'
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EV3ElE'EEl=l55ug
`
`..
`
`‘V’ M ‘I’
`
`Label No. _.__.———--
`
`¢,,.
`
`‘
`
`me
`
`2004
`Opposition No. 9115%‘£‘:'IsD:‘p:mi a:\]':1)g\fember 8 ,
`Moria ,
`,,,e,',".,, mm; that this paper or fees is
`H liwgflio
`‘
`‘ belng deposited with the United states Postal
`.
`‘I P 31 Ofiice to Addressee”
`ggrriiigg ugiiieii
`1.‘i0 on the date indicaled
`sad to: Commissioner 1or
`ligtiglrigijkiss i>dg.'eB$ox 1451, Alexandria. VA
`22313-1451
`y
`
`———————*"*‘
`
`'B
`
`HANCOR, INC.
`Oplmer’
`
`V
`
`MOLLEWOOD EXPORT, INC.
`
`Applicant.
`
`E/Q/\./\/Q/\/Q/%/L/\/é
`
`MOTION FOR RECONSIDERATION OF THE BOARD'S NOVEMBER 1, 2004 ORDER
`
`Opposer respectfully requests that the Board reconsider its November 1, 2004
`
`Order denying Opposer's Motion for Extension of the Discovery Period. Good cause exists for
`
`the requested extension.
`
`On August 24, 2004, counsel for Opposer, Hancor, Inc., received documents from
`
`Applicant Mollewood Export, Inc. Those documents were produced pursuant to the Board's July
`
`21, 2004 Order which granted, in part, Hancor's Motion to Compel. The documents represented
`
`the very first time that Applicant produced information regarding its distributors. As such, it was
`
`the first time that Opposer became aware of the need to take several depositions.
`
`Less than two weeks after receiving this new information from Applicant,
`
`Opposer moved for an extension of the discovery period. The motion was necessitated by the
`
`fact that Opposer's counsel was scheduled to begin an out-of-town jury trial on September 20,
`
`2004. Because of the need to prepare for the upcoming trial, and the need to provide sufficient
`
`HllllllllllHllllllllllllllllllllllllllllllllllll
`
`1 1-08-2004
`
`CLl- l1l9651vl
`
`Us’ "“’"‘ ‘ *”°'°’*'V' W’ Rev! D!» #66
`
`

`
`
`
`notice to the distributors that would be subpoenaed, there was insufficient time after receiving
`
`the documents to conduct discovery before the October 1, 2004 end of the Discovery Period.
`
`(Tab A at 11 6.)
`
`Attached at Tab A is an affidavit from Thomas R. Goots which supports Hancor's
`
`Motion for Reconsideration. As set forth in the Affidavit, Mr. Goots traveled to Boston for trial
`
`on September 16, 2004. (Tab A at 1[ 3.) In the weeks preceding September 16, 2004, Mr. Goots
`
`spent at least 47 hours per week preparing for trial. (Tab A at 1] 5.) Mr. Goots was in trial until
`
`October 7, 2004. (Tab A at 1] 4.)
`
`Opposer respectfully requests that the Board reconsider its November 1, 2004
`
`Order and provide for an extension of the Discovery Period. This will allow Opposer to take the
`
`depositions of the heretofore unknown distributors and conduct discovery related to the amended
`
`discovery responses. Opposer has shown good cause for an extension of the Discovery Period,
`
`based on Applicant's disclosure of distributor information weeks before the Discovery Period
`
`was to close and based on Opposer's counsel's trial schedule. Finally, this is not an attempt to
`
`delay these proceedings. Opposer has never previously requested or received an extension.
`
`Respectfully submitted,
`
`«
`
`Timothy P. Fraelich
`Thomas R. Goots
`
`JONES DAY
`
`North Point
`
`901 Lakeside Avenue
`
`Cleveland, Ohio 44114
`
`(216) 586-3939
`
`ATTORNEYS FOR OPPOSER
`
`HANCOR, INC.
`
`Dated: November _8_, 2004
`
`CLI- lll9651vl
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Motion for Reconsideration of the
`Mt
`Board's November 1, 2004 Order was served this i day ofNovember, 2004 via regular U.S.
`
`Mail upon:
`
`Christopher J. Fildes
`Fildes & Outland, P.C.
`
`20916 Mack Avenue, Suite 2
`
`Grosse Pointe Woods, MI 48236
`
`VMKM
`
`CLI-1243717v1
`
`

`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 9115621 1
`
`HANCOR, INC.
`
`Opposer,
`
`v.
`
`MOLLEWOOD EXPORT, INC.
`
`Applicant.
`
`%/\J\./%/%/\/\&\)%/éé
`
`AFFIDAVIT OF THOMAS R. GOOTS IN SUPPORT OF
`
`OPPOSER'S MOTION FOR RECONSIDERATION
`
`1, Thomas R. Goots, do hereby depose and state as follows:
`
`1.
`
`I am an attorney in the law firm of Jones Day, counsel for Opposer,
`
`Hancor, Inc. ("Hancor").
`
`2.
`
`I am the only attorney at Jones Day responsible for the day-to-day activity
`
`in the above-captioned opposition.
`
`3.
`
`On September 16, 2004 I traveled from Cleveland, Ohio to Boston,
`
`Massachusetts for a patent infringement trial, which began on September 20, 2004.
`
`4.
