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`A P PEAR AN C E S:
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`ROTHWELL, FIGG, ERNST & MANBECK P.C.
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`By: Derek F. Dahlgren, Esq.
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`Jason Nolan, Esq.
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`607 14th Street, N.W., Suite 800
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`6 Washington, D.C.
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`20005
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`202.783.6040
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`ddahlgren@rfem.com
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`jnolan@rfem.com
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`Representing - Dentsply International, Inc.
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`and Tulsa Dental Products LLC d/b/a Tulsa
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`Dental Specialties
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`KENYON & KENYON
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`By:
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`Jeffrey S. Ginsberg, Esq.
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`Slaven Jesic, Esq.
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`One Broadway
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`New York, New York 10004
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`212.425.5288
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`jginsberg@kenyon.com
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`sjesic@kenyon.com
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`Representing - US Endodontics, LLC
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`ALSO PRESENT:
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`David Zduren, Dentsply
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`Jason Levin, Legal Videographer
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`212-279-9424
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`VERITEXT REPORTING COMPANY
`www. veritext.com
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`212-490-3430
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`HIGHLY CONFIDENTIAL
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`E X H I B I T S
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`Page 5
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`NUMBER
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`DESCRIPTION
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`MARKED
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`Exh 16
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`the first edition of the ISO
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`3630-1 standard .................... 140
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`Exh 17
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`a copy of Dr. Luebke's declaration
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`signed on August 14th, 2014 ........ 145
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`Exh 18
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`a copy of a dissertation entitled
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`Investigation of Phase Transformation
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`Mechanisms for Nickel-Titanium Rotary
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`Endodontic Instruments ............. 152
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`Exh 19
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`a document titled Relevant Aspects in
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`the Clinical Application of
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`NiTi-Shaped Memory Alloys, first
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`Author's last name Gill ............ 160
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`Exh 20
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`an article from the American Journal
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`of Orthodontics and Dentofacial
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`Orthopedics from April 1991 ........ 168
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`Exh 21
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`a copy of an article entitled,
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`Fatigue in Mechanical Properties
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`of Nickel-Titanium Endodontic
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`Ins truman ts . . . . . . . . . . . . . . . . . . . . . . . . 18 7
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`Exh 22
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`an article entitled, Bending Fatigue
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`Study of Nickel-Titanium Gates Glidden
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`Drills . . . . . . . . . . . . . . . . . . . . . . . . . . . . 188
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`2 I 2-279-9424
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`VERITEXT REPORTING COMPANY
`www.veritext.com
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`212-490-3430
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`HIGHLY CONFIDENTIAL
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`E X H I B I T S
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`Page 6
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`NUMBER
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`DESCRIPTION
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`MARKED
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`Exh 23
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`a copy of an information disclosure
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`statement that is dated August
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`2014 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 193
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`Exh 24
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`a
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`copy of published patent
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`application U.S. 2002/0137008 ...... 226
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`Exh 25
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`a copy of U.S. Patent 6,485,507,
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`first-named inventor Walak ......... 232
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`Exh 26
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`a copy of U.S Patent 5,171,383,
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`first-named inventor Segae ......... 242
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`Exh 27
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`a declaration from David Berzins,
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`signed April 28th, 2011 ............ 257
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`Exh 28
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`a copy of an amendment submitted to
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`the Patent Office during prosecution
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`of Application No. 11/628933 ....... 267
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`Exh 29
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`an amendment
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`filed in the
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`application leading to the '033
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`patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 71
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`Exh 30
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`a copy of a Notice of Allowance
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`in the Application Number
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`11/628933 . . . . . . . . . . . . . . . . . . . . . . . . . . 278
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`Exh 31
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`a published patent application,
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`Number U.S. 2001/0271529, first
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`named inventer Gow ................. 280
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`VERITEXT REPORTING COMPANY
`www. veri text. com
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`212-490-3430
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`Page 7
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`THE VIDEOGRAPBER: We are now on the
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`record. Please note that the microphones are
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`sensitive and may pick up whispering and private
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`conversations, and please turn off all cell
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`phones or place them away from the microphones,
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`as they can interfere with the deposition audio.
