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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)
`___________________________________________________
`
`VIDEOTAPED DEPOSITION OF
`
`HOWARD C. ROOT
`
`DATE: November 13, 2020
`
`TIME: 9:32 a.m. Central Time
`
`PLACE: Veritext Virtual Videoconference
`
`REPORTED BY: PAULA K. RICHTER, RMR, CRR, CRC
`(By videoconference)
`
`www.veritext.com
`
`888-391-3376
`
`Veritext Legal Solutions
`
`IPR2020-01344
`
`Medtronic Ex-1762
`Medtronic v. Teleflex
`Page 1 of 100
`
`

`

`Page 2
`
`Page 4
`
`1 INDEX
`
`2 3
`
`WITNESS: HOWARD C. ROOT PAGE:
`4 EXAMINATION BY MR. MORTON.................. 8
`
`5 6 7
`
`EXHIBITS MARKED: PAGE:
`8 EXHIBIT 1114 6/27/13 Depo of Howard Root in
`9 Boston Scientific Case,
`10 VSIQXM_E0005514-55172........... 16
`11 EXHIBIT 1115 6/15/18 Deposition of Howard
`12 Root in QXMedical Case,
`13 VSIMDT00028870-28948............ 16
`14 EXHIBIT 1116 Drawing of Narrow Guideliner
`15 with Red Circles Drawn by Mr.
`16 Root............................ 212
`17
`18
`19 EXHIBITS PREVIOUSLY MARKED AND REFERRED TO:
`20 EXHIBIT 2002 Lab Notebook 83,
`21 VSIMDT00030683-30690............ 47
`22 EXHIBIT 2003 2/4/05 Memo to GuideLiner DHF
`23 from Howard Root Re: Market
`24 Feasibility for GuideLiner
`25 Catheters, VSI_00000774-775..... 37
`
`1 APPEARANCES
`2 ON BEHALF OF THE PETITIONERS (By videoconference):
`3 Mr. Cyrus A. Morton, Esq.
`4 Ms. Sharon Roberg-Perez, Esq.
`5 Ms. Emily J. Tremblay, Esq.
`6 ROBINS KAPLAN, LLP
`7 800 LaSalle Avenue, Suite 2800
`8 Minneapolis, Minnesota 55401
`9 (612) 349-8500
`10 cmorton@robinskaplan.com
`11 sroberg-perez@robinskaplan.com
`12 etremblay@robinskaplan.com
`13
`14 ON BEHALF OF THE PATENT OWNER (By videoconference):
`15 Mr. J. Derek Vandenburgh, Esq.
`16 Ms. Tara C. Norgard, Esq.
`17 Mr. Alexander S. Rinn, Esq.
`18 CARLSON, CASPERS, VANDENBURGH & LINDQUIST
`19 225 South Sixth Street, Suite 4200
`20 Minneapolis, Minnesota 55402
`21 (612) 436-9600
`22 dvandenburgh@carlsoncaspers.com
`23 tnorgard@carlsoncaspers.com
`24 arinn@carlsoncaspers.com
`25 (APPEARANCES continued on next page)
`
`Page 3
`
`Page 5
`
`1 (EXHIBITS continued)
`2 EXHIBIT 2004 GuideLiner Drawing and Notes,
`3 VSI_00000776-778................ 39
`4 EXHIBIT 2017 6/23/05 Memo to GuideLiner DHF
`5 to Howard Root Re: Market
`6 Feasibility for GuideLiner
`7 Catheters, VSIMDT00030170-30171. 59
`8 EXHIBIT 2018 Vascular Solutions PowerPoint
`9 on New Products on the Horizon,
`10 VSIMDT00029897-29922............ 64
`11 EXHIBIT 2022 8/1/05 CAD Drawing,
`12 PAT0000033-34................... 107
`13 EXHIBIT 2024 Product Requirements for
`14 GuideLiner,
`15 VSIMDT00030178-30181............ 116
`16 EXHIBIT 2025 8/26/05 Clinical Technical
`17 Report, VSIMDT00030139-30167.... 125
`18 EXHIBIT 2041 October 2005 Updates,
`19 VSIMDT00029979-29995............ 130
`20 EXHIBIT 2089 2/17/05-4/5/05 MED Invoices..... 72
`21 EXHIBIT 2092 4/12/05-6/16/05 MED Invoices.... 86
`22 EXHIBIT 2097 10/13/05 Check Stub and 9/7/05
`23 Invoices from Farlow's
`24 Scientific Glassblowing,
`25 VSIMDT00037323-37327............ 129
`
`1 APPEARANCES (Continued)
`
