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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________________
`MEDTRONIC, INC., and
`MEDTRONIC VASCULAR, INC.,
`
`Petitioners,
`
`vs.
`
`TELEFLEX INNOVATIONS
`S.A.R.L.,
`
`Case No. IPR2020-00126
`U.S. Patent No. 8,048,032
`
`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)
`IPR2020-00135 (Patent RE45,776 E)
`IPR2020-00136 (Patent RE45,776 E)
`IPR2020-00137 (Patent RE47,379 E)
`IPR2020-00138 (Patent RE47,379 E)
`____________________________________________________
`
`VIDEOCONFERENCE VIDEOTAPED
`DEPOSITION OF
`PETER T. KEITH
`
`DATE: December 1, 2020
`
`TIME: 8:00 a.m.
`
`PLACE: Minneapolis, Minnesota
`
`(via videoconference)
`
`JOB NO.: MW 4338328
`
`REPORTED BY: Dawn Workman Bounds, CSR
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`www.veritext.com
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`888-391-3376
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`Page 1
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`IPR2020-01344
`
`Medtronic Ex.1764
`Medtronic v. Teleflex
`
`

`

`Page 2
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`Page 4
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`1 A P P E A R A N C E S
`2 (ALL APPEARANCES VIA VIDEOCONFERENCE)
`3 ON BEHALF OF PETITIONERS:
`4 CYRUS A. MORTON, ESQ.
` EMILY TREMBLAY, ESQ.
`5 ROBINS KAPLAN LLP
` 2800 LaSalle Plaza
`6 800 LaSalle Ave
` Minneapolis, MN 55401
`7 612.349.8500
` camorton@rkmc.com
`8 ETremblay@RobinsKaplan.com
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24 (APPEARANCES CONTINUED ON NEXT PAGE)
`25
`
`1 I N D E X
`2 WITNESS: PETER T. KEITH PAGE
`3 EXAMINATION BY MR. MORTON.......................... 6
`4 EXAMINATION BY MR. VANDENBURGH..................... 100
`5 PREVIOUSLY MARKED EXHIBITS REFERRED TO
`6 No. 1003: Application Transmittal................. 7
`7 No. 1025: Patent No. U.S. 2005/0015073 A1......... 38
`8 No. 2023: Declaration of Peter Keith.............. 103
`9 No. 2118: Declaration of Howard Root.............. 86
`10 No. 2123: Declaration of Peter Keith
` Regarding Conception and Reduction
`11 to Practice Submitted in Connection
` With Patent Owner's Responses
`12 IPR2020-00126........................... 48
`13 No. 2124: Declaration of Peter Keith
` in Support of Motions to Amend
`14 IPR2020-0126............................ 7
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`Page 3
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`Page 5
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`1 ON BEHALF OF PATENT OWNER:
`2 DEREK VANDENBURGH, ESQ.
` JOSEPH W. WINKELS, ESQ.
`3 CARLSON CASPERS VANDENBURGH & LINDQUIST, PA.
` Capella Tower, Suite 4200
`4 225 South Sixth Street
` Minneapolis, MN 55402
`5 612.436.9623
` dvandenburgh@carlsoncaspers.com
`6 jwinkels@carlsoncaspers.com
`7 KENNETH E. LEVITT, ESQ.
` DORSEY & WHITNEY, LLP
`8 50 S. Sixth Street, Suite 1500
` Minneapolis, MN 55402
`9 612.340.2600
` levitt.kenneth@dorsey.com
`
`10
`11 ALSO PRESENT:
`12 Greg Smock, Teleflex
`13 Craig Jones, Videographer
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
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`1 P R O C E E D I N G S
`2 THE VIDEOGRAPHER: Good morning. We are
`3 going on the record at 8:00 a.m. CST on Tuesday, December
`4 1, 2020. Audio and video recording will continue to take
`5 place unless all parties agree to go off the record.
`6 This is media unit 1 of the video-recorded deposition of
`7 Peter Keith in the Matter of Medtronics versus Teleflex
`8 Innovations, filed in Patent Trial and Appeals Board,
`9 Case Number IPR2020-00127.
`10 The deposition is being held via
`11 videoconference. My name is Craig Jones from the firm
`12 Veritext Midwest, and I'm the videographer. The court
`13 reporter is Dawn Bounds from the firm Veritext Midwest.
`14 I'm not related to any party in this action, nor am I
`15 financially interested in the outcome.
