IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` Case IPR2018-00933, IPR2018-00934,
` IPR2018-00935
`
`- - - - - - - - - - - - - - - - - - x
`INTUITIVE SURGICAL, INC.,
` Petitioner,
` v.
`ETHICON LLC,
` Patent Owner.
`- - - - - - - - - - - - - - - - - - x
`
` DEPOSITION of GREGORY FISCHER, Ph.D.
` February 18, 2019
` Boston, Massachusetts
`
`Reporter: Michael D. O'Connor, RMR, CRR, CRC
`Job No. 46128
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.001
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` Case IPR2018-00933, IPR2018-00934,
` IPR2018-00935
`
`- - - - - - - - - - - - - - - - - - x
`INTUITIVE SURGICAL, INC.,
` Petitioner,
` v.
`ETHICON LLC,
` Patent Owner.
`- - - - - - - - - - - - - - - - - - x
`
` DEPOSITION of GREGORY FISCHER, Ph.D.
` February 18, 2019
` Boston, Massachusetts
`
`Reporter: Michael D. O'Connor, RMR, CRR, CRC
`Job No. 46128
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.001
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`2
`
` Monday, February 18, 2019
` 10:05 a.m.
`
` DEPOSITION of GREGORY FISCHER,
`Ph.D., held at Fish & Richardson, P.C., One
`Marina Park Drive, Boston, Massachusetts,
`pursuant to notice, before Michael D.
`O'Connor, Registered Merit Reporter,
`Certified Realtime Reporter, Certified
`Realtime Captioner, and Notary Public in and
`for the Commonwealth of Massachusetts.
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`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.002
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`3
`
`APPEARANCES:
`
`ATTORNEYS FOR PETITIONER:
` FISH & RICHARDSON, P.C.
` One Marina Park Drive
` Boston, Massachusetts 02210
` (617) 521-7803
` BY: STEVEN R. KATZ, ESQ.
` katz@fr.com
`
`ATTORNEYS FOR PATENT OWNER:
` WEIL, GOTSHAL & MANGES LLP
` 201 Redwood Shores Parkway
` Redwood Shores, California 94065
` (650) 802-3985
` BY: ROBERT S. MAGEE, ESQ.
` robert.magee@weil.com
`
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`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.003
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`4
`
`APPEARANCES (Cont'd):
`
`ATTORNEYS FOR PATENT OWNER:
` WEIL, GOTSHAL & MANGES LLP
` 2001 M Street, N.W., Suite 600
` Washington, D.C. 20036
` (202) 682-7000
` BY: CHRISTOPHER MARANDO, ESQ.
` christopher.marando@weil.com
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`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.004
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
` I N D E X
`Deposition of: Page
`GREGORY FISCHER, Ph.D.
` By Mr. Magee 7
`
`5
`
` E X H I B I T S
`No. Page
`Exhibit 1 Patent Owner's Revised
` Notice of Deposition of
` Gregory Fischer Ph.D.,
` U.S. Patent 8,998,058 7
`Exhibit 2 Patent Owner's Revised
` Notice of Deposition of
` Gregory Fischer Ph.D.,
` U.S. Patent 8,991,677 7
`Exhibit 3 Patent Owner's Revised
` Notice of Deposition of
` Gregory Fischer Ph.D.,
` U.S. Patent 9,084,601 7
`Exhibit 4 Declaration of Dr. Gregory
` S. Fischer 7
`Exhibit 5 Document entitled, "Exhibit
` List" 11
`Exhibit 6 U.S. Patent 5,383,880 29
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`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.005
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`6
`
` E X H I B I T S (Cont'd)
`No. Page
`Exhibit 7 U.S. Patent 8,998,058 91
`Exhibit 8 U.S. Patent 8,991,677 131
`Exhibit 9 U.S. Patent Application,
` Publication No.
