CASE 0:20-cv-00358-ECT-HB Doc. 147-1 Filed 07/27/21 Page 1 of 55
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`CASE 0:20-cv-00358-ECT-HB Doc. 147-1 Filed 07/27/21 Page 1 of 55
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`Exhibit 1
`Exhibit 1
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`Page 1
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`OWTEx. 2166
`Tennant Company v. OWT
`IPR2021-00625
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`CASE 0:20-cv-00358-ECT-HB Doc. 147-1 Filed 07/27/21 Page 2 of 55
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`· · · · · · · · · · ·UNITED STATES DISTRICT COURT
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`· · · · · · · · · · · · DISTRICT OF MINNESOTA
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`· · · · · · · · · · · · · · · · ·Civil File No. 20-cv-00358-ECT-HB
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`· · · ·- - - - - - - - - - - - - - - - - - - - - - - - - -
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`·
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`· · · ·OXYGENATOR WATER
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`· · · ·TECHNOLOGIES, INC.,
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`· · · · · · · · · · · · · · · Plaintiff,
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`· · · ·v.
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`· · · ·TENNANT COMPANY,
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`Page 1
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`·1· · · · · · · · · · · · · ·C O N T E N T S
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`Page 3
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`·2· · · · · · · · · · · · · · · · · · · · · · · · · · · · · PAGE
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`·3· · EXAMINATION BY MR. JOHNSON· · · · · · · · · · · · · · · ·6
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`·4· · EXAMINATION BY MR. LOUWAGIE· · · · · · · · · · · · · · 108
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`·5· · FURTHER EXAMINATION BY MR. JOHNSON· · · · · · · · · · ·114
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`·6
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`·7· · · · · · · · · · · · · E X H I B I T S
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`·8
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`·9· EXHIBIT/DESCRIPTION· · · · · · · · · · · · · · · · · · ·PAGE
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`· · · · · · · · · · · · · · · Defendant.
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`10
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`· · · ·- - - - - - - - - - - - - - - - - - - - - - - - - -
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`11· Exhibit 501· · · · United States Reissued· · · · · · · · ·19
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`·
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`· · · · · · · · · · · · · Video Deposition of
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`· · · · · · · · · · · · · RALPH E. WHITE, Ph.D.
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`· · · · · · · · · · · · ·Thursday, July 1, 2021
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`· · · · · · · · · · · · · · · ·9:00 a.m.
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`· · · ·Court Stenographer:
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`· · · ·Myrina A. Kleinschmidt
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`· · · ·Registered Merit Reporter
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`12· previously· · · · ·Patent US RE45,415 E
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`13· Exhibit 502· · · · United States Reissued· · · · · · · · ·19
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`14· previously· · · · ·Patent US RE47,092 E
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`15· Exhibit 503· · · · United States Reissued· · · · · · · · ·19
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`16· previously· · · · ·Patent US RE47,665 E
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`17· Exhibit 521· · · · United States Patent US· · · · · · · · 22
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`18· previously· · · · ·6,689,262 B2
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`19· Exhibit 525· · · · United States Patent US· · · · · · · · 23
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`20· previously· · · · ·7,670,495 B2
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`21· Exhibit 569· · · · Defendant's Notice of Claim· · · · · · ·5
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`22· · · · · · · · · · ·Construction Deposition of
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`23· · · · · · · · · · ·Dr. Ralph White
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`24· Exhibit 570· · · · Curriculum Vitae of· · · · · · · · · · 17
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`25· · · · · · · · · · ·Dr. Ralph E. White
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`· · · ·Certified Realtime Reporter
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`·1· · ·APPEARANCES:
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`·2
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`·3· · ·FOR THE PLAINTIFF:
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`·4· · ·Nathan D. Louwagie
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`·5· · ·Aaron W. Pederson
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`·6· · ·Attorneys at Law
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`·7· · ·CARLSON, CASPERS, VANDENBURGH & LINDQUIST, P.A.
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`·8· · ·225 South Sixth Street, Suite 4200
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`·9· · ·Minneapolis, MN 55402
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`10· · ·nlouwagie@carlsoncaspers.com
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`11· · ·apederson@carlsoncaspers.com
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`12
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`13· · ·FOR THE DEFENDANT:
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`14· · ·R. Scott Johnson
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`15· · ·Attorney at Law
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`16· · ·FREDRIKSON & BYRON, P.A.
