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`Page 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________________
`MEDTRONIC, INC., AND MEDTRONIC
`VASCULAR, INC.,
`
`Petitioners,
`
`vs.
`
`TELEFLEX INNOVATIONS S.A.R.L.,
`
`Patent Owner.
`___________________________________________________
`IPR2020-00126 (Patent 8,048,032 B2)
`IPR2020-00127 (Patent 8,048,032 B2)
`IPR2020-00128 (Patent RE45,380 E)
`IPR2020-00129 (Patent RE45,380 E)
`IPR2020-00130 (Patent RE45,380 E)
`IPR2020-00132 (Patent RE45,760 E)
`IPR2020-00134 (Patent RE45,760 E)
`IPR2020-00135 (Patent RE45,776 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00137 (Patent RE47,379 E)
`IPR2020-00138 (Patent RE47,379 E)
`___________________________________________________
`
`VIDEOTAPED DEPOSITION OF
`PETER KEITH
`
`DATE: February 17, 2021
`
`TIME: 9:04 a.m. (Central Standard Time)
`
`PLACE: Veritext Virtual Videoconference
`
`REPORTED BY: PAULA K. RICHTER, RMR, CRR, CRC
`
`www.veritext.com
`
`888-391-3376
`
`Veritext Legal Solutions
`
`Medtronic Ex. 1922
`Medtronic v. Teleflex
`IPR2020-00126/-127/-128/-129/-130/-132/-134/-135/-136/-137/-138
`
`

`

`Page 2
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`Page 4
`
`1 INDEX
`2 WITNESS: PETER KEITH PAGE:
`3 EXAMINATION BY MR. MORTON.................. 5
`4 EXAMINATION BY MR. WINKELS................. 75
`
`5 6 7
`
`EXHIBITS MARKED: PAGE:
`8 EXHIBIT 1921 Second Declaration of Peter
`9 Keith in Support of Plaintiffs'
`10 Motion for Preliminary
`11 Injunction...................... 39
`12
`13 (Original exhibits attached to original transcript;
`14 copies provided to counsel.)
`15
`16 EXHIBIT PREVIOUSLY MARKED AND REFERRED TO:
`17 EXHIBIT 2243 Peter Keith Declaration........ 12
`18
`19
`20
`21
`22
`23
`24
`25
`
`1 APPEARANCES
`2 (All parties appeared via videoconference)
`3 ON BEHALF OF THE PETITIONERS:
`4 Mr. Cyrus A. Morton, Esq.
`5 Mr. Ryan E. Dornberger, Esq.
`6 ROBINS KAPLAN, LLP
`7 800 LaSalle Avenue, Suite 2800
`8 Minneapolis, Minnesota 55401
`9 (612) 349-8500
`10 cmorton@robinskaplan.com
`11 rdornberger@robinskaplan.com
`12
`13 ON BEHALF OF THE PATENT OWNER:
`14 Mr. Joseph W. Winkels, Esq.
`15 CARLSON, CASPERS, VANDENBURGH & LINDQUIST
`16 225 South Sixth Street, Suite 4200
`17 Minneapolis, Minnesota 55402
`18 (612) 436-9600
`19 jwinkels@carlsoncaspers.com
`20
`21
`22
`23
`24
`25 (APPEARANCES continued on next page)
`
`Page 3
`
`Page 5
`
`1 P R O C E E D I N G S
`2 PETER KEITH,
`3 duly sworn, was examined and testified as follows:
`4 EXAMINATION
`5 BY MR. MORTON:
`6 Q. Good morning, Mr. Keith.
`7 A. Good morning.
`8 Q. Just to make sure, do you have your binder of
`9 materials that has your declaration in the front
`10 of it and then I think should be tab 12 has the
`11 '629 application we've discussed before?
`12 A. I do. I haven't opened it yet. Yes.
`13 Q. So in the '629 application, just to orient
`14 us, I guess, if you go to page 9, at about lines 4
`15 and 5 on page 9.