`
`I was in Boston for trial from September 16 to October 7, 2004, with the
`
`exception that I was in Cleveland the weekend of October 2-3, 2004. Attached at Tab 1 are
`
`excerpts from the trial transcript showing that I appeared at trial each day.
`
`5.
`
`In the weeks preceding the start of the trial, I was actively engaged in trial
`
`preparation. From August 23 to August 29, I spent 51.5 hours preparing for trial. From August
`
`CLl—1243980vl
`
`

`
`
`
`30 to September 5, I spent 47.75 hours preparing for trial. From September 6 to September 12, I
`
`spent 47.25 hours preparing for trial. And between September 13 and September 19, I spent
`
`80.25 hours preparing for trial.
`
`6.
`
`From the time I received Applicant's amended discovery responses on
`
`August 24, 2004, to the time the Discovery Period was to end on October 1, 2004, I did not have
`
`sufficient time to notice and take depositions of Applicant's distributors or to take discovery
`
`related to the amended responses.
`
`FURTHER AFFIANT SAYETH NOT.
`
`Subscribed and sworn before me this
`
`X-LL day of November, 2004.
`
`()7 J‘ W40 °
`
`Notary Public
`
`7%W/?;mg
`
`Thomas R. Goots
`
`My Comm. Exp. 3/29/o9
`
`._ r PAMELAs_ M020
`~
`NOTARY PUBLICLA
`sum: or oi-no
`
`CLI-1243980v1
`
`

`
`

`
`
`
`Jury ‘Trial - Day 1'
` IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`
`
`
`
` DEPUY ACROM-ED,
`INC. and
`BIEDERMANN MOTECH GMBH,
`
`ax
`
` 3 OPENING STATEMENTS PAGE
`
`
`
`
`By fl,[_ 331,51;
`Plaintiffs
`4
` -VS- CA No. 01-10165-EFH
`
`By Mr. Thomas:
`30
`Pages 1 - 52
`MEDTRONIC sormon DANEK,
`INC.,
`
`
`i/k/a SOFAMOR DANEK GROUP,
`INC.,
`7
`and MEDTRONIC sormon DANEK
`
`8
`usn,
`INC.,
`9
`Defendants
`
`
`
`
`
` LEE A. MARZILLI
`CERTIFIED REALTIME REPORTER
`United States District Court:
`
`1 Courthouse Way, Room 3205
`Boston, MA
`02210
`(617)345-6797
`
`
`12
`
`13
`
`
`
`JURY TRIAL - DAY ONE
`
`
`,BEFORE THE HONORABLE EDWARD F. HARRINGTON
`SENIOR UNITED STATES DISTRICT JUDGE
`
`' United States District Court:
`1 Courthouse Way, Courtroom 13
`
`Boston, Massachusetts
`19
`'
`September 20, 2004, 9:50 a.m.
`
`
`
`
`
`
`23
`
`24
`
`APPEARANCES:
`
`
`
`1
`2
`3
`
`P R O C E E D I N G S
`and sworn‘)
`*
`(A recess was taken,)
`
`(Jury enters the courtroom, 11:20 am.)
`4
`THE COURT: Members of the jury, over the next
`5
`6 approximately ten days, it's going to bgyour fimcfion to
`7
`find the facts and to apply to the facts as found by you the
`8 law as I will instruct you on it, and when you apply the law
`9
`to the facts, you'll return a verdict.
`
`
`
`For the Plaintiffs.
`CALVIN P. GRIFFITH, ESQ. , ROBERT C. KAHRL, ESQ., and
`Cleveland, Ohio, 44114-1190.
`rnomns a. coors, aso. , Jones Day, 901 Lakeside Avenue,
`For the Defendants:
`
`4
`
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. HARDER, ESQ.,
`
`and DIRK D. THOMAS, EsQ., Robins, Kaplan, Miller I Citesi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`
`
`
`7
`
`
`
`\I
`
`
`10
`Finding the facts means determining what actually
`
`11
`exists or happens on the basis of the evidence. The evidence
`
`12 will come before you usually in three forms:
`the sworn
`
`13 - testimony of witnesses, documentary evidence which is marked
`
`14
`as exhibits, and what we call real or tangible evidence. In
`
`15
`this case, it might be devices. But it's on the basis of the
`
`16 evidence that is admissible that you, the jury, collectively
`
`17 consider it and make a judgment on the basis of that evidence
`18 what are the facts.
`
`
`1- 50
`
`You not only have the responsibility and the power
`
`toO
`
`to determine the facts, you also have the authority and power
`
`L.) 5-
`
`to determine the credibility of each witness. It's your
`
`NIs.)
`
`
`determination collectively to determine what witnesses are
`N)La)
`
`
`telling the truth. How do you make that judgment? These are
`I0-Ii
`some factors that you might consider:
`IOU!
`
`
`September 20, 2004
`
`
`
`How does the witness appear on the stand? Is the
`
`Page 1 - Page
`
`
`
`
`
`
`
`
`

`
`
`
`ti
`
`
`
`UNITED STATES DISTRICTCOURT
`DISTRICT OF MASSACHUSETTS
`
`'
`
`
`
`DEPUY ACROMED, INC. and
`BIEDERMANN MOTECH GMBH,
`Plaintiffs,
`
`CA NO. 1—10165-EFH
`
`—v—
`MEDTRONIC SOFAMOR DANEK, INc.,
`f/k/a SOFAMOR DANEK GROUP, INC.
