Samsung Ex. 1099
`IPR2021-00186
`Samsung Electronics Co., Ltd. et al. v. Nanoco Technologies, Ltd.
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`Page 1
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`Page 3
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`· · UNITED STATES PATENT AND TRADEMARK OFFICE
`
`· · · · · · · ·REMOTE APPEARANCES:
`
`· · BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`· Case Nos.· IPR2021-00183 Patent No. 7,588,828
`
`COUNSEL FOR PETITIONER:
`
`· · · · IPR2021-00184 Patent No. 7,803,423
`
`BY - JEREMY WILSON, ESQ.
`
`· · · ·IPR2021-00185 Patent No. 7,867,557
`
`· · · ·IPR2021-00186 Patent No. 8,524,365
`
`-------------------------------------------
`
`SAMSUNG ELECTRONICS CO.,
`
`LTD., SAMSUNG ELECTRONICS
`
`AMERICA, INC.
`
`KIRKLAND & ELLIS LLP
`
`601 Lexington Avenue
`
`New York, NY 10022
`
`BY - STEPHEN C. DESALVO, ESQ.
`
`KIRKLAND & ELLIS LLP
`
`1301 Pennsylvania Ave., N.W.
`
`· · · · · · · · Petitioner,
`
`Washington, D.C. 20004
`
`· · · · -v-
`
`NANOCO TECHNOLOGIES LIMITED,
`
`· · · · · · · · Patent Owner.
`
`COUNSEL FOR PATENT OWNER:
`
`BY - MICHAEL NEWMAN, ESQ.
`
`-------------------------------------------
`
`BY - PETER CUOMO, ESQ.
`
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO,
`
`· · ·REMOTE TESTIMONY OF BRANDI COSSAIRT, PhD
`
`P.C.
`
`· · · · OCTOBER 28, 2021 - 12:00 P.M. EDT
`
`One Financial Center
`
`Boston, MA 02111
`
`JOB NO. 2021-813664
`
`· · ISAAC ORIHUELA, Lexitas
`
`Page 2
`
`· · · · · · · ·INDEX
`
`Page 4
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`· · · · · · · · ·OCTOBER 28, 2021
`
`· · · ·MR. WILSON· · · · · · · · · · · · 7
`
`· · · · · · · · · 12:00 P.M. EDT
`
`· · · ·MR. NEWMAN· · · · · · · · · · · · 148
`
`· · · ·MR. WILSON· · · · · · · · · · · · 151
`
`BRANDI COSSAIRT· · · · · · · · · · · · · 7
`
`· · · · REMOTE DEPOSITION of BRANDI COSSAIRT,
`
`PhD, before S. Arielle Santos, Certified Court
`
`· · · ·EXHIBITS REFERENCED - PREVIOUSLY MARKED
`
`Reporter, Certified LiveNote Reporter and Notary
`
`Public.
`
`Exhibit D - Nanoco Exhibit 2046· · · · · 10
`
`Exhibit F - IPR2021-00186 Institution· · 14
`
`· · · ·Decision
`
`Exhibit G - Samsung Ex. 1001· · · · · · ·31
`
`Exhibit H - Samsung Ex. 1001· · · · · · ·31
`
`Exhibit I - Samsung Ex. 1001· · · · · · ·31
`
`Exhibit J - Samsung Ex. 1001· · · · · · ·31
`
`Exhibit A - Nanoco Exhibit 2030· · · · · 40
`
`Exhibit B - Nanoco Exhibit 2030· · · · · 41
`
`Exhibit C - Nanoco Exhibit 2030· · · · · 41
`
`Exhibit E - Nanoco Exhibit 2030· · · · · 41
`
`Exhibit K - Samsung Ex. 1001· · · · · · ·141
`
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`· · ·THE VIDEOGRAPHER:· We are now
`on the record.
`· · ·Today's date is October 28,
`2021.· Time on the record is
`12:10 p.m. Eastern Time.
`· · ·This is the video deposition
`of Brandi Cossairt, in the Matter
`of Samsung Electronics Company
`Limited, et al., versus Nanoco
`Technologies Limited, et al., all
`in the United States Patent
`Trademark Office before the Patent
`Trial and Appeal Board.
`· · ·The case numbers are IPR
`2021-00183, Patent Number
`7,588,828; IPR 2021-00184, Patent
`Number 7,803,423; IPR 2021-00185,
`Patent 7,867,557; and IPR
`2021-00186, Patent Number
`8,524,365.
`· · ·This deposition is taking
`place via web videoconference with
`
`Page 6
`
`all participants attending
`remotely.