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`Recording _ will continue until all
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`parties agree to go off the record.
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`My name is Jason Levin, representing
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`10 Veritext. The date today is October 8th, 2014,
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`and the time is approximately 9:01 a.m.
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`This deposition is being held at the
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`offices of Rothwell, Figg, located at 607 14th
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`14 Street, Northwest, Washington, D.C., Suite 800,
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`and is being taken by the counsel for the
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`defendant.
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`The caption of the case is Dentsply
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`International, Incorporated, et al., versus
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`US Endodontics LLC. This case is filed in
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`the United States District Court for the
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`21 Eastern District of Tennessee, Case Number
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`22
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`2:14-cv-00196.
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`The name of the witness is Neill
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`Luebke.
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`At this time, the attorneys present
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`212-279-9424
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`VERITEXT REPORTING COMPANY
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`HIGHLY CONFIDENTIAL
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`Page 8
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`1 will please identify themselves and the parties
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`they represent.
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`MR. GINSBERG:
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`Jeff Ginsberg,
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`of Kenyon and Kenyon, for defendant US
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`Endodontics.
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`MR. JESIC: Slaven Jesic, Kenyon &
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`Kenyon, on behalf of US Endo.
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`MR. DAHLGREN: Derek Dahlgren,
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`9 Rothwell, Figg, Ernst & Manbeck, on behalf of
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`10 plaintiffs.
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`MR. NOLAN:
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`Jason Nolan, Rothwell,
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`Figg, Ernst & Manbeck, on behalf of plaintiffs.
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`MR. ZDURNE: David Zdurne, plaintiff
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`14 Den tsply.
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`THE VIDEOGRAPHER: And our court
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`reporter, Ryan Black, representing Veritext,
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`17 will swear in the witness, and we can proceed.
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`18
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`19 Whereupon --
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`NEILL LUEBKE, DDS, MS,
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`called to testify, having been first duly sworn
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`or affirmed, was examined and testified as
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`follows:
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`I I I
`I I I
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`212-279-9424
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`VERITEXT REPORTING COMPANY
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`HIGHLY CONFIDENTIAL
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`EXAMINATION
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`Page 9
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`BY MR. GINSBERG:
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`Q.
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`A.
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`Q.
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`Good morning, Dr. Luebke.
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`Good morning.
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`Could you state your full name and
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`residence for the record?
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`A.
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`My name is Neill Hamilton Luebke.
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`And my residence is 18010 Continental Drive in
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`9 Brookfield, Wisconsin.
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`Q.
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`Dr. Luebke, have you ever been deposed
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`before?
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`A.
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`Some years ago in a dental case I
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`believe I gave a video.
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`I'm not certain if I
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`14 was an expert witness or not, but it was a -- a
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`short deposition, so I believe I have.
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`Q.
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`A.
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`Was that a malpractice case?
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`I believe it was.
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`I -- I -- it
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`has been so long ago.
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`It -- it occurred in
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`19 prehistoric times, so I don't exactly remember.
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`Q.
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`Since it's been so long, why don't we
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`just go over a couple of ground rules for today.
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`You understand that I will be asking
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`you questions and that you are here to provide
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`answers to my questions?
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`A.
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`I do.
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`212-279-9424
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`VERJTEXT REPORTING COMPANY
`www. veritext.com
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`HIGHLY CONFIDENTIAL
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`Page 14
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`Q.
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`You're aware that in this action
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`2 Dentsply is asserting two patents against US
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`Endodontics, correct?
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`A.
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`That's my understanding.
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`And those two patents are U.S. Patent
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`Number 8,727,773 and 8,562,341; is that correct?
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`A.
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`I must rely that you read those
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`numbers correctly, and, if you did, then I agree
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`to that.
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`Q.
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`I'll be talking about these patents
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`today.
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`If I refer to your -- the patent that
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`has a Patent Number 8,727,773 as the '773
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`13 patent, would that be okay?
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`Q.
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`That would be very acceptable.
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`And same thing with the -- your
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`patent, 8,562,341. Okay if I refer to that as
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`the '341 patent?
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`A.
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`Is that '341?