`23
`
`ALSO PRESENT:
`4 Adam Wallin - Videographer
`5 Veronica Morrissey - Veritext Concierge
`6 Howard Cyr
`7 Paul Zalesky
`8 Gregg Smock
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`
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`Medtronic Ex-1762
`Medtronic v. Teleflex
`Page 2 of 100
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`

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`Page 6
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`Page 8
`
`1 (EXHIBITS continued)
`2 EXHIBIT 2099 VSI 2006 Planned Product
`3 Development Projects,
`4 VSI_00034001.................... 142
`5 EXHIBIT 2100 Vascular Solutions 2006
`6 Strategic Objectives,
`7 VSI_00024021-24031.............. 150
`8 EXHIBIT 2109 5/2/06 GuideLiner Team Meeting
`9 Notes, VSI_00000771............. 153
`10 EXHIBIT 2113 Drawings of Hypotube............ 75
`11 EXHIBIT 2114 Drawing of Narrow SST
`12 GuideLiner...................... 90
`13 EXHIBIT 2115 Drawing of GuideLiner Narrow
`14 SST #2 and Drawing of Cut
`15 Hypotube........................ 134
`16 EXHIBIT 2118 Declaration of Howard Root...... 23
`17
`18 (Original exhibits attached to original transcript;
`19 copies provided to counsel.)
`20
`21
`22
`23
`24
`25
`
`1 reporter please swear in the witness.
`2 HOWARD C. ROOT,
`3 duly sworn, was examined and testified as follows:
`4 EXAMINATION
`5 BY MR. MORTON:
`6 Q. Good morning, Mr. Root. I will try to say
`7 Root instead of Root (pronounced differently)
`8 today. I am from Minnesota, but I would have said
`9 Root.
`10 In any event, I know you've had your
`11 deposition taken before, so I'll skip some of that
`12 stuff, but did you have a chance to prepare for
`13 this deposition with your attorneys?
`14 A. Yes.
`15 Q. How much time did you spend preparing?
`16 A. For this deposition, somewhere around five to
`17 ten hours.
`18 Q. And what did you do specifically to prepare?
`19 Obviously, not revealing attorney-client
`20 privilege. But in general, what did you do?
`21 A. I read my declaration and the claim charts,
`22 reviewed the patents, read my former -- my prior
`23 deposition transcripts, and some documents that
`24 were attached as exhibits to my declaration.
`25 Q. All right. Did you do any of the preparation
`
`Page 7
`
`Page 9
`
`1 P R O C E E D I N G S
`2 THE VIDEOGRAPHER: We are going on
`3 the record at 9:06 a.m. on November 13th, 2020.
`4 This is Media Unit 1 of the
`5 video-recorded deposition of Howard C. Root being
`6 taken via Zoom and taken in the matter of
`7 Medtronic, Incorporated and Medtronic Vascular,
`8 Incorporated versus Teleflex Innovations, S.A.R.L.
`9 in the United States Patent and Trademark Office
`10 before the Patent Trial and Appeal Board; Case
`11 Number IPR2020-00128.
`12 My name is Adam Wallin from the firm
`13 Veritext, and I am the videographer. The court
`14 reporter is Paula Richter from the firm Veritext.
`15 Will counsel please identify
`16 themselves for the record.
`17 MR. MORTON: Certainly. For
`18 Petitioner Medtronic, this is Cyrus Morton of the
`19 Robins Kaplan law firm. Also with me is Sharon
`20 Roberg-Perez and Emily Tremblay.