`16 A. Okay. I have my declaration. There's a --
`17 you wanted me to go to tab 9? I'm sorry.
`18 Q. I wanted you to have two things at your
`19 disposal. Your declaration.
`20 A. Yes, I've got that.
`21 Q. And then for starters, the '629 application,
`22 which was the original patent application. I
`23 think I have the same binder as you. That should
`24 be tab 12.
`25 A. Tab 12. Okay. Okay. Page 9. And this is
`
`1 APPEARANCES (Continued)
`
`23
`
`ON BEHALF OF PATENT OWNER:
`4 Mr. Kenneth E. Levitt, Esq.
`5 THE DORSEY FIRM
`6 50 South Sixth Street, Suite 1500
`7 Minneapolis, Minnesota 55402
`8 (612) 340-2600
`9 levitt.kenneth@dorsey.com
`10
`11 ALSO PRESENT:
`12 Rick Sanborn - Veritext Concierge
`13 Greg Smock - Teleflex
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`Page 6
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`Page 8
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`1 the original document page 9 or the lower
`2 right-hand page 9?
`3 Q. I was going with the lower right-hand page 9,
`4 so it's document page 6 --
`5 A. Okay.
`6 Q. -- and lines 4 and 5. Just to orient
`7 ourselves, what we're talking about again, do you
`8 see where it says, "The coaxial guide catheter
`9 includes a tip portion, a reinforced portion and a
`10 substantially rigid portion"?
`11 A. Yes.
`12 Q. All right. And generally here, the tip
`13 portion and the reinforced portion form a distal
`14 tube portion of the catheter. Is that your
`15 understanding?
`16 MR. WINKELS: Objection; form.
`17 THE WITNESS: Yeah, I would say
`18 generally that's true.
`19 BY MR. MORTON:
`20 Q. Okay. And then the other part of the device
`21 is obviously the substantial -- substantially
`22 rigid portion that's more proximal and leads up to
`23 that distal tube; is that fair?
`24 MR. WINKELS: Objection; form.
`25 THE WITNESS: Well, generally, I
`
`1 Q. But in Figures, say, 4 and 12, for instance,
`2 the substantially rigid portion has a side
`3 opening, right?
`4 A. Well, it would depend on if you're talking
`5 about a particular claim and applying a particular
`6 claim to that structure. That may place that side
`7 opening in -- if the claim refers to a
`8 substantially rigid portion, it may place that
`9 there, or, depending on other claims, it may not
`10 place it there. It may place it as its own
`11 segment. So generally I wouldn't agree with that
`12 because I think it depends on if you're referring
`13 to particular claims and how you apply those
`14 claims.
`15 Q. Sure. And we may get to the particular
`16 claims. For now I want to not talk about the
`17 claims and only talk about the specification. So
`18 in the specification, if you're looking at Figures
`19 4 or 12, for instance, that rigid portion 20 is
`20 where the side opening is, right?
`21 A. Figure 4 and Figure 20?
`22 Q. 12, actually. Figure 4 and Figure 12, I
`23 think. I can double-check for you.
`24 A. Well, I would have to go back and refresh on
`25 the description that goes along with that.
`
`Page 7
`
`Page 9
`
`1 think that's one way that you can look at it.
`2 Kind of when you get into the details of different
`3 embodiments or whatnot, you know, there may be
`4 some slight variations to that.
`5 BY MR. MORTON:
`6 Q. Okay. And I want to talk about the
`7 variations and give you a chance to tell me if
`8 there's variations on this. So in every example
`9 in this specification, that distal tubular portion
`10 made up of the tip portion and the reinforced
`11 portion, in every example, that has a proximal end
`12 opening in the specification, right?
`13 A. I believe so, yes.
`14 Q. Now, if you connect that distal tubular
`15 portion to the substantially rigid portion, it
`16 still has an end opening, right?
`17 A. There's an end opening somewhere, yes.
`18 Q. Okay. And in Figures, say, 1 and 2 and 20
`19 through 22, for instance, that distal tubular
`20 portion is connected to more like a push rod,
`21 right?
