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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ___________________________________________________
` MEDTRONIC, INC., AND MEDTRONIC
` VASCULAR, INC.,
`
`Page 1
`
` 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)
` ___________________________________________________
`
`CONTAINS CONFIDENTIAL PORTIONS - ATTORNEYS' EYES ONLY
` REMOTE VIDEOTAPED DEPOSITION OF
` PAUL ZALESKY, Ph.D.
`
` DATE: January 25, 2021
`
` TIME: 9:58 a.m. (Eastern)
`
` PLACE: Veritext Virtual Videoconference
`
` PAGES: 1 to 211
` JOB NO.: MW 4402874
` REPORTED BY: Merilee Johnson, RDR, CRR, CRC, RSA
`
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`Page 2
`
`Page 4
`
`1 E X H I B I T S
` (Continued)
`
`2 3
`
` Exhibit 1908 Reissue Patent Application for ... 90
`4 Coaxial Guide Catheter for
`5 Interventional Cardiology
`6 Procedures
`7 Exhibit 1919 Declaration of Paul Zalesky ...... 10
`8 Submitted in Support of
`9 Petitioners' Oppositions to
`10 Patent Owner's Motions to Amend
`11 Exhibit 2071 Medtronic marketing: An .......... 161
`12 Extension of You, Telescope Guide
`13 Extension Catheter
`14 Exhibit 2197 Proximal SA Tracker Week 28....... 206
`15 Exhibit 2225 Declaration of Dr. Paul Zalesky .. 26
`16 in Opposition to Motion for
`17 Preliminary Injunction
`18 Exhibit 2234 United States Reissued Patent .... 108
`19 Patent No. US RE46,116 E, Date of
`20 Reissued Patent: August 23, 2016
`21 Exhibit 2235 Medtronic Telescope Guide ........ 165
`22 Extension Catheter, Clinical
`23 Evaluation Report
`24 MED000134_0001 to 0126
`25
`
`1 A P P E A R A N C E S
` (All appearing remotely via videoconference)
`
`23
`
` ON BEHALF OF THE PETITIONERS:
`4 ROBINS KAPLAN LLP
` BY: Emily J Tremblay, Esq
`5 Cyrus A Morton, Esq
` 800 LaSalle Avenue
`6 Suite 2800
` Minneapolis, Minnesota 55402
`7 Phone: (612) 349-8500
` Email: ETremblay@RobinsKaplan com
`8 Email: CMorton@RobinsKaplan com
`9
`10 ON BEHALF OF THE PATENT OWNERS:
`11 CARLSON, CASPERS, VANDENBURGH,
` LINDQUIST & SCHUMAN, PA
`12 BY: Joseph W Winkels, Esq
` 225 South Sixth Street
`13 Suite 4200
` Minneapolis, Minnesota 55402
`14 Phone: (612) 436-9600
` Email: JWinkels@CarlsonCaspers com
`
`15
`
`16
`
` -and-
`
` DORSEY & WHITNEY, LLP
`17 BY: Kenneth E Levitt, Esq
` 50 South Sixth Street
`18 Suite 1500
` Minneapolis,Minnesota 55402
`19 Phone: (612) 340-2600
` Email: Levitt Kenneth@Dorsey com
`
`20
`21 ALSO APPEARED:
`22 Greg Smock (Teleflex) (Until 1:28 p m )
` Jay Church (Videographer)
`
`23
`24
`25
`
`Page 3
`
`Page 5
`
`1 E X H I B I T S
` (Continued)
`
`2 3
`
` Exhibit 2237 Patent Owner's Contingent Motion . 46
`4 to Amend U.S. Patent RE 45,380
`5 Under 37 C.F.R. § 42.121
`6 Exhibit 2238 Patent Owner's Contingent Motion . 123
`7 to Amend U.S. Patent RE 45,776
`8 Under 37 C.F.R. § 42.121
`9 Exhibit 2239 Patent Owner's Contingent Motion . 134
`10 to Amend U.S. Patent 8,048,032
`11 Under 37 C.F.R. § 42.121
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`1 I N D E X
`
`2 3
`
` WITNESS: PAUL ZALESKY, Ph.D. PAGE
`4 Examination by Mr. Winkels....................... 7
`5 Examination by Ms. Tremblay......................207
