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Jury Trial - Volume F 


Condensclt 


Wednesday, May 7, 2003 


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- VOLUME r - 
» THE UWITED STATES 01 STRICT COURT 
IV AKO FOR THE DISTRICT OF DC LAM ARE 


P*g« 9731 


ARTHROCARE CORPORATION, 
Plain CUf 

vs. 

SMITH 4 NEPHEW, INC., 
Defendant 


CIVIL ACTION 


HO. 01-504 (SLIO 


Wilmington, Delaware 
Nednesday, Mar 7, 2003 
9:32 o'clock, a. a. 


HONORABLE SUE L. ROBIKSOW, Chief Judge, and a jury 


APPEARANCES: 


MORRIS, NICHOLS, ARSHT & TTOKELL 
BY: JACK B. BLUMENFELD, ESQ. and 
KAREN JACOBS LOUDEN, ESQ. 


Official Court Reporters 


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PROCEEDINGS 


(Proceedings commenced in the courtroom, 
beginning at 9:32 ajn., and the following occurred without 
the presence of the jury.) 


THE COURT: All right. I understand we had an 
issue. We don't have that issue any more. Butdowehave 
any others before we bring the jury in? 
MS. BOYD: No, your Honor. 
THE COURT: All right. Terrific. 
MR. BLUMENFELD: Your Honor, we don't have any 
issues, but Dr. Goldberg is back today. I think we've 
agreed on an order. He'll be resimiing the stand today. 

Smith & Nephew has been kind enough to agree 
that he can be in the courtroom while other witnesses are 
testifying today, which is - 1 just wanted to alert your 
Honor to that 

THE COURT: okay. Great. Thank you very much. 
(Pause.) 

(At this point the jury entered the courtroom 

23 and took their seats in the box.) 

24 THE COURT: Good morning, ladies and gentlemen. 

25 We should proceed I'm not quite sure where we are. Oh, 


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APPEARANCES (Continued): 


WE1U GOTSHAL A. MANGES 
BY: IARED BOBROW. ESQ, 
TIMOTHY DeMASI, ESQ. and 
PERRY R. CLARK, ESQ. 
(Redwood Shores, California) 

Counsel for Plaintiff 


FISH A RICHARDSON r\C 

BY: WILLIAM J. MARSDEN, JR, ESQ, 
KEITH A. WALTER. ESQ. and 
EUGENE B. JOSWtCK, ESQ. 


Page 974 


FEH A RICHARDSON 
BY: MARK t HEBERT. ESQ, 
(Boston, Massachnttrtti) 


-and* 


FEHARICHARSON 

BY: KURTTS D. MacFERRIN, ESQ. and 

KAREN L BOYD. ESQ. 

(Redwood Gty, California) 

Counsel for Defendant 


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Page 976 

we have a witness on the stand. 

MR. MacFERRIN: That's correct 

THE COURT: If she could come forward please, 
I'd appreciate it 

DEFENDANT'S TESTIMONY 
CONTINUED-. 


... KATE KNUDSEN, having been 
previously duly sworn as a witness, 
was examined and testified as 
follows ... 

DIRECT EXAMINATION 
COrTlTNUED 
BY MR. MacFERRIN: 
Q. Good morning, Mrs. Knudsen. 
A. Good morning. 4 
Q. You realize you're still under oath? 
A. Yes. 

Q. I would like to pick up where we left off yesterday 
and ask you about one other feature of the Saphyre 

22 design that you worked on. And that feature is a fluid 

23 supply. Does the Saphyre probe do the fluid supply? 

24 A. No, it does not provide fluid. 
|25 Q. Does the Saphyre electrosurgical system include a 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 973 - Page 976 


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Page 1189 

were used in angioplasty means have the purpose and 
function of limiting current to each electrode. 
Similarly, that need was seen in arthroscopy applications, 
so we just used the idea because the end need was similar. 
"Question: And what is that end need? 

"Answer: The end need in angioplasty 
application is to work on the tissue inside the artery. 
The end need in arthroscopic application is work in the 
tissue of the joinL So we are working on tissues. The 
end need is similar, so extending the ballasting idea 
from angioplasty to arthroscopy seemed like the extension, 
the natural extension." 

MR. JOHNSTON: That is all we have. Thank 
you very much, ladies and gentlemen. 

THE COURT: All right Ladies and gentlemen, 
let's take a 15-minute afternoon break and then we'll 
conclude with whatever testimony that counsel have. 

(At this point the jury was excused for a short 

recess.) 

THE COURT: All right 15 minutes. 
(Short recess taken.) 


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(Court resumed after the recess.) 


THE COURT: can we bring our jury in? 
MR- MARSDEN: I'm not sure what your preference 
is in admitting the exhibits outside the jury or outside 
the presence of the jury or in front of the jury. I moved 

8 some exhibits that Mr. Blumenfeld didn't have an 

9 opportunity to review. He has reviewed them and does 

1 1 0 not have an objection. 

111 THE COURT: U*'s bring the jury in because if 
12 we're going to finish early, this is a long day for them 

113 and we can do that at the end of the day. 
|14 MR. MARSDEN: We can do that outside the 

115 presence of the jury? 

16 THE COURT: Yes. I don't think your reading 

17 off numbers is going to make a big impression on them. 
|18 (At this point the jury entered the courtroom 

19 and took their seats in the box.) 
J20 THE COURT: Mr. Marsden? 

|21 MR. MARSDEN: Thank you, your Honor. 

22 Ladies and gentlemen of the jury, we next call 

|23 Dr. Kenneth B. Taylor. 

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Wednesday, May 7. 2003 


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Page 1191 

DEFENDANTS TESTIMONY CONTINUED 
... KENNETH BOYLE TAYLOR, having 

been duly sworn as a witness, was examined 

and testified as follows 

MR. marsden: Ladies and gentlemen of the jury, 
Dr. Taylor is not a medical doctor, but he has a Ph.D. in 
biomedical engineering. We are calling him as an expert 
in the design and use of electrosurgical systems. He will 
be offering opinions on the issues of infringement and 
invalidity and he'll be explaining the basis for his 
opinions. 

DIRECT EXAMINATION 
BY MR. MARSDEN: 
Q. Good afternoon, Dr. Taylor. 
A. Good afternoon. 

Q. Could you introduce yourself to the jury, please? 
A. Sure. Hi. High name is Ken Taylor. Good to meet 
you all. 

Q. Dr. Taylor, where do you live? 
A. I live in Broomfield, Colorado. 
Q. Are you married? 
A. Yes, I am. 

Q. Do you have any children? 
A. I have one son. 

Q- How long have you been married? 


Page 1190 Page 1192 

1 A. I've been married 30 years. 

2 Q. How old is your son? 

3 A. He's 23 

4 Q. Do you have any experience or training in 

5 electrosurgery? 

6 A. One might say so, yes 

7 Q. Have you prepared a resume that outlines your 

8 educational and work experience? 

9 A. Yes, I have. 

10 Q. Could I ask you to turn to DTX-418 in the binder 

11 that you have in front of you? 

12 A. Yes. 

13 Q. Does that show your experience or training in 

14 electrosurgery? 

15 A. Yes, it does. 

16 Q. Can you describe your educational background for the 

17 jury? 

18 A. Sure. I have a B.S. in electrical engineering from 

19 the University of Connecticut I have a Master's degree 

20 in biomedical engineering as well as a PhJD. in biomedical 

21 engineering, also from the University of Connecticut 

22 And I have an MBA from Rennselear Polytechnic Institute. 

23 Q. Did you work while your were pursuing your graduate 

24 degrees? 

25 A. Yes. Once I got my B.S. degree, I worked 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1189 -Page 1192 


Jury Trial - Volume F 

1 continuously. 

Q. Where did you work while you were getting your 

3 graduate degrees? 

4 A. I started working after my Bachelor's degree at St. 

5 Francis Hospital in Connecticut. I was the Manager. At 

6 some point I was the Manager of the Research Laboratory 

7 as well as a perfusionist. A perfusionist is a person 

8 that runs a heart/lung machine during open-heart surgery. 

9 Q. Did you have any exposure to electrosurgical systems 
1 10 during that job at St. Francis? 

A. Yes, I did. As Manager of the Research Laboratory 
Jl2 there, we did a number of different types of animal 
113 surgery for clinical practice as well as for testing 

various devices and we had an old, what's known as a 
Bovie unit, that we used during the course of those 
surgeries for cutting and coagulation. 
Q. Did you work at any other companies or locations 
while you were pursuing your graduate degrees? 
1 19 A. Yes. When I left the hospital, I went to work for 
|20 United Technologies, which was a company that's in East 
Hartford, Connecticut. 

Q. Did your work involve any medical research? 
A. Actually, it did A lot of you know United 

124 Technologies is a company that makes things like 

125 elevators, air-conditioners and such. They also have 


Conde nselt™ 
Page 1193 


Wednesday, May 7. 2003 
Page 1195 

First off, when I worked at Pfizer, I did 
work at Pfizer for about three years, running a group 
that was involved with technology assessment as well as 
a group that did technical resource types of activities 
and sponsored research project that involved 
electrosurgery. 

I was also a Vice President of R&D for 
Valleylab and developed a number of electrosurgery systems, 
9 generators, including the generator that is on the table 

10 there, Force FX and also other devices related to that. 

11 And my most recent position, we worked on - and developed 

12 a device that incorporates an electrosurgery generator 

13 within it. 

14 Q. Thank you. 

15 Can you describe for the jury what Valleylab 

16 is? 

17 A. Valley - Valleylab is a company that basically has 

18 two product lines. One of them is electrosurgery systems 

19 and the other product line is ultrasurgical aspirators. 

20 It focuses on tissue ablation, using those types of systems. 

21 Q. And what was your position at Valleylab? 

22 A. I was the Vice President of Research and Development 

13 there. 

14 Q. How long did you hold that position? 
!5 A. Five years. 


Page 1194 

a research center that on occasion does some 
philanthropic projects and I developed an automated 
gait analysis laboratory for Children's Hospital in 
Hartford during the course of my tenure at that job. 

And as a matter of fact, during the course of 
this trial, there's been a conference, automated gait 

7 analysis, which is ; being partially sponsored by A. L 

8 DuPont Hospital, which is the hospital that we consulted 

9 with after we had built the Gait Lab for the Children's 

110 Hospital. 

111 Q. And when you say gait, is that gate like a fence or 

112 is that a different kind of gate? 

1 13 A. Walking analysis. Gait Analysis Lab is designed 
14 to diagnose walking disorders, particularly in children, 

Jl5 children with cerebral palsy and such. 
116 Q. Have you done any teaching in the field of 
[17 electrosurgery? 

1 18 A. Yes, I have. I've taught courses in introduction 

1 19 to biomedical engineering at the University of Connecticut 

20 as well as Trimty College, Hartford Graduate Center. 

21 Those courses involve teaching by low electric surgery. 
|22 Q. Do you have any work experience in the field of 

123 electrosurgery? 

124 A. Yes, I have. Tvegotanuinberofdiirerentjob 
J25 opportunities where I worked with electrosurgery. 


Page 1196 

J Q. During your work at Valleylab, did you have - use or 

2 evaluate any electrosurgical devices? 

3 A. Yes. A fair number of them. Our own products as 

4 well as competitive products. 

5 Q. Dr. Taylor, are you a physician? 

6 A. No, I am not 

7 Q. Are you a surgeon? 

8 A. No, I'm not 

9 Q. In the course of your work experience, have you had an 

10 opportunity to observe electrosurgery? 

11 A. Probably observed the use of electrosurgery in well 

12 over 3,000 operations. 

13 Q. Do you have any understanding as to whether Dr. 

14 Goldberg is a surgeon? 

15 A. My understanding is lie's a radiologist; he's not a 

16 surgeon. 

17 Q. Where did you work next after Valleylab? 4 

18 A. I worked for a company called Medlogic Global 

19 Corporation. It's a company that - a startup company 
120 that focused on tissue adhesives. 

21 Q. Okay. And did you ~ what was your next position 

22 where you worked with electrosurgical devices? 

23 A. I worked most recently worked at a company called 
j24 Colorado Medtech. And Colorado Medtech is a company 
25 that does outsource product developing, manufacturing. 


Page 1193 -Page 1196 


Jury Trial - Volume F 


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Page 1197 

1 We basically develop products for other companies and I 

2 manufacture products for other companies and during the 2 
course of my tenure there, we have worked on at least 3 
one project that incorporates electrosurgery generator. 4 
Q. Are you still employed by Colorado Medtech? 5 
A. No. We sold my division of the company at the end 6 
of January. 7 

Q. By whom are you currently employed? 8 

A. I'm employed by myself. I have a company called 9 

10 Taylor Medical Technology Consulting. io 

Q. What is the business of Taylor Medical Technology and 11 

12 Consulting? i2 

13 A. My business is to do medical device technology 13 

14 planning and business development for small medical device 14 

15 companies. 15 
Q. Do you have any patents or publications in the field 16 
of electrosurgery? 17 
A. Yes, I have two patents. In electrosurgery. I have 18 
a total of five patents. \g 
Q. And have you published in the field of electrosurgery? 20 
A. Yes. I have a number of papers in that area 21 
Q. Are those publications listed in your resume? 22 
A. Yes, they are. 23 

MR. MARSDEN: Your Honor, I move the admission 24 

of DTX-418, Dr. Taylor's resume. 25 


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Page 1199 

I studied the devices. When I say I studied the devices, 
basically I received products from Smith & Nephew. That 
included the instruction sleeves. I - those products 
included the generator. 

I also looked at the design history files for 
the products. At least parts of them, not the whole file. 
And I reviewed a whole host of depositions from a variety 
of people, both at Smith & Nephew and ArthroCare, 
including the deposition for - for Mr. Eggers, the 
deposition for Dr. Thapliyal, Mrs. Knudsen's deposition, 
Mrs. Drucker's deposition, and a long list of others. 
Q. Did you review 

A I also went to Smith & Nephew's bioscope lab and 
had an opportunity to use the Control rf and Saphyre and 
the ElectroBlade on a cadaver shoulder. That was fun. 
I enjoyed that 

Q. Did you also review Knudsen's deposition testimony? 
A. Yes,Idid 

Q. Are you being compensated for your time in this 
case? 

A. Yes, lam. 

Q. At what rate are you being compensated? 

A I am being compensated at my standard, what ~ time, 

my standard consulting rate of $150 an hour. 

