Yita LLC vs
`
`MacNeil IP LLC
`
`In the Matter Of:
`
`PAUL E. KOCH, PH.D.
`
`March 02, 2021
`
`MacNeil Exhibit 2039
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
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`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`
`
`MacNeil IP LLC
`
`In the Matter Of:
`
`PAUL E. KOCH, PH.D.
`
`March 02, 2021
`
`MacNeil Exhibit 2039
`
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 1
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`
`
`· · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
`
`· · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
`
`YITA LLC,· · · · · · · · ·)
`· · · · · · · · · · · · · )
`· · · · · Petitioner,· · ·)· Case IPR2020-01142
`· · · · · · · · · · · · · )
`VS.· · · · · · · · · · · ·)
`· · · · · · · · · · · · · )
`MACNEIL IP LLC,· · · · · ·)
`· · · · · · · · · · · · · )
`· · · · · Patent Owner,· ·)
`
`· · · · · · · · · ·ORAL DEPOSITION
`· · · · · · · · · · · · ·OF
`· · · · · · · · ·PAUL E. KOCH, PH.D.
`· · · · · · · · · · MARCH 2, 2021
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 2
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`
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`2
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`· ·ORAL DEPOSITION OF PAUL E. KOCH, PH.D.,
`
`produced as a witness at the instance of the
`
`Patent Owner and duly sworn, was taken in the
`
`above styled and numbered cause on
`
`March 2, 2021, from 8:00 a.m. to 3:46 p.m.,
`
`before KATERI A. FLOT-DAVIS, CSR, CCR in and
`
`for the State of Texas, reported by machine
`
`shorthand, pursuant to the Federal Rules of
`
`Civil Procedure and the provisions stated on
`
`the record herein.
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 3
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`
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`· · · · · · A P P E A R A N C E S
`
`3
`
`FOR THE PETITIONER:
`
`MARK WALTERS, ESQ.
`Lowe, Graham, Jones, PLLC
`701 Fifth Avenue
`Ste. 4800
`Seattle, Washington 98104
`walters@lowegrahamjones.com
`
`R. WILSON TREY POWERS, ESQ.
`Stern Kessler Goldstein & Fox
`1100 New York Avenue NW
`Ste. 600
`Washington DC 20005
`tpowers-PTAB@sternkessler.com
`
`FOR PATENT OWNER, MACNEIL IP, LLC:
`
`DAVID G. WILLE, ESQ.
`Baker Botts, L.L.P.
`2001 Ross Avenue
`Ste. 900
`Dallas, Texas 75201
`david.wille@bakerbotts.com
`
`ALSO PRESENT:
`
`Heriberto Garcia, Document Technician
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 4
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`
`
`· · · · · · · · · INDEX
`
`4
`
`· · · · · · · · · · · · · · · · · · · · ·PAGE
`
`Appearances........................· · · ·3
`
`PAUL E. KOCH, PH.D.
`
`Examination by Mr. Wille...........· · · · 7
`
`Signature and Changes..............· · · ·326
`
`Reporter's Certificate.............· · · ·328
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 5
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`
`
`· · · · · · · · · ·EXHIBITS
`
`5
`
`NO.· · · · · DESCRIPTION· · · · · · · · ·PAGE
`
`Exhibit 1003· ·Declaration of Paul
`· · · · · · · ·E. Koch, Ph.D. in
`· · · · · · · ·Support of Petition for
`· · · · · · · ·Inter Partes Review of
`· · · · · · · ·U.S. Patent 8,833,834...· · 14
`
`Exhibit 1003· ·Declaration of Paul
`· · · · · · · ·E. Koch, Ph.D. in
`· · · · · · · ·Support of Petition for
`· · · · · · · ·Inter Partes Review of
`· · · · · · · ·U.S. Patent 8,382,186...· · 134
`
`Exhibit 1005· ·Certificate of
`· · · · · · · ·Translation of John E.