`22 A. I would say that's true, yes.
`23 Q. All right. And in those examples, that
`24 distal tube again has an end opening, right?
`25 A. Yes.
`
`1 Q. Well, feel free. I'll just point out that
`2 the numeral that's in those two figures is 20, and
`3 20 is always rigid portion 20. So all I'm trying
`4 to establish is that in those examples in the
`5 specification, the side opening is in rigid
`6 portion 20.
`7 A. In those examples, that is how it's described
`8 in the text of the specification.
`9 Q. Okay. Now, the distal tubular portion, what
`10 I've been calling that, in those examples, like in
`11 Figure 4, that still has an end opening, right?
`12 It's just that it's connected to a fully
`13 circumferential portion of rigid portion 20?
`14 MR. WINKELS: Objection; form.
`15 THE WITNESS: I don't know. I
`16 haven't -- I guess I haven't really thought about
`17 that. You're suggesting that if there's a
`18 connection point, that there's an end opening at
`19 that connection point?
`20 BY MR. MORTON:
`21 Q. Yeah. If you imagine starting with two
`22 pieces. You've got your distal tube and you've
`23 got your rigid portion and you're going to connect
`24 those together in, say, the example of Figure 4,
`25 all I'm saying is the distal tubular portion has
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`Page 12
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`1 an end opening. You connect that to a full
`2 circumferential portion of the rigid portion 20,
`3 and that's how you would make, say, that example
`4 in Figure 4.
`5 A. Again, I haven't really thought of it that
`6 way. I think of the device as having an opening.
`7 I haven't thought about like the very tip, does
`8 that have an end opening before that's connected
`9 to the reinforced portion. I mean, I guess one
`10 could think of it that way, but I don't think end
`11 opening is really ever used in that way in the
`12 spec or in the claims.
`13 Q. So that distal tubular portion that's made up
`14 of a tip portion and the reinforced portion, is
`15 there any example, any description anywhere in the
`16 spec that you can show me where that portion does
`17 not have basically just an end opening?
`18 A. I'm not sure I understand the question.
`19 Q. Well, I want to focus on -- you know, there's
`20 different portions set out here, as we started
`21 out. The tip portion and reinforced portion make
`22 a distal tube. I want to focus on only that
`23 portion. Can you point to anything in the spec
`24 where that portion has some shape to it on the
`25 proximal end of it that's not just a cutoff
`
`1 is Teleflex Exhibit 2243.
`2 A. Okay.
`3 Q. So in this paragraph, you're disagreeing with
`4 Dr. Zalesky where he opines that all the examples
`5 in the specifications for the substantially rigid
`6 portion are made from a monolithic metal tube.
`7 Do you see that?
`8 A. Yes.
`9 Q. Okay. Can you show me any example in the
`10 specification where the substantially rigid
`11 portion is not cut from a single monolithic metal
`12 tube?
`13 A. Well, somewhere, I don't know exactly where,
`14 in the specification, but it describes, I think,
`15 in connection with that embodiment that we've been
`16 talking about of Figure 4, that that could be
`17 formed of various metal tubes or other
`18 substantially rigid materials, which just by the
`19 verbiage of that does not mean that that has to be
`20 metal.
`21 Q. Okay. So is the issue basically, you dispute
`22 the term "metal," but otherwise every example in
`23 the specification is a single monolithic tube?
`24 MR. WINKELS: Objection; form.
`25 THE WITNESS: Well, I don't really
`
`Page 11
`
`Page 13
`
`1 perpendicular end opening?
`2 MR. WINKELS: Objection; form.
`3 THE WITNESS: As far as specific
`4 embodiments that show that, I mean, I've -- in
`5 prior depositions have talked about this before,
`6 that I -- there are a number of different
`7 embodiments that are shown in the totality of the
`8 patent. Some of them are perpendicular openings.
`9 Some of them are angled openings. Some of them
`10 are, you know, part of the -- you know, really
`11 coming off the proximal end of the tubular portion
`12 or the reinforced portion and others are not.