`16 Counsel and all present in the room and
`17 everyone attending remotely will now state their
`18 appearance and affiliation for the record, beginning with
`19 the noticing attorney.
`20 MR. MORTON: Hello. This is Cyrus Morton
`21 of the law firm of Robins Kaplan on behalf of Petitioner
`22 Medtronic, and with me also is Emily Tremblay.
`23 MR. VANDENBURGH: And this is Derek
`24 Vandenburgh of the Carlson Caspers firm here on behalf of
`25 the Patent Owner Teleflex. With me today is Joe Winkels
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`Page 6
`1 of our firm, and Ken Levitt of the Dorsey firm, and Craig
`2 Smock of Teleflex.
`3 THE VIDEOGRAPHER: Will the court reporter
`4 please swear in the witness.
`5 THE REPORTER: Due to the need for this
`6 deposition to take place remotely because of the
`7 government's order for physical distancing, the parties
`8 will stipulate that the court reporter may swear in the
`9 witness over the videoconference and that the witness has
`10 verified that he is in fact Peter Keith.
`11 Agreed, counsel?
`12 MR. VANDENBURGH: Stipulated.
`13 MR. MORTON: Yes.
`14 PETER T. KEITH,
`15 duly sworn via videoconference as stipulated by counsel
`16 was examined and testified as follows:
`17 EXAMINATION
`18 BY MR. MORTON:
`19 Q. Good morning, Mr. Keith.
`20 A. Good morning.
`21 Q. I'd like to start today with your declaration
`22 in support of the motions to amend. So if you want to
`23 have that declaration available. It's for
`24 IPR2020-00126.
`25 But it's all the same declaration, but I'm
`
`Page 8
`
`1 that's in the flexible tip portion, right?
`2 A. I don't know if I use those exact words.
`3 But in my report on page 12, I've got a
`4 number of paragraphs under the heading of: The
`5 Specification Does Not Require the Side Opening to Be in
`6 the Substantially Rigid Portion.
`7 Q. Okay. But that was not my question.
`8 My question is that, did you identify a
`9 side opening in the flexible tip portion in your
`10 declaration?
`11 MR. VANDENBURGH: Objection, form.
`12 A. I identified a number of -- of aspects of the
`13 opening that I think would be conveyed to one of skill in
`14 the art reading the specification in its entirety. I
`15 have examples related to those -- related to various
`16 openings, various shapes of openings, various locations
`17 of those openings.
`18 Some of the embodiments that are described
`19 are -- have openings in the flexible tubular portion.
`20 There are openings in -- described in what I think could
`21 be considered a very flexible portion of the device. The
`22 embodiment, for example, with the relief cuts.
`23 So I think I provide a number of examples
`24 of different openings and different embodiments that I
`25 think would convey to one of skill in the art that a side
`
`Page 7
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`Page 9
`
`1 looking at that version.
`2 A. Okay. I have a binder in front of me.
`3 Okay. I think I have it.
`4 So I have Exhibit 2124.
`5 Q. Yep.
`6 A. Okay.
`7 Q. You may want to pull that one out. And then
`8 we're also going to be talking about Exhibit 1003, which
`9 is the 629 application file history. So you want to have
`10 access to that Exhibit 1003 as well.
`11 A. Okay. That one's pretty thick, so I think I'll
`12 just leave it in the binder for now.
`13 Q. Yeah, I'd like the declaration out of the
`14 binder and leave the application and file history in the
`15 binder.
`16 A. Okay.
`17 Q. Okay. In that original patent application,
`18 Exhibit 1003, every disclosed side opening is in the
`19 rigid portion, right?
`20 A. No, I don't think so.
`21 Q. So you think there are side openings that are
`22 disclosed that are not in the rigid portion?
`23 A. Generally, I think so, yes.
`24 Q. Okay. Nowhere in your declaration, which you
`25 have in front of you, do you identify a side opening
`
`1 opening could be in a flexible portion of the device.
`2 BY MR. MORTON:
`3 Q. So we're going to get to all your opinions in
`4 that declaration. But my question was a little
`5 different. I asked if you identified a side opening in
`6 the flexible tip portion?
`7 MR. VANDENBURGH: Objection.
`8 A. Again, I don't know if I used those exact
`9 words.
`10 BY MR. MORTON:
`11 Q. Can you identify a side opening in the flexible
`12 tip portion?
`13 MR. VANDENBURGH: Same objection.