`21 MR. VANDENBURGH: And for the Patent
`22 Owner Teleflex, this is Derek Vandenburgh of the
`23 Carlson Caspers firm. And also from our firm on
`24 the line is Tara Norgard and Alex Rinn.
`25 THE VIDEOGRAPHER: Will the court
`
`1 in person with your lawyers?
`2 A. No, I don't think so.
`3 Q. Do you personally have any objection to
`4 having your deposition being live and in person at
`5 this point in time?
`6 A. It depends on how it's conducted.
`7 Q. So if there were safety precautions in place,
`8 you'd be okay with it?
`9 A. I could be if there's the right safety
`10 precautions.
`11 Q. Okay. For today's deposition, is there any
`12 reason at all why you have any difficulty hearing
`13 my questions and giving truthful and accurate
`14 answers?
`15 A. No.
`16 Q. Okay. And is anybody else with you today in
`17 the deposition or are you at home alone?
`18 A. I'm home alone.
`19 Q. All right. Let's go back to VSI, Vascular
`20 Solutions, prior to the GuideLiner. Of course
`21 we'll get to GuideLiner today, but let's start at
`22 the beginning.
`23 You're a founder of VSI, right?
`24 A. Yes.
`25 Q. And your background was as an attorney, not
`
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`

`

`Page 10
`1 as an engineer or product development person; is
`2 that right?
`3 A. Well, I was originally an attorney, and then
`4 I worked in medical devices in marketing and
`5 product development before starting Vascular
`6 Solutions.
`7 Q. And what was the impetus to start Vascular
`8 Solutions?
`9 A. I had the entrepreneurial bug. I wanted to
`10 start a company, and I knew medical devices. I
`11 thought if I found the right idea, that I could
`12 put a company together in Minneapolis, which is
`13 the hotbed of medical device companies, and try to
`14 grow a company from scratch.
`15 Q. Okay. And what was your first idea?
`16 A. The first idea we licensed in was called the
`17 Duett sealing device. It's D-U-E-T-T, two Ts.
`18 Q. And what was your role with respect to the
`19 Duett in terms of coming up with the idea, working
`20 on and developing it?
`21 A. I evaluated it. It was an idea by my
`22 co-founder, Dr. Gary Gershoney, who's a
`23 cardiologist out in California. I evaluated and
`24 then negotiated the license to acquire the rights
`25 and then started a development team to bring it
`
`Page 12
`
`1 first starting to think about GuideLiner.
`2 A. So prior to 2005, we probably had somewhere
`3 around 10 to 20 medical devices that we had
`4 developed and brought to market.
`5 Q. And how big of a company did you have during
`6 that time?
`7 A. Big in terms of number of employees or
`8 revenue or --
`9 Q. Yeah, I was thinking of both.
`10 A. Revenue, in 2005, we were somewhere around 50
`11 million in sales, worldwide revenue, and we
`12 probably had somewhere around 100 employees.
`13 Q. Okay. And so for those -- I forget already
`14 how many products you said, but for each of those
`15 products, did you have patent work done, patenting
`16 on those products?
`17 A. Not each of them. Some of them weren't
`18 patentable. Some of them were.
`19 Q. Okay. Roughly how many -- how many of the
`20 products were patented and how many patents did
`21 you get on them?
`22 A. If I go down the list, Duett had probably
`23 somewhere around five patents at that period of
`24 time.
`25 D-Stat flowable, I think we had two
`
`Page 11
`
`Page 13
`
`1 from a concept to a finished medical device.
`2 Q. And did you work with engineers or other
`3 people on that?
`4 A. Yes.
`5 Q. The Duett, that was involved in litigation;
`6 is that right?
`7 A. Yes.
`8 Q. Patent litigation?
`9 A. Yes.
`10 Q. You probably don't remember. I
`11 second-chaired your deposition in that case. I
`12 was about a second-year lawyer.
`13 A. Which case was that?
`14 Q. Datascope.
`15 A. Okay.
`16 Q. Yeah, we were on the Datascope side, so we
`17 were on opposite sides as we are today.
`18 A. Okay.
`19 Q. Okay. So, again, prior to GuideLiner, how
`20 many products did Vascular Solutions come up with?
