·1· · · · · UNITED STATES PATENT AND TRADEMARK OFFICE
`· · · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`·2
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`·3
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`·4· ·R.J. REYNOLDS VAPOR COMPANY,· · ·)
`· · · · · · · · · · · · · · · · · · · )
`·5· · · · · · ·Petitioner,· · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·6· · · · ·vs.· · · · · · · · · · · · ) Case IPR2016-01268
`· · · · · · · · · · · · · · · · · · · ) Patent 8,365,742
`·7· ·FONTEM HOLDINGS 1 B.V.,· · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·8· · · · · · ·Patent Owner.· · · · · )
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`·9
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`10
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`11
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`12· · · · · · ·Videotaped deposition of DR. ROBERT H.
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`13· ·STURGES, JR., taken before NADINE J. WATTS, CSR, RPR,
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`14· ·and Notary Public, pursuant to the Rules of the United
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`15· ·States Patent and Trademark Office pertaining to the
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`16· ·taking of depositions, at Suite 3600, 455 North
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`17· ·Cityfront Plaza Drive, in the City of Chicago, Cook
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`18· ·County, Illinois, at 9:01 o'clock a.m. on the 8th day of
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`19· ·March, A.D., 2017.
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`· · · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`·2
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`·3
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`·4· ·R.J. REYNOLDS VAPOR COMPANY,· · ·)
`· · · · · · · · · · · · · · · · · · · )
`·5· · · · · · ·Petitioner,· · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·6· · · · ·vs.· · · · · · · · · · · · ) Case IPR2016-01268
`· · · · · · · · · · · · · · · · · · · ) Patent 8,365,742
`·7· ·FONTEM HOLDINGS 1 B.V.,· · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·8· · · · · · ·Patent Owner.· · · · · )
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`·9
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`10
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`11
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`12· · · · · · ·Videotaped deposition of DR. ROBERT H.
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`13· ·STURGES, JR., taken before NADINE J. WATTS, CSR, RPR,
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`14· ·and Notary Public, pursuant to the Rules of the United
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`15· ·States Patent and Trademark Office pertaining to the
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`16· ·taking of depositions, at Suite 3600, 455 North
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`17· ·Cityfront Plaza Drive, in the City of Chicago, Cook
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`18· ·County, Illinois, at 9:01 o'clock a.m. on the 8th day of
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`19· ·March, A.D., 2017.
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`·1· · · · · · ·There were present at the taking of this
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`·2· ·deposition the following counsel:
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`·3
`· · · · · · · ·BRINKS GILSON & LIONE by
`·4· · · · · · ·MR. ROBERT S. MALLIN and
`· · · · · · · ·MR. YUEZHONG FENG, Ph.D.
`·5· · · · · · ·NBC Tower - Suite 3600
`· · · · · · · ·455 North Cityfront Plaza Drive
`·6· · · · · · ·Chicago, Illinois· 60611
`· · · · · · · ·(312) 321-4200
`·7· · · · · · ·rmallin@brinksgilson.com
`· · · · · · · ·yfeng@brinksgilson.com
`·8
`· · · · · · · · · on behalf of the Petitioner;
`·9
`· · · · · · · ·PERKINS COIE, by
`10· · · · · · ·MR. JOSEPH HAMILTON
`· · · · · · · ·1888 Century Park East
`11· · · · · · ·Suite 1700
`· · · · · · · ·Los Angeles, California· 90067
`12· · · · · · ·(310) 788-3271
`· · · · · · · ·jhamilton@perkinscoie.com
`13
`· · · · · · · · · · · ·and
`14
`· · · · · · · ·PERKINS COIE, by
`15· · · · · · ·MR. NATHAN R. KASSEBAUM
`· · · · · · · ·2901 North Central Avenue
`16· · · · · · ·Suite 2000
`· · · · · · · ·Phoenix, Arizona· 85012
`17· · · · · · ·(602) 351-8084
`· · · · · · · ·nkassebaum@perkinscoie.com
`18
`· · · · · · · · · on behalf of the Patent Owner.
`19
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`21· ·ALSO PRESENT:· Mr. Walter Cwik, videographer
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`·1· · · VIDEOTAPED DEPOSITION OF DR. ROBERT H. STURGES, JR.