`USA, INC.,
`and MEDTRONIC SOFAMOR DANEK
`
`Defendants.
`
`JURY TRIAL - DAY 2
`BEFORE THE HONORABLE EDWARD F. HARRINGTON
`
`SENIOR UNITED STATES DISTRICT JUDGE
`
`UNl'l'ED STATES DISTRICT COURT
`
`JOHN J. MOAKLEY U.S. COURTHOUSE
`- ONE COURTHOUSE WAY, Courtroom 13
`BOSTON, MA 02210
`September 21, 2004, 9:00-1:00
`
`DEBRA M. JOYCE, RMR, CRR
`Official Court Reporters
`VALERIE O'HARA, RPR
`John J. Moakiey U.S. Courthouse
`1 Courthouse Way, Room 5204
`617-737-4410
`Boston, MA 02210
`
`2-2
`
`A P P E A R A N C E S:
`FOR THE PLAINTIFFS:
`
`CALVIN P. GRIFFITH, EsQ., ROBERT C. KAHRL, ESQ., and
`THOMAS R. GOOTS, ESQ., Jones Day, 901 Lakeside Avenue,
`Cleveland, Ohio, 44114-1190.
`FOR THE DEFENDANTS:
`
`CHRISTOPHER P. SULLIVAN, EsQ., DAVID E. MARDER, ESQ.,
`and DIRK D. THOMAS, EsQ., Robins, Kaplan, Miller & Ciresi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`
`
`
`gioooximuic-wwi-.‘/‘
`
`D-5 H
`H IV
`
`|-‘ U)
`
`HA
`I-‘ U!
`
`I-| O3
`
`I-5\l
`I-1W
`I-|KO
`
`'7°‘-‘N_~i-o
`
`2:)
`
`24
`
`25
`
`1
`2
`3
`4
`
`5
`6
`7
`8
`9
`10
`11
`
`12
`13
`
`14
`15
`16
`
`17
`
`18
`19
`
`20
`21
`
`22
`23
`
`24
`25
`
`1
`
`2
`3
`
`4
`
`5
`6
`
`7
`8
`
`9
`10
`11
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`12
`13
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`14
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`15
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`20
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`22
`23
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`24
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`25
`
`P R 0 C E E D I N G S
`THE COURT: Good momlng, members of the jury.
`THE CLERK: Civil action 01-10165, DeEu11._
`Medtnonin.
`
`THE COURT: Call your first witness.
`_
`MR. GRIFFITH: Your Honor, we call Luiz Biedermann.
`THE COURT:
`If the witness isn't speaking loud
`enough, give me the signal.
`_
`Swear the witness in, and speak to the jury.
`LUTZ BIEDERMANN, having been duly sworn by the
`Clerk, was examined and testifled as follows:
`
`BY MR. GRIFFITH:
`
`DIRECT EXAMINATION
`
`Q. Mr. Biedermann, would you state your full name for the
`record, please?
`A. My name is Lua Biedermann.
`
`Q. Where do you currently reside?
`_
`'
`_
`I live in Germany in a town called Villingen-Schwennlgen in
`A.
`Bertha-Suttner In street 23.
`
`Q. Mr. Biedermann, is English your native language?
`A. NO, it is not.
`,.
`_
`_
`Q. Is it acceptable to you to testify today in English without
`a translator?
`’
`
`I feel fine as long as I would have the possibility
`A. Yes.
`to ask for a different word if I would not understand the
`
`meaning of the word.
`
`Q. Are you an offlcer of one of the companies involved in this
`action?
`
`A. Yes.
`
`Q. And which -— what company are you an offlcer oi’? And what
`position do you hold there?
`
`I'm the president of the company called Biedermann Motech
`A.
`GbmH.
`
`Q. For how long have you been president of Biedermann Motech?
`A.
`I founded the company in the mid '80s, and I have been the
`president ever since that time.
`
`Q. Are you the sole owner of Biedermann Motech?
`A. Yes, I'm the sole owner.
`
`Q. Could you tell the jury what Biedermann Motech does?
`
`A. Biedermann Motech is involved in designing and
`
`manufacturing medical implants and devices, among them spinal
`implants.
`
`In addition to being an offlcer of Biedermann Motech, do
`Q.
`you also have an affiiiation with the other plaintiff in this
`case, DePuy?
`
`A. Yes, I'm a member of the executive board of DePuy spine.
`Q.
`I'm going to refer to DePuy Spine as DePuy.
`Is that okay?
`A. Yes. .
`
`Q. As it's been noted, there's been some different
`
`permutations of that, DePuy Motech, DePuy AcroMed. when I
`
`2-4
`
`

`
`
`
`DePuy V. Mcdtronic
`
`
`
`Condenseltm
`Jury Trial - Day 3
`
`
`IN THE UNITED STATFS DISTRICT COURT
`INDEX
`FOR THE DISTRICI‘ OF MASSACHUSETTS
`
`)
`
`DEPUY ACROI\ED, INC. and
`BEDERMANN NIOTECH GMBH.
`)
`)
`
`Plaintiff:
`-VS-
`
`)
`) CA No. OI-10165-§H
`
`WITNESS
`ROBERT MANN
`EARL FENDER
`
`DIREX.'I' CROSS REDIRECT RECROSS
`3~5
`3-43
`368
`3-69
`3-71
`3-78
`
`JACK HARRINGTON
`EXHIBITS
`
`3-III
`
`3318
`
`3I(B~3I06
`
`3109. 3Il0, 3112. 3113
`3107.