` US 2005/0131390 A1 148
`Exhibit 10 U.S. Patent 5,964,394 163
`Exhibit 11 U.S. Patent 5,865,361 170
`
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`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.006
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`7
`
` P R O C E E D I N G S
`
` GREGORY FISCHER, Ph.D.
`
`having been satisfactorily identified by the
`production of his driver's license, and duly
`sworn by the Notary Public, was examined and
`testified as follows:
`
` (Document marked as Exhibit 1
` for identification)
` (Document marked as Exhibit 2
` for identification)
` (Document marked as Exhibit 3
` for identification)
` (Document marked as Exhibit 4
` for identification)
`EXAMINATION BY
`MR. MAGEE:
` Q. Good morning, Dr. Fischer.
` A. Good morning.
` Q. Is Dr. Fischer how you prefer to
`be referred to?
` A. Yes. That's appropriate.
` Q. Okay. Great. Have you ever been
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`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.007
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`8
`
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`deposed before?
` A. Can you be more specific?
` Q. Have you ever been deposed in any
`legal proceeding before?
` A. I've never been deposed as an
`expert witness on anything similar to this
`before.
` Q. Okay. Have you been deposed as an
`expert witness in any capacity before?
` A. No, I have not.
` Q. Have you been deposed in a
`personal capacity before?
` A. Once.
` Q. Can you just give me a real high
`level of what that was about?
` A. Just regarded to the facts of an
`automobile accident.
` Q. Understood. So just to cover a
`few ground rules, I will do my best not to talk
`over you when you're giving an answer, and if
`you could try to do the same for me, allow me
`to finish my question and try to avoid talking
`over each other, that will make our court
`reporter's life a lot easier.
` A. Absolutely.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.008
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`9
`
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` Q. And then one other thing, you said
`absolutely, if we could have verbal yes or no
`answers, not just nodding a head or hmm-hmm or
`something like that, that would be, again,
`making our court reporter's life a lot easier.
` A. Yes. Understood.
` Q. Thank you very much. Have you
`taken any medications today that would prevent
`you from giving full and complete testimony?
` A. No, not that I'm aware of.
` Q. And there's no other reason you're
`aware of where you wouldn't be able to give
`full and complete testimony today?
` A. No.
` Q. Dr. Fischer, what does
`"selectively" mean?
` A. So we have a reference to that in
`the deposition, the declaration, so I'd like to
`refer in here. Just give me one moment to find
`the specific reference to it in my declaration.
` I know that I have a very specific
`reference to "selective motion" in here, and
`I'm just trying to find that right now. That
`being said, I'm not willing to or able to opine
`on the broad definition of "selectively" at
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.009
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`10
`
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`this point. There's a specific example that
`demonstrates where the prior art does, in fact,
`include selectivity.
` Q. All right. Why don't we just take
`a second, and you can stop looking for a moment
`and we can go on to a different question.
` A. Sure.
` Q. First, I see you brought some
`things with you today. What did you bring?
` A. I have two notebooks with me here;
`one of them is my declaration. To the best of
`my understanding, this is exactly as was filed.
` I have a notebook that includes,
`to the best of my understanding, exact copies
`of all of the different exhibits. And then I
`have a list of the specific exhibits that are
`in this notebook.
` Q. Okay. So you were saying the
`first notebook is your declaration as filed; is
`that correct?
` A. To the best of my understanding,
`this is exactly as filed.
` Q. Okay. And then you said you have
`a second notebook that has the exhibits. Is
`that a collection of both the petitioner's and
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.010
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`11
`
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`the patent owner's exhibits?
` A. My understanding is that -- so I
`can provide you a list, if you'd like to see
`what exhibits are in here?
` Q. Sure.
` MR. MAGEE: Why don't we go ahead
` and mark that as Exhibit 5.
` (Document marked as Exhibit 5
` for identification)
` Q. Okay. Returning to the previous
`line of questioning on "selectively."
` A. Is it possible to have the index
`back?
