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`UNITED STATES
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`PATENT AND TRADEMARK OFFICE
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`BEFORE
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`THE PATENT TRIAL AND APPEAL BOARD
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`Page
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`1
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`THERMO FISHER SCIENTIFIC INC
`Petitioner
`
`VS
`INC
`BIORAD LABORATORIES
`Patent Owner
`
`Case IPR201700054
`
`Case IPR201700055
`Patent 8236504 B2
`
`VIDEOTAPED DEPOSITION OF RICHARD A MATHIES PhD
`San Francisco California
`May 24 2017
`
`Wednesday
`
`REPORTED BY
`CYNTHIA MANNING CSR No 7645 CLR CCRR
`JOB NO 124173
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`UNITED STATES
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`PATENT AND TRADEMARK OFFICE
`
`BEFORE
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`THE PATENT TRIAL AND APPEAL BOARD
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`Page
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`1
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`THERMO FISHER SCIENTIFIC INC
`Petitioner
`
`VS
`INC
`BIORAD LABORATORIES
`Patent Owner
`
`Case IPR201700054
`
`Case IPR201700055
`Patent 8236504 B2
`
`VIDEOTAPED DEPOSITION OF RICHARD A MATHIES PhD
`San Francisco California
`May 24 2017
`
`Wednesday
`
`REPORTED BY
`CYNTHIA MANNING CSR No 7645 CLR CCRR
`JOB NO 124173
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`TSG Reporting Worldwide
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`8777029580
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`May 24 2017
`920 am
`
`Deposition of RICHARD A MATHIES PhD
`held at Jones Day 555 California Street San
`
`Francisco California before Cynthia Manning
`Certified Shorthand Reporter No 7645 Certified
`
`LiveNote Reporter California Certified Realtime
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`Reporter
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`1 APPEARANCES
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`Page
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`MORRIS NICHOLS ARSHT
`
`TUNNELL
`
`Attorneys for Petitioner
`
`1201 North Market Street
`
`Wilmington
`
`DE 19899
`
`BY
`
`BRIAN EGAN ESQ
`
`JONES DAY
`
`Attorneys for Patent Owner
`
`250 Vesey Street
`
`New York NY 10281
`
`BY
`
`KELSEY NIX ESQ
`
`Also present
`
`Ashita Doshi Thermo Fisher
`
`Sean Boyle Thermo Fisher
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`Marcus Majers Videographer
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`SAN FRANCISCO CALIFORNIA
`WEDNESDAY MAY 24 2017 923 AM
`
`Page
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`4
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`THE VIDEOGRAPHER
`
`Good morning
`
`1
`
`This is the start of
`tape labeled Number
`the videotaped deposition of Dr Richard A
`Mathies in the matter of Thermo Fisher Scientific
`Inc Petitioner
`Inc
`Patent Owner
`in the United States Patent and
`
`of
`
`versus BioRad Laboratories
`
`Trademark Office before the Patent Trial and Appeal
`
`Board
`
`IPR201700054
`
`and IPR201700055
`
`This deposition is being held at 555
`
`California Street San Francisco California on May
`24th 2017 at approximately 923 am
`My name is Marcus Majers from TSG
`Reporting Inc and I
`specialist
`
`am the legal video
`
`The court
`
`reporter
`
`today is Cynthia
`
`Manning in association with TSG Reporting
`
`Will all counsel present please introduce
`
`themselves
`MR EGAN Brian Egan
`
`from Morris
`
`Nichols Arsht
`Tunnell
`Scientific and Dr Richard Mathies Also with me
`
`on behalf of Thermo Fisher
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`here today are Sean Boyle and Ashita Doshi
`
`from
`
`Thermo Fisher Scientific
`MR NIX Kelsey Nix from Jones Day
`representing the Patent Owner BioRad
`
`THE VIDEOGRAPHER Will
`
`the reporter please
`
`swear
`
`in the witness
`
`RICHARD A MATHIES PhD
`having first
`been duly sworn testified as
`
`follows
`
`EXAMINATION
`
`BY MR NIX
`Q Good morning
`A Good morning
`Q Could you state your name and residence
`address for the record please
`A I
`am Richard A Mathies
`Skycrest Drive in Walnut Creek California
`Q Is there any reason that you cannot give