Q. Have you ever served as an expert in litigation 


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Page 1198 

MR BOBROW: No objection, your Honor. 
THE COURT: Thank you. 
*** (Defendant's Exhibit No. 418 was received into 
evidence.) 
BY MR MARSDEN: 

Q. When did you first become involved in this case, Dr. 
Taylor? 
8 A. It was about a year ago. 

Q. Do you recall how you were contacted? 
A. Yes. Kurtis MacFerrin called me up and asked to meet 
with me. 

Q. What were you asked to do? 

13 A. He asked me to review the patents in suit, '536, 

14 the '882 and the '592 patents, to basically analyze them, 

15 to take a look at the prior art, to take a look at the 

16 devices that are in question here and to make a 

17 deterrnination as to whether or not the devices infringe ~ 

18 infringed, whether or not the patents were valid 

19 Q. And what did you do to determine whether or not 

20 the patents are infringed and whether the patents are 
valid 

A. Well, first, obviously, I read the patents several 
times. I read their file wrapper, so I guess what we 
24 would call file histories? 
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I looked at prior art publications and patents. 


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Page 1200 

before? 

A. No, I haven't 

Q. As a result of the study that you rjerformed, have 

you reached any opinions regarding infringement and 

validity? 

A. Yes, I have. 

Q. What are those opinions? 

A. My opinion is that the products, the accused 

products, the Saphyre, the ElectroBlade and the Control 

RF, do not infringe the ArthroCare patents. And also 

that the ArthroCare patents are invalid 

Q. Okay. Let's turn first to the issue of 

noninfringement and we'll take patents one at a time, if 

that makes sense to you. 

A. That's fine. 

Q. Okay. Let's start with the '536 patent, Dr. Taylor. 

Can you describe for the jury what the '536 * 
patent is about? 

A. The '536 patent is what - what I call and what we 
call an utility patent It describes a product or an 
apparatus that is ah electrosurgical system that contains 
or has an electrosurgical probe which has an electrically 
conductive fluid supply. 

Those are the essential parts of it 
Q. How do you know that the system claimed in the '536 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1197 -Page 1200 


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Wednesday, May 7, 2003 


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1 patent includes an electrosurgical - I'm sorry -- an 

2 electrically conductive fluid supply? 
A. Well, if you go look at the actual patent itself, 
it pretty much states that in the claims. If you look at 
the figures, at least some of the figures in the patent, 
it pretty much states that. 

And there are some other aspects that includes. 
Q Did you consider the Court's claim construction on 
that issue? 

A. Oh, yes, I certainly did. 

Q. Have you prepared any graphics to help explain to 
1 1 2 the jury how you reached your conclusions in connection 
13 with the '536 patent? 
114 A. Yes, I have. 
15 Q. All right 

1 1 6 MR. MARSDEN: Gary, could we have DDTX-406, 

17 please? 

18 BY MR. MARSDEN: 

19 Q. I think you answered earlier that one of the ways 

20 that you determined that an electrically conducting fluid 

21 supply was required by the claims of the '536 patent was 
122 by looking at the claims themselves? 

23 A. Yes. 

24 Q. Could you use this graphic to explain to the jury 
[25 how you reached this conclusion? 


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Page 1202 

1 A. Sure. If you look at the top there, you've got 

2 an electrosurgical system, which is - which has been 
highlighted, comprising, among other things, down the 
bottom here, an electrically conducting fluid supply, so 
that's in the claim. And then if you go over to Figure 1, 
you see that there's an IV bag (indicating). You actually 
have the text of the claim, it's more evident, but there's 

8 an IV bag that goes by a tube into the actual device. 

9 Q. And there's this word comprising that you've 

J 10 highlighted on this slide. Does that have any special 
III meaning in the field of patent law? 
J 12 A. Yes, it does, and actually you guys explained that 
Jl3 to me very well. Basically, it says that the system has 
1 14 to include these elements and it just lists the elements 
|15 here. 
16 Q. Okay. 

1 17 A. It has to contain those elements. 
18 Q. It's like including? 
119 A. Yes. It has to include those elements. 

20 Q. Do you have other slides that you prepared? 

21 A. Yes. 

22 The next, Gary, I won't call you Chris 
123 Gary, the next one, please. 

|24 Here's a series of four figures which show the 

[25 electrically conductive fluid supply coming in from a 


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number of different perspectives. 

And figure ~ in Figure 2A, the fluid is being 
supplied through the center of the device and that's shown 
there. 

A. (Continuing) Figure 6, the fluid supply is coining in 
from the bottom and flowing in that direction. 

Figure 7 is a different embodiment You have 
the return electrode and fluid supply are one part of the 
probe, a separate element of the probe and the active 
electrode is over here. The fluid supply is being 
supplied through the return electrode in this secondary 
shaft, if you will. 


Page 1204 


A. (Continuing) And in the case of Figure 8, the fluid 
supply is on the outside of the structure there. 

So we've got essentially four different ways to 
get it there. One is through the center of the probe, one 
is through the bottom of the probe, if you will, one is 
through a separate return electrode and fluid supply and 

8 the other is on the outside of the shaft. 

9 Q. If I could just direct your attention to Figure 7 
10 again, why is this not a separate fluid supply - I'm 

sorry. Why is this not a separate fluid supply system 

12 apart from the electrode — electrosurgical system? 

13 A. Well, because if you go back to the original claim, 
the claim requires that you have a return electrode as 

15 well as an electrically conductive fluid supply. In this 
16. particular case, the return electrode is actually separate 

17 from the active electrode shaft But it does contain the 

18 electrically conducting fluid supply. 

19 Q. And where exactly is the return electrode in the 

20 embodiment or the example given in Figure 7? 

21 A. Figure 7, the return electrode is right there. 

22 Q. Do you consider that to be part of the 

23 electrosurgical system? 

24 A. Yes, I do. 

25 Q. Were you just in the courtroom when the testimony 


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Page 1201 - Page 1204 


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Page 1205 

1 of Dr. Thapliyal was read? i j 

2 A. Yes, I was. 2 

3 Q. Did you hear Dr. Thapliyal describe the differences 3 

4 between the '909 patent and the '536 patent that we've 4 

5 been discussing? 5 

6 A. Yes, I did. 6 

7 Q. Do you recall what the difference was that he called 7 

8 out in his testimony? g 

9 A. I believe the difference was that the '506 patent 9 
1 10 includes an electrically conductive fluid supply. io 

11 Q. You said you considered the Court's claim n 

J 12 construction in evaluating infringement of the '536 12 

1 3 patent; is that correct? 13 

14 A. That's correct 14 

15 MR. MARSDEN: Could we put up the Court's 15 

1 6 claim construction, PTX-365 and go to Page 1 4, please? 1 6 

17 BY MR. MARSDEN: 17 

18 Q. Dr. Taylor, did you use this claim construction 18 

19 in reaching your conclusions of the no infringement of 19 

20 the - U 0 

21 A. Yes. 21 

22 Q. Would this definition help you in reaching that? 22 

23 A. Yes. 23 

24 Q. How did it assist you? 24 
[25 A. Well, as shown there, the term system shall be 125 


Wednesday, May 7, 2003 


Page 1207 

Q. Can you tell the jury how you do an infringement 
analysis when evaluating a patent claim? 
A. Essentially, what you do is you look at all the 
elements of the claims to determine whether or not the 
product that you are evaluating contains all the elements 
of those claims. And that's what I did. 
Q. And what happens if one of the elements is missing? 
A. If one of the elements is missing, this is like 
baseball. We have to have a batting average of a thousand 
in order to win. If one of the elements is missing, then 
the product does not infringe. 

Q. Okay Do you have a slide to help describe for the 
jury the particular claims that are asserted in the '536 
patent? 
A. Yes, I do. 

MR. MARSDEN: Gary, Could We Call up DDTX-409. 

please? 

BV MR. MARSDEN: 

Q. And, Dr. Taylor, which claims are asserted against 
the Smith & Nephew products? 
A. Claims 46, 47 and 56, as shown on the right-hand 
column there. 

Q. Are those claims independent claims or dependent 
claims? 

A. Those are dependent claims. 


Page 1206 

1 construed to mean an assemblage or combination of things I 1 

2 or parts forming an unitary whole, so therefore it means 2 

3 that all the things that are in that system or that I 3 

4 Claim 1 have to be present in the electrosurgical system 4 

5 in order for it to be consistent with the claim ' I 5 

6 Q. Okay. Now, there are particular claims of the • 536 I 6 

7 patent that have been asserted against the products that 7 

8 Smith & Nephew makes; correct? j g 

9 A. Correct I 9 
jlO Q. Have you formed an opinion as to whether the Smith & flQ 

111 Nephew Saphyre infringes Claims 46, 47 and 56 of the 536 111 

1 12 patent? | I2 

1 13 A. Yes, I have. |l3 
J14 Q. What is your opinion? 1 14 
Jl5 A. My opinion is they do not - those products do not 15 
1 16 infringe those claims. |l5 
17 Q. Why not? 17 

|18 A. Well, I did an analysis of the claims, those three 118 

119 claims, and in order to do an analysis of those claims, Jl9 

120 you have to go back to the independent claim those 20 

121 claims reference, which is Claim 45. |21 
J22 Q. Did you analyze the products to determine whether 22 
123 they had a — a — an electrically conductive fluid 23 
|24 supply? 124 
125 A. Yes, I did. And they do not. 25 


Page 1208 

Q Can you describe for the jury what the difference is 
between an independent claim and a dependent claim? 
A. Sure. A dependent claim depends upon another claim 
in order for it to be active. If you take a look at 
Claim 46, for example, it says an electrosurgical system 
as in Claim 45. If you look at Claim 47, it says an 
electrosurgical system as in Claim 46. Therefore, it 
depends on Claim 46. 

If you look at 56, it says the electrosurgical 
system of Claim 45. Therefore, it depends on Claim 45. 
Q. What does that mean in practical terms in terms of 
how you evaluate whether there's infringement? 
A. What it means is, practically speaking, you have to 
take a look first at Claim 45 to see whether or not the 
product contains all the elements and infringes Claim 45. 
If it doesn't infringe Claim 45, then it can't infringe, 
in this case, 46 or 56, and also 47 due to the fact that 4 
47 is dependent on 46. 

Q So that means that you had to look at Claim 45 even 
though Claim 45 is not asserted against these products; 
correct? 

A. That's correct 

Q. Are all of the elements of independent Claim 45 
found in the accused Smith & Nephew products? 
A. No, they're not They're missing - okay. The 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1205 - Page 1208 


Jury Trial - Volume F 


product is missing, electrically conducting fluid supply. 
Q. Have you prepared any slides to assist you in 
illustrating that to the jury? 
A. Yes, I have. 

MR. MARS DEN: Gary, could We pull up DDTX-408. 

please? 

BY MR. MARSDEN: 

Q. Can you use this slide, Dr. Taylor, to explain your 
opinion? 
A. Yes. 

As you see on the right-hand side, there's the 

12 claim, Claim 45, the independent Claim 45. Then on the 

1 3 left-hand side, what I'm showing is what the claim system 

14 must include. And as I mentioned previously, the claim, 

15 the products, the Saphyre, the Control RF and the 

16 ElectroBlade, do not have an electrically conducting 

17 fluid supply. And since all of the '536 claims require or 

18 are dependent upon, if you will, Claim 45, which requires 

19 an electrically conducting fluid supply, therefore none of 

20 those products infringe. 

21 Q. And did you look at the Smith & Nephew products and 

22 how they are used in determining whether or not there was 

23 an electrically conducting fluid supply as claimed in the 
[24 '536 patent? 

25 A. Yes, I did. 


Condenselt™ 

Page 1209 


Wednesday, May 7, 2003 
Page 1211 

the probe (indicating). 
Q. So essentially the right-hand side? 
A. The right-hand side. That's correct. 
Q. And where is the electrically conducting fluid 
supply system? 

I 6 A. The electrically conducting fluid supply is this rv 

7 bag, fluid management system, the box there, and the tube 

8 that's going into the cannula. 

9 Q. Now, I think you may have used the expression an 
10 arthroscopy suite or system in describing what you've 

II drawn here in this figure. 

12 Explain how, is the '536 patent directed 

1 3 towards an arthroscopy system? 

14 A. No. 

15 Q. What is the claim term that the Judge has construed? 

16 I'm sorry. What is the term that you were considering in 

17 deteniimiiig infriiigement of the '536 patent? 

18 A. An electrosurgical system. 

19 Q. An electrosurgical system -can it be part of a 

20 larger arthroscopy system? 

21 A. It's can be part of one, yes. 
22 

23 Q. Were you here when Dr. Choti testified earlier this 

24 week? 
|25 A. Yes, I was. 


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Page 1210 

Q. Have you prepared another slide to demonstrate that? 
A. Yes. 

MR. MARSDEN: Could We Call Up DDTX-4I0, please, 

Gary? 

BY MR. MARSDEN: 

Q. Can you use this slide to describe to the jury your 
opinion that the '536 patent does not infringe? 
A. Yes. This overhead shows the various components, 
actually that Mr. Sparks was demonstrating yesterday, but 
what you have here is on the left-hand side, more or less, 
you've got the fluid supply, electrically conductive 
jl2 fluid supply, which is an rv bag going through the fluid 
JI3 system, eventually ending up in a cannula that goes into 
14 the patient 

j 1 5 You've got a light source that powers the -- 

|16 the arthroscope and eventually the image of the 
|17 arthroscope is shown on a TV monitor. 
jl8 And then you have the RF generator and 

119 whichever Smith & Nephew probe we're talking about, which Jl9 

120 goes into a separate port Therefore, when you take a 

121 look at this overall arthroscopy sweet system, the 

122 electrically conducting fluid supply is separate from the 
|23 RF probes. 

J24 Q. Where is the electrosurgery system in this figure? 
J25 A. The electrosurgery system is the RF generator and 


Page 1212 


Q. Is Dr. Choti a surgeon? 
A. Yes, he is. 

Q. Do you recall whether Dr. Choti opined on the 
infringement of the *536 patent? 
A. Yes. 

7 Q. And what do you recall that Dr. Choti' s opinion was? 

8 A. He agreed with me. . 

9 MR. BOBROW: Your Honor, I object It's beyond 

10 the scope of his report, what Dr. Choti did and said, what 

11 he opined on, et cetera is beyond the scope. 

12 THE COURT: Is this what was presented here in 

13 court or presented through reports? 