`· · · · · · · ·Dawson, executed on
`· · · · · · · ·27 April 2020...........· · 175
`
`Exhibit 1006· ·United States Patent
`· · · · · · · ·Application Publication
`· · · · · · · ·US 2002/0045029,
`· · · · · · · ·April 18, 2002..........· · 57
`
`Exhibit 1007· ·Second Edition
`· · · · · · · ·Thermoforming, A Plastics
`· · · · · · · ·Processing Guideline by
`· · · · · · · ·G. Gruenwald............· · 46
`
`Exhibit 1032· ·Curriculum Vitae of
`· · · · · · · ·Paul E. Koch............· · 17
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
`Page 6
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`6
`
`Exhibit 1035· ·United States Patent,
`· · · · · · · ·Hemmelgarn et al.,
`· · · · · · · ·Patent Number 6,058,618,
`· · · · · · · ·May 9, 2000.............· ·306
`
`Exhibit 2012· · United States Patent,
`· · · · · · · · Yang, Patent Number
`· · · · · · · · 6,261,667, July 17,
`· · · · · · · · 2001...................· ·284
`
`Exhibit 2023· ·Chinese Patent
`· · · · · · · ·Application 87212432....· ·290
`
`Exhibit 2030· ·Photograph..............· ·186
`
`MacNeil Exhibit 2039
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`Page 7
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`· · · · · · P R O C E E D I N G S
`
`7
`
`· · · · · · ·PAUL E. KOCH, PH.D.,
`
`having been first duly sworn, testified as
`
`follows:
`
`· · · · · · · · ·EXAMINATION
`
`BY MR. WILLE:
`
`· · · Q.· ·Please state your name.
`
`· · · A.· ·My name is Paul Koch.
`
`· · · Q.· ·And Dr. Koch, where do you reside?
`
`· · · A.· ·9762 Broadway Drive, Chagrin Falls,
`
`Ohio.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And you've had your deposition
`
`taken before, correct?
`
`· · · A.· ·That is correct.
`
`· · · Q.· ·Okay.
`
`· · · · · ·So you understand the basic rules
`
`of a deposition?
`
`· · · A.· ·Right.
`
`· · · Q.· ·If there's any question that you
`
`think is unclear for a reason, tell me what
`
`you think is unclear about it and I'll be glad
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
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`
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`to rephrase it.· Otherwise, I'll assume you've
`
`8
`
`understood the question.
`
`· · · · · ·Can we agree to that?
`
`· · · A.· ·Yes.
`
`· · · Q.· ·And are you under the influence of
`
`any medication today?
`
`· · · A.· ·No, I am not.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Anything else that would affect
`
`your ability to testify fully and accurately
`
`today?
`
`· · · A.· ·No.· There's nothing else.
`
`· · · Q.· ·Okay.
`
`· · · · · ·What is your hourly rate in this
`
`matter?
`
`· · · A.· ·I think that's in my deposition.
`
`It's 325 or 375.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Are you receiving any compensation
`
`besides your hourly billing in this case?
`
`· · · A.· ·No, I am not.
`
`· · · Q.· ·How many hours have you spent total
`
`in this case so far, approximately?
`
`· · · A.· ·Well, I -- my colleague logs all
`
`that in, so I'm going to have to guess and say
`
`MacNeil Exhibit 2039
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`9
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`40 to 60.
`
`· · · Q.· ·40 to 60 hours?
`
`· · · A.· ·Right.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And that -- that includes your time
`
`spent on all four of the IPRs; is that
`
`correct?
`
`· · · A.· ·Yes.
`
`· · · Q.· ·Okay.
`
`· · · · · ·MR. WILLE:· Just for a second, let
`
`· · · me talk to Mr. Walters for a second.
`
`· · · · · ·Mr. Walters, by agreement, this
`
`· · · deposition is for IP 2020-1139 and
`
`· · · 2020-1142, correct?
`
`· · · · · ·MR. WALTERS:· That's correct.
`
`· · · · · ·MR. WILLE:· Okay.
`
`· · · · · ·Rather than doing two separate
`
`· · · depositions, we're doing it in one
`
`· · · because the IPRs are related.
`
`· · · · · ·So -- okay.· I just wanted to
`
`· · · establish that on the record.
`
`· · · Q.· ·(BY MR. WILLE)· And, Dr. Koch, did
`
`you have any assistants helping you that also
`
`billed time in this matter?
`
`· · · A.· ·I have an associate in the office,
`
`MacNeil Exhibit 2039
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`10
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`Alex Scott, and I assume he billed something.
`
`· · · Q.· ·Okay.
`
`· · · · · ·What did Mr. Scott do for you in
`
`this case?
`
`· · · A.· ·His function is mostly clerical.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And do you have a standard hourly
`
`consulting rate when you do consulting for
`
`industry?
`
`· · · A.· ·It's been varying.· A lot of it --
`
`no, I don't -- I don't think there is a
`
`standard.· We take each case one-by-one.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you been an expert for the
`
`Sterne Kessler firm before?
`
`· · · A.· ·No, I have not.
`
`· · · Q.· ·Have you been an expert for
`
`Mr. Walters before?
`
`· · · A.· ·No, I have not.
`
`· · · Q.· ·Have you been an expert for Yita
`
`before?
`
`· · · A.· ·For -- I'm sorry -- who?
`
`· · · Q.· ·Yita.· The petitioner.
`
`· · · A.· ·No, I have not.