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`Is that correct?
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`Q.
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`A.
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`I could show it to you, if need be.
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`No. That's fine.
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`If it's '341,
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`that's fine.
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`I -- I guess I had thought it was
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`311 or 331, so, okay.
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`Yes.
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`'341 is fine.
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`Q.
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`And, collectively, I'll refer to them
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`212-279-9424
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`Page 15
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`as the asserted patents, okay?
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`A.
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`Q.
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`That would be acceptable.
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`Is it also okay if I refer
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`collectively to the plaintiffs, Dentsply
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`International and Tulsa Dental Products,
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`collectively, as Dentsply?
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`A.
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`Q.
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`That would be fine.
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`Dr. Luebke, you went to dental school
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`at the University of Iowa; is that correct?
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`A.
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`Q.
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`A.
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`Q.
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`A.
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`Q.
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`That's correct.
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`And a DDS was awarded to you in 1969?
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`That's correct also.
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`Do you have any undergraduate degree?
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`I do not.
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`You went straight from high school to
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`dental school?
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`A.
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`No. That is incorrect.
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`I had
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`four years -- I had four years of
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`of college.
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`The only one in the family that
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`doesn't have the bachelor's degree because I'm
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`21 missing a language.
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`Q.
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`So you do not have a college degree,
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`correct?
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`A.
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`Q.
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`Yes,
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`I do.
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`I have a DDS.
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`Do you
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`212-279-9424
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`Page 16
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`A.
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`I also have a master's degree, as
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`2 well.
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`Q.
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`The four years that you -- where --
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`did you attend University of Iowa undergrad?
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`A.
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`Q.
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`time?
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`A.
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`Q.
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`I did.
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`And did you have a -- a major at that
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`General science.
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`And did you ever get a degree in
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`general science from University of Iowa?
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`A.
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`Q.
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`I did not.
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`You obtained your master's degree from
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`13 University of Iowa in 1972; is that correct?
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`A.
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`Q.
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`A.
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`I believe that's correct, yes.
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`And what was the master's degree in?
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`The master's degree was from the
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`graduate -- it was a -- it was a master of
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`science from the graduate college. And it
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`entailed education, operative dentistry.
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`Q.
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`A.
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`Did the --
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`May I -- may I
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`take a moment, please?
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`MR. GINSBERG: You may.
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`THE VIDEOGRAPBER: We're going off
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`record at 9:14 a.m.
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`(Brief recess.)
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`212-279-9424
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`Page 17
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`THE VIDEOGRAPHER: We're going back on
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`record at 9:15 a.m.
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`BY MR. GINSBERG:
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`Q.
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`You do not have a material science
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`degree, correct?
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`A.
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`Q.
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`I do not.
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`And you do not have a degree in
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`8 metallurgy, correct?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS:
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`I do not.
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`BY MR. GINSBERG:
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`Q.
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`Do you consider any of the degrees
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`you obtained to be related to the field of
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`14 metallurgy?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS: Yes, indeed.
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`When I was in dental school, we had
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`18 materials presented by the various departments.
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`19
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`So all of the -- the current instruments and
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`20 materials were presented in dental school. And
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`21
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`then in the graduate program, my certificate in
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`22 master of science in endodontics in Nebraska, we
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`23
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`then, again, also went over all of the current
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`24 materials that would be relevant to an
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`endodontic practice.
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`212-279-9424
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`Page 67
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`THE WITNESS: Okay. Yeah.
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`BY MR. GINSBERG:
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`Q. What do you mean by post heat treated?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS: Dental files that have
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`been fabricated and then heat treated.
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`BY MR. GINSBERG:
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`Q.
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`Dental files that had the cutting
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`edges formed in them and then heat treated?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS: That would be correct.
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`BY MR. GINSBERG:
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`Q.
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`Who invited you to attend the June
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`24-26, 2010, meeting?
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`A.
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`Q.
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`I think Mr. Bennett did.
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`At the time of the June 2010 meeting,
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`do you recall how many pending U.S. Patent
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`applications you had?
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`A.
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`It's a matter of secretarial.
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`I
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`20 would -- you probably know better than I do.
