Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`-------------------------------X
`
`GENERAL ELECTRIC CO., :
`
` :
`
` Petitioner : U.S. Patent No:
`
` : 7,060,360
`
` -vs- :
`
` : Pages 1 - 59
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`UNITED TECHNOLOGIES CORP., :
`
` :
`
` Patent Owner :
`
`-------------------------------X
`
` Videotape Deposition of Dr. David R. Clarke
`
` Washington, D.C.
`
` Friday, June 9, 2017
`
`Case No. IPR2016-01289
`
`Reported by: Kathleen M. Vaglica, RPR, RMR
`
`Job No: 70950
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.001
`
`
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`-------------------------------X
`
`GENERAL ELECTRIC CO., :
`
` :
`
` Petitioner : U.S. Patent No:
`
` : 7,060,360
`
` -vs- :
`
` : Pages 1 - 59
`
`UNITED TECHNOLOGIES CORP., :
`
` :
`
` Patent Owner :
`
`-------------------------------X
`
` Videotape Deposition of Dr. David R. Clarke
`
` Washington, D.C.
`
` Friday, June 9, 2017
`
`Case No. IPR2016-01289
`
`Reported by: Kathleen M. Vaglica, RPR, RMR
`
`Job No: 70950
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.001
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 2
`
` Friday, June 9, 2017
`
` (9:00 a.m.)
`
`Videotape Deposition of Dr. David R. Clarke, held at
`
`the offices of:
`
` Fish & Richardson P.C.
`
` 901 15th Street, N.W.
`
` Suite 700
`
` Washington, D.C. 20005
`
`Pursuant to notice, before Kathleen M. Vaglica, RPR,
`
`RMR, a Notary Public in and for the District of
`
`Columbia.
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.002
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 3
`
` A P P E A R A N C E S
`
`COUNSEL FOR PETITIONER
`
` ANISH DESAI, ESQUIRE
`
` MEGAN H. WANTLAND, ESQUIRE
`
` STEPHANIE ADAMAKOS
`
` Weil, Gotshal & Manges LLP
`
` 1300 Eye Street, N.W.
`
` Suite 900
`
` Washington, D.C. 20005-3314
`
` (202) 682-7271
`
`COUNSEL FOR PATENT OWNER
`
` LAUREN A. DEGNAN, ESQUIRE
`
` DAVID HOLT, ESQUIRE
`
` Fish & Richardson P.C.
`
` 901 15th Street, N.W.
`
` Suite 700
`
` Washington, D.C. 20005
`
` (202) 626-6392
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.003
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 4
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`ALSO PRESENT
`
` JANICE JABIDO, UNITED TECHNOLOGIES CORP.
`
` NHAT PHAM, VIDEOGRAPHER
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`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.004
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 5
`
` CONTENTS
`
`EXAMINATION OF DR. DAVID R. CLARKE PAGE
`
`BY MR. DESAI 7
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`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.005
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 6
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` P R O C E E D I N G S
`
` THE VIDEOGRAPHER: We are now on the
`
`record in the matter of General Electric Company v
`
`United Technologies Corporation. Today's date is
`
`June 9, 2017. The time is 9 o'clock. This is the
`
`video deposition of Dr. David Clarke being taken at
`
`901 15th Street, Northwest, Washington, D.C.
`
` My name is Nhat Pham on behalf of Alderson
`
`Court Reporting. The court reporter is Kathleen
`
`Vaglica also on behalf of Alderson. Will counsel
`
`please identify themselves and state whom they
`
`represent starting with the party who noticed this
`
`deposition?
`
` MR. DESAI: Anish Desai and Megan Wantland
`
`here on behalf of General Electric.
`
` MS. DEGNAN: Lauren Degnan with Fish &
`
`Richardson on behalf of United Technologies
`
`Corporation. I am joined by my colleague, David
`
`Holt of Fish & Richardson, and Janice Jabido from
`
`United Technologies.
`
` THE VIDEOGRAPHER: Will the court reporter
`
`please swear in the witness and proceed?