`10 M00, 3101. 3102,
`3108. 3111. 3114
`
`)
`)
`MEIYIRONIC SOFAMOR DANEK. INC.,
`I/kin SOFAMOR DANEK GROUP. INC.)
`and MEULRONIC SOFAMOR DANEK )
`USA. INC.
`)
`)
`Derenumu
`
`)
`
`
`
`JURY TRIAL - DAY TI-IRE
`
`BEFORE THE HONORABLE EDWARD F. HARRINGTON
`SENIOR UNITED STATE? DISTRICT JUDGE
`
`Unined states Dimict Court
`I Colmholue Way. Caumoom 13
`Bonmn. Munchmatu
`Saptembay 22. 2004, 9:00 am.
`
`LEE A. MARZILLI. RPR, CRR
`DEBRA M. JOYCE. RMR. CRR
`Official Coin‘! Rapomls
`Unitnd State: Dixlxid Court
`I Colmhzuso Way. Room 3205
`Boston. MA 02210
`(617)345-6787
`
`APPEARANCES:
`Fm tho Plainliffu
`
`CALVIN P. GRIFFITH. ESQ. ROBERT C. KAI-IRL, ESQ. and
`THOMAS R. (30013. ESQ, Jane: Day, 901 Lalcelide Avamne.
`Cleveland, Ohin. 44114-1190.
`For the Defendants:
`
`CHRISTOPI-IE.R P. SULLIVAN, ESQ, DAVID E MARDER. ESQ.
`and DIRK D. THOMAS. ESQ, Robins, Kaplan, Miller & Cixeli,
`L.L.P.. Ill Humingmn Avemn, Bonn». Muaanbluelu. OZI99.
`
`I N D E X (Conlimud)
`3-14]
`
`3-141
`3-141
`
`3-14]
`
`II49
`
`
`September 22, 2004
`
`Page 1 - Page 4
`
`

`
`
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF MASSACHUSETTS
`
`Condenseltm
`
`Jury Trial - Day 4
`
`Page 3
`
`>- CD
`pm pm
`nu B)
`
`THE COURT: All right.
`
`(From the videotaped deposition of Anthony P.
`Schnuerer.)
`
`Q. Would you please state your full name for the record.
`A. Anthony P. Schnuerer.
`
`Q. Are you presently employed?
`A. Yes, I am.
`
`Q. With whom are you employed?
`A. Medtronic Sofamor Danck.
`
`Q. You indicated that you were with Zimmer until 1993?
`
`A. It would probably be like 1992 -- 1993, that's correct.
`That is correct. 1993, I left Zimmer.
`
`
`
`
`
`
`18
`
`22
`
`
`
`
`23
`24
`
`JURY TRIAL - DAY 4
`
`BEFORE THE HONORABLE EDWARD F. HARRINGTON
`
`h- DJ
`SENIOR UNITED STATES DISTRICT JUDGE
`
`
`- 4%
` - Lh
`
`UNITED STATES DISTRICT COURT
`>- OK
`17
`JOHN J. MOAKLEY U.S. COURTHOUSE
`ONE COURTHOUSE WAY, Courtroom 13
` h- ~J
`BOSTON, MA
`02210
`September 23, 9:00 a.m.-1:00 p.m.
` - O0
`
`- VD
` B)CD
`JOYCE, RMR, CRR
`DEBRA M.
`
`LEE A. MARZILLI, RPR, CRR
`Official Court Reporters
`
`22
`John J. Moakley U.S. Courthouse
`1 Courthouse Way, Room 5204
`23
`Boston, MA
`02210
`617-737-4410
`B33%
`
`bdLA
`
`
`A P P E A R A N C E S:
`
`Q. What position did you receive at DePuy when you started
`FOR THE PLAINTIFFS:
`with that organization?
`
`BJ no
`
`Q. Where did you go after you left Zimmer?
`A.I went to DePuy.
`
`Q. When did you start with DePuy?
`
`A.I believe it was July of 1993. That's correct, '93, yes.
`Q. What location did you work from at DePuy?
`A. Warsaw, Indiana.
`
`
`
`Page 4
`
`
`
`
` CALVIN P. GRIFFITH, ESQ., ROBERT C. KAHRL, ESQ., and
`
`4
`THOMAS R. GOOTS, ESQ., Jones Day, 901 Lakeside Avenue,
`Cleveland, Ohio, 44114-1190.
`
`FOR THE DEFENDANTS:
`
`
`
`
`7
`
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. MARDER, E5Q.,
`
`and DIRK D. THOMAS, ESQ., Robins, Kaplan, Miller & Ciresi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`
`
`
`
`
` - D)
` bu J%
` »— LA
` um O\
` h- ‘J
` >— 00
` - VD
` bJCD
` 5) hi
`
`B3B0
` DOU3
` BJ4%
` B) Lh
`
`
`
`September 23, 2004
`
`VDO0~JONLn4%DJB)be
`
`#- CD
`y. bu
`
`- B3
`
`A. Product manager.
`
`Q. What product were you the manager of when you joined DePuy?
`A. Initially MOSS
`Initially MOSS Miami, M-O-S-S,
`Miami, M-i-a-m-i.
`
`Q. When was the MOSS Miami product released to the public?
`A. In 1994, early 1994.
`
`Q. For four to six months you had responsibilities for the
`Moss Miami product?
