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`Garry Condon, M.D. Vol II
`Page 235
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 233
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` --------------------
` New World Medical, Inc.,
` Petitioner
` v.
` MicroSurgical Technology, Inc.,
` Patent Owner
` --------------------
` Case Nos. IPR2020-01573; IPR2020-01711;
` IPR2021-00017; IPR2021-00065; IPR2021-00066
`U.S. Patent Nos. 9,107,729; 9,358,155; 9,820,885;
` 10,123,905, 9,999,544
` --------------------
` VIDEOTAPED DEPOSITION OF GARRY CONDON, M.D.
` Volume 2
`
` I N D E X
` Volume 2
` Wednesday, August 18, 2021
` WITNESS PAGE
` Called by the Petitioner:
` EXAMINATION BY MR. TUCKER................... 236
`
` E X H I B I T S
` (Attached to transcript)
` GARRY CONDON, M.D., DEPOSITION EXHIBITS PAGE
`Condon Exhibit 15 May 19, 2015 Notice of 238
` Allowance and Fee(s) Due
` Application Number 14/481,754
`Condon Exhibit 16 United States Patent 258
` Patent No. US 9,820,885 B2
`Condon Exhibit 17 United States Patent 258
` Patent No. US 10,123,905 B2
`Condon Exhibit 18 United States Patent 272
` Patent No. US 9,999,544 B2
`Condon Exhibit 19 United States Patent 278
` Patent No. US 9,358,155 B2
`
`Page 236
` THE VIDEOGRAPHER: Today's date is August
` the 18th, the year 2021, the time is 9:02 a.m.
` This is Volume 2 to the deposition of Garry
` Condon.
` Will our court reporter please swear our
` witness?
` THE COURT REPORTER: Let me remind you that
` you are still under oath.
` MR. TUCKER: Thank you.
` GARRY CONDON, M.D., called as a witness by
` Petitioner New World Medical, Inc., having been
` previously duly sworn, continued to testify as
` follows:
` DIRECT EXAMINATION
` BY MR. TUCKER:
` Q. All right. Good morning, Dr. Condon. How
` are you?
` A. Good morning.
` Q. We'll try to move quick today. After we --
` after we finished last night, did you -- did you
` review anything to prepare yourself for today?
` A. No.
`
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`DATE TAKEN: Wednesday, August 18, 2021
`TIME: 9:02 a.m. - 10:43 a.m.
` Eastern Daylight Time
`PLACE: Embassy Suites
` 202 North Tamiami Trial
` Sarasota, Florida 34236
`
` Examination of the witness taken before:
` SUSAN D. WASILEWSKI, RPR, CRR, CMRS, CRC, FPR
` ~ Realtime Systems Administrator ~
`
`____________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`Page 234
`
` APPEARANCES
`Counsel for Petitioner, New World Medical, Inc.:
` CALFEE, HALTER & GRISWOLD LLP
` BY: TODD R. TUCKER, ESQUIRE
` ttucker@calfee.com
` 1405 Calfee Building
` Cleveland, Ohio 44114
` Phone: (216) 622-8200
`
` NEW WORLD MEDICAL
` BY: DAVID KLANN, ESQUIRE
` dklann@newworldmedical.com
` 10763 Edison Court
` Rancho Cucamonga, California 91730
` Phone: (800) 832-5327
`
`Counsel for Patent Owner, MicroSurgical Technology, Inc.:
` WILEY REIN LLP
` BY: TERESA SUMMERS, ESQUIRE
` tsummers@wiley.law
` LAWRENCE M. SUNG, Ph.D., ESQUIRE
` lsung@wiley.law
` 1776 K Street NW
` Washington, DC 20006
` Phone: (202) 719-4181
`
`Also Present:
` LAJUANA PRUITT, Videographer
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`Digital Evidence Group C'rt 2021
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`1 (Pages 233 to 236)
`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 1 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
`
`Garry Condon, M.D. Vol II
`Page 239
`
`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 237
` Q. You didn't review the transcript?
` A. No.