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.006
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 7
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` Thereupon,
`
` Dr. David R. Clarke,
`
`a witness, called for examination by counsel for
`
`General Electric and, after having been sworn by the
`
`notary, was examined and testified as follows:
`
` EXAMINATION BY COUNSEL FOR GENERAL ELECTRIC CO.
`
`BY MR. DESAI:
`
` Q. Good morning, Dr. Clarke.
`
` A. Good morning.
`
` Q. Could you state your full name for the
`
`record?
`
` A. David Richard Clarke.
`
` Q. And where are you currently employed?
`
` A. At Harvard University.
`
` Q. Dr. Clarke, have you been deposed before?
`
` A. Yes.
`
` Q. So you're familiar with the basics of the
`
`deposition?
`
` A. Basics, yes.
`
` Q. Okay.
`
` A. I don't pretend to know anything more than
`
`the basics.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.007
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 8
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` Q. Just a few ground rules that will help us
`
`make the day a little smoother. Court reporter has
`
`to write down everything we say, so you and I should
`
`avoid talking over each other. I will avoid
`
`interrupting you while you're answering and hope
`
`that you can do the same while I'm asking a
`
`question.
`
` A. I'll try to.
`
` Q. If at any point in time during the day you
`
`don't understand a question that I've asked, and
`
`that's probably going to happen, please let me know
`
`and I'll do my best to try and ask a better
`
`question.
`
` A. Very good.
`
` Q. Do you have any, prior to consulting for
`
`UTC in this matter, have you had any prior contacts
`
`or relationships with UTC?
`
` A. I have normal collaborative interactions
`
`with people at Pratt & Whitney and over the years at
`
`UTC, but nothing related to IP.
`
` Q. Can you elaborate on the collaborative
`
`interactions you've had with Pratt & Whitney over
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.008
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 9
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`the years?
`
` A. They are no different than collaborations
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`with people at GE and Siemens. Some of my students
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`are now at UTC and Pratt & Whitney, and so we've met
`
`at conferences. We've interacted on studies, and
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`I've actually asked one or two people from Pratt &
`
`Whitney/UTC to write articles for a series that I've
`
`been editing.
`
` Q. Have you ever consulted for Pratt &
`
`Whitney prior to working on this case?
`
` A. No. Sorry. I didn't mean to interrupt.
`
`No, I've not.
`
` Q. Does Pratt & Whitney fund any of your
`
`research at the university?
`
` A. No, they don't. They never have.
`
` Q. The IPR that we're here for today on the
`
`'360 patent was filed in June of 2016. Is it fair
`
`to say that your first involvement with this case
`
`was after the IPR was filed?
`
` A. Yes, that's correct.
`
` Q. And when were you contacted?
`
` A. I don't recall.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.009
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 10
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` Q. Your first declaration in this case was
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`submitted in -- strike that. Start over.
`
` Can you roughly estimate how many hours
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`you spent working on this matter for UTC?
`
` A. I would say it's probably 40, 50 hours at
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`the most, but I'm really just guessing.
`
` Q. Okay. And I don't know, why don't I
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`actually hand you some exhibits and get this out of
`
`the way right now. So the first one here is your
`
`original declaration, which is UTC 2001. And then I
`
`have this supplemental declaration that you filed,
`
`which is UTC 2013.
`
` MS. DEGNAN: Thank you.
`
` MR. DESAI: And also I'll hand you the
`
`patent, which is GE-1001, the '360 patent, and I'll
`
`hand you what's previously been marked as GE-1005,
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`which is U.S. Patent Number 5,677,060, which I think
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`we've all been calling Terentieva.
`
` THE WITNESS: Okay.
`
` MR. DESAI: And the last one here is
`
`GE-1006, which is U.S. Patent Number 6,387,456.
`
` THE WITNESS: Thank you.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.010
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 11
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`BY MR. DESAI:
`
` Q. In your first declaration, UTC 2001,
`
`paragraph seven, it states that your work on this
`
`case is being billed at an hourly rate with
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`reimbursement for actual expenses. What is your
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`hourly rate?
