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`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GREENEVILLE
`
`DENTSJ;'LY INTERNATIONAL,
`INC. AND TULSA DENTAL
`PRODUCTS LLC D/B/A TULSA
`DENTAL SPECIALTIES,
`
`PLAINTIFFS I
`vs.
`
`US ENDODONTICS, LLC,
`
`DEFENDANT.
`
`DOCKET NO. CV-2-14-196
`
`GREENEVILLE, TN
`NOVEMBER 26, 2014
`9:16 A.M.
`VOLUME II
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
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`GOLD STANDARD EXHIBIT 2002
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-01476
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
`GREENEVILLE
`
`DENTSJ;'LY INTERNATIONAL,
`INC. AND TULSA DENTAL
`PRODUCTS LLC D/B/A TULSA
`DENTAL SPECIALTIES,
`
`PLAINTIFFS I
`vs.
`
`US ENDODONTICS, LLC,
`
`DEFENDANT.
`
`DOCKET NO. CV-2-14-196
`
`GREENEVILLE, TN
`NOVEMBER 26, 2014
`9:16 A.M.
`VOLUME II
`
`TRANSCRIPT OF MOTION HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
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`GOLD STANDARD EXHIBIT 2002
`US ENDODONTICS v. GOLD STANDARD
`CASE IPR2015-01476
`
`
`
`2
`
`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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`51
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`WAY UPON THE OUTCOME OF THIS CASE?
`A.
`NO.
`Q.
`DO YOU HAVE A FINANCIAL INTEREST IN THE OUTCOME OF
`THIS LITIGATION?
`A.
`NO.
`
`MR. GINSBERG: THANK YOU, DR. GOLDBERG. I HAVE
`NO FURTHER QUESTIONS AT THIS TIME.
`THE COURT: WHY DON'T WE TAKE A SHORT RECESS
`BEFORE CROSS EXAMINATION.
`(RECESS AT 10:22 A.M., UNTIL 10:35 A.M.)
`THE COURT: OKAY. MR. LIEBERMAN, ARE YOU CROSS
`EXAMINING?
`MR. LIEBERMAN: I AM, YOUR HONOR.
`THE COURT: ALL RIGHT. YOU MAY PROCEED.
`MR. LIEBERMAN: THANK YOU.
`YOUR HONOR, I HAVE A BINDER OF CROSS
`DOCUMENTS.
`THE COURT: ALL RIGHT.
`CROSS EXAMINATION
`BY MR. LIEBERMAN:
`Q.
`GOOD MORNING, DR. GOLDBERG.
`A.
`GOOD MORNING.
`Q.
`I'D LIKE TO START WITH JUST AN OVERVIEW OF A COUPLE
`OF POINTS THAT I THOUGHT YOU HAD MADE. I WANT TO MAKE
`SURE THAT I UNDERSTAND IT.
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`104
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`RATHER THAN QUANTITATIVE --
`A.
`YES.
`Q.
`-- AND THE N EQUALS 1 -- AND, BY THE WAY, THERE ARE
`NO ERROR BARS HERE; ARE THERE?
`A.
`NO.
`Q.
`NORMALLY THERE ARE ERROR BARS IN A QUANTITATIVE
`ANALYSIS?
`A.
`YES.
`Q.
`AND CERTAINLY KUHN DOESN'T SAY ANYTHING ABOUT THE
`ISO STANDARD; CORRECT?
`A.
`CORRECT.
`MR. LIEBERMAN: YOUR HONOR, COULD I HAVE A
`MOMENT TO CONSULT WITH MY COLLEAGUES TO SEE IF I CAN
`STREAMLINE THIS.
`THE COURT: YOU MAY.
`MR. LIEBERMAN:
`Q.
`LOOKING AT THE MCSPADDEN REFERENCE THAT YOU TALKED A
`LITTLE BIT ABOUT THIS MORNING, YOU WILL AGREE THAT THERE
`ARE MANY PLACES IN THE MCSPADDEN REFERENCE THAT TOUT THE
`DESIRABILITY OF A STIFFER SUPERELASTIC NICKEL-TITANIUM
`ENDODONTIC FILE; CORRECT?
`A.
`CORRECT.
`Q.
`AND YOU AGREE THAT THAT IS THE OPPOSITE OF DR.
`LUEBKE'S INVENTION; CORRECT?
`A.