`
`· · · Q.· ·Okay.
`
`MacNeil Exhibit 2039
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`
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`· · · · · ·Did I pronounce that incorrectly?
`
`· · · A.· ·I probably -- it's subject to
`
`11
`
`interpretation.
`
`· · · Q.· ·Okay.
`
`· · · A.· ·But I certainly understood who you
`
`meant the second time.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you been a consultant for
`
`Genron before?
`
`· · · A.· ·No, I have not.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Sir, do you own any WeatherTech
`
`products?
`
`· · · A.· ·Let me think about this.
`
`· · · · · ·Yes, I do.
`
`· · · Q.· ·Do you own any WeatherTech floor
`
`liners?
`
`· · · A.· ·Yes, I do.
`
`· · · Q.· ·For what vehicle?
`
`· · · A.· ·I have a vacation car and it's a
`
`Toyota Rav4.
`
`· · · Q.· ·Why do you call it a vacation car?
`
`· · · A.· ·It's at my vacation house.
`
`· · · Q.· ·Oh, I see.· Okay.
`
`· · · · · ·And that's in the Virgin Islands,
`
`MacNeil Exhibit 2039
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`12
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`where you're located today?
`
`· · · A.· ·That is correct.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you have any other WeatherTech
`
`floor liners?
`
`· · · A.· ·No I don't.
`
`· · · Q.· ·Okay.
`
`· · · · · ·When did you get the WeatherTech
`
`floor liners for your Toyota Rav4?
`
`· · · A.· ·It was a gift two Christmases ago.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Who gave you the gift?
`
`· · · · · ·MR. WALTERS:· Object --
`
`· · · · · ·(Simultaneous speaking.)
`
`· · · · · ·THE WITNESS:· -- (inaudible) --
`
`· · · · · ·MR. WALTERS:· -- relevance.
`
`· · · · · ·THE REPORTER:· I didn't hear the
`
`· · · answer.
`
`· · · · · ·THE WITNESS:· My son.
`
`· · · · · ·THE REPORTER:· Thank you.
`
`· · · Q.· ·(BY MR. WILLE)· And have you been
`
`happy with those WeatherTech floor mats?
`
`· · · · · ·MR. WALTERS:· Same objection.
`
`· · · · · ·THE WITNESS:· Well, I really
`
`· · · haven't thought about it, frankly.
`
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`13
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`· · · They're here.
`
`· · · Q.· ·(BY MR. WILLE)· Okay.
`
`· · · · · ·Did you talk with any other experts
`
`in the field before forming any of your
`
`opinions in this case?
`
`· · · A.· ·No, I did not.
`
`· · · Q.· ·Did you talk with any employees of
`
`Yita in this case?
`
`· · · A.· ·No, I did not.
`
`· · · Q.· ·Did you talk with any employees of
`
`Genron?
`
`· · · A.· ·No, I did not.
`
`· · · Q.· ·Are you familiar with an entity
`
`called Sheng Keon?
`
`· · · A.· ·No, I'm not.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Did you talk with anyone who
`
`designs floor mats before rendering your
`
`opinions in this matter?
`
`· · · A.· ·No, I did not.
`
`· · · Q.· ·I understand you have in front of
`
`you hard copies of the petitioner's exhibits
`
`in this matter -- in both of these matters.
`
`· · · A.· ·Yes, I do.
`
`· · · Q.· ·Okay.
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
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`14
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`· · · · · ·For simplicity, I'm just going to
`
`refer to "this matter" or "this case" during
`
`this deposition.
`
`· · · · · ·And you understand that refers to
`
`both IPRs 1139 and 1142.
`
`· · · · · ·Can we agree to that?
`
`· · · A.· ·Yes.
`
`· · · Q.· ·Okay.
`
`· · · · · ·So I'm going to ask you questions
`
`throughout this deposition regarding
`
`Exhibit 1003.· And because you have hard
`
`copies of those -- you know, I may bring it up
`
`on the screen at times, but because you have a
`
`hard copy, just for sake of efficiency I
`
`probably won't do that very much.· But you'll
`
`want to have in front of you Exhibit 1003 in
`
`both IPRs 1139 and 1142.
`
`· · · · · ·(Exhibit No. 1003 from IPR 1139
`
`· · · Marked.)
`
`· · · Q.· ·(BY MR. WILLE)· Do you have those
`
`documents there?
`
`· · · A.· ·I have them right behind my iPad.
`
`· · · Q.· ·Okay.
`
`· · · · · ·So Exhibit 1003 in IPR 1139 is a
`
`declaration that you signed for that IPR; is
`
`MacNeil Exhibit 2039
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`15
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`that correct?
`
`· · · A.· ·It is correct.