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`17· · ·111 E. Grand Avenue, Suite 301
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`18· · ·Des Moines, IA 50309-1977
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`19· · ·rsjohnson@fredlaw.com
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`20
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`21· · ·ALSO PRESENT:· Sarah Kleinschmidt, Videographer
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`22
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`23· · · · · · · · · · · · · · · * * * * *
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`· · · · · ·ACCESS TO THE ELECTRONIC ORIGINAL TRANSCRIPT FILE
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`24· · · · · · HAS BEEN GRANTED TO FREDRIKSON & BYRON, P.A.
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`· · · · · · · · · · · · · · · · * * * * *
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`25
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`·1· Exhibit 571· · · · Sixth Edition McGraw-Hill· · · · · · · 28
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`·2· · · · · · · · · · ·Electronics Dictionary
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`·3· Exhibit 572· · · · The New IEEE Standard· · · · · · · · · 35
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`·4· · · · · · · · · · ·Dictionary of Electrical
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`·5· · · · · · · · · · ·and Electronics Terms
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`·6· Exhibit 573· · · · Resistivity/Conductivity· · · · · · · ·63
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`·7· · · · · · · · · · ·Chart
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`·8· Exhibit 574· · · · Expert Declaration of· · · · · · · · · 68
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`·9· · · · · · · · · · ·Ralph E. White
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`10· Exhibit 575· · · · Responsive Expert· · · · · · · · · · ·97
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`11· · · · · · · · · · ·Declaration of Ralph E. White
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`16· · · · · · · · · · · · · · · ·* * * * *
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`CASE 0:20-cv-00358-ECT-HB Doc. 147-1 Filed 07/27/21 Page 3 of 55
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`·1· · · · · · · · · VIDEO DEPOSITION, taken pursuant to Notice of
`·2· · ·Taking Deposition, and taken before Myrina A.
`·3· · ·Kleinschmidt, Registered Merit Reporter, Certified
`·4· · ·Realtime Reporter, and Notary Public.
`·5· · · · · · · · · WHEREUPON, the following proceedings were
`·6· · ·duly had:
`·7· · · · · · · · · (Deposition Exhibit Number 569 marked for
`·8· · ·identification by the court stenographer.)
`·9· · · · · · · · · THE VIDEOGRAPHER:· We are now on the record.
`10· · ·My name is Sarah Kleinschmidt.· I'm a videographer with
`11· · ·Twin West Reporting.· Today's date is Thursday, July 1st,
`12· · ·2021, and the time is 9 a.m. Central Time.
`13· · · · · · · · · This is the deposition of Dr. Ralph White and
`14· · ·is being held in the matter of Oxygenator Water
`15· · ·Technologies, Incorporated, versus Tennant Company, Civil
`16· · ·File Number 20-cv-00358-ECT-HB.
`17· · · · · · · · · Now, will counsel please identify themselves
`18· · ·for the record and who they represent, after which our
`19· · ·court reporter, Myrina, will administer the oath.
`20· · · · · · · · · MR. LOUWAGIE:· Nate Louwagie from Carlson,
`21· · ·Caspers for plaintiff Oxygenator Water Technologies, Inc.,
`22· · ·and Dr. White.· And I suppose because I'm closer to the
`23· · ·mic, I'll also introduce my colleague Aaron Pederson for
`24· · ·all the same entities.
`25· · · · · · · · · MR. JOHNSON:· And I'm Scott Johnson with
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`Page 7
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`·1· A· Yes.
`·2· Q· When was the last time that you did that?
`·3· A· Let me think about that.· I don't think I've been deposed
`·4· · ·on claim construction matters, but I've issued
`·5· · ·declarations on claim construction matters.
`·6· Q· And do you recall the cases in which you've issued
`·7· · ·declarations in claim construction matters?
`·8· A· It's been some time.· I don't recall details about those
`·9· · ·at this time.
`10· Q· Do you recall the technical nature of the cases?
`11· A· Yes.· The technical nature of the cases were typically
`12· · ·associated with lithium-ion batteries and separators
`13· · ·associated with lithium-ion batteries.
`14· Q· And is battery technology your general area of expertise?
`15· A· Well, my general area of expertise is really what I like
`16· · ·to call electrochemical engineering, and I say that
`17· · ·because we have worked over the years in a number of
`18· · ·different areas including batteries.
`19· Q· And electrochemical engineering, can you tell me generally
`20· · ·what that is?
`21· A· Well, thank you for asking.
`22· · · · · · · · · It's something that I was able to learn under
`23· · ·what I would say most people agree is the number one
`24· · ·electrochemical engineer in the world and his name is
`25· · ·Professor John Newman formerly at the University of
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`Page 8
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`·1· · ·Fredrikson & Byron here on behalf of defendant Tennant
`·2· · ·Company.
`·3· · · · · · · · · (Whereupon, the oath was administered
`·4· · ·by the court stenographer.)
