UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
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`EIS GMBH,
`
` Petitioner,
`
` ) Case No.
` ) IPR2020-00007
` )
` ) U.S. Patent
` vs. ) No. 9,849,061
` )
`NOVOLUTO GMBH, )
` )
` Patent Owner. )
`_____________________________ )
`
` Remote Deposition of
`
` DEBRA HERBENICK, PH.D.
`
` Friday, February 19, 2021
`
` Reported by:
`
` Lisa Moskowitz, CA-CSR 10816, RPR, CRR
`
` Job No.: 1481
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`EIS Exhibit 1062
`EIS GmbH v. Novoluto GmbH IPR2019-01302
`
`1/192
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
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`EIS GMBH,
`
` Petitioner,
`
` ) Case No.
` ) IPR2020-00007
` )
` ) U.S. Patent
` vs. ) No. 9,849,061
` )
`NOVOLUTO GMBH, )
` )
` Patent Owner. )
`_____________________________ )
`
` Remote Deposition of
`
` DEBRA HERBENICK, PH.D.
`
` Friday, February 19, 2021
`
` Reported by:
`
` Lisa Moskowitz, CA-CSR 10816, RPR, CRR
`
` Job No.: 1481
`
`TransPerfect Legal Solutions
`212-400-8845 - Depo@TransPerfect.com
`EIS Exhibit 1062
`EIS GmbH v. Novoluto GmbH IPR2019-01302
`
`1/192
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`Page 2
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` REMOTE DEPOSITION OF DEBRA HERBENICK, PH.D.,
`
` reported stenographically by Lisa Moskowitz,
`
` California Certified Shorthand Reporter No. 10816,
`
` Washington State Certified Shorthand Reporter No.
`
` 21001437, RPR, CRR, Realtime Systems Administrator,
`
` commencing at 9:10 a.m., Friday, February 19, 2021.
`
` APPEARANCES OF COUNSEL:
`
` For the Petitioner:
`
` BOOKOFF McANDREWS
` Attorneys at Law
` BY: ANDREW "A.J." SUTTON, ESQ.
` BY: DINESH N. MELWANI, ESQ.
` BY: ANKIT AGGARWAL, ESQ.
` 2020 K Street, NW
` Suite 400
` Washington, DC 20006
`(202) 808-3550
`asutton@bomcip.com
`dmelwani@bomcip.com
`aaggarwal@bomcip.com
`
` For the Patent Owner:
`
` OSHA BERGMAN WATANABE & BURTON, LLP
` Attorneys at Law
` BY: TAMMY J. (DUNN) TERRY, ESQ.
` BY: LISA MARGONIS, ESQ.
` BY: CALIFF T. COOPER, ESQ.
` 909 Fannin
` Suite 3500
` Houston, Texas 77010
`(713) 228-8600
`dunn@obwbip.com
`margonis@obwbip.com
`cooper@obwbip.com
`
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`
` INDEX
`
`Examination By:
`
` BY MR. SUTTON
`
`Petitioner's
`
` EXHIBITS
`
` 1001
`
` United States Patent Number
`
` 9,849,061
`
`Page 3
`
` Page
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` 5
`
` Page
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` 19
`
` 1004
`
` United States Patent Number
`
` 82
`
` 5,725,473
`
` 2003
`
` Webster's Ninth New Collegiate
`
` 98
`
` Dictionary Excerpt
`
` 2004
`
` Declaration of Debra Herbenick,
`
` 13
`
` Ph.D. in Support of Patent Owner
`
` Preliminary Response, dated
`
` 1/8/2020
`
` 2035
`
` Declaration of Debra Herbenick,
`
` 14
`
` Ph.D., in Support of Patent Owner
`
` Response, dated 12/18/2020
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` FRIDAY, FEBRUARY 19, 2021
`
` 9:10 A.M.
`
`Page 4
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` THE CERTIFIED STENOGRAPHER: Good
`
` morning. My name is Lisa Moskowitz. I am
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` a certified stenographic reporter
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` appearing in association with TransPerfect
`
` Legal Solutions. I will be reporting this
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` deposition and swearing in the witness
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` remotely.
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` Today's date is Friday,
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` February 19, 2021, and the time is
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` approximately 9:10 a.m.
`
` Will counsel please identify
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` yourselves and state whom you represent.
`
` May we start with the noticing attorney.