`
`· · · Q.· ·And Exhibit 1003 in IPR 1142 is a
`
`declaration that you signed with respect to
`
`IPR 1142, correct?
`
`· · · A.· ·Correct.
`
`· · · Q.· ·Are you aware of any statements in
`
`either of those declarations that require
`
`correction?
`
`· · · A.· ·No, I am not.
`
`· · · Q.· ·Okay.
`
`· · · · · ·So there's no statements in either
`
`of your declarations that you need to change;
`
`is that right?
`
`· · · A.· ·I can't think of any right now.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Who participated in creating your
`
`declaration?
`
`· · · A.· ·Well, it's my work and I worked
`
`with counsel.· And I'm not much of a typist so
`
`I usually dictate and Alex Scott will take
`
`down what I say.
`
`· · · Q.· ·Okay.
`
`· · · · · ·What lawyers participated in the
`
`drafting of your declaration?
`
`MacNeil Exhibit 2039
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`16
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`· · · · · ·MR. WALTERS:· Objection.
`
`· · · Foundation.
`
`· · · · · ·THE WITNESS:· I've worked most
`
`· · · closely with Mark Walters on this.
`
`· · · Q.· ·(BY MR. WILLE)· Okay.
`
`· · · · · ·Anyone else that you can recall?
`
`· · · A.· ·I've had some sessions with Trey,
`
`who's on.
`
`· · · Q.· ·That's Trey Powers?
`
`· · · A.· ·Yes, it is.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Anyone else you can recall?
`
`· · · A.· ·Not at this moment.
`
`· · · Q.· ·Who -- who typed your declaration?
`
`· · · A.· ·It was the -- my clerical guy, Alex
`
`Scott.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Did you personally verify that each
`
`of the citations in your declarations were
`
`accurate?
`
`· · · A.· ·I read them so I'm going to assume
`
`they're accurate.· I saw --
`
`· · · Q.· ·Okay.
`
`· · · A.· ·-- nothing that would lead me
`
`another way.
`
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`· · · Q.· ·Okay.
`
`· · · · · ·And did you check each quotation of
`
`an exhibit to your declaration to be sure the
`
`quotations were accurate?
`
`· · · A.· ·As you know, we had a French
`
`translation so I was checking against the
`
`translation.· I don't speak French.
`
`· · · Q.· ·Okay.
`
`· · · · · ·You don't speak or read French,
`
`correct?
`
`· · · A.· ·That is correct.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you read or speak any foreign
`
`language?
`
`· · · A.· ·A little bit of German, a little
`
`bit of Spanish.
`
`· · · Q.· ·Any others?
`
`· · · A.· ·No.
`
`· · · Q.· ·Okay.
`
`· · · · · ·You supplied a resume, CV, with
`
`your declaration, which is Exhibit 1032 in
`
`both IPRs; is that correct?
`
`· · · A.· ·Yes.
`
`· · · · · ·(Exhibit No. 1032 Marked.)
`
`· · · Q.· ·(BY MR. WILLE)· Okay.
`
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`· · · · · ·I noted on your resume that you
`
`have several -- you're an inventor on several
`
`18
`
`United States patents.
`
`· · · · · ·Is that correct?
`
`· · · A.· ·It is correct.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Are any of your patents on floor
`
`mats or floor trays?
`
`· · · A.· ·There was a process on
`
`co-extrusion, and the product of that could be
`
`used for floor trays.
`
`· · · Q.· ·Okay.
`
`· · · · · ·But nothing on -- nothing on the
`
`design of a floor tray or a floor mat, right?
`
`· · · A.· ·That's correct.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you have any patents on making
`
`molds?
`
`· · · A.· ·No, I don't have any patents on
`
`making molds.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you have any patents on
`
`thermoforming?
`
`· · · A.· ·Way back in my early history I
`
`filed for something when I was working for
`
`MacNeil Exhibit 2039
`Yita v. MacNeil IP, IPR2020-01139
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`19
`
`Standard Oil, and I don't know if they
`
`followed through on it.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And what -- just briefly describe
`
`what that -- what that concerned.
`
`· · · A.· ·It was a device to help prevent web
`
`forming or thinning on a thermoform part.
`
`· · · Q.· ·Okay.
`
`· · · A.· ·I think it was mid-'70s.
`
`· · · Q.· ·Do any of your patents concern
`
`making items from rubber?
`
`· · · A.· ·"Rubber" is such a generic term.
`
`I'm not sure that they're limited.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Let me -- let me maybe even broaden
`
`the term further.
`
`· · · · · ·Do any of your patents concern
`
`making items from thermal set materials?