`· · ·My name is Isaac Orihuela. I
`am the videographer representing
`Lexitas.
`· · ·Will counsel on the
`conference please identify
`yourselves and state whom you
`represent beginning with
`questioning attorney.
`· · ·MR. WILSON:· This is Jeremy
`Wilson from Kirkland & Ellis
`representing Petitioners.· And
`with me is Stephen DeSalvo, also
`from Kirkland & Ellis.
`· · ·MR. NEWMAN:· Michael Newman
`from Mintz on behalf of patent
`owner Nanoco Technologies Limited.
`And with me is Pete Cuomo also
`from Mintz.
`· · ·THE VIDEOGRAPHER:· Thank you.
`· · ·Our reporter today is Arielle
`
`· · Santos representing Lexitas.· Our
`· · reporter can now swear in the
`· · witness.
`
`Page 7
`
`BRANDI COSSAIRT, Testifies under penalty of
`perjury as follows:
`
`· · · · ·THE WITNESS:· I do.
`
`· · · · · · · · ·EXAMINATION
`BY MR. WILSON:
`· · Q· · Good morning.· Would you please
`state your name for the record?
`· · A· · Yeah.· It's Brandi Cossairt.
`· · Q· · And I know you have been deposed
`before, but I want to just go over a
`couple of ground rules.
`· · · · ·If you don't understand a
`question, will you tell me and,
`otherwise, I will assume you have heard
`it and understood it?
`· · A· · Sounds good.· Yes, I can.
`
`Page 8
`· · Q· · And would you please make sure
`to answer verbally; so no head shaking or
`thumbs up or anything like that, just so
`the court reporter can take down your
`answer?
`· · A· · Will do.
`· · Q· · And, you know, this is really
`hard over Zoom sometimes, so we have to
`be careful not to talk over each other.
`So just please let me finish my question
`before answering, and I will do my best
`to let you finish your answer before
`asking my next question.
`· · · · ·Sound good?
`· · A· · Sounds good.
`· · Q· · And finally, if you need a
`break, let me know and we can definitely
`take a break but not if a question is
`pending.· And if you do need to take a
`break, I may, you know, seek to just ask
`a few more questions to fill out our line
`of questioning.· But other than that, we
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`can take a break whenever.
`· · · · ·And just because we are not in
`the same room, can you just, you know,
`confirm that you have closed, you know,
`all applications other than Zoom, and,
`you know, the PDF reader that you will
`use to read exhibits?
`· · A· · Yes.· Let me do that.
`· · Q· · Fair enough.
`· · A· · Okay.· I can confirm that I have
`done that.
`· · Q· · Yeah.· And it is also helpful to
`just, you know, mute your cell phone and
`make sure it's not on your desk.
`· · A· · Okay.
`· · Q· · I think I did the same, but I
`have an iPad that may act up on me, so
`let's see.
`· · · · ·MR. WILSON:· All right.· And
`· · then this is just a housekeeping
`· · issue for Mr. Newman.· I know that
`· · we already spoke about it off the
`
`Page 11
`· · for the record, this was marked as
`· · Exhibit A [sic] to Exhibit 2046 in
`· · the 186 case.
`· · · · ·Is this your curriculum
`· · vitae?
`· · A· · Yes.
`· · Q· · Is it accurate?
`· · A· · It appears to be accurate.
`Yeah.
`· · Q· · So I just want to go over your
`background and qualifications a little
`bit.
`· · · · ·So where did you receive your
`bachelor's degree from?
`· · A· · I received my bachelor's degree
`from California Institute of Technology.
`· · Q· · And was that in chemistry?
`· · A· · That was in chemistry.
`· · Q· · Okay.
`· · · · ·And can you please describe your
`graduate school experience?
`· · A· · Sure.· I got my PhD in inorganic
`
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`
`record, but I just want to make
`sure that we have an agreement on
`the record that this deposition
`applies to the IPR 2021-183, 184,
`185, and 186 cases.
`· · ·Sound good?
`· · ·MR. NEWMAN:· That's right,
`Jeremy.
`· · ·MR. WILSON:· All right.
`Thank you.
`· · ·All right.· So I will go
`ahead and -- I will go ahead and
`put it in the chat.· So I just
`dropped into the chat a document,
`the title is Exhibit D.
`· · ·Can you please let me know
`when you get that?
`· · ·(Premarked Exhibit D - Nanoco
`Exhibit 2046 - is shown to
`Witness.)
`· · ·THE WITNESS:· Yes, I have it.
`· · ·MR. WILSON:· All right.· And
`
`chemistry from the Massachusetts
`Institute of Technology in 2010.