` Q. Yes, of course.
` A. Thank you very much.
` Q. On the term "selectively," is it
`your understanding that "selectively" was given
`special meaning in any of the three asserted
`patents?
` A. I really wasn't able to make an
`opinion on the broad meaning of the word
`"selectivity." There is an example in here
`where I believe it is Heinrich refers to the
`ability of the user, which was, for example, a
`surgeon or a nurse or a user, to control -- I
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.011
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`12
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`prefer to find the exact wording here in the
`declaration so I can tell you exactly what my
`-- I'd like to direct you to Paragraph 118 of
`my declaration.
` Herein we say "the movement is
`selective because it is under the control of
`the user." So if we look at Paragraph 136 of
`Heinrich, the example is, in operation, the
`user, for example, a surgeon, nurse or
`technician, controls actuation assembly 612 to
`control the movement and operation of the
`disposable loading unit 618.
` Q. Okay. And Paragraph 118, which
`you directed us to, that's in the section, and
`I believe it starts on the previous page of
`your declaration, with the header "'To
`selectively move said axial drive assembly
`between a starting position and an ending
`position relative to the first and second
`jaws'"; is that correct?
` A. Within Claim 1.5; yes, that's
`correct.
` Q. So that heading refers and that
`limitation refers to "selectively move." In
`Paragraph 118 you say that the movement is
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.012
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`13
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`selective because it is under the control of
`the user; is that correct?
` A. Can you repeat that?
` Q. In Paragraph 118 you say the
`movement is selective because it is under the
`control of the user; is that correct?
` A. I use the word "the movement is
`selected because it is under the control of the
`user" in Paragraph 118, yes.
` Q. Okay. Do you have any other
`understanding of what "selectively" might mean?
` A. I'd really rather not. If there's
`a specific reference in here, I'd be happy to
`address it.
` Q. So you believe the claims use
`"selectively" differently in the same claim?
` A. If you have a particular spot, I'd
`be happy to address it.
` Q. Let me ask a broader question. In
`a patent claim, if a patentee uses the same
`word multiple times, should it have the same
`meaning or should it have different meanings?
` MR. KATZ: Objection. Legal
` conclusion.
` A. My understanding is it would
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.013
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`14
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`really depend on the context of how it's used.
` Q. Is "selectively" a term of art in
`the field of endoscopic instruments?
` A. I think this term is very
`dependent on the context in which it is used.
` Q. So there is no general
`understanding of the term "selectively" in the
`field of endoscopic instruments; is that
`correct?
` A. My opinion was to define an
`example. I'm really not comfortable defining
`what the scope of the word "selectivity" means.
` Q. So it's your opinion that you were
`a person of ordinary skill in the art as of
`2006; is that correct?
` A. I believe I said as of 2008, but
`yes.
` Q. As of 2008; that's fine. And as a
`person of ordinary skill in the field in 2008,
`had you encountered the term "selectively" in
`your work in the field?
` A. I honestly can't comment I've
`heard that word before. But in this context,
`this is the first time that I recall reading
`this in detail.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.014
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
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` Q. I'm actually a little bit unsure
`about your last answer. Is it your testimony
`that you don't recall whether you heard
`"selectively" in your work in the field as of
`2008?
` A. I really can't comment if I've
`used that word before in this field.
` Q. What do you mean by you can't
`comment? Are you not answering the question or
`do you not recall?
` A. I cannot specifically recall a
`specific time that I used that term.
` Q. Okay. I understand. And you
`can't recall any specific meaning being
`assigned to that term in the field of
`endoscopic instruments as of 2008; is that
`correct?
` A. I haven't reviewed that, so I
`really would not be comfortable under oath
`saying there's a particular meaning for that.
` Q. But sitting here today, you can't
`recall one; is that correct?
` A. I can't recall any specific
`meaning.
` Q. Understood. What about the term
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.015
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
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`"operably," have you heard the term "operably"
`in your work in endoscopic instruments in 2008?