` Q. Okay. Did you have any discussions with
` counsel?
` A. No.
` Q. Give me a rough idea of how many hours it
` took to draft your report?
` A. A lot. I would say the best part of a week,
` so probably close to, you know, 40 hours. I'm
` estimating.
` Q. And did anyone help you draft your report?
` A. Only to the extent that they -- I had
` assistance with the formatting of applying the prior
` art to a specific claim and matching -- so that
` there was a continuity between Dr. Netland's listed
` assertions and what claims they applied to, so to
` speak, so organizing it.
` Q. When you say -- sorry to interrupt. When
` you say they, who are you referring to?
` A. That's the people -- the counsel people who
` took what my opinions were and placed them in a
` format that related to the petition grounds and
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` BY MR. TUCKER:
` Q. I apologize. There is only two copies. Can
` I let your counsel look at this for a second?
` A. Please.
` MR. TUCKER: I'm really sorry.
` MS. SUMMERS: That's all right.
` MR. TUCKER: It's a Notice of Allowance from
` the '729 patent.
` MS. SUMMERS: Okay.
` BY MR. TUCKER:
` Q. Okay. So, Dr. Condon, the court reporter
` has handed you Exhibit 15, which is a -- I'm trying
` to find the date on this. It is -- oh, there it is.
` It didn't print very well. It is a May 19th, 2015
` Notice of Allowance and Fees Due that was issued in
` Application Number 14/481,754, which I will
` represent to you became the '729 patent. Could you
` take a look at this and let me know if you've seen
` this before?
` A. I've not seen this before.
` Q. Okay. Since you haven't seen that, we'll
` move on.
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`Page 238
` claims so that it was organized, basically.
` Q. So -- just so that we have a clear record,
` so the attorneys at Wiley Rein?
` A. The attorneys at Wiley Rein and the staff
` or --
` Q. Okay. And did the attorneys provide you
` with background on patent law?
` A. To some extent, to the extent that I was
` trying to understand the formatting and the
` organization.
` MR. TUCKER: I always want to call it Wiley
` Rein, so I had to think there, you know, Rein,
` Rein. I actually didn't know it was that until
` you -- one of the telephone calls, I think you
` said it. Oh, wow, I've been saying the name
` wrong.
` Okay. This will be Exhibit 15. Oh, shoot.
` Okay.
` (Condon Exhibit 15 was marked for
` identification.)
` MR. TUCKER: Give me one second to find the
` other one.
`
`Page 240
` So is it your opinion that the beveled sides
` of the Quintana needle are not first and second
` cutting edges?
` MS. SUMMERS: Objection; form.
` A. So to the extent that we're talking about
` Quintana's publication and description, there's
` nowhere I can apply the term "cutting edges" in that
` context of Quintana.
` Q. Does Quintana -- and feel free -- Quintana
` is somewhere in your stack. Does Quintana state
` that the edges of its needles are not sharp?
` MS. SUMMERS: Objection; form.
` A. I don't believe he characterizes -- I'd have
` to read it again. I'm not recalling that he states
` anything very much about the needle, including that.
` If there was some specific element of his
` publication that you're referring to, I'd be
` certainly happy to look at it, but I'm just trying
` to recall.
` Can I just take one second here just to
` be -- I'm going to look at this for just a moment
` and then I was going to look at what --
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`Digital Evidence Group C'rt 2021
`
`2 (Pages 237 to 240)
`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 2 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 241
` THE VIDEOGRAPHER: Mr. Tucker, can we go off
` the record while he's looking at that for a
` moment?
` MR. TUCKER: Yeah. Yes.
` THE VIDEOGRAPHER: We're going off the
` record at 9:09 a.m.
` (Recess from 9:09 a.m. until 9:11 a.m.)
` THE VIDEOGRAPHER: We're back on the record
` at 9:11.
` BY MR. TUCKER:
` Q. Okay. You were taking a second and then we
` had some microphone issues. So is there anything
` you want to add to your answer?
` A. That I was taking a second, but just now the
` question again -- and specifically the question
` again, was there -- you started with was there
` anything...