`· · Q· · Okay.
`· · · · ·And do you know what a molecular
`cluster compound is?
`· · A· · I do.
`· · Q· · What is it?
`· · A· · Are we using the court's
`definition or broader chemistry
`definition?
`· · Q· · Well, let's first use a broader
`chemistry definition.
`· · A· · Yeah.· So I think using the
`broad chemistry definition, most
`inorganic chemists or materials chemists
`would describe molecular cluster compound
`as a species that has main group elements
`interconnected to one another with bonds
`between the atoms.· So, yeah, that's how
`I would describe it.
`· · Q· · And just to be clear, were you
`describing a cluster compound or a
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`molecular cluster compound?
`· · A· · A molecular cluster compound.
`· · · · ·So a molecule that is a cluster
`and a cluster has main group elements
`connected by -- interconnected by bonds
`between the elements.
`· · Q· · Okay.
`· · · · ·And is that different than the
`definition that the District Court
`provided for molecular cluster compound?
`· · A· · Yeah.· It's a broader use of the
`term for sure.
`· · Q· · So what's the -- are you
`familiar with the District Court's --
`well, here let me just go ahead and...
`· · · · ·(Whereupon a Discussion is
`· · Held Off the Record.)
`· · · · ·MR. WILSON:· I will go ahead
`· · and put this in the chat.
`· · · · ·I have put in what's been
`· · premarked as Exhibit F, the
`· · institution decision for IPR
`
`formula."
`· · · · ·Do you see that?
`· · A· · I do.
`· · Q· · Do you agree with that
`definition?
`· · A· · I think that is a fine
`definition as it pertains to the case and
`the patents under consideration.
`· · Q· · Okay.
`· · · · ·Now, using that definition, have
`you ever made a molecular cluster
`compound?
`· · A· · Yes.
`· · Q· · And when have you made one?
`· · A· · During my PhD, during my
`post-doc, and as independent investigator
`at the University of Washington.
`· · Q· · Okay.
`· · · · ·And how did you make a molecular
`cluster compound?
`· · A· · Can you be more specific?
`· · Q· · Well, let me see if I can figure
`
`Page 14
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`Page 16
`
`· · 2021-186.
`· · · · ·(Premarked Exhibit F -
`· · IPR2021-00186 Institution Decision
`· · - is shown to Witness.)
`· · · · ·THE WITNESS:· Yes, I have it.
`BY MR. WILSON:
`· · Q· · Have you seen that before?
`· · A· · Yes.
`· · Q· · And here it says the board took
`note -- if you look at page 16, this
`would be the first full paragraph which
`is sort of the second paragraph on the
`page.
`· · · · ·It says, "We take note, however,
`that the District Court construed the
`term 'molecular cluster compound' in the
`challenged claims to mean 'clusters of
`three or more metal atoms and their
`associated ligands of sufficiently
`well-defined chemical structure such that
`all molecules of the cluster compound
`possess the same relative molecular
`
`out the source of confusion.
`· · · · ·You said you made a molecular
`cluster compound.· Is the problem that
`you made tons of them and you need a more
`specific one or what is the problem with
`the question?
`· · A· · Yeah.· So I have made multiple
`and used different methods to make them.
`There are, you know, lots of ways to make
`a molecular cluster compound.· It depends
`on which one you are making.
`· · Q· · Fair enough.· Fair enough.
`· · · · ·Well, can you give me an example
`of a molecular cluster compound that you
`have made?
`· · A· · Sure.· So I will take one that I
`made as a PhD student as an example.
`· · · · ·It was a compound that contained
`three gallium atoms, an arsenic atom, and
`three phosphorous atoms, along with
`associated carbon-based ligands.· And I
`made it by taking the molecular
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`cluster -- not a molecular cluster --
`compound, ASP3; so arsenic triphosphorus,
`and reacting it with a source of gallium
`1 which contained the gallium atoms and
`their associated ligands; they react
`together and they formed this gallium 3,
`ASP3 molecular cluster compound with its
`associated ligands.
`· · Q· · So I just want to back up for a
`second.
`· · · · ·You made a distinction between a
`cluster and a molecular cluster compound
`in your answer.
`· · · · ·I just want to make sure, what
`was the distinction you were making
`there?
`· · A· · Sure.· So I think any inorganic
`chemist would agree with me that ASP3,
`this little tetraatomic molecule, which
`has bonds between arsenic and
`phosphorous.· And it's, yeah, in a little
`tetrahedral structure; but that's a
`
`· · that.· And then we've got a single
`· · crystal X-ray diffraction
`· · structure confirming the actual
`· · atomic connectivity between all
`· · the atoms that was consistent with
`· · the spectroscopic data.