`truthful and accurate testimony today
`A There is no such reason
`Q Youre not under
`the influence of any
`medication that might affect your memory or
`
`live at 1138
`
`I
`
`cognitive abilities
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`6
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`a positive rather
`
`a positive
`
`A Only coffee
`Q Hopefully that will have
`than a negative influence
`A Hopefully that will have
`influence
`Q I
`either at
`trial or deposition
`A In depositions
`Q Just a couple of ground rules which may
`already be familiar to you
`
`take it
`
`that you have testified before
`
`For
`
`the benefit of
`
`the reporter
`
`so we get
`
`a clean and accurate record you need to let me
`
`finish asking the question before you start
`
`answering
`
`Is that acceptable
`A Absolutely
`Q And by the same token I
`endeavor
`to let you finish your answers before
`
`am going to
`
`I start asking the next question
`If you dont understand a question that
`its ambiguous or unclear
`ask at any time if
`please let me know and Ill
`
`try to rephrase the
`
`I
`
`question
`
`Is that acceptable
`A Witness nods head
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`rule is you have to audibly
`
`Page
`
`7
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`I
`
`Very good
`
`a teaching opportunity
`
`Q Another
`A Yeah
`Yeah
`remembered
`Q Okay Very good
`That was
`A Yes
`Q
`and I appreciate that
`A Yes
`Q This is not
`contest Well
`take a break every hour
`
`intended to be an endurance
`
`to 75
`
`minutes
`
`And if
`
`for any reason you need to take a
`
`break before I get
`
`to a breaking point
`
`just let me
`
`to you know finishing the answer
`know and subject
`to a pending question Ill
`I can
`
`try to accommodate you
`
`as best
`
`Okay
`A Okay
`Q By whom are you employed
`A Well
`little complicated
`by the University of California I
`
`a
`
`I was employed
`
`am now retired
`
`but
`
`I still
`
`have
`
`a position as a professor in the
`
`graduate school
`Q When did you retire
`A I retired in 2013
`Q And your position now is simply professor
`the graduate school
`
`of
`
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`A Thats correct
`Q Is that
`a non compensated position
`A That
`is a non compensated position with the
`University of California
`Q So up until 2013 you were continuously
`employed by the University of California since
`
`starting in 1976 I believe
`A That
`is correct
`Q How many times have you served as an expert
`in any patent matter
`A I dont
`I have served as an expert witness in a patent
`
`I believe this is the first
`
`time
`
`I was not associated with
`matter
`that
`Q So the times that youve testified at
`deposition before was
`that
`
`in your capacity as an
`
`on a patent
`inventor
`A Yes
`Q And how many times have you testified on
`deposition as an inventor
`A I dont
`three or four days
`least
`was probably at
`Q And about when was
`as an inventor
`deposition that you gave
`A Good question
`precise date but
`it was about
`
`remember
`
`the precise number
`
`It
`
`the most recent
`
`I dont
`
`remember
`
`the
`
`15 years ago
`
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`Q Have you ever
`trial or deposition other
`
`testified in any capacity at
`
`than those three or four
`
`days that youve testified in your capacity as an
`
`inventor
`on one of
`A No I have not
`Q
`your patents
`MR EGAN
`
`Just
`
`before you answer
`
`let him finish his question
`
`THE WITNESS
`
`Okay
`
`in any
`
`BY MR NIX
`Q And have you worked as an expert
`nonpatent matters
`A Yes
`Q Could you describe those for me please
`A I cant describe them all
`I have worked
`in a variety of activities consulting for biotech
`companies in the Bay Area since oh about 19
`since 19
`since about 1987
`Q But youve not been involved in any
`is that right
`
`litigation as an expert
`nonpatent
`A No I have not
`Q Is this engagement
`is this the first
`
`proceedings
`
`in these two IPR
`
`time you have
`
`for Thermo Fisher
`any work
`A Yes it
`
`is
`
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`Q Can you describe how you came to be engaged
`in this matter
`for Thermo
`to work as an expert
`
`10
`
`Fisher
`A Yes
`would be interested in you know getting engaged as
`
`I
`
`received an email asking whether