` Q. Yeah. I believe the question was --
` actually, let me see what I said here because I
` got -- oh.
` So is it your opinion that the beveled sides
` of the Quintana needle are not first and second
`
`Garry Condon, M.D. Vol II
`Page 243
` cutting edges being formed at the spaced apart
` locations in the '729 patent.
` Q. Does the '729 patent say any -- say anything
` or provide any information about how sharp the
` cutting edges are?
` MS. SUMMERS: Objection; outside the scope.
` A. So I can -- to my recollection and -- the
` lateral cutting edges and only the lateral cutting
` edges in the '729 patent are sharp and capable of
` cutting tissue.
` Q. Does the '729 patent provide a measure of
` how sharp those cutting edges are?
` MS. SUMMERS: Objection; outside the scope.
` A. I never analyzed it.
` Q. Okay. If Quintana's goal was to create an
` opening in the trabecular meshwork, wouldn't
` sharpening the beveled sides been an obvious next
` step to make creating that opening easier?
` MS. SUMMERS: Objection; form, outside the
` scope.
` A. I could answer in two parts. One is he
` makes no mention of anything like that or the
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`Page 242
` cutting edges? That was the question that was
` pending.
` MS. SUMMERS: Objection; form.
` A. So in Quintana, anybody reading Quintana
` would not have -- Quintana made no reference to the
` beveled sides of his trabeculotome tip as being
` sharp. He didn't characterize the needle tip to any
` great extent, and Dr. Netland's assertion that there
` is cutting edges being demonstrated in Quintana is,
` I think, erroneous and incorrect.
` Q. Okay. Could you -- for the record, what
` paragraph were you looking at on your paragraphs?
` Can you look at your expert report?
` A. I'm looking at Paragraph 24.
` Q. Okay. Does -- do you recall, does the '729
` patent give any information about what constitutes a
` cutting edge?
` MS. SUMMERS: Objection; outside the scope.
` A. So the patent, in my summary, and in looking
` at the patent claims -- so the '729 claim indicates
` that there is cutting of the TM by first and second
` cutting edges, if that's what you're asking me,
`
`Page 244
` necessity to do so, or the suggestion that that
` would help, number one.
` And number two is he indicates that he uses
` the pointed tip to perform his procedure of opening
` the trabecular meshwork.
` Q. So is it your opinion that Quintana -- in
` Quintana, the sides are not sharp?
` MS. SUMMERS: Objection; form.
` Q. Actually, let me strike that. Let me
` rephrase it.
` So is it your opinion that in Quintana the
` sides of his needle are not sharp?
` MS. SUMMERS: Same objection.
` A. Is it my contention that in his article he
` states that the sides of the needle are not sharp
` or --
` Q. Let's start there. Does he state
` specifically the sides of the needle are not sharp?
` MS. SUMMERS: Objection; form.
` A. I don't believe he states that emphatically
` the sides of the needle are not sharp. To that
` extent, he doesn't characterize the needle to any
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`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 3 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 245
` great extent, so he's -- let me just see really
` quick here. I'm going to refer to my --
` So I'm going to say that Quintana doesn't
` indicate that his needle -- that the sides of his
` needle are -- he doesn't suggest that they are
` sharp, he doesn't specifically say that they are not
` sharp. As I said, I can't see any characterization
` along those lines within Quintana, so in that
` regard, I would disagree with anybody that would
` suggest that the needle used by Quintana would have
` any sharp edges.
` Q. I believe you opined in Paragraphs 23 and 28
` that Quintana's needs is not a dual-bladed --
` dual-blade device because the beveled sides and
` sharp point act as a single blade. Is that -- is
` that correct?
` MS. SUMMERS: Objection; misstates the
` testimony.
` A. I'm saying that the sides are not sharp and
` intended to cut tissue, so there's no dual blade on
` that basis, but if they were -- as I said in my
` declaration, they needed to be sharp and intended to
`
`Garry Condon, M.D. Vol II
`Page 247
` then it would be my opinion that this surface of the
` bevel would constitute a single blade or a single
` cutting edge.