`· · · · ·(Whereupon a Discussion is
`· · Held Off the Record.)
`BY MR. WILSON:
`· · Q· · So what other techniques could
`you have used to confirm that you made a
`single molecular cluster compound?
`· · A· · It's a good question.· I think
`there are potentially several.· I think I
`would need to consider this pretty
`carefully to give a really good answer.
`· · · · ·I think single crystal X-ray
`diffraction is kind of the gold standard,
`and I think I may have mentioned that in
`my actual expert declaration.
`· · · · ·Yeah.· I will stop there. I
`think I would need to sit down and kind
`
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`
`cluster and it's a cluster molecule, but
`it's not a molecular cluster compound as
`the Court has defined it here.
`· · · · ·So I was making -- because it
`doesn't have metal atoms and associated
`ligands.
`· · Q· · Now, going back to the
`conversation we had, when you made this
`molecular compound that we just
`discussed, were all the molecules of that
`compound identical to one another?
`· · A· · Yes.
`· · Q· · And how do you know?
`· · A· · Oh, lots of ways.· So, for
`example --
`· · · · ·(Reporter Clarification.)
`· · · · ·THE WITNESS:· Sure.· So first
`· · way is NMR, nuclear magnetic
`· · resonance spectroscopy, gives
`· · unambiguous identification that
`· · there is one species in solution.
`· · Mass spectrometry corroborates
`
`of take consideration of that carefully.
`· · · · ·(Whereupon a Discussion is
`· · Held Off the Record.)
`BY MR. WILSON:
`· · Q· · Can you determine the molecular
`formula from molecular cluster compound
`using mass spectrometry?
`· · A· · No, you cannot.
`· · Q· · But you can assess whether the
`molecular compound -- molecular cluster
`compound, pardon me, has a size
`distribution from mass spectrometry,
`correct?
`· · A· · You could determine whether what
`you injected or what you put into the
`mass spectrometer has a size
`distribution.· Maybe not unambiguously,
`though.· I think there's nuance to mass
`spectrometry that it's not necessarily
`reflective of everything present in a
`sample.
`· · · · ·So you can get, you know,
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`certain things might ionize more readily,
`which is needed to get the data to show
`up.· And so there could be things hiding
`that don't show up in the spectrometer.
`So that's why you can't just use mass
`spec as the only technique.
`· · Q· · So for mass spec data, you
`couldn't tell whether you had a molecular
`cluster compound?
`· · A· · I think it really depends on the
`exact system, the exact system that we
`are talking about.· I think I would need
`to -- yeah, have a more specific
`scenario.· I know in my own lab I would
`always ask for additional corroborating
`data.
`· · Q· · Okay.· And I want to ask you
`some questions.
`· · · · ·What is a nanoparticle?
`· · A· · A nanoparticle is a small piece
`of a bulk material that has dimensions
`between 1 and 100, typically, nanometers.
`
`Page 22
`· · Q· · Is a quantum dot a type of
`nanoparticle?
`· · A· · Yes.
`· · Q· · What is a quantum dot?
`· · A· · A quantum dot is specifically a
`semiconductor nanocrystal.· There are
`different kinds of quantum dots.· The
`types of quantum dots that we are talking
`about in the patents, and in this case
`generally, are colloidal quantum dots
`that are prepared in solution and are
`stabilized by ligands.
`· · Q· · So nanoparticle is broader than
`a quantum dot, correct?
`· · A· · Correct.
`· · Q· · And it can be made of any
`material such as, for example, metal,
`right?
`· · · · ·MR. NEWMAN:· Objection.
`· · · · ·THE WITNESS:· A nanoparticle
`· · can be made of -- yeah, it's a
`· · broad term.
`
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`
`BY MR. WILSON:
`· · Q· · Nanoparticle could be made of
`metal, right?
`· · A· · Yes.· Correct.
`· · Q· · And a nanowire is a type of
`nanoparticle, right?
`· · A· · It's a type of nanostructure,
`yeah.
`· · Q· · Well, do you agree with me that
`a nanowire is a type of nanoparticle?
`· · A· · Maybe we could go to my expert
`declaration where we walk through all of
`these terms and everything.· And if you
`want to refer me to a specific place
`where I have given an opinion, that might
`be helpful.
`· · Q· · Well, I am asking you your
`broader knowledge here.
`· · · · ·So can you answer the question
`whether a nano -- whether a nanowire is a
`type of nanoparticle?