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`·2· · · · · · · · · · · TAKEN MARCH 8, 2017
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`·3
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`·4· ·EXAMINATION BY· · · · · · · · · · · · · · · · PAGE
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`·5· ·Mr. Joseph Hamilton· · · · · · · · · · · · · · ·5, 191
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`·6· ·Mr. Robert S. Mallin· · · · · · · · · · · · · 184
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`·7· · · · · · · · · PREVIOUSLY MARKED EXHIBITS
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`·8· · · · · · · · · · · · · · · · · · · · · · · · ·PAGE
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`·9· ·DEPOSITION EXHIBIT 1001· · · · · · · · · · · · ·27
`· · · · U.S. Patent No. 8,365,742
`10
`· · ·DEPOSITION EXHIBIT 1003· · · · · · · · · · · · ·39
`11· · · Patent Specification for Utility
`· · · · Model, ZL Patent No. 200420031182.0
`12
`· · ·DEPOSITION EXHIBIT 1004· · · · · · · · · · · · 141
`13· · · C.L. Whittemore, Jr. Patent 2,057,353
`· · · · Vaporizing Unit for Therapeutic
`14· · · Apparatus, filed September 27, 1935
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`15· ·DEPOSITION EXHIBIT 1012· · · · · · · · · · · · 154
`· · · · Patent Owner's Preliminary Response
`16· · · to Petition for Inter Partes Review
`· · · · of U.S. Patent No. 8,365,742
`17
`· · ·DEPOSITION EXHIBIT 1015· · · · · · · · · · · · ·10
`18· · · Declaration of Dr. Robert H. Sturges
`· · · · Regarding U.S. Patent No. 8,365,742
`19
`· · ·DEPOSITION EXHIBIT 1020· · · · · · · · · · · · ·11
`20· · · Supplemental Declaration of
`· · · · Dr. Robert H. Sturges
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`·1· · · ·THE VIDEOGRAPHER:· Here begins the videotaped
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`·2· ·deposition of Robert Sturges in the matter of R.J.
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`·3· ·Reynolds Vapor Company versus Fontem Holdings 1 B.V., in
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`·4· ·the United States Patent and Trademark Office, Before
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`·5· ·the Patent Trial and Appeal Board, Case No.
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`·6· ·IPR2016-01268.
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`·7· · · · · · This deposition is being held at 455 North
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`·8· ·Cityfront Plaza, Chicago, Illinois on March 8th, 2017 at
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`·9· ·approximately 9:01.
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`10· · · · · · My name is Walter Cwik, and I am a legal video
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`11· ·specialist in association with DTI.· The court reporter
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`12· ·today is Nadine Watts in association with DTI.
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`13· · · · · · Will counsel please introduce themselves for
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`14· ·the record.
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`15· · · ·MR. HAMILTON:· This is Joseph Hamilton from Perkins
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`16· ·Coie representing the Patent Owner, Fontem.· With me is
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`17· ·Nathan Kassebaum, also from Perkins Coie.
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`18· · · ·MR. MALLIN:· Robert Mallin with Brinks Gilson &
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`19· ·Lione on behalf of R.J. Reynolds Vapor and the witness.
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`20· ·And with me is Yuezhong Feng, also with Brinks Gilson &
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`21· ·Lione.
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`22· · · ·THE VIDEOGRAPHER:· Will the court reporter please
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`23· ·swear in the witness.
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`24
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`25· · · · · · (Witness sworn.)
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`·1· · · · · · · · · DR. ROBERT H. STURGES, JR.,
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`·2· ·called as a witness herein, having been first duly
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`·3· ·sworn, was examined upon oral interrogatories and
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`·4· ·testified as follows:
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`·5· · · · · · · · · · · · · EXAMINATION
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`·6· · · · · · · · · · · ·by Mr. Hamilton:
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`·7· · · ·MR. HAMILTON:· Q· ·Good morning, Dr. Sturges.
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`·8· · · ·A· ·Good morning.
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`·9· · · ·Q· ·Thank you for appearing today.· Do you
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`10· ·understand you're under oath?
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`11· · · ·A· ·I understand that, yes.
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`12· · · ·Q· ·Have you ever been deposed before?
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`13· · · ·A· ·I have.
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`14· · · ·Q· ·About how many times?
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`15· · · ·A· ·About once a year over the last 25 years.
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`16· · · ·Q· ·So would you say you've been deposed about 25
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`17· ·times?
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`18· · · ·A· ·Yes.· It might be more than that.
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`19· · · ·Q· ·So I'm going to go through some of the
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`20· ·procedures that you're going to see here today.· And I
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`21· ·understand you probably are familiar with many of them,
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`22· ·but I just want to remind you what's going to happen
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`23· ·today.
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`24· · · · · · So I'm going to be asking you questions.· If
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`25· ·there's anything you don't understand, please ask for
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`·1· ·clarification, definitions, explanation of words.· And
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`·2· ·if you don't, we're going to assume you understand the
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`·3· ·question.· Is that fair?
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`·4· · · ·A· ·Fair enough.
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`·5· · · ·Q· ·As you can see, we have a court reporter here
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`·6· ·and she's taking down everything that we say.· So I'd
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`·7· ·ask that we not speak over each other.· If you could
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`·8· ·wait until I finish the question before answering, and
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`·9· ·I'll try to do the same with your answer before asking
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`10· ·the next question.
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`11· · · · · · I'd ask that you give an audible response, so
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`12· ·no head nods, no uh-huh, something that the court
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`13· ·reporter can take down into the record.
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`14· · · ·A· ·Agree.