`·5· · · · · · · · · WITNESS RESPONSE:· I do.
`·6· · · · · · · · · · · ·RALPH E. WHITE, Ph.D.,
`·7· · · · · a witness in the above-entitled proceedings,
`·8· · · · · · · ·after having been first duly sworn,
`·9· · · · · · · · ·testified under oath as follows:
`10· · · · · · · · · · · · · · EXAMINATION
`11· BY MR. JOHNSON:
`12· Q· Good morning.
`13· A· Good morning, Scott.
`14· Q· Dr. White, could you please state your full name and
`15· · ·address for the record, sir?
`16· A· Ralph Edward White, 5 Brandywine--that's
`17· · ·B-r-a-n-d-y-w-i-n-e--Lane, Columbia, South Carolina 29206.
`18· Q· Dr. White, have you ever been deposed before?
`19· A· Yes, I have.
`20· Q· And when was the last time that you were deposed?
`21· A· Oh, about a month or so ago.
`22· Q· Was that in an intellectual property matter?
`23· A· No.
`24· Q· Okay.· Have you ever testified before on claim
`25· · ·construction issues in a patent case?
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`·1· · ·California at Berkeley.
`·2· · · · · · · · · And he was in the department of chemical
`·3· · ·engineering, but that department was well known for
`·4· · ·electrochemical engineering because of his mentor, a
`·5· · ·fellow named Charles Tobias, who was originally trained in
`·6· · ·Hungary, I believe.
`·7· · · · · · · · · But the idea is that, well, we're really
`·8· · ·studying charged transfer at interfaces when we say we're
`·9· · ·studying electrochemical engineering.· Chemical engineers
`10· · ·oftentimes study chemical changes, but electrochemical
`11· · ·engineers study chemical changes together with electron
`12· · ·transfer particularly at solid liquid interfaces producing
`13· · ·gases, storing energy, making materials, et cetera.
`14· · · · · · · · · So that's really what differentiates an
`15· · ·electrochemical engineer from a chemical engineer.
`16· Q· And your educational background, could you summarize that
`17· · ·for us?
`18· A· Well, I went to high school in Baytown, Texas, and I start
`19· · ·there because at the time Texas A & M University was
`20· · ·nothing but an all male school and not known as a
`21· · ·university at all.
`22· · · · · · · · · After graduating from high school, I went
`23· · ·into the United States Navy and went through several Navy
`24· · ·schools including the Nuclear Power Navy School, and was
`25· · ·stationed and after that on a submarine, a missile firing
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`·1· · ·submarine, fleet ballistic missile (SSBN) submarines and
`·2· · ·went through several schools associated with my activities
`·3· · ·on that submarine.
`·4· · · · · · · · · I was a ship's photographer and had to go to
`·5· · ·school, and I was a ship's scuba diver and had to go to
`·6· · ·school, and the ship's engineering technician that
`·7· · ·essentially was a health physics job.
`·8· · · · · · · · · ·This was a radioactive submarine, as you
`·9· · ·know, using nuclear power for propulsion and so I had to
`10· · ·monitor the air quality and the water quality for
`11· · ·radioactivity.
`12· · · · · · · · · And, also, I was an engineering laboratory
`13· · ·technician so I had all this training in the Navy and then
`14· · ·I got out of the Navy from Charleston and went to the
`15· · ·University of South Carolina.
`16· · · · · · · · · And the reason I mentioned those Navy schools
`17· · ·is because I was given credit for that training toward my
`18· · ·undergraduate degree at the University of South Carolina.
`19· Q· And what was that undergraduate degree in?
`20· A· Chemical systems.· It was really chemical engineering, but
`21· · ·they structured it as chemical systems at the time.· It's
`22· · ·now chemical engineering.
`23· · · · · · · · · After graduating from the University of
`24· · ·South Carolina, I went to the University of California in
`25· · ·Berkeley and studied chemical engineering there, obtained
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`·1· · ·my Master's degree in 1973 and my Ph.D. in 1977.
`·2· · · · · · · · · And then I went to Texas A & M which had
`·3· · ·become a university over the period of time of my being in
`·4· · ·the Navy and doing my undergraduate education at
`·5· · ·South Carolina, and taught there for about 16 years.
`·6· · · · · · · · · And I continue to learn.· I take courses
`·7· · ·through the Internet on a regular basis.· In fact, I'm
`·8· · ·supposed to be in one right now, but I was told I needed
`·9· · ·to be here today, but...
`10· Q· I appreciate that.
`11· A· I continue my education is what I'm saying.
`12· Q· Wonderful.
`13· · · · · · · · · You said you got a Ph.D. from the University
`14· · ·of California of Berkeley in 1977.