`21 A. Well, prior to when we launched GuideLiner or
`22 prior to when we invented GuideLiner, or what date
`23 are we talking about?
`24 Q. Prior to the dates we'll be talking about
`25 later, the 2005, 2006 time frame. So prior to
`
`1 additional patents on that.
`2 Vari-Lase, we had one or two patents
`3 on that.
`4 Pronto, I think we had just one
`5 patent on that.
`6 Langston, we had a patent on that.
`7 Twin-Pass, I don't think we had a
`8 patent on it.
`9 Skyway, we did not have a patent on
`10 it.
`11 Micro-introducer kits, we did not
`12 have a patent on.
`13 That's -- I think there's more, but
`14 that's the gist of it.
`15 I can't hear.
`16 MR. VANDENBURGH: Cy, we can't hear
`17 you.
`18 THE COURT REPORTER: Adam, he wants
`19 to go off the record.
`20 THE VIDEOGRAPHER: We are going off
`21 the record at 9:14 a.m.
`22 (Off the record from 9:14 a.m. until
`23 9:19 a.m.)
`24 THE VIDEOGRAPHER: We are back on
`25 the record at 9:19 a.m.
`
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`Page 4 of 100
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`

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`Page 14
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`Page 16
`
`1 BY MR. MORTON:
`2 Q. Okay. Sorry about that, Mr. Root.
`3 Can we go back to that same time
`4 period we were talking about, the earlier days of
`5 VSI, prior to thinking about GuideLiner in 2005.
`6 Did you have any document retention policies at
`7 that time?
`8 A. I believe we did, but I don't remember
`9 exactly when we created our first document
`10 retention policy.
`11 Q. Do you remember anything about the policy
`12 from prior to GuideLiner?
`13 A. No, not really.
`14 Q. Were you in charge of developing the policy
`15 or was somebody else?
`16 A. I don't remember the specific policy, so I
`17 may have done it. I'm not sure when we had our
`18 first general counsel, and it may have been that
`19 person's job.
`20 Q. Okay. Do you recall at all if it had to do
`21 with hard-copy documents versus electronic
`22 documents?
`23 A. Well, the policy we had covered both, but I'm
`24 not sure when that came into being.
`25 Q. Did you have any -- do you recall any policy
`
`1 QXMedical we were the plaintiff -- at least in
`2 substantive terms we were the plaintiff as -- on
`3 my patent.
`4 And I'm not sure if there's any
`5 other cases that we have.
`6 Q. Have you been deposed before on the issues of
`7 conception and reduction to practice?
`8 A. I think so, in relation to these earlier
`9 GuideLiner cases.
`10 Q. Okay. Any other cases besides the GuideLiner
`11 cases?
`12 A. I don't believe so.
`13 Q. Was that the concept of conception and
`14 reduction to practice, proving an earlier
`15 invention date, was that something that you knew
`16 and understood prior to GuideLiner?
`17 A. I was not a patent lawyer. I knew the
`18 general concept, but I wasn't an expert or
`19 specifically trained in that area.
`20 Q. All right. On these depositions, I want to
`21 show you a couple of transcripts.
`22 Can we put up the Boston transcript?
`23 (Exhibit 1114 and Exhibit 1115 were
`24 marked for identification.)
`25
`
`Page 15
`1 about document destruction after a certain amount
`2 of time?
`3 A. Again, the policies that we had covered that,
`4 but I don't know when that policy was put in
`5 place.
`6 Q. Okay. We mentioned that you've had your
`7 deposition taken before, right?
`8 A. Correct.
`9 Q. In how many patent cases have you had your
`10 deposition taken?
`11 A. Probably around five.
`12 Q. And was your deposition typically taken as an
`13 inventor on those patents?
`14 A. I -- yeah. In a couple cases, yes. In a
`15 couple cases, no.
`16 Q. Okay. What were the cases where you were not
`17 an inventor?
`18 A. Well, inventor of the patent that was being
`19 asserted, if you look at it that way. The
`20 Datascope case, we were the defendant. And the
`21 St. Jude Medical case we were the defendant. The
`22 DialMED case we were the defendant. And the
`23 Terumo case we were the defendant.