`13 So I think what you're asking, is
`14 there a very super specific example of, you know,
`15 that particular combination and where it's a
`16 distal tubular portion connected to a rail
`17 structure, push rod-type structure where it's
`18 either angled or something other than a vertical
`19 cut, and I think I've said before that I don't
`20 think there's that specific example described.
`21 BY MR. MORTON:
`22 Q. All right. We're probably good on that.
`23 Thank you, Mr. Keith.
`24 If you look at your paragraph 35 of
`25 your declaration, which, I guess, for the record
`
`1 know what monolithic means, to be honest.
`2 BY MR. MORTON:
`3 Q. Well, I mean, you know these things in
`4 general are -- well, not in general -- I mean, in
`5 the descriptions, it's cut from a hypotube, right?
`6 MR. WINKELS: Objection; form.
`7 THE WITNESS: Some of the
`8 embodiments, yes.
`9 BY MR. MORTON:
`10 Q. And in those embodiments, you can't point to
`11 anything where there's more than one hypotube
`12 that's joined together, can you?
`13 A. Again, you're saying -- I mean, relying on
`14 just specific embodiments that are described. You
`15 know, the -- I mean, I've said this before too,
`16 that the patent specification conveys to one of
`17 skill in the art more than just the exact specific
`18 embodiments that are described. But those
`19 embodiments that are described happen to be cut
`20 from or formed from a tube.
`21 Q. Okay. Then can you point to anything -- any
`22 other example or even description that would not
`23 be cut from a monolithic tube?
`24 A. Again, you're using monolithic, which I
`25 believe does not show up in the specification,
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`Page 14
`1 so -- I don't know if that means more than just a
`2 tube, so I'm a little uncomfortable adopting that
`3 because I feel like maybe that might mean
`4 something more to some people than it necessarily
`5 does to me.
`6 Q. Sure. And if you'd prefer single, I think
`7 that's all I mean by that, is you've got one long
`8 tube, and then you cut it to be whatever shape you
`9 want it to be for the rigid portion 20. So that's
`10 all I mean by it.
`11 So do you have any example or any
`12 suggestion in the spec where there's something
`13 different than that, something different than
`14 starting with one tube that you then cut to form
`15 rigid portion 20?
`16 A. Right. So the examples that are described in
`17 the specification, that is the way they describe
`18 making that structure. Again, I think one of
`19 skill in the art would read this and understand
`20 that there are other ways that one could do that,
`21 but they are not specifically described in the
`22 specification.
`23 Q. Okay. And the things that are described in
`24 the specification, you have that one tube, and
`25 it's that tube for every example where the side
`
`Page 15
`
`1 opening is cut; is that right?
`2 A. Yeah. Again, those are the specific examples
`3 that are described in the specification.
`4 Q. Okay. Let's jump ahead in your declaration
`5 to paragraph 46.
`6 A. Okay.
`7 Q. So in paragraph 46, you're talking about
`8 Claims 44 of the '380 Patent and 24 of the '032
`9 Patent and the issue of indefiniteness.
`10 Do you see that?
`11 A. Yes.
`12 Q. And the indefiniteness issue that's been
`13 raised is that the -- the claims say the
`14 substantially rigid portion is "connected to" the
`15 flexible tip portion even though there's a
`16 reinforced portion in between those two portions,
`17 right?
`18 A. Yes.
`19 Q. So right after that you say that you
`20 understand the term "connected to" to connote an
`21 association between features of the claim device.
`22 Do you see that?
`23 A. I'm not sure I exact -- oh, there. Yes.
`24 Q. And you say, "I do not understand the term
`25 'connected to' to require two claimed features to
`
`Page 16
`
`1 be in direct contact; i.e., touching."
`2 Do you see that too?
`3 A. Yes.
`4 Q. So when you say "I understand" throughout
`5 your declaration, that's usually where you've been
`6 given some understanding from the lawyers; is that
`7 right?
`8 MR. WINKELS: Objection; form.
`9 THE WITNESS: No.