` A. I heard the word "operably." I
`can't point to a specific example.
` Q. And is it your understanding that
`the term "operably" has a specific meaning in
`the field of endoscopic instruments, at least
`as of 2008?
` A. My understanding is it's a very
`broad definition, and my work here when I was
`putting together my declaration was to find an
`example of something that was operably used.
`And we use that word with several suffixes.
` Q. Understood. In your review --
`actually, let me take a step back.
` In your work in this case, you
`opined on U.S. Patent 9,084,601; is that
`correct? I'm just reading that off the cover
`of your declaration.
` A. That's one of the challenged
`patents, correct.
` Q. And the second one is 8,998,058?
` A. The second patent, one of the
`challenged patents, yes.
` Q. Third one is 8,991,677?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.016
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`17
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` A. That's correct. Those are the
`three challenged patents I was asked to review.
` Q. And for convenience today, can we
`refer to them, the first is the '601 patent,
`the second is the '058, and the third is the
`'677?
` A. Yes.
` Q. If I wanted to refer to all three
`of them, can I refer to all three of them as
`the power patents?
` A. If you would prefer.
` Q. Okay. But we would understand
`that's what we're talking about?
` A. Yes.
` Q. Okay. Just wanted to make sure.
` In your review of these three
`patents, the power patents, did you identify
`any specific definition or meaning given to the
`word "selectively" in the patents?
` A. I believe I pointed out one
`specific example. If there's another example
`in the declaration, I'd be happy to clarify it.
` Q. Perhaps my question was unclear.
`I'm not asking if the term was ever used in the
`patent or in the claims. The question is more
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.017
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`18
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`specifically whether, in your opinion, the
`patentee assigned some sort of special meaning
`or special definition to the term?
` A. I would need to read it in more
`detail to see if that's the case.
` Q. When you say you would need to
`read it, what are you referring to?
` A. So in my declaration, I found an
`example that in my mind is very clearly an
`example of "selective." But if you would like
`me to opine more broadly what that term means
`or what the filers of the '601 patents or the
`power patents, in general, are referring to, I
`would need to reread those in more detail to
`try to identify that.
` Q. Okay. And then just so the record
`is clear, I have a copy of your declaration
`that's labeled as Exhibit 4. It should be
`identical to the copy in your binder, but going
`forward, I think we'll refer to the declaration
`as Exhibit 4. And again, the two copies are
`identical. You can take a look if you need to
`review.
` A. As far as I can tell from just
`looking at the cover, it appears to be a
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.018
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`19
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`similar document. Obviously without reviewing
`it, I can't tell you if it's exactly the same.
` Q. Sure. I will represent to you we
`just printed this off of the PTO website. It
`should be exactly the same as filed. If we can
`turn to Exhibit 4 to Page 29. Sorry, to be
`clear, that's the Word document, Page 29, which
`in the little tiny numbers at the bottom is
`actually Page 42.
` A. That's Section 6 in the claim
`construction?
` Q. Yes. Thank you. So in this
`section, you opined on the construction of
`asserted terms in these three patents; is that
`correct?
` A. Yes, that is.
` Q. Okay. And in Paragraph 56 you say
`that "as a general matter, the board applies
`the BRI standard to claims challenged in IPR
`proceedings."
` What is the BRI standard?
` A. There's another section in my
`declaration referring to my understanding of
`the law. If we go to Page 7. I'd like to read
`this. "I am not a lawyer and I will not
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.019
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`20
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`provide any legal opinions in this IPR.
`Although I am not a lawyer, I have been advised
`certain legal standards are to be applied by
`technical experts in forming opinions regarding
`the meaning and validity of patent claims."
` In the following paragraph,
`Paragraph 15, I discussed BRI or the broadest
`reasonable interpretation. "I understand that,
`during an IPR, claims are to be given their
`broadest reasonable interpretation in light of
`the specification as would have been read by a
`person of ordinary skill in the relevant art at
`the relevant time."