`24 And then the Boston Scientific case
`25 we were the plaintiff on the GuideLiner patents.
`
`Page 17
`
`1 BY MR. MORTON:
`2 Q. All right. Are you seeing this, Mr. Root,
`3 Vascular Solutions v. Boston Scientific, video
`4 depo of Howard Charles Root?
`5 A. I'm just looking in the Exhibit Share, and
`6 it's just 1114 and 1115. Is that --
`7 Q. Yes, 1114.
`8 A. Just open that?
`9 Q. Yep.
`10 A. Okay. Yeah, I see it now.
`11 Q. All right. Thanks.
`12 Do you recall having your deposition
`13 taken in that Vascular Solutions v. Boston
`14 Scientific case?
`15 A. Yes.
`16 Q. Do you recall being placed under oath and
`17 swearing to tell the truth in that matter?
`18 A. Yes.
`19 Q. And you did testify truthfully, right?
`20 A. To the best of my ability, yes.
`21 Q. Were you given a chance to review the
`22 transcript and make any changes that you felt were
`23 necessary?
`24 A. Yes.
`25 Q. And you signed off on this transcript?
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`Page 18
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`Page 20
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`1 A. I signed off on a transcript. I'm not sure
`2 if this is the one, but I did sign one.
`3 Q. Well, please take a look at it if you think
`4 it's not it, but this is your transcript from that
`5 case.
`6 Do you have any reason to believe
`7 this is not your transcript?
`8 A. Well, it's 49 pages long, and I'm just -- I
`9 see the cover page. I'm looking for the signature
`10 page, but I'm not going to be able to review the
`11 whole thing and tell whether it's exactly the
`12 right one, but if you say it is.
`13 Q. Okay. We may come back to this, but I want
`14 to hit your other transcript, so if you could open
`15 1115.
`16 A. Okay.
`17 Q. All right. So do you recall also giving your
`18 deposition in the QXMedical -- Vascular Solutions
`19 v. QXMedical case?
`20 A. Yes.
`21 Q. And again, you were under oath and swore to
`22 tell the truth in that case?
`23 A. Yes.
`24 Q. And you testified truthfully, correct?
`25 A. To the best of my ability, yes.
`
`1 them for their work?
`2 A. I don't recall specific to the 2005 time
`3 frame what we had and what the policy was at that
`4 time.
`5 Q. So you don't recall if you told engineers to
`6 keep notebooks of their work?
`7 A. Correct. I don't recall that.
`8 Q. Why do you keep inventor notebooks?
`9 A. Well, for me, the inventor notebooks is to
`10 write down what you are working on, sometimes to
`11 show other people, sometimes to document it for
`12 purposes of patent work.
`13 Q. All right. Is it your understanding that you
`14 keep them as also a way to track conception and
`15 reduction to practice and also diligent work
`16 through the time of filing a patent?
`17 A. That's what I meant when I said patent work.
`18 You know, I wasn't -- I'm not a patent lawyer, so
`19 I'm not specific on the exact patent uses of lab
`20 notebooks, but I did understand that the lab
`21 notebook could be useful to document what you
`22 invented and when.
`23 Q. And it's not just for conception but also
`24 reduction to practice, right, so you can kind of
`25 keep track of what you're doing as you go along?
`
`Page 19
`1 Q. And you were given a chance to review that
`2 transcript as well and make any changes you felt
`3 were necessary?
`4 A. Yes.
`5 Q. All right. Thank you. And again, we'll just
`6 keep that in case we need it as we move forward.
`7 Kind of going back to the question
`8 about documents, and again, prior to the -- prior
`9 to the GuideLiner time period, did you have -- or
`10 Vascular Solutions had a policy regarding keeping
`11 inventor notebooks or having engineers keep
`12 notebooks?
`13 A. We had lab notebooks. I'm not sure if we had
`14 a written policy in terms of keeping it,
`15 retention.
`16 Q. Okay. So you don't remember anything about
`17 what your policy may have been?