14 MR. MARSDEN: It was simply the testimony that 

15 was given from the stand by Dr. Choti, your Honor, and 

16 we're not going to go any further with it 

17 THE COURT: 1 will allow it. 4 

18 BY MR. MARSPEN: 
Q. Thank you, Dr. Taylor. 

I'd like to turn next to the '882 patent 
Can you describe for the jury what the '882 

22 patent is all about? 

23 A. The '882 patent is a method patent and it's basically 

24 a method for describing how to carry out a particular 
|25 process. That's what a method patent is. And it's a 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1209 -Page 1212 


JuryTrial - volume F Condense!!™ 

Page 1213 

1 method basically for applying electrosurgical energy to a 

2 point on the body or place on the body using an 
electrosurgical probe. General description. 
Q. I think we've put up on the screen rrx-2, which is 
the '882 patent. Would that assist you in providing your 
testimony on the '882 patent? 
A. That basically describes it pretty well right there. 

8 Q. Okay. And what we've put up on the screen is Claim 1 

9 of the '882 patent; correct? 

10 A. Correct 

1 1 Q. Is Claim 1 of the '882 patent asserted against the 

1 2 Smith & Nephew products? 
A. No, it is not 

Q. Okay. Why did you look at Claim 1? 
A. Can you repeat the question? 
Q. Sure. Why did you look at Claim 1 if it's not one 
of the asserted claims? 

A. Oh. It's the - the dependent claims are asserted 

19 against these products referenced Claim L 

20 Q. So this is a little bit like Claim 45 was in the 
j21 '536 patent? 
[22 A. That's correct 

23 Q. Okay. Now, I believe Mr. Bobrow a little bit 
124 earlier was questioning a witness about whether or not 
the ElectroBlade has two electrodes or maybe three 


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16 
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Wednesday, May 7, 2003 
Page 1215 

where we have Claims 13 and 17? 
BY MR. MARS DEN; 

Q. How do you know that claim 13 is a dependent claim? 
A. If you look at the claim language here, it starts 
off as similar to what was happening in the prior patent 
The method of Claim 1. 
Q. All right And how about Claim 17? 
A. Similarly starts off as the method of Claim 1. 
Q And, finally, Claim 54. 
A. Also the method of Claim 1. 
Q. So how do you determine whether any of these 
dependent claims is infringed? 

A. You have to go back and take a hard look at Claim 1. 
Q. Okay. Now, turning back to Claim 1, you've heard 
some testimony, at least some reference during the course 
of this trial to a certificate of correction. 
A. That's correct 

Q. And is it your understanding that that dispute 
relates to Claim 1 of the '882 patent? 
A. Yes. 

Q. Do you have an understanding of how many electrodes 

22 Claim 1 required when it was allowed and published by the 

23 Patent Office? 

24 A. As originally published, it had four electrodes. 

25 Q. And do you understand that there has been a 


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electrodes. 

Do you recall that? 
A. Yes, I do. 

Q. And that was in connection with the '882 patent? 
A. That's correct 

Q. The '882 patent, is it even asserted against the 
ElectroBlade products? 

A. According to my understanding, it is not 
Q. Okay. What products is the '882 patent asserted 
1 10 against? 

11 A It's asserted against the Saphyre and the Control 

12 RF. 

13 Q. What claims are asserted against the Saphyre? 

14 A. The Saphyre has Claim 13, 17 and 54. 

15 Q. And how about - is it also asserted against Control 

16 RF7 

J17 A. Yes. And Control RF, it's only 17 and 54. 

118 Q. Are those asserted claims independent claims or 

119 dependent claims? 

1 20 A. Those are dependent claims. 
|2l Q. And how do you know that? 
|22 A. If you actually show me the claim, I can show you. 
23 But they're - all three of them are dependent upon 
124 Claim 1. 

MR. MARSDEN; Gary, can we go to the page 
ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1216 

certificate of correction filed that would reduce that 
number of electrodes to two? 
A. Yes, I do. 

Q. In conducting your infringement analysis of the 

'882 patent, did you make any assumptions regarding the 

certificate of correction? 

A I made an assumption that the certificate of 

correction was invalid and conducted my analysis, assuming 

that there were four electrodes. 

Q. Okay. And you understand that the issue of whether 
or not the certificate of correction is invalid will be 
something that will be decided by the Court or the jury 
in this case? 
A Yes, I understand. 

Q. But for purposes of your infringement analysis you 
assumed that it was invalid and that the claim, therefore, 
required four electrodes as originally published? 4 
A. That's correct. 

Q. And have you - with that assumption, have you formed 
an opinion as to whether the Saphyre product infringes 
Claims 13, 17 and 54 of the *882 patent? 
A. Yes, I have. 
Q. What is that opinion? 
A. It does not infringe. 
Q. Why not? 

Page 1213 -Page 1216 


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Page 1217 

A. It doesn't infringe because it doesn't have four 
electrodes. 

Q. How many electrodes does it have? 
A. It has two. 

Q. Again, using the same assumption about the 
certificate of correction, have you reached a conclusion 
as to whether the Control RF product infringes Claims 17 
and 54 ofthe , 882 patent? 
A. Yes, I have. 

What is that opinion? 
That it does not infringe. 
Why not? 

It only has two electrodes instead of the four 
J 14 required by the patent, or the claim. 
15 Q. Okay. I think we're ready to move on to the '592 
116 patent 
17 A. All right. 

1 1 8 Q. Can you describe briefly for the jury what the '592 
[19 patent is about? 

120 A. Once again, the - the '592 patent is a method 
[21 patent. It's a - basically, a patent that describes the 

122 process for doing something. And it's a method patents 

1 23 applying electrical energy to a target site on the body 

1 24 while you're spacing away or not allowing the contact, 

125 the return electrode to the body. 


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BY MIL MARSDEN: 
Q. Can you tell the jury which claims of the f 592 
patent are asserted against the Smith & Nephew products? 
A. Well, there are two sets of claims. One set is 
shown here on the right, right-hand side, which are 
Claims 3, 4, 1 1 and 21. And as shown here, they're all 
dependent on Claim 1 . 

Q. Okay. Now, in this case, has ArthroCare also 
asserted the independent Claim 1? 
A. I don't believe so. 
Q. All right. 

A. I could be wrong. I have to admit, there have been 
so many claim changes during the course of this particular 
case that it's hard to keep track. 

Q Okay. In any event, as you know from the testimony 
on the '882 and the '536, you need to look at Claim 1 in 
any event; correct? 
A. Right You do. 

Q. All right And have you reviewed Claim 1 and the 
dependent claims? first of all, can you tell the jury 
again how you know Claims 3, 4, 11 and 21 are dependent 
claims? 

A. Once again, they start off with the method of Claim 
1 in both Claims 3, 4, 1 1 and 21. 

Q. And how did you go about analyzing whether Smith & 


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Page 1218 

1 Q. I'm sorry. Before I launch into the '592, 1 did 1 

2 want to ask you one other question about the '882. Does 2 
Dr. Goldberg dispute that the Saphyre and the Control RF 3 
have only two electrodes? 4 
A. I don't believe so, no. 5 
Q. So that your real dispute over the '882 patent in 6 
infringement is over whether or not the certificate of 7 

8 correction is valid or not? g 

9 A. That's correct 9 
10 Q. And if it is valid, then it would require only two; 10 

111 is that right? U 

12 A. Yes. However, there is, I think there's an issue in 12 

1 1 3 that If it only has two, then there would be a lot of 13 

1 14 other products that infringe. 14 
15 Q. Okay. Well, we'll talk about that when we get to 15 

116 the invalidity portion of the case* 16 

JI7 A. Okay. 17 

1 18 Q. Probably tomorrow, at the pace we're going. 18 

j 19 Let's turn back now to the '592 patent. 19 

|20 Have you prepared a slide to assist you in 20 

121 explaining to the jury the opinions you've reached on 21 

22 the '592 patent? ' 22 

123 A. Yes, I have. 23 

|24 MR. MARSDEN: Could We call Up DDTX-450, please? 24 

|25 25 


Page 1220 

Nephew's products infringed any of these asserted claims? 
A. Once again, I started off with the independent 
claim and looked at whether or not the Smith & Nephew 
products meet all of the elements of the independent 
Qaim 1 and it does not or they do net 
Q. What element did they not meet? 
A. They do not meet the highlighted element, which is 
positioning a return electrode within the electrically 
conducting fluid such that the return electrode is not 
in contact with the body structure. 
Q. Did you also consider the Court's claim construction 
in evaluating whether or not the '592 patent is irifringed? 
A. Yes,Idi<L 

MR. MARSDEN: Gary, can we call up the Court's 
claim construction, please, and specifically the Court's 
claim construction of these terms. And that's PTX-675 at 
Paragraph 4, 1 believe. 4 
BY MR/ MARSDEN: 

Q. Did you use the Court's definition as set forth here 
in PTX-975 in determining whether or not the accused 
products infringe the '592 patent? 
A. Yes, I did And basically I looked at the 
highlighted sentence there: Claim limitation. The return 
electrode is not in contact with the body structure is 
clear - the return electrode is not to contact the body 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1217 -Page 1220 


Jury Trial - Volume F Condepselt™ 

Page 1221 

1 at all during the performance of the claimed method. 

2 And my interpretation and analysis would 

3 indicate that the products in suit here do contact the 

4 body during the course of the claim method. 

5 Q. How did you determine that? 

6 A. Based on the video, actually, based on my own 

7 personal experience, but also on the videos, training 
B videos that were produced to me. 
9 Q. What do you mean by your own personal experience? 
) A. Well, I had the opportunity to play with, I shouldn't 
I say play - for an engineer, it's play. Experiments with 
• the cadaver shoulders at Smith & Nephew and had an 
» opportunity to use the devices in a cadaver shoulder, and 
( it was obvious that it would be very difficult to perform 
; these procedures without contacting, having the return 
i electrode contact the body structures at some point 

during the course of the procedure. 
Q. Did you also review videos that Smith & Nephew has 
prepared to train its sales force? 
A. Yes, I did I looked at the training videos and 
those training videos actually are conducted by people 
that know what they're doing in terms of arthroscopy. 
And there - it was obvious that during the course of 
those training videos, that the return electrode was 
contacting tissue during the course of the procedure. 


Page 1222 

1 Q. Now, I believe through the course of the trial we've 

2 actually seen several of those videos and I believe we've 

3 already seen videos of the Saphyre and the ElectroBlade 

4 in operation. 

5 Do you recall that? 
S A. Yes, I do. 

7 Q. But do you know whether the jury has seen a video 
I yet of the Control rf product in operation? 
1 A. To my knowledge, they have not. 
I Q. Okay. And did you consider the video or a video of 

the Control RF product in operation in determining whether 
! or not there was infringement of the claims of the '592 
patent? 
A. Yes,IdiA 

Q. Okay. And do you have a clip to show the jury? 
A. Yes. 

Q. Okay. Was this a video that was prepared again by 
Smith & Nephew to train its sales force on how this 
product would be used? 
A. Yes, it was. 
Q. Okay. 

MR. MARSDEN: Gary, can we play DTx-897, 

please? 

BY MR. MARSDEN: 

Q. Dr. Taylor, if you would go ah ead and describe for 
ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Wednesday, May 7, 2003 

. ♦k.- u . Page 1223 

1 the jury what we're seeing. 

2 A. Okay. 

3 (Pause.) 

4 (Video played.) 

5 THE WITNESS: What you can see here is the 

6 Control RF, the active electrode is somewhat buried in 

7 the tissue, but the return electrode is obviously 

8 touching - touching tissue at various points during the 

9 procedure. Actually, it's obscured here, but - in 

0 essence, the return electrode is contacting tissue during 

1 a large portion of the procedure, right there (indicating) 

2 MR. MARSDEN: Could I approach, your Honor? 

3 THE COURT: Yes, you may. 

4 BY MR. MARSDEN: 

5 Q. Let me hand you, Dr. Taylor, the Control RF product 

16 that was marked earlier in this case. I wonder if you 

17 could remind the jury where the return electrode is on 

18 that device (handing exhibit to the witness). 

19 A. Sure. A little difficult to see, but the tip of my 

20 finger is the start of the return electrode and it extends 

21 up to the tip of this white structure here (indicating). 
1 22 So it's a fairly large electrode relative to the active 

23 electrodes, which are very tiny. 

24 Q. Okay. 

MR, MARSDEN: You can stop the video. Thank 


25 


yoa 


Page 1224 


MR. MARSDEN: Your Honor, I move the admission 
of DTX-897, the video that was just played 
MR. BOBROW: No objection. 
THE COURT; All right Thank you. 
(Defendant's Exhibit No. 897 was received into 

evidence.) 

BY MR. MARSDEN: 

9 Q. Dr. Taylor, if we can go back to the claims, we 

10 talked about Claim 1 and the dependent claims that depend 

1 1 from Claim 1; correct? 

12 A. Yes. 

13 Q. Did you prepare a slide to show Mother claims of 

14 the '592 that are asserted? 

15 A. Yes, I did. 

1 6 MR. MARSDEN: Could we call that up, please, 

17 Gary? Okay. 4 

18 BY MR. MARSDEN: 

19 Q. And this is headed ArthroCare also asserts Claims 

10 23,26,27 t 32and42oftte'592patent;a>rrect? 

11 A. That's correct 

!2 Q. Okay. Are these claims also asserted against the 
!3 Smith & Nephew Saphyre ElectroBlade and Control RF 
14 products? 

A. Yes, they are. 

Page 1221 - Pace 1224 


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Condenselt 


Wednesday, May 7, 2003 


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4 
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Page 1225 

1 Q. Can you describe to the jury how this set of claims 

2 works? 

A. Once again, on the right-hand side, right column, 
we have Claims 26, 27, 32 and 42. As you can see, they 
all start off with the method of Claim 23 at the beginning 
of each claim. On the other side we have Claim 23. 
So it requires, in order to analyze it, that 

8 you examine whether or not the products infringe Claim 23 

9 Q. Have you analyzed whether the three accused products 
jlO infringe Claim 23? 

11 A. Yes, I did. 

12 Q. And did you determine whether all of the elements 

13 that are required by Claim 23 are present in the- accused 
1 14 devices? 

15 A. No, they're not The - the accused devices do not 
116 meet the second element there, the one that's highlighted, 
17 saying spacing a return electrode away from the body 

118 structure. 

119 Q. And did you, again, use the Court's claim 

1 20 construction in reaching that conclusion? 