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` MR. SUTTON: AJ Sutton here on
`
` behalf of the Petitioner from Bookoff
`
` McAndrews. Here with me is Dinesh Melwani
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` and Ankit Aggarwal also from Bookoff.
`
` MS. TERRY: Hi, I'm Tammy Terry,
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` counsel for patent owner Novoluto GmbH.
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` I'm a partner at Osha Bergman Watanabe &
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` Burton. And with me are my colleagues
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` Lisa Margonis and Califf Cooper.
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` THE CERTIFIED STENOGRAPHER: Thank
`
` you.
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` Since we are doing this remotely, I
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` ask that you all speak slowly and one at a
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` time so that I am able to understand
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` everyone and that we avoid any audio
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` glitches or dropped testimony from talking
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` at the same time.
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` I will now swear in the witness.
`
` DEBRA HERBENCIK, Ph.D.,
`
` called as a witness,
`
` was examined and testified as follows:
`
` EXAMINATION
`
` BY MR. SUTTON:
`
` Q Good morning, Dr. Herbenick. My
`
` name is AJ Sutton, and I represent the
`
` petitioner EIS GmbH in this matter. I'm going
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` to be asking you a series of questions today.
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` The court reporter is taking down every word
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` each of us says. Therefore, it is important
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` that we both speak loudly, slowly and clearly
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` so that the court reporter is able to hear and
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` understand what you and I are saying, and so
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` it will result in a complete and accurate
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` record of today's proceedings.
`
` A You're breaking up quite a bit --
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` your audio is just not -- I don't know if the
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` mic can get a little closer. I don't know.
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` Q Is this still fuzzy, or is it
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` better now?
`
` A Let's just keep going. This is a
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` good time to figure it out; right?
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` MR. SUTTON: Let's keep going.
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` Then if it doesn't work, I'll take it off.
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` BY MR. SUTTON:
`
` Q Please allow me to complete my
`
` question in full before you begin your answer,
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` and by the same token, I'll allow you to
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` complete your answer before I ask my next
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` question.
`
` If you and I interrupt each other,
`
` the record becomes filled with dashes, which
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` may cause confusion later. The reporter can
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` only write one person speaking at a time.
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` Therefore, it is important for all of us to
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` avoid talking over one another so that the
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` reporter is able to get a complete and
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` accurate record of the entire proceedings and
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` so that the questions and answers appear in
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` the transcript without dashes and
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` interruptions.
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` When responding to my questions,
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` please give verbal responses because the court
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` reporter can only write verbal responses on
`
` the record. The court reporter is not
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` permitted to interpret the nod or shake of
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` your head.
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` Similarly, it is often difficult to
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` understand the meaning of "uh-huh" and "uh-uh"
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` in the transcript.
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` Finally, if you do not understand
`
` any of my questions, please feel free to ask
`
` me to repeat or rephrase it, and I will be
`
` happy to do so.
`
` Please state and spell your full
`
` legal name.
`
` A My legal name is Debra Herbenick,
`
` D-e-b-r-a. Herbenick is H-e-r-b-e-n-i-c-k.
`
` Q Thank you.
`
` Please state your address for the
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` record.
`
` A My address is 1500 East Maxwell
`
` Lane, Bloomington, Indiana, 40401.
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` Q Are you over the age of 18?
`
` A I am.
`
` Q Do you understand that you are
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` testifying under oath today?
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` A Yes.
`
` Q Did you take any medications or
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` substances that would impact your ability to
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` testify truthfully and completely today?
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` A No.
`
` Q Is there anything preventing you
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` from answering questions truthfully and
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` completely today?
`
` A No.
`
` Q Are you currently at home?
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` A I am.
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` Q Are there other people at home with
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` you?
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` A No.
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` Q Do you have a reliable internet
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` connection?
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` A Yes, I hope so. We also have snow
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` and ice, but I should.
`
` Q Good.
`
` Are you currently communicating
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` with anyone besides me?
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` A I am not.
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` Q Do you have any electronic devices
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` with you other than your laptop?
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` A I do not.
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` Q Do you have any applications,
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` programs, or browsers open right now on your
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` computer?
`
` A I do not.
`
` Q Besides Zoom?
`
` A That's the one we're using to
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` communicate, yeah.
`
` Q Do you have any other documents
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` open right now?
`
` A No. I have the folder that you
`
` sent, but it's not -- the documents aren't
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` open yet.
`
` Q Okay. Do you have any other
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` documents open -- do you have any other
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` documents with you physical otherwise?