` Q. And is a single cutting edge, where you have
` a first side, a sharp point, and a second side to
` form that single cutting edge, is that acting
` essentially equivalently to a device with dual
` cutting edges?
` MS. SUMMERS: Objection; form, calls for a
` legal conclusion.
` A. It would be -- if the sides were sharp, the
` tip is sharp, you have a single cutting edge. You
` don't have separate cutting edges, if that was the
` question you were asking me.
` Q. No. The question is in that scenario of the
` single blade with sharp sides, is it acting the same
` as a device with a dual blade?
` MS. SUMMERS: Objection; calls for a legal
` conclusion.
` A. I don't know.
` Q. What would you need to know to figure that
` out?
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`Page 246
` cut tissue, which they are not, then the entire
` surface of the single bevel, including the sharp
` point and sides, must also be deemed as a single
` cutting edge or blade.
` So I'm -- the key term here is, you know,
` are the edges sharp and intended to cut tissue, and
` the answer is no.
` Q. Okay. So if the edges were sharp, it's your
` opinion that they would only form a single cutting
` edge?
` MS. SUMMERS: Objection; form, misstates the
` testimony.
` A. If my opinion was that they were sharp,
` which is not my opinion -- so you're asking
` hypothetically another opinion of mine which is
` not --
` Q. Well, it's written right here in the
` paragraph, sir.
` A. Okay. So --
` Q. I mean, let's quit dancing around this.
` A. So, in my opinion, they are, you know, not
` sharp. If somebody else deemed them to be sharp,
`
`Page 248
` MS. SUMMERS: Same objection.
` A. I don't know. I don't know what I would
` need to know to figure it out.
` Q. If Quintana's needle had sharp sides, would
` it act the same as the dual-bladed cutting device
` disclosed in the '729 patent?
` MS. SUMMERS: Objection; form, calls for a
` legal conclusion.
` A. I can't conclude how it would behave. I
` have no experience with an instrument or seeing it
` demonstrated.
` Q. Do the inventions of the '729 patent cover a
` bent needle --
` MS. SUMMERS: Object --
` Q. -- used to remove a section of TM?
` MS. SUMMERS: Objection; form, beyond the
` scope.
` A. I would say no, the '729 does not refer to a
` bent needle.
` Q. Okay. If the point of Quintana's needle was
` not sharp, would that make Quintana's -- strike
` that.
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`Digital Evidence Group C'rt 2021
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`4 (Pages 245 to 248)
`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 4 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 249
` If the point of Quintana's needle was not
` sharp and the sides were, would that make it a
` dual-bladed device?
` MS. SUMMERS: Objection; form.
` A. You're ascribing hypothetical
` characteristics to a needle that I can't say what it
` would be. As you've changed these descriptions of
` the needle, I can't tell you what it would be.
` Q. Okay. You can't answer the question?
` A. I don't know that I'm not answering the
` question. I'm telling you -- you asked me what it
` would be and so my answer to the question is I don't
` know what it would be. So you're taking away the
` sharp tip and you're adding sharp sides, a lot of
` things going on, so I don't know what it would be.
` It would still be a needle.
` Q. And needles don't have sharp sides?
` MS. SUMMERS: Objection; form.
` A. Needles have sharp tips, points, sharp
` points.
` Q. But they don't have sharp sides?
` A. They don't have sharp sides.
`
`Garry Condon, M.D. Vol II
`Page 251
` trabecular tissue otherwise not described is what he
` says in his article.
` Q. Exhibit 3 is the '729 patent. Do you have
` that available?
` A. Exhibit 3?
` Q. Yes.
` A. Is that the patent?
` Q. That's the patent, yeah, that's the '729
` patent.
` A. I'm sure I do.
` Q. That's it. Is that it?
` A. This is it.
` Q. Okay. Let's go to Column 7, the very last
` page, and the first paragraph there is the end of
` Claim 1.