`
`· · · A.· ·Well, we worked on a process, but
`
`no, I don't think any of the patents do.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do any of your patents concern
`
`devices for three-dimensional modeling of a
`
`surface?
`
`· · · A.· ·No.· They don't.
`
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`20
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`· · · Q.· ·Okay.
`
`· · · · · ·Do any of your patents concern
`
`devices for three-dimensional modeling of a
`
`surface?
`
`· · · A.· ·No, they don't.
`
`· · · Q.· ·Okay.
`
`· · · · · ·You've written a number of
`
`technical papers over your career, correct?
`
`· · · A.· ·That is correct.
`
`· · · Q.· ·Some of which are published and
`
`some of which you presented at industry
`
`conferences, correct?
`
`· · · A.· ·That is correct.
`
`· · · Q.· ·Do any of your papers concern floor
`
`mats or floor trays?
`
`· · · A.· ·As -- as you know, in academia, a
`
`lot of papers have coauthors, which were my
`
`students.
`
`· · · · · ·So there's quite a few.· I don't
`
`recall specifically that there was
`
`specifically something on floor trays.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Or floor mats?
`
`· · · A.· ·Or floor mats.
`
`· · · Q.· ·Okay.
`
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`· · · · · ·Do any of your papers concern
`
`processes for making molds?
`
`· · · A.· ·I would have to think about that
`
`one.· There was a casting process -- I don't
`
`know if -- there was a casting process, and
`
`I'm not sure that was presented.
`
`· · · · · ·So at this moment I can't think of
`
`any.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you know whether any of your
`
`papers concerned thermoforming?
`
`· · · A.· ·We presented at the thermoforming
`
`conference.· It was one of my students, and
`
`I'm not sure that I'm listed as a coauthor.
`
`· · · · · ·And we did another senior project
`
`on thermoforming.
`
`· · · · · ·I would have to go through the list
`
`of my papers to be completely accurate.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you recall what the subject of
`
`your student's presentation was on
`
`thermoforming?
`
`· · · A.· ·Yeah.· He was -- he was funded by
`
`the thermoforming division to look at
`
`thermoforming in China.
`
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`· · · Q.· ·What do you mean by "looking at
`
`thermoforming in China"?
`
`· · · A.· ·Well, he was trying to do an
`
`assessment of the state of the art.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Any other papers that you recall
`
`you may have been involved with, with respect
`
`to thermoforming?
`
`· · · A.· ·Like I say, there was a lot of
`
`publications and -- you know, I can go through
`
`my vita, but I can't think of any right now.
`
`But there may have been one or two.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you -- did any of your papers
`
`concern making items from thermoset materials?
`
`· · · A.· ·Yes.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And can you give some examples of
`
`those?
`
`· · · A.· ·We were developing a laminate
`
`structure in the thermoforming -- in the -- in
`
`the compression molding process.· And we
`
`published that in the annual technical
`
`conference of plastics engineers.
`
`· · · Q.· ·Do you recall generally what that
`
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`23
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`laminate structure -- what the layers of the
`
`laminate structure were?
`
`· · · A.· ·One was a polyester and I think the
`
`other was a melamine.
`
`· · · Q.· ·And why did you choose compression
`
`molding for that laminate structure rather
`
`than thermoforming?
`
`· · · A.· ·Melamine lends itself to
`
`compression molding; simplest shapes.
`
`· · · Q.· ·And Please explain that.
`
`· · · A.· ·Compression molding is an open mold
`
`technique, and plates normally don't have
`
`complicated features, so it lends itself to
`
`compression molding.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you written any papers
`
`regarding three-dimensional modeling of a
`
`surface?
`
`· · · A.· ·No, I don't think so.
`
`· · · Q.· ·Have you written any papers
`
`concerning coordinate measure machines?
`
`· · · A.· ·Coordinate measuring machines?
`
`· · · · · ·No, I --
`
`· · · · · ·(Simultaneous speaking.)
`
`· · · Q.· ·Yes.
`
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`· · · A.· ·-- haven't.· I have not written any
`
`papers on coordinate measuring machines.
`
`· · · Q.· ·And you were a professor at Penn
`
`State University; is that correct?
`
`· · · A.· ·I still am an emeritus professor at
`
`Penn State.
`
`· · · Q.· ·Okay.
`
`· · · · · ·How many years have you been a
`
`professor at Penn State University?
`
`· · · A.· ·Over 30.
`
`· · · Q.· ·How many different classes did you
`
`teach over those 30 years, approximately?
`
`· · · · · ·MR. WALTERS:· Object to form.
`
`· · · · · ·THE WITNESS:· A dozen.
`
`· · · Q.· ·(BY MR. WILLE)· Did you ever teach
`
`a class focused on thermoforming?