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`15· · · ·Q· ·Great.· Is there any reason you can't give your
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`16· ·full, complete, and truthful testimony here today?
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`17· · · ·A· ·No.
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`18· · · ·Q· ·Do you have any medical or health conditions
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`19· ·that might prevent your full, complete, and truthful
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`20· ·testimony today?
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`21· · · ·A· ·None.
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`22· · · ·Q· ·If you ever need a break, please feel free to
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`23· ·ask.· The one thing I would ask is we do not take a
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`24· ·break while a question is pending.
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`25· · · ·A· ·Agree.
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`·1· · · ·Q· ·Did you bring any documents with you here today?
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`·2· · · ·A· ·Just what I've been handed this morning.
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`·3· · · ·Q· ·And what were you handed this morning?
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`·4· · · ·A· ·The paper No. 10 decision of the inter partes
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`·5· ·review of the matter just mentioned; a set of documents
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`·6· ·involving the case; the patents and exhibits related to
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`·7· ·those.· My prior declaration and supplemental
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`·8· ·declaration, they're included in that.
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`·9· · · ·Q· ·May I see those documents?
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`10· · · ·A· ·Certainly.
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`11· · · ·MR. MALLIN:· Joe, if it helps, that's just a copy of
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`12· ·the petition and the exhibits and patent owner's
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`13· ·response exhibits and decision.
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`14· · · ·MR. HAMILTON:· Q· ·When did you first see these
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`15· ·documents?
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`16· · · ·A· ·I first saw them bound as they are several days
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`17· ·ago.· I saw some of them before that, depending on which
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`18· ·document you're referring to.
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`19· · · ·Q· ·So when did you receive this copy of these
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`20· ·documents?
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`21· · · ·A· ·This morning.
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`22· · · ·Q· ·And you received a copy just like this several
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`23· ·days ago; is that correct?
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`24· · · ·A· ·Yes.
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`25· · · ·Q· ·And where is that copy?
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`·1· · · ·A· ·In my hotel room.
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`·2· · · ·Q· ·Did you mark up that copy that's in your hotel
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`·3· ·room?
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`·4· · · ·A· ·I did take some notes in it, yes.
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`·5· · · ·Q· ·Have you made any markings on this copy?
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`·6· · · ·A· ·None.
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`·7· · · ·Q· ·Did you request that this copy be provided to
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`·8· ·you?
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`·9· · · ·A· ·No, I did not.
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`10· · · ·Q· ·And who provided you with this copy?
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`11· · · ·A· ·Counsel, Mr. Mallin.
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`12· · · ·Q· ·All right.· I'll hand you back those copies.
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`13· · · ·A· ·Thank you.
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`14· · · ·Q· ·Did you do any preparation for your deposition
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`15· ·today?
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`16· · · ·A· ·Yes, I have.
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`17· · · ·Q· ·What did you do to prepare?
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`18· · · ·A· ·I met with counsel a couple times last week and
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`19· ·over Monday and Tuesday part of the day before this
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`20· ·deposition today, Wednesday.
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`21· · · ·Q· ·Where did you meet with counsel during those
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`22· ·couple times last week?
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`23· · · ·A· ·In Blacksburg, at Virginia Tech.
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`24· · · ·Q· ·And who did you meet with?
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`25· · · ·A· ·Mr. Mallin and Mr. Feng.
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`·1· · · ·Q· ·And where did you meet Monday and Tuesday of
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`·2· ·this week?
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`·3· · · ·A· ·In this building.
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`·4· · · ·Q· ·And who did you meet with?
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`·5· · · ·A· ·Mr. Mallin and Mr. Feng.
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`·6· · · ·Q· ·Other than your meetings last week and Monday
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`·7· ·and Tuesday of this week, have you done any other
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`·8· ·preparation for your deposition today?
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`·9· · · ·A· ·Only reading the documents of record that are
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`10· ·already here.· Other than that, I did nothing.
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`11· · · ·Q· ·When you say the documents of record, what do
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`12· ·you mean?
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`13· · · ·A· ·I mean my report, the PTAB's decision, a number
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`14· ·of exhibits having to do with my reports.
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`15· · · ·Q· ·And would all those documents that you reviewed
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`16· ·be included in the papers in front of you?
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`17· · · ·A· ·I believe that's correct.
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`18· · · ·Q· ·Are you represented by counsel here today?
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`19· · · ·A· ·Yes.
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`20· · · ·Q· ·And who represents you here today?
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`21· · · ·A· ·Mr. Mallin.
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`22· · · ·Q· ·Do you have a retainer agreement with
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`23· ·Mr. Mallin?
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`24· · · ·A· ·Yes, I do.
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`25· · · ·Q· ·And is that retainer agreement beyond --
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`·1· ·Withdraw that question.
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`·2· · · · · · Do you have a retainer agreement with
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`·3· ·Mr. Mallin personally?
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`·4· · · ·A· ·No, through the corporation, Brinks Gilson.