` A. I'm sorry. The first paragraph is --
` Q. That's the end of Claim 1. If you look back
` at Page 6, you will see that's the start of Claim 1.
` A. Okay.
` Q. And as a matter of fact, feel free to look
` at the entire claim.
` Does -- do the claim -- does Claim 1 in the
`
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` Q. Okay. So do you recall yesterday we were --
` we had some discussions about a reference written by
` Jacobi?
` A. Right.
` Q. Okay. And it's in your stack if you need
` it. Is it your opinion that Jacobi does not
` disclose taking strips of TM from Schlemm's canal?
` MS. SUMMERS: Objection; form.
` A. So I'm trying to recall. I believe you
` asked me that question yesterday, and I could just
` read to you Jacobi's description of what he found to
` be as accurate as possible with the answer.
` Q. How about this. Do you recall that
` Jacobi -- and again, look at the article if you
` want, but do you recall that Jacobi's device results
` in strings of trabecular meshwork?
` MS. SUMMERS: Objection; form.
` A. Okay. Let's look here. Gonioscopically,
` strings of trabecular tissue could be observed
` intraoperatively by goniocurettage, and he's
` certainly not describing a strip of trabecular
` meshwork or the defined width, so strings of
`
`Page 252
` '729 patent require a strip of a defined width?
` MS. SUMMERS: Objection; beyond the scope.
` A. Yeah, I believe it does, with the said width
` of this strip of tissue width W, width W being
` approximately equal to the distance between the
` first and second cutting edges.
` Q. So the width of the strip just needs to be
` the distance between the cutting edges, correct?
` MS. SUMMERS: Objection; beyond the scope.
` A. I'm just going to say it needs to be of a
` defined width. I don't know what the width -- exact
` width is between the cutting edges, but I believe
` that the patent claim is stating that the width be
` equal to the distance between the first and second
` cutting edges, is what this said.
` Q. Right. I'm not asking about a measurement.
` I'm just asking you the patent would say that the
` width is just the same as the distance between the
` cutting edges?
` MS. SUMMERS: Objection; misstates the
` record.
` A. You know, the specific definition of what
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`5 (Pages 249 to 252)
`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 5 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 253
` the width would be, given that it's approximately
` equal to the distance between the first and second
` cutting edges, I can't tell you what that width
` would specifically be.
` Q. Again, I'm not asking a measurement. I'm
` just asking conceptually, the width is approximately
` the distance between the cutting edges, correct?
` A. Yes. I would expect that by this
` description, a strip of tissue I'm going to say
` would be uniform with W, approximately equal to the
` distance between the first and second cutting edges.
` I'm reading right from the claim.
` Q. Okay. Well, where does it say uniform,
` Dr. Condon, in the claim?
` A. I'm saying uniform.
` Q. Okay. So you're putting uniform into your
` understanding of what the claims are?
` MS. SUMMERS: Objection; form.
` A. No, I'm taking uniform out of what my
` understanding of the claim is. I'm not putting it
` in there, so --
` Q. Let me ask another way. When you read the
`
`Garry Condon, M.D. Vol II
`Page 255
` MS. SUMMERS: Calls for a legal conclusion.
` A. So let me just get, again, what you're
` asking me. Was -- I'm going to ask you -- I'm
` sorry.
` Q. Do you want me to ask it again?
` A. Please.
` Q. Okay. So if you excise a piece of tissue
` and it does not have uniform width along the length
` of the strip, in your opinion does that meet the
` width W claim language of the '729 patent?
` MS. SUMMERS: Same objection.
` A. I can't -- I don't think I can give you a --
` an accurate description of what -- what am I using
` to do it? What does the meshwork look like? And
` nowhere in Quintana, you know, or, for that matter,
` Jacobi, is there a described strip of trabecular
` meshwork being excised, and I would further say that
` in Dr. Netland's declaration regarding any statement
` along those lines, that it's incorrect.
` Q. Okay. The -- in Quintana, he states that he
` bends the needle to 20 to 30 degrees, right?
` A. Correct.
`
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`Page 254
` claim, do you believe it requires a uniform width
` for the strip?