`CORRECT.
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`
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`105
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`AND YOU'VE SEEN IN MANY OF THE PRIOR ART REFERENCES
`Q.
`UPON WHICH THE DEFENDANTS HAVE RELIED THAT THERE'S THE
`SPECIFIC PRAISE FOR AND TOUTING OF THE DESIRABILITY OF
`SUPERELASTICITY; CORRECT?
`A.
`CORRECT.
`Q.
`AND THAT IS THE OPPOSITE OF DR. LUEBKE'S INVENTION,
`WHICH IS TO DECREASE SUPERELASTICITY IN ENDODONTIC FILES
`TO FIX A PARTICULAR PROBLEM; CORRECT?
`A.
`CORRECT.
`MR. LIEBERMAN: I HAVE NO FURTHER QUESTIONS,
`YOUR HONOR.
`THE COURT: REDIRECT?
`MR. GINSBERG: I HAVE NOTHING FURTHER FROM THIS
`
`WITNESS.
`
`THE COURT: ALL RIGHT. DR. GOLDBERG, THANK YOU
`VERY MUCH. YOU MAY BE EXCUSED.
`A.
`THANK YOU.
`THE COURT: ALL RIGHT, MR. GINSBERG, LET'S GET
`STARTED WITH YOUR NEXT WITNESS.
`MR. GINSBERG: I'M GOING TO TURN IT OVER TO MR.
`BERKOWITZ.
`THE COURT: ALL RIGHT, MR. BERKOWITZ.
`MR. BERKOWITZ: YOUR HONOR, THE DEFENDANT CALLS
`DR. JEFFREY STEC.
`JEFFREY STEC, DEFENDANT'S WITNESS, SWORN
`
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`129
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`WELL, IT'S MY UNDERSTANDING THAT THERE ARE AT LEAST
`A.
`A COUPLE OF NON-FRINGING ALTERNATIVES, AND I'VE PREPARED A
`SLIDE TO GO THROUGH THOSE IN GREATER DETAIL, BUT I'LL
`EXPLAIN WHAT I MEAN BY NON-INFRINGING ALTERNATIVE. IT'S
`BASICALLY A FILE THAT ALLOWS EDGEENDO TO CONTINUE TO SELL
`A PARTICULAR, OR THIS PARTICULAR FILE WITHOUT INFRINGING
`THE PATENT IN SUIT.
`Q.
`CAN WE GO TO SLIDE 8.
`IS THIS WHAT YOU WERE REFERRING TO, DR. STEC?
`YES. THIS WAS THE SUMMARY SLIDE I WAS THINKING
`
`A.
`OF.
`OKAY, SO CAN YOU EXPLAIN THIS, WHAT'S SHOWN HERE?
`Q.
`SURE. IN THE FIRST BULLET POINT I MENTION TWO
`A.
`PARTICULAR FILES THAT I UNDERSTAND THAT US ENDO MANU-
`FACTURES AND THAT EDGEENDO SELLS. IT'S MY UNDERSTANDING
`BOTH THE X3 FILE AND THE XR FILE ARE NON-ACCUSED
`ALTERNATIVES. THE X3 FILE OPERATES IN THE MARKETPLACE
`ALONG WITH THE X1 FILE, THE X5 FILE, THE X7 FILE; AND
`BASED ON MY UNDERSTANDING, IT'S A COMPARABLE FILE IN THE
`SENSE THAT IT COULD REPLACE THE X5 OR X7 FILE FOR AT LEAST
`SOME OF THE CUSTOMERS.
`Q.
`OKAY. WHAT IS THE RELEVANCE OF THE EXISTENCE OF
`AVAILABLE NON-INFRINGING ALTERNATIVES IN THE ANALYSIS THAT
`YOU DID?
`A.
`WELL, IN MY MIND THE EXISTENCE OF NON-INFRINGING
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`159
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`AND YOU'RE AWARE THAT WHILE MR. BENNETT OWNS 30
`Q.
`PERCENT OF US ENDO, THE OWNER OF EDGEENDO OWNS THE OTHER
`70 PERCENT; CORRECT?
`A.
`I BELIEVE I HEARD THAT YESTERDAY, YES.
`Q.
`AND YOU'VE READ MR. BENNETT'S DEPOSITION?
`A.
`I HAVE.
`Q.