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`·5· · · ·Q· ·And so it's your understanding you're retained
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`·6· ·by the law firm Brinks Gilson and not by RJR?
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`·7· · · ·A· ·I'm not certain of those documents, and I don't
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`·8· ·have them with me, so I can't give you an answer on the
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`·9· ·record precisely.
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`10· · · ·Q· ·Who pays your bills in this matter?
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`11· · · ·A· ·It comes through one source or the other, and,
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`12· ·as I sit here, I don't recall which.
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`13· · · ·Q· ·About how many hours have you spent working on
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`14· ·this matter?
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`15· · · ·A· ·I can't tell you.· I haven't tallied up the
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`16· ·hours.· I started with the matter sometime in June last
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`17· ·year.· That, I recall.
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`18· · · ·Q· ·Would you recall if it's more than a hundred
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`19· ·hours?
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`20· · · ·A· ·It probably is.
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`21· · · ·Q· ·Are you paid by the hour in this matter?
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`22· · · ·A· ·I am.
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`23· · · ·Q· ·All right.· I'm going to hand you what's been
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`24· ·previously marked as Exhibit 1015.
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`25· · · · · · (Previously marked Deposition
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`·1· · · · · · Exhibit 1015 tendered to witness.)
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`·2· · · ·A· ·Thank you.
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`·3· · · ·Q· ·Do you recognize Exhibit 1015?· Would you like a
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`·4· ·copy?
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`·5· · · ·MR. MALLIN:· What is it?· Just his --
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`·6· · · ·MR. HAMILTON:· His report.
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`·7· · · ·MR. MALLIN:· Is it the same as the report in the --
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`·8· ·Are you representing this is his complete report, Joe?
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`·9· · · ·MR. HAMILTON:· As far as I know, that's his complete
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`10· ·report, yes.
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`11· · · ·MR. MALLIN:· All right.
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`12· · · ·MR. HAMILTON:· That's the complete Exhibit 1015.
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`13· · · ·THE WITNESS:· Yes, I recognize it.
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`14· · · ·MR. HAMILTON:· Q· ·And what is Exhibit 1015?
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`15· · · ·A· ·It's my declaration in this matter regarding
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`16· ·patent '742.
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`17· · · ·Q· ·I'll hand you another exhibit that's been
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`18· ·previously marked 1020.
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`19· · · · · · (Previously marked Deposition
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`20· · · · · · Exhibit 1020 tendered to witness.)
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`21· · · ·A· ·Thank you.
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`22· · · ·Q· ·Do you recognize 1020?
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`23· · · ·A· ·Yes, I do.
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`24· · · ·Q· ·What is 1020?
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`25· · · ·A· ·My supplemental declaration.
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`·1· · · ·Q· ·Does Exhibit 1020 and 1015 contain your complete
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`·2· ·testimony in this matter?
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`·3· · · ·A· ·Up until this time, yes.
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`·4· · · ·Q· ·Do you have any experience in the field of
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`·5· ·electronic cigarettes other than this matter?
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`·6· · · ·A· ·No, I do not.
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`·7· · · ·Q· ·And I just want to be clear.· So it's my
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`·8· ·understanding you were retained in other matters related
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`·9· ·to this matter, other patents, other IPRs; is that
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`10· ·correct?
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`11· · · ·A· ·If you'd please let me know which ones you're
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`12· ·referring to, I can give you a more definitive answer.
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`13· · · ·Q· ·Are you retained by RJR with respect to any
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`14· ·other matters regarding Fontem, that involve Fontem?
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`15· · · ·A· ·Yes, I am.
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`16· · · ·Q· ·And what other matters are you retained for?
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`17· · · ·A· ·I don't recall the numbers of those.· That's why
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`18· ·I asked.
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`19· · · ·Q· ·Do those matters relate to IPRs?
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`20· · · ·A· ·Yes, they do.
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`21· · · ·Q· ·Do all those matters relate to IPRs?
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`22· · · ·A· ·As I sit here today, I'm not exactly sure of
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`23· ·that.
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`24· · · ·Q· ·Have you been retained for any other purpose
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`25· ·than -- besides testimony in IPRs involving Fontem?
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`·1· · · ·MR. MALLIN:· Objection, scope.
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`·2· · · ·THE WITNESS:· As I said, I'm not sure of all the
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`·3· ·matters, so I can't exactly say.
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`·4· · · ·MR. HAMILTON:· Q· Are you aware that there is
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`·5· ·pending litigation in a Federal District Court between
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`·6· ·Fontem and RJR Vapor?
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`·7· · · ·A· ·Yes, I'm aware of that.
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`·8· · · ·Q· ·Have you been retained in that matter?
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`·9· · · ·MR. MALLIN:· Objection, scope.
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`10· · · ·THE WITNESS:· I'm not sure if any of my work in the
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`11· ·matter has been directed to that litigation.