`10 BY MR. MORTON:
`11 Q. That's not what that means?
`12 A. No. This is my understanding, which is what
`13 I believe.
`14 Q. Okay. Did you perform a claim construction
`15 analysis on connected to?
`16 A. I guess I don't really understand that
`17 question.
`18 Q. Well, you've said that connected to does not
`19 mean a direct connection, right?
`20 A. That's my understanding, applying plain,
`21 ordinary meaning to the claim.
`22 Q. Okay. How did you form that understanding?
`23 A. That's just my understanding as one of skill
`24 in the art.
`25 Q. Okay. Is there anything in the specification
`
`Page 17
`1 that would suggest connected to means not directly
`2 connected?
`3 A. I'm not sure.
`4 Q. Okay. But you haven't identified anything
`5 like that; is that fair?
`6 MR. WINKELS: Objection; form.
`7 THE WITNESS: I guess I don't recall
`8 specific -- anything specific that helps me to get
`9 that understanding.
`10 BY MR. MORTON:
`11 Q. Okay. Let me see if I understand your
`12 definition. Your definition is, as long as two
`13 things are part of the same overall catheter, then
`14 they are connected; is that right?
`15 A. Well, I'm looking at this in the context of
`16 the claim, and the claim makes perfect sense when
`17 that's what connected to means. And it is --
`18 that's plain and ordinary understanding outside
`19 the context of that claim too, I believe, that
`20 it's not -- the tip is not unconnected to the
`21 catheter and, therefore, it's not unconnected to
`22 the rest of the structures in that device.
`23 Q. But there is a reinforced portion in between
`24 the substantially rigid portion and the flexible
`25 tip portion, right?
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`1 A. For that claim, yes.
`2 Q. Is there any limit in your mind as to how
`3 many different things can be in between and have
`4 it still be connected?
`5 A. I haven't thought about that. I've thought
`6 about it in the context of this claim.
`7 Q. Is the handle that the physician uses to
`8 operate connected to the most distal flexible tip
`9 portion?
`10 A. Well, I haven't formally opined on that. You
`11 know, it's -- when the handle moves, the tip
`12 moves, so there's certainly some level of
`13 connection, I believe. But I have not formally
`14 opined on that in the context of this claim
`15 because that's not part of this claim.
`16 Q. All right. Let's jump ahead to another
`17 topic, Mr. Keith, and go to paragraph 62 of your
`18 declaration.
`19 A. Okay.
`20 Q. So in this section you're talking about
`21 obviousness, in particular the obviousness of
`22 taking the Itou patent and combining that with the
`23 Ressemann collar, right?
`24 A. In general, yes. In particular, in the way
`25 that he makes that combination.
`
`Page 19
`
`1 Q. Sure. And in paragraph 62 you're
`2 particularly talking about what you refer to as
`3 the modifications that would need to be made in
`4 order to make that combination, right?
`5 A. Yeah. Again, assuming that one were
`6 motivated to do that, which I don't believe they
`7 would be, and that these modifications would be
`8 the ones that would be done to get to the
`9 particular embodiment that was described here with
`10 those modifications of Itou and Ressemann.
`11 Q. Okay. I want to go through the
`12 modifications, and let's start with what you call
`13 removing Itou's collar.
`14 So is that your understanding of how
`15 obviousness works? You don't look at the patents;
`16 you start with two actual devices like sitting on
`17 the table and re-engineer them?
`18 MR. WINKELS: Object to the form.
`19 THE WITNESS: Well, obviousness, I
`20 think, is bigger than that. It's the --
`21 understanding the references and whether one would
`22 even be motivated to make those -- you know, to
`23 rely on those references and whether modifications
`24 are consistent with the teachings of prior art
`25 references and whether those modifications would
`
`Page 20
`1 be expected to work. I don't know the exact legal
`2 terminology on that, but at a high level, that's
`3 my understanding of obviousness.