`
` A. I have two hourly rates. One is for when
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`I'm just doing research, development of materials.
`
`That's $250 an hour, and in discussions with counsel
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`it's $400 an hour.
`
` Q. Okay.
`
` MS. DEGNAN: Hazard pay.
`
` MR. DESAI: Are you having trouble
`
`hearing? You might try to speak up a little bit.
`
`It might be easier for the court reporter.
`
` THE WITNESS: Okay. Please remind me.
`
`I'm sure you will.
`
`BY MR. DESAI:
`
` Q. So your first declaration was submitted in
`
`October of 2016. When did you start working on this
`
`declaration?
`
` A. I'm not certain when I first started on
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.011
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 12
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`it, but, if it's October, it is probably August at
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`the latest.
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` Q. And did you write the first draft of your
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`declaration?
`
` A. Yes, I did.
`
` Q. And about how long did it take you to
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`produce a complete draft?
`
` A. Well, over a period of time, I must
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`have -- to get the first draft? I'm sorry.
`
` Q. Yeah.
`
` A. Probably couple of weeks. I'm not certain
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`exactly.
`
` Q. So you have, in your declaration you have
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`two sets of page numbers, so I'm going to go with
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`the -- let's see. I'm going to go with the, I guess
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`I should go with the lowest page number on the page;
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`right?
`
` A. Could we instead just go by the paragraph?
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` Q. Oh, that's a better idea. Let's do that.
`
`Okay. Sure. So why don't we go to page, paragraph
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`43 of your original declaration, which is UTC 2001.
`
`And this, right above that you have a section titled
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.012
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 13
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`Properties of Multilayer Coatings; correct?
`
` A. It's within the section Properties of
`
`Multilayer Coatings.
`
` Q. And this is part of an overview of coating
`
`technology, this paragraph?
`
` A. Yes.
`
` Q. And then, if we skip ahead to paragraph
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`50, this is still in the overview of coating
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`technology section and the subsection on properties,
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`multilayer coatings; correct?
`
` A. That's correct.
`
` Q. And here you have a statement about a
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`multilayer coating must be developed and tested as
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`an integrated system; correct?
`
` A. Correct.
`
` Q. Okay. The '360 patent claims an article
`
`having either BSAS or an yttrium silicate barrier
`
`layer, a refractory metal disilicide silicon
`
`eutectic bond layer, and a silicon substrate in
`
`claim 1; correct?
`
` A. Yes.
`
` Q. Okay. And in claim 2, which depends from
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.013
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 14
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`claim 1, the refractory metal disilicide can be
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`selected from one of 13 metals or mixtures thereof;
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`correct?
`
` A. I haven't counted the number of metals,
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`but I, I believe that's correct.
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` Q. You know what? I think I got that wrong.
`
` A. I don't think it is.
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` Q. Hold on one second. Looks like 11.
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`There's 11 metals there; is that right?
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` A. 11, yes.
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` Q. Okay. So in claim 2 the refractory metal
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`disilicide can be one of 11 metals or mixtures
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`thereof?
`
` A. That's correct.
`
` Q. Okay. And so there's, in this claim, in
`
`this patent there's a choice of two barrier layers
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`and at least 13 choices for the refractory metal;
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`correct? 11. Sorry.
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` MS. DEGNAN: Objection.
`
`BY MR. DESAI:
`
` Q. Let me start that question again. So
`
`there's a choice of two barrier layers and at least
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.014
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 15
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`11 choices for refractory metals; correct?
`
` A. The reason I'm hesitating is I know
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`barrier layer is going to come up in a number of
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`different contexts as we go along. I think the
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`barrier layer is the same layer. It's, the
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`environmental barrier layer is cited twice, so I
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`think there's only one barrier layer.
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` Q. Okay. I didn't mean -- let me try the
`
`question again. Yeah. There's a choice of two
`
`environmental barrier layers and at least 11 choices
`
`for the refractory metals; correct?