`
` A I don't.
`
` Q Okay. And can you affirm that you
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` will not communicate with anyone
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` electronically or otherwise while you are
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` providing testimony on the record?
`
` A Yes.
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` Q Are you able to receive messages
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` from anyone outside of these proceedings?
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` A No.
`
` Q Thank you.
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` Dr. Herbenick, whenever you need to
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` take a break, do let us know. I don't think
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` we'll take the whole time today. It depends
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` on how the questioning goes, but feel free
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` just to ask when you're ready, and we'll try
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` to accommodate when we reach a good breaking
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` point.
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` Occasionally, your counsel may
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` object to a question. The PTAB rules require the
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` objection to be stated concisely in a
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` non-argumentative and non-suggestive manner
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` and should be limited to a single word or
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` term. The PTAB rules prohibit unnecessary
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` objections, speaking objections, and coaching.
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` Do you understand?
`
` A Yes.
`
` Q Unless your counsel is asserting a
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` privilege, you are required to answer my
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` questions despite your counsel's objections.
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` Do you understand?
`
` A Yes.
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` Q Once this cross-examination begins,
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` you are not permitted to confer or communicate
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` with your counsel regarding substance of the
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`Page 11
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` testimony until we conclude the
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` cross-examination.
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` Do you understand?
`
` A Yes.
`
` Q Thank you.
`
` Did you prepare for this
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` cross-examination?
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` A Yes.
`
` Q How did you prepare?
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` A I met with counsel a few times, and
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` I read over, you know, literature related to
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` the proceedings.
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` Q Okay. What documents did you
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` review?
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` A I read the patents that are
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` relevant to these proceedings so, for example,
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` the '061 patent, the Taylor patent, the Zipper
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` patent, and Hovland patent, and I read over my
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` declaration and Dr. Jensen's declaration, and
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` the patent owner response, and I can't even
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` remember what it's called. Like the
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` petitioner's request for whatever it is, the
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` hearing or whatever the legal terms are.
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` Those would be generally the things.
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` It's possible I looked at other
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` things. If you have another question about
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` something else, let me know, but those are the
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` main things I reviewed. The board decisions.
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` Q Did you review any of the prior
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` deposition transcripts?
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` A I did not, no.
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` Q Okay.
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` A I looked at them, you know, a while
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` ago for corrections, but I didn't read them
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` recently for this case.
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` Q Okay. And which counsel did you
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` meet with in preparation for this
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` cross-examination?
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` A I met with Tammy and Lisa and
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` Califf.
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` Q Okay. How much time in total did
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` you spend preparing for this deposition?
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` A I probably spent, like, 15 to
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` 20 hours preparing for it.
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` MR. SUTTON: Okay. I'm going to
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` pull up the first exhibit. I think this
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` is in the link that I sent over to you.
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` Exhibit 2004. I'll put that up on the
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` screen as well.
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` (Exhibit Number 2004 was marked
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` for identification.)
`
` BY MR. SUTTON:
`
` Q Do you recognize this document?
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` A I do recognize it.
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` Q Is this a copy of your declaration
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` submitted with the patent owner's response,
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` Exhibit 2004?
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` A It is.
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` Q Is this your signature on the
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` second page of your declaration?
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` A Yes.
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` Q Did you discover anything in your
`
` preliminary response declaration here that you
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` believe may need to be corrected or clarified?
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` A I haven't looked at this older one
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` in some time. I looked at the more recent
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` one.
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` Q Sitting here today, do you still
`
` believe that the preliminary response
`
` declaration you submitted with -- submitted
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` here as Exhibit 2004 is complete and accurate?
`
` A I do.
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`Page 14
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` Q Thank you.
`
` I'm going to bring up the next
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` exhibit which is 2035.
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` (Exhibit Number 2035 was marked
`
` for identification.)
`
` BY MR. SUTTON:
`
` Q Do you recognize this document?
`
` A I do.
`
` Q Is this a copy of your declaration
`
` attached to the patent owner's response filed
`
` as Exhibit 2035 in this proceeding?
`
` A Yes.
`
` Q Is this your signature on the
`
` second page of your declaration here?
`
` A Yes.
`
` Q While preparing for this
`
` deposition, did you discover anything in your
`
` declaration that you believe may need to be
`
` corrected or clarified?
`
` A I did not.
