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`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
` GREENEVILLE
`
`
`
`DENTSPLY INTERNATIONAL, . DOCKET NO. CV-2-14-196
`INC. AND TULSA DENTAL .
`PRODUCTS LLC D/B/A TULSA .
`DENTAL SPECIALTIES, .
` .
`PLAINTIFFS, .
`.
`VS. . GREENEVILLE, TN
`. JUNE 14, 2016
`US ENDODONTICS, LLC, . 8:57 A.M.
`. VOLUME I
`DEFENDANT. .
`.
`. . . . . . . . . .
`
`
`
`TRANSCRIPT OF MARKMAN HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
`
`
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`PGR2015-00019 – Ex. 1043
`US Endodontics, LLC, Petitioner
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TENNESSEE
` GREENEVILLE
`
`
`
`DENTSPLY INTERNATIONAL, . DOCKET NO. CV-2-14-196
`INC. AND TULSA DENTAL .
`PRODUCTS LLC D/B/A TULSA .
`DENTAL SPECIALTIES, .
` .
`PLAINTIFFS, .
`.
`VS. . GREENEVILLE, TN
`. JUNE 14, 2016
`US ENDODONTICS, LLC, . 8:57 A.M.
`. VOLUME I
`DEFENDANT. .
`.
`. . . . . . . . . .
`
`
`
`TRANSCRIPT OF MARKMAN HEARING
`BEFORE THE HONORABLE J. RONNIE GREER
`UNITED STATES DISTRICT JUDGE
`
`
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`PGR2015-00019 – Ex. 1043
`US Endodontics, LLC, Petitioner
`
`
`
`2
`
`APPEARANCES:
`
`FOR THE PLAINTIFFS: ROTHWELL, FIGG, ERNST &
` MANBECK, P.C.
` STEVEN LIEBERMAN, ESQ.
` DEREK F. DAHLGREN, ESQ.
` 607 14TH STREET, N.W.
` SUITE 800
` WASHINGTON, D.C. 2005
` HUNTER, SMITH & DAVIS
` JIMMIE C. MILLER, ESQ.
` 1212 N. EASTMAN RD.
` P.O. BOX 3740
` KINGSPORT, TN 37664
`
`FOR THE DEFENDANT: PATTERSON BELKNAP WEBB & TYLER LLP
` JEFFREY S. GINSBERG, ESQ.
` ABHISHEK BAPNA, ESQ.
` SHENG LI, ESQ.
` 1133 AVENUE OF THE AMERICAS
` NEW YORK, NY 10036-6710
` WILSON WORLEY MOORE GAMBLE &
` STOUT, PC
` ROBERT L. ARRINGTON, ESQ.
` P.O. BOX 88
` KINGSPORT, TN 37662
`
`COURT REPORTER: KAREN J. BRADLEY
` RPR-RMR
` U.S. COURTHOUSE
` 220 WEST DEPOT STREET
` GREENEVILLE, TN 37743
`PROCEEDINGS RECORDED BY MECHANICAL STENOGRAPHY, TRANSCRIPT
`PRODUCED BY COMPUTER.
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`112
`
`IS THE HANDLE SECURELY AFFIXED TO THE SHANK?
`Q.
`I'M ASSUMING THAT IT IS.
`A.
`IT'S DESIGNED SO THAT IT WOULD NOT COME OFF DURING
`Q.
`THE ROOT CANAL PROCEDURE; CORRECT?
`A.
`I'M ASSUMING IT IS.
`Q.
`THERE'S STANDARDS THAT ACTUALLY APPLY TO ROOT CANAL
`INSTRUMENTS, INCLUDING WHETHER OR NOT A HANDLE CAN EASILY
`COME OFF; CORRECT?
`A.
`THAT IS CORRECT.
`Q.
`IF THE HANDLE CAME OFF AND YOU WERE USING THIS IN
`CONNECTION WITH AN ENGINE-DRIVEN INSTRUMENT, YOU WOULD
`HAVE TO STOP THE PROCEDURE; CORRECT?
`A.
`IF YOU WERE USING A ROTARY INSTRUMENT, YOU WOULD
`HAVE TO STOP.
`Q.