`
`6 7
`
` SPECIAL INSTRUCTIONS:
`8 Page 166, Line 2
`9
`10 E X H I B I T S
`11
`12 EXHIBITS FIRST REFERRED TO: PAGE
`13 Exhibit 1001 United States Reissued Patent .... 120
`14 Patent No. US RE47,379 E, Date of
`15 Reissued Patent: May 7, 2019
`16 Exhibit 1830 Declaration of Paul Zalesky ...... 148
`17 Submitted in Connection with
`18 Petitioners' Replies to Patent
`19 Owner's Responses
`20 Exhibit 1842 Application Transmittal for ...... 23
`21 Coaxial Guide Catheter for
`22 Interventional Cardiology
`23 Procedures
`24
`25
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`Page 6
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`Page 8
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`1 (PROCEEDINGS, 01/25/2021, 9:58 a m.)
`2 THE VIDEOGRAPHER: Good morning. We
`3 are going on the record. The time is currently
`4 9:58 a m. This is Eastern Standard Time. Today's
`5 date is Monday, January 25, 2021.
`6 This is Media Unit No. 1 of the
`7 video-recorded deposition of Dr. Paul Zalesky.
`8 This is in the matter of Medtronic, Inc., et al.,
`9 versus Teleflex Innovations S.A.R.L. This is filed
`10 in the U.S. Patent and Trademark Office, Patent
`11 Nos. IPR2020-00126, 00127, 00128, 00129, 00130,
`12 00132, 00134, 00135, 00136, 00137, 00138.
`13 This deposition is being held remotely.
`14 The witness is currently located in East Greenwich,
`15 Rhode Island.
`16 My name is Jay Church from Veritext. I'm
`17 the videographer. The court reporter is Merilee
`18 Johnson. I'm not authorized to administer an oath.
`19 I'm not related to any party in the action nor am I
`20 financially interested in the outcome.
`21 If counsel has any objections to
`22 proceeding, please state them at the time of your
`23 appearance. And now if we could have counsel state
`24 your affiliations for the record and then, after
`25 which, the court reporter can swear in the witness.
`
`1 A. Yeah, I'm not seeing a date. I'm seeing
`2 "Date Modified" under the exhibits, but I'm not
`3 seeing the date of the actual share.
`4 Q. In the far-left window, do you have a bunch
`5 of folders that say "Depositions"? It should say,
`6 "Deposition of Dr. Paul Zalesky 1-25-2021."
`7 A. Just got to it, yeah.
`8 Q. Okay. Yeah. If you open up that folder --
`9 A. I'm sorry. No, these are January 8th.
`10 Q. January 8th.
`11 A. Let me try again. Oh, I've got one,
`12 January 24th. Got it. Okay. There.
`13 Q. Okay. Perfect. I'll generally refer to
`14 documents in hard copy, if you prefer to look at
`15 the documents in hard copy. But if you want to
`16 look on the screen, I'll put the documents in that
`17 Marked Exhibits folder as well for you. Okay?
`18 A. Okay.
`19 Q. All right. So you've had your deposition
`20 taken before, correct?
`21 A. Yes.
`22 Q. Yep. And you've had your deposition taken
`23 via Zoom before in this case with my colleague Tara
`24 Norgard, right?
`25 A. Yes.
`
`Page 7
`
`Page 9
`
`1 MR. WINKELS: Good morning. On behalf
`2 of patent owner, Joe Winkels with the Carlson
`3 Caspers firm. Also with me is Ken Levitt with the
`4 Dorsey & Whitney firm and Greg Smock from Teleflex.