`A. That's correct.
`
`Q. In 1994 you had responsibility for the Moss product,
`
`product manager responsibilities for the Moss product, and you
`had those responsibilities for about a year and a half?
`A. Until I left the company.
`
`Q. And when did you leave the company?
`A. In July of 1995.
`
`Q. So in September of 1994, you reassumed product manager
`responsibility for the MOSS Miami product?
`
`A. I reassumed all product management responsibilities for
`every product, all products.
`
`Q. Describe generally what your product manager
`responsibilities were from this September or October of 1994
`
`period, until the time you left DePuy in July of I995.
`
`A. It was managing the products from all of the previous
`
`
`Page 1 - Page 4
`
`
`
`
`
`ND00*4ONLn4%U0B)F‘
`
`INC. and
`DEEUY ACROMED,
`BIEDERMANN MOTECH GMH,
`Plaintiffs,
`
`-v_
`
`
`CA NO. 1-10165-EFH
`
`
`
`INC.,
`MEDTRONIC SOFAMOR DANEK,
`
`INC.
`f/k/a SOFAMOR DANEK GROUP,
`
`9
`and MDTRONIC SOFAMOR DANEK
`
`
`USA,
`INC.,
`
`
`10
`Defendants.
`
`
`
`PROCEEDINGS
`
`THE CLERK: court is in session, you may be seated.
`THE COURT: call your next witness.
`
`MR. KAHRL: Your Honor, we would like to begin
`
`today by presenting the videotape deposition testimony of
`Anthony Schnuerer, a Sofamor Danck employee. It's about seven
`minutes.
`
`

`
`
`
`
`
`MR. MARDER: Thank you.
`BY MR. GRIFFITH:
`
`Q. Mr. Haas, could you explain to the jury what this chart
`shows, what this lays out.
`A Okay. This chart pretty much summarizes the entire
`calculation of damages based on the analysis and conclusions I
`reached
`
`In the middle ofthe chart, there is a box called
`‘Medtronic MAS sales." These are the sales of the accused
`
`
`
`
`
` Page 3
`
`APPEARANCES:
`
`1
`
`THE COURT: That's been noted
`
`5
`FOR THEP :
`4
`CALVIN P. GRlFFlTl'I, ESQ., ROBERT C. KAHRL, ESQ., and
`5
`4 THOMAS R. GOOTS, ESQ., Jones Day, 901 Lakeside Avenue,
`6
`Cleveland, Ohio, 44114-1190.
`;
`FOR THE DEFENDANTS:
`9
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. MARDER, ESQ.,
`10
`and DIRK D. THOMAS, ESQ., Robins, Kaplan, Miller & Ciresi,
`
`11
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`products. And there were $111 million of domestic
`
`12
`
`sales, there were about $55 million of international sales,
`I 3
`
`coming to a total of about $166 million of accused
`1 4
`sales from January 23, 1998 to August 2003.
`
`I 5
`Now, We talked a little bit about the lost profits
`
`16
`side of this calculation yesterday. Whatl did was I started
`
`1 7
`
`with the U.S. sales, the $111 million, I applied the market
`18
`
`share figures, the adjusted market share figures for each year,
`l 9
`
`andldeterminedthatifthe
`20
`
`had not been sold in the marketplace, it was reasonably
`2 1
`probable that DePuy would have sold about $51.2 million of
`
`22
`
`those sales. I then applied DePuy's profit percentage, 58.4
`23
`percent, and that gave me the lost profits component of
`
`24
`damages, which was $29.9 million
`
`25
`Now, now of that $1 1 1 million of U.S. sales, I
`
`
` Page 5 I _/'
`1
`P R O C E E D I N G S
`1
`reached the conclusion that if Medtronic had not been able to
`
`
`
`7
`
`
`
`
`
`THE CLERK: Court is in session, you may be seated.
`2
`THE COURT: Happy Friday.
`3
`Proceed. Continued.
`4
`REDIRECT-EXAMlNA'I'ION
`5
`6 BY MR. GRlFFITH'
`7 Q. Good morning, Mr. Haas.
`8 A. Good morning, Mr. Griflith
`
`9 Q. When we adjourned yesterday, we were about to go through
`10
`the calculation of damages you performed in this case. There
`ll werealotofnumberstogothrough,solwantedtostartofl‘
`12 with an exhibit, Exhibit 3840 for identification, and then
`13 we'll go through these numbers.
`14 A. Okay.
`
`15 Q. Could you identify Exhibit 3840, please?
`16 A. Thisisachartthatlputtogetherforthistrialthat
`17 describes the calculation of damages.
`18
`MR. GRIFFl'IH I would otfer Exhibit 3840 in
`19
`evidence, your Honor.
`
`20
`21
`22 exhibit.
`
`MR. MARDEK No objection, your Honor.
`THE COURT: Received in evidence, marked as an
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(Exhibit 3840 received in evidence.)
`23
`MR. MARDER: Your Honor, just to note my continuing
`24
`
`
`objection from yesterday, however.
`25
`
`
`
`
`
`
`
`
`2
`3
`4
`5
`6
`7
`8
`
`9
`10
`11
`12
`13
`14
`
`15
`16
`17
`18
`19
`
`20
`21
`22
`
`23
`24
`25
`
`sell the MAS products in the market, somebody else, not DePuy,
`would have sold these other $59.9 million of sales.