`· · A· · As I said, a nanowire is a type
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`of nanostructure; it has one dimension
`that's, you know, a nanoscale.· And I
`mean, nanowire is quite long, like
`thousands of nanometers, then, you know,
`it may not be -- conform to the classic
`definition of nanoparticle.
`· · Q· · So how -- how long would a
`nanowire have to be before it's no longer
`a nanoparticle?
`· · A· · I don't know.
`· · Q· · Would you agree with me that
`there's a size of nanowire that would be
`considered a nanoparticle?
`· · A· · Yes.
`· · Q· · Is a nanorod a nanoparticle?
`· · A· · Yes.
`· · Q· · Okay.
`· · · · ·Now, going back to your CV,
`after you received your PhD you did a
`post-doc at Columbia, correct?
`· · A· · That's correct.
`· · Q· · And what did you do during your
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`post-doc?
`· · A· · I explored the synthesis and
`properties of cadmium chalcogenide
`cluster compounds.
`· · Q· · Was that in the context of
`making nanoparticles at all?
`· · A· · Yes.
`· · Q· · And can you please explain how
`you used the cluster compounds to make
`nanoparticles during your post-doc?
`· · A· · Sure.· So one example that I
`could use is we studied sort of the layer
`by layer growth of cadmium chalcogenide
`clusters such that, as they continued to
`add layers, they would get bigger and
`bigger and evolve into nanoparticles.
`· · Q· · Is what you are describing
`seeded growth?
`· · A· · It's an interesting question
`because it's sort of a distinct mechanism
`in a lot of ways.· So it's a layer by
`layer of growth where you nucleate this
`
`Page 27
`have to extract the clusters first and
`then re-add them?
`· · · · ·MR. NEWMAN:· Objection.
`BY MR. WILSON:
`· · Q· · Is that what you are saying?
`· · A· · No.· I wouldn't put that form of
`a boundary on it.· I think it really
`depends on the system and conditions that
`we are considering and the mechanism by
`which the materials are growing and
`evolving.
`· · Q· · Well, I am trying to get an idea
`of really what boundaries you're putting
`on.
`· · · · ·So what boundaries would you
`draw there?
`· · A· · Can you be more specific?· What
`boundaries would I draw where?
`· · Q· · Well, you just testified:· No, I
`wouldn't put that form of a boundary on
`it, it depends on the system.
`· · · · ·So what boundaries would you put
`
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`Page 28
`
`cluster in solution.· So there's no seed
`-- preexisting seed.· And then you
`deposit new layers on that existing seed.
`· · · · ·So I think it could be viewed as
`homogeneous nucleation -- homogeneous
`seeded growth in some people's view.
`· · Q· · Well, in your view, is that
`seeded growth?
`· · A· · I typically would not classify
`that reaction, and did not in the papers,
`as seeded growth because you're
`nucleating the clusters in situ; you are
`not introducing an external seed on which
`to deposit new material.
`· · · · ·But I think there are certainly
`scenarios where you can isolate the
`clusters and then reexpose them to
`precursors to continue growth, and in
`that scenario, it could be considered
`seeded growth.
`· · Q· · In order to have seeded growth,
`you can't have in situ seeded growth; you
`
`on it?
`· · A· · I think I would need to consider
`this issue, you know, quite carefully and
`think about all the different cases in
`which seeded growth have been used. I
`mean, you know, there's many
`possibilities, so I wouldn't want to make
`any kind of clear statements without --
`or firm statements without further, you
`know, examining the order -- certain
`things from about it.
`· · · · ·If you have a specific example
`that you wanted us to consider and look
`at, I would be happy to do that.
`· · Q· · No.· I mean what I would like to
`know is you have given some opinions on
`what is and what is not seeded growth in
`these various IPRs, and I want to know
`what the boundaries and the parameters
`for what is seeded growth as you see
`that.
`· · A· · So maybe we can look at one of
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`these examples that I have provided, and
`we can talk more specifically about that
`since I considered those issues.
`· · Q· · Well, we will definitely get to
`your declarations.
`· · · · ·But I want to know, in your
`opinion, what are the bounds and what it
`means to have seeded growth.
`· · · · ·MR. NEWMAN:· Objection.
`· · · · ·THE WITNESS:· I think the
`· · broadest definition of seeded
`· · growth is growth of a material in
`· · which a seed is used.· And I
`· · think, you know, given that it is
`· · a quite broad, you know,
`· · situation, I think we would need
`· · to look at specific examples.
`BY MR. WILSON:
`· · Q· · What is a seed?
