Page 1
`
` DAVID C. YATES
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
` ETHICON ENDO-SURGERY, INC.
` Petitioner
` v.
` COVIDIEN AG
` Patent Owner
` ____________________
` Case IPR2015-01274
` Patent No. 7,997,536
` ____________________
`
` Deposition of: DAVID C. YATES
` Taken: By the Patent Owner
` Pursuant to Notice
` Date: February 17, 2016
` Time: Commencing at 9:03 a.m.
` Place: Frost Brown Todd, LLC
` 3300 Great American Tower
` 301 East Fourth Street
` Cincinnati, Ohio 45202
` Before: Teresa A. Moore, RPR, CRR
` Notary Public-State of Ohio
` Job No: 103831
`
`TSG Reporting - Worldwide - 877-702-9580
`
`1
`
`2 3
`
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 1 of 8
`
`Covidien Exhibit 2004
`Ethicon Endo-Surgery, Inc. v. Covidien AG
`IPR2016-00944
`
`
`
` DAVID C. YATES
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
` ETHICON ENDO-SURGERY, INC.
` Petitioner
` v.
` COVIDIEN AG
` Patent Owner
` ____________________
` Case IPR2015-01274
` Patent No. 7,997,536
` ____________________
`
` Deposition of: DAVID C. YATES
` Taken: By the Patent Owner
` Pursuant to Notice
` Date: February 17, 2016
` Time: Commencing at 9:03 a.m.
` Place: Frost Brown Todd, LLC
` 3300 Great American Tower
` 301 East Fourth Street
` Cincinnati, Ohio 45202
` Before: Teresa A. Moore, RPR, CRR
` Notary Public-State of Ohio
` Job No: 103831
`
`TSG Reporting - Worldwide - 877-702-9580
`
`1
`
`2 3
`
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 1 of 8
`
`Covidien Exhibit 2004
`Ethicon Endo-Surgery, Inc. v. Covidien AG
`IPR2016-00944
`
`
`
`Page 2
`
`APPEARANCES:
`
` On behalf of the Petitioner:
` Naveen Modi, Esq.
` Mita Chatterjee, Esq
` Paul Hastings
` 875 15th Street Northwest
` Washington, DC 20005
`
` Thomas Beaton, Esq.
` Covidien
` Surgial Solutions
` 5920 Longbow Drive
` Boulder, CO 80301
`
` On behalf of the Patent Owner:
` Jason Engel, Esq.
` Benjamin Weed, Esq.
` K&L Gates
` 70 West Madison Street
` Chicago, IL 60602
`
` Victor Moreno, Esq.
` Johnson & Johnson Services, Inc.
` Ethicon Endo-Surgery, Inc.
` 4545 Creek Road
` Cincinnati, OH 45242
`
`TSG Reporting - Worldwide - 877-702-9580
`
`1
`
`2 3
`
`4
`5
`6
`
`7 8
`
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 2 of 8
`
`
`
`Page 3
`
` DAVID C. YATES
` INDEX
` Page
`DAVID C. YATES
`Cross-Examination By Mr. Modi ...................4
`
` EXHIBITS
` Page
`Exhibit 1001 US Patent No. US 7,887,536 B2, ....48
` Johnson et al., Feb. 15, 2011
`Exhibit 1006 US Patent Application .............52
` Publication No.: US 2002/0107517 A1, Witt
` et al., Aug. 8, 2002
`Exhibit 1005 Provisional Application, Witt .....55
` et al., Jan. 26, 2001
`Exhibit 1007 PCT International Application .....58
` No.: WO 00/24330, Tetzlaff, May 4, 2000
`Exhibit 1008 US Statutory Invention ............59
` Registration No. H1,904, Yates et al., Oct.
` 3, 2000
` _ _ _
`
`TSG Reporting - Worldwide - 877-702-9580
`
`1
`2
`3
`4
`5
`
`6 7
`
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 3 of 8
`
`
`
`Page 4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` DAVID C. YATES
`of lawful age, the Patent Owner herein, being first
`duly sworn as hereinafter certified, was examined
`and deposed as follows:
` CROSS-EXAMINATION
`BY MR. MODI:
` Q. Good morning, Mr. Yates.