`
`According to the law, DePuy is still entitled to
`some compensation or reasonable royalty on those sales, and
`what I did then was I deducted commission expenses, which is
`the way that royalties are ordinarily calculated in this
`industry. That was about 10.7 million that I removed from the
`sales. That got me down to $49.2 million. I then
`
`added the international sales. Even though DePuy had some
`foreign sales operations, it was very complicated to look on a
`eountry—by-country basis and figure out lost profits, so I put
`those in the reasonable royalty pool; that was another $55
`million.
`
`When you add those two numbers together, 49 million
`and the 55 million, it came up to $104.4 million. I then
`applied the royalty rate, the 12 percent royalty rate that
`Mr. Dansky described yesterday, and that came to a reasonable
`royalty component of damages of about $12.5 million.
`
`Then to get the total award, what you do is you add
`this lost profits amormt plus the reasonable royalty amount,
`and that gets total damages of approximately $42.5 million.
`Q. So is that $42.5 million the total damages number‘?
`A Yes, through August 2003.
`
`Q. Are you aware that Medtronic contends
`
`lost profits is
`
`2(Pages2to5)
`
`Acromed v. Medtronic, Day 5, 09/24/04
`
`f0853fa2-d7fa-41:99-9963-a94dd49b6374
`
`

`
`
`
`Page4
`
`APPEARANCES:
`
`FOR THE PLANHFFS‘
`CALVIN P. GRIFFI'I'H, EsQ., ROBERT C. KAHRL, ESQ, and
`THOMAS R. GOOTS, ESQ., Jones Day, 901 lakeside Avenue,
`Cleveland. Ohio. 44114-1190
`'
`FOR nus DEFENDANTS.
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. MARDER, ESQ.,
`and DIRK D. THOMAS, ESQ., Robins, Kaplan, Miller & Ciresi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`'
`
`,-
`
`'
`
`\‘.
`'
`
`indicatestothejmythatyou'vernadearulingagainstus. So
`1
`2 we don't want do that.
`3
`'I'HE COURT: Okay. Very good.
`4
`MR THOMAS: We're fine just with doing it on the
`5
`liability phase.
`6
`'I'I-IE COURT: Then I‘rn going to enter this
`7 memorandum.
`8
`can in thejum
`9
`(End of discussion at side
`10
`THE COURT; ()fl‘the pa-,ord_
`11
`011- me record)
`12
`(Jury altered the courtroom.)
`13
`THE COURT: Good morning ladies and gaitlern of
`14
`the jury. The defendants will have approximately,
`15
`approximately, give or take — nothing is ever exact — but
`16
`approximately four witnesses.
`17
`Are the defendants prepared to go forward?
`18
`MR. THOMAS: Yes, your Honor, we are.
`19
`THE COURT: Proceed.
`20
`MR. THOMAS: Defendants call Mr. Mike Sherman to
`21
`the stand
`
`MIKE SHERMAN, having been duly sworn by the Clerk,
`22
`23 was examined and testified as follows:
`
`24
`25
`
`Page 3
`
`THE CLERK: Thank you, please be seated
`DIRECT EXAMINATION
`
`Page 5
`
`-1
`
`B8’G'§L':"5{3Z$5-'2'-E=‘~ooo~I<7~v-F-wN— O
`
`Q. Goodmoming,sir.
`A Good morning.
`THE COURT: Can the jurors see the witness?
`Q. Could you please introduce yourself?
`A My name is Mike Sherman
`Q. It/Ir. Sherman, are you currently employed?
`A Yes, I am.
`Q. Where?
`A Medtronic Sofamor Danek.
`Q.
`What's your position at Medtronic Sofamor Danek?
`I'm currently the vice president of technology development.
`Now, how long have you been with Sofamor Danek?
`Almost 14 years.
`. Ifyou could, Mr. Sherman, could you just briefly describe
`fo us your educational history starting with college?
`A. Sure. I have a bachelor's degree from Rensselaer Polytech
`Institute in biomedical engineering, which I received in '83;
`and a master's degree from the University of Texas Health
`Science Center in Dallas, it's now called Southwest Graduate
`School, which I received in December of 1984.
`Q. And what was the topic of your masters degree?
`22 A Biomedical engineering.
`23 Q. Did you start work right after that?
`24 A. I did
`
`A Q
`
`.A
`
`PROCEEDINGS
`THE CLERK: All the rise for the Honorable Court.
`TI-IE COURT: I'll see counsel.
`(At side bar on the record.)
`THE COURT: In recent case, what's it called, the
`Poly-America case?
`MR KAHRL: Yes, sir.
`THE COURT: It's caused me a little consternation,
`and my questions are going to relate to the parties‘ attitude
`towards it. It's a strong case; whether it is absolute
`authority, I'm not sure. However, what is the plaintiff and
`the defendant's attitude towards at this time going on the
`issue of liability only? And after that case's issue is
`decided, to try the case on damages where the plaintifis can
`put their damage evidence in, separated into two lost profits
`damage periods. So consider it, and let me know.
`MR KAI-IRL: Our position, as the plaintiff, is that
`the Poly—America case is about --
`THE COURT: I don't want to argue the case. It's a
`very difficult case, and it's a very difficult issue, and I
`know your position. And I'm not urging you to do this. All I
`want is what would you think going on the issue of liability
`only at this time?
`MR. KAI-IRL: We don't want do it because we think
`
`it's inapplicable, and we've already put in our damages and it
`
`
`
`25 Q. Where?