`5 MS. TREMBLAY: Good morning. On behalf
`6 of petitioners, my name is Emily Tremblay with
`7 Robins Kaplan. Also with me is Cyrus Morton, also
`8 with Robins Kaplan.
`9 PAUL ZALESKY, Ph.D.,
`10 duly sworn, was examined and testified as follows:
`11 EXAMINATION
`12 BY MR. WINKELS:
`13 Q. Good morning, Dr. Zalesky. How are you?
`14 A. I'm good. How are you?
`15 Q. Very good.
`16 Do you have the Exhibit Share open as well
`17 as the hard-copy documents in front of you?
`18 A. I do, but it looks like exhibits from the
`19 last session or a previous session. I'm not sure.
`20 I'll try to refresh.
`21 Q. Yep. So if -- there's two folders,
`22 actually, for your name. One dated January 13th,
`23 one dated January 25th. On the left-hand side. If
`24 you can make sure you're in the January 25th
`25 folder.
`
`1 Q. Okay. So same process. As you've
`2 experienced before with these Zoom depositions,
`3 it's really important that you and I not speak over
`4 each other. So I will do my best to not interrupt
`5 you, and if you could do your best to not interrupt
`6 me, that'll make Merilee's job a lot easier as our
`7 court reporter.
`8 Does that sound fair?
`9 A. Yes.
`10 MR. WINKELS: It looks like Emily lost
`11 audio. Let's go off the record and try to get her
`12 connected to audio here.
`13 THE VIDEOGRAPHER: We're going off the
`14 record at 10:03 a m.
`15 (Break: 10:03 a m. to 10:04 a m.)
`16 THE VIDEOGRAPHER: We are going back on
`17 the record at 10:04 a m.
`18 BY MR. WINKELS:
`19 Q. Okay. Dr. Zalesky, so today we're talking
`20 about your opinions related to written description
`21 and the secondary considerations of copying. Okay?
`22 A. Yes.
`23 Q. And you submitted a couple declarations in
`24 this regard. The first one is Exhibit 1919; is
`25 that correct?
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`1 A. Yes.
`2 (Exhibit No. 1919 was introduced.)
`3 Q. And do you have Exhibit 1919 in front of
`4 you?
`5 A. I do.
`6 Q. Okay. We'll focus on your opinions in that
`7 declaration for the first part of today and then
`8 we'll transition to your second declaration later
`9 in the day.
`10 In connection with your Exhibit 1919, with
`11 that declaration, what did you review in support of
`12 that declaration?
`13 A. There was a brief, I believe. Probably two
`14 of them, one from different counsels, regarding
`15 suggested claim amendments. So that was the
`16 primary document that I reviewed. And the
`17 background to that including, I believe, a case
`18 special expert report.
`19 Q. Okay. Now, in this case you've also
`20 reviewed the five patents and claims that are at
`21 issue in these IPRs, right?
`22 A. My emphasis was on the '629 application and
`23 the '032 issue, as it was my understanding that
`24 that's where the -- I don't know if "baseline" is
`25 the correct term, but the original specifications
`
`1 the 2011-2012 time frame.
`2 Q. Okay. So let me just go through one by one
`3 because I do want to understand what you reviewed
`4 and what you haven't reviewed.
`5 Have you reviewed the entirety of the '032
`6 prosecution history?
`7 A. I don't believe I've seen the entire
`8 prosecution history.
`9 Q. Okay. Have you reviewed the entirety of
`10 the '380 prosecution history?
`11 A. The same answer. In each of these, I don't
`12 recall looking at the entire prosecution histories.
`13 Q. Okay. And just for the record, that's the
`14 same answer for the '776 patent, the '760 patent,
`15 and the '379 patent, correct?
`16 A. Yes.
`17 Q. Okay. Is the only portion of the
`18 prosecution history that you've reviewed are
`19 portions that were specifically given to you by
`20 counsel to review?