`SO YOU'VE ACTUALLY SEEN THAT IN WRITING; CORRECT?
`A.
`I DON'T RECALL IF THAT WAS THERE; BUT IF IT WAS,
`YES, I SAW IT WHEN I READ IT.
`Q.
`YOU'RE AWARE THAT MR. BENNETT HAS TESTIFIED THAT
`US ENDO DOESN'T HAVE ANY PEOPLE THAT ENGAGE IN RESEARCH
`AND DEVELOPMENT ACTIVITIES; CORRECT?
`A.
`I BELIEVE THAT'S CORRECT, TO THE BEST OF MY
`RECOLLECTION.
`Q.
`NOW, I WANT TO FOCUS ON THE ISSUE OF BUT-FOR
`CAUSATION. YOU WOULD AGREE THAT AT LEAST INITIALLY WHAT A
`COMPANY SAYS ABOUT ITS OWN PRODUCTS AND WHO ITS
`COMPETITORS ARE IS IMPORTANT EVIDENCE IN DETERMINING IF
`THERE'S BUT-FOR CAUSATION ON A LOST SALE; CORRECT?
`A.
`I DON'T THINK I COULD SAY ONE WAY OR THE OTHER
`WITHOUT MORE SPECIFIC INFORMATION.
`Q.
`ALL RIGHT. WELL, LET'S GET SPECIFIC. IF YOU COULD
`LOOK AT YOUR BINDER, PLEASE. TURN TO TAB 45.
`A.
`I DON'T HAVE A TAB 45 IN THE BINDER I HAVE IN FRONT
`OF ME.
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`172
`
`REVOLUTIONARY HEAT TREATED FILES DESIGNED TO
`Q.
`DECREASE BROKEN FILES.
`A.
`I HAVE NO INFORMATION AS I SIT HERE WHETHER THIS IS
`THEIR PRIMARY ADVERTISING MESSAGE OR SECONDARY ADVERTISING
`MESSAGE OR A MINOR ADVERTISING MESSAGE, I DON'T KNOW.
`Q.
`YOU'RE AWARE THAT MR. BENNETT TESTIFIED IN
`DEPOSITION THAT IT'S THE HEAT TREATMENT OF THE FILES THAT
`RESULTS IN A SUPERIOR PRODUCT; CORRECT?
`A.
`I DON'T RECALL THAT PORTION OF HIS TESTIMONY. I'D
`BE HAPPY TO BE REFRESHED IF YOU HAVE IT.
`Q.
`IF YOU LOOK ON THE, THE SCREEN, YOU'LL SEE THE
`QUESTION ON THE BOTTOM OF PAGE 61 OF MR. BENNETT'S
`DEPOSITION.
`"Q. SO IS IT FAIR TO SAY THAT THE HEAT
`TREATMENT RESULTED IN A SUPERIOR PRODUCT?"
`AND THE ANSWER:
`"A. IN MY OPINION, YES."
`DOES THAT REFRESH YOUR RECOLLECTION, SIR?
`IT DOES. FROM THAT CONTEXT I CAN'T TELL IF HE'S
`A.
`TALKING ABOUT THE X3 FILE OR THE X1, X5 AND X7 FILES OR
`ALL OF THEM, IT'S UNCLEAR TO ME.
`Q.
`WELL, LET'S TAKE A LOOK AT ALL OF PAGE 61.
`MR. BERKOWITZ: YOUR HONOR, I DO HAVE A CONCERN
`ABOUT THE WAY THIS IS COMING IN. THIS IS AN OUT-OF-COURT
`DEPOSITION. IT'S NOT BEING USED AS IMPEACHMENT. THE
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`173
`
`A.
`
`WITNESS HASN'T ESTABLISHED THAT HE RELIED ON THIS FOR
`ANYTHING. I'M NOT REALLY SURE WHY WE'RE READING IN
`DEPOSITION TESTIMONY FROM A THIRD PARTY.
`THE COURT: I GOT THE IMPRESSION HE HAD READ IT
`BECAUSE HE WAS ANSWERING QUESTIONS AS IF HE HAD.
`HAVE YOU READ THIS?
`I HAVE READ THIS DEPOSITION.
`THE COURT: DID YOU CONSIDER IT IN RENDERING
`YOUR OPINIONS IN THIS CASE?
`A.
`I CONSIDERED IT.
`THE COURT: IT'S ADMISSIBLE.