`
`I
`
`the
`
`an expert witness
`Q Who sent
`that email
`to you
`A Sitting here before you I actually dont
`remember
`I would have
`to go back and consult
`in my email records
`
`first
`
`contact
`Q Was
`employed by Thermo Fisher
`A I do not recall whether
`or an employee of Thermo Fisher
`Q When was that
`A That was
`lets see
`last year
`probably in the fall of
`Q To kind of help you place this in time
`the Petition that
`to you that
`
`it
`
`an attorney who works
`
`for and is
`
`it was an attorney
`
`We are
`
`that was
`
`Ill
`
`represent
`
`initiated these two IPR proceedings
`
`I guess the
`
`plural Petitions and your declarations were filed
`
`in midOctober of
`
`last year
`
`About
`
`how long before those documents were
`
`finalized and filed were you contacted by Thermo
`Fisher
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`A Approximately two months
`Q So sometime in August of
`last year
`A To the best of my memory at
`
`this point
`
`yes
`
`Q Okay
`MR NIX Let me ask the reporter
`
`to mark
`
`as Exhibit Number
`
`1 a copy of
`
`the Curriculum Vitae
`
`of Richard A Mathies
`
`Deposition Exhibit
`
`1 was marked for
`
`1 and confirm that
`
`identification
`BY MR NIX
`Q Please review Exhibit
`your CV
`this is in fact
`A Yes it
`is
`Q And other
`had in the last several months is this CV
`
`have
`
`than publications that you might
`
`is as you know accurate a record as
`
`accurate and complete
`A It
`you know I
`am typically able to assemble
`Q Now in your CV sir you list
`2016 a total of 468 publications
`A Thats whats indicated on Exhibit 1 yes
`Q Do any of
`these publications describe the
`
`up through
`
`development of or improvements
`
`to a thermal cycler
`
`that has fluorescence detection
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`MR EGAN Objection compound Objection
`
`12
`
`form
`BY MR NIX
`Q You can answer
`A Would you repeat
`Q Yes
`Do any of
`your CV describe the development of or improvements
`
`these 468 publications in
`
`the question please
`
`to a thermal cycler with fluorescence detection
`MR EGAN
`
`Same objections
`
`THE WITNESS
`
`There are papers in here that
`
`describe the development of microfabricate thermal
`
`cyclers and there are papers here that describe the
`
`development of microfabricated devices
`
`that perform
`
`thermal cycling and then coupled products to a
`
`capillary electrophoresis fluorescence detection
`
`system
`BY MR NIX
`Q And so what you are describing are two
`instruments that are coupled together not a
`
`unitary instrument
`
`that
`
`is both a thermal cycler
`
`that has fluorescent detection capabilities is that
`
`right
`
`MR EGAN Objection foundation
`THE WITNESS
`
`The
`
`focus of our work was
`
`to
`
`develop a microfabricated low volume thermal cycler
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`system and in many circumstances we coupled that
`
`on chip thermal cycler with a capillary
`
`electrophoresis analysis system which involved
`
`fluorescence detection
`
`BY MR NIX
`Q And when did that work take place
`A Well
`Witness reviewing document
`
`The
`
`first
`
`such experiment was publication
`189 by Woolley in 1996 And
`Witness reviewing document
`
`The next publication was 233 by Lagally in
`
`2000
`
`And there were a number of publications by
`
`years
`
`and indicate
`
`the next
`five to ten
`a variety of students over
`Id be happy to go through it
`you wish to take the time
`them if
`all of
`Q You described that
`coupled
`How were they coupled together
`A The two devices were talking about here
`Im sorry the
`are the microfabricated capillary
`
`the devices were
`
`microfabricated polymerase chain reaction system in
`
`the chip and the capillary electrophoresis system
`
`And these two systems were coupled by
`
`microfabricating a channel
`
`that connected the
`
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`
`
`1 miniature PCR reactor
`
`to the injector on the
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`capillary electrophoresis system
`Q Can you describe what
`that channel was
`A There were
`well
`it depends on the
`particular publications
`
`There are probably 10 or
`
`20 publications in the CV that describe that basic
`
`function
`
`The typical way that
`
`these were coupled was
`
`by having some sort of a valving system that