`
` Q All right. So from now on when I
`
` refer to your declaration, I am referring to
`
` Exhibit 2035 here with the patent owner's
`
` response. If I refer to your preliminary
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` response declaration, I will refer to that as
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`Page 15
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` your preliminary response declaration.
`
` Do you understand?
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` A I do.
`
` Q Let's turn to paragraph 22 of your
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` declaration.
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` Can you read the second sentence
`
` here into the record?
`
` A Paragraph 22. "These include but
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` are not limited to the IPR petition related to
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` the '061 patent, prior art, and the
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` prosecution history related to the patent and
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` all exhibits of record."
`
` Q Thank you.
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` So you reviewed all exhibits of
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` record in preparing your declaration; is that
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` correct?
`
` A That's correct.
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` Q Did you write your entire
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` declaration?
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` A I wrote the vast majority of it.
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` Q What percentage approximately?
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` A I didn't do a word count analysis
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` but the vast majority of it. You know,
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` 90 percent or greater.
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` Q Who wrote the rest of your
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` declaration?
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` A So legal language, for example, was
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` provided by counsel as were some images but
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` not all images for the claim chart.
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` Q Okay. Let's go down to
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` paragraph 27 of your declaration here.
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` Can you read the last sentence of
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` paragraph 27.
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` A Starting with "I also"?
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` Q Yeah.
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` A "I also understand that a patent
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` owner is entitled to a presumption of a nexus
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` if it shows that the asserted objective
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` evidence is tied to a specific product and
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` that product is the invention disclosed and
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` claimed in the patent."
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` Do you want me to read the WBIP,
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` LLC, versus Kohler too?
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` Q I think you read that already.
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` Did you read WBIP versus Kohler?
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` A No, I did not. So this is an
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` example of legal language that is offered by
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` counsel that, as you know yourself, comment to
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` these types of reports.
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` Q So normally I don't think we have
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` our experts include case citations without
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` having actually read the case.
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` So why did you decide to cite this
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` portion of the case here?
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` A So, again, this would be legal
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` language that's provided by counsel to address
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` legal issues that, you know, I'm not a lawyer.
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` I'm not an attorney.
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` MS. TERRY: I'm going to object to
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` the sidebar commentary by counsel, by the
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` way. Let's just get that on the record.
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` BY MR. SUTTON:
`
` Q Can you read the first sentence
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` here?
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` A "I understand that for evidence of
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` non-obviousness to be relevant, there must be
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` a nexus between the merits of the claimed
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` invention and the evidence of secondary
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` considerations."
`
` Q What is a nexus?
`
` A My understanding of a nexus is that
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` it's showing how, you know, the claims that
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` are described in the patent are practiced by
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` the patent, and so they're essentially
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` consistent between the two.
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` Q Can you read the next sentence
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` here?
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` A "I also understand that a nexus is
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` presumed if a marketed product embodies the
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` claimed features and is co-extensive with
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` them."
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` Q What does it mean for a nexus to be
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` presumed?
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` A That it's there.
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` Q Here when you talk about marketed
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` product, again, here where it mentions a
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` specific product, does that mean just one
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` product, or can it be more than one product?
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` A Well, I believe, in this case, we
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` have two products that -- you know, that we've
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` addressed that have, in this case, the
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` appendage and the other features of the claims
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` in the '061 patent.
`
` Q And those are the Womanizer
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` InsideOut and the Womanizer Duo?
`
` A That's correct.
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` Q Are the Womanizer InsideOut and the
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` Womanizer Duo the same product, or are they
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` different products?
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` A They are largely the same, but
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` there are some minor differences between the
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` two of them.
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` Q How are they different?
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` A So the appendage is slightly bigger
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` in the Duo, slightly more bulbous, if you
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` will.
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` Q Is that the only difference between
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` them?
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` A That's the main difference that
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` I've noted. It's possible that there are
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` other ones, but when I think about the
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` differences, that's what I think about. I
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` think from a user perspective, that would be
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` the most relevant feature.
`
` Q All right. Up here when you cite
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` the Fox Factory case in paragraph 26, did you
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` read that decision?
`
` A I did not read the legal decision
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` of Fox Factory.
`
` MR. SUTTON: Okay. Let's turn to
`
` Exhibit 1001.
`
` (Exhibit Number 1001 was marked
`
` for identification.)
`
` BY MR. SUTTON:
`
` Q Do you have this document with you,
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` Exhibit 1001?