`MR. LIEBERMAN: THANK YOU, YOUR HONOR.
`YOU SEE THE QUESTION AT LINES 8 AND 9, "SO WHAT
`Q.
`CAUSED THE EDGEFILES TO HAVE SUCH GOOD RESULTS IN THE
`CYCLICAL FATIGUE TESTING?" DO YOU SEE THAT?
`A.
`YES, I DO.
`Q.
`DO YOU RECALL ALSO THAT MR. BENNETT HAS TESTIFIED
`THAT HE WAS TOLD BY MR. GOODIS, THE 70 PERCENT OWNER OF
`US ENDO, THAT GOODIS WANTED A HEAT TREATMENT STEP
`PERFORMED BECAUSE HE WANTED TO HAVE A PRODUCT IN THE
`COMPETING MARKETPLACE; DO YOU RECALL THAT TESTIMONY,
`SIR?
`I DO NOT RECALL THE SPECIFICS OF THAT TESTIMONY.
`A.
`IF I COULD DIRECT YOUR ATTENTION TO THE SCREEN AND
`Q.
`READ THE QUESTION AND THE ANSWER THAT BEGINS ON PAGE 122
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`174
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`LINE 22. READ IT OUT LOUD, PLEASE.
`A.
`OH, I'M SORRY.
`"Q. DO YOU RECALL ANYTHING THAT DR. GOODIS
`COMMUNICATED TO YOU ABOUT WHY HE WANTED A HEAT TREATMENT
`STEP PERFORMED?
`"A. YES. I THINK WHAT I RECALL WAS HIS
`PRIMARY PURPOSE WAS TO HAVE A PRODUCT THAT HE COULD
`ACTUALLY COMPETE IN THE MARKETPLACE WITH."
`Q.
`THANK YOU. DID YOU CONSIDER THAT TESTIMONY IN
`CONNECTION WITH YOUR CONCLUSIONS REGARDING NEXUS?
`A.
`I CERTAINLY REVIEWED THAT TESTIMONY, SO IN THAT
`CONTEXT IT WOULD HAVE BEEN CONSIDERED.
`Q.
`ARE YOU AWARE, SIR, THAT IN ADDITION TO SPECIFICALLY
`TARGETING CUSTOMERS WHO USE DENTSPLY PRODUCTS AND URGING
`THEM TO SWITCH TO THE ACCUSED PRODUCTS, EDGEENDO HAS
`ACTUALLY COPIED DENTSPLY'S MARKETING MATERIALS ALMOST WORD
`FOR WORD?
`
`MR. BERKOWITZ: I OBJECT, YOUR HONOR, TO THE
`BEGINNING OF THAT SENTENCE, IT WAS MISCHARACTERIZING IT,
`THAT WE'RE TRYING -- EDGEENDO IS TRYING TO URGE THEM TO
`SWITCH, I DON'T KNOW THAT THAT'S EVER BEEN ESTABLISHED.
`THE COURT: REPHRASE IT, PLEASE.
`MR. LIEBERMAN: I'LL REPHRASE THE QUESTION.
`IN RENDERING YOUR OPINIONS IN THIS LAWSUIT, ARE YOU
`Q.
`AWARE THAT EDGEENDO HAS COPIED SOME OF DENTSPLY'S
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`INDEX
`
`DEFENDANT'S WITNESSES:
`JON A. GOLDBERG
`DIRECT EXAMINATION BY MR. GINSBERG
`CROSS EXAMINATION BY MR. LIEBERMAN
`JEFFREY STEC
`DIRECT EXAMINATION BY MR. BERKOWITZ
`CROSS EXAMINATION BY MR. LIEBERMAN
`REDIRECT EXAMINATION BY MR. BERKOWITZ
`
`197
`
`PAGE
`10
`51
`106
`145
`186
`
`PLAINTIFFS':
`19
`20
`
`EXHIBITS
` MARKED ADMITTED
`EDGEENDO MARKETING
`169
`169
`LITERATURE
`ADVERTISING DOCUMENTS
`191
`191
`
`DEFENDANT'S: MARKED ADMITTED
`15
`ALAPATI DISSERTATION 2006
`31
`31
`16
`SLIDES, DR. GOLDBERG
`50
`17
`SLIDES, JEFFREY STEC
`143 143
`18
`TESTIMONIAL
`143
`143
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