`
`connected the PCR reactor to the injector on the
`
`capillary electrophoresis system That valving
`
`system could either be pneumatic valves which were
`
`developed after 2003 or they could be electro
`essentially lets
`
`what we would call electro
`
`see electroosmotic valves where you simply use
`
`electrical potential
`And weve used both of
`
`to control
`
`channel
`
`the fluids in the
`
`those as well as
`
`The reporter
`
`is very
`
`trying to
`
`language
`
`am sure
`
`other combinations
`Q Just one caution
`very good but when
`you use technical
`A I was
`Q
`and you speak more quickly I
`just a bit of a challenge for her
`that causes
`
`if
`
`you could slow down when you get
`
`to the
`
`multisyllabic words that would probably be
`
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`felt
`
`appreciated
`A I
`like I was going pretty slow
`actually but Ill
`try harder
`Q But basically what youre describing in
`these publications were arrangements that were
`
`taking the solution in question and moving it
`
`physically from a thermal cycler
`
`into a separate
`
`device
`
`for analysis is that right
`MR EGAN Objection to form and lack of
`
`foundation
`
`THE WITNESS
`
`That was
`
`the typical
`
`arrangement
`BY MR NIX
`Q And the kinds of systems were talking
`today and that are described in BioRads 504
`
`about
`
`patent
`
`one big key difference fundamental
`
`difference is that
`being analyzed on site while they are retained
`
`the solutions in question are
`
`is that right
`within the thermal cycler
`MR EGAN Objection to form and lack of
`
`foundation
`
`THE WITNESS
`
`Mmhmm Yes that
`
`is
`
`correct
`BY MR NIX
`Q Were the type of coupled apparatus that you
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`were describing with the channel
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`and valving
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`Page
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`16
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`systems were those every commercialized
`A Yes they were
`Q By which company or companies
`A The current
`that
`the offshoots of
`this technology is the company
`
`company
`
`is commercializing
`
`called IntegenX
`Q Could you spell
`that please
`A I N T EGEN capital X in Dublin
`California
`Q And how do the offshoots of
`differ
`from what you were working with in 1996 and
`
`that
`
`technology
`
`2000
`
`MR EGAN Objection foundation
`I cant
`THE WITNESS Well
`
`talk about
`
`the
`
`details of what
`
`course thats a
`
`IntegenX is doing because of
`Im under nondisclosure
`
`agreements with IntegenX
`BY MR NIX
`Q The devices are being sold commercially
`they are being publicly sold is that right
`A That
`Q What
`is the product name
`A Oh well
`names
`there is several different versions
`The
`
`there are a variety of product
`
`is correct
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`The technology
`
`is directed towards doing realtime
`
`forensic identification of
`
`individuals by doing
`
`short
`
`tandem repeat analysis
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`Page
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`17
`
`that slow enough
`Was
`Q Is it accurate to say that
`IntegenX is selling today are different
`
`the products
`
`than
`
`that
`
`the products that you were working with in 1996 and
`
`the 2000 time frame
`MR EGAN Objection form lack of
`foundation
`
`THE WITNESS
`
`In 1996 I was not working on
`
`products
`
`In 1996 I was doing federally sponsored
`
`research activities
`
`The products that are being produced by
`
`IntegenX are different
`
`in various ways
`
`from the
`
`liberty to discuss how
`
`as
`
`technologies that we developed at Berkeley but
`I said before Im not at
`they differ
`BY MR NIX
`Q Okay
`Thermo Fisher on these IPRs there came a time when
`
`So when you started working with
`
`you saw a draft of
`
`the Petition that was
`
`filed
`
`right
`
`MR EGAN
`
`You can answer
`
`this line of
`
`questions but
`
`I caution you not
`
`to disclose any
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`attorney client communications
`Mmhmm Okay
`
`THE WITNESS
`
`Page
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`18
`
`the question please
`
`Would you repeat
`BY MR NIX
`Q Yes
`When
`