`14 A. Again, I think the specification taken as a
`15 whole identifies a number of different openings in a
`16 number of different places. Some of them are vertical.
`17 Some of them are angled openings. Some of them are in
`18 the -- in a rigid portion of the tube. Some of them are
`19 in a -- a rigid portion of the device rather. Some of
`20 them are in a more flexible portion of the device.
`21 So I think -- at a high level, I think
`22 that's in the specification as it would be conveyed to
`23 one of skill in the art.
`24 BY MR. MORTON:
`25 Q. Well, that's a lot of general statements. But
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`1 my question -- I'll ask it slightly different.
`2 Can you identify a side opening in the
`3 reinforced portion?
`4 MR. VANDENBURGH: Same objections; and
`5 objection, form.
`6 A. In the reinforced portion?
`7 I don't know that there's a specific
`8 drawing and a specific portion text that explicitly calls
`9 that out. But again, that's -- I think the invention
`10 conveys to one of skill in the art, but that is certainly
`11 part of the invention.
`12 BY MR. MORTON:
`13 Q. Okay. But as you sit here, you can't identify
`14 a side opening in the reinforced portion in the 629
`15 application; is that right?
`16 A. Well, when -- if you're saying a specific
`17 figure, I don't know that in one specific figure that I
`18 can identify that.
`19 Q. Okay. And going back to my first question,
`20 every explicitly disclosed side opening in the 629
`21 application is in the rigid portion, right?
`22 MR. VANDENBURGH: Objection.
`23 A. No, I don't think that's true. I think in the
`24 embodiment that describes the relief cuts, I think that
`25 side opening is very well in a flexible portion of the
`
`Page 12
`1 at Figure 10, which is on page 40 of the 629 application,
`2 those relief cuts are in the rigid portion 20, right?
`3 A. I'd like to just take a moment, if I could, to
`4 review the specification a little bit as well.
`5 So on -- well, in this document it would
`6 be on page -- bold page 18, line 15. There's some text
`7 at least there that goes along with that. And it says
`8 that the rigid portion may be perforated by relief cuts.
`9 So the way it's described, it's using
`10 rigid portion there to kind of talk about that whole --
`11 that whole cut hypotube. But clearly that portion of
`12 that rigid portion is flexible or can become quite
`13 flexible with those relief cuts, and the portion that's
`14 not -- does not have the relief cuts would be a more
`15 rigid portion.
`16 Q. Sure. And my question was just that in this
`17 example that you've given me, your one example, the side
`18 opening is still in the rigid portion 20, right?
`19 MR. VANDENBURGH: Objection, form.
`20 A. You know, it depends on how you would read
`21 rigid portion. I think in that sentence, it's calling
`22 that whole thing the rigid portion, but I think one of
`23 skill in the art could refer to, you know, based on the
`24 drawings and what the drawings convey that the portion
`25 with the relief cuts is quite flexible, and the portion
`
`Page 11
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`Page 13
`
`1 device.
`2 BY MR. MORTON:
`3 Q. All right. Relief cuts.
`4 Any other example where you think a side
`5 opening is not -- there's a side opening that is
`6 disclosed that is not in the rigid portion?
`7 A. Again, I think there's a number of openings. I
`8 don't know if there's explicitly any other examples that
`9 I can think of right now of side openings that are in
`10 the -- I think you said, in the reinforced portion.
`11 Q. So for the relief cuts example, those relief
`12 cuts are still in rigid portion 20, right?
`13 A. I'd have to look it up. I mean, it depends
`14 on -- it might depend on how the claim is read on a
`15 particular embodiment, I think.
`16 Q. No, I'm not asking you about claim.
`17 A. That's something off the claim one which I
`18 think --
`19 Q. I'm not asking about claims. I'm asking you
`20 about the disclosure in Exhibit 1003. You mentioned --
`21 the relief cuts was the one example you've given me where
`22 you said there's a side opening disclosed that's not in
`23 the rigid portion. Do you recall telling me that?
`24 A. Yes.
`25 Q. And what I'm saying is if you actually looked
`
`1 proximal to that would still be the rigid portion.
`2 BY MR. MORTON:
`3 Q. And so that whole portion is still part of the
`4 hypotube; is that right?
`5 A. Which whole portion?
`6 Q. Rigid portion 20.
`7 A. In the context of that sentence, I would say
`8 that it is.
`9 Q. Okay. And the side opening in that instance is
`10 not part of the reinforced portion, right?