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`21 Let me look at the two you gave me.
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`22
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`23
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`I believe there's two earlier patents
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`than these two, so I would assume that there
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`24 were two patents pending at that time.
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`25
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`Yeah.
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`It's plural, so that would be
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`Page 70
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`1
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`(Luebke Deposition Exhibit No. 9,
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`2 U.S. Patent Number 8,062,033, was marked.)
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`BY MR. GINSBERG:
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`Q.
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`I'm handing you what has been marked
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`Luebke Exhibit 9.
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`It's U.S. Patent Number
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`8,062,033.
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`Is this patent number one?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS:
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`I don't have the numbers
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`10 memorized.
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`I would assume -- you have the
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`numbers better than I, so ...
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`BY MR. GINSBERG:
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`Q. Well, if you look at Luebke Exhibit
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`5'
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`A.
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`Q.
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`Five, okay.
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`-- you have the date of the '773
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`patent, which is May 20th, 2014, correct?
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`A.
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`Q.
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`Correct.
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`The date that the '341 application
`
`I'm sorry. The date that the '341 patent
`
`was filed was December 23rd, 2011, correct?
`
`MR. DAHLGREN: Objection; form.
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`THE WITNESS: , Ask the question again,
`
`please.
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`BY MR. GINSBERG:
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`Page 71
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`1
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`2
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`3
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`Q.
`
`Why don't I just give you your fourth
`
`patent so we'll have them all there.
`
`(Luebke deposition Exhibit No. 10,
`
`4 U.S. Patent Number 8,083,873, was marked.)
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`MR. DAHLGREN: Are you all right? Do
`
`you need a break?
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`THE WITNESS: No.
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`MR. DAHLGREN: Okay.
`
`THE WITNESS: Okay. Now we've got
`
`them.
`
`This is one, two, three and four.
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`BY MR. GINSBERG:
`
`Q.
`
`And you've just been handed what has
`
`been marked Luebke Exhibit 10, and that is a
`
`copy of the U.S. Patent Number 8,083,873.
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`A.
`
`Q.
`
`A.
`
`Right.
`
`So
`
`So these patent applications were in
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`process when I met with Bobby.
`
`Q. When you say these, the application
`
`that is identified on Luebke Exhibit 10, that
`
`21 was filed on December 23rd, 2010, correct?
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`22
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`23
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`24
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`25
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`A.
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`Q.
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`A.
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`Q.
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`Oh, that
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`this one is.
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`Right.
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`Yeah. This one is 2005.
`
`Which one is this one that you're
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`Page 74
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`1 Dental, and I met with several people.
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`I made a
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`2
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`presentation to a dentist, and I left the next
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`3 morning.
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`4
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`5
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`7
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`8
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`9
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`Q.
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`So was your meeting at D&S Dental a
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`one-day meeting?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS:
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`I -- I would
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`characterize it as a one-day meeting.
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`BY MR. GINSBERG:
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`10
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`Q.
`
`And who did you meet with at D&S
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`11 Dental?
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`12
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`A.
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`Okay. Mr. Bennett, a gentleman that
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`has the S, Steve
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`Q.
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`A.
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`Treadway?
`
`Correct. Thank you.
`
`Their lab technician who was doing
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`their testing.
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`Q.
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`Do you remember his or her name?
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`Anyone else?
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`Yeah. The H&R gentleman.
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`Is that human resources or
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`Human resources.
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`Okay. Thank you.
`
`Yeah.
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`A.
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`Q.
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`A.
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`Q.
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`A.
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`And the floor manager for the files.
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`Page 75
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`1
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`Q.
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`Do you know the name of the floor
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`2 manager? Do you know the name of the BR rep?
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`3
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`Did you meet
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`I'm sorry. You need
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`to answer verbally.
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`A.
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`I'm sorry.
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`I have to say no. No.
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`I can't shake my head.
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`I'm sorry.
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`No.
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`Q.
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`Did you meet with Derek Heath at that
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`time?
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`A.
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`Q.
`
`No.
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`Do you have any notes from the June
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`2010 meeting with D&S Dental?
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`A.
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`I believe I do. Not with me, but I
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`believe I do.