`
` A. Correct.
`
` Q. And the reason I say at least 11 choices
`
`of the metals is because the claim covers mixtures
`
`of the 11, so the number is actually far greater
`
`than 11; correct?
`
` A. The number of permeabilities could be
`
`considerably greater, yes.
`
` Q. How many of the possible refractory bond
`
`layers of the -- how many of the possible refractory
`
`metal bond layers did the inventors of the '360
`
`patent test?
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`1-800-FOR-DEPO
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`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.015
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 16
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` A. I don't remember, but I'm happy to read
`
`the patent again.
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` Q. Sure.
`
` A. (Witness reviews document.) I don't have
`
`sufficient information to determine how many
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`compositions they actually tested.
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` Q. Do you have information to assess whether
`
`they tested a single composition?
`
` A. No, it was insufficient information. It
`
`does say that they found that the fracture toughness
`
`of the bond coat is increased over that, but they
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`don't say of which combination of materials. So,
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`that's the only information as far as I can read
`
`they've done, but I would imagine that, in order to
`
`put together this set of claims and in order for the
`
`patent to be filed, they must have tested more than
`
`one.
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` Q. Are you guessing?
`
` A. I presume.
`
` Q. Do you usually presume in your type of
`
`work or would you expect to actually see evidence of
`
`testing?
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`Alderson Court Reporting
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`GE v. UTC
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`GE-1031.016
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`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 17
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` A. In the scientific and technical journal
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`article, I would expect all the details to be
`
`presented either in the volume itself or in
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`supplemental information. This is a patent, so I'm
`
`not sure what the rules are concerning patent.
`
` Q. But you're here offering opinions;
`
`correct?
`
` A. Yes. Yes, and my opinion is that I
`
`imagine they, in order to file a patent, they would
`
`have tested more than one.
`
` Q. But you never asked UTC to see if they
`
`did?
`
` A. No, I did not.
`
` Q. You could have; correct?
`
` A. Yes, I could have. Whether they would
`
`have answered, I don't know.
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` Q. You think, if you had asked them, they
`
`would have told you that you're not allowed to see
`
`those test results for this patent?
`
` MS. DEGNAN: Objection. Form.
`
` THE WITNESS: I have no information, one
`
`way or another.
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`Dr. David R. Clarke
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`Washington, D.C.
`
`June 9, 2017
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`Page 18
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`BY MR. DESAI:
`
` Q. You just didn't ask?
`
` A. I did not ask, correct.
`
` Q. Is it fair to assume all of the refractory
`
`metal bond layers that are possibly claimed would
`
`behave identically?
`
` A. No, that's not reasonable.
`
` Q. How would a person of ordinary skill in
`
`the art be able to determine the specific refractory
`
`metal bond layer to use when practicing this patent
`
`in a gas turbine engine?
`
` A. I think the patent describes a range of
`
`different compositions, different refractory metals
`
`disilicides. It does indicate, though, on column 2
`
`around about line 42, it does say that there are
`
`preferred refractory metals of molybdenum and
`
`chromium, and the most referred refractory metal is
`
`molybdenum.
`
` Q. Yes, but the claim is not limited in any
`
`way, shape or form to those preferred metals;
`
`correct?
`
` A. No, that's correct.
`
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`
`Dr. David R. Clarke
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`Washington, D.C.
`
`June 9, 2017
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`Page 19
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` MS. DEGNAN: Objection. Form.
`
` THE WITNESS: That's correct.
`
`BY MR. DESAI:
`
` Q. Does the '360 patent actually disclose a
`
`single refractory metal disilicide composition to
`
`use?
`
` A. No, it does not, but it does claim a
`
`number of other characteristics.
`
` Q. What are those other characteristics?
`
` A. One is that it has a melting point of
`
`greater than 1300 degrees C. That's in claim 4, and
`
`in claim 6 it has a fracture toughness of greater
`
`than 1 megapascal per root meter.