`21 A. That's my recollection, yes. And just to
`22 give you a very specific example, on page 19
`23 there's a citation regarding patent office claim
`24 rejection.
`25 So it's only that level of detail that I
`
`Page 11
`
`Page 13
`
`1 resided.
`2 Q. Okay. Did you look at the claims of the
`3 other patents in addition to the '032 patent?
`4 A. I would certainly have looked at those.
`5 It's been a while, quite honestly. But I did look
`6 at them and saw a lot of redundancy.
`7 Q. Okay. How about the prosecution histories
`8 for the five patents that are at issue in these
`9 IPRs. Have you reviewed the prosecution history
`10 for those five patents?
`11 A. I was given at some point a chart of the
`12 file history, and there was also a table on page 11
`13 of the application numbers, filing dates, and
`14 patent numbers at issue. But as I said earlier, I
`15 emphasized the '629 and '032 and didn't re-review
`16 in any detail the other patents -- or applications.
`17 Q. Okay. When I refer to "prosecution
`18 history," do you understand that I'm referring to
`19 the process by which the application is reviewed by
`20 the patent office and there's some correspondence
`21 that is generated as part of that process?
`22 A. I do. I'm familiar with that. I don't
`23 recall seeing a detailed prosecution history or
`24 detail. I do recall some specific excerpts, such
`25 as a hearing from the patent office, I believe, in
`
`1 reviewed.
`2 Q. Okay. So is it fair to say that the only
`3 portions of the prosecution history of the five
`4 patents you reviewed are the portions that you
`5 expressly discuss in your declaration,
`6 Exhibit 1919?
`7 A. Yes, that's correct.
`8 Q. Now, you also mention the motions to amend.
`9 Do you understand that there were motions to amend
`10 brought in each of the five -- strike that.
`11 Do you understand that there were motions
`12 to amend brought regarding each of the five patents
`13 at issue in this case?
`14 A. I don't remember explicitly seeing that,
`15 but that was my understanding, that the proposed
`16 amendments applied to the various patents.
`17 Q. Okay. And through your process of
`18 providing your opinions in this case, did you
`19 review all of the proposed amendments for the
`20 five patents in this case?
`21 A. I don't believe I did. You know, I'd have
`22 to go through each one, literally, one by one.
`23 And, of course, that's all in my declaration. So
`24 the specific amendments that I did review are as
`25 listed in the Substitute Claim section of my
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`Page 14
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`1 declaration.
`2 Q. Okay. And that's -- and paragraph 14 of
`3 your declaration, that's what I was kind of asking
`4 you about, is you said, "I have been asked to
`5 review the Root patents and patent owner's
`6 contingent motions to amend the Root patents..."
`7 And I just want to confirm that you did, in
`8 fact, look at all five of the motions to amend for
`9 the five patents that were at issue in the case.
`10 A. I believe so, yes.
`11 Q. Okay. Now, did you prepare to testify
`12 today, I take it?
`13 A. Yes. I had some preparation with counsel
`14 on -- this past Friday. And then over the weekend,
`15 I probably spent maybe an hour just reviewing my
`16 declaration.
`17 Q. Okay. Let's go to just the background part
`18 of your declaration. And I just want to understand
`19 just a little bit of your prior work because I know
`20 you've done a lot of work in the catheter area. So
`21 I just have a few questions about that.
`22 In paragraph 5 you discuss the advent --
`23 what I call the advent of interventional cardiology
`24 in the '70s and '80s; is that right?
`25 A. Yes.
`
`Page 15
`
`1 Q. Is that when you would say interventional
`2 cardiology started, is in the '70s?
`3 A. I probably wouldn't make that general of a
`4 statement. I was fortunate in my very first job in
`5 the medical industry to be at an American Heart
`6 meeting, I believe it was in Florida, when
`7 Dr. Andreas Grüntzig from Switzerland made a
`8 presentation in a very small meeting room about
`9 doing the very first what is now known as coronary
`10 angioplasty.