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`Q.
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`In your June 19 declaration that
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`16 we've marked as Luebke Exhibit 8, you state
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`17
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`in paragraph
`
`Paragraph 12 that you advised
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`18 Mr. Bennett and others at D&S Dental that you
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`19
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`had pending applications that contained claims
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`20
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`21
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`23
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`24
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`25
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`directed to post heat treated endodontic files;
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`is that correct?
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`A. Well, you reminded me,
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`I should
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`probably have application.
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`So if we make that
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`correction, I would say that Mr. Treadway was
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`incidentally involved, but Mr. Bennett was the
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`Page 76
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`6
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`primary individual that I talked with.
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`Q. Was Mr. Treadway there for your
`
`conversation?
`
`MR. DAHLGREN: Objection; form.
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`THE WITNESS: Part of the
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`conversation, but it -- it appeared Mr. Treadway
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`7 wasn't terribly interested in that information.
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`8
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`9
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`BY MR. GINSBERG:
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`Q. Well, when you said, I advised
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`10 Mr. Bennett and others at D&S Dental that you
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`11
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`12
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`13
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`14
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`had pending applications, which you've corrected
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`to application, that contained claims directed
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`to post heat treated endodontic files, was there
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`anyone besides Mr. Bennett and, possibly,
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`15 Mr. Treadway that you advised?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS:
`
`I don't believe so.
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`BY MR. GINSBERG:
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`Q. What was their response?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS:
`
`I believe Mr. Bennett
`
`said that he was filing a patent, but I don't
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`believe it had been published yet.
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`BY MR. GINSBERG:
`
`Q.
`
`Did he show you a copy of that
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`Page 77
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`application?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS:
`
`I don't think he shared
`
`that with me.
`
`I think we just shared dialogue.
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`BY MR. GINSBERG:
`
`Q.
`
`Did Mr. Bennett inform you that
`
`his application covered a method of post heat
`
`treating nickel-titanium shanks in air and not
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`an atmosphere that's unreactive with the shanks?
`
`MR. DAHLGREN: Objection; form.
`
`THE WITNESS:
`
`I believe --
`
`MR. DAHLGREN: Objection; compound.
`
`THE WITNESS:
`
`I believe we discussed
`
`that.
`
`BY MR. GINSBERG:
`
`Q.
`
`And did Mr. Bennett, in fact, tell you
`
`that he had a pending application directed to
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`18 methods of making post heat treated endodontic
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`19
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`files, where the step of heat treating did not
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`20
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`21
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`22
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`23
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`24
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`25
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`take place in an atmosphere consisting,
`
`essentially, of a gas unreactive with a shank?
`
`MR. DAHLGREN: Objection; form. Asked
`
`and answered.
`
`THE WITNESS: That's, perhaps, more
`
`specific than -- than the conversation we had.
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`Page 78
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`We -- so the conversation was more
`
`about leaving some files in an oven.
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`BY MR. GINSBERG:
`
`Q.
`
`Did Mr. Bennett suggest to you that
`
`you should combine your pending application with
`
`his pending application?
`
`MR. DAHLGREN: Objection; form.
`
`BY MR. GINSBERG:
`
`Q.
`
`During the June 2010 meeting?
`
`MR. DAHLGREN:
`
`Same objection.
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`THE WITNESS:
`
`I -- that -- we might
`
`actually have talked about that a little bit.
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`BY MR. GINSBERG:
`
`Q.
`
`Do you recall what you said in
`
`response?
`
`MR. DAHLGREN: Objection; form.
`
`THE WITNESS:
`
`I believe at -- it
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`17
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`18 might have gone something, like, if we joined
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`19
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`our applications, it would be strong. And I
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`20
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`21
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`22
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`23
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`24
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`25
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`asked him about his application, and he informed
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`me that he put Mr. Heath and Mr. Treadway on the
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`application. And I asked him what part did they
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`play. And he said, they're my friends, and so I
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`put them on.
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`And I
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`think I said to him, don't think
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`Page 79
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`1
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`2
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`3
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`4
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`that's advisable.