`15· · · · · · · · · Did you write a thesis paper for that?
`16· A· Well, we call it a dissertation.· Yeah.
`17· Q· My apologies.
`18· · · · · · · · · You wrote a dissertation?· What was your
`19· · ·dissertation on, sir?
`20· A· Partly on the formation of copper on a rotating disk.· And
`21· · ·the reason we wanted to study that is because when you do
`22· · ·that, when you deposit using electrodeposition of material
`23· · ·like copper onto a substrate, it could be a copper
`24· · ·substrate or platinum substrate, you also generate gas,
`25· · ·typically hydrogen gas, because there's a follow-on
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`·1· · ·reaction.
`·2· · · · · · · · · So we studied that, the electrodeposition of
`·3· · ·copper, and I studied a few other things that were in my
`·4· · ·dissertation.
`·5· Q· And you understand that the present litigation that you've
`·6· · ·been asked to testify on claim construction issues with
`·7· · ·regards to -- relates to water electrolysis; is that
`·8· · ·correct?
`·9· A· Correct.
`10· Q· And can you generally explain what water electrolysis is?
`11· A· Well, when we say "water electrolysis," I think we
`12· · ·typically mean that we're producing oxygen and hydrogen by
`13· · ·the passing of current through typically water that has
`14· · ·conductivity that will support the passage of current
`15· · ·through the solution and will preferentially, and
`16· · ·preferably exclusively, produce oxygen at the anode, and
`17· · ·hydrogen at the cathode.· That's typically what we mean by
`18· · ·electrolysis of water.
`19· Q· And when was the first time that you ever perform -- well,
`20· · ·let me strike that and ask you the first question, I
`21· · ·guess.
`22· · · · · · · · · Have you ever performed electrolysis of
`23· · ·water?
`24· A· We looked at electrolysis of water and electrolysis of
`25· · ·brine when I was at Texas A & M with a company called Dow
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`·1· · ·Chemical Company.· And electrolysis, as I mentioned, was
`·2· · ·something that I investigated to a limited extent while I
`·3· · ·was in graduate school.
`·4· · · · · · · · · Again, what I was looking at was a number of
`·5· · ·different things.· One of them was studying the
`·6· · ·nickel-cadmium battery and the nickel-cadmium battery
`·7· · ·essentially has a feature associated with that charging of
`·8· · ·that battery known as overcharge.
`·9· · · · · · · · · And in the process of overcharging, oxygen is
`10· · ·generated on the electrode and that is production of
`11· · ·oxygen by electrolysis of an electrolyte.
`12· · · · · · · · · So I really started looking at it, well, even
`13· · ·before that.· You know, you study things like that in high
`14· · ·school and college.
`15· · · · · · · · · In fact, I think we had several experiments
`16· · ·in my undergraduate days in quantitative lab where we did
`17· · ·electrolysis of water and copper recovery and that sort of
`18· · ·thing.· So I've been aware of it and have done experiments
`19· · ·over my adult life.
`20· Q· And you mentioned that you've done electrolysis of water
`21· · ·and brine?
`22· A· Yes.
`23· Q· What is brine?
`24· A· We use a term brine typically to mean a very concentrated
`25· · ·solution of sodium chloride and water.· It can also mean
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`·1· · ·brine seawater.· But when I use the term brine within the
`·2· · ·concept of electrolysis, I'm talking about production of
`·3· · ·chlorine and hydrogen by electrolysis of very concentrated
`·4· · ·sodium chloride and water, 300 grams per liter, for
`·5· · ·example.
`·6· Q· And you mentioned that there's brine seawater.
`·7· · · · · · · · · Where could we find brine seawater?· Is that
`·8· · ·just anywhere in the ocean?
`·9· A· Well, no, what I meant to say was that oftentimes people
`10· · ·refer to seawater as brine.· You know, we have songs of
`11· · ·"briny wave hit me in the face" or something like that.
`12· · · · · · · · · So it's just a terminology differentiated
`13· · ·between what people are talking about.· And when we're
`14· · ·talking about ocean water, some people call it brine or
`15· · ·seawater, and when we're talking about electrolysis of
`16· · ·brine, it's very concentrated sodium chloride and water.
`17· · ·It's a little bit different concept.
`18· Q· And you understand that there are plants and animals that
`19· · ·are capable of living in brine and seawater, correct?
`20· A· Well, of course we know that there are creatures in the
`21· · ·sea, that's for sure.
`22· Q· And in this case what have you been asked to do?
`23· A· You mean in this particular claim construction?