`11 So you could argue that -- I believe that
`12 was 1979. You could argue that was the initiation,
`13 but interventional cardiology, I think in general,
`14 is more of a 1980s event.
`15 Q. Okay. And it looks like at least as early
`16 as 1986 you started working directly in
`17 interventional cardiology; is that right?
`18 A. Actually a bit before that. So in 1984, as
`19 a vice president for a company called Meadox, I
`20 went over to Denmark, to a young company in a small
`21 town outside of Copenhagen and looked at guide
`22 catheters that were being fabricated for
`23 commercialization.
`24 So I would say starting in 1984. And then
`25 between 1984 and 1986, I worked at a fledgling
`
`Page 16
`1 division of Boston Scientific called Mansfield
`2 Scientific, which evolved into their interventional
`3 cardiology company. And during my tenure there as
`4 the head of R&D, I presented, for instance, to the
`5 panel at the FDA for Boston's first approval of its
`6 initial coronary angioplasty catheter.
`7 Q. And how long were you at Boston Scientific
`8 in that role?
`9 A. Approximately two years.
`10 Q. Then as we move on to paragraph 6, it looks
`11 like around 1986 you cofounded InterTherapy; is
`12 that right?
`13 A. Yes.
`14 Q. And with InterTherapy, were you still
`15 working and designing catheters and working in the
`16 cath lab?
`17 A. Pretty much so. It was a startup, which we
`18 thought was the only one in the world, dealing with
`19 what's called intravascular ultrasound. In other
`20 words, putting ultrasound technology into a
`21 catheter that could actually fit inside of a
`22 coronary artery.
`23 So the focus was clearly on
`24 angioplasty-related procedures in a cardiac cath
`25 lab.
`
`Page 17
`1 Q. Okay. And then it looks like around 1990,
`2 am I correct that you transitioned to Baxter, the
`3 Baxter company?
`4 A. Yes.
`5 Q. And with Baxter, were you working on
`6 catheters and catheter design as well?
`7 A. Baxter had a group called the
`8 CardioVascular Specialties group in Irvine,
`9 California, which is where I was located. And I
`10 had a dual role. I was VP of R&D for the
`11 cardiopulmonary bypass surgery division called
`12 Bentley, but I also was the point person for the
`13 various five divisions, one of which was called
`14 LIS, Least Invasive Surgery. And that was
`15 dedicated to interventional cardiology.
`16 I represented that company and regularly
`17 participated in their developments and their
`18 related activities to cardiology.
`19 Q. And did that include developments in
`20 catheter design and things of that nature?
`21 A. Yes.
`22 Q. Okay. And then in 1995 you founded the
`23 TherOx company; is that right?
`24 A. Yes.
`25 Q. And I believe you said that you were
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`Page 18
`1 working on catheters in your role at TherOx, right?
`2 A. It was more than catheters. It was also
`3 guidewires and some other devices. But the main
`4 focus was an intercoronary catheter for delivery of
`5 a very specialized solution to treat ischemia or
`6 myocardial pain associated with a heart attack.
`7 So, again, all the cardiac cath lab, all
`8 interventional cardiology.
`9 Q. Okay. And then in paragraph 10, you say,
`10 "In the 1995 to 2005 time period, myriad guide
`11 catheter configurations were developed and tested
`12 by many different companies, including
`13 multi-hardness bodies, multi-flexibility
`14 properties, various tip geometries and materials,
`15 and various lumen geometries."
`16 Did I read that right, in paragraph 10?
`17 A. Yes.
`18 Q. What did you mean by "multi-hardness
`19 bodies"?
`20 A. Several companies -- and I'm sure it
`21 included what is now Abbott, included Boston
`22 Scientific, probably included Medtronic or a
`23 company that it subsequently acquired or acquired
`24 during that time frame -- would develop what I call
`25 a multi-hardness catheter.