`· · A· · It depends on the context in
`which we are talking.· You know, seeded
`growth of sugar crystals, for example, a
`
`Page 30
`preexisting crystal of sugar could be a
`seed.
`· · Q· · In the growth of nanoparticles,
`what is a seed?
`· · A· · It depends on the nanoparticle
`we are talking about.
`· · Q· · What more information do you
`need to know to be able to answer the
`question better?
`· · A· · There are many ways to carry out
`seeded growth.· There are many goals that
`synthetic chemists might have in mind
`when they are carrying out that seeded
`growth process.· And so I think I would
`need to know a lot more about what was
`trying to be made and -- in trying to
`decide, you know, what would you use as a
`seed in those cases.
`· · Q· · I just mean what does it mean to
`be a seed?
`· · A· · I think, again, in speaking in
`the broadest possible terms, a seed is
`
`Page 31
`going to be a preexisting crystallite of
`some material on which you can grow your
`desired material.· I think that's --
`you're asking a very broad question, so I
`can only provide a very broad answer.
`· · · · ·MR. WILSON:· All right.· So I
`· · just threw into the chat,
`· · documents that were premarked
`· · Exhibits G, H, I and J.· Let me
`· · know when you get those.
`· · · · ·(Premarked Exhibit G -
`· · Samsung Ex. 1001 - is Shown to the
`· · Witness.)
`· · · · ·(Premarked Exhibit H -
`· · Samsung Ex. 1001 - is Shown to the
`· · Witness.)
`· · · · ·(Premarked Exhibit I -
`· · Samsung Ex. 1001 - is Shown to the
`· · Witness.)
`· · · · ·(Premarked Exhibit J -
`· · Samsung Ex. 1001 - is Shown to the
`· · Witness.)
`
`Page 32
`
`· · · · ·THE WITNESS:· Okay.
`BY MR. WILSON:
`· · Q· · So Exhibit G, if you take a look
`at that, I will represent to you is
`Exhibit 1001 from IPR 2021-186.
`· · · · ·And is that US Patent Number
`8,524,365?
`· · A· · Yes; that's what I see here.
`· · Q· · If I refer to that as the '365
`patent, will you know what I am talking
`about?
`· · A· · Yes, I will.
`· · Q· · Okay.
`· · · · ·And then we move to Exhibit H.
`Once again, I will represent to you
`that's Exhibit Number 1001 from
`IPR 2021-184.
`· · · · ·Is that US Patent Number
`7,803,423?
`· · A· · Yes, it is.
`· · Q· · And again, if I call that the
`'423 patent, will you know what I am
`
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`Page 35
`
`talking about?
`· · A· · Yes, I will.
`· · Q· · I'm sorry.· This is a little
`painful.· We just have to march through
`them.
`· · · · ·So for Exhibit I, again, I will
`represent to you that it's Exhibit 1001
`from IPR 2021-185.
`· · · · ·Is that US Patent Number
`7,867,557?
`· · A· · Yes.
`· · Q· · If I call that the '557 patent,
`will you know what I am talking about?
`· · A· · Yes, I will.
`· · Q· · And last one, if you turn to
`Exhibit J, I will represent to you this
`is Exhibit Number 1001 from IPR 2021-183.
`· · · · ·Is that US Patent Number
`7,588,828?
`· · A· · Yes, it is.
`· · Q· · And again, if I refer to that as
`the '828 patent, will you understand what
`
`· · Q· · Okay.
`· · · · ·And these nanoparticle patents
`provide examples of why they allege --
`well, let me strike that question.
`· · · · ·The nanoparticle patents give
`example of what they refer to as
`molecular cluster compounds; is that
`correct?
`· · A· · Yes, that is correct.
`· · Q· · But none of these patents
`provide any mass spectrometry data for
`molecular cluster compounds; is that
`correct?
`· · A· · That's correct.
`· · Q· · And they don't provide any X-ray
`diffraction data; is that right?
`· · A· · That's correct, but it's not in
`the patents.· But several of these
`molecular cluster compounds were
`well-known in the literature and have
`existing X-ray and other analytical
`characterization data that confirm their
`
`Page 34
`
`Page 36
`
`I am talking about?
`· · A· · I will.
`· · Q· · Okay.· Thank you.
`· · · · ·And I will sometimes refer to
`these patents, the '828, '423, '557, and
`'365 patents, collectively as the
`nanoparticle patents.
`· · · · ·Do you understand that
`nomenclature?
`· · A· · Yes, I will.
`· · Q· · Okay.
`· · · · ·So have you reviewed the
`nanoparticle patents?
`· · A· · I have.
`· · Q· · When was the last time?
`· · A· · This week.