`
` Q. In your declaration, if you turn to
`
`paragraph 62 -- this is your original declaration.
`
` A. All right.
`
` Q. And paragraph 62 to 67 is your section
`
`titled Brief Overview of the '360 Patent; correct?
`
` A. Correct, yes.
`
` Q. And paragraph 64 you quote a portion of
`
`the '360 patent that refers to mechanical properties
`
`of, I think, prior art silicon-containing substrates
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`Dr. David R. Clarke
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`Washington, D.C.
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`June 9, 2017
`
`Page 20
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`that suffered from some issues?
`
` A. Yes.
`
` Q. And then in paragraph 65 -- sorry --
`
`paragraph 66 you quote from the patent a portion of
`
`the patent that says that the claimed or the
`
`disclosed bond layer provides more resistance to
`
`crack propagation; correct?
`
` A. I would not quite agree with that. What
`
`I'm describing is that a two-phase microstructure
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`has a possibility of having more crack resistance
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`than observed to a single phase material, silicon
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`layer.
`
` Q. Okay. Is it your opinion that the bond
`
`layer disclosed in the '360 patent exhibits improve
`
`properties over the prior art?
`
` A. Yes.
`
` Q. And how did you arrive at that opinion
`
`aside from cutting and pasting conclusions from the
`
`'360 patent into your declaration?
`
` A. Well, because the fracture toughness is
`
`higher than that of silicon.
`
` Q. How do you know that the fracture
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`Dr. David R. Clarke
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`Washington, D.C.
`
`June 9, 2017
`
`Page 21
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`toughness of the bond layer is higher than that of
`
`silicon?
`
` A. Its claims of fracture toughness of
`
`greater than 1 megapascal per root meter, I've
`
`personally worked on fracture of silicon, and
`
`fracture toughness of silicon is less than one. And
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`the fracture energy, which I refer to in other
`
`places, is the square of the fracture toughness.
`
` Q. Not all of the claims required that
`
`fracture toughness; correct?
`
` A. This gets into the detail of claim
`
`construction and dependent claims, and I'm not sure
`
`I'm sufficiently expert to answer that question.
`
` Q. You can't tell me whether claim 1 of the
`
`'360 patent requires a certain amount of fracture
`
`toughness?
`
` MS. DEGNAN: Objection. Form.
`
` THE WITNESS: I deduced that's what is
`
`claimed, but it goes from claim 1 to claim 5 to
`
`claim 6, so that's a legal question, as far as I'm
`
`concerned.
`
`BY MR. DESAI:
`
`1-800-FOR-DEPO
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`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 22
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` Q. In forming your opinions about the obvious
`
`or nonobviousness of claim 1, did you assume it
`
`required a particular fracture toughness?
`
` A. Yes.
`
` Q. And you assumed it required a fracture
`
`toughness of greater than one?
`
` A. Yes. And I do that because in any
`
`multilayer system what's important are the physical
`
`characteristics, not necessarily what the chemistry
`
`is.
`
` Q. Would all of the refractory metal
`
`disilicide -- strike that. Would all of the
`
`possible refractory metal disilicide bond layers
`
`that are encompassed within the scope of claim 1
`
`exhibit a fracture toughness greater than, I think
`
`it's 1 megapascal per root meter?
`
` A. That's correct. Could you repeat the
`
`question, please? I got distracted by correcting
`
`units.
`
` Q. Would all of the possible refractory metal
`
`disilicide bond layers that are encompassed within
`
`the scope of claim 1 exhibit a fracture toughness
`
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`Dr. David R. Clarke
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`Washington, D.C.
`
`June 9, 2017
`
`Page 23
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`greater than 1 megapascal per root meter?
`
` A. There's no --
`
` MS. DEGNAN: Objection to form.
`
` THE WITNESS: There's no reason to believe
`
`so.
`
`BY MR. DESAI:
`
` Q. And why is there no reason to believe so?
`
` A. Well, because the fracture toughness
`
`depends not only on constituent phases, but on their
`
`spacial distribution and their volume fraction.