` Q. Okay. And turning back to Page
`29, your actual section on claim construction,
`you state in Paragraph 57 that you "have been
`informed that the following terms may require
`an express construction," and then you provide
`a number of constructions over the following,
`it looks like, eight pages.
` In that section, did you opine on
`any term using the word "selectively"?
` A. I would need to look closely at
`this to make sure. In my review of that
`section, I don't see those words used.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.020
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`21
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` Q. Okay. So in your claim
`construction section, you did not set forth any
`special meaning for the term "selectively"; is
`that correct?
` A. I do not specifically see that.
` Q. Okay. Do you have any opinions
`regarding the invalidity of these patents that
`aren't expressed in this declaration?
` A. Could you repeat that?
` Q. Do you have any opinions regarding
`the invalidity of these three patents that are
`not expressed in your declaration?
` A. Can you reword that? I'm not
`really sure where you're going with that.
` Q. Are all of your opinions regarding
`the invalidity of these three patents contained
`in this declaration?
` A. I never looked specifically at
`that. I was purely looking at references that
`were in the prior art that were related to the
`claims here. I can't say that every single --
`every argument that I put in here I certainly
`stand behind. I can't say that there aren't
`other arguments beyond what is in here.
` Q. Do you have any other arguments
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.021
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`22
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`that are not expressed in your declaration?
` A. Everything here represents my
`personal opinions.
` Q. And do you have any opinions
`regarding these patents that aren't expressed
`in the declaration?
` A. No, sir.
` Q. Okay. Turning back to page,
`looking at the small number at the bottom, 81,
`Paragraphs 117 and 118 of your declaration.
` A. Yes. I'm there now.
` Q. Returning to the header on Page
`81, just above Paragraph 117, that term that
`you're discussing there is "'To selectively
`move said axial drive assembly between a
`starting position and an ending position
`relative to the first and second jaws,'"
`correct?
` A. That is part of Claim 1.5 of the
`'601 patent.
` Q. Yes. And Paragraphs 117 and 118
`are specifically talking about this portion of
`that limitation; is that correct?
` A. Yes. Paragraphs 117 and 118 of
`the declaration are referring to that
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.022
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`23
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`particular limitation of that claim.
` Q. Okay. And for that particular
`limitation, you didn't set forth any special
`construction or definition for any of those
`terms, did you?
` A. I'd like to just review this to
`make sure I understand exactly. So again,
`Paragraph 118 is what we said earlier, the
`movement is selective because it is under the
`control of the user.
` Q. Is there another way that movement
`could be selective other than being under the
`control of the user?
` A. Really, that's something that I
`haven't opined. What I can say is that as
`expressed in Heinrich, this movement is
`selective because it is under the control of
`the user.
` Q. Okay. And the limitation we're
`discussing, the header on Page 81, it recites,
`in part, "to selectively move."
` Is selectively moving different
`than just moving?
` A. So as I said here, the movement is
`selective, because it's under the control of
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.023
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`24
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`
`the user. The user has control of the
`movement.
` Q. And you set that forth in order to
`disclose your opinion on where Heinrich
`disclosed selectively moving, correct?
` A. Could you repeat that?
` Q. You provide in Paragraph 118 in
`order to disclose your opinion on where
`Heinrich disclosed selectively moving, correct?
` A. This is at least one example
`within Heinrich where I believe he is talking
`about selective movement, yes.
` Q. Okay. And the example you pointed
`to in Heinrich wasn't just movement, but it was
`movement that was under the control of the
`user, correct?
` A. In Paragraph 136 of Heinrich, it
`says, "In operation the user," which could be
`the "surgeon, nurse, technician, et cetera,
`controls actuation assembly 612 to control the
`movement and operation of the disposable
`loading unit."