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`12· · · ·MR. HAMILTON:· Q· ·Have you been retained to provide
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`13· ·testimony in the litigation between Fontem and RJR Vapor
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`14· ·pending in District Court?
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`15· · · ·MR. MALLIN:· Objection, scope.
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`16· · · ·THE WITNESS:· I'm not sure of that.· There have been
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`17· ·a number of discussions that we've had over the phone.
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`18· · · ·MR. MALLIN:· Attorney-client privilege and work
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`19· ·product.· I'll instruct you not to talk about what our
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`20· ·discussions are.
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`21· · · ·THE WITNESS:· Agree.
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`22· · · ·MR. HAMILTON:· Q· ·So I'll just remind you you're an
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`23· ·expert.· There's no attorney-client privilege between
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`24· ·you and your lawyers.
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`25· · · · · · Have you provided --
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`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 13 of 234
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`·1· · · ·MR. MALLIN:· That's wrong, Joe.· You can't get into
`
`·2· ·the discussions between us.
`
`·3· · · ·MR. HAMILTON:· Are you saying they're
`
`·4· ·attorney-client privileged?
`
`·5· · · ·MR. MALLIN:· Well, he's acting as my client right
`
`·6· ·now, but certainly work product.· You can't get into the
`
`·7· ·discussion between attorneys and the experts.
`
`·8· · · ·MR. HAMILTON:· Okay.· Well, that's not correct, but
`
`·9· ·I'm just going to ask some questions.· And please
`
`10· ·don't --
`
`11· · · ·MR. MALLIN:· It's beyond the scope of his
`
`12· ·deposition -- of his declaration testimony right now.
`
`13· · · ·MR. HAMILTON:· Objection is noted.· Thank you.
`
`14· · · · · · Have you provided any information that you know
`
`15· ·will be used in the litigation pending in Federal Court
`
`16· ·between Fontem and RJR Vapor?
`
`17· · · ·MR. MALLIN:· Objection, scope.
`
`18· · · ·THE WITNESS:· I do not know what future uses may be
`
`19· ·made of the information I've already provided.
`
`20· · · ·MR. HAMILTON:· Q· ·Have you reviewed any materials
`
`21· ·related to the litigation between Fontem and RJR Vapor
`
`22· ·in District Court?
`
`23· · · ·MR. MALLIN:· Objection, form.· Objection, scope.
`
`24· · · ·THE WITNESS:· I've reviewed a large number of
`
`25· ·documents, and, as I sit here today, I can't be sure
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 14 of 234
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`·1· ·that one of them might or might not pertain to the
`
`·2· ·matter that you're discussing.
`
`·3· · · ·MR. HAMILTON:· Q· ·So now let's go back to the
`
`·4· ·question I'd asked a few minutes ago.· Other than the
`
`·5· ·work you were doing with respect to the matters
`
`·6· ·involving Fontem and RJR Vapor, so that would include
`
`·7· ·any IPRs or any District Court litigation between the
`
`·8· ·parties, do you have any experience with respect to
`
`·9· ·electronic cigarettes?
`
`10· · · ·MR. MALLIN:· Objection, form, asked and answered.
`
`11· · · ·THE WITNESS:· Electronic cigarettes per se, no.
`
`12· ·Just the fundamentals.
`
`13· · · ·MR. HAMILTON:· Q· ·What do you mean by the
`
`14· ·fundamentals?
`
`15· · · ·A· ·I mean by that the technologies and the science
`
`16· ·that would be used for the analysis and design of such
`
`17· ·devices.
`
`18· · · ·Q· ·So other than your work on the matters involving
`
`19· ·Fontem and RJR Vapor, is it correct to say that you have
`
`20· ·no experience with respect to the analysis and design of
`
`21· ·electronic cigarettes?
`
`22· · · ·MR. MALLIN:· Objection.
`
`23· · · ·THE WITNESS:· As I mentioned before, I am very
`
`24· ·well-versed in the principles and the technology that
`
`25· ·could go into electronic cigarettes, but I have not had
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 15 of 234
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`·1· ·experience per se in designing or constructing an
`
`·2· ·electronic cigarette until this matter.
`
`·3· · · ·MR. HAMILTON:· Q· ·So excluding the -- your
`
`·4· ·knowledge of the principles and technology that go into
`
`·5· ·electronic cigarettes, do you have any other experience
`
`·6· ·with respect to electronic cigarettes?
`
`·7· · · ·A· ·Only casual conversations with people who use
`
`·8· ·them and those who have asked me for advice with respect
`
`·9· ·to how to improve their performance.
`
`10· · · ·Q· ·And who's asked you for advice on how to improve
`
`11· ·an electronic cigarette's performance?
`
`12· · · ·A· ·We were having a couple of floors put in our
`
`13· ·house and one of the workman named Dave, I forget his
`
`14· ·last name just now, used an electronic cigarette, and we
`
`15· ·had some discussions about how they work, and he was
`
`16· ·explaining to me the rewrapping of the heater coils and
`
`17· ·he wanted my input on that, and I gave it to him.