`
` Q. Which of the refractory metals that are,
`
`that you can choose from would result in a bond
`
`layer that exhibited fracture toughness greater than
`
`1 megapascal per root meter?
`
` A. I have no idea. Fracture toughness is
`
`probably the most difficult parameter to calculate,
`
`and this would have to be obtained by testing. As I
`
`say, it's not only a question of the composition,
`
`but also the phase distribution, the volume
`
`fractions.
`
` Q. Have you seen any of the testing that
`
`would be required to determine whether or not a bond
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`Dr. David R. Clarke
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`Washington, D.C.
`
`June 9, 2017
`
`Page 24
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`layer has a fracture toughness of greater than 1
`
`megapascal per root meter?
`
` A. I ask that you rephrase the question,
`
`please.
`
` Q. That was definitely poorly phrased. I'll
`
`try it again. For the possible refractory metal
`
`bond layers that are within the scope of the '360
`
`patent, have you seen any test results showing that
`
`they exhibited a fracture toughness greater than 1
`
`megapascal per root meter?
`
` A. I have not seen any of the testing data
`
`that was performed in developing this patent.
`
` Q. Right. So you're assuming that the
`
`inventors of this patent have data that demonstrates
`
`a bond layer that exhibited a fracture toughness of
`
`greater than 1 mega pascal per root meter; correct?
`
` A. Correct.
`
` Q. Is it your typical practice to make
`
`assumptions about the properties of a material or
`
`coating without seeing any supporting evidence such
`
`as test results?
`
` A. There are some properties of materials
`
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`Washington, D.C.
`
`June 9, 2017
`
`Page 25
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`that are dependent only on the composition of the
`
`material, so thermal expansion, for instance, is one
`
`elastic modulus or another. Others such as fracture
`
`toughness you can't determine that. You have to
`
`take somebody's data or statement of their data as
`
`being the correct value.
`
` Furthermore, this information goes back to
`
`at least 2003. That's 14, 15 years ago. I'm not
`
`sure that data would be available.
`
` Q. Oh, you think the data for this patent has
`
`been destroyed?
`
` A. No, I didn't say that.
`
` Q. Did you ask?
`
` A. I did not ask, no.
`
` Q. If a student of yours came to you and said
`
`that I have a new bond layer that exhibits great
`
`fracture toughness and wanted to publish a paper
`
`that states that, would you accept that paper
`
`without seeing any test results to show that the
`
`bond layer actually exhibits that fracture toughness
`
`that's claimed?
`
` MS. DEGNAN: Objection. Vague. Excuse
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`
`June 9, 2017
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`Page 26
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`me. Objection. Form.
`
` THE WITNESS: That's a rather strange
`
`question, if I might say so. Clearly, if it's a
`
`young, inexperienced graduate student, I would be
`
`very careful to make sure that the methodology had
`
`been correct for the testing. I'm not sure I would
`
`take issue with the number, but I'd make sure it's
`
`been done correctly.
`
` However, a senior student that's been
`
`doing this for years I would not question.
`
`BY MR. DESAI:
`
` Q. You're an editor on some peer-reviewed
`
`journals; correct?
`
` A. That's correct.
`
` Q. Right. What are your roles as an editor?
`
` A. Depends on the particular journal.
`
`Normally, it's reading a submitted scientific
`
`technical manuscript, checking that the methodology
`
`is correct, that the paper is saying something new,
`
`and that the data has been obtained in an accepted
`
`method. It's not to reproduce the data that's in
`
`the paper.
`
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`June 9, 2017
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`Page 27
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` Q. Is it your typical practice to accept
`
`submitted papers and publish them where a researcher
`
`is offering conclusions without any supporting data?
`
` A. Could you rephrase that question? It
`
`seems a very broad question.
`
` Q. It is. Is it your typical practice to
`
`accept submitted papers and publish them when a
`
`researcher is offering conclusions without any
`
`supporting data?