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`(Luebke Deposition Exhibit No. 11, a
`
`copy of a published patent application with the
`
`publication Number U.S. 2011/0159458, was
`
`5 marked.)
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`6
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`7
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`8
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`(Luebke Deposition Exhibit No. 12, a
`
`copy of a published patent application with the
`
`publication Number U.S. 2011/0159458, was
`
`9 marked.)
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`10
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`11
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`12
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`13
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`16
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`THE VIDEOGRAPHER: Excuse me. Can we
`
`go off record for just a moment?
`
`MR. GINSBERG: Sure.
`
`THE VIDEOGRAPHER: We're going off
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`record at 10:40 p.m.
`
`(Recess taken.)
`
`THE VIDEOGRAPHER: We're going back on
`
`record at 10:55 a.m. This is the start of Media
`
`18 Unit Number 2 in the deposition of Dr. Luebke.
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`19
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`20
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`21
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`BY MR. GINSBERG:
`
`Q.
`
`Dr. Luebke, you've been handed what
`
`has been marked Luebke Exhibit 11 and Luebke
`
`22 Exhibit 12.
`
`23
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`24
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`25
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`Luebke Exhibit 11 is a copy
`
`of a published patent application with the
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`publication Number U.S. 2011/0159458. And
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`Page 80
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`1
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`5
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`7
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`8
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`9
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`10
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`Luebke Exhibit 12 is a copy of a provisional
`
`application, that, on the front page, lists
`
`three inventors, one of whom is Bobby Bennett.
`
`Do you see that?
`
`I'm referring to Luebke Exhibit 12.
`
`The front page identifies Bobby Bennett as one
`
`of the inventors.
`
`Do you see that?
`
`I do.
`
`And if you turn to the end of Luebke
`
`A.
`
`Q.
`
`11 Exhibit 12, it's the third-to-last page, this
`
`12
`
`13
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`page right here.
`
`It's double-sided, so
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`-- there's a communication from the Patent
`
`14 Office that identifies the application number
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`15
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`16
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`17
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`18
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`19
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`2 0
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`21
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`22
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`23
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`25
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`for this provisional application .
`
`Do you see that in the top left? It
`
`says 61/263,192.
`
`MR.. DAHLGREN: Objection; form.
`
`THE WITNESS: Yeah.
`
`I do.
`
`BY MR.. GINSBERG:
`
`Q.
`
`And that provisional application was
`
`filed November 20th, 2009?
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`MR.. DAHLGREN: Objection; form.
`
`THE WITNESS:
`
`I believe that's
`
`correct.
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`212-279-9424
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`HIGHLY CONFIDENTIAL
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`Paqe 81
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`1
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`2
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`3
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`5
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`6
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`BY MR. GINSBERG:
`
`Q.
`
`If you look at the front paqe of
`
`Luebke Exhibit 12, that references a provisional
`
`application -- I'm sorry.
`
`If you look at the
`
`front paqe of Luebke Exhibit 11, that references
`
`the provisional application that we just
`
`identified in Luebke Exhibit 12, correct,
`
`MR. DAHLGREN: Objection; form.
`
`BY MR. GINSBERG:
`
`Q.
`
`-- under related U.S. application
`
`data?
`
`MR. DAHLGREN: Objection; form.
`
`And, Dr. Luebke, you can take your
`
`time to look at the documents, if you need to.
`
`THE WITNESS: Where would I find the
`
`correspondinq number on 12?
`
`BY MR. GINSBERG:
`
`Q.
`
`If you recall, it's at the end of the
`
`document.
`
`A.
`
`Oh, it's at the end. Thank you.
`
`And should these numbers match?
`
`Should these -- should some numbers from here be
`
`transferred over here?
`
`Q.
`
`Yeah.
`
`If you look at the Luebke
`
`25 Number 11, there's a provisional application
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`Page 82
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`number that's provided.
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`A.
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`But are there numbers that transfer
`
`from this document
`
`Q.
`
`A.
`
`Q.
`
`Sure.
`
`to this document?
`
`If you look at the application number,
`
`when you see this document on Luebke Exhibit 12,
`
`you see there's a provisional patent application
`
`number.
`
`it.
`
`A.
`
`Q.
