UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner
`____________________
`
`Case: PGR2015-00019
`U.S. Patent No. 8,876,991
`____________________
`
`
`
`SUPPLEMENTAL DECLARATION OF A. JON GOLDBERG, PH.D.
`
`
`
`
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`PGR2015-00019 – Ex. 1042
`US Endodontics, LLC, Petitioner
`1
`
`
`
`
`
`
`
`____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner
`____________________
`
`Case: PGR2015-00019
`U.S. Patent No. 8,876,991
`____________________
`
`
`
`SUPPLEMENTAL DECLARATION OF A. JON GOLDBERG, PH.D.
`
`
`
`
`
`PGR2015-00019 – Ex. 1042
`US Endodontics, LLC, Petitioner
`1
`
`
`
`
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`
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`I, A. Jon Goldberg, Ph.D., do hereby declare and state as follows:
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`1.
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`I previously submitted a declaration (Ex. 1002) in this proceeding, in
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`support of US Endodontics, LLC’s (“Petitioner”) petition for post-grant review of
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`U.S. Patent No. 8,876,991 (“the ’991 patent”).
`
`2.
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`3.
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`I am not an employee of Petitioner or any affiliate thereof.
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`I am being compensated for my work in connection with this
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`proceeding at a rate of $400 per hour, plus expenses.
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`4. My compensation is in no way dependent upon the substance of the
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`opinions I offer below, or upon the outcome of the post-grant review.
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`5.
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`I have been asked to provide testimony in response to certain
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`positions taken by Patent Owner in this proceeding.
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`6.
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`Specifically, I have been asked to provide my opinions regarding
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`certain alleged deficiencies in the original laboratory testing commissioned by
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`Petitioner. Exs. 1015, 1018. I have also been asked to provide my opinions
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`regarding the supplemental laboratory testing commissioned by Petitioner, which
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`was conducted on additional samples of the same model of endodontic file
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`previously tested (ProFile brand, of size 20, .04 taper, and 25 mm length). Ex.
`
`1041.
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`7.
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`I understand that Patent Owner has taken the position that the testing
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`conducted on shanks heat-treated at 25°C, Ex. 1018, should be disregarded because
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`
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`
`2
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`
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`the claims 12-16 of the ’991 patent require heat treatments of above 25°C. Paper
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`27, p. 18. As set forth in my Declaration dated August 3, 2015, and based on my
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`knowledge and experience, heat treatments of shanks slightly above 25°C would
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`not result in the shanks having characteristics that differ appreciably from shanks
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`heat-treated at 25°C. See, e.g., Ex. 1002, ¶¶ 101, 102. Since shanks heat-treated at
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`25°C exhibited between 0.04 and 2.19 degrees of permanent deformation,
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`averaging 0.87 degrees, and far below the 10 degrees recited in the claims, Ex.
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`1002, ¶ 105, I would not expect heat-treating at temperatures slightly above 25°C
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`to result in the shanks achieving close to 10 degrees of permanent deformation
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`after torque at 45° of flexion when tested in accordance with ISO Standard 3630-1.
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`The supplemental testing of shanks heat-treated at 40°C confirms this opinion, as
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`the results show between 0.56 and 1.50 degrees of permanent deformation,
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`averaging 1.00 degrees, which is still far below the 10 degrees recited in the
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`claims. Ex. 1041, p. 13.
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`8.
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`I further understand that Patent Owner has taken the position that the
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`testing commissioned by Petitioner should have included testing of shanks heat-
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`treated for durations longer than 12 hours. Paper 27, p. 22.The supplemental
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`testing of shanks heat-treated at 40°C and 300°C for 24 hours and 28 hours
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`confirms that even much longer heat treatment durations at these temperatures do
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`not result in shanks achieving close to 10 degrees of permanent deformation after
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`
`
`
`
`3
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`
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`torque at 45° of flexion when tested in accordance with ISO Standard 3630-1. Ex.
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`1041, p. 13. The testing results show between 0.56 and 1.37 degrees of permanent
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`deformation for such longer duration heat treatments at 40°C, and between 1.36
`
`and 2.59 degrees of permanent deformation for such longer duration heat
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`treatments at 300°C. Ex. 1041, p. 13.
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`9.
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`I also understand that Patent Owner has taken the position that in the
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`prior testing, bending in the same direction as any initial bend resulted in
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`considerably less permanent deformation than had the samples been bent in the
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`opposite direction. Paper 27, pp. 22-23. I disagree. As an initial matter, nothing in
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`the ’991 patent specification or the ISO Standard 3630-1 provides any guidance to
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`bend in the opposite direction as any initial bend. Further, given that the initial
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`bend angles are very small (the largest being 0.98 degrees in the original testing), I
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`would not have expected that bending in the opposite direction would have
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`resulted in permanent deformation measurements substantially closer to 10
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`degrees. The supplemental testing, which was performed by bending in the
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`opposite direction as any initial bend, Ex. 1041, p. 10, confirms this opinion. The
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`supplemental testing results showed between 0.56 and 1.50 degrees of permanent
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`deformation for heat treatments at 40°C, and between 1.36 and 2.59 degrees of
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`permanent deformation for heat treatments at 300°C. Ex. 1041, p. 13.
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`4
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`
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`10. Overall, the supplemental laboratory testing refutes the alleged
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`deficiencies raised by Patent Owner, and is consistent with the opinions provided
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`in my previous declaration (Ex. 1002).
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on August _Ji__, 2016
`
`5
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