21 A. Yes, I did. 

22 Q. Did you rely on the videos that we've seen here in 
|23 court in reaching that conclusion? 
24 A. Yes. 

[25 Q. And did you also rely on your own experimentation 


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Page 1226 

with the devices? 
A. Yes. 

Q. In summary, then, Dr. Taylor, have you formed an 
opinion as to whether the Saphyre, ElectroBlade and 
Control RF products infringe Claims 1, 3, 4, 11, 21, 23, 
26, 27, 32 and 42 of the '592 patent? 
A. I've reached an opinion. 
Q. What is your opinion? 
A. They do not infringe. 

Q. Do you recall whether Dr. Choti expressed an opinion 
111 on the '592 patent with respect to infringement? 
|12 A. He agreed with roe. 

I 13 MR. MARSDEN: Your Honor, that concludes our 

J14 presentation on ncminfririgernent for today. It might be a 
|15 logical breaking point 

J16 THE COURT: All right Members of the jury, 

J 17 we will conclude for the day. 

1 18 We kept you late today. We're going to let you 

J19 come in later tomorrow because we've got some business we 
120 have to take care of, so if you will report - and I think 
J21 I'm going to make it at 1 0:30 tomorrow morning. 
|22 In the meantime, however, you're not to discuss 

J23 the case among yourselves or with anyone else. You're not 
|24 to read or listen to anything touching on the case or 
[25 perform any independent investigation. 


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Page 1227 

Have a safe trip home, a wonderful evening and 
we'll see you tomorrow morning at 10:30. 

(At this point the jury was excused for the 
evening recess, and the following occurred without the 
presence of the jury.) 

THE COURT: All right I have a plea at 4:30, 
so we're not going to do anything yet this afternoon. 
We'll meet tomorrow morning at 9:30, go over these 
demonstratives and the other evidentiary issues and charge. 
If you can hang around for just a few minutes, I will have 
my Clerk copy my first draft of the jury instructions so 
you have the evening to look over them. 

Oh, we need a verdict form. Take a look at 
the jury instructions and then prepare a verdict form, 
depending on what you think about what's going on in the 
case at this point AH right? 

Thank you. 

(Court recessed at 4:23 pjn., to reconvene on 
Thursday, May 8, 2003, at 9:30 ajn.) 


Page 1228 


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22 
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25 


INDEX 
DEFENDANT'S TESTIMONY 

CONTINUED DIRECT CROSS REDR RECR 


Kate Knudsen, 
Resumed 


Karen Drucker 


976 983 991 — 
- 995 1035 1039 


PLAINTIFFS TESTIMONY 
CONTINUED 

. S. Nahum Goldberg 


1053 1113 


DEFENDANTS TESTIMONY 
CONTINUED 


Kenneth Taylor 


1191 


ArthroCare v . Smith & Nephew, CA No. 01-504 (SLR) 


Page 1225 - Page 1228 


Jury Trial - Volume G 


- VOLUME C - 
I* THE OMITEO STATES DISTRICT COURT 
IB AMD FOR THE DISTRICT OF DELAWARE 


Conde nselt 

P*9* 1229 


TM 


Thursday, May 8, 2003 

Page 1231 ' 


PROCEEDINGS 


ARTHROCARE CORPORATION, 
Plaintiff 

vs. 

SMITH C HE PHEW, IHC, 
Defendant 


CIVIL ACTIOS 


K>. 01-504 (SLR) 


Wllalngton, Delaware 
Thursday, Hay B, 20O3 
9:03 o'clock, a.n. 


BEFORE: HONORABLE SUE L. ROBIKSOH, Chief Jtldge, and a jury 


APPEARANCES: 


MORRIS, MICHOLS, AR5HT t TUKHELL 
BY: JACK B. BLOKEIfFELD, ESQ. and 
KAREN JACOBS -LOCOES, ESQ. 


-and- 


Of flclal Court Reporter* 


[ (Proceedings commenced in the courtroom, 

beginning at 9:03 a.m., and the following occurred without 
the presence of the jury.) 

THE COURT: All right. Generally, how I go 
through the jury instructions is basically page by page. 
I will holler out the page. If there is an objection, a 
correction, a typographical error, whatever, you can holler 
out If I don't hear anything I will assume there is 
nothing to be corrected or changed or amended 

We will start with Page 2, the introduction. 
Page 3, the jurors 1 duties. 
Page 4, evidence defined. 
Page 5, more evidence defined. 
Page 6, consideration of evidence. 
Page 7, circumstantial evidence and direct 

1 20 And I have got money out there for someone who gives me 

121 a different example some day, because I am so sick of 
22 this example. Hiink about it 

|23 Page 8, credibility of witnesses. 

24 Page 9, more credibility of witnesses. 

125 Page 1 0, expert witnesses. 


APPEARANCES (Continued): 

WEIL* GOTSKAL St MANGES 
BY: IARED BOBROW, ESQ, 
TIMOTHY OeMASX ESQ. and 
PERRY R. CLARK. ESQ. 
(Redwood Shores, California) 

Counsel for Plaintiff 

FKH at RICHARDSON P.C 

BY: WILLIAM J. MARSDEN. IR, ESQ, 
KEnH A. WALTER, ESQ. and 
EUGENE B. IOSWICK. ESQ. 


FISH* RICHARDSON 
BY: MARX I HEBERT. ESQ, 
(Boston* Massadnusem) 

-and- 


FEH4RJCHARSON 

BY: rURT60.MacfERRIN.ESQ and 

KAREN t BOYD. ESQ. 

(Redwood City, California) 

Counsel for Defendant 


:I230 


Page 1232 

1 Page 1 1, deposition testimony. 

2 Page 12, number of witnesses. 

3 Page 13, demonstrative exhibits. 

4 Page 14, burdens of proof. 

5 MSL BOYD: Your Honor, Smith & Nephew would 

6 like to request that the last sentence of the paragraph 

7 regarding clear and convincing evidence be deleted, this 

8 sentence read this burden remains with Smith & Nephew 

9 throughout the case, it never changes or shifts to 

10 ArthroCare. 

11 This is in addition to the Delaware Model 

12 Instruction, and we would ask that it be deleted In the 

13 alternative, we would ask that a parallel statement be 

14 added to the end of the preponderance of the evidence 

15 paragraph. 

16 MS. JACOBS-LOUDEN: Your Honor, this is a correct 

17 statement of the law. We cited case Law for it It has 4 

18 appeared in otherinstructions before this Court The 

19 modern rules, of course, haven't been amended since 1993. 

20 So it is not surprising that there would be some additions 
|21 since the 1993 edition. 

22 But it is what the law is, and we think it is 

[23 a correct statement that would be helpful to the jury. 

24 THE COURT: Well, is it not also true that 

25 your burden on infringement remains with you throughout 


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I'm going to correct it, he didn't - I mean he corrected 
it and he didn't have ordinary skill. 

So I think it's unfair to have us judge it one 
way when it was done in another way. So without knowing 
the history of this, I'm not confident, regardless of what 
the technical standard is, I'm not sure whether it should 
be applied in this case, depending on the facts. 

MS. JACOBS-LOUDEN: But I think what would be 
unfair is if Mr. Raffle would be questioned, well, wouldn't 
J 10 one reading this think X? Wouldn't one reading this think 
11 Y? He prosecuted the patent. He can give what information 
112 he can about the prosecution of the patent, but to start 
13 using him to make an argument about what one would 
1 1 4 understand reading this would be inappropriate. 
15 MR. MacFERRJN: Your Honor, Mr. Raffle submitted 

1 1 6 a declaration earlier in this case about these very alleged 

1 17 errors saying they were clerical, typographical errors. 
18 THE COURT: And I think everyone is agreeing 

119 that you can ask him what he did I think the issue is 

120 whether you can say, kind of make him more than a fact 

121 witness, more of an expert witness, wouldn't one of 
22 ordinary skill in the art understand X Y and Z? That's 

123 not appropriate, I don't think. 

|24 MR. MacFERJUN: I don't think that necessarily 

125 pertains to the demonstrative issue. 


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Page 1282 

THE COURT: No, no. 
MR. MacFERRJN: Just having a slide. 
MS. JACOBS-LOUDEN: The demonstratives we 
provided do raise this issue. There were slides that say 
that one could think this isn't an obvious error. One 
could thing the claims could be changed this way. 
MR. BLUMENFELD: Your Honor, the 
8 demonstratives - and here is the first one. It's No. 411, 
and the heading of it is, they show a change to the claim 

10 and they say, the heading is Alleged Active Electrode 

11 Error Fails The Test, Part 2. Even if active electrode 
is an obvious error, it's not obvious how it should be 
corrected Other changes could have been made. 

MR. MacFERRlN: We agree we will not use that 

15 slide, your Honor. 

16 MR. BLUMENFELD: if they're not going to use 

17 that, they won't be able to use the other ones that follow 

18 on it that say the same thing. 

19 MR. MacFERRJN: Well, there is slides, your 

20 Honor, which merely shows the changes that were made to 
the claim by the certificate of correction; 

22 MR. BLUMENFELD*. That one, we don't have a 

23 problem if they want to use that, but then they have 

24 another slide that says here is what the legal test is. 

25 The alleged error fails the test, part one, part one 


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Page 1283 

1 again, part two, part three. So if they're just going 

2 to use the change, then I don't think we have an issue. 

3 But if they're going to put slides up with the prosecuting 

4 attorney, say here is the test and you failed, I don't 

5 think they should be able to do that. 

6 THE COURT: Yes. It seems to me that in this 

7 case, both sides have missed the boat on important issues 

8 because you weren't forthcoming in the first instance and 

9 didn't let you get evidence in in the second instance, so 
10 my warning to you is you better be forthcoming because 

1 surprises, I'm not good at surprises. If you're trying 

12 to get in evidence that is inappropriate or that was not 

1 3 appropriately discovered, it's not going to come in and 

14 you are not going to look good in the eyes of the jury 

15 and you are not going to look good in the eyes of the 

16 Court. 

17 So maybe you need to hash this out There 

1 8 will be no argumenti ve demonstratives of the kind that 

19 Mr. Blumenfeld has brought to my attention. All right? 

20 That's not how we do things here. 

21 All right. Let's take a few minutes. The 

22 jury will be here at 10:30 and I want to get started on it 

23 Oh, verdict form. We still need something to 

24 work from on a disk which would be helpful, and you still 

25 haven't told me when you think this might go to a jury. 


Page 1284 

1 Just the best estimate. It's not — 

2 ms, BOYD: Well, that actually relates to 

3 another issue that I wanted to raise with the Court 

4 Assuming that we do go to the jury, the jury starts its 

5 charge at 2:30 on Friday afternoon. 

6 THE COURT: No. 

7 MS. BOYD: NO? 

8 THE COURT: No, it won't start at 2:30 Friday 

9 afternoon. I mean the point is, I mean the way I had 

10 given you time, it should make us be finishing up on 

1 1 Friday morning, so the jury gets it well before the end 

12 of the day on Friday. 
MS. BOYD: okay, your Honor. 
THE COURT: Are you keeping track of your time, 

15 everybody? And you still have inequitable conduct that is 

1 6 included in that time? 
MS. BOYD: There is, there is some confusion 4 

18 about how details of time are being allocated with 

19 deposition designations, but there is a running total that 

20 we have been informed of. 

THE COURT: All right 

MR. BOBROW: Your Honor, do you have an estimate 
23 now of what the time is for both sides? 

THE COURT: I'm sure Francesca does. Why don't 
25 you talk to her about it because the time I gave you was 


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Page 1285 

for inequitable conduct as well. And this case was 
supposed to be done by 3:00, everything. That means in my 
mind if you have an inequitable conduct case, the jury 
needs to get it well before 3:00. Otherwise, theoretically 
you don't have time left. 

MS. BOYD: Mr. Blumenfeld has proposed or 
ArthroCare has proposed to Smith & Nephew that the 

8 inequitable conduct case be addressed while the jury is 

9 deliberating, so that would be, I guess, late Friday 
moming or early Friday afternoon. 

Will that work with the Court's schedule? 
THE COURT; Yes, as long as you are within 
your time. I'm not putting in extra time. What I'm doing 
is putting in my trial time, which is your trial time. So 
you need to work it out And work out, before you put on 
and use your last bit of time with these witnesses that 
you proposed to put on, you better have a clear idea of 
1 18 what you want left for inequitable conduct All right? 
19 Okay. Thank you, counsel. 

120 MR. BLUMENFELD: Your Honor? 

|21 THE COURT: Ye& 

|22 MR. BLUMENFELD: Just to make clear, the 16 

23 hours we got I assume includes closing arguments. 
|24 THE COURT: Yes, it includes everything. And 

25 the more time — I mean it doesn't include — I have 


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(Court resumed after the recess, and the 
following occurred without the presence of the jury.) 

THE COURT: I did want to note for the record 
before we started that I am going to give Smith & Nephew a 
half-hour because, quite frankly Mr. Hebert was much too 
patient with some of the plaintiffs witnesses, who did 
not answer questions directly and clearly. And we had to 
go over the same questions time and again. 

So for that reason, they get another half-hour. 

All right. Let's bring the jury in. 

MR. MARSDEN: Thank you, your Honor. While we 
are bringing the jury in, can I move those five exhibits. 

THE COURT: Yes. 

MR. MARSDEN: PX-478, PX^72, DTX-912, DTX I21, 

rrrx-#>o ( and DTX-79 1. 

THE COURT: Any objection to those exhibits? 

MR. BLUMENFELD: No, your Honor. 

THE COURT: Thank you, 
*** (Above-referenced exhibits were received into ! 
evidence.) j 

(At this point the jury entered the courtroom j 
and took their seats in the box.) j 
THE COURT: Mr. Marsden, you may proceed j 


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given you some time on this, not the evidentiary issues 
but the jury instruction charge conference is on my time, 
but all the evidentiary issues you've been having is your 
time. That's your trial time that you are using on that 
kind of discussion because you haven't been able to work 
it out or you haven't given the other party enough notice 
to work it out 

So keep that in mind when Francesca talks to 
you about how much time, little time you have left 

(Court recessed at 1 0:24 ajn.) 


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MR. MARSDEN: Thank you, your Honor. Good 
morning, ladies and gentlemen of the jury. 

DEFENDANTS TESTIMONY 
CONTINUED 

... KENNETH TAYLOR, having been 
previously duly sworn as a witness, was 
resumed and testified further as follows ... 

DIRECT EXAMINATION 
BY MR. MARSDEN: 
Q. Good morning, Dr. Taylor. 
A. Good morning. 