`
`· · · A.· ·It was part of the -- one of the
`
`classes.
`
`· · · Q.· ·Which class was it?
`
`· · · A.· ·It was part of part design and --
`
`oh, it was part of plastics packaging.· So I
`
`guess two classes covered thermoforming.
`
`· · · Q.· ·And approximately how much time in
`
`those classes was spent on thermoforming?
`
`· · · A.· ·Oh, probably, in part design, maybe
`
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`25
`
`25 percent.· In packaging, probably
`
`50 percent.
`
`· · · Q.· ·Did you ever do any research on
`
`thermoforming?
`
`· · · · · ·MR. WALTERS:· Just object to form.
`
`· · · · · ·THE WITNESS:· I -- I can't recall
`
`· · · specifically.· We did research every
`
`· · · day.· Students did research every day,
`
`· · · so...
`
`· · · Q.· ·(BY MR. WILLE)· Yeah.· I'm talking
`
`about you personally.
`
`· · · · · ·Did you personally ever do any
`
`research on thermoforming?
`
`· · · A.· ·Well, yes, I did, back in the days
`
`when I was working for Standard Oil.
`
`· · · Q.· ·And what years were those?
`
`· · · A.· ·'72 to -- the thermoforming was
`
`probably '72 to '76.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And what -- what was the nature of
`
`your research in thermoforming at Standard
`
`Oil?
`
`· · · A.· ·We were trying to develop new
`
`products using thermoforming.· And Standard
`
`Oil was commercializing a new resin and there
`
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`was very little known about potential
`
`26
`
`applications.
`
`· · · Q.· ·Okay.
`
`· · · · · ·What kinds of products were you
`
`trying to develop?
`
`· · · A.· ·Well, that was wide open.· We were
`
`looking just for new applications for their
`
`material.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Was there any particular products
`
`that Standard Oil actually developed and sold?
`
`· · · A.· ·Standard Oil was in the process of
`
`selling plastic resin, not specific products.
`
`· · · Q.· ·Okay.
`
`· · · · · ·So you were experimenting with a
`
`resin that could be used to create thermoform
`
`products?
`
`· · · A.· ·I was experimenting in developing
`
`those projects.
`
`· · · · · ·Standard Oil would be giving that
`
`technology to potential suppliers who would
`
`buy their resins.· So we needed a commercial
`
`process that we could give to them.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have -- have you ever researched
`
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`the development of a product that was molded
`
`27
`
`using thermoforming?
`
`· · · A.· ·Yes.
`
`· · · Q.· ·And which product was that?
`
`· · · A.· ·The first one that comes to mind is
`
`we worked with Oscar Meyer, the meat company,
`
`and we had to develop sheets and thermoforming
`
`process for that.
`
`· · · Q.· ·And where -- where did you do that
`
`work?
`
`· · · A.· ·At Standard Oil, in their research
`
`center.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And what were the -- what were
`
`the -- what the thermoform product you
`
`developed for Oscar Meyer used for?
`
`· · · A.· ·They used to have these large
`
`sheets of containers for their meat products.
`
`I'm sure you would recognize the distinctive
`
`yellow Oscar Meyer bologna packages.· They
`
`would do those, and I think it was three foot
`
`wide by three foot square, something like
`
`that.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you consider that to be
`
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`28
`
`thin-gauge thermoforming?
`
`· · · A.· ·There was a varying degree of
`
`gauges, gauge thicknesses, used, because they
`
`set the life -- the -- how long you can store
`
`the meat.· Thicker, you can store longer.
`
`· · · Q.· ·Did you ever work on a heavy gauge
`
`thermoform product?
`
`· · · A.· ·Let's see.
`
`· · · · · ·By "heavy gauge," can you be more
`
`specific?
`
`· · · Q.· ·What does "heavy gauge" mean to
`
`you, as an expert?
`
`· · · A.· ·There -- heavy gauges in lots of
`
`circles are over 60/1000 of an inch up to
`
`higher than that.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Using your definition, did you work
`
`on a heavy gauge thermoform product?
`
`· · · A.· ·Yes, I did.
`
`· · · Q.· ·And which product was that?
`
`· · · A.· ·The last one was a very
`
`complicated, twin sheet thermoforming gas
`
`tank --
`
`· · · Q.· ·And who was --
`
`· · · · · ·(Simultaneous speaking.)
`
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`· · · A.· ·-- (inaudible) --
`
`· · · Q.· ·-- that for?
`
`· · · A.· ·-- automotive -- pardon me?
`
`· · · Q.· ·Who was that for?
`
`· · · A.· ·Let's see.· They were a contractor
`
`so they did it for NISI, and I think it was
`
`Hyundai.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And when did you do that work?