`I BELIEVE DURING YOUR DEPOSITION IN ALL OF YOUR
`THOUSANDS OF ENDODONTIC PROCEDURES, THE HANDLE ONLY CAME
`OFF A COUPLE OF TIMES; CORRECT?
`A.
`THAT IS CORRECT.
`Q.
`AND YOU HAD TO STOP AND GET A NEW INSTRUMENT THAT
`INCLUDED A HANDLE AND A SHANK; CORRECT?
`A.
`THAT WOULD BE CORRECT.
`Q.
`AND YOU DON'T KNOW WHAT THAT HANDLE IS MADE OF;
`CORRECT?
`A.
`WHICH HANDLE?
`Q.
`THE HANDLE ON THE PROTAPER FILE IN FRONT OF YOU.
`
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`113
`
`I CAN CATEGORIZE IT AS METAL.
`A.
`IF YOU HEAT TREATED THAT AT 400 DEGREES CELSIUS,
`Q.
`WHAT WOULD HAPPEN TO IT? WOULD IT COMPLETELY EVAPORATE?
`A.
`NO.
`Q.
`WHAT WOULD HAPPEN TO IT?
`A.
`I DON'T KNOW WHETHER IT'S SWEDGED ON OR GLUED ON,
`BUT IT WOULD COME OFF.
`Q.
`DO YOU KNOW HOW IT'S SECURED?
`A.
`I DO NOT.
`Q.
`AND YOU CAN'T PULL THAT HANDLE OFF; CORRECT? IT'S
`AFFIXED TO THE SHANK?
`A.
`OH, I COULD PULL IT OFF; NOT, NOT HERE, NOT IN THESE
`SITUATIONS; BUT, SURE, I COULD PULL IT OFF.
`Q.
`HOW WOULD YOU PULL IT OFF?
`A.
`I MEAN, I'D PUT IT IN A PULL TEST.
`Q.
`SO YOU WOULD PUT IT IN A VICE AND THEN HAVE THE --
`A.
`THERE'S A, THERE'S A STANDARD FOR IT, 3630-1.
`Q.
`BECAUSE THE FILES ARE DESIGNED SO THAT THAT HANDLE
`DOES NOT COME OFF DURING A ROOT CANAL PROCEDURE;
`CORRECT?
`A.
`DURING NORMAL OPERATIONS THE HANDLE IS NOT SUPPOSED
`TO COME OFF, THAT'S CORRECT.
`Q.
`NOW, TO DATE I BELIEVE YOU MENTIONED THAT DENTSPLY
`HAS PAID YOU JUST A LITTLE BIT OVER $1,000,000 IN
`ROYALTIES; IS THAT CORRECT?
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`114
`
`I BELIEVE I SAID THAT.
`A.
`DO YOU KNOW WHAT THE EXACT NUMBER OF ROYALTIES IS
`Q.
`THAT YOU HAVE BEEN PAID TO DATE?
`A.
`I DO NOT.
`Q.
`WHEN IS THE LAST TIME YOU LOOKED THAT UP?
`A.
`I DIDN'T LOOK IT UP.
`Q.
`THEN WHAT ARE YOU BASING ON -- HOW DID YOU DETERMINE
`THAT YOU'VE BEEN PAID OVER $1,000,000?
`A.
`USUALLY MY WIFE TELLS ME.
`Q.
`THERE'S A DOCUMENT THAT WAS PRODUCED ON THE EVE OF
`YOUR DEPOSITION ALONG WITH THOUSANDS OF OTHER DOCUMENTS
`THAT WE DIDN'T HAVE A CHANCE TO REVIEW IT. LET ME JUST
`PUT THIS UP ON THE SCREEN HERE. DO YOU RECOGNIZE THIS
`DOCUMENT, DR. LUEBKE? IT'S BEEN MARKED LUEBKE, IT'S BEEN
`MARKED WITH INTRODUCTION OF LUEBKE 000267.
`A.
`YES.
`Q.
`WHAT IS THIS DOCUMENT?
`A.
`WHAT IS IT?
`Q.
`YES.
`A.
`IT SAYS, DENTSPLY PAYMENTS.
`Q.
`DOES THIS REFLECT THE PAYMENTS THAT DENTSPLY HAS
`MADE TO YOU OR YOUR COMPANY SO FAR?