`4 BY MR. MORTON:
`5 Q. Sure. And I want to set aside for a moment
`6 the motivation to do it. I'll have you just
`7 assume -- even though I know you disagree, assume
`8 there's a motivation to make this, and then we're
`9 talking about actually doing it, okay?
`10 A. Okay.
`11 Q. All right. So what I'm asking you is: Do
`12 you think that what you do is actually start with
`13 Itou and then perform an engineering step of
`14 removing the collar? Is that how you think the
`15 obviousness analysis works?
`16 A. I'm just reacting to the construction that
`17 had been proposed and what are the modifications
`18 that would have had to happen for Dr. Jones to
`19 come up with that modification.
`20 Q. Okay.
`21 A. So this is his --
`22 Q. Is it fair to say --
`23 A. This is his embodiment. This isn't my
`24 embodiment.
`25 Q. I understand. I guess what I'm getting at
`
`Page 21
`1 is, isn't it fair to say that what you would do as
`2 a person of skill in the art is design a new
`3 catheter in light of these teachings, rather than
`4 start with a fully formed Itou catheter and remove
`5 its collar?
`6 A. I guess I'm not seeing the difference there.
`7 You're still ending up with an embodiment.
`8 Whether you sort of start from scratch based on
`9 the teachings or whether you, you know, start with
`10 a specific embodiment and modify that, I don't
`11 know -- I guess I don't know that that makes much
`12 difference. I haven't really thought about that.
`13 But at the end of the day, there's
`14 an embodiment that we can compare to what is
`15 thought in the prior art reference and assess that
`16 and analyze that.
`17 Q. Okay. And I have the same question, I guess,
`18 for the second bullet point. Again, it seems to
`19 assume you're starting with a fully formed device
`20 sitting on your bench in the lab and then you say
`21 you're going to extract the Ressemann collar from
`22 Ressemann and then add it into Itou.
`23 Again, is that your understanding of
`24 how an obviousness analysis works?
`25 A. Well, again, I'm reacting to whatever process
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`1 that Dr. Jones did to come up with this
`2 embodiment, but I'm looking at the teachings of
`3 Ressemann, and the teachings of Ressemann, one
`4 example of that, is he's got a collar, and that
`5 collar serves a purpose, and I think it's
`6 important to understand what that purpose is.
`7 Yeah, it goes to motivation. It
`8 goes to the suitability. I think it goes to a lot
`9 of things. So I'm not saying that the exercise is
`10 actually, here's a device that we've built up and
`11 now we're going to disassemble it and try this out
`12 and do -- I mean, that's not really what I think
`13 anybody is referring to. But it's taking an
`14 element that is taught for a completely different
`15 purpose and then saying, ah-ha, this sort of looks
`16 like what I want it to look like and so let's see
`17 how we can make that part of my new embodiment.
`18 That I don't think is appropriate.
`19 Q. Okay. And so again, I'm going to continue
`20 with this line of questioning and ask you to
`21 assume again that you're motivated to use the
`22 disclosure of the Ressemann collar to design a
`23 device that is otherwise like Itou, okay? I know
`24 you disagree. I'm asking you to assume that,
`25 though.
`
`Page 24
`1 this, but I haven't thought about how I would do
`2 it.
`3 Q. Okay. And how about the other part of Itou,
`4 where you -- first you flatten the end of the push
`5 wire and then you weld it? Again, would that be
`6 something that you would consider doing if you
`7 were, in fact, motivated to make this combination?
`8 A. I guess I don't understand the question
`9 because I think you just described what Itou does
`10 and teaches in Itou on its own. So you're saying
`11 if I were to make Itou's device, would I do that?
`12 Q. But using a different shape for the collar.
`13 Using the Ressemann collar shape.
`14 A. I don't know. I haven't thought about that.
`15 Q. A person of skill in the art certainly could
`16 do that, right?
`17 A. I don't know. A person of skill in the art
`18 could certainly think about it, but I don't know
`19 what -- again, I haven't given that specific issue
`20 thought, so I don't know.