`
`· · · A.· ·That was about two and a half years
`
`ago.
`
`· · · Q.· ·Were you working on that as a
`
`consultant?
`
`· · · A.· ·Yes, I was.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you ever used a coordinate
`
`measure machine?
`
`· · · A.· ·Yes, I have.
`
`· · · Q.· ·And what -- what was the purpose of
`
`your use of the coordinate measure machine?
`
`· · · A.· ·Well, coordinate measuring machines
`
`have a long history and they've evolved.· And
`
`I think we had an early version of it in the
`
`'70s, and the university had one.
`
`· · · · · ·And I used to teach how to run
`
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`30
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`coordinate measuring machines in one of my
`
`classes, so I would be using it on a weekly
`
`basis.
`
`· · · Q.· ·Did you ever use one to design a
`
`product?
`
`· · · A.· ·Oh, yeah.· Yes.· Absolutely.
`
`· · · Q.· ·When did you first use one to
`
`design a product?
`
`· · · A.· ·Oh.
`
`· · · · · ·It was in my Penn State career, but
`
`I can't remember what semester.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Are you familiar with an acronym,
`
`DMC?
`
`· · · A.· ·Are you referring to direct machine
`
`control?
`
`· · · Q.· ·Well, I was going to ask you what
`
`the -- what the acronym stands -- means to
`
`you.
`
`· · · A.· ·Well, DMC normally means direct
`
`machine control.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And what is that?
`
`· · · A.· ·So it's a technique where you could
`
`take, say, the output of a coordinate
`
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`
`
`measuring machine and put it into a computer
`
`controlled mill and mill your molds.
`
`· · · · · ·And I taught that for at least ten
`
`31
`
`years, also.
`
`· · · Q.· ·Okay.
`
`· · · · · ·What -- what would you be -- in
`
`that process, what would you be using the
`
`coordinate machine to measure?
`
`· · · A.· ·Well, there -- there's really no
`
`limit to the coordinate measuring machine. I
`
`suppose the limits are the table.· The table
`
`was probably 18 inches square, so any part
`
`smaller than 18 inches could be measured.
`
`· · · Q.· ·Oh.· I asked a bad question.
`
`· · · · · ·You said -- you said you taught
`
`this.
`
`· · · · · ·So what were you teaching people to
`
`do with the coordinate measuring machine?
`
`· · · A.· ·Measure parts.· Measure parts.
`
`· · · Q.· ·Okay.
`
`· · · A.· ·It's a measuring device.
`
`· · · Q.· ·Okay.
`
`· · · · · ·As I understood this -- and correct
`
`me if I'm wrong -- what you're saying is you
`
`would teach your students how to use a
`
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`32
`
`coordinate measure machine to take
`
`measurements of a part and then to use that
`
`data to fabricate a mold to make a copy of
`
`that part.
`
`· · · · · ·Is that right?
`
`· · · A.· ·Well, it's not exactly right.
`
`Because you can measure a male model and use a
`
`technique called Boolean algebra, make a
`
`female model that would make the male model.
`
`So you have to remember whether it's male or
`
`female.
`
`· · · · · ·The coordinate measuring machine
`
`gives you the ability to make a mold, a cavity
`
`or a core.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Was the technique you were
`
`teaching, though, to take an existing part and
`
`make some measurements on it and then create a
`
`mold to make that same part?
`
`· · · A.· ·In some cases, yes.
`
`· · · Q.· ·Okay.
`
`· · · · · ·What -- what are other examples?
`
`· · · · · ·You said "in some cases."
`
`· · · A.· ·In some cases you simply want to
`
`know what size a part is, maybe the tolerance,
`
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`
`if you're measuring, you know, three or four
`
`different parts of essentially the same
`
`33
`
`function.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you ever -- have you ever used
`
`a laser scanner to make a three-dimensional
`
`model of a surface?
`
`· · · A.· ·That was the last technology we
`
`had, yes.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And have you ever programmed a 3-D
`
`milling machine?
`
`· · · A.· ·Oh, yeah.· Yes, I have.· And that's
`
`another one of those things that I taught for
`
`ten years.
`
`· · · Q.· ·What language did you use when you
`
`did that?
`
`· · · A.· ·Well, MasterCam was the first one,
`
`but we then moved to -- the cam packages
`
`changed, so I don't remember -- MasterCam was
`
`the -- was the first one, and then it evolved
`
`and I don't remember the sequential ones.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you ever used CNC machines?
`
`· · · A.· ·I'm sorry.· Could you repeat that,
`
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`please.
`
`· · · Q.· ·Yeah.
`
`· · · · · ·Have you ever used CNC machines?
`
`· · · A.· ·Yes.