`A.
`I, I, I WOULD GUESS SO.
`Q.
`AND I DID THE MATH, IT'S CLOSE TO $1,400,000. DO
`YOU AGREE WITH THAT MATH? THAT WOULD INCLUDE THE SIGNING
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`115
`
`AGREEMENT BONUS, I GUESS.
`A.
`NO, YOU ASKED ME ABOUT ROYALTIES. YOU SAID
`ROYALTIES, AND I SAID A LITTLE OVER $1,000,000, OKAY.
`Q.
`DO YOU CONSIDER ABOUT $140,000 TO BE A LITTLE BIT?
`A.
`DO WHAT?
`Q.
`IS $140,000 A LITTLE BIT?
`A.
`YEAH, THAT'S A LITTLE BIT.
`Q.
`OKAY. AND DO YOU KNOW WHEN THIS DOCUMENT WAS
`CREATED?
`A.
`NO, I DO NOT.
`Q.
`YOU CONTINUE TO RECEIVE ROYALTY PAYMENTS FROM
`DENTSPLY; CORRECT?
`A.
`I DO.
`Q.
`WHEN WAS THE LAST PAYMENT THAT YOU RECEIVED?
`A.
`MAY 15.
`Q.
`NOW, YOUR PATENTS, THE PATENTS THAT ARE AT ISSUE IN
`THIS CASE, DO NOT EXPIRE FOR SEVERAL YEARS; CORRECT?
`A.
`SAY IT AGAIN, PLEASE.
`Q.
`THE PATENTS AT ISSUE IN THIS CASE DO NOT EXPIRE FOR
`SEVERAL YEARS; CORRECT?
`A.
`I ACTUALLY DON'T KNOW HOW LONG.
`Q.
`THEY ISSUED IN -- THEY CLAIM PRIORITY BACK TO AN
`APPLICATION, A NON-PROVISIONAL APPLICATION THAT WAS FILED
`IN JUNE OF 2005; CORRECT?
`A.
`YOU'RE ASKING QUESTIONS THAT I, I, I CAN'T ANSWER.
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`116
`
`I DON'T KNOW THE ANSWER.
`Q.
`YOU DIDN'T JUST TESTIFY REGARDING THE FILING DATE OF
`YOUR APPLICATION?
`A.
`OKAY, SURE, 2005.
`Q.
`SO -- OKAY. AND ARE YOU AWARE OF THE TERM OF THE
`PATENT?
`A.
`NO.
`Q.
`YOU'VE NEVER BEEN TOLD THAT IT LASTS 20 YEARS FROM
`THE FILING DATE?
`A.
`I DIDN'T KNOW THAT.
`Q.
`ASSUMING THAT'S THE CASE AND YOUR PATENTS EXPIRE IN
`2025, YOU STAND TO RECEIVE MILLIONS OF DOLLARS MORE IN
`ROYALTIES ALONE; CORRECT?
`A.
`I HOPE SO.
`Q.
`YOU ALSO STAND TO RECEIVE A PORTION OF ANY MONETARY
`AWARD DENTSPLY RECOVERS IN THIS LITIGATION; CORRECT?
`A.
`I DON'T THINK THAT'S BEEN DISCUSSED.
`Q.
`THAT HASN'T BEEN DISCUSSED, THAT'S NOT PART OF THE
`ACTUAL AGREEMENT?
`A.
`I THINK THE AGREEMENT IS, IS THAT -- I CAN'T SPEAK
`TO IT VERY WELL, BUT I THINK IT'S THIS, THIS PART, THAT IS
`THEY GET TO TAKE THEIR EXPENSES AWAY; AND IF THERE'S
`ANYTHING LEFT OVER, THEN THERE MIGHT BE SOME, SOMETHING
`LEFT FOR ME. SO THAT'S THE WAY I UNDERSTAND IT, SO I'M
`NOT GUARANTEED OF ANYTHING IF THIS GOES WELL.
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`117
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`IF IT GOES VERY WELL, YOU'RE GUARANTEED TO RECOVER A
`Q.
`PORTION OF THE PROCEEDS; CORRECT?
`A.
`I -- THAT WOULD BE PURE SPECULATION ON MY PART.