Q. Dr. Taylor, before we move to the issue of invalidity, 
I wanted to touch on a couple of cleanup matters related to 
the noninfringement opinions you provided yesterday. 
Yesterday, I asked you whether you considered or used the 
Court's claim constructions in reaching your opinions on 
noninfringement. 

Do you recall that? 
A. Yes, I do. 

Q. Just to clarify, when did the Court provide its 
claim constructions to the parties? 
A. In about a month. 

Q. Did you review the Court's claim constructions? 


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1 A. Yes, I did. 

2 Q. Did you consider them in offering the opinions you 

3 have offered here in court? 
A. Yes, I have. 

Q. Do you believe the opinions you have offered here 
in court are consistent with the Court's claim 
constructions? 
A. Yes. 

Q. Turning to another brief cleanup issue on 
noninfringement, yesterday, when we were discussing the 
'592 patent, the not touching the body patent, you 
discussed I believe having the opportunity to use the 
13 probes in a cadaver's shoulder? 
A. Yes. 

Q. I think you used the word procedure when you 

16 described that. What did you mean by procedure? 

17 A. I meant that I was performing the method that was 
similar to the steps in the claim. 
Q. What is the method of '592, what are those steps? 

20 A. Summarily speaking, you position an active 
electrode either touching the tissue or in proximity to 

22 the tissue. 

23 Q. That's step one? 

24 A. That's step one. And step two is you position the 

25 return electrode, so it's not touching the tissue — not 


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Page 1290 

touching the body, I should say. That's step two. 

And step three is you apply the energy to 
the active electrode. 

Q. How do you know that those are the three steps of 
the '592 method? 

A. That's basically what is in the claims. 
Q. Has the Court provided us any additional guidance 
8 since yesterday about the meaning of those claim terms? 
A. Yes. 

MR. MARSDEN: Gary, can we put up the Court's 
1 jury instruction on this? 

12 MR. BOBROW: Your Honor, I don't believe this 

13 is your jury instruction, in the sense that I thought 

14 those were still under consideration. I don't know that 

15 it is appropriate to show that though this witness. 

16 ; THE COURT; My jury instruction is going to 

17 be consistent with my memorandum opinion. So none of 

18 this should be different. If this is consistent with my 

19 memorandum opinion, then this is fine. 

20 MR. MARSDEN: Thank you, your Honor. 

21 Gary, if you could zoom in on Paragraph No; 3... 

22 BY MR. MARSDEN: 

23 Q. Dr. Taylor, I believe we discussed the first sentence 

24 of this paragraph several times during the course of the 

25 trial? 


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Page 1291 

A. That's correct. 

Q. Not touching, not contacting the body at all. Do 
the additional sentences that appear in Paragraph 3 change 
your opinion regarding whether or not there is infringement 
of the *592 patent? 

A. No, it does not. It basically strengthens my 
opinion. 

Q. Why does it strengthen your opinion? 

A. Well, I think I meant makes it abundantly clear 

that the claim construction doesn't have any time 

limitations. That's number one. That's in the second 

sentence, the claimed method does not contain any time 

limitations. 

And the last sentence says that the claimed 
method is performed when each of the three steps has 
been completed. So I think that also strengthens my 
position. 

Q. Thank you very much, 

MR. MARSDEN: Ladies and gentlemen of the jury, 
we are now going to turn to the issue of invalidity. I 
will apologize in advance that we are going to be moving 
through this very quickly. You will have these 
references with you in the jury room for your deliberations. 
Fortunately, many of the arguments relate to pictures or 
figures that are in the patents. So I think you will be 


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Page 1292 

able to find them relatively easily when you are in the 
jury room. 

But I do apologize in advance, because we have 
time limits and we are going to move through this material 
quite quickly this morning with Dr. Taylor. 

BY MR. MARSDEN: 

Q. Dr. Taylor, now turning to this question of 

invalidity of the asserted claims, do you have an opinion 

as to whether the asserted claims of the ArthroCare patents 

are invalid? 

A. Yes, I do. 

Q, What is your opinion? 

A. My opinion is that the claims are invalid 

Q. What is the basis for your opinion? 

A. The basis for my opinion is that there is prior art 

or prior information that was published prior to these 

patents that contains all the essential elements of the * 

claims. 

Q. Does that mean someone else did it first? 

A. Yes. That's another way of putting it 

Q. I think we also heard the term anticipation in 

this trial. Is that another word for this? 

A, That is another way of putting that. The prior 

art anticipates the claims that are asserted. 

Q. How do you determine for purposes of validity 


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1 whether someone else did it first? i | 

2 A. Essentially, you - I guess you can consider it to 2 

3 be an infringement analysis in reverse. Yesterday, I 3 

4 went through ail the difTerent elements of each of the 4 

5 claims, and described how the Smith & Nephew products did 5 

6 not infringe. In essence, what I did is an analysis in 6 

7 reverse, by the fact that I looked at ail the different 7 

8 prior art to see whether or not the prior art taught the 8 

9 various elements of the claims that are being asserted. 9 
10 Q. Did you consider what level of proof is required 10 

III to prove anticipation? I j 

12 A. Yes. I was looking for proof in the prior art that 1 1 2 

13 the prior art actually taught all the essential elements 13 

14 in a very highly probable, very clear and convincing 1 4 

15 manner, so it would be evident to me, someone that is 15 
116 skilled in the art, and evident to almost anybody that 16 
|17 the prior art taught that essential element 17 

118 Q. You mentioned there are several references that you 18 

119 relied on. What are those references? 19 

120 A. Actually, those references are shown right there on 20 
|21 that board. There are six references? 21 

122 If you take a look, since it is a timeline as 22 

123 well as a pictorial of the various references, you will 23 
24 see that the earliest date of the ArthroCare invention is 24 

|25 around 1993. Then there are six references going back |25 


Page 1295 

the board. Typically what we are doing is showing on the 
left-hand side the claims, and then the articles or 
patents that are applied on the right-hand side of the 
board. In this case, it is the Elsasser and Roos article, 
the Roos '198 patent, the Doss '007 patent and the Pao 
•499 patent. 

Q. Let's start with the Elsasser and Roos article then. 
If you could turn to DTX-59-A and 59-B in your notebook, 
can you identify those for the record? 
A. Okay. DTX-59A is the original German publication. 
DTX-59B is the English translation of that publication. 

MR. MARS DEN: Your Honor, I move the admission 
of DTX-59-A and 59-B. 

MR. BOBROW: NO objection, 

THE COURT: Thank you. 
**♦ (Defendant's Exhibits No. DTX-59-A and 59-B 
was received into evidence.) 
BY MR. MARSDEN: 

Q. Can you tell the jury first just generally what the 
Elsasser and Roos article describes and have you prepared 
a slide for this? 
A. Yes, I have. 

Gary, can I have that slide? 

Hie Elsasser and Roos article describes a 
bipolar electrosurgical device for the treatment of 


Page 1294 

1 in time. Dr. Manwaring's patent, which is in 1992, the I 1 

2 '138 patent 1987, the Pao '499 patent 1985, the ' 2 

3 Slager articles. 1983, the Doss '007 patent 1983 the 3 

4 Roos '198 patent And 1976 the Elsasser and Roos articles. 4 

5 Q. Let's turn first to your analysis of the '536, the 5 

6 fluid supply patent Can you first, maybe Ms. Prescott 6 

7 can assist us here. Do you have a board to discuss the 7 

8 '536 patent claims? I g 

9 A, Yes. That is the first board on the right of the 9 
J 10 board I just referenced. 10 

111 Q. With reference to that board can you remind the jury In 

112 which claims are at issue in the *536 patent? 12 

113 A. Yes. The claims that are at issue in the '536 13 
J 14 patent are the dependent Claims 46, 47 and 56. As I |14 
Il5 mentioned yesterday, in order to analyze those claims, 15 
Jl6 you have to first analyze the independent claim, which is 16 
Il7 Claim 45. 17 

18 Q. Let's start with Claim 45, then. Have you formed 18 

Jl9 an opinion as to the validity of Claim 45? 19 

|20 A. Yes, I have. 20 

J2I Q. What is that opinion? | 2 ] 

122 A. My opinion is that Claim 45 is invalid. 22 

j23 Q. What is the basis for your opinion? 23 

124 A. The basis for my opinion is that I analyzed the (24 

[25 prior art, the four articles that are referenced there on |25 


Page 1296 

prostate and bladder tissue, commonly known as the 
procedure of a T-U-R-P or a turp. 
Q. Now, have you performed an element-by-element 
comparison of the teachings of the Elsasser and Roos 
article to the asserted claims of the '536 patent? 
A. Yes; 

Q. Have you prepared any slides to assist you in 
illustrating to the jury what that analysis was? 
A. Yes, I do. There is a series of slides. 

Gary, if you can go to the next one? 

Essentially what I did here, as I mentioned 
before, I started with the independent Claim 45. The way 
these things are laid out, on the left-hand side of the 
screen we have the claim, and we will highlight the 
particular element that I was analyzing for that 
particular slide. 

On the right-hand side we will have a figure, * 
generally some text that is in the actual article, and 
generally at the top of that column will be the actual 
location of that text 

So in this case, the element that is being 
analyzed is the high-frequency power supply. The article 
specifically mentioned we connected the cutting loop and 
the neutral electrode to a high frequency surgical unit 
That element is satisfied. 


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J Q. Before you go any further, Dr. Taylor... 

2 MR. MARS DEN: Let me just tell the jury that 

3 these slides that you are seeing are demonstrative 

4 evidence and you will not have those in the jury room. 
If there is any information on these slides that you think 
is important or want to make a note of, you might want to 
do it as we go you. You will have the Elsasser and Roos 

8 article, but not these slides in the jury room. 

THE WITNESS: Actually, before I go through 

10 the next sequence, the resectroscope consists of four 

11 elements. There is an outer sheath which is generally 
where the irrigation comes in. There is a telescope. 
Mr. Sparks showed you an arthroscopy Basically the 

14 telescope is a longer version of that. It is an 

15 endoscope. 
There is a working element which is actually 

17 used to remove the cutting electrode, so it actually uses 

1 8 the working element, sort of a pistol grip mechanism, you 

1 9 move your thumb up and down, and that moves the electrode 
'20 And the electrode is shown right there, right at the tip. 

So we can go to the next overhead 
The next element there is an electrosurgical 

23 probe comprising a shaft having a proximal and distal end. 

24 That is highlighted there. The article specifically 
[25 mentions using a conventional resectroscope, which is what 


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electrically coupled to the electrosurgical supply. The 
return electrode is this little metal band here, and we 
have already mentioned that is coupled to the high- 
frequency surgical unit So that element is satisfied. 
Next 

The last element is an electrically conducting 
fluid supply directed at the target tissue, which allows 
current flow path between the return efectrode and the 
electrode terminal. The article specifically has quotes 
in it that indicates that that is the case. So that 
element is satisfied. 

Q. On Claim 45, to sum up, do you have an opinion as 
to whether Claim 45 of the '536 patent is anticipated by 
the Elsasser and Roos article? 
A. Yes, I have an opinion, and it is anticipated. 
Q. Can you move onto the next claim, please? 
Next. 

The next claim is a dependent claim, as I 
mentioned before. It requires that it satisfies all the 
elements of Claim 45. And additionally, the return 
electrode forms a portion of the electrosurgical shaft 
And that is the case, given the text there, indicating 
that the neutral electrode, which is another word for 
return electrode, is incorporated into the end of the 
resectroscope shaft So that element is satisfied. 


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Page 1298 

1 I just described to you. 

2 BY MR. MARSDEN: 
Q. Just to complete the process here - 
A. Katie - 1 am sorry, I ignored her. She is actually 
doing the checkmark, so you understand that each of the 
elements have been identified in the article, or patent 
Q. Thank you, 

8 A. So in this case, this element has been satisfied by 

9 this reference as part, this part of the article. 
Next, please. 

The next settlement is an electrode terminal 

12 disposed near the distal end. That is satisfied by the 

13 resectroscope's cutting loop. 

14 Q. It is there? 

15 A. Right there, right 

16 So that element is satisfied. 

17 Next A connector near the proximal end of 

1 8 the shaft electrically coupling the electrode terminal to 

19 the electrosurgical power supply. Actually, there is two 

20 connectors, the one that is shown is right there. There 

[21 is another one that you can't see that would be right 
about there. 

So that element is satisfied. 
Next 

The next element is a return electrode 


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Q. Do you have an opinion as to whether Claim 46 of 
'536 patent is anticipated by the Elsasser and Roos 
article? 

A. Yes, I do, and it is anticipated. 

Q. Did you consider the Elsasser and Roos article in 

connection with any other claims of the • 536 patent? , 

A. Yes. The next claim is Claim 47. Next, please. 

Q. That is Claim 56; correct? 

A. I am sorry. 56. 

And this claim, you have to have all the 
elements of Claim 45, plus you have to satisfy one of the 
target roots, which is body locations there, including 
the abdominal cavity, thoracic cavity, et cetera. The 
resectroscope is used in resections of the prostate or 
bladder, which is in the abdominal cavity. 
Q. Do you have an opinion as to whether Claim 56 of 
the '536 patent is anticipated by the Elsasser and Roos 
article? 

A. Yes, I do. And it is. 

Q. Thank you. We skipped over Claim 47. Are there 
other references that you discuss that anticipate Claim 
47? 

A. Yes, there are. 

Q. I think you have said you also relied on the Roos 
'198 patent; is that correct? 


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A. That's correct. 

Q. First of all, can you turn in your book to DTX-u 
and identify that, please? 
A. DTX-u is the Roos • 1 98 patent. 

MR. MARSDEN: Your Honor, I move the admission 
Of DTX-11. 

MR. BOBROW: No objection. 
THE COURT: Thank you. 
♦** (Defendant's Exhibit No. 1 1 was received into 
evidence.) 
BY MR. MARSDEN: 

Q. Dr. Taylor, have you prepared a slide to tell the 
J 3 jury what the Roos ' 1 98 patent is about? 
14 A. Yes, I have. 

Gary? Thank you. 

The Roos , 198 patent basically follows up oh 
the work that Doctors Elsasser and Roos did in their 

18 article and it's a bipolar electrosurgical device for the 

19 treatment of prostate and bladder tissue, commonly known 

20 asTURP. 

21 Q. What does TURP stand for? 
A. Transurethro resection of the prostate. 
Q Have you done an element-by-element comparison of 

|24 the teachings of the Roos *198 with the claims of the 
|25 *536 patent? 