` A. Good morning.
` Q. Could you please state your name and
`address for the record?
` A. It's David Yates. And my address is 7534
`Galloway Court in West Chester, Ohio 45069.
` Q. Have you ever been deposed before?
` A. No, sir.
` Q. Have you testified in any proceeding in
`any matter?
` A. No.
` Q. So this is the first time you're
`testifying in any case?
` A. Yes, it is.
` Q. You understand you're under oath today?
` A. I do.
` Q. Like you would be in a court of law?
` A. Yes.
` Q. I'm going to ask you questions. Your
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Page 4 of 8
`
`
`
`Page 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` DAVID C. YATES
`experience making vessel seals.
` Q. How long have you worked for Ethicon?
` A. Worked for J&J since '91, a couple of
`different J&J companies, but all in the same
`location.
` Q. And what is your current title?
` A. Current title is patent specialist.
` Q. And what are your job responsibilities?
` A. Without looking specifically at the job
`description, the general responsibilities are to
`help form the IP strategy for R&D, for the energy
`franchise as R&D; to help protect our current
`products; to try and development white space,
`looking at the future. All things you would imagine
`that someone who's an engineer trying to help people
`invent and help the organization do things on
`strategy, all those kinds of things.
` Q. You mentioned "white space." What do you
`mean by that?
` A. Future products, combinations of
`technologies, and future things that would go along
`with our long-term strategy.
` Q. And as a patent specialist, are you part
`of techno group?
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Page 5 of 8
`
`
`
`Page 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` DAVID C. YATES
` A. I'm still part of R&D. I'm considered a
`design engineer.
` Q. So you have dual titles?
` A. There's some reasons why I'm a design
`engineer versus being part of another group.
` Q. And what are those reasons?
` A. Well, it's internal political
`associations. It's better for me to be an engineer.
` Q. Are there any other patent specialists
`like you in R&D?
` A. I think I'm the only one with that
`particular title.
` Q. And any reason why you're the only one?
` A. I helped create that position about --
`well, nearly a year ago, I guess, now -- not quite a
`year, nine months ago.
` Q. And how did you help create that
`position?
` A. Identified a need and brought that
`forward to our management. And they agreed that we
`needed someone to be -- in energy, to be in that
`position full-time.
` Q. So there are obviously other design
`engineers in R&D, I assume?
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Page 6 of 8
`
`
`
`Page 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` DAVID C. YATES
` A. Yes.
` Q. How do your responsibilities, as a patent
`specialist, differ from other design engineers?
` A. I currently don't have day-to-day product
`design responsibilities. I'm not part of a product
`development team, though I may help them from time
`to time, based on my experience.
` Q. So then, are you working with the design
`engineers, as in your current position?
` A. I would say yes.
` Q. So give me an example of a typical day.
`You go into the office. What's a typical day look
`like for you, as a patent specialist?
` MR. ENGEL: Object to the form.
` A. Can you -- I mean, my days are different
`every day, it seems. What would you like to know?
` Q. What's a typical day for you?
` MR. ENGEL: Same objection.
` A. Well, I may assist in a brainstorming
`activity. I may -- I may help across different
`franchises. I may help in one group or another,
`depending on my expertise. A lot of times I'm
`called for electrical questions. I'm one of the few
`electrical engineers at Ethicon. So my day is
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Page 7 of 8
`
`
`
`Page 17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` DAVID C. YATES
`usually not my own.
` Q. And do you work with attorneys, in this
`position?
` A. Yes, I do.
` Q. With the in-house Ethicon team?
` A. Mostly, yes, with the in-house team.
` Q. And you said you helped create that
`position.
` A. Um-hmm.
` Q. Why did you feel that position was
`needed?
` A. I was looking for a change, myself, and I
`thought this might be an interesting path to take.
` Q. Are there other patent specialists like
`you in the company?
` A. I think you'd asked a question like that
`before. Not -- there aren't people with my title --
` Q. Oh.
` A. -- in Cincinnati, as far as I know.
` Q. And as a patent specialist, are you
`submitting invention disclosures?
` A. Yes, I am.
` Q. Those are your ideas?
` A. Yes.
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Page 8 of 8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