`· · Q· · Fair enough.
`· · · · ·The nanoparticle patents
`disclose, broadly speaking, nanoparticles
`and methods of making them; is that
`correct?
`· · A· · That's correct.
`
`atomic connectivity in structures.
`· · Q· · Do all examples of what the
`patents call molecular cluster compounds
`have that data in literature?
`· · A· · I would have to -- I would have
`to look into that.· Many of them do.
`· · Q· · You haven't looked into that
`issue; is that correct?
`· · A· · There are a lot of cluster
`compounds listed in several of these
`patents.· And so, you know, I haven't
`gone through them one by one.
`· · Q· · But you took it at face value
`that what they did represent as molecular
`cluster compounds were, in fact,
`molecular cluster compounds; is that
`correct?
`· · · · ·MR. NEWMAN:· Objection.
`· · · · ·THE WITNESS:· So I am quite
`· · familiar with the main group
`· · literature in molecular cluster
`· · compounds given my interest during
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`
`· · my PhD in that subject.
`· · · · ·So a lot of these, you know,
`· · I have read about and seen
`· · literature on, you know,
`· · independent of these patents.· And
`· · so I was quite familiar with them.
`· · · · ·Some of them I was familiar
`· · with from my work as a post-doc,
`· · some of the larger ones.· And so,
`· · you know, there's a good number of
`· · them that I was already
`· · independently familiar with.
`· · There are a few others that I
`· · would just need to look up that I
`· · did not look up.
`BY MR. WILSON:
`· · Q· · And let me just follow-up.
`· · · · ·There was also no X-ray
`crystallography data provided in any of
`the nanoparticle patents; is that
`correct?
`· · A· · That's correct.· But again, that
`
`Page 38
`data exists for many of these compounds,
`if not all of them.
`· · Q· · Okay.
`· · · · ·So just a little bit more on
`your background.
`· · · · ·You are not a lawyer; is that
`correct?
`· · A· · That is correct.
`· · Q· · You can say that with pride.
`· · · · ·You have not provided any legal
`opinions in this case; is that right?
`· · A· · That's correct.
`· · Q· · And you don't intend to provide
`any legal opinions in this case, right?
`· · A· · That is correct.
`· · Q· · And you understand that the
`terms anticipate -- the term "anticipate"
`has a specific legal definition in the
`field of patent law, right?
`· · A· · I do.
`· · Q· · And what do you understand the
`term "anticipate" to mean?
`
`Page 39
`· · A· · Yeah.· I wouldn't want to offer
`a definition.· If we can look at
`definitions in my declaration, that might
`be helpful.
`· · Q· · Sure.
`· · · · ·MR. WILSON:· So I am going to
`· · put these in the chat.· I just
`· · want to have a little bit of a
`· · side bar with Mr. Newman here.
`· · · · ·Now, given our motion to
`· · unseal everything, I mean my view
`· · is these are all public.· I just
`· · want to make sure you agree with
`· · that.
`· · · · ·MR. NEWMAN:· I'm sorry, Mr.
`· · Wilson.· What is the question?
`· · · · ·MR. WILSON:· Yeah.· So, all
`· · of her declarations were filed
`· · under seal.· Given our motions to,
`· · you know -- given our motions to
`· · the board that we don't think that
`· · those contain any CBI in them, I
`
`Page 40
`
`just want to make sure that you
`agree that I can just mark these
`and it's not going to affect the
`public or non-public nature of
`this deposition.
`· · ·MR. NEWMAN:· Yeah.· There's
`no Nanoco confidential information
`in the exhibits.
`· · ·MR. WILSON:· Fair enough.
`· · ·So I will just go ahead and
`throw into the chat exhibits that
`I have premarked as Exhibit A, B,
`C, and F [sic].· Let me know when
`you have been able to download
`those.
`· · ·THE WITNESS:· Is it A, B, C,
`and E?
`· · ·MR. WILSON:· Yes.· It is A,
`B, C, and E.· Thank you.
`· · ·THE WITNESS:· Gotcha.
`· · ·(Premarked Exhibit A - Nanoco
`Exhibit 2030 - is Shown to
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`Page 41
`
`Page 43
`
`· · Witness.)
`· · · · ·(Premarked Exhibit B - Nanoco
`· · Exhibit 2030 - is Shown to
`· · Witness.)
`· · · · ·(Premarked Exhibit C - Nanoco
`· · Exhibit 2030 - is Shown to
`· · Witness.)
`· · · · ·(Premarked Exhibit E - Nanoco
`· · Exhibit 2030 - is Shown to
`· · Witness.)