`
`· · · · · ·I have used CNC machines.
`
`· · · Q.· ·And have you programmed CNC
`
`machines?
`
`· · · A.· ·Yes, I have.· And I've taught that.
`
`· · · Q.· ·What language did you use to
`
`program the CNC machines?
`
`· · · A.· ·Let's see.
`
`· · · · · ·MasterCam was used on some.· Then
`
`we used a machine language.· A couple of
`
`different ones.· I don't remember them all.
`
`· · · Q.· ·Have you ever tried to create a
`
`product to conform the product to an existing
`
`surface?
`
`· · · A.· ·Yes.
`
`· · · Q.· ·In what context?
`
`· · · A.· ·The same:· In -- in the teaching,
`
`you want to be able to match what you make to
`
`an existing, either, product or mold fit,
`
`finish.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And when did you first do that?
`
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`
`· · · A.· ·I don't have a specific date.
`
`· · · · · ·I worked with a connector company
`
`in Warren, Ohio, and that was probably
`
`15 years ago.· It could be 17, it could be 13.
`
`· · · Q.· ·Okay.
`
`· · · · · ·So somewhere in the 2005, 2006
`
`timeframe?
`
`· · · A.· ·Yeah.· It might have been earlier.
`
`It might have been late '90s.· It was -- let's
`
`see.
`
`· · · · · ·Pat was the guy's name.
`
`· · · · · ·I would have to -- you know, if you
`
`needed a specific date, I'm going to say late
`
`'90s, early 2000s.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Have you ever used a
`
`stereolithographic apparatus?
`
`· · · A.· ·I bought one.· I bought one of the
`
`first models.
`
`· · · Q.· ·Okay.
`
`· · · · · ·And what do you use that for?
`
`· · · A.· ·Well, we were using it to teach the
`
`concepts we're discussing.· We would make
`
`prototype parts.· The university owned it. I
`
`bought it.
`
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`· · · Q.· ·Okay.
`
`· · · A.· ·That --
`
`· · · · · ·(Simultaneous speaking.)
`
`· · · Q.· ·-- (inaudible) --
`
`· · · A.· ·I'm sorry.
`
`· · · Q.· ·Go ahead.
`
`· · · A.· ·That's probably 25 years ago now.
`
`We were very early in adapting
`
`stereolithography to our processes.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Let's talk about your expertise for
`
`a minute.
`
`· · · · · ·Do you consider yourself an expert
`
`in patent law?
`
`· · · A.· ·In patent law?
`
`· · · Q.· ·Yes.
`
`· · · A.· ·I'm not a lawyer.
`
`· · · Q.· ·But do you consider yourself an
`
`expert in patent law?
`
`· · · A.· ·I really don't know how to -- I've
`
`worked on lots of patents, but I don't
`
`consider myself an expert in some of the
`
`intricacies of patent law, no.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you consider yourself an expert
`
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`in thermoforming?
`
`· · · A.· ·Yes, I do.
`
`· · · Q.· ·Have you ever used one-sided vacuum
`
`molding?
`
`· · · A.· ·Yes, I have.
`
`· · · Q.· ·And have you ever created a
`
`thermoform product using a trilaminate?
`
`· · · A.· ·Yes, I have.
`
`· · · Q.· ·And what have you created using a
`
`trilaminate?
`
`· · · A.· ·Well, that's -- that's back to the
`
`Oscar Meyer trays.· That's the first one I
`
`did.
`
`· · · · · ·And I'm trying to think, the
`
`last -- the gas tanks.· They're a trilaminate,
`
`also.
`
`· · · · · ·So I don't know what that is;
`
`40-some years ago and two years ago, and stuff
`
`in between.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you consider yourself an expert
`
`on manufacturing items from rubber?
`
`· · · A.· ·You have to define "rubber."· It's
`
`a generic term.
`
`· · · Q.· ·Do you consider yourself an expert
`
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`
`on manufacturing items from thermoset
`
`material?
`
`· · · A.· ·Well, I taught the only class in
`
`the country in thermosets for over ten years,
`
`and I worked with consultants.
`
`· · · · · ·When I was with Standard Oil, we
`
`worked with thermosets.· I've always had an
`
`interest.· So I would consider myself an
`
`expert in thermosets.
`
`· · · Q.· ·Okay.
`
`· · · · · ·Do you consider yourself an expert
`
`on the design of floor mats?
`
`· · · A.· ·When I look at floor mats I look at
`
`them as plastic parts, and the techniques and
`
`technology that applies to them is applied
`
`over a wide range of products.
`
`· · · Q.· ·Okay.
`
`· · · · · ·But you, yourself, have never
`
`designed a floor mat or a floor tray, correct?
`
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