`21 Q. Can you think of any reason as you sit here
`22 today why a person of ordinary skill in the art
`23 could not follow the teaching of Itou to flatten
`24 the end of the push wire and weld it if creating
`25 this combination we're discussing?
`
`Page 23
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`Page 25
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`1 A. Okay.
`2 Q. So assuming that you're motivated to do that,
`3 first you note in paragraph 66 that Itou simply
`4 welds its push wire to its metal collar, right?
`5 A. Well, you say "simply." I don't know what
`6 that means. But it's a welding of those two
`7 elements is what is taught in Itou. First there's
`8 a little bit of a short flattening and then a
`9 welding.
`10 Q. Okay. Is welding as what's taught there, is
`11 that what you would do if you were, in fact,
`12 motivated to make this device of Itou but using
`13 the Ressemann collar?
`14 A. I haven't thought about what I would do.
`15 Q. Well, I'm asking you as an engineer. I mean,
`16 given that teaching in Itou that you referenced
`17 here, if you were motivated to make this
`18 combination, is that something that you would do,
`19 is follow the welding teaching of Itou?
`20 A. Again, I don't know. I haven't thought about
`21 it. I mean, the collar of Ressemann is a very,
`22 very fragile device, and I don't know how easily
`23 that lends itself to welding. But I haven't
`24 thought about, you know, if I were to make this
`25 because I've never really been motivated to do
`
`1 A. And weld it to the Ressemann collar?
`2 Q. Yeah.
`3 A. Again, I have not given that really the
`4 proper thought to know whether one would do that,
`5 one of skill in the art would do that, or come up
`6 with another way, because it's a different -- I
`7 mean, Itou teaches what Itou has with his push rod
`8 and his half pipe, you know, of particular
`9 materials and dimensions and whatnot, and that's
`10 one thing. But now you're saying we're going to
`11 change that and modify it, and you're asking me on
`12 the fly would one be able to do that in a way that
`13 I think is different than Dr. Jones -- or
`14 Mr. Jones has even proposed. I can't answer that
`15 sitting here right now.
`16 Q. Okay. So as you sit here right now, you
`17 can't come up with a reason why it would not work;
`18 is that right?
`19 A. I don't know -- I can't -- I don't know if it
`20 would work or not. It may work; it may not work.
`21 Q. Okay. How about if you didn't do that and
`22 instead you're going to do more like what I think
`23 you were referring to as part of what was in
`24 Mr. Jones' declaration. If you were connecting
`25 the push wire to the Ressemann collar to create a
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`1 new device similar to Itou but with the Ressemann
`2 collar, would you put the push wire above the
`3 collar or below the collar?
`4 MR. WINKELS: Objection; form.
`5 THE WITNESS: Well, I think I've
`6 opined on that or something similar to that, that
`7 if anything, I think the motivation based on the
`8 teachings of Ressemann would suggest that that tab
`9 would be below the push rod. But I haven't -- but
`10 I haven't come up with a design, you know, of
`11 exactly how you would do that and form those
`12 connections, but at a high level, I believe that
`13 that's more -- it's more in line with the
`14 teachings of Ressemann, which, again, I still
`15 don't think that's really a realistic motivation,
`16 but assuming there's a motivation to somehow use
`17 the collar of Ressemann, I think that's a more
`18 logical way to at least try to use it. And it
`19 also keeps the tab portion from being exposed in
`20 the lumen of the guide catheter. It keeps it down
`21 below so as to not potentially interfere with
`22 devices that are being passed into the distal
`23 tubular portion.
`24 BY MR. MORTON:
`25 Q. Okay. So if you were combining Itou with the
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`Page 27
`1 Ressemann collar, you would make the choice to
`2 obstruct some of the pathway into the -- into Itou
`3 by putting the push wire on top; is that right?
`4 MR. WINKELS: Objection; form.
`5 THE WITNESS: No. I mean, you're
`6 asking me to come up with my own combination, and
`7 I don't think there's any motivation to do that,
`8 so I haven't come up with a combination that's
`9 fully designed and, you know, with all the details
`10 fleshed out. So I don't know what I would do.