`
`18· · · ·Q· ·So you said Dave was a workman?
`
`19· · · ·A· ·Yes.
`
`20· · · ·Q· ·What kind of work was he doing for you?
`
`21· · · ·A· ·Putting in floors.
`
`22· · · ·Q· ·Other than your conversation with Dave, the
`
`23· ·workman, do you have any other experience with
`
`24· ·electronic cigarettes?
`
`25· · · ·A· ·I do not.
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 16 of 234
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`
`
`·1· · · ·Q· ·Are you a named inventor on any patents?
`
`·2· · · ·A· ·16, yes.
`
`·3· · · ·Q· ·Do you consider yourself an inventive person?
`
`·4· · · ·A· ·I do.
`
`·5· · · ·Q· ·When you say you consider yourself an inventive
`
`·6· ·person, what do you mean by an inventive person?
`
`·7· · · ·A· ·I mean a person who has the background and the
`
`·8· ·curiosity to look at a technical problem and be able to
`
`·9· ·draw on those resources and techniques and creativity to
`
`10· ·provide unique solutions.
`
`11· · · ·Q· ·When you say unique solutions, you mean
`
`12· ·inventive solutions?
`
`13· · · ·A· ·Yes.· Different, novel, useful, yes.
`
`14· · · ·Q· ·In the course of your work experience, do you
`
`15· ·have any experience developing or providing these unique
`
`16· ·solutions?
`
`17· · · ·A· ·Many times, yes.
`
`18· · · ·Q· ·Have you ever provided testimony in a court
`
`19· ·proceeding?
`
`20· · · ·A· ·Yes, I have.
`
`21· · · ·Q· ·About how many times?
`
`22· · · ·A· ·I don't know the exact number, but I have
`
`23· ·testified in court at least 15 times over the past 25
`
`24· ·years.
`
`25· · · ·Q· ·If you look at Exhibit 1015, starting at page 77
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 17 of 234
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`
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`·1· ·and ending at page 82, do you see that section?
`
`·2· · · ·A· ·Yes.
`
`·3· · · ·Q· ·And what is contained on those pages?
`
`·4· · · ·A· ·That is a record of some of the court activities
`
`·5· ·wherein I was an expert witness since I began
`
`·6· ·consulting.
`
`·7· · · ·Q· ·And does this list contain all the matters in
`
`·8· ·which you were an expert witness during that time
`
`·9· ·period?
`
`10· · · ·A· ·No, it doesn't.· I didn't have some of them put
`
`11· ·in just because I didn't have records of what they were.
`
`12· ·I put in the ones for which I had records at the time I
`
`13· ·put the document together.
`
`14· · · ·Q· ·And when you say you didn't have records, does
`
`15· ·that mean you think you testified in other matters, but
`
`16· ·you don't have -- you can't identify those matters?
`
`17· · · ·A· ·I'm sure there are a few that I can't identify
`
`18· ·as I sit here now because I don't have the records. I
`
`19· ·can remember one of them that is not on the list --
`
`20· · · ·Q· ·Uh-huh.
`
`21· · · ·A· ·-- as I reviewed the list several weeks ago.
`
`22· · · ·Q· ·And what matter is that?
`
`23· · · ·A· ·That was an arbitration matter between the
`
`24· ·Musser Lumber Company and a supplier of equipment to
`
`25· ·that company.· And I don't remember the name of that
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 18 of 234
`
`
`
`·1· ·supplier.
`
`·2· · · ·Q· ·And why did you leave that matter off this list?
`
`·3· · · ·A· ·I couldn't find any records of it.· I remembered
`
`·4· ·it.· The only thing I had left was -- from that time was
`
`·5· ·an old videotape of some of the technical work that I
`
`·6· ·had performed.
`
`·7· · · ·Q· ·When you say that time, about what time period?
`
`·8· · · ·A· ·I really can't pinpoint that, except to note
`
`·9· ·that it was between 1991 and roughly 1999 I would say,
`
`10· ·somewhere in there.
`
`11· · · ·Q· ·So let's focus on the last five years.· Does
`
`12· ·this list include all the matters in which you provided
`
`13· ·testimony in the last five years?
`
`14· · · ·A· ·I believe it does.
`
`15· · · ·Q· ·As you sit here today, you can't think of any
`
`16· ·matters that aren't included on this list in which you
`
`17· ·provided testimony during the last five years?
`
`18· · · ·A· ·That's correct.
`
`19· · · ·Q· ·Have you ever testified in a court proceeding
`
`20· ·and then had that testimony discarded because it was not
`
`21· ·reliable?
`
`22· · · ·A· ·That has never happened, no.
`
`23· · · ·Q· ·Have you ever testified in a court proceeding
`
`24· ·and had that testimony discarded because you weren't
`
`25· ·qualified as an expert?
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 19 of 234
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`·1· · · ·A· ·No, I've never had that experience.