`
`Page 19
`1 And by that I mean the proximal portion --
`2 and that could be anywhere from, say, 20 percent to
`3 80 percent from the proximal hub, going distal --
`4 would be a relatively high-durometer or
`5 high-hardness polymer that was excluded. The
`6 rationale for that was to give it the pushability,
`7 or the push force, because of its relative
`8 stiffness.
`9 And then some more distal portion of that
`10 same catheter would utilize a different polymer
`11 hardness or durometer so that it would have
`12 inherently more flexibility and also be less
`13 traumatic when it was inserted into the
`14 cardiovascular anatomy.
`15 So that's one example. There were
`16 variations on a theme. I saw catheters that had
`17 three or four or even five different zones of
`18 hardness from proximal to distal end.
`19 Q. Okay. And you also refer to
`20 multi-flexibility properties. What do you mean by
`21 "multi-flexibility properties" in that
`22 paragraph 10.
`23 A. That's related to what I just described in
`24 terms of different hardness polymers. But in
`25 addition to the hardness of the polymers, you could
`
`Page 20
`1 modify the underlying braid or coil that gave it --
`2 the lumen support, so that the lumen would not
`3 collapse.
`4 And, for instance, you could have a coil
`5 with one pitch proximally and another pitch
`6 distally to enhance the distal flexibility while
`7 maintaining the relative proximal stiffness.
`8 Q. Okay. And in paragraph 10, you also refer
`9 to various materials. What are some of the various
`10 materials that were being used for catheter design
`11 in the 1995 to 2005 time period?
`12 A. It was literally all over the map. From
`13 stainless steel hypotubing to various versions of
`14 polyurethanes, which subsequently became what's
`15 commonly called PVACs these days, which is
`16 essentially an engineered polymer with selected
`17 properties. But also polyethylene; PVC,
`18 polyvinylchloride; and others.
`19 So it was a function of what properties
`20 were you actually looking for in terms of the
`21 material selected.
`22 Q. And would engineers in the field in that
`23 '95 to 2005 time frame, depending on what
`24 properties they were looking for, am I correct that
`25 they would change materials and/or change
`
`Page 21
`1 thicknesses of materials to ascertain or achieve
`2 those properties; is that right?
`3 A. Yes.
`4 Q. And so all this work that you're referring
`5 to designing catheters with multi-hardness bodies
`6 and multi-flexibility properties and different
`7 materials, that was all being done in the '95 to
`8 the 2005 time frame?
`9 A. Yes. I think it actually started well
`10 before that. Certainly in the latter '80s and
`11 through the '90s, but certainly through that time
`12 frame as well.
`13 Q. Okay. So by 2005, am I correct that the
`14 catheter field was pretty mature at that point?
`15 A. I would say very mature.
`16 Q. Okay. And there wasn't anything
`17 unpredictable about the field by 2005?
`18 MS. TREMBLAY: Objection. Form.
`19 A. I don't think I would make that kind of
`20 general statement. I mean, there are always new
`21 challenges. You know, different kinds of lesions
`22 that, for instance, in 1995 would end up going to
`23 bypass surgery because of their difficulty, whereas
`24 by 2005 the interventional cardiologist had
`25 new-and-improved tools, including better stents,
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`Page 24
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`1 lower-profile devices, and so forth.
`2 Q. Based on what you said about catheter
`3 design kind of starting in the 1980s, as we move
`4 forward 20 years to the 2005 time period, catheter
`5 design wasn't a new field in 2005, right?
`6 A. That's correct.
`7 Q. And there was a lot of prior work that had
`8 been done with catheter design that allowed
`9 engineers to predict how a certain catheter design
`10 may function, right?
`11 MS. TREMBLAY: Objection. Form.
`12 A. I would say that's true in general, but
`13 with exceptions, in the sense that especially when
`14 you're playing with a different geometry of a
`15 device or looking for lower profile, you really had
`16 to evaluate prototypes to see if they, in fact,
`17 would function as you hoped.