`Q.
`IF THERE'S AN AWARD WHERE THE DAMAGES EXCEEDS THE
`EXPENSES OF DENTSPLY, YOU WOULD GET A PORTION OF THAT; IS
`THAT CORRECT?
`A.
`THAT WOULD BE TRUE, 2 PERCENT.
`Q.
`ON TOP OF THE ROYALTIES THAT YOU'LL CONTINUE TO BE
`PAID?
`A.
`WELL, THAT'S APPLES AND ORANGES.
`Q.
`AND IF YOUR PATENTS ARE FOUND TO BE INVALID OR NOT
`INFRINGED, YOU'LL RECEIVE LESS MONEY; CORRECT?
`A.
`THAT'S CORRECT.
`Q.
`I BELIEVE DURING THE PRELIMINARY INJUNCTION HEARING
`MR. LIEBERMAN SAID YOU HAVE A DOG IN THIS HUNT; CORRECT?
`A.
`I TOTALLY AGREE WITH THAT.
`Q.
`AND YOU'RE TESTIFYING AS AN EXPERT ON BEHALF OF
`DENTSPLY; IS THAT CORRECT?
`A.
`I BELIEVE THAT'S CORRECT AS WELL.
`Q.
`AND I BELIEVE COUNSEL FOR DENTSPLY DURING YOUR
`DIRECT EXAMINATION ASKED YOU WHETHER OR NOT YOU UNDERSTOOD
`THAT U.S. ENDODONTICS HAS TAKEN THE POSITION THAT THE TERM
`"HEAT TREATING" IN THE CLAIMS OF YOUR '773 AND '341
`PATENTS SHOULD BE INTERPRETED TO MEAN HEAT TREATING IN AN
`ATMOSPHERE CONSISTING ESSENTIALLY OF A GAS UNREACTIVE WITH
`
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`253
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`MR. GINSBERG: YEAH. I THINK IF IT -- IF I SAY
`45 MINUTES, I THINK MR. DAHLGREN'S DIRECT WAS ABOUT 2
`HOURS, SO I'LL SAY 45 MINUTES AND SEE HOW WE DO.
`MR. LIEBERMAN: SO ANOTHER 45 MINUTES?
`MR. GINSBERG: PROBABLY ABOUT A HALF AN HOUR,
`YOUR HONOR. I WILL REVIEW MY NOTES AND SEE IF I CAN
`STREAMLINE THINGS, BUT I WOULD SAY AT LEAST 30 MINUTES OR
`SO.
`
`THE COURT: AND THEN WHAT DO YOU THINK ABOUT
`DR. GOLDBERG?
`MR. GINSBERG: I THINK AROUND 45 MINUTES ON
`
`DIRECT.
`
`THE COURT: OKAY. ALL RIGHT. WELL, THEN LET'S
`COME BACK AT 9:00 IN THE MORNING AND PICK THIS UP, AND
`WE'LL TRY TO FINISH THIS TOMORROW THEN, ALL RIGHT.
`ALL RIGHT. I'LL SEE YOU IN THE MORNING AT
`
`9:00.
`(PROCEEDINGS ARE ADJOURNED AT 4:58 P.M., UNTIL JUNE
`15, 2016 AT 9:00 A.M.)
`I CERTIFY THAT THE FOREGOING IS A CORRECT TRANSCRIPT FROM
`THE RECORD OF PROCEEDINGS IN THE ABOVE-ENTITLED MATTER.
`
`
`KAREN J. BRADLEY/S 7/8/16
`SIGNATURE OF COURT REPORTER DATE
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`
`
`INDEX
`WITNESSES ON BEHALF OF THE PLAINTIFFS:
`NEILL LUEBKE
`DIRECT EXAMINATION BY MR. DAHLGREN
`CROSS EXAMINATION BY MR. GINSBERG
`REDIRECT EXAMINATION BY MR. DAHLGREN
`RECROSS EXAMINATION BY MR. GINSBERG
`ROBERT SINCLAIR
`DIRECT EXAMINATION BY MR. DAHLGREN
`CROSS EXAMINATION BY MR. GINSBERG
`
`254
`
`PAGE
`54
`109
`176
`188
`192
`228
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