`11 All I'm saying is that at a high
`12 level, at least on that one issue, I think it
`13 makes more sense to have the tab below. But you
`14 may -- to actually have a device that works, you
`15 may have to do a lot of other things that I
`16 haven't thought through. I've not gone through
`17 that because it doesn't make sense for me to go
`18 through that because I don't think there's even
`19 any motivation to do that.
`20 BY MR. MORTON:
`21 Q. Right. And I know you keep going back to the
`22 motivation, and I'm asking you again to set that
`23 aside. I'm trying to just ask you, as an
`24 engineer, assuming you had the motivation, what
`25 would you do?
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`Page 28
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`1 And let me ask it a different way.
`2 What would be -- what would be
`3 easier, to put the push wire above the collar or
`4 below the collar?
`5 A. I don't have an opinion on that. I don't
`6 know. I mean, you don't just make these decisions
`7 quickly. You put some time and thought into it,
`8 and I haven't done that.
`9 Q. Okay. So let's say then if you were
`10 attaching the push wire below the collar, if you
`11 were doing that as an engineer, would you use
`12 adhesive?
`13 A. I don't know. You could try to do that.
`14 Q. Would that be a normal thing to try, using
`15 some routine engineering skills?
`16 A. I don't know. I have not formed an opinion
`17 on that.
`18 Q. Can you think of any reason why it would be
`19 remotely difficult?
`20 A. I don't have a specific reason, but -- well,
`21 I have opined before that putting that tab on top,
`22 you know, does create some engineering challenges
`23 with, you know, potential peel mechanisms and
`24 whatnot. So I think there are some -- this is not
`25 just, oh, just slap some adhesive on. I think
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`Page 29
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`1 it's more than that. Is it more than -- you know,
`2 again, we're talking about a potential design a
`3 little bit in the ether here, and so, you know,
`4 exactly what that design is, I don't know.
`5 I haven't come up with all the
`6 details of that design. But without that it's
`7 hard to know whether, okay, well, would adhesive
`8 make sense here? Would welding make sense? Would
`9 soldering, brazing? I mean, these are all
`10 techniques that one could consider, but in the
`11 context of the entire device and what it's being
`12 asked to do, what its purpose is, it -- some of
`13 these may not be particularly technically
`14 difficult, but some of them actually may, and I
`15 don't know. I don't have a ready answer for
`16 those, sitting here right now.
`17 Q. Okay. But as you said, certainly adhesive
`18 was something that was well known, something a
`19 person of skill in the art would know and
`20 understand and be able to at least try; is that
`21 right?
`22 A. Yeah, I would say so.
`23 Q. Okay. And how about the next thing in the
`24 list, which I'm continuing in your list in
`25 paragraph 62, but the use of a polymer coating.
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`1 That was certainly known basically how to do that
`2 in 2005, right?
`3 A. Well, it was known in the context of various
`4 devices. You know, that doesn't mean that if it
`5 worked here, that it necessarily works for a
`6 different device, but it certainly was known in
`7 some contexts.
`8 Q. All right. And it's relatively
`9 straightforward for a person of skill in the art
`10 to do that?
`11 A. For some -- in some contexts it may be; in
`12 others it may not be. And, again, without knowing
`13 exactly all the details and intentions of this
`14 design that we're talking about in the ether here,
`15 I don't know whether that would be straightforward
`16 or easy to do that.
`17 Q. So you don't have an opinion as to whether
`18 that is a straightforward or easy step for a
`19 person of skill in the art as of 2005 in this
`20 context?
`21 MR. WINKELS: Objection; form.
`22 THE WITNESS: Again, I think in some
`23 context, that's straightforward; in others it may
`24 not be. I'm not saying that it is or it isn't. I
`25 don't have an opinion on that.
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`Page 32
`1 of that obstruction does make sense. I don't know
`2 that tapering to, you know, less than
`3 five-thousandths of an inch is what I would do.
`4 Q. You certainly knew how to taper a wire back
`5 in 2005; is that right?
`6 A. In a ge