`11 A. In that example, it is -- I don't think it is,
`12 if by reinforced portion we're talking about a tubular
`13 portion further distal from that.
`14 Q. Correct.
`15 Do you have any other example that you say
`16 shows a side opening that is not in the rigid portion in
`17 the 629 application?
`18 A. Again, you're asking about like a specific
`19 drawing or a specific part of the text. And I'm looking
`20 at the application as a whole and what it would convey to
`21 one of skill in the art. So I think as a whole, it -- I
`22 think that's part of the invention. But I don't know
`23 that there's any other specific examples that I can point
`24 to sitting here right now of what you're asking about.
`25 Q. Okay. So let's break this down a little more
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`1 and start with a side opening.
`2 What is the definition or meaning of side
`3 opening that you're applying for your analysis?
`4 A. At a -- at a high level, I would say a side
`5 opening is a opening that has some side access to it. So
`6 like an angled opening would be an example of a side
`7 opening.
`8 Q. Okay. So an angled opening or an inclined
`9 opening is a side opening?
`10 A. Yeah, that's one example.
`11 Q. A hemicylindrical opening is a side opening?
`12 A. I think it can be.
`13 Q. Or a semicylindrical opening, that could be a
`14 side opening?
`15 A. It could be part of -- at least part of a side
`16 opening.
`17 Q. Okay. And what the spec talks about is a
`18 cutout portion, that's a side opening?
`19 A. In at least one embodiment, yes.
`20 Q. And how about an opening that extends along the
`21 longitudinal axis? Is that a fair way of describing a
`22 side opening?
`23 A. I mean, outs -- outside of any specific claim,
`24 I think that's probably a fair way.
`25 Q. Is there anything else you can think of that
`
`Page 15
`1 you would say constitutes a side opening or any other way
`2 of describing it?
`3 A. Not sitting here right now, no.
`4 Q. Okay. Well, let's talk about what's not a side
`5 opening.
`6 So an end opening is not a side opening,
`7 right?
`8 A. If that opening is vertical in general, I would
`9 say it's probably not a side opening.
`10 Q. Okay. So like a perpendicular opening is not a
`11 side opening, right?
`12 A. That's correct.
`13 Q. Let's look at Exhibit 1003 and just step
`14 through the figures, okay?
`15 So if we look at Figures 1 and 2, which is
`16 on pages 32 and 33, those do not disclose a side opening,
`17 right.
`18 A. I'm not sure if it's entirely clear in that
`19 exhi -- in that figure whether it's necessarily
`20 perpendicular or not.
`21 Q. So is it your testimony that Figure 1 discloses
`22 a side opening or doesn't disclose a side opening; which
`23 is it?
`24 MR. VANDENBURGH: Objection, form.
`25 A. I don't believe I've specifically referred to
`
`Page 16
`1 that as a side opening. What I'm saying is that I don't
`2 know that it's explicitly stated that it's not a side
`3 opening or that it is a vertical opening.
`4 BY MR. MORTON:
`5 Q. As you sit here today, is it your testimony
`6 that there is a side opening in Figure 1?
`7 A. I -- I don't think -- my testimony is that I
`8 don't think it's precluded that that could be a side
`9 opening, but I don't think it's described or in the text
`10 as a side opening, and I -- it's not clear to me that the
`11 figure, just because of the perspective aspect of that
`12 figure, that that's absolutely a vertical side opening.
`13 Q. You can't point to anything in the spec that
`14 says there is a side opening or you should create a side
`15 opening in reinforced portion 18 of Figure 1, right?
`16 MR. VANDENBURGH: Objection.
`17 A. In that particular embodiment, that's correct.
`18 BY MR. MORTON:
`19 Q. Let's look at -- jump ahead to Figures 20, 21,
`20 and 22, on page 44 of the exhibit.
`21 A. Okay.
`22 Q. These figures do not disclose a side opening,
`23 correct?
`24 A. I would agree with that.
`25 Q. Okay. And there's no teaching in the patent to
`
`Page 17
`
`1 create a side opening in braided portion 112; is that
`2 right?
`3 MR. VANDENBURGH: Objection.
`4 A. Well, as I have said before, I think the patent
`5 is -- is more than just the specific embodiments. In
`6 that specific embodiment, I don't know that there's any
`7 specific disclosure to that particular embodiment having
`8 a, you know, say an angle or a side opening aspect to it.