`
`So you have -- your thumb is right on
`
`Yeah.
`
`There's a provisional -- there's an
`
`application number there, 61/263,192.
`
`A.
`
`Q.
`
`Right.
`
`Does that match up with the
`
`provisional application number on Luebke
`
`18 Exhibit 11?
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`A.
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`I'm not trying to be a dunce, but I
`
`don't -- I don't see 61/23. Can you help me?
`
`Q.
`
`Sure.
`
`Under related U.S. application data on
`
`Luebke Exhibit 11,
`
`A.
`
`Q.
`
`Right.
`
`there's provisional Application
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`HIGHLY CONFIDENTIAL
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`Paqe 83
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`1
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`10
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`11
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`Number 61/263,192.
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`Do you see that?
`
`It's in the first column --
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`A.
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`Oh. Here it is. Here it is.
`
`Couldn't find it.
`
`I'm sorry.
`
`Yes.
`
`That matches up?
`
`Yes.
`
`The provisional application that has
`
`Q.
`
`A.
`
`Q.
`
`been marked Luebke Exhibit 12, that was on file
`
`at the time that you met with Mr. Bennett at D&S
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`12 Dental in June of 2010, correct?
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`MR. DAHLGREN: Objection; form.
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`THE WITNESS: Are the dates on the
`
`back? And I'm at
`
`BY MR. GINSBERG:
`
`Q.
`
`The filinq date says November 20th,
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`2009, correct?
`
`A.
`
`Oh. There it is.
`
`Yeah. Okay.
`
`Q.
`
`So the provisional application was on
`
`file prior to your meetinq with Mr. Bennett in
`
`June of 2010, correct?
`
`MR. DAHLGREN: Objection; form. Asked
`
`and answered.
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`THE WITNESS: Yeah. After you've
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`2 walked me through that, I believe that's
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`3
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`4
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`5
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`correct.
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`BY MR. GINSBERG:
`
`Q.
`
`You indicated that at the June 2010
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`6 meeting you gave a presentation. Was that a
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`presentation
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`to D&S Dental, or was that a
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`presentation
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`to somebody else that you were
`
`meeting with
`
`in Tennessee?
`
`MR.
`
`DAHLGREN: Objection; form.
`
`THE
`
`WITNESS:
`
`I made a presentation to
`
`Bobby.
`
`Be called a dentist to come in and see
`
`the presentation, as well.
`
`BY MR. GINSBERG:
`
`Q.
`
`Do you have a copy of that
`
`presentation still?
`
`A.
`
`Probably not that exact presentation,
`
`but maybe something similar.
`
`Maybe.
`
`Q. Where would that be?
`
`MR. DAHLGREN: Objection; form.
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`THE WITNESS: My best guess, it would
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`be on a D drive at home.
`
`BY MR. GINSBERG:
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`212-279-9424
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`VERITEXT REPORTING COMPANY
`www. veritext.com
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`Page 108
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` A. The same.
` Q. Going back to your expert report that
`we've marked Luebke Exhibit 3, I want to direct
`your attention to Paragraph 10.
` Let me know when you're there.
` A. I am there.
` Q. Okay. In the middle of that paragraph
`you state, in later experiments you came up with
`the idea of heat treating nickel-titanium
`endodontic files that were not coated, and
`tested these instruments after they were heat
`treated.
` Do you see that?
` A. Yes.
` Q. What possessed you to heat treat
`nickel-titanium endodontic files?
` MR. DAHLGREN: Objection; form.
`Objection; vague.
` THE WITNESS: That actually explains
`it pretty well.
` I had discussions with endodontists
`who were complaining about, we call them broken,
`separated, fractured files in teeth. And I had
`not used those instruments because of that. And
`so before I was going to do that, I wanted to
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`Page 109
`solve -- see if I could solve a -- a problem.
`BY MR. GINSBERG:
` Q. Why did you think that one way to
`solve the problem would be to heat treat a
`nickel-titanium endodontic file?
` MR. DAHLGREN: Objection; form.
`Vague.
` THE WITNESS: That isn't where I
`started.
`BY MR. GINSBERG:
` Q. But you eventually got there.