`
`"
`
`2 (Pages 2 to 5)
`
`Acromed v. Medtronic, Day 6 09/27/04
`
`85d7f1 7a$5a344ff—9426-a8ctb79t 0372
`
`

`
`
`
`Condenseltm
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`P R O C E E D I N G S
`
`Jury Trial - Day 7
`
`Page 3
`
`INC. and
`DEPUY ACROMED,
`BIEDERMANN MOTECH GMBH,
`Plaintiffs,
`
`-v_
`
`INC.,
`MEDTRONIC SOFAMOR DANEK,
`f/k/a SOFAMOR DANEK GROUP,
`INC.
`and MEDTRONIC SOFAMOR DANEK
`USA,
`INC.,
`
`Defendants.
`
`CA NO. 01-10165-EFH
`
`JURY TRIAL - DAY 7
`
`BEFORE THE HONORABLE EDWARD F. HARRINGTON
`SENIOR UNITED STATES DISTRICT JUDGE
`
`UNITED STATES DISTRICT COURT
`JOHN J. MOAKLEY U.S. COURTHOUSE
`ONE COURTHOUSE WAY, Courtroom 13
`BOSTON, Mm
`02210
`September 28, 2004
`9:15 a,m.-1:00 p.m.
`
`JOYCE, RMR, CRR
`DEBRA M.
`LEE A. MARZILLI, RPR, CRR
`Official Court Reporters
`John J. Moakley U.s. Courthouse
`1 Courthouse Way, Room 5204
`Boston, MA
`02210
`617-737-44l0
`
`A P P E A R A N C E 5:
`
`FOR THE PLAINTIFF5:
`
`fl*V
`
`CALVIN P. GRIFFITH, ESQ., ROBERT C. KAHRL, ESQ., and
`THOMAS R. GOOTS, ESQ., Jones Day, 901 Lakeside Avenue,
`Cleveland, Ohio, 44114-1190.
`FOR THE DEFENDANTS:
`
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. HARDER, ESQ.,
`and DIRK D. THOMAS, ESQ., Robins, Kaplan, Miller & Ciresi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`
`E5MD00‘JOnLn4%DJE)#-
`
`C. hfi
`_— B4
`
`>— DJ
`- 4%
`- tfl
`
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`
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`
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`B)FJ
`b0U0
`b04%
`50LA
`
`THE CLERK: court is in session, you may be seated.
`THE COURT: Good morning.
`
`Call your next witness.
`MR. THOMAS: Your Honor, defendants call
`
`Mr. Malcolm Pope to the stand.
`
`MALCOLM H. POPE, having been duly sworn by the
`Clerk, was examined and testified as follows:
`
`THE CLERK: Thank you, please be seated.
`DIRECT EXAMINATION
`BY MR. THOMAS:
`
`Q.Good morning, sir.
`
`A. Good morning.
`
`Q. Could you please just introduce yourself to the jury.
`A. My name is Malcolm Henry Pope.
`Q. Mr. Pope, are you currently employed?
`A.I am.
`
`Q. And what's your job? What's your position?
`
`A. I have a position as director of the Liberty Centre at the
`
`University of Aberdeen. I'm also a professor in the department
`of bioengineering and biophysics and also a professor of
`occupational medicine.
`
`Q. And those are all professorships at the University of
`Aberdeen?
`
`A. They are, yes.
`
`Page 4
`Q. You mentioned the Liberty Safe Works Centre that you are
`
`the director of. What's the charter of the Liberty Safe Works
`Centre?
`
`A. Well, it was originally funded by Liberty Mutual, and the
`
`charter was to use engineering and other techniques to t:ry and
`prevent injuries to workers.
`
`Q. And how long have you been the director of that center?
`
`A. For five years, since its inception.
`
`Q. Now, Professor Pope, if you could just briefly describe for
`
`us your degrees starting at university level.
`A. Well, I started off in the UK and received a diploma in
`
`mechanical engineering from Southall College in London. Then I
`
`moved to the states, received a master of science degree from
`
`Bridgeport university in mechanical engineering; then the
`University of Vermont, where I received a Ph.D. in
`
`bioengineering; then to the University of Gothenberg in Sweden
`where I received a doctor of medical science degree; and most
`
`recently a doctor of science degree from the University of
`Aberdeen.
`
`Q. No
`
`--
`THE COURT: where is Aberdeen?
`THE WITNESS: Scotland.
`
`Q. Where do you currently reside, Professor Pope? In
`Aberdeen?
`
`A. Just outside Aberdeen, yes.
`
`September 28, 2004
`
`Page 1 - Page 4
`
`

`
`
`
`Condenseltm
`Jury Trial - Day 8
`‘De_Puy V. Medtronic
`
`
`1
`'
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`I N D E X
`
`
`
`
`
` WITNESS DIRECT CROSS REDIRECT RBCROSS
`
`
`3
`DEPUY ACROMD,
`INC. and
`
`BIEDERMANN MOTECH GMBH,
`
` CHRISTOPHER VELLTURO 8-4 8-27
`
`8-57
`8-61
`
`
`Plaintiffs
`
`
`
`-VS—
`CA No. 01-10165-EFH
`ExflIBITS
`PAGE
`MEDTRONIC sermon DANEK, Inc.,
`6
`1oo7u
`'
`e-25
`
`
`7
`f/k/a SOFAMOR DANEK GROUP,
`INC.,
`and MEDTRONIC sermon DANEK
`9
`usn, mc.,
`
`Defendants
`
`
`
` JURY TRIAL - DA! 8
`
`
`
`BEFORE THE HONORABLE EDWARD F. HARRINGTON
`
`SENIOR UNITED STATES DISTRICT JUDGE
`
`United states District Court
`
`1 Courthouse Way, Courtroom 13
`18
`Boston, Massachusetts
`
`September 29, 2004, 9:00 a.m.