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Claim 1, as described here in this text. 
So that element is satisfied. 
Next. 

It requires a return electrode electrically 
coupled to the generator. We already described that. The 
return electrode, or the neutral electrode is indicated by 
this yellow area. So that element is satisfied. 

Next 

It also requires an electrically conducting 
fluid supply, directed to the target site and generating 
current, flow path between the active and return electrode. 
That is diagramatically shown here in Figures 7 and 8 and 
also specifically called out in Claim 1 , basically the 
last line in Claim 1. So that element is satisfied. 
Q Just to pause on this one for a moment, that 
language that is quoted below the drawing comes from Claim 
1 of the Roos '198 patent? 
A. That's correct. 

Q. That is where you found support for the electrically 
conducted fluid limitation? 
A. Yes. 

Q. To sum up, on Claim 45, do you have an opinion, Dr. 
Taylor, as to whether Claim 45 of the '536 patent is 
anticipated by the Roos 1 1 98 patent? 
A. Yes, I do. And it is. 


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A. Yes, I have. 

Q. Have you prepared some slides to illustrate that? 
A. Yes, I have. Gary? 
Thank you. 

Using the same format that we have used in 
prior slides, a high-frequency power simply is indicated 
in the patent Column 7, Lines 5 through 7. It 

8 basically says the device is connected to a high-frequency 

9 generator, which is not shown in these figures. So that 
1 10 element is satisfied. 

II Next 

1 12 The next element is an electrosurgical probe 

113 having a shaft, a proximal and distal end. That is 
|14 diagramatically shown in Figures 7 and 8. That element 

115 is satisfied. 

116 Next The next element is an electrode terminal 

117 disposed near the distal end. The electrical terminal is 
18 basically the cutting loop. That is described in Column 6, 

119 lines 67 and 68 and also in these figures. So that element 
|20 is satisfied. 
21 Next 

|22 A connector, requires a connector, coupling 

123 the shaft to the electrosurgical power simply. 

124 And that element is satisfied by Figure 7 and 
|25 the text in Column 7, Lines 1 through 5. And also in 


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Page 1304 

Q. Did you look at the ' 198 patent to see if the '536 

patent is anticipated by the Roos ' 1 98 patent? 

A. Yes, I did. That's indicated in the next overhead 

Claims 46 is anticipated Claim 46 requires all the 

elements of Claim 45. Additionally, the return electrode 

forms a portion of the shaft of the probe and, as I 

previously indicated, my Figure 7 and Figure 8, that is 

the case. So that element is satisfied 

Q. Do you have an opinion as to whether Claim 46 of 

the *536 patent is anticipated by the Roos *198 patent? 

A. Yes, I do. And it is. 

Q. Did you look at any other claims of the *536? 
A. Yes, and the next overhead shows that Claim 47 
requires all the elements of Claim 46, which is dependent 
on Claim 45, and requires that you have an mshlaring 
member circumscribing the electrode. Insulating member 
is shown there. That is identified as 35. 

And is there an overhead? The next one, Gary? 

Go back. Go bade Sony. 

It also requires that return electrode is 
sufficiently spaced from the electrode terminal, between 
the return electrode and the patient's tissue. That's the 
case. So all the elements are satisfied 
Q Do you have an opinion as to whether Claim 47 of 


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the '536 patent is anticipated by the Roos ' 198 patent? 
A. Yes, I do. And it is. 

Q. Did you look at any other claims of the *536? 
A. Yes, and I guess I already tipped my hand here. I 
looked at Claim 56 and Claim 56 requires all the elements 
of Claim 45 and, in addition, it has to have a target site 
at the various locations indicated abdominal cavity, 
thoracic cavity, et cetera. Once again, this device is to 
be used for the resection of bladder and prostate tissue, 
and, therefore, satisfies that element. 
Q. Thank you, sir. 

Do you have an opinion as to whether Claim 56 
of the '536 patent is anticipated by the Roos '198 patent? 
A. Yes, I do, and it is. 

Q. I believe you also considered the Doss '007 in 
connection with the '536 patent; is that correct? 
A. That's correct. 

Q. Can you turn to DTX-17 in your book, please, and 
identify that? 

A. DTX-17 is a patent, the Doss '007 patent 

MR. MARSDEN: We move the admission of DTX-17, 

please. 

MR. BOBROW: No objection. 
THE COURT: Thank you. 
THE DEPUTY CLERK: So marked 


Thursday, May 8, 2003 


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Page 1307 

through 31. Therefore, that element is satisfied. 
Next 

The next element is an electrode terminal 
disposed near the distal end. And this is the active 
electrode or electrical terminal. It's described by the 
text indicated there and is shown in the red there. So 
that element is satisfied. 

Also, requires a connector connecting the 
electrode terminal to the electrosurgical power supply. 
The text indicated in Column 3, Lines 30 through 34, 
indicates that that is the case. So that element is 
satisfied. 

Next. 

Requires a return electrode electrically 
coupled to the electrosurgical power supply. This diagram 
shows the return electrode indicated highlighted in yellow. 
And it's specifically referenced in the text in Column 5, 
Lines 27 through 3 1 . Therefore, that element is satisfied 

Next 

The last element is an electrically conducting 
fluid supply for generating a current flow path between the 
return electrode and the electrode terminal. 

The blue indicates the flow of saline solution 
into the device. Trie text reference is here, Column 3, 
Lines 48 through 54. So that element is satisfied. 


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10 


Page 1306 

*** (Defendant's Exhibit No. 17 was received into 
evidence.). 

BY MR. MARSDEN: 

Q. Dr. Taylor, had you prepared a graphic to describe 
what the Doss '007 is about? 
A. Yes, I have. Thank you, Gary. 

The Doss '007 patent is a bipolar 
8 electrosurgical probe which includes an integrated supply 
of saline for the treatment of corneal tissue. 
Q. Have you done an element-by-element comparison of 
the teachings of the Doss '007 patent to the claims of 
12 the '536 patent? 
A. Yes I have. 

Q. Have you prepared slides to illustrate your opinions? 
15 A. Yes, I have. And, once again, looking at the claims 
of the patent, Claim 45 requires as one of the elements a 

17 high-frequency power supply. Column 3, Lines 29 to 38, 

18 specifically mentions a high-frequency power supply. 

19 Q. So that is element satisfied? 
A. That element is satisfied, sir. 

Moving to the next overhead, this element 

22 requires an electrosurgical probe, having a shaft having 

23 a proximal end and distal end. As you can see, there 

24 is a shaft, there is a distal and a proximal end. And 

25 that is described by the text, Column 5, Lines 27 to 


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Page 1308 

Q r Before you leave this, so the record is clear, was 
this coloring in the original figures? 
A. No, it was not. It was coloring that was added by 
me. \ 
Q. Was that to illustrate? 

A. That was basically to illustrate - we tried to be 
consistent, so blue is water. I guess blue looks like 
water; right? So that's what we used here. 
Q. Do you have an opinion, then, as to whether Claim 45 
of the '536 patent is anticipated by the Doss *007 patent? 
A. Yes,Ido. Anditis. 

Q. Did you consider the Doss reference in connection 
with any other claims of the '536 patent? 
A. Yes, and the next overhead shows that 

Basically, Claim 46, as I indicated before, 
requires that you have all the elements of Claim 45 and 
also that the return electrode forms a portion of the 4 
shaft of the electrosurgical probe. And that is indicated 
in Column 5, Lines 27 through 31. So that element is 
satisfied 

Q. Do you have an opinion as to whether Claim 46 of 
the '536 patent is anticipated by the Doss '007 patent? 
A. Yes, I do. Anditis. 

Q. And did you look at any other claims of the *536? 
A. Yes. The next overhead shows Claim 47 which, once 


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Page 1309 

1 again, requires that all the elements of-CIaim 46 and all I j 

2 the elements of Claim 45 are also satisfied And further 2 

3 that you have an insulating member circumscribing the 3 

4 return electrode, and that insulating member is the housing 4 

5 here which is shown in blew. 5 

6 Q. We just violating our color-coding? 6 

7 A. Yes, we did I'm wrong. Sorry. 7 

8 I think the next one, next overhead shows the 8 

9 return electrode once again in yellow. And so the elements 9 

1 10 of this claim are also satisfied. jn 

111 Q. Do you have an opinion as to whether Claim 47 of II 

112 the '536 patent is anticipated by the Doss '007 patent? 12 

1 13 A. Yes, I do. And it is. 13 

14 Q. Did you look at any other claims of the '536? 14 

15 A. Yes, I did J5 
116 And the next overhead Oops. 16 

17 Q. Actually, maybe that is it on Doss. 17 

18 A. That may be it on Doss. I'm sorry. 18 

19 Q. Sorry. Okay. You mentioned also the Paul (phonetic) 19 
1 20 or Pao '449 patent. Did you consider that in your 20 
J21 analysis of the *536 patent? 21 

22 A. Yes, I did 22 

23 Q. Can you turn to - find the right exhibit number. 23 
|24 I'm ahead of myself. 24 
|25 A. I think it's DTX-21. 25 


Thursday, May 8, 2003 


Page 1311 

bipolar power supply. So that element is anticipated or 
satisfied. Sorry. 

The next element is electrosurgical probe 
comprising a shaft having a proximal end and a distal 
end. This is the distal end. I guess you consider the 
handle to be the proximal end and that specifically 
references in Column 7, Lines 6 to 9 and 13 to 30. So 
that element is satisfied. 

The next element is an electrode terminal 
disposed near the distal end. That is the active 
electrode shown in red here and described in the text in 
Column 7, lines 15 to 19. So that element is satisfied. 

Next element is a connector near the proximal 
end of the shaft. Connector is shown in green here. 
Those little two pins. Referred to in the text, Column 
7, Lines 13 to 19. And that is satisfied 

Next 

The return electrode is shown in yellow. It's 
the outer electrode. And the text reference is Column 7, 
Lines 13 to 19 and 25 to 37. So that element is satisfied 

And, lastly, an electrically conducting fluid 
supply. The fluid supply comes in through this connector 
and flows down the lumen of the inner electrode of the 
active electrode, that is described in this text reference. 
So that element is satisfied 


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. Page 1310 
Q. Yes. DTX-21 in your notebook. Can you identify 
that, please? 

A. Yes. This is the Pao '449 patent 

MR. MARSDEN: Move the admission of DTX-2 1, 
your Honor. 

MR. BOBROW: No objection. 
THE COURT: Thank you. 
** * (Defendant's Exhibit No. 2 1 was received into 
evidence.) 

BY MR. MARSDEN: 

111 Q. Have you prepared a summary slide? Can you describe 

112 to the jury the Pao '449 patent? 

113 A. Yes. The Pao '499 patent describes a bipolar 

1 14 electrosurgical probe with an integrated saline supply 

115 for the treatment of eyes, ears, noses and other 

1 16 microsurgical applications. 

117 Q. Have you prepared or did you conduct an element-by- 

1 18 element comparison of the teachings of the Pao '499 patent 

119 with the claims of the '536 patent? 
20 A. Yes, I have. 

|21 Q. Did you prepare slides to illustrate that? 

22 A. Yes, the next one starts off the sequence. Once 
123 again, the high-frequency power supply is referenced in 

24 the Pao patent in Columns 7, Lines 35/36, basically 
[25 saying connected to the output of a high-frequency 


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Page 1312 

Q. Is that also described in the text as an electrolytic 
irrigating fluid such as saline? 
A. Yes, it is. 

Q. Do you then have an opinion as to whether Claim 45 

of the '536 patent is anticipated by the Pao '499 patent? 

A. Yes, I have an opinion. And it is anticipated 

Q. Did you compare the Pao '499 patent teachings to any 

claims of the '536 patent? 

A. Yes, I did. Next slide, please. 

Claim 46 requires all the elements of Claim 45 
along with return electrode forms a portion of the shaft. 
And, as I previously indicated, that is the case of the 
return electrode, as shown here in yellow. 
Q So did you have an opinion as to whether Claim 46 
of the '536 patent is anticipated by the Pao '499 patent? 
A. Yes, I have; And it is. 

Q. Did you consider any other claims? * 
A, Yes. 

Next overhead, please. 

Claim 56 requires the elements of Claim 45, 
along with one of the body parts indicated in the list 
here, and this particular patent specifically mentions 
nasal passages and ear canals. So that element is 
satisfied. 

Q. So do you have an opinion as to whether Claim 56 of 


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Page 1313 

the '536 patent is anticipated by the Pao '499 patent? 
A. Yes, I do. And it is. 

Q. I think that concludes our discussion of the '536 
patent 

A. I believe so. 
Q. Okay. Can we turn now ~ 
A. I think we've done pretty well. 
Q. We'll turn now to the '882 patent. And did you 
prepare a board for the '882 patent? 
A. Yes, I did. 

Q. This is the compilation of multi-electrode patent? 
: A. Yes. 

Q. First, with reference to the board, can you remind 
the jury which claims you analyzed for the '882 patent? 
A. Well, the asserted claims are Claims 13, 17 and 54, 
but they require that you further analyze or consider ' 
first Claim 1. So I basically considered four claims. 
Q. Do you have any opinion as to whether the asserted 
claims of the '882 patent are invalid? 
A. Yes, I do. 
Q. What is that opinion? 
A. That opinion is they're invalid. 
Q. What is the basis for your opinion? 
A. My basis for the opinion is there are two 
references, the Slager article and the Manwaring ' 1 38 


Thursday, May 8, 2003 

Page 1315 

electrode in close proximity to the target site in the 
presence of an electrically conducting fluid. 
Electrically conducting fluid is here, the tissue is here. 
The active electrode has been positioned close to the 
target site and the last step is applying a high-frequency 
voltage between the electrode terminal and the return 
electrode in such a manner you vaporize the fluid and 

8 that you induce a spark, discharge of energy to the 

9 target site. And that is indicated here by the cross- 

10 hatched yellow. So all the elements of this have been 

11 satisfied. 

12 Q. Did you also hear Dr. Manwaring's testimony about 

13 this element when he was here testifying earlier this 

14 week? 

15 A. Yes, I did. 

Q. Does that support your conclusion? 
A, Yes, it does. 

Q. Do you have an opinion of whether Claim 1 of the 
•882 patent is anticipated by the Manwaring '138 patent? 
A. Yes, my opinion is that it is. 
Q. You also mentioned I think that this is a monopolar 
device? 
A. Right. 