` MR. DAHLGREN: Same objections.
` THE WITNESS: That would be a
`quantum --
` MR. DAHLGREN: Is there a question?
` THE WITNESS: That would be a quantum
`leap, however.
`BY MR. GINSBERG:
` Q. How did you get to -- like, why did
`you think you should heat treat nickel-titanium
`files? How did that idea come into your mind?
` MR. DAHLGREN: Objection; form.
`Compound.
` THE WITNESS: I thought the reason
`nickel-titanium files were fracturing is because
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`Page 110
`they weren't sharp enough. So my first -- I
`first addressed sharpness with diamond coating.
` Talking to manufacturers, talking
`-- talking -- looking at some of the things
`that came with it, I realized there may be
`more problems with diamonds than with the files
`themselves.
` The concept was still sharpness. So I
`decided if I TIN coated them, I could, perhaps,
`make them sharper.
` So that's what I did.
`BY MR. GINSBERG:
` Q. How did you get to heat treating?
` MR. DAHLGREN: Objection; form.
` THE WITNESS: Are you aware of the TIN
`coating process?
`BY MR. GINSBERG:
` Q. Explain it.
` A. TIN coating process is the short
`for titanium nitride. And I took some files
`to a heat treater. We figured out a jig that it
`would work in. And we did the titanium nitride,
`which is placing the files in a furnace,
`evacuating the atmosphere and replacing it with
`nitrogen, having a pure titanium rod, put
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`Page 111
`electricity across it, it atomizes and it
`deposits on the files. And that's how you TIN
`coat them.
` Q. Okay. And that's what's referred to
`as your earliest experiments, correct?
` MR. DAHLGREN: Objection; form.
` THE WITNESS: That would be correct.
`BY MR. GINSBERG:
` Q. Then you say, in later experiments,
`you came up with the idea of heat treating
`nickel-titanium endodontic files that were not
`coated.
` Do you see that?
` A. Yes.
` Q. How did you come up with the idea of
`heat treating nickel-titanium files that were
`not coated?
` MR. DAHLGREN: Objection; form.
` THE WITNESS: I tested the TIN coated
`files, and I was satisfied with some of the
`results, using 3630-1, General Requirements.
` My concern, however, was, although
`it may have made it sharper, was there a
`possibility that the TIN coating could come
`off, just like the diamond might have, and so I
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`Page 112
`would have been trading one problem for another
`problem. But I liked the results, so I decided
`to eliminate the TIN coating.
`BY MR. GINSBERG:
` Q. When you were coating the
`nickel-titanium files, was that nickel-titanium
`files that had the shank with the cutting edges
`already formed?
` MR. DAHLGREN: Objection; form.
`Objection to the extent it calls for a legal
`conclusion.
` THE WITNESS: That would be correct.
`BY MR. GINSBERG:
` Q. And what temperature were the files
`heat treated to when you did the coat -- well,
`were they subjected to any particular
`temperature during the heat treatment -- during
`the coating process?
` MR. DAHLGREN: Objection; form.
` THE WITNESS: During the coating
`process?
` Yeah, they were.
`BY MR. GINSBERG:
` Q. What temperature?
` MR. DAHLGREN: Objection; form.
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`Page 113
` THE WITNESS: I believe it was 500
`degrees.
`BY MR. GINSBERG:
` Q. And that treatment took place in a
`nitrogen atmosphere, correct?
` MR. DAHLGREN: Objection; form.
` THE WITNESS: Yeah. That's where the
`N in TIN comes from, yeah.
`BY MR. GINSBERG:
` Q. At the time you filed your provisional
`application that's identified on the '773
`patent, which was June 8th, 2004, --
` A. Okay.
` Q. -- it was known that the ability
`to pre-bend an endodontic file was useful
`to endodontics -- endodontists, correct?
` MR. DAHLGREN: Objection; form.
`Objection; vague.
` THE WITNESS: That's a very
`interesting question, because, in stainless
`steel, the answer is, absolutely correct.
`BY MR. GINSBERG:
` Q. And in Paragraph 12 of your report,
`you state that, pre-bending a file is something
`that is important and useful to endodon
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