`BY MR. WILSON:
`· · Q· · And so we will just kind of whip
`through this process again.
`· · · · ·So Exhibit A, is that your
`declaration for the case IPR Number
`2021-184?
`· · A· · Yes, that is correct.
`· · Q· · And that's for the '423 patent?
`· · A· · Yes.
`· · Q· · And is Exhibit B your
`declaration for IPR 2021-185?
`· · A· · Yes.
`
`anticipate.· But I do obviously use the
`word "anticipate" a few times, so I will
`explain what I meant.
`· · · · ·I guess I take anticipate to
`mean that a piece of literature lays a
`foundation that someone would be able to
`readily -- that that sort of predicts the
`outcomes of another piece of literature.
`· · Q· · You also understand that the
`term -- either "obvious" or
`"non-obvious," those terms have specific
`legal definitions in the field of patent
`law, right?
`· · A· · Yes.
`· · Q· · What do you understand the term
`"obvious" to mean when you used it in
`your declarations?
`· · A· · So I take obvious to mean any
`person that was familiar with the field
`would think that a piece of prior
`literature would make it very clear that
`some new experiment or some new approach
`
`Page 42
`
`Page 44
`
`· · Q· · And that is the '557 patent?
`· · A· · Correct.
`· · Q· · And then is Exhibit C your
`declaration for IPR 2021-183?
`· · A· · Yes.
`· · Q· · Again, that is the '828 patent?
`· · A· · Correct.
`· · Q· · And then Exhibit E is your
`declaration for IPR 2021-186?
`· · A· · Yes.
`· · Q· · That is the '365 patent, right?
`· · A· · Correct.
`· · Q· · All right.· So again, I have
`given you, you know, all of your
`declarations, so you are free to kind of
`look at anything you have provided in
`there.· But I just want to come back and
`re-ask the question.
`· · · · ·What do you understand the term
`"anticipate" to mean?
`· · A· · I don't think I provide a
`specific explicit definition of
`
`would work.
`· · Q· · All right.· So did you prepare
`for your deposition today?
`· · A· · I did.
`· · Q· · And I don't want any privileged
`information, but what did you do to
`prepare for your deposition today?
`· · A· · Sure.· I reviewed my
`declarations, several of the references
`that I reference in the declarations, the
`patents themselves, and -- yeah.
`· · Q· · And did you speak to anybody to
`prepare for your deposition today?
`· · A· · I did.
`· · Q· · Who did you speak to?
`· · A· · Mr. Newman and Mr. Cuomo.
`· · Q· · Anybody else?
`· · A· · No.
`· · Q· · So maybe I will ask this
`question about all your declarations at
`once.· If there's any nuances we can
`address them.
`
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`· · · · ·Who wrote your declarations?
`· · A· · They were written sort of in
`close collaboration with counsel. I
`provided all the scientific opinions, and
`there's a lot of legal terms and jargon
`that they supplemented.
`· · Q· · And how many hours would you
`estimate that you spent writing your
`declarations?
`· · A· · I would need to check my
`records.· It was several months ago.
`· · Q· · Fair enough.
`· · · · ·But could you ballpark it at
`all?
`· · A· · I would need to check.· Quite a
`while.
`· · Q· · Let's see.
`· · · · ·Do you know Dr. Mark Green?
`· · A· · Not personally.
`· · Q· · Did you review Dr. Green's
`declarations?
`· · A· · I did.
`
`Page 46
`· · Q· · Have you spoken to Dr. Green
`about the case?
`· · A· · No.
`· · Q· · Have you spoken to anybody at
`Nanoco about these cases?
`· · A· · No.
`· · Q· · Aside from your attorneys in
`this case, have you spoken to anybody
`about this case -- or I guess these
`cases?
`· · A· · No.
`· · Q· · All right.· So I want to talk
`about molecular cluster compound a little
`bit again.
`· · A· · Sure.
`· · Q· · A person of ordinary skill in
`the art would have understood that to be
`a molecular cluster compound each
`molecule of that compound must be
`identical, correct?
`· · A· · Each -- so I think the
`definition -- we should look at the
`
`Page 47
`
`definition -- it says sufficiently
`well-defined such that each, et cetera,
`et cetera.
`· · · · ·Let me look at it carefully.
`· · Q· · Sure.
`· · · · ·And, I mean, that definition
`that came from the District Court is in
`Exhibit F on page 16, so please feel free
`to take a look at that.
`· · A· · Yes.· I agree with that
`statement.
`· · Q· · Okay.
`· · · · ·And I just want to clarify
`whether you are agreeing with the Court's
`definition or my definition, so -- or