`you were working with Thermo Fisher
`
`you saw you a draft of
`
`the Petitions before they
`
`were filed right
`MR EGAN Objection lack of
`
`foundation
`
`THE WITNESS
`
`When
`
`I worked with Thermo
`
`Fisher I
`
`first
`
`read a variety of documents
`
`and I
`
`formulated my opinion about what was contained
`
`within those documents
`
`I
`
`then discussed that analysis you know
`
`with Thermo Fisher attorneys and together we drafted
`
`the declaration that we eventually
`
`filed
`
`And I
`
`reviewed all of
`
`that content
`
`to make
`
`sure that
`
`it was consistent with my understanding of
`
`the various patents and other exhibits that
`
`I was
`
`presented and that actually are listed in the
`
`declaration
`
`I had reviewed that
`
`And once
`to my
`then put myself signature on it
`
`satisfaction I
`BY MR NIX
`Q Okay
`
`And just
`
`for clarity Im talking
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`19
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`about
`
`two different documents
`
`On the one hand
`there is your declaration which well get to
`
`There is also a document called the Petition
`
`Are you familiar with the Petition
`A I worked on the declaration
`Q Okay
`You do not
`recall at any time seeing
`a draft of
`the Petition that was
`
`filed by Thermo
`
`Fisher asking the Patent Office to open this inter
`
`of
`
`partes review procedure
`A I do not recall seeing intermediate drafts
`the Petition
`Q You have seen the final Petition as filed
`right
`A I have
`filed
`seen the final Petition as
`Q But as you sit here today you do not
`that Petition
`recall ever seeing a draft of
`A No
`Q You testified before that
`you did when you started working on the case was
`
`the first
`
`thing
`
`read some documents
`
`Does that
`
`include all
`
`the
`
`that are cited in your declaration
`documents
`A My first activity was
`054 sic patent app
`Q And you believe that was sometime in the
`August 2016 time frame
`
`to read the
`
`to
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`A Yes Thats a reasonable estimate
`Q And then the attorneys supplied you with
`additional documents is that right
`A Yes that
`is correct
`Q And during that process did you ask for
`any additional documents beyond what
`the attorneys
`
`volunteered to you
`MR EGAN Objection lack of
`
`foundation
`
`Again I caution you not
`attorney client communications
`
`to disclose any
`
`but you can answer
`
`the question to the extent possible
`
`THE WITNESS
`
`Could you repeat
`
`the question
`
`again please
`BY MR NIX
`Q Yes
`In addition to the documents
`
`that
`
`the
`
`attorneys provided to you did you also ask them to
`to you
`provide additional documents
`A Yes I believe I did I
`worked you know in the area of
`
`fluorescence
`
`since I have
`
`high sensitivity fluorescence
`
`detection since 1990
`
`I was aware of
`
`a
`
`lot of
`
`individuals and efforts that
`
`were directed towards making fluorescence detection
`
`systems and made suggestion about areas you know
`
`publications as well as potential patents that
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`should be looked for in order to provide a clear
`
`understanding of
`
`the state of
`
`the art in 2003
`
`Page
`
`21
`
`concerning fluorescence detection systems
`Q Were there any
`did you request
`A I cant
`documents
`can make a general statement about
`
`what specific documents
`
`recall all of
`
`the specific
`
`I
`
`the
`
`directions that
`I suggested
`Q Yes please
`A The one area that
`look at
`the patents coming out of a company called
`
`I
`
`indicated was
`
`taking a
`
`Molecular Dynamics because
`
`I
`
`knew that
`
`they had
`
`worked intensively in this area in the 1990s
`
`So
`
`I
`
`was aware that
`
`there were likely patents that
`
`came
`
`out of
`
`that effort
`
`that would be relevant
`
`for this
`
`discussion
`Q Anything else
`A Lets see
`I also made them aware of you
`know my own scientific work in this area to develop
`
`laser excitation and detection systems and made them
`
`aware of a number of
`
`the papers that are in my CV
`
`that are relevant
`
`for understanding the state of
`
`the
`
`art as well
`Q Anything else
`A I cant
`recall any other specific
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`suggestions
`Q Who
`typed your declaration
`A Who
`typed it
`Q Who
`typed it