` MS. SUMMERS: Objection; beyond the scope.
` A. I can't read the claim and say specifically,
` again, the width, but equal to the distance between
` the first and second cutting edges kind of defines
` the width.
` Q. Right, but focused on -- focusing on
` uniform, it says --
` A. Uniform is not there.
` Q. Thank you.
` A. Okay.
` Q. And then it's approximately equal to, that's
` the language in the claim, right?
` A. That's the language in the claim.
` Q. Okay. So if you excised a piece of tissue
` that does not have a uniform width along the length
` of the strip, in your opinion does that meet the
` width W claim language?
` MS. SUMMERS: Objection; calls for a legal
` conclusion.
` THE WITNESS: I'm sorry. I missed that.
`
`Page 256
` Q. As a POSA reading Quintana, where is the
` bend?
` MS. SUMMERS: Objection; form.
` A. As a POSA reading Quintana?
` Q. Uh-huh.
` A. It's, in my opinion, not possible to
` determine where the bend is.
` Q. So Quintana is using a tangential approach
` to reach Schlemm's canal, right?
` MS. SUMMERS: Objection; form.
` A. As he states, it's a tangential approach.
` Q. If the bend in Quintana was in the bevel,
` would the convexity of the tip still face Schlemm's
` canal?
` MS. SUMMERS: Objection; form.
` A. I don't know what the convexity would face.
` His description is bending the tip to get the tip
` pointed away from the back wall of the canal, so how
` the convexity relates to the back wall of the canal
` is not entirely clear to me or from what I'm
` reading.
` Q. Do the claims of the '729 patent require a
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2021
`
`6 (Pages 253 to 256)
`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 6 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 257
` bend at a specific place in the device that the
` claims describe?
` MS. SUMMERS: Objection; outside the scope.
` A. The first answer is I'd have to read the
` entire claim and I don't even know if I'm capable of
` dissecting that exact piece of information out of
` the claim, but the claim calls for an angulation of
` the tip of at least 30 to 90 degrees, to my
` recollection.
` Q. Do you under -- do you have an understanding
` of what in patent law the term "obviousness" means?
` MS. SUMMERS: Objection; outside the scope.
` A. I would have to say no, I couldn't explain
` it.
` Q. Okay. I'm going to put -- we've spent a lot
` of time on the '729 patent. There is four other
` patents. We're not going to spend as much time on
` the other patents, because the look on your face,
` you're like, oh, boy, here come --
` MR. TUCKER: So this is going to be
` Exhibit 16.
` THE COURT REPORTER: 15 -- 16.
`
`Garry Condon, M.D. Vol II
`Page 259
` Q. Do you see where it says "Continuation of
` Application No. 14/789,632"?
` A. Yes, I do.
` Q. Okay. Do you know what a continuation -- a
` continuation is?
` A. I don't in patent terminology specifically
` know what that refers to.
` Q. The claims of the '885 patent, do you recall
` if they require a claim language called a platform?
` MS. SUMMERS: Objection; form.
` Q. And feel free to look at the patent. This
` isn't a memory test.
` A. Yeah, I'm looking at the patent but, you
` know, it's probably more expeditious for me to look
` at my declaration because I can't remember exactly
` what is on there and I don't have that.
` Q. It's right in here.
` MR. TUCKER: I'll try to not knock
` everything over.
` Q. Here you are. It is Exhibit 12.
` A. Okay. So the -- in -- for the purposes of
` my discussion and my declaration, the relationship
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`Page 258
` (Condon Exhibit 16 was marked for
` identification.)
` BY MR. TUCKER:
` Q. So we're going to go to that guy now. This
` Exhibit 16 is US Patent 9,820,885. Dr. Condon, have
` you seen this patent before?
` A. I have seen this patent before, yes.
` Q. And it's okay if I call this the '885,
` you'll know what we're talking about?
` A. The '885.
` Q. Is this patent related to the '729 patent?
` MS. SUMMERS: Objection; form.