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` A I'm going to pull it up here
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` because the screen is so tiny. Okay.
`
` Q Do you recognize this document?
`
` A I do.
`
` Q Is this Exhibit 1001 filed in this
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` proceeding, which is U.S. Patent Number
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` 9,849,061?
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` Dr. Herbenick, did you hear my
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` question?
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` A No, I've been waiting for you to
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` speak.
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` Q Is this Exhibit 1001 filed in this
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` proceeding as U.S. Patent Number 9,849,061?
`
` A It's labeled as such in the name of
`
` the document.
`
` Q Okay. Did you review this document
`
` in preparation for this deposition?
`
` A Yes, I did.
`
` Q Let's go to column 10, line 9.
`
` A 9 or 10?
`
` Q Column 10, lines 9 through 17.
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` Can you read this paragraph into
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` the record?
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` A "The body part 11 to be stimulated
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` is an area of skin on the body wherein here,
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` for example, a particularly sensitive
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` erogenous zone the clitoris 12 is shown.
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` Thus, use of the present invention is not
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` limited to the female clitoris 11, however,
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` rather the stimulation device 1 can be applied
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` to all body parts or erogenous zones (such as
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` the inside of the thighs, lumbar region, nape
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` of the neck, nipples, et cetera) which can be
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` stimulated by means of medium- or air
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` pressure-massage and/or negative massage."
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` Q Do you agree with what the '061
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` patent states here that the stimulation device
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` 1 can be applied to all body parts or
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` erogenous zones?
`
` A So I do believe that they're
`
` providing accurate information here within the
`
` patent. I would also extend that response to
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` be complete to note that the entirety of the
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` patent, you know, describes predominantly
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` stimulation of the clitoris and vagina.
`
` Q Do you agree that the thighs,
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` lumbar region, nape of the neck, and nipples
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` to be erogenous zones?
`
` A I do agree that, for some people,
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` some of these parts of the body will be
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` included among their erogenous zones.
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` Q Let's go up to you column 3, lines
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` 5 through 10.
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` Can you read this paragraph into
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` the record.
`
` A Yes. This section reads,
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` "According to the invention, a pressure field
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` generating arrangement of the stimulation
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` device has at least one first chamber and at
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` least one second chamber having at least one
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` opening for placing on a body part or on the
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` erogenous zone and at least one connection
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` element that connects the first chamber to the
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` second chamber."
`
` Q Do you see the words "according to
`
` the invention"?
`
` A Yes, I do.
`
` Q What does "according to the
`
` invention" mean?
`
` A I think they're just referencing
`
` the invention of this patent here. They refer
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` to the invention multiple times, even in the
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` prior paragraph that says the object of the
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` invention.
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` Q What are you referring to as the
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` invention here?
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` A The subject of the '061 patent.
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` Q Where is the invention described in
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` the '061 patent?
`
` A There is certainly claim language,
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` and there's also the entire patent that helps
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` us understand more about what they're
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` claiming.
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` Q Does the invention include concepts
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` that are not in the claims?
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` A Can you be more specific than that?
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` Q Are there any concepts discussed in
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` the columns 1 through 13 that are not listed
`
` in the claims?
`
` A That question doesn't make a lot of
`
` sense to me. That's a very broad question.
`
` Like, are there things listed in all of these
`
` pages that aren't in a small number of claims?
`
` Is that what you're asking? Like, are there
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` words, phrases, and ideas, like, concepts to
`
` me as ideas? I mean, is that what you're
`
` asking? In these 13 columns, is there at
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` least one idea that is not in the claim?
`
` Q Yeah. Are there any ideas that are
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` not in the claims?
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` A Of course, yes. They describe a
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` number of prior art and ideas about sexuality
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` and incontinence; so, yes, of course, there
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` are ideas that are not in the claims.
`
` Q Are those also part of the
`
` invention?
`
` A So I think just for the plain and
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` ordinary meanings of following along the
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` language about what it is that they are
`
` describing, that I understand what it is they
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` are describing in terms of their invention,
`
` and they lay it out in the claims and give
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` more context to it in the larger document.
`
` I mean, just, to me, that's sort of
`
` all the patents we keep reading. Like,
`
` there's a small number of claims and a lot of
`
` context and background and rationale and
`
` discussion of overcoming prior art and all of
`
` that and problems of prior art in every patent
`
` I've ever read that has any breadth to it, I
`
` should say, since some of them have very
`
` little information.