`
` A. Simple answer is no, but in general most
`
`scientific journals, at least in the ceramics
`
`community, have at least two, if not three,
`
`reviewers. So there's a double check there whether
`
`something may be reasonable or not.
`
` Q. So with respect to this patent, the '360
`
`patent, you were willing to accept the conclusion --
`
` A. Mm-hmm.
`
` Q. -- that the bond layer exhibits a fracture
`
`toughness of greater than 1 mega pascal per root
`
`meter without seeing any test results; correct?
`
` A. That's correct, but I'm doing the same
`
`thing for all the other patents that you've
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`June 9, 2017
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`Page 28
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`introduced into evidence. I'm accepting the results
`
`presented there, too.
`
` Q. What other patent have you accepted test,
`
`accepted a conclusion about fracture toughness
`
`besides the '360 patent?
`
` A. I don't, I don't believe any of the other
`
`three patents specifically mention that, but the
`
`other patents do mention temperatures, compositions,
`
`composition ranges, thermal expansion coefficients,
`
`so I'm taking it in the same spirit as that data.
`
` Q. Well, the prior art patent that was
`
`probably the main focus here is the Terentieva
`
`patent, which is GE-1005; right?
`
` A. Yes.
`
` Q. And, unlike the '360 patent, this actually
`
`includes examples with information regarding tests
`
`that were performed; correct?
`
` A. Limited number of tests, yes.
`
` Q. Why do you say limited number?
`
` A. Well, if I was developing a multilayer
`
`coating, one of the critical parameters I'd want to
`
`know is thermal expansion coefficient. Elastic
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`June 9, 2017
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`Page 29
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`modulus, the same thing there, volume fractions,
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`spacial distributions, fracture toughness, high
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`temperature creep behavior.
`
` Q. Is that information in the '360 patent?
`
` A. No, but the '360 patent isn't describing
`
`fracturing metal material against oxidation. I'm
`
`sorry. Not just oxidation.
`
` Q. All right. In your original declaration
`
`starting at paragraph 68 --
`
` A. Yes.
`
` Q. -- and going through paragraph 75 --
`
` A. Mm-hmm.
`
` Q. -- you've offered some opinions here about
`
`the term "bond layer"; is that right?
`
` A. Yes.
`
` Q. And your conclusion is that a bond layer
`
`is a layer designed to adhere another layer to a
`
`substrate?
`
` A. That's my opinion, yes. And not only
`
`adhere, but adhere over the course of whatever
`
`operating conditions the multilayer is concerned.
`
`So it doesn't just have to stick when it's
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.029
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 30
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`deposited. It has to do so over the life of the
`
`coating.
`
` Q. You probably answered my next question,
`
`but I'll ask it anyhow. How would you determine
`
`whether a layer in a multilayer coating is a layer
`
`designed to adhere to another, to a substrate?
`
`Sorry. Let me ask that again.
`
` How would you determine whether a layer in
`
`a multilayer coating is a layer designed to adhere
`
`another layer to a substrate?
`
` A. Testing won't, won't determine whether,
`
`anything about the design, but it will tell you
`
`about whether the proposed design is effective, so
`
`the testing would include thermal cycling, in other
`
`words, heating up to an operating temperature,
`
`cooling down again in repeated fashion, abrupt
`
`thermal shock. You suddenly change the temperature
`
`either up or down, and whether it maintained its
`
`structural integrity over a long period of time
`
`where interdiffusion can occur and reaction phases
`
`can occur.
`
` Q. Was all that type of testing known before
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`GE v. UTC
`IPR2016-01289
`GE-1031.030
`
`
`
`Dr. David R. Clarke
`
`Washington, D.C.
`
`June 9, 2017
`
`Page 31
`
`1
`
`2
`
`3
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`4
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`5
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`the '360 patent?
`
` A. This is routinely, this sort of testing is
`
`routinely done in order to demonstrate one has a
`
`viable combination of materials.
`
` Q. At what point in time -- sorry. You
`
`mentioned that it
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