`18 Q. Okay. Now, I believe you say in your
`19 declaration you're an inventor on more than
`20 20 patents; is that right?
`21 A. It's roughly 20. I haven't kept count for
`22 a while. So that's roughly the number, yes.
`23 Q. Okay. And in various management positions
`24 you've had through the years, you were in charge of
`25 intellectual property for those companies; is that
`
`1 application?
`2 A. My understanding is it's what I would call
`3 a specialized guide catheter for use with
`4 interventional cardiology devices and procedures.
`5 And the specialized nature was intended to provide
`6 enhanced backup support for those procedures.
`7 Q. And what do you understand the structure of
`8 the device that is disclosed in the '629
`9 application?
`10 A. Aside from things like a proximal hub and a
`11 hemostasis valve, which I would argue are
`12 accessories, the fundamental device appeared to
`13 have really just two portions. They have a rigid
`14 portion and a flexible portion that was usable with
`15 a rapid exchange procedure.
`16 Q. And I'd like to hone in on that and ask you
`17 to be more specific. What do you understand the
`18 scope of the invention was that the inventors were
`19 in possession of?
`20 MS. TREMBLAY: Objection. Form.
`21 MR. WINKELS: Counsel, what's your
`22 objection there?
`23 MS. TREMBLAY: I'm objecting to the --
`24 to you characterizing the disclosure as a single
`25 invention, when each claim would arguably be
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`1 right?
`2 A. In most cases, yes.
`3 Q. Did you have responsibilities to review
`4 patent applications and prosecution histories for
`5 those companies?
`6 A. I often would defer to the -- either the
`7 out-house -- out-of-house -- external patent
`8 counsel or, in some cases, internal patent counsel
`9 to obviously manage the details of prosecution
`10 histories and so forth, and he or she would give me
`11 the highlights. But in terms of an application, I
`12 would almost in all cases review it in detail.
`13 Q. Okay. Now, you mentioned the '629
`14 application, and I want to draw your attention to
`15 that. I believe you referred to it as Exhibit 1842
`16 in your declaration, right?
`17 A. I believe so.
`18 (Exhibit No. 1842 was introduced.)
`19 Q. And if you look at Exhibit 1842, am I
`20 correct that this is the '629 application that you
`21 reviewed in working on your opinions in this case?
`22 A. Just paging through it to make sure
`23 it's . . . I believe so, yes.
`24 Q. Okay. What do you understand the invention
`25 to be in the patent application of the '629
`
`1 considered its own invention.
`2 MR. WINKELS: Okay.
`3 BY MR. WINKELS:
`4 Q. So let's talk -- Dr. Zalesky, as your
`5 counsel just identified, there's multiple things
`6 disclosed in the '629 application, right?
`7 A. Yes.
`8 Q. Okay. So what do you understand the
`9 inventor was in possession of in the '629
`10 application?
`11 A. I believe the inventor had ideas and he had
`12 a sketch or two, from documents I've looked at in
`13 previous filings.
`14 And the idea is related to having, as I
`15 mentioned, two different segments or two different
`16 portions of a device. One being what he refers to
`17 as a substantially rigid portion, made from some
`18 version of hypodermic needle tubing that would
`19 enable a pushing force, and a more distally located
`20 flexible segment that would accommodate an
`21 interventional cardiology device.
`22 Q. Okay. And you referred to a sketch. I've
`23 also included in your binder Exhibit 2225. If you
`24 could turn to Exhibit 2225. And let me know when
`25 you're there, please.
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`1 (Exhibit No. 2225 was introduced.)
`2 A. Okay. I'm there.
`3 Q. And Exhibit 2225 is a declaration that you
`4 provided in the district court litigation in this
`5 case, where you also opined on the written
`6 description requirement. Right?
`7 A. Yes.
`8 Q. Okay. If I could draw your attention to
`9 paragraph 26.
`10 A. Okay.