`24· Q· Yes.· In front of you is what we've marked as
`25· · ·Plaintiff's -- or, I'm sorry, Defendant's Exhibit 569
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`·1· · ·which is your Notice of Deposition, and you'll see in the
`·2· · ·title there it's Defendant's Notice of Claim Construction
`·3· · ·Deposition of Dr. White.
`·4· · · · · · · · · What have you been asked to do for claim
`·5· · ·construction purposes in this case, Dr. White?
`·6· A· Well, I've been asked, as you know, to prepare a
`·7· · ·declaration to opine on my understanding of the mean --
`·8· · ·the meaning of the terms in the patent that's -- patents
`·9· · ·that are in dispute.
`10· Q· And who asked you to do that?
`11· A· Counsel for the plaintiff.
`12· Q· Is that Mr. Louwagie?
`13· A· Yes.
`14· Q· And have you spoken with Mr. Louwagie before today?
`15· A· Yes.
`16· Q· And when was the first time that you spoke with
`17· · ·Mr. Louwagie?
`18· A· That's a good question.· It's been several months ago.· He
`19· · ·interviewed me for the possibility of becoming an expert
`20· · ·witness in this case.· I don't remember exactly how many
`21· · ·months.· Three, six, something.
`22· Q· And have you been asked to do other things besides provide
`23· · ·your claim construction opinions in this case?
`24· · · · · · · · · MR. LOUWAGIE:· Objection.· Vague.· Outside
`25· · ·the scope.
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`·1· BY MR. JOHNSON:
`·2· Q· And I'm okay with it being outside the scope.
`·3· · · · · · · · · My question really is:· Do you intend to file
`·4· · ·any further declarations or reports in this case?
`·5· · · · · · · · · MR. LOUWAGIE:· Same objections.
`·6· A· Do I intend to file -- I guess it's really up to counsel.
`·7· · ·If I'm asked to do so, I'm willing.
`·8· BY MR. JOHNSON:
`·9· Q· Gotcha.· You have not been asked to do so to date?
`10· A· No.
`11· Q· Okay.· And so to date you've filed or provided, I should
`12· · ·say, two declarations in this matter on claim construction
`13· · ·issues; is that correct?
`14· A· Yes.
`15· Q· All right.· Sir, I think earlier you mentioned that we use
`16· · ·brine and define brine as a high concentration of sodium
`17· · ·chloride and water.
`18· · · · · · · · · Who is the "we" to which you are referring to
`19· · ·there?
`20· · · · · · · · · MR. LOUWAGIE:· Objection to the extent it
`21· · ·misstates the testimony.
`22· BY MR. JOHNSON:
`23· Q· You can answer.
`24· A· By that I meant the people that I was working for at Dow
`25· · ·Chemical Company.
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`·1· Q· And we've been talking about your limited purpose and the
`·2· · ·limited purpose of today's deposition is to understand
`·3· · ·your declarations on claim construction issues.
`·4· · · · · · · · · Do you know what claim construction is, sir?
`·5· A· Interpretation of the terms that are in the claim.
`·6· Q· And do you know how are claims to be interpreted?
`·7· A· Their broadest sense.
`·8· Q· Have you ever heard the term "person of ordinary skill in
`·9· · ·the art"?
`10· A· Yes, I have.
`11· Q· And have you made a determination as to what a person of
`12· · ·ordinary skill in the art is with regard to the patents in
`13· · ·this case?
`14· A· Well, I think we have done that.· I'm not sure if we have
`15· · ·it in here, but I think it's typical where -- is it in
`16· · ·this?· Should we read it or --
`17· Q· You're free to look through it, of course, sir.· And just
`18· · ·so the record is clear, could you tell us -- you've
`19· · ·brought some documents with you.
`20· · · · · · · · · Could you tell us what you brought and what
`21· · ·you're looking at there?
`22· A· Yes.· I brought with me -- the first document is the
`23· · ·Expert Declaration of Ralph E. White and the second one is
`24· · ·a Responsive Expert Declaration of Ralph E. White.
`25· Q· And can you tell me, sir, what do you consider to be a
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`·1· · ·person of ordinary skill in the art for the purposes of
`·2· · ·interpreting your declarations in the patents in this
`·3· · ·case?
`·4· A· Well, generally, I think it's just someone who's had two
`·5· · ·years or more experience in the chemistry business with a
`·6· · ·background in chemistry or chemical engineering.· I think
`·7· · ·that would probably be sufficient.
`·8· Q· And, Dr. White, I'm going to hand you what I marked as the
`·9· · ·next exhibit.
`10· · · · · · · · · (Deposition Exhibit Number 570 marked for
`11· · ·identification by the court stenographer.)