`MR EGAN Objection lack of
`
`Objection form
`
`foundation
`
`know who typed it
`
`I dont
`
`THE WITNESS
`BY MR NIX
`Q You did not
`type it yourself right
`MR EGAN Objection to foundation
`Objection form
`
`THE WITNESS
`
`the question is
`I mean if
`you know did I compose you know sections of it
`
`the answer
`
`is that when I
`
`received drafts of
`
`the
`
`declaration I often you know wrote up sections
`
`where I was
`
`fixing the logic and wording
`
`So
`
`I would write that up and basically
`
`relay that
`
`to the Thermo Fisher attorney
`
`I cannot
`
`recall every specific instance because we worked on
`Im not prepared to go back
`
`this for two months
`
`So
`
`and reiterate which exact expressions in there I
`
`physically wrote but
`
`I wrote quite a number of
`
`I recall
`them as
`BY MR NIX
`Q How many drafts did you review
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`think it was probably on the order of
`
`10
`
`approximately
`A I have no idea
`Q Do you believe it was more or less than 10
`drafts
`A I
`drafts
`Q About when did you see the first draft
`A Lets see
`filing data was what again
`The
`Q Mid October
`A If you give me the declaration then I
`wouldnt
`have to keep asking but
`MR EGAN
`
`You can answer but
`
`I caution
`
`you not
`
`to speculate
`
`THE WITNESS
`
`Okay Well
`
`as I said my
`
`my recollection is that
`
`I worked on it
`
`for about
`
`two
`
`filed
`
`months before it was
`BY MR NIX
`Q And how did you work with
`attorneys were you working with in the preparation
`
`well which
`
`of your declaration
`MR EGAN Objection form
`And again you can answer
`
`the question
`
`but
`
`to disclose any
`I caution you not
`attorney client communications
`Mmhmm okay
`
`THE WITNESS
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`24
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`I primarily worked with Ashita
`BY MR NIX
`Q Did you work with her primarily by phone
`facetoface meetings or some combination
`calls or
`
`of that
`
`MR EGAN Objection compound
`THE WITNESS
`
`This is primarily by
`
`for
`
`teleconference
`BY MR NIX
`Q You prepared invoices to Thermo Fisher
`your work on this project
`A I so prepared one invoice
`Q About
`how many hours in total have
`worked on the cases
`A Well
`up to the point of
`filing the
`declaration it was probably around 30 hours
`Q And since then has your work primarily
`been devoted to just preparing for todays
`
`you
`
`deposition
`A Since that
`primarily been towards preparing for this
`
`time yes the work has
`
`deposition
`Q About
`the filing
`A I spent about another
`
`30 hours
`
`how many hours have you spent since
`
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`Q So youve spent about
`on the case up to now
`A AS near as I can estimate without
`referring
`I of course have specific records
`to my records
`
`a total of 60 hours
`
`but
`
`Q Okay Did you review the patent owners
`filed in these two
`preliminary response that was
`
`IPRs
`
`MR EGAN Objection lack of
`Yes I skimmed those
`
`THE WITNESS
`
`foundation
`
`I did
`
`not study them
`BY MR NIX
`Q So when
`noticed that we had compared your declaration side
`
`you were skimming you probably
`
`by side with the corresponding petitions
`
`Were you surprised that we noted that at
`
`least
`
`69 of
`
`the 106 paragraphs in your declaration
`
`repeated verbatim the language in the Petition
`MR EGAN Objection to form Objection
`
`lack of
`
`foundation
`
`THE WITNESS
`
`I was not
`
`not particularly
`
`surprised or
`
`in either a positive or negative
`
`I did not prepare the Petition
`
`way
`the declaration
`
`I prepared
`
`MR NIX Let me ask the reporter
`
`to mark
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`as deposition Exhibit
`8236504
`
`2 a copy of US Patent
`
`Page
`
`26
`
`Deposition Exhibit
`
`2 was marked for
`
`identification
`BY MR NIX
`Q So this is the BioRad patent
`today right
`us all here together
`A Yes it
`is
`Q And youve read and are familiar with this
`patent
`
`that brings
`
`MR EGAN Objection compound
`
`I have
`
`read the patents
`
`THE WITNESS
`BY MR NIX
`Q If you could turn over and just look at
`thats in column 15
`claim 1 of
`the patent
`A Mmhmm
`Q You are aware that claim 1 recites a
`heating element correct
`A Let me read claim 1 and make sure Ive got
`in mind
`
`it all
