14 AND 15 ARE
`DOCUMENTS THAT HAVE NOT BEEN PRODUCED IN DISCOVERY.
`MR. LIEBERMAN: AGAIN, YOUR HONOR, THESE WERE
`OUTSIDE THE SCOPE OF THE LIMITED DISCOVERY THAT WAS
`ORDERED
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