`12· BY MR. JOHNSON:
`13· Q· Dr. White, what has been marked as Exhibit 570, sir --
`14· · ·actually, can you tell us what has been marked as
`15· · ·Defendant's Exhibit 570?
`16· A· Exhibit A, 570, is my CV.
`17· Q· All right.
`18· A· And the picture is still appropriate.
`19· Q· All right.· Sir, you have a lot of publications in here.
`20· · ·You have a lot of professional activities where you have
`21· · ·reviewed graduate students and their papers and things
`22· · ·like that in here.
`23· · · · · · · · · Are you an inventor, a named inventor on any
`24· · ·patents, sir?
`25· A· Yes.· We have one patent that I think I list here
`
`Page 19
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`·1· Q· Have you reviewed those patents?
`·2· A· Yes.
`·3· Q· I'm going to show you those patents.
`·4· · · · · · · · · (Deposition Exhibit Number 501 previously
`·5· · ·marked for identification.)
`·6· · · · · · · · · (Deposition Exhibit Number 502 previously
`·7· · ·marked for identification.)
`·8· · · · · · · · · (Deposition Exhibit Number 503 previously
`·9· · ·marked for identification.)
`10· BY MR. JOHNSON:
`11· Q· Dr. White, in front of you are what have been previously
`12· · ·marked as Exhibits 501, 502, and 503, sir.
`13· · · · · · · · · Can you tell me what those are?
`14· A· So Exhibit -- excuse me.· 501 is patent '415 that was
`15· · ·issued March the 17th, 2015, and Exhibit 502 is reissued
`16· · ·patent '092 that was issued on October the 23rd, 2018, and
`17· · ·Exhibit 503 is reissued patent '665 that was reissued on
`18· · ·October the 29th, 2019.
`19· Q· And you've reviewed these patents prior to today; is that
`20· · ·correct?
`21· A· Yes.
`22· Q· Okay.· And, sir, you understand that these patents they're
`23· · ·eventually -- they're reissues of a prior patent which is
`24· · ·the U.S. Patent Number 7,670,495.
`25· · · · · · · · · Do you understand that?
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`Page 18
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`Page 20
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`·1· · ·somewhere.
`·2· Q· And I won't make you find it, sir.· I'm just curious to
`·3· · ·know if it's just the one patent?
`·4· A· Yes.· Just one patent.· We have issued several patent
`·5· · ·preliminary applications, but we were never successful
`·6· · ·obtaining a patent beyond the one.
`·7· · · · · · · · · And I should mention that I was told early in
`·8· · ·my career that patents were not that important for
`·9· · ·academic careers.· That's changing.· I think it's becoming
`10· · ·more important in today's academic world to have patents,
`11· · ·but it's not something that was important as I was coming
`12· · ·up.
`13· Q· Yeah.· I fully agree with that.· We can talk about that
`14· · ·later, though.
`15· · · · · · · · · But for purposes of today's deposition, did
`16· · ·you participate in drafting that patent application or any
`17· · ·of the patent applications that you filed?
`18· · · · · · · · · MR. LOUWAGIE:· Objection.· Outside the scope.
`19· A· As I recall, I did.· I think I may have written the first
`20· · ·draft, and then it was modified significantly by counsel.
`21· · ·This was at Texas A & M.
`22· BY MR. JOHNSON:
`23· Q· And you understand in this matter there are three patents
`24· · ·involved in the litigation; is that correct?
`25· A· Yes.
`
`·1· A· Yes.
`·2· Q· And do you know what a reissue is?
`·3· A· I know I do now.· I learned about how the reissue process
`·4· · ·occurs.· These are reissued patents based on, as you
`·5· · ·mentioned, the parent patent '495.
`·6· Q· Do you know when that parent patent was originally filed?
`·7· A· I don't know the dates specifically that those original
`·8· · ·patents were filed.· I'm sorry, I don't remember that.
`·9· Q· That's all right.· If you look at the first page of
`10· · ·Exhibit 501, the cover page of that reissue patent 45,415.
`11· · · · · · · · · Do you see that, sir?· The cover page?
`12· A· Yeah.
`13· Q· And I'm going to refer to this today as the '415 patent.
`14· · · · · · · · · Is that all right?
`15· A· Sure.· '415.
`16· Q· Okay.· Just trying to keep it simple.
`17· · · · · · · · · If you look on the left there, it says it's a
`18· · ·division of application 10/732,326 filed on December 10,
`19· · ·2003.
`20· · · · · · · · · Do you see that?· It's on the left -- right
`21· · ·here, sir.
`22· A· Oh, yeah.· Uh-huh (affirmative).
`23· Q· And so this is a reissue of a patent that was originally
`24· · ·filed way back in 2003.
`25· · · · · · · · · Do you understand, sir?