`
`Witness reviewing document
`
`Okay
`
`So could you repeat
`
`the question
`
`please
`Q Yes
`Claim 1 recites an element called a
`
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`heating element correct
`A Yes it does
`Q Okay
`And just based on claim 1 what are
`the characteristics of
`that are
`the heating element
`
`defined within the claim
`MR EGAN Objection to the extent
`
`it calls
`
`for a legal conclusion
`
`THE WITNESS Well claim 1
`
`in the 504
`
`indicates that
`when the support structure is attached
`a heating element
`to the thermal cycler
`
`is
`
`disposed between the detection module and
`
`the sample wells and the shuttle is movable
`to position the detection
`
`to a position
`
`module in optical communication with
`
`different wells of
`
`the plurality of wells
`
`through a plurality of openings extending
`through the heating element
`BY MR NIX
`Q So claim 1 requires that
`element be between
`the detection unit and the sample
`
`the heating
`
`wells number one and second it
`
`requires that
`
`it
`
`have
`
`a plurality of openings extending through the
`
`is that right
`heating element
`MR EGAN Objection compound Objection
`
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`form
`
`please
`
`THE WITNESS
`
`Yeah
`
`repeat
`
`the question
`
`MR NIX Could you just read it back
`
`The reporter
`
`read the record as follows
`
`Question
`
`So claim 1 requires that
`
`the
`
`heating element be between
`
`the detection
`
`unit and the sample wells number one and
`
`second it
`
`requires that
`
`it
`
`have
`
`a
`
`plurality of openings extending through the
`is that right
`heating element
`Thats not quite right
`
`THE WITNESS
`
`The
`
`detection element
`
`is disposed between the
`now you got me doing it
`
`the heating
`
`detection
`BY MR NIX
`Q Need some more coffee
`A Yeah
`think so
`its just tonguetied Sorry
`The
`
`I
`
`Okay
`
`The heating element
`the detection module Okay
`difference in wording there And
`
`is disposed to between
`
`So there is a slight
`
`and there is a
`
`plurality of openings extending through the heating
`
`Yeah
`element
`Q Okay
`
`Now I want you to look at claim 13
`
`TSG Reporting Worldwide
`
`8777029580
`
`BioRad Exhibit 2005
`IPR201700055
`Page 28 of 186
`
`
`
`Page
`
`29
`
`Claim 13 defines an element called a heater
`right
`
`MR EGAN Objection lack of
`
`foundation
`
`Objection to the extent
`
`it calls for a legal
`
`conclusion
`
`THE WITNESS
`
`Claim 13 mentions a heater
`
`linked to a particular set of characteristics
`BY MR NIX
`Q Okay
`within claim 13
`what are the characteristics that define the heater
`MR EGAN Objection to the extent
`for a legal conclusion Objection to form
`
`And then what
`
`it calls
`
`THE WITNESS
`The heater as stated in
`claim 13 is to prevent condensation from forming
`
`the reaction vessels when the
`on a surface of
`reaction vessels are in the sample wells
`BY MR NIX
`Q Are there any other characteristics of
`that are described or defined in claim 13
`heater
`MR EGAN Objection to the extent
`
`the
`
`it calls
`
`for a legal conclusion Objection compound
`
`indicates that
`
`THE WITNESS
`The
`same paragraph also
`the heater has a plurality of
`transparent portions to permit optical communication
`
`with each of
`
`the plurality
`
`should be an of
`
`1
`
`2
`
`4
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`TSG Reporting Worldwide
`
`8777029580
`
`BioRad Exhibit 2005
`IPR201700055
`Page 29 of 186
`
`
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`1
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`2
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`3
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`5
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`6
`
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`8
`
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`
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`25
`
`Each of
`
`the plurality
`
`Page
`
`30
`
`There is a typo there
`sample wells
`BY MR NIX
`Q Anything else
`MR EGAN
`Same objection
`I dont
`
`THE WITNESS
`
`see any other
`
`specific terms that describe the heater
`BY MR NIX
`Q In the next subparagraph
`that starts with
`a support structure do you see that
`A Yes I do
`Q Does that subparagraph give you information
`the orientation or location of