Q. Were you here when Mr. Eggers testified about this 
claim? 


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Page 1314 

patent, that anticipates those claims. 
Q. Were you here earlier this week when Dr. Manwaring 
testified? 
A. Yes. 

Q. Did you hear Dr. Manwaring'S testimony that the '138 
patent discloses all the limitations of Claims 1, 13, and 
54 of the '882 patent? 
A. Yes, I did 

Q. Do you agree with his analysis? 
A. Yes, I do. 

Q. Have your made your own element*by-element analysis? 
A. Yes, I have. 

Q. Have you prepared slides to illustrate that? 
A. Yes. And, Gary, the next sequence. 

Here we have what we call a rainbow slide, and 
it basically shows, this is the method patent Ihope 

17 everyone realizes this is a method patent It basically 

18 outlines the steps required to perform the method, and 

19 the first step is providing an electrode terminal, which 

20 is shown here in red, and a return electrode electrically 
coupled to a high-frequency voltage source. Dr. Manwaring 
specifically mentioned in his testimony that the return 
electrode is on the outside of the patient This is 
monopolar electrosurgery. So that is step number one. 

Step number two is positioning the active 


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ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1316 

A. Yes. 

Q. And did you hear bis testimony that this claim would 
cover a monopolar device? 
A. Yes. 

Q. Did you consider the Manwaring '138 patent in 
connection with any other claims of the '882 patent? 
A. Yes. Can we go to the next slide? 

Claim 13 requires that you practice the steps 
of Claim 1, but also that a portion of the energy is 
induced basically in the form of protons. 

Dr. Manwaring basically mentioned that when you 
have RF sparking, which is actually referenced in the text 
in Column 6, Lines 50 to 63, that you generate protons as 
well as other photons. 

Q. Do you have an opinion as to whether Claim 13 of the 
'882 patent is anticipated by the Manwaring 1 138 patent? 
A. Yes, I do and it is. ♦ 
Q. Did you consider any other claims of the 1 882 patent? 
A. Yes. Next, please. 

Claim 54 requires method of claims, Claim 1, 
and further basically suctioning fluid from the target site 

or having a suction lumen to be able to do that 

The text in the patent Column 7, Lines 26 to 
31, indicates that there is an embodiment of bis invention 
that does that 

Page 1313 -Page 1316 


Jury Trial -VolmncG Condenselt™ 

Page 1317 

MR. MARS DEN: rm sorry. Could you all see 
that, the bottom of the slide? 

JUROR NO. 4: Yes. 
BY MR. MARSDEN: 
Q. Is that here in the text? 
A. Yes. 

Q. Do you have an opinion as to whether Claim 54 of the 
•882 patent is anticipated by the Manwaring '138 patent? 
A. Yes, I do and it is. 

Q. I think you indicated you also considered another 
reference in connection with the '882 patent; is that 
correct? 

A. That's right Excuse me. That's correct 
Q. Could you first turn to dtx-65 in your notebook and 
identify that, please? 
J 16 A. DTX-65 is an article written by Slager regarding 
117 vaporization of tissue by spark. 


*** 


MR. MARSDEN: Move the admission of DTX-65. 
MR. BOBROW: No objection. 
THE COURT: Thank you. 
the DEPUTY CLERK: So marked 
(Defendant's Exhibit No. 65 was received into 

evidence.) 
BY MR. MARSDEN: 
125 Q. Have you prepared a summary slide to described what 

Page 1318 

1 the Slager article teaches? 

2 A. Yes, I have. 

3 Q. Gary is improvising here for us. 

4 A. Okay. Basically, this article describes an 

5 electrosurgical probe for vaporizing arterial tissue. 

6 Q. Have you performed an element - thank you, Gary. 

7 Have you performed an element-by-element 

8 analysis of the teachings of the Slager ~ comparing the 

9 teachings of the Slager article to the claims of the '882 
I JO patent? 

II A Yes, I have. 

J 12 Q. Have you prepared some slides to illustrate your 
113 opinions? 
14 A, Yes, I have. 

115 MR. MARSDEN: Give Gary a second here. 

J 16 THE WITNESS: okay. Once again, the very 

J17 steps for forming this, this method were outlined on 

118 the left and the first step is providing an electrode 

119 terminal, shown here, coupled to a generator. And that 

120 is shown by the diagram as well as the text here. So this 

121 element or step is satisfied. 

122 Next one is positioning the electrode terminal 
23 in close proximity to the target site in the presence of 

124 an electrically conducting fluid. That is described in 
\25 the article at Pages 1383 and 1384. Basically, the spark 


Thursday, May 8, 20 03 

Page 1319 

electrode with that surface area, immersed in saline. So 
that element is satisfied. 

The next element is applying high-frequency 
voltage to vaporize the fluid and to induce the discharge 
of energy and sparking. And that is very aptly described 

6 in this particular diagram. We have the electrode, we have 

7 steam, we have spark, we've got tissue. So that element is 

8 satisfied. 

9 BY MR. MARSDEN: 

10 Q. I'm sorry. Before you leave that slide, do you have 

1 1 an opinion as to whether Claim 1 of the '882 patent is 

12 anticipated by the Slager article? 

13 A. Yes, I do. And it is. 

14 Gary, the next slide. Sorry. 

15 The next claim is Claim 13. This claim 

1 6 requires practice, method of Claim 1 and also, you have 

17 protons. And, as I described in the prior reference, 

18 sparks generate protons and this article specifically 

19 mentions sparks jumping. I should say sparks in aqueous 

10 solution, making protons. 

11 Q. Do you have an opinion, then, as to whether Claim 13 
!2 of the '882 patent is anticipated by the Slager article? 
t3 A Yes, I do. And it is. 

!4 Q. Did you consider any other claims of the '882 patent? 
A Yes. Next 

Page 1320 
Claim 1 7 requires practicing the method of 
Claim 1 , additionally having at least 200 volts, high- 
frequency voltage. The reference on Page 1383 
specifically mentions 1200 volts at that frequency. So 
that element is satisfied. 

Q. Do you have an opinion as whether Claim 17 of the 
'882 patent is anticipated by the Slager article? 
A. Yes, I do. And it is. 

Q. Did you consider any other claims of the *882 patent? 

10 A Yes. Next 

11 Claim 54 requires the method of Claim 1 as 

12 well as basically having the ability to suction at the 

13 target site. And the reference in page 1386 specifically 

14 mentions being able to suction the gas bubbles. So that 

15 element is satisfied. 

16 Q. Thank you. Dr. Taylor, do you have an opinion as 

17 towtetheraaim54ofthe^ 

18 the Slager article? 

19 A Yes,Ido. Anditis. 

20 Q. Did you hear any testimony here at trial, during 

21 trial, that supports or confirms your opinions of 
1 22 anticipation of the claims of the *882 patent? 

23 A Yes. 

24 Q. Did you see DTX-600, the manual of operations for 

25 System 970 during this trial? 


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A. Oh, yes. It's not here, is it? j 

Q. I think we can call it up for you. 2 

MR. MARS DEN: Gary, can you call up DTX-600 3 

please? 4 

MR. BOBROW: Your Honor, before we get into 5 

this, I believe this is beyond the scope. I don't believe 6 

there is any opinion that this witness has offered in his 7 

expert report about the relationship between claims and 8 

the 970 operator's manual. 9 

MR. mars DEN: Your Honor, his expert report j o 

111 referred to the 510-K which included the manual and, of 11 

12 course, also reserved the right to address any evidence 12 

13 as it came up at trial. But he expressly referred to the 13 

14 510-K in his expert report and the 510-K has included, as 14 
1 15 part of the submission, this manual. 15 

THE COURT: Well, I guess the point is if the 16 

analysis he intend to give today wasn't included in his 17 

report, it doesn't come in today. Ig 

MR. MARSDEN: Your Honor, I believe it is. I 19 

can hand up his report. 20 

(Documents passed forward.) 2 1 

MR. BOBROW: What page? 22 

MS. MacFERRIN: Page 11. 23 

MR. BOBROW: Your Honor, there is a reference 24 

| 25 there to the 970, but this is the question of enablement. 25 


Thursday, May 8, 2003 

Page 1323 


Page 1322 

It has nothing to do with the question of anticipation. 
Right now, what the witness is trying to do is show that 
this is in some way anticipated, not on a question of 
enablement. I believe it's clearly beyond the scope. 

MR. MARSDEN: We will be relying on it for 
both issues and we will be address the nonenablement issue 
next 

THE COURT: I don't see that it's 1 don't 
see in the report if it's limited to enablement So I'll 
allow the testimony. 

MR. MARSDEN: Thank you, your Honor. 

Gary, could you pull up Page 14, please? 


BY MR. MARSDEN: 

Q. Were you in court when I asked Mr. Baker about this 
description of the principle of operation of the System 
970? 

A. Yes, I was. 

MR. MARSDEN: if you could blow up the first 
paragraph, please, Gary... 
BY MR. MARSDEN: 

Q. Do you have any opinion as to whether ArthroCare's 
description of the mode of operation or the principle of 
operation of its System 970 is consistent with the 
opinion that you have offered here in court in this 
morning? 

A. Yes. Essentially, the opinion that I have, I think 

what is confirmed here in the text, is that the system 

operates in the same manner as a conventional 

electrosurgical system, use of arcing and such, that is 

described by what is known as prior art, stuff that has 

been known for a long time. 

Q. Thank you, Dr. Taylor. Do you have any other 

opinions regarding the validity of the '882 other than 

anticipation, which we have discussed? 

A. When you say other opinions, could you be more 

specific? 


Page 1324 

Q. Right Do you have any other basis for believing 
that the Claims of the '882 patent are invalid? 
A. I am sorry, I am blanking on this. 
Q. Sure. 

A. When you say other opinions, do you mean other facts? 
Q. Do you understand that ArthroCare contends that what 
is taught in the '882 patent is a new phenomenon? 
A. I see what you mean. No, it is not a new phenomenon. 
It's been anticipated, it's been described in the prior 
art 

Q. If, in fact, it is a new phenomenon, do you believe 
there is an additional basis for the '882 patent to be 
found invalid? 

A. Yes. One of the concerns I have; -I think I 
expressed this yesterday - is that if the '882 patent is 
found to be invalid, then a large number of the devices 
that I have developed and, for that matter, a large number 
of the devices that have been developed in electrosurgery 

19 will infringe, because of the fact that what they are 

20 claiming is extremely broad. 

21 Q. Does the '882 patent teach anything about how to 

22 achieve a new phenomenon that is different than the 

23 principle of operation of conventional electrosurgical 

24 devices? 


- |25 A. No, it doesn't I wa s perplexed and, frankly, am 

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Page 1325 

still perplexed about the overall phenomenon of Coblation. 

> Q. And is that defense also sometimes called 
nonenablement? 
A. Yes, it is. 

Q. Do you have an opinion as to whether the claims of 
the '882 patent are enabled to the extent it claims a new 
phenomenon? 
A. Yes, I have an opinion. 
Q. What is that opinion? 
A. That it is not. 
Q. Thank you. 

Let's turn, then, to the '592 patent, the last 
of the three patents. 

Can you first locate the '592 patent in your 

binder? 

I misspoke. I got ahead of myself . Have you 
prepared a board for the '592 patent? 
A. . Yes, I have. 

Q. And first, can you remind the jury what claims are 
at issue in connection with the '592 patent? 
A. Yes. There are actually two sets of claims. The 
first set is shown on the board It's on the easel. The 
second set Katie is holding. The first set, the 
independent claim is Claim 1 and the dependent claims are 
3,4, 11 and 21. The second set of claims, the independent 


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element is satisfied. 

As I mentioned, it has to be done in the 
presence of electrically conductive fluid And the inlet 
for that fluid is shown here. The fluid path is shown in 
the blue. So that element is satisfied. 

The next element or next step is positioning 
a return electrode such that a return electrode is not in 
contact with the body structure, and generate a current 
flow path between the active electrode and electrode 
terrninal and the return electrode The return electrode 
is shown here in the yellow, as you can see, the eye is 
down here. It is not in contact with the eye. That is 
described in the text, in Column 5, Lines 27 to 3 1, and 
also Column 3. 

Q. You see a series of these illustrations. Can you 
tell us what the relationship is of Figure 7 and Figure 8 
is? 

A. Sure. Figure 7 is a side view, sort of a 
cross-sectional side-view, of the device. And you see 
here the active electrode, the return electrode, fluid 
inlet path - actually, the fluid inlet path goes this way 
and comes out that way. And then Figure 8 is an end view, 
if you will, of the probe, and it shows, you go from 
outside to in. The housing, insulation, lumen, return 
electrode, insulation, active electrode, and then the 


Page 1326 

claim is Claim 23. The dependent claims are 26, 27, 32 
and 42. 

Q. Let's start with the first set of claims first 
Have you performed any analysis or reached any conclusions 
as to whether those claims are valid? 
A. Yes, I have. 
Q. What is your opinion? 
A. My opinion is they are not 
Q. Why not? 

A. They are anticipated in this first set of claims by 
Doss '007, and as indicated there. 
Q. Have you prepared a series of -first of all, have 
you done an dement-by-element comparison of the teachings 
of the Doss '007 patent to the asserted claims we have up 
on the board of the '592 patent? 
A. Yes, I have. 

Q. Have you prepared some slides to illustrate that? 
A. Yes. 

Gary. 

This particular patent, Claim 1, also has three 
steps. The first step is positioning an electrode terminal 
into at least close proximity with the target site. The 
Doss '007 patent, the active electrode is shown in the red 
here, described in the text there. This has to be done in 
the presence of electrically c onductive fluid. So that 
AxthroCaxc v. Smith & Nephew, CA No. 01-504 (SLR) 


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Page 1328 

lumen for that 

Q. Thankyou. Can you proceed, please? 

So moving cm, that step of the method is 
satisfied 

Lastly, you have to apply a high-frequency 
voltage to the electrode terminal between the electrode 
terminal and return electrode to generate a current flow 
path. And that is specifically mentioned in Column 3 and 
Columns. That basically describes that reference. So 
that element is satisfied. 

Q. Do you have an opinion, then, as to whether Claim 1 
of the '592 patent is anticipated by the teachings of the 
Doss '007 patent? 
A. Yes, I do. And it is. 

Q Did you compare the Doss '007 patent to any other 
claims? 

A. Yes! * 4 
Next. 

Claim 3 requires the method of Claim l,and 
additionally, immersing the target site within a volume 
of electrically conductive fluid. 