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`CASE 0:20-cv-00358-ECT-HB Doc. 147-1 Filed 07/27/21 Page 7 of 55
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`Page 21
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`·1· A· Yes.
`·2· Q· Okay.· And you understand that this has a specification to
`·3· · ·it?
`·4· A· Yes.
`·5· Q· Okay.· And you understand that that specification was
`·6· · ·filed in December of 2003?
`·7· · · · · · · · · MR. LOUWAGIE:· Objection.· Outside the scope.
`·8· A· Okay.· Yes, I see that.
`·9· BY MR. JOHNSON:
`10· Q· But the patent itself didn't issue again until 2015.
`11· · · · · · · · · Do you understand that?
`12· A· I understand it was reissued March the 17th, 2015.
`13· Q· Perfect.
`14· · · · · · · · · Are you an expert in patents?
`15· A· Am I an expert in patents?
`16· Q· Yes.
`17· A· When you ask me that, it makes me think, well, maybe I
`18· · ·should be seeking a patent certification.· I do not have a
`19· · ·patent certification.· I understand, I guess, a layman's
`20· · ·understanding of patents.
`21· Q· Okay.· And are you an expert on claim construction of
`22· · ·patents?
`23· A· Well, I think --
`24· · · · · · · · · MR. LOUWAGIE:· Objection.· Vague.
`25· A· -- when you use the word "expert," it means to me that I
`
`Page 23
`·1· Q· This is a copy of another patent to the same inventor.
`·2· · · · · · · · · Dr. White, have you seen Exhibit 521, which
`·3· · ·is U.S. Patent Number 6,689,262, prior to today?
`·4· A· (Reviewing.)· I don't remember viewing this one.· I may
`·5· · ·have seen it, but it's not one that I've been looking at
`·6· · ·closely.
`·7· Q· Okay.· Dr. White, I'm going to hand you another one here.
`·8· · · · · · · · · (Deposition Exhibit Number 525 previously
`·9· · ·marked for identification.)
`10· BY MR. JOHNSON:
`11· Q· Dr. White, in front of you is what has been previously
`12· · ·marked as Exhibit 525, which is a copy of U.S. Patent
`13· · ·7,670,495.
`14· · · · · · · · · Have you seen this patent prior to today?
`15· A· Well, again, I may have seen it, but it wasn't one that I
`16· · ·focused on.· I think these are the patents that were
`17· · ·originally issued.· I really looked more at the reissued
`18· · ·patents.
`19· Q· And let's turn to the last page of Exhibit 525.· And
`20· · ·you'll see there's a page entitled United States Patent
`21· · ·and Trademark Office Certificate of Correction.
`22· · · · · · · · · Do you see that, sir?
`23· A· Yes, I see that.
`24· Q· Do you know what a certificate of correction is?
`25· A· Yes.· That's issued by the patent office to correct
`
`Page 22
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`Page 24
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`·1· · ·would be capable of writing claim construction from a
`·2· · ·discovery that was made by somebody at a plant or an
`·3· · ·organization.
`·4· · · · · · · · · I would say I could attempt that, but having
`·5· · ·no training in law, I'm not sure that I would be capable
`·6· · ·of producing claims that would be produced by a skilled
`·7· · ·lawyer.
`·8· BY MR. JOHNSON:
`·9· Q· Okay.· Have you -- do you know what a patent file history
`10· · ·is, sir?
`11· A· I know -- well, I usually think of that more as a
`12· · ·prosecution history.
`13· Q· Okay.· And have you reviewed the prosecution histories of
`14· · ·the three patents that have been marked as 501, 502, and
`15· · ·503?
`16· A· Unfortunately, yes.
`17· Q· Have you reviewed any of the other file histories
`18· · ·associated with those patents?
`19· A· No.
`20· Q· So we'll mark the next exhibits here.· Actually, they have
`21· · ·already been marked so I'm going to hand you what's been
`22· · ·previously marked as Exhibit 521, sir.
`23· · · · · · · · · (Deposition Exhibit Number 521 previously
`24· · ·marked for identification.)
`25· BY MR. JOHNSON:
`
`·1· · ·something in a previously issued patent, I believe.
`·2· Q· And it appears here that they corrected a typo; is that
`·3· · ·right?
`·4· A· Column 10, line 55, delete breading and insert breaking.
`·5· Q· So do you understand that a certificate of correction is a
`·6· · ·way for an applicant or an inventor to correct
`·7· · ·typographical mistakes in a patent application?
`·8· · · · · · · · · MR. LOUWAGIE:· Objection to the extent it
`·9· · ·misstates the law.