`18 A. I don't remember if we had a policy at that
`19 period of time. If we did, it would have been
`20 included in the document retention policy that we
`21 had later. But you're asking about 2005, and I
`22 can't remember 15 years ago what the policy was.
`23 Q. Okay. Do you recall if there was any
`24 direction given to engineers at Vascular Solutions
`25 to keep inventor notebooks and to, you know, use
`
`Page 21
`
`1 MR. VANDENBURGH: Objection.
`2 THE WITNESS: Again, you're getting
`3 beyond my knowledge of patent law specifically at
`4 the time. I knew it was -- I knew a lab notebook
`5 was something you could use to document your
`6 invention and then have someone witness what that
`7 was, but beyond that, I really don't have a lot of
`8 knowledge about the patent law, particular parts
`9 of conception, reduction to practice, and diligent
`10 work on it as it relates to a lab notebook.
`11 BY MR. MORTON:
`12 Q. Did you ever keep a lab notebook?
`13 A. I had a lab notebook and I used it, but I
`14 would call it sporadically. I would more often be
`15 working with engineers and they would be writing
`16 things down, or I would be writing it but not have
`17 my lab notebook with me.
`18 Q. Okay. Did you ever destroy any lab
`19 notebooks?
`20 A. I did not.
`21 Q. We talked to Steve Erb, I'm sure you recall,
`22 and he testified he put his notebook in the shred
`23 box. Did you know about that?
`24 A. I didn't know that.
`25 Q. Did you talk to Mr. Erb in connection with
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`Page 22
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`Page 24
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`1 this case?
`2 A. No.
`3 Q. And you don't remember anything about a shred
`4 box or shredding any inventor notebooks?
`5 A. No.
`6 Q. He testified also that there was a meeting.
`7 He got word from that meeting to go ahead and
`8 shred. Do you have any knowledge about that?
`9 MR. VANDENBURGH: Objection.
`10 THE WITNESS: No, not -- a meeting
`11 on inventor notebooks or a meeting on document
`12 retention?
`13 BY MR. MORTON:
`14 Q. Well, it may have been broader than
`15 notebooks, I'll grant you that. Do you have any
`16 recollection of a meeting like that or a time
`17 where that was done?
`18 A. We had meetings on the document retention, it
`19 would be more recently. We're not talking about
`20 2005, but 2010, roughly, or '12 or '14, about what
`21 documents generally needed to be kept and what
`22 documents could be eliminated according to the
`23 policy.
`24 Q. I'm sorry. I missed it. What time period
`25 was that?
`
`1 A. No.
`2 Q. All right. Then why -- when you put that in
`3 your declaration, do you have any idea why --
`4 A. Your sound cut out.
`5 MR. VANDENBURGH: Cy, we lost you
`6 again.
`7 THE VIDEOGRAPHER: We are going off
`8 the record at 9:34 a.m.
`9 (Off the record from 9:34 a.m. until
`10 9:36 a.m.)
`11 THE VIDEOGRAPHER: We are back on
`12 the record at 9:36 a.m.
`13 BY MR. MORTON:
`14 Q. Okay. Mr. Root, just to reorient, we were
`15 talking about in your declaration where you say
`16 "Teleflex no longer has many development documents
`17 from the 2005 time frame," and I believe you said
`18 that that was not because of changes in policy
`19 where old documents were destroyed; is that right?
`20 A. Yeah, I don't believe it was because of a
`21 policy that we came up with, no.
`22 Q. Okay. So if there were more documents than
`23 what you've been able to find, why don't they
`24 exist?
`25 A. Well, we don't save every piece of paper that
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`Page 23
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`1 A. Well, it, ballpark, would be maybe 2010,
`2 2014, somewhere in that time frame when we had
`3 other legal matters that we had more additional
`4 training, more refined policies on document
`5 retention and document, you know, destruction, but
`6 keeping the necessary records and getting rid of
`7 the records after the time required for retention.
`8 Q. Okay. So at that time you got rid of a bunch
`9 of, you know, documents that you didn't think you
`10 needed to retain anymore; is that right?