` A. So in what form do you mean related? In
` terms of the patent office's specific relations? I
` don't know if you call it prosecution history or
` whatever. What are you asking about being related?
` In what way is it related?
` Q. Do you have an understanding in patent
` law -- strike that.
` Do you see where it says "Related US
` Application Data" on the cover sheet of '885?
` A. I do, yes.
`
`Page 260
` for me between '885 and '729 is that it still calls
` for the removal of trabecular meshwork with the use
` of a dual-blade device, and first and second cutting
` edges, but in addition there is a requirement of a
` platform.
` Q. Right.
` A. Right.
` Q. What paragraph are you reading from?
` A. 13.
` Q. 13? Okay. As a person with skill in the
` art, what does the term platform as used in the '885
` patent mean to you?
` MS. SUMMERS: Objection; outside the scope.
` A. I can read it from the -- I can read it. "A
` tip which extends laterally from the end of the
` probe, said tip comprising a platform which has a
` top surface, a bottom surface, a right side edge, a
` left side edge, and a terminal end, the terminal end
` being configured to penetrate through trabecular
` meshwork tissue."
` Q. Okay. And where were you reading from in
` the patent, for the record?
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2021
`
`7 (Pages 257 to 260)
`202-232-0646
`
`Petitioner - New World Medical
`Ex. 1042, p. 7 of 24
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`

`

`8/18/2021
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`New World Medical, Inc. v. MicroSurgical Technology, Inc.
`Page 261
` A. I was reading from under -- I guess it's
` Claim 1, under (a), second paragraph.
` Q. So does the platform there, it has a top
` surface, a bottom surface, a right side edge, a left
` side edge, and a terminal end, is that -- in that
` platform, is the flat horizontal surface usually
` higher than the rest of the platform?
` MS. SUMMERS: Objection; form.
` A. Is the horizontal surface higher than the
` rest of the platform?
` Q. Uh-huh. Yes, that's the question.
` A. That's the question. So it doesn't say that
` here but, you know, to me, the term platform would
` suggest that the surface of it is elevated and
` uniformly flat across.
` Q. Okay. So by uniformly flat, the horizontal
` surface would not be higher than the other parts of
` the platform?
` MS. SUMMERS: Objection; form, outside the
` scope.
` A. We're getting into imaginary structural
` descriptions here, so I would just say a platform is
`
`Garry Condon, M.D. Vol II
`Page 263
` analyze, other than to say the only place that I see
` a description of something that would lend itself to
` a platform is in the '885 claim.
` Q. Okay. I need to go back to Quintana for a
` second because I forgot to ask something, and I'm
` trying to finish up with that one.
` A. Okay.
` Q. Is a device that has a sharp point and two
` cutting edges a dual-blade device under the '729
` patent, in your opinion?
` MS. SUMMERS: Objection; calls for a legal
` conclusion.
` A. So we're back to Quintana, you said?
` Q. Just kind of hypothetically.
` A. So we're back to Quintana. Does -- and your
` question was again? Because I don't see what you
` just asked me in that question relates to Quintana,
` so --
` Q. I might have confused you. So let's push
` Quintana aside. I'm just trying to get your
` understanding of a dual-bladed device.
` A. Uh-huh.
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`Page 262
` a flat uniform surface that is typically higher than
` the areas around it, and I -- go ahead. I'm sorry.
` Q. I was going to ask, can you point to me in
` the '885 patent if it -- strike that.
` Can you -- can you show me in the '885
` patent any support for your opinion, Dr. Condon?
` MS. SUMMERS: Objection; beyond the scope.
` A. And that opinion was? I can't forget what
` opinion -- which one I gave -- the opinions here --
` Q. Yeah. That the platform is -- hang on a
` second. I lost my notes.
` That the platform is a flat horizontal
` surface higher than the adjoining area.
` MS. SUMMERS: Objection; misstates the
` testimony.
` A. So we're talking about platform as it
` applies to the '85 -- the '885.
` Q. That's correct.
` A. The '885 describes a platform as a
` four-sided structure, and I'm just not seeing what