`9 But, again, I think the specification as a whole would
`10 convey to one skilled in the art that that could be made
`11 as a side opening.
`12 BY MR. MORTON:
`13 Q. Okay. So let's go then to Figure 4, page 35.
`14 Are you there?
`15 A. Yep.
`16 Q. Now, Figure 4 discloses a side opening, right?
`17 A. Yes.
`18 Q. And the side opening that's disclosed is in
`19 rigid portion 20, correct?
`20 A. In this figure, I would say that it is, yes.
`21 Q. All right. In Figure 10, you pointed to
`22 before, just to be clear, Figure 10 shows side opening;
`23 is that right?
`24 A. Yes, it does.
`25 Q. And the side opening is in rigid portion 20,
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`1 right?
`2 A. Well, again, it's -- if you call the whole
`3 thing rigid portion, it is in that rigid portion. But
`4 that portion with the relief cuts is flexible or
`5 certainly could be quite flexible in comparison to the
`6 portion proximal of that which would be more rigid than
`7 that.
`8 Q. Right. But the specification labels the whole
`9 thing as rigid portion 20, right?
`10 A. The words call that rigid portion 20, correct.
`11 Q. If we look then to Figures 12 through 16 on the
`12 next page --
`13 A. Yep.
`14 Q. -- that discloses a side opening, right?
`15 A. Yes, it does.
`16 Q. And that side opening is in rigid portion 20,
`17 right?
`18 A. I'd have to relook at the -- back at the words,
`19 but I -- I think that's probably true.
`20 Now, I -- I mean, rigid portion 20 doesn't
`21 mean that this thing is infinitely rigid. It is
`22 described as being able to be fabricated from various
`23 materials, including stainless steel, Nitinol, or other
`24 materials.
`25 Q. Sure, but the side opening in Figures 12
`
`Page 19
`1 through 16 is still in what the specification describes
`2 as rigid portion 20, right?
`3 A. Yes. In what those words of the specification
`4 say, yes.
`5 Q. Are there...
`6 I think we've covered all the depictions
`7 of side openings in the specification, but are you aware
`8 of any other depictions of side openings, or description
`9 that we haven't discussed?
`10 A. Not as explicitly described, I'm not aware of
`11 others, at least not -- at least not in the guide
`12 extension catheter.
`13 Q. All right. Let's talk a little bit more about
`14 Figure 10 and the relief cuts.
`15 You know for Figures 10 and 11 that
`16 there's relief cuts added to rigid portion 20 to make it
`17 more flexible, right?
`18 A. Yes.
`19 Q. And in fact, there's more cuts in the first
`20 group of cuts for the distal end of rigid portion 20 to
`21 make it more flexible; is that right?
`22 A. I just want to go back to the disclosure and
`23 portion -- the text portion.
`24 Yeah, in the -- on page 18, that paragraph
`25 starting at line 15 that talks about that relief cuts may
`
`Page 20
`1 be classed in a first group and a second group, so there
`2 could be one group or there could be two groups the way
`3 that's written explicitly there.
`4 Q. Sure. And as we already covered, all those
`5 relief cuts are in what the specification calls rigid
`6 portion 20, right?
`7 A. Yes, in that -- from that paragraph, correct.
`8 Q. Right. And in that paragraph, and description
`9 of Figures 10 and 11, there's no teaching to make relief
`10 cuts in reinforced portion 18, right?
`11 A. There's no specific words to that effect,
`12 correct.
`13 Q. And in that discussion of the relief cuts in
`14 Figures 10 and 11, there's no teaching to make a side
`15 opening in reinforced portion 18, right?
`16 A. That seems like the same question that I just
`17 answered.
`18 Q. So is the answer yes, there's no teaching to
`19 make a side opening in reinforced portion 18?
`20 A. I just want to make sure I understand.
`21 If they were different questions, I maybe
`22 don't understand how they were different questions.
`23 Q. Well, first I asked you if there's any teaching
`24 in the paragraphs you're looking at in Figures 10 and 11
`25 to make relief cuts in the reinforced portion 18.
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`Page 21
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`1 And I think you said no?
`2 A. Correct. That's correct, that's what I said.
`3 Q. And then I asked the same question looking at
`4 those paragraphs at Figures 10 and 11. There's no
`5 teaching to make a side opening in reinforced portion 18,
`6 right?
`7 A. I see. Okay. Relief cuts versus side opening.