` Q. And what part of that excerpt from
`Heinrich tells you that the movement is
`selective?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.024
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`25
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` A. So in that statement, it says that
`the user controls the actuation assembly to
`control the movement and operation of the
`disposable loading unit.
` So that implies that the user has
`control over the actuation or the movement of
`that unit.
` Q. So it's the user's control over
`the actuation or the movement that makes it a
`selective movement?
` A. I'm saying that the fact that the
`user has control over that movement means they
`are selectively controlling it.
` Q. Let's turn to Page 121 of the Word
`document. It's 134 in the small number at the
`bottom. And this should be Section 6.8 or
`limitation 6.8 of the '058 patent starting with
`Paragraph 227.
` Are we in the same place?
` A. Yes, I'm there now.
` Q. So this is a somewhat long
`limitation, but among the elements of the
`limitation is "an electric motor operably
`interfacing with said rotary shaft to
`selectively apply said rotary motion."
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.025
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`26
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`
` Here it's saying "selectively
`apply." What does "selectively" mean here?
` A. So I refer to that limitation on
`the following page, Paragraph 229 of my
`declaration. If we read that paragraph, we
`say, "Hooven's" -- I'm going to refer to this
`prior art reference as Hooven. Referring to
`U.S. -- referring to Exhibit IS1004, I refer to
`that as Hooven, H-o-o-v-e-n.
` Referring to Paragraph 229 of my
`declaration, "Hooven's on/off switch 48, switch
`49, firing button, and controller 31
`selectively control the power supply being
`provided by the motor, which applies rotary
`motion to the rotary shaft."
` Q. So the limitation in the header at
`the top of the page is to selectively apply
`said rotary motion, and in the section you read
`it says that those elements, the on/off switch,
`the switch, the firing button and controller,
`selectively control the power supplier being
`provided by the motor.
` How is that selectively applying
`said rotary motion?
` A. If you would like me to continue
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.026
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`27
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`
`in that paragraph, we conclude that sentence
`"which applies rotary motion to the rotary
`shaft (i.e., the combination of drive shaft 47,
`axially flexible shaft, torsionally stiff shaft
`61 and threaded rod 71)."
` Then if we go to Column 4, Lines
`60 on the Hooven reference, "Also included in
`the handle and interconnected with the DC motor
`are a suitable on/off switch 48 and a switch 49
`to control the power supply being provided to
`the motor."
` In that same column, Lines 22 to
`26, "The controller may feed appropriate
`signals back to the instrument in order to
`operate the instrument. The controller also
`acts to supply power to the instrument at the
`appropriate level, frequency, timing, et
`cetera."
` Going to Column 8, Lines 59 to 65,
`"The controller is microprocessor based and
`includes circuits for sensing, motor control
`... and power supply. The instrument includes
`miniature sensors to detect the power and/or
`force being used and limit switches and
`contacts to turn the motor on and off at
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Ethicon Exhibit 2007.027
`Intuitive v. Ethicon
`IPR2018-00935
`
`
`
`IPR2018-00933; IPR2018-00934; IPR2018-00935
`Fischer, Ph.D., Gregory
`February 18, 2019
`
`28
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`
`predetermined positions."
` Thus getting back to your
`question, the switches are very clearly used to
`control power to the motor.
` Q. So I see that the switches and the
`buttons are used, in your words, to
`"selectively control the power supply being
`provided by the motor." Actually, let's take a
`moment there.
` Is the power supply being provided
`by the motor? I'm just reading from the second
`line of Paragraph 229.
` A. I'd like to clarify exactly the
`terminology in the context here. But we say
`that the controller acts as a power supply to
`the instrument, and then the instrument
`includes a motor.
` Q. So just so I understand your
`opinion, in the second line of Paragraph 229,
`should that read "selectively control the power
`supply being provided to the motor" or should
`it read "provided by the motor"?
` A. I would need to take a look at the
`Hooven reference to understand exactly what
`these items are referring to.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hender
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