`
` Q Do you agree the invention includes
`
` a pressure field generating arrangement -- let
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` me strike that and start over.
`
` Do you agree that the invention has
`
` at least one first chamber, at least one
`
` second chamber, and at least one opening for
`
` placing on a body part or on the erogenous
`
` zone, and at least one connection element that
`
` connects the first chamber to the second
`
` chamber?
`
` MS. TERRY: Objection. Form.
`
` THE WITNESS: Well, it sounds like
`
` you're getting to the claim language
`
` itself, in which case, we should probably
`
` just go to the claim language. You're
`
` reading almost exactly from that.
`
` BY MR. SUTTON:
`
` Q I'm not asking about the claims.
`
` I'm asking about what this says here in
`
` column 3 of the '061 patent.
`
` MS. TERRY: Object to --
`
` BY MR. SUTTON:
`
` Q Do you agree with what the '061
`
` patent states here that the invention has at
`
` least one first chamber and at least one
`
` second chamber, having at least one opening
`
` for placing on a body part or on the erogenous
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` zone, and at least one connection element that
`
` connects the first chamber to the second
`
` chamber?
`
` MS. TERRY: Objection. Asked and
`
` answered.
`
` THE WITNESS: Yes, again, you're
`
` also reading -- you may be reading from
`
` that part but most of that language is in
`
` claim 1.
`
` BY MR. SUTTON:
`
` Q You haven't answered the question
`
` that I've asked yet.
`
` A I mean, I have answered it twice.
`
` Like, you're just -- I think unless you want
`
` something -- you want me to say something
`
` different than I'm answering, but I am indeed
`
` answering you. Like, this patent does
`
` disclose much of that in claim 1. It says, "A
`
` stimulation device for erogenous zones." That
`
` part was referenced in what you read.
`
` "Comprising at least one pressure field
`
` generating arrangement with at least one first
`
` chamber, at least one second chamber having at
`
` least one opening for placing on a body part,
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` and at least one connection element that
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` connects the at least one first chamber to the
`
` at least one second chamber. A drive unit
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` that varies the volume of the at least one
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` first chamber such that a stimulating pressure
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` field is generated via the at least one
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` connection element in the at least one second
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` chamber; a control device that activates the
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` drive unit and an appendage."
`
` And we could go on, but the bulk of
`
` what you read is that first half of claim 1.
`
` So yes, absolutely, much of that
`
` language is in claim 1. I don't know the
`
` legal language described, disclosed, but is
`
` part of claim 1.
`
` Q Is the invention only in the
`
` claims, or is it also in the specification?
`
` A So I'm not sure how the legal
`
` language plays out for all of you and if
`
` there's something you're trying to get at, but
`
` my understanding of the invention of any
`
` patent that I read is in the claims, but also
`
` informed by what I read and understand in
`
` terms of understanding how an inventor came up
`
` with something, the problems they were
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` overcoming, you know, what it is they're doing
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` with it.
`
` So my understanding -- any time in
`
` this case or another I've been asked to read a
`
` patent, nobody has ever said, "Only read this
`
` section," or "Only read that section." They
`
` say, "Read the whole thing and try to
`
` understand it," and that's what I see every
`
` expert do in yours, ours, and in other cases.
`
` We try to understand the whole thing. And so
`
` that's what I've done here in good faith.
`
` Q So I'm asking you about this
`
` section of the specification. Is it your
`
` testimony that this part of the specification
`
` is informed by the claims?
`
` A I don't really understand what
`
` you're asking anymore.
`
` Q Do you need to read claim 1 in
`
` order to understand this paragraph of the
`
` specification?
`
` A No, I --
`
` MS. TERRY: Objection. Form.
`
` Sorry, I need time to be able to
`
` make an objection, Dr. Herbenick. I
`
` apologize for speaking over you.
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` And sorry to the stenographer.
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` BY MR. SUTTON:
`
` Q Do you understand the question,
`
` Dr. Herbenick?
`
` A No, I do not understand your
`
` question. Please repeat it or rephrase it.
`
` Q Do you need to read claim 1 in
`
` order to understand what column 3, 5, 1
`
` through 10 means?
`
` A No, I do not.
`
` Q So do you agree with what the '061
`
` patent states here in columns 3, 5 through 10,
`
` that the invention has at least one first
`
` chamber and at least one second chamber having
`
` at least one opening for placing on a body
`
` p
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