`8 Yeah, again, if we're assuming that the
`9 reinforced portion is the portion of the catheter further
`10 distal from this, that's correct.
`11 Q. Okay. Now, you've mentioned that the rigid
`12 portion can be made out of different materials just a
`13 second ago; do you remember that?
`14 A. Yes.
`15 Q. And I think you note in your declaration it
`16 doesn't need to be made out of metal, right?
`17 A. Yes.
`18 Q. I think it could be a stainless steel hypotube,
`19 but it also could be Nitinol; is that right?
`20 A. Yeah, I believe it says that.
`21 Yes, it does say that.
`22 Q. Okay. So we've got Nitinol and stainless
`23 steel. And then if you look at page 15 of the exhibit,
`24 lines 3 through 7, that's where it discusses this, right?
`25 A. I'm sorry. When you say page number, which --
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`1 are you using the lower left?
`2 Q. Yeah, I mean, your guys started using the page
`3 numbers of the exhibit as opposed to the page numbers of
`4 the application. So I'm referring to the lower left page
`5 15, which is the exhibit page, and then lines 3 through
`6 7.
`7 A. I see.
`8 Q. Do you see that's where it discusses the
`9 materials for the rigid portion?
`10 A. Yes.
`11 Q. And it mentions stainless steel and Nitinol
`12 tubing. And then it says other substantially rigid
`13 materials may be used as well. Do you see that?
`14 A. Yes.
`15 Q. Are you aware of any other example for the
`16 materials for rigid portion 20 other than stainless steel
`17 or Nitinol tubing or other substantially rigid materials?
`18 A. I don't think there are other specific
`19 materials described for that.
`20 Q. Okay. And then -- so I'll ask again about
`21 rigid portion 20. Every example in the specification of
`22 a side opening is an opening cut in a tube of rigid
`23 material, right?
`24 MR. VANDENBURGH: Objection, form.
`25 A. In the specific examples that we've described,
`
`Page 23
`1 the -- that whole component was referred to as a rigid
`2 portion. And I don't recall exactly the words. But
`3 again, it -- in the example that we talked about with the
`4 relief cuts, that portion can be quite flexible to the
`5 point where it really isn't rigid anymore.
`6 BY MR. MORTON:
`7 Q. And I understand that -- that opinion that you
`8 have. Right now I'm just talking about the material used
`9 and the shape.
`10 So every example in the specification of a
`11 side opening is an opening cut in stainless steel or
`12 Nitinol, or this says other substantially rigid
`13 materials, right?
`14 MR. VANDENBURGH: Same objection.
`15 A. Again, if that's -- if that's what we're
`16 referring to as a rigid portion, that's correct. But
`17 again, I think in the context of the specification as a
`18 whole, that portion in the example where it has relief
`19 cuts, regardless of the material, but material choices
`20 could further influence that, that that could be quite --
`21 quite flexible.
`22 BY MR. MORTON:
`23 Q. Sure. And again, I understand that.
`24 I'll ask my next question.
`25 Every example in the specification of a
`
`1 side opening is an opening cut into a tube, correct?
`2 A. The specific examples; that is correct.
`3 Q. Right. The examples we've discussed in Figures
`4 4, 10 and 11, and 12 through 16, those are cut into a
`5 tube of substantially rigid material, correct?
`6 A. The starting material would be substantially
`7 rigid, yes.
`8 Q. And it would be a stainless steel or Nitinol
`9 tube or other substantially rigid material, right?
`10 A. Correct.
`11 Q. So the tube that you start with, that also
`12 forms the full circumference portion of the rigid portion
`13 that is distal to the side opening in every example,
`14 right?
`15 A. Again, in those specific examples, that is the
`16 case. The specification conveys more than just those
`17 specific examples I believe to one that's skilled in the
`18 art.
`19 Q. Okay. And in all of the actual side opening
`20 examples, the tube also forms the rigid portion proximal
`21 to the side opening, right?
`22 A. In those examples that we're talking about,
`23 yes. Those specific examples.
`24 Q. So again -- and we'll get to the full teaching
`25 and your opinions in a second, but there are no examples
`
`Page 25
`
`1 or description of a side opening that is not cut into a
`2 tube of stainless steel, Nitinol, or other substantially
`3 rigid material; is that fair?
`4 MR. VANDENBURGH: Objection, form;
`5 compound.
`6 A. Again, those specific examples, that's correct.