`10· A· I'm not sure that it's something that is available to the
`11· · ·applicant to do at will.· I don't know the process.· It's
`12· · ·probably a little bit different.
`13· · · · · · · · · In a journal article, for example, you can
`14· · ·submit things and maybe it will be issued as an errata,
`15· · ·maybe not, depending upon the editor, so I don't know
`16· · ·whether the patent office has to approve any requests
`17· · ·or -- I don't know the process.
`18· BY MR. JOHNSON:
`19· Q· Would you agree with me, though, that this certificate of
`20· · ·correction is not present in any of the Exhibits 501, 502,
`21· · ·or 503 that you reviewed for purposes of providing your
`22· · ·claim construction declarations in this matter?
`23· A· I see no certificates of correction for those reissued
`24· · ·patents.
`25· Q· Do you know why?
`
`

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`CASE 0:20-cv-00358-ECT-HB Doc. 147-1 Filed 07/27/21 Page 8 of 55
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`Page 25
`·1· · · · · · · · · MR. LOUWAGIE:· Objection.· Vague.· Outside
`·2· · ·the scope.
`·3· A· Well, again, I don't know the process, and I don't know
`·4· · ·the -- if it were something that was published by -- well,
`·5· · ·even when we find mistakes in previously published papers
`·6· · ·that -- we don't make -- of course we never make any
`·7· · ·mistakes; but in the event that we do find a typo, then we
`·8· · ·oftentimes don't bother to request an errata because going
`·9· · ·through the editor process, as I mentioned, was laborious
`10· · ·and often unnecessary because it's maybe obvious or not
`11· · ·that important.
`12· · · · · · · · · Typically, it would be not that important, so
`13· · ·that may have been the mindset of the inventor in this
`14· · ·particular case.
`15· BY MR. JOHNSON:
`16· Q· And have you ever spoken with the inventor --
`17· A· No.
`18· Q· -- in preparation of your Declaration?
`19· A· No.
`20· Q· Have you reviewed the inventor's deposition transcript in
`21· · ·this case?
`22· A· No.
`23· Q· Do you know what lexicography is?
`24· A· I think that's a big word for definitions or meaning of
`25· · ·words.· I'm not really sure exactly what the definition
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`Page 27
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`·1· · · · · · · · · MR. LOUWAGIE:· Objection.· Sorry.
`·2· A· Well, again, it's something that --
`·3· · · · · · · · · MR. LOUWAGIE:· I'm sorry, Dr. White.· Is
`·4· · ·Dr. White an expert in dictionaries?
`·5· · · · · · · · · MR. JOHNSON:· You don't get to ask questions
`·6· · ·today, Counsel.
`·7· BY MR. JOHNSON:
`·8· Q· You can answer, Dr. White.
`·9· · · · · · · · · MR. LOUWAGIE:· Go ahead and answer.
`10· A· What was the question again?· I'm sorry.
`11· · · · · · · · · MR. JOHNSON:· Yeah.· You bet.
`12· · · · · · · · · Can you read it back?
`13· · · · · · · · · (WHEREUPON, the record was read by the
`14· · ·stenographer as follows:
`15· · · · · · · · · "Q· So would you agree with me that the
`16· · ·purpose of a definition in a dictionary is to set forth
`17· · ·what the meaning of a term is?")
`18· · · · · · · · · MR. LOUWAGIE:· Same objection, also lack of
`19· · ·foundation.
`20· A· Well, as I was about to say, in my opinion, the definition
`21· · ·that we find oftentimes is one that we think is commonly
`22· · ·accepted, largely accepted, but it couldn't be completely
`23· · ·accepted by everyone in the world.· But it's generally
`24· · ·accepted.· That would be my interpretation of what's
`25· · ·written as a definition of a word in a dictionary.
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`Page 26
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`Page 28
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`·1· · ·is, but it has to do with words.
`·2· Q· And you mentioned that it probably has something to do
`·3· · ·with definitions.
`·4· · · · · · · · · Generally, what is the definition?
`·5· · · · · · · · · MR. LOUWAGIE:· Objection.· Vague.
`·6· A· It's something, I think, people agree upon with regards to
`·7· · ·the meaning of a word and it's oftentimes collected in
`·8· · ·things like Webster's Dictionary, so definitions that are
`·9· · ·commonly accepted and sometimes those are not commonly
`10· · ·accepted by all.
`11· BY MR. JOHNSON:
`12· Q· And what is the purpose of a dictionary?
`13· · · · · · · · · MR. LOUWAGIE:· Objection.· Vague.
`14· A· So as to be able to have some reasonable agreement about
`15· · ·what words mean.
`16· BY MR. JOHNSON:
`17· Q· And why do