`
`·2· · · ·Q· ·Are you familiar with the matter of Kendall
`
`·3· ·Holdings versus Eden Cryogenics?
`
`·4· · · ·A· ·Yes, I remember that.
`
`·5· · · ·Q· ·Did you provide any testimony in that case?
`
`·6· · · ·A· ·Yes, I did.· That was in Columbus, Ohio as I
`
`·7· ·remember.
`
`·8· · · ·Q· ·And was that case during the last five years?
`
`·9· · · ·A· ·I think it was a little bit older than that.
`
`10· ·I'm not sure as I sit here today, but I think it was a
`
`11· ·little older than that.
`
`12· · · ·Q· ·Was your testimony excluded in that case because
`
`13· ·your opinion -- you were not qualified as an expert in
`
`14· ·that case?
`
`15· · · ·A· ·No, it was not.
`
`16· · · ·Q· ·Was any portion of your testimony excluded in
`
`17· ·that case because you weren't qualified as an expert?
`
`18· · · ·A· ·Not that I'm aware of, no.
`
`19· · · ·Q· ·Was any portion of your testimony discarded in
`
`20· ·that case because your testimony was unreliable?
`
`21· · · ·A· ·No.
`
`22· · · ·Q· ·Does the case Kendall Holdings v. Eden
`
`23· ·Cryogenics appear in your list of cases in Exhibit 1015
`
`24· ·starting at page 77 through page 82?
`
`25· · · ·A· ·I don't see that it's there.
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 20 of 234
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`
`
`·1· · · ·Q· ·Is there a reason you omitted this case from
`
`·2· ·that list?
`
`·3· · · ·A· ·No.
`
`·4· · · ·Q· ·Would it surprise you to learn that your -- you
`
`·5· ·were not qualified as an expert on certain matters in
`
`·6· ·that case?
`
`·7· · · ·A· ·It very much would surprise me, yes.
`
`·8· · · ·Q· ·Would it also surprise you to find that the
`
`·9· ·Court found that your testimony was unreliable in that
`
`10· ·case?
`
`11· · · ·A· ·It certainly would.
`
`12· · · ·Q· ·Is it possible that you omitted this case from
`
`13· ·your list of cases because of those two issues?
`
`14· · · ·A· ·No.· I was quite proud of what I did.· We won
`
`15· ·the matter.
`
`16· · · ·Q· ·Did you intentionally omit this case from your
`
`17· ·list of cases?
`
`18· · · ·A· ·No.
`
`19· · · ·Q· ·Why did you omit this case from your list of
`
`20· ·cases?
`
`21· · · ·A· ·I have no reason for that, except I missed it.
`
`22· · · ·Q· ·So just to be clear, if that case found your --
`
`23· ·found that you were not qualified as an expert and that
`
`24· ·your testimony was unreliable, those two factors
`
`25· ·wouldn't have weighed in your decision to omit this case
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 21 of 234
`
`
`
`·1· ·from your list of cases?
`
`·2· · · ·A· ·Hypothetically, because I wasn't aware of what
`
`·3· ·you'd been saying, I certainly wouldn't have dismissed
`
`·4· ·it or omitted it for that reason.· It appears on other
`
`·5· ·lists that I've made.· It just doesn't appear on this
`
`·6· ·one, and I have no good answer why.
`
`·7· · · ·Q· ·Okay.· Let's take a look at paragraph 8 of your
`
`·8· ·opinion.· This is Exhibit 1015.
`
`·9· · · · · · Do you see paragraph 8?
`
`10· · · ·A· ·Yes, I do.
`
`11· · · ·Q· ·Does paragraph 8 list the items you've
`
`12· ·considered in rendering your opinion in this matter?
`
`13· · · ·A· ·It does, but not in detail.
`
`14· · · ·Q· ·When you say the '74 patent and its prosecution
`
`15· ·history, what do you mean by that?
`
`16· · · ·A· ·Just what it says, the patent document as
`
`17· ·produced by the Patent Office and the file history that
`
`18· ·was delivered by counsel pertaining to '742.
`
`19· · · ·Q· ·And when you say the file history as delivered
`
`20· ·by counsel, what do you mean by that?
`
`21· · · ·A· ·I mean I didn't look it up myself.
`
`22· · · ·Q· ·And what was contained in that file history as
`
`23· ·delivered by counsel?
`
`24· · · ·A· ·Many pages of items, and I haven't memorized it.
`
`25· · · ·Q· ·Did that include the prosecution of the '74
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 22 of 234
`
`
`
`·1· ·patent from the date it was filed until it issued?
`
`·2· · · ·A· ·'742 patent, if that's what you mean, yes.· I'm
`
`·3· ·pretty sure about that.
`
`·4· · · ·Q· ·So let's just -- It's very good that you would
`
`·5· ·clarify that.· Let's just make sure.· When I refer to
`
`·6· ·the '742 patent, I'm going to refer to Patent No.