`11 A. When you say "you," I mean, this is a
`12 company. By that time we had a general counsel
`13 who had a policy on what documents to retain and
`14 what documents did not -- were not required to be
`15 retained, and they destroyed the documents that
`16 were not required to be retained.
`17 Q. And what was your personal role in that?
`18 A. I would go through my records and keep the
`19 ones that are required to be retained and discard
`20 those that are not.
`21 Q. Okay. Your declaration at paragraph 20 says
`22 that "Teleflex no longer has many development
`23 documents from the 2005 time frame."
`24 Is that because of this policy and
`25 the decision to get rid of all documents?
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`Page 25
`1 we write on at the time. We -- when we're going
`2 through the inventing process, we're making notes;
`3 we're, you know, writing things down; we're buying
`4 parts, but not all of those records are retained
`5 because otherwise you would be, you know, buried
`6 under a pile of paper.
`7 So when we get to the formal project
`8 development team for the regulatory approval,
`9 those documents we would retain. But before that,
`10 in the new modalities area of R&D, we just
`11 wouldn't keep the documents of every idea we had
`12 or every discussion that we had. We would not
`13 take minutes of meetings or things, but we might
`14 have notes with to-do lists of what was going to
`15 happen, and we don't retain every one of those
`16 because it would be unwieldy to do so.
`17 Q. I mean, your declaration, again, goes on to
`18 say most of the documents you've found from that
`19 time frame you got from vendors or from your
`20 patent attorneys; is that right?
`21 A. I believe that's correct.
`22 Q. And why did some documents survive? For
`23 instance, we have some notes from you. We have
`24 some -- a notebook from Gregg Sutton. Why did
`25 those few things survive but the rest of VSI's
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`1 files from 2005 did not?
`2 A. You say "files," and that's just incorrect.
`3 We're not talking about files. We're not talking
`4 about destruction of documents. We're talking
`5 about notes that people would make while they're
`6 having discussions and whether they would maintain
`7 that in a hard copy for 15 years.
`8 The records that we have from the
`9 initial concept of GuideLiner is what we've
`10 provided to the patent lawyers to do the patent
`11 searching and the patent work to obtain the
`12 patent, and we retained those because we provided
`13 them to the patent lawyers to document what the
`14 invention was.
`15 Other documents, buying parts and
`16 components and purchase orders that are 15 years
`17 old, the company wouldn't retain those purchase
`18 orders, but we found those purchase orders from
`19 the vendors who we sent the orders to.
`20 So it's not a destruction of files.
`21 It's a retention of specific documents regarding
`22 the invention, and all the other paperwork that we
`23 were having, notes and handwritten summaries or
`24 to-do lists, were not retained.
`25 Q. To your knowledge, were all lab notebooks,
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`Page 28
`1 so I -- excluding that, in terms of the invention
`2 of the device, no. I was not working as a lawyer
`3 in 2005, 2006.
`4 Q. All right. And how about -- you're certainly
`5 familiar with the concept of a design history
`6 file, right?
`7 A. Yes.
`8 Q. And just basically, what's required to be
`9 kept in that file?
`10 A. Well, the design history file starts after
`11 you've reduced this idea to a proof of concept and
`12 you have something that you can actually develop
`13 through the qualification, validation,
`14 verification steps to get it on the market. So
`15 once you put together the team to take that proven
`16 device to market, then you have to keep accurate
`17 records of the user requirements, the clinical
`18 events analysis, the verification testing, the
`19 validation testing, the batch records, the lot
`20 records. All of that is kept in a device history
`21 file, and that starts after the device has already
`22 been proven.
`23 Q. And so you normally wouldn't keep any of your
`24 initial development, prototyping, testing,
`25 anything like that you would not keep in a device
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`Page 29
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`1 apart from Mr. Erb's, retained?
`2 A. I don't know what people did with their lab
`3 notebook. I know that I left mine when I left the
`4 company.
`5 Q. So you don't know if there was a policy,
`6 again, to make sure you kept your lab notebooks?
`7 A. We did have a policy on maintaining lab
`8 notebooks, not in 2005, but later, and I'm not
`9 sure how long they were to maintain that. I don't
`10 know the specifics of the policy.