`7 BY MR. MORTON:
`8 Q. Okay. And can you point me to any example in
`9 the specification where there is a side opening that is
`10 not cut into a tube of a substantially rigid material?
`11 A. Well, I do want to point out one other part of
`12 the specification that I think is important in this
`13 consideration, and that is in this document, in this form
`14 of it - I don't know exactly where it is - but I believe
`15 there's some language about that the side opening may be
`16 cut into those types of tubes which, you know, clearly
`17 suggest that there are alternatives to that.
`18 Now, as I understand your question,
`19 it's -- you know, we're talking about the specific
`20 examples that are described, and in those specific
`21 examples, I don't think there's an explicit -- there's
`22 not an embodiment that is specifically described where
`23 that isn't cut out of a tube.
`24 Q. Okay. The part that you're referring to may be
`25 at page 8, line 17; it goes on to page 9 of the exhibit.
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`Page 26
`1 And I think that's where you're saying is where the rigid
`2 portion may be advantageously formed; is that right, the
`3 stainless steel or Nitinol?
`4 A. So I was looking at line 17 on that page, page
`5 8; is that --
`6 Q. Yeah.
`7 A. And then the next two sentences after that, the
`8 rigid portion may include a cut-out portion and a full
`9 circumference portion.
`10 Q. Right. So your reservation was just that that
`11 doesn't say must; is that right?
`12 A. Yeah, that's one reservation.
`13 Q. Okay. And apart from that, you can't identify
`14 any example or teaching of cutting a side opening that is
`15 not cut into a tube of stainless steel, Nitinol, or other
`16 substantially rigid material, right?
`17 A. Yeah, that's correct; not a specific
`18 description.
`19 Q. All right. Let's talk about your rationale for
`20 the -- I mean, the heart of your opinion that there is
`21 written description support for a side opening that is
`22 not in the rigid portion.
`23 And I'll take you to paragraph 32 of your
`24 motion to amend declaration.
`25 THE REPORTER: Mr. Morton, can you speak
`
`Page 28
`1 configurations and materials and even rigidity, right?
`2 A. Yes, I think that's what it says.
`3 Q. And I think the heart of your opinion is that
`4 if a person of skill in the art knows those things, they
`5 can easily make a side opening in the tubular or
`6 reinforced portion. That's your opinion, right?
`7 MR. VANDENBURGH: Objection, form.
`8 A. That's what I think the specification would
`9 convey to a person of ordinary skill in the art looking
`10 at that specification.
`11 BY MR. MORTON:
`12 Q. All right. And so that's as of -- as of the
`13 time of filing of the patent, obviously 2006, if you know
`14 those things, a person of skill in the art can easily
`15 make a side opening in the reinforced portion, right?
`16 A. Yes, I think that's right.
`17 Q. I guess at the end of paragraph 33, you expand
`18 on this and you say, quote, a POSITA would understand and
`19 could apply the teachings of the specification as
`20 described above to design suitable side openings between
`21 the substantially rigid and reinforced portion.
`22 Do you see that?
`23 A. Yes.
`24 Q. So again, your opinion is that given the
`25 teachings we just described of proximal openings in the
`
`Page 27
`
`1 up a little bit for me or closer to your microphone.
`2 Thank you.
`3 MR. MORTON: I'll slide over a little.
`4 THE REPORTER: Thank you.
`5 BY MR. MORTON:
`6 Q. Are you there, Mr. Keith, paragraph 32?
`7 A. Yep, I'm just reviewing it. So, yeah, I've got
`8 it here.
`9 Q. Okay. And so the last part of that after the
`10 colon, says, that the spec teaches that the distal tube's
`11 proximal opening can be formed in the substantially rigid
`12 portion or in the distal tubular portion itself, but even
`13 a metal side opening can be made quite flexible that the
`14 substantially rigid portion need not be made out of metal
`15 and that a side opening can have various configurations.
`16 Do you see that?
`17 A. Yes.
`18 Q. So let's unpack that a little, make sure I
`19 understand your position.
`20 You're saying first that a person of skill
`21 in the art knows from the spec that the tubular or
`22 reinforced portion can have a proximal opening, right?
`23 A. Yes.
`24 Q. And a person of skill in the art knows that the
`25 rigid portion can have a side opening of various
`
`Page 29
`1 reinforced portion and various shapes of side openings in
`2 the rigid portion, a person of ordinary skill in the art
`3 could easily make a separate side opening segment in
`4 between?
`5 A. I