As I mentioned, the fluid flow path is here. 
Basically, there is a dam that prevents the fluid from 
leaking out past the cornea. 

The cornea is immersed in electrically 

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Page 1329 

1 conductive fluid. And that is satisfied. | I 

2 Q. Do you have an opinion as to whether Claim 3 of the 2 

3 '592 patent suspect anticipated by the teachings of the 3 

4 Doss '007 patent? 4 

5 A. Yes, I do. And it is. I 5 

6 Q. Did you look at other claims? 6 

7 A. Next, Gary. 7 

8 The next claim is Claim 4, which requires the 8 

9 method of Claim 1, and additionally delivering electrically 9 

1 10 conductive fluid to the target site. I think I have already 10 

1 1 1 described that that is satisfied. 1 1 

12 Q. Do you have an opinion as to whether Claim 4 of the 12 

13 '592 patent is anticipated by the Doss '007 patent? 1 3 

14 A. Yes, it is. 14 
115 Q. Did you look at other claims? 15 

16 A. Next. Claim 11 requires the method of Claim 1. 16 

17 Additionally, that the electrically conductive fluid be 17 
Jl8 isotonic saline. There is a reference in the text, Column 18 

19 3, Lines 65 and 66, that basically says the fluid should 1 9 

120 be preferably isotonic saline. 20 

121 Q. Do you have an opinion as to whether Claim 1 1 of 21 
J22 the '592 is anticipated by the Doss '007 patent? 22 

123 A. Yes, I do. And it is. 23 

124 Q. Did you look at any other claims of the '592 patent 24 
|25 in connection with Doss? 25 


Page 1331 

Q. Did you do an element-by-element comparison of the 
teachings of the Slager article to the additional asserted 
claims of the '592 patent? 
A. Yes, I did. 

Q. Did you prepare some slides to show that? 
A. Yes. As I mentioned before, the dependent claims, 
26, 27, 32 and 42 are dependent on Claim 23. So I 
started with Claim 23. And Claim 23 requires contacting, 
as its first step, contacting an active electrode with 
the body structure in the presence of electrically 
conductive fluid. That is shown here in the diagram. 
It's on Page 1383 of the article. 
Next 

Q. Is that element satisfied? 
A. Yes. I am sorry. That element was satisfied. 
Actually, it gets satisfied here. 

Part of the remainder of that element is in 
the presence of electrically conductive fluid. On Page 
1383 the article mentions it's immersed in saline solution. 
The rest is the return electrode away from the body 
structure in the presence of electrically conductive 
fluid. The article specifically mentions that the 
electrode is immersed in saline solution. So that element 
is satisfied. 

Next. Maybe you can highlight the last 


Page 1330 

1 A. Yes. I ! 

2 Next 2 

3 That is Claim 21, which requires the method of 3 

4 Claim 1 and additionally that the voltage be in the range 4 

5 of 500 to 1400 volts peak to peak. 5 

6 And Column 3, Lines 34 to 38, specifically j 6 

7 mention voltage of 20 to 200 volts RMS. The conversion 7 

8 factor on a waveform for both RMS and peak to peak is 8 

9 2.83. When you do the arithmetic, it's 560 volts max. 9 
1 10 So that claim is satisfied. 1 10 

11 Q. Do you have an opinion as to whether Claim 21 of 11 

12 the '592 patent is anticipated by the Doss '007 patent? 12 
Jl3 A. Yes, I do. And it is. 13 

14 Q. Are we done with this board? 1 14 

15 A. I think we are done with this set of claims, yes. 15 
Ji6 Q. We will move to the last board, please. 16 

17 Did you perform an analysis of whether the 17 

118 additional claims, asserted claims ofthe f 592 patent, 118 

119 are valid? 19 
20 a. Yes, I have. 20 
J21 Q. What is your conclusion? 21 
J22 a. My conclusion is they are not 22 

23 Q. Why not? 23 

24 a. Based on the prior art of the Slager article, they 24 
[25 are not They are anticipated. |25 


Page 1332 

paragraph there on the left-hand side. Regardless, the 
next step is applying a high-frequency voltage between the 
active electrode and the return electrode such that the 
electrical current flows from the active to the return 
electrode, using the electrically conductive path. That 
is shown here diagramatically with the electrode and the 
steam layer and so forth. 

So that element is satisfied. 
Q. Do you have an opinion as to whether Claim 23 of the 
'592 is anticipated by the teachings of the Slager article? 
A. Yes, I do. And it is. 

Q. Let's move on. Did you consider additional claims 
that are dependent on Claim 23? 
A. Yes, And if we go to Claim 26, and this claim 
requires the method of Claim 23 and, in addition, immersing 
the target site within a volume of electrically conductive 
fluid, so forth and so on, it is indicated on the left- * 
hand side. The article describes on Page 1 383 that the 
aortic segment and return electrode were immersed in 
saline solution, and sparking occurred So that element 
is satisfied. 

Q. Do you have an opinion as to whether Claim 26 of the 
•592 patent is anticipated by the teachings of the Slager 
article? 

A. Yes, I do, and it is. 


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Page 1333 

Q. Can you continue? 

A. The next claim is Claim 27. Claim 27 requires the 
method of Claim 23. Additionally, delivering the 
electrically conductive fluid to the target site. And 
that had to happen, as referenced on Page 1383 of the 
article. 

Q. Do you have an opinion as to whether Claim 27 of the 
'592 is anticipated by the teachings of the Slager article? 
A. Yes, I do. And it is. 
Q. Did you consider other claims? 
A. Yes. Claim 32 requires the method of Claim 23 and, 
additionally, that the electrically conductive fluid 
consists of isotonic saline. The article specifically 
references on Page 1383 return electrode immersed in 
saline, 0.9 percent That is the definition of isotonic 

116 saline. 

117 Q. Doyouhave anopmionasto\vhetherClaim32ofthe 

1 8 *592 is anticipated by the Slager article? 

19 A. Yes, I do. And it is. 

20 Q. Arid did you consider Qaim 42 of the '592 patent? 

21 A. Yes, I did. Claim 42 requires the method of Claim 

22 23, wherein the voltage is in the range of 500 to 1400 

23 volts peak to peak. And at Page 1383 of the Slager 
|24 article, they specifically mention that the voltage is 
[25 1200 volts peak to peak. So that is satisfied. 


Thursday, May 8. 2001 

{ Page 1335 

2 (Court resumed after the recess, and the 

3 following occurred without the presence of the jury.) 
4 

5 THE COURT: Let*s bring the jury in. 

6 MR. MARSDEN: Your Honor, while we are waiting 

7 for the jury, we have made a request to the other side, 

8 but we will make it directly to the Court Now that these 

9 prior-art references have been admitted, there are only 

0 six of them, they are about a quarter of an inch, we would 

1 like permission to add them to the jurors' binders so they 

12 have the patents and the six references. 

13 THE COURT: No, I don't think we will do that 

14 Thank you. They will have them in the jury room 

1 5 mr. MARSDEN: I thought for the convenience, 

16 and the jury understanding they weren't there. There is 

17 no argument 

18 THE COURT: I have never done that 

19 MR. HEBERT: Your Honor, if we have another 
1 20 minute... 
21 


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Page 1334 

Q. Thank you, Dr. Taylor. 

So do you have an opinion as to whether Claim 
42 of the 9 592 patent is anticipated by the Slager article? 
A. Yes, I do. And it is. 

MR. MARSDEN: Thank you very much, Dr. Taylor. 
I have no further questions. 

THE COURT: All right Why don't we take a 
15-minute break before we go into cross^amination? 
(At this point the jury then left the 

10 courtroom.) 

1 1 (Short recess taken.) 


There is an issue with Mr. Raffle's testimony, 
22 which will be the next witness. 
[23 THE COURT: I don't think we do. 

24 MR. HEBERT: Okay. 

& THE COURT: ifaejurors ' lunches are here, so 

Page 1336 


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1 we can take an early lunch and discuss Mr. Raffle as soon 

2 as this witness is done. 

3 MR. HEBERT: I think it is only a two-minute 

4 issue, your Honor. 

5 (At this point the jury entered the courtroom 

6 and took their seats in the box.) 

7 TOE COURT: All right Mr. Bobrow. 

8 MR. BOBROW: Thank you, your Honor. Good 

9 morning, ladies and gentlemen. 

10 CROSS-EXAMINATION 

11 BYMR. BOBROW: 

12 Q. Good morning, Dr. Taylor. 

13 A. Good morning. 

14 Q. Let me ask you, first of all, a couple of questions 

15 about die re^amination of the '536 patent You are 

16 aware that the '536 patent is in re^amination right now; is 

17 thatright? 4 

18 A. Yes. 

19 Q. And you are aware that the Patent Office has issued 

20 a notice of intent to issue a re-exarnination certificate. 

21 Is that true? 

22 A. Yes. 

[23 Q. And you are aware, are you not, that in connection 
24 with that re^arnination proceeding, that the Patent Office 
1 25 considered the Roos M98 patent? 


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A. Yes. 

Q. And you read in the file wrapper for the 
re-examination proceeding that there was a board that was 
convened, that three examiners looked at the Roos '198 
patent; correct? 
A. Yes. 

Q. And notwithstanding that, the Patent Office issued 
a notice of intent to issue a re-examination certificate, 
confirming the patentability of the '536 patent over the 
Roos '198 patent; is that right? 
A. I am aware of the notice of intent to issue -- what 
did you call it again? 
Q. A re-examination certificate? 
A. A re-examination certificate. I also understand ~ 
and you can correct me if I am wrong - it's not over 
until it's over. And the certificate hasn't been issued 

yet 

Q. The certificate has not been issued yet But you 
are aware that the Patent Office wrote in an office action 
that the claims of the '536 are patentable over the Roos 
'198 patent, and that that was an office action that was - 
was the result of a board of three examiners that had 
convened to look at the issue; correct? 
A. I am aware of that. 

MR. BOBROW: May I appro ach, your Honor? 

Page 1338 

THE COURT: Yes, you may. 
BY MR. BOBROW: 

Q. I have handed you PX-7. And PX-7 is the file 
history for the re-examination of the '536 patent You 
have looked at at least portions of PX-7 before, have you I 
not? 

A. I have looked at the file history of '536, which is 
this document Is that what you are saying? 
Q. You have looked at the Tile history for the 
reexamination of the '536? 
A. Some parts of the file history of the '536 patent. 
Q. Including parts of the re-examination; is that right? 
A. Including parts of the re-examination, yes. 
Q. And you considered that information in connection 
with forming your opinions and giving your testimony; 
correct? 
A. I did. 

MR. BOBROW: Your Honor, at this time I move 
PX-7 into evidence. 

MR. MARSDEN: No objection, your Honor, 
*** (Plaintiff's Exhibit No. 7 was received into 
evidence.) 
BY MR. BOBROW: 

Q. Now, I would like to shift gears a little bit I 
wanted to ask you some questions about electrically 


Thursday, May 8, 2003 


Page 1339 

conducting fluids. AH right? 
A. Yes. 

Q- Now, one fluid that is an electrically conducting 
fluid is saline; correct? 
A. Yes. 

Q. And another one is Ringer's lactate; correct? 
A. Or lactate of Ringer's, yes. 
Q. Now, there are also fluids that are used in 
electrosurgery that are electrically nonconducting fluids; 
correct? 
A. Yes. 

Q. And glycine is one of those electrically 
nonconducting fluids; correct? 
A. Yes. 

Q. And although glycine is called an electrically 
nonconducting fluid, it nonetheless does conduct 
electricity, does it not? 
A. Yes. 

Q. And, in fact, glycine is a fluid that is commonly 
[20 used in a procedure that you called a T-U-R-P procedure; 
21 correct? 

A. It's commonly used. It's not the only fluid. But, 
yes, yes, it's commonly used. 

Q. In fact, glycine conventionally has been used by 
doctors for the T-U-R procedure in the prostate; right? 


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A. Can you repeat the question again? 

Q. Yes. I was saying that glycine conventionally has 

been the fluid that doctors have used in performing a 

TURP procedure, using electrosurgery? 

A. Yes. 

Q. Now, you had mentioned before that in using an 
electrically nonconductive fluid like glycine it will 
nonetheless conduct electricity when you put an 
electrosurgical instrument into that glycine; right? 
A. Yes. 

Q. Now, you had said on direct examination, you had 
mentioned a patent to reduce, the Roos ' 1 98 patent Do 
you recall that? 
A. Yes. 

Q. Now, the Roos ? 198 patent described a device or 
devices that were to be used in TURP procedures; is that 
right? 4 

A. Yes. However, you have to keep in mind that when 
you reference TURP procedures, the way it's most often 
done is with a monopolar electrosurgical probe, and the 
Roos patent is a bipolar electrosurgical probe, and it 
does make a difference. 


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Q. Well, the Roos patent doesn't just talk about bipolar 
probes, does it? 

A. But the configurations we were describing in my direct 
testimony were bipolar. 
Q. That wasn't the question I asked you. 
A. I just wanted to explain. 

Q. Fair enough. The Roos '198 patent also discusses 
monopolar uses for TRUP procedures; is that correct? 
A. Yes, it does. Sorry. 

MR. BOBROW: Why don't we put DTX-n on the 
J 1 2 screen, please? DTX-i l is the • 1 98 patent And let's go 
13 to Column 1. 
(14 BY MR. BOBROW: 

15 Q. DTX-i I is also in your binder if you care to look at 

16 it, but in Column 1 of the '198 patent, if you take a look 

1 17 at around line 35 when it's discussing the background of 

1 18 the invention... 

1 19 A. This binder? I'm sorry. Okay. Yes. Column 1. 
J20 Q. And if you take a look at line 35, it references a 
121 neutral electrode applied externally to the patient's 
22 body. 

(23 Do you see that? 

24 A. Yes. 

1 25 Q. And so by reference to a neutral electrode applied 


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Page 1342 

1 externally to the patient's body, here in this paragraph 

2 it's describing monopolar electrosurgery; correct? 
A. Yes. 

Q. And if you go down further to about Lines 52 through 
56, there is a discussion there about washing water. 

Do you see that? It's line 54 refers to washing 

water. 
A. Yes. 

Q Now, it mentions here that there is some current 

110 flows from the cutting loop via the washing water directly 

111 to the metal parts of the endoscope shaft located in the 

112 washing water flow and from there to the engaging tissue. 
|13 Do you see that? 

14 A. Yes. 

|I5 Q. Now, given that this is a monopolar electrosurgical 
|16 setup, you would agree