`11 Q. Okay. Were you involved in trying to find
`12 documents for this case?
`13 A. Yes.
`14 Q. And you believe every document you could find
`15 has been produced or put forth as far as you know?
`16 A. Well, every document that's relevant to the
`17 matters that are present in the case, I believe
`18 so.
`19 Q. And your work on this was -- and I'll talk
`20 about the GuideLiner now -- was not as a lawyer,
`21 so you're not withholding any documents from that
`22 2005, 2006 standpoint on the basis of
`23 attorney-client privilege, are you?
`24 A. Well, there are the litigation files which
`25 have attorney-client privileged information in it,
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`1 history file?
`2 A. It would not be in the device history file,
`3 no. It would be in your patent file, and it would
`4 be in the new modalities files, to the extent they
`5 keep their records, or in your vendor purchase
`6 orders, to the extent you're buying components.
`7 Q. And so you mentioned a second ago, so I want
`8 to follow up, that you're no longer with VSI; is
`9 that right?
`10 A. Correct.
`11 Q. And why is that?
`12 A. I sold the company.
`13 Q. To Teleflex; is that right?
`14 A. Correct.
`15 Q. Do you have any sort of a back end on that,
`16 any kind of an earn-out or other compensation
`17 coming to you based on how Vascular Solutions's
`18 products do under the Teleflex company?
`19 A. No.
`20 Q. Are you retained as a consultant in this
`21 matter?
`22 A. Yes.
`23 Q. Are you compensated for your role as a
`24 consultant?
`25 A. Yes.
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`Page 30
`1 Q. And can you tell me what that compensation
`2 is?
`3 A. I believe it's $420 an hour.
`4 Q. And do you know how you came up with that
`5 number?
`6 A. No, I don't know exactly. We just estimated
`7 it, and then we did an amount in 2017 and
`8 increased it a little bit over the last couple of
`9 years.
`10 Q. All right. So let's go back to the
`11 invention, coming up with the GuideLiner concept
`12 in the late 2004, 2005 time frame, okay?
`13 A. Okay.
`14 Q. What was your role as far as -- in your view,
`15 as far as conception?
`16 A. Well, it was originally my idea of coming up
`17 with a guide extension catheter that would
`18 overcome some of the obstacles that I saw in the
`19 over-the-wire Terumo Heartrail guide extension
`20 catheter, and that was sometime in late 2004, and
`21 then particularly when I was at the TCT meeting in
`22 September or October of 2004, where I'm seeing
`23 cases being performed and thinking, there really
`24 needs to be a better way of doing this.
`25 Q. So when you say your idea, can we just
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`Page 31
`1 summarize that as basically the combination of
`2 mother and child guide extension with a rapid
`3 exchange?
`4 MR. VANDENBURGH: Objection;
`5 foundation.
`6 THE WITNESS: So what are you
`7 talking about, "your idea"? I'm not sure.
`8 BY MR. MORTON:
`9 Q. Well, you told me it was your idea, that you
`10 came up with it, so I'll let you use whatever
`11 words you like. What was your idea?
`12 A. Well, the origination -- I wouldn't call
`13 it -- well, the origination of this invention is
`14 that the cardiologist struggles to get the guide
`15 catheter positioned in the ostium. And as I was
`16 watching them struggle to get stents delivered and
`17 keeping the guide in place and then looking at the
`18 over-the-wire mother and child catheter guide
`19 extension, I was thinking that there must be a
`20 better way of doing it, and if we could come up
`21 with a way of doing guide extension with rapid
`22 exchange convenience, it would really solve this
`23 problem. So that was the origination of this work
`24 and this project, and that was in late 2004.
`25 Q. Okay. So that was your -- that basic concept
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`1 was your idea and nobody else's idea?
`2 A. No. That was the origination. I come back
`3 from the TCT, as I remember, and I talked with
`4 Gregg Sutton and Jeff Welch and Jason Garrity, and
`5 they may have been at the TCT as well, and we
`6 quickly started talking about how this is
`7 possible.
`8 So there was more than just me
`9 involved in the idea, but the origination