`
`·7· ·8,365,742, the patent involved in this matter.· Is that
`
`·8· ·fair?· If you look at the front page, it will list the
`
`·9· ·patent number.
`
`10· · · ·A· ·Yes, that's fair.
`
`11· · · ·Q· ·And is that the patent you're referring to in
`
`12· ·paragraph 8 when you say the '742 patent?
`
`13· · · ·A· ·It is.
`
`14· · · ·Q· ·So other than the prosecution of the '742 patent
`
`15· ·from when it was filed until it issued, when you say the
`
`16· ·'742 patent and its prosecution history, do you include
`
`17· ·anything else in that statement?
`
`18· · · ·A· ·I'm really not clear about your question.· Could
`
`19· ·you please repeat that?
`
`20· · · ·Q· ·Sure, and I'll just get right to the issue.· So
`
`21· ·are you aware that the '742 patent claims priority to
`
`22· ·earlier filed applications?
`
`23· · · ·A· ·Yes.
`
`24· · · ·Q· ·Did you review the file history for any of those
`
`25· ·applications?
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 23 of 234
`
`
`
`·1· · · ·A· ·As I sit here today, I can't be sure that I have
`
`·2· ·or I haven't, but I'm aware there's a family of patents
`
`·3· ·involving the '742.
`
`·4· · · ·Q· ·Do you have a list of all the documents that
`
`·5· ·you've reviewed with respect to rendering your opinion
`
`·6· ·in this matter?
`
`·7· · · ·A· ·I believe that list was appended to my report.
`
`·8· ·Let me check.
`
`·9· · · · · · No, I do not find an exhibit listing all of the
`
`10· ·documents that I reviewed.
`
`11· · · ·Q· ·So the question was, do you have a list of
`
`12· ·documents?· Do you have a list of documents that you
`
`13· ·reviewed in connection with rendering your opinion in
`
`14· ·this matter?
`
`15· · · ·A· ·No, as I sit here today, I don't have a list.
`
`16· · · ·Q· ·And earlier you testified that you thought that
`
`17· ·list was attached to your report.· Did you think there
`
`18· ·was a list?
`
`19· · · ·A· ·I assumed there was a list, and I checked, and I
`
`20· ·found that that assumption was incorrect.
`
`21· · · ·Q· ·If you wanted to determine what documents you
`
`22· ·reviewed in connection with rendering your opinion in
`
`23· ·this matter, how would you do that?
`
`24· · · ·A· ·I would first ask counsel what they delivered to
`
`25· ·me and rely on their records.
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 24 of 234
`
`
`
`·1· · · ·Q· ·Did you retain everything that counsel delivered
`
`·2· ·to you?
`
`·3· · · ·A· ·I believe I have, yes.· I haven't destroyed
`
`·4· ·anything.
`
`·5· · · ·Q· ·Could you determine what you reviewed by looking
`
`·6· ·at the documents that you have in your possession?
`
`·7· · · ·A· ·I may not be sure that the documents I have here
`
`·8· ·before me reflect all of those documents.
`
`·9· · · ·Q· ·So let's go back to paragraph 8.· When you say
`
`10· ·the '742 patent and its prosecution history, you're not
`
`11· ·including -- is it correct to say that you're not
`
`12· ·including the prosecution histories for the parent
`
`13· ·application to the '742 application?
`
`14· · · ·A· ·I think you would need to be more explicit as to
`
`15· ·what you mean by the parent because I don't remember
`
`16· ·that as I sit here.
`
`17· · · ·Q· ·What does the term parent application mean to
`
`18· ·you?
`
`19· · · ·A· ·It means that there was an application filed
`
`20· ·prior to the date of the application that matured into
`
`21· ·the '742 patent.
`
`22· · · ·Q· ·And does it also mean that the '742 patent
`
`23· ·claims priority to that prior application?
`
`24· · · ·A· ·I'm not sure of that legal terminology, so I
`
`25· ·can't opine.
`
`Fontem Ex. 2016
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2016-01268
`Page 25 of 234
`
`
`
`·1· · · ·Q· ·Do you understand what a priority claim is?
`
`·2· · · ·A· ·Not in its full legal sense, no.· I'm a
`
`·3· ·technical guy and that's why I'm here.
`
`·4· · · ·Q· ·Do you have any understanding of what a priority
`
`·5· ·claim is?
`
`·6· · · ·MR. MALLIN:· Objection, scope.
`
`·7· · · ·THE WITNESS:· I wouldn't want to speculate without
`
`·8· ·referring to a document describing that.
`
`·9· · · ·MR. HAMILTON:· Q· ·Do you recall giving testimony in
`
`10· ·IPRs involving Fontem and RJR Vapor regarding a priority
`
`11· ·claim?
`
`12· · · ·MR. MALLIN:· Objection, scope.
`
`13· · · ·THE WITNESS:· No, I've given no other testimony in
`
`14· ·this matter, except today.· Thi
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