`
`
`
`
`
`
`LEE A. MARZILLI
`CERTIFIED REALTIME REPORTER
`-
`23
`
`United states District Court
`
`1 Courthouse Way, Room 3205
`24
`Boston, Mm
`02210
`(617)345-6787
`
`
`
`APPEARANCES:
`
`
`For the Plaintiffs:
`
`
`PROCEEDINGS
`
`(Jury enters the courtroom, 9:00 a.m.)
`THE COURT: How was the weather?
`
`CONTINUED DIRECT EXAMINATION BY MR. MARDER:
`
`Q. Good morning, Mr. Vellturo.
`
`THE COURT: Approximately how long on direct,
`approximately?
`
`I would think approximately
`MR. MARDER:
`45 minutes, your Honor.
`
`THE COURT: 1'11 hold you to it.
`
`THE WITNESS: I'll hold you to it.
`
` \O00~JChLA4%DJ5)>-
`
`
`
`
`
`4
`
`7
`
`CALVIN P. GRIFFITH, ESQ., ROBERT C. KAHRL, ESQ., and
`THOMAS R. GOTS, ESQ., Jones Day, 901 Lakeside Avenue,
`Cleveland, Ohio, 44114-1190.
`For the Defendants:
`
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. MARDER, ESQ.,
`and DIRK D. THOMAS, ESQ., Robins, Kaplan, Miller & Ciresi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`
`
`
`
`
`
`
`September 29, 2004
`
`
`an C3
`
`
` E. E.
`
` ha NJ
`Q. Dr. Vellturo, in coming to your conclusions that you
`
`hi DJ
`
`described yesterday, did you consider something called the
`
`>- 4%
`concept of the "but for" world?
`
`
` >- LA
`A. Yes, I did.
`
` nu O\
`
`Q. And can you explain what that concept is?
` - ‘J
`A. The idea here is, when we're thinking about the concept
`
`- O0
`
`of lost profits, we have the actual world as it went forward
`
` v- \C
`with the alleged infringement. And the idea in trying to
`
`hoCD
`figure out whether lost profits exist and whether we can
`
`
`B) >-
`
`actually quantify them in a meaningful way is to try and
`
`b)B)
`reconstruct the world as it would have looked had there been
`
`
` B3D3
`no infringement, so that is but for the alleged
`
`BJ4%
`
`infringement. And it's in comparing those two worlds and
`
`B)LA
`figuring out whether the plaintiff lost any sales and lost
`
`
`Page 1 - Page 4
`
`

`
`
`
`MR KAHRL: Thank you, your Honor.
`(End of discussion at side bar.)
`
`
`
`
`V
`(Jury entered the courtroom.)
`THE CLERK: Court is in session, you may be seated.
`THE COURT: Good morning, members of the jury. As
`I indicated yesterday, the evidence is closed. We're going to
`have closings, final arguments or summations. Summations are
`not evidence. You should listen carefully to the final
`arguments. It's an attempt to persuade you, the jury, to find
`the facts in accordance with their respective views of the
`evidence.‘
`Counsel for the defendants.
`
`1
`
`§
`4
`5
`5
`;
`9
`10
`
`H 1
`
`,‘
`
`NI
`
`APPEARANCES:
`
`FOR THE PLAINTIFFS:
`CALVIN P. cnrrmrr, ESQ., ROBERT C. KAHRL, ESQ., and
`THOMAS R. GOOTS, ESQ., Jones Day, 901 Lakeside Avenue,
`Cleveland, Ohio, 44114-1190.
`FOR THE DEFENDANTS:
`CHRISTOPHER P. SULLIVAN, ESQ., DAVID E. MARDER, ESQ.,
`and DIRK D. THOMAS, ESQ., Robins, Kaplan, Miller & Ciresi,
`L.L.P., 111 Huntington Avenue, Boston, Massachusetts, 02199.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
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`
`
`MR. THOMAS: Yes, your Honor.
`Good morning, ladies and gentlemen Before I even
`start, I'd like to thank you all for spending the last two
`weeks listening to everything that both sides had to say. I
`know it's time out of your life, and we appreciate that you met
`your duty and came here to sit on this panel and help us
`resolve this question.
`
`was up here on my opening statement, I explained to you that
`the limits of a patent are the claims, because the claims
`
`define the boundaries, the boundaries that the inventor chose,
`the words the inventor chose to tell everybody else what they
`weren't allowed to do. But it also shows everybody else, the
`world, where they can go properly and be outside those
`boundaries. But those boundaries are set with good reason, and
`they're chosen by the inventor to define his invention; and
`they can't be changed, they can't be adjusted afier the fact.
`They can't be stretched. B11t stretching is what the plaintiffs
`are trying to do with this claim.
`
`And let me explain by first talking to you about
`this issue of literal infringement. That means that the
`accused MAS device has to literally include every feature,
`every word in this claim if it's to infringe literally.
`Now, i