`11 Q. And in paragraph 26, you are discussing the
`12 Itou reference, right?
`13 A. Yes.
`14 Q. And at the bottom of paragraph 26, you are
`15 discussing how Itou discloses an oblique opening
`16 section 23, right?
`17 A. Yes.
`18 Q. Okay. Then in paragraph 28, on the next
`19 page, you show a drawing from one of the inventors
`20 of the patents in this case, right?
`21 A. Yes.
`22 Q. And am I right that the point you are
`23 making is that the inventor's sketch that you show
`24 in paragraph 28 incorporated an angled opening,
`25 right?
`
`1 A. No. It appears to be clearly just a
`2 perpendicular -- what I would call a perpendicular
`3 end opening.
`4 Q. Okay. So your position is not that the
`5 inventors in this case took the idea of an angled
`6 opening from Itou, right?
`7 MS. TREMBLAY: Objection. Form.
`8 Scope.
`9 A. Itou describes, as you refer to, an oblique
`10 opening, yes.
`11 Q. Okay. Are you contending that the
`12 inventors got the idea of the angled opening from
`13 Itou or not?
`14 A. In the inventor's sketch, I don't see any
`15 indication of an oblique or an angular opening.
`16 Q. Okay.
`17 A. I simply see an end opening.
`18 Q. Okay. All right. Let's turn back to that
`19 Exhibit 1842, which is the '629 application.
`20 A. Okay.
`21 Q. And if I could draw your attention to
`22 Figure 1, then, of the application, which is on
`23 page 25 of Exhibit 1842.
`24 A. I have it.
`25 Q. Okay. Thank you. How would you describe
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`1 A. No --
`2 MS. TREMBLAY: Objection. Scope.
`3 A. No, that's not what I'm trying to state
`4 here.
`5 Q. So your position here was not that the
`6 inventors got the idea of an angled opening from
`7 Itou; is that right?
`8 MS. TREMBLAY: Objection. Scope.
`9 A. As I reviewed the inventor's sketch on the
`10 bottom -- well, paragraph 28, I did not speak to
`11 any kind of angulation of opening. What I was
`12 referring to is paragraph 26, where I make the
`13 comment you just mentioned about an oblique opening
`14 section. That, in fact, there was an opening
`15 section. But I didn't reference this specific
`16 geometry.
`17 Q. Okay. Does -- when you say "oblique
`18 opening section" in Itou, are you referring to
`19 Itou's angled opening?
`20 A. Yes.
`21 MS. TREMBLAY: Objection. Scope.
`22 A. Yes.
`23 Q. And when you look at the drawing in
`24 paragraph 28, is there an angled opening shown in
`25 that drawing in paragraph 28?
`
`1 the device that is shown in Figure 1?
`2 A. This looks like a slightly cleaned-out
`3 version of the figure we just reviewed excerpted in
`4 my declaration, which was based on a sketch by the
`5 inventors of the two components I described a
`6 few minutes ago with an end opening into the
`7 flexible portion.
`8 Q. Okay. So Figure 1 shows an end opening or
`9 a perpendicular opening in the flexible section,
`10 right?
`11 A. I have to assume -- when you say "in the
`12 flexible section," that's not really clear.
`13 There's no -- there's no delineation of where the
`14 rigid segment ends and the flexible portion begins.
`15 But it's certainly an end opening.
`16 Q. And it shows that the end opening is in the
`17 reinforced portion it refers to as Item 18, right?
`18 A. I have to go back and check the embodiment
`19 description, but it appears to be an end opening
`20 into -- that leads into that section, yes.
`21 Q. Yeah. And let's go back, because I do want
`22 to confirm this. And I believe in this
`23 application -- if you go to page 12.
`24 A. Okay.
`25 Q. And I'd draw your attention to lines 17 to
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`Page 30
`1 20 on page 12. And why don't you just go ahead and
`2 review lines 17 to 20, and then I'll ask my
`3 qu