`the heater
`
`about
`
`the device
`relative to the other components of
`MR EGAN Objection to the extent
`
`it calls
`
`for a legal conclusion
`
`THE WITNESS
`
`Yes it does
`
`BY MR NIX
`Q Could you describe what
`that says
`MR EGAN Objection to the extent
`
`it calls
`
`for a legal conclusion
`
`THE WITNESS
`
`That paragraph indicates that
`
`the
`
`that
`
`indicates that
`
`the support
`
`that
`
`the
`
`heater
`
`is between the support structure and the
`
`sample wells
`
`TSG Reporting Worldwide
`
`8777029580
`
`BioRad Exhibit 2005
`IPR201700055
`Page 30 of 186
`
`
`
`Page
`
`31
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
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`
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`21
`
`22
`
`23
`
`24
`
`25
`
`BY MR NIX
`Q And in claim 13 where is the detection
`module
`
`MR EGAN Objection to the extent
`
`it calls
`
`for a legal conclusion
`
`THE WITNESS Well
`
`the
`
`reading this
`
`backwards
`
`the detection module is attached to the
`
`shuttle and the shuttle is mounted on the support
`
`structure and the support structure is disposed
`
`inside the housing but on the opposite side of
`
`the
`
`heater
`
`from the sample wells
`BY MR NIX
`Q From the language in claim 13 what
`the relative
`conclusions did you draw about
`
`positions of
`
`the detection module the heater and
`
`the sample wells
`MR EGAN Objection compound
`
`To the extent you need your declarations to
`
`support your
`
`findings feel
`
`free to ask for them
`
`THE WITNESS
`
`Could you read the question
`
`back again please
`
`The reporter
`
`read the record as follows
`
`Question
`
`From the language in claim 13
`
`what conclusions did you draw about
`
`the
`
`relative positions of
`
`the detection module
`
`TSG Reporting Worldwide
`
`8777029580
`
`BioRad Exhibit 2005
`IPR201700055
`Page 31 of 186
`
`
`
`1
`
`2
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`4
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`5
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`6
`
`7
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`18
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`19
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`20
`
`21
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`22
`
`23
`
`24
`
`25
`
`the heater and the sample wells
`THE WITNESS
`Yeah youre very
`
`softspoken
`
`Can you say it
`
`a little
`
`louder
`
`Page
`
`32
`
`The reporter
`
`read the record as follows
`
`Question
`
`From the language in claim 13
`
`what conclusions did you draw about
`
`the
`
`the detection module
`relative positions of
`the heater and the sample wells
`THE WITNESS
`that
`My conclusion was
`
`the
`
`order was
`
`there is a detection module and then there
`
`is a heater and then sample wells in that order
`BY MR NIX
`Q You said those three in that order
`that mean top to bottom
`MR EGAN Objection
`THE WITNESS
`sorry
`It
`MR EGAN Objection foundation
`
`Does
`
`THE WITNESS
`
`Sorry
`
`I
`
`am not giving any indication of
`
`the
`
`what
`
`is above or below
`
`Thats just
`
`thats just
`
`the ordered sequence
`BY MR NIX
`Q So
`of claim 1 or claim 13 other
`
`is there anything else in the language
`than what weve already
`
`talked about
`
`that
`
`informed your conclusions
`
`about
`
`TSG Reporting Worldwide
`
`8777029580
`
`BioRad Exhibit 2005
`IPR201700055
`Page 32 of 186
`
`
`
`1
`
`2
`
`4
`
`5
`
`6
`
`7
`
`9
`
`10
`
`11
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`12
`
`13
`
`14
`
`15
`
`16
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`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`the words heating element and
`the meaning of
`heater as used in those two claims
`MR EGAN Objection compound
`it calls for a legal conclusion
`Im not
`
`Page
`
`33
`
`Objection
`
`to the extent
`
`THE WITNESS
`
`So
`
`lets see
`
`supposed to ask you questions okay
`
`The
`
`read that question again
`
`The reporter
`
`read the record as follows
`
`Question
`
`So is there anything else in
`
`the language of claim 1 or claim 13 other
`than what weve already talked about
`
`that
`
`informed your conclusions
`
`about
`
`the meaning
`
`the words heating element
`of
`as used in those two claims
`THE WITNESS
`
`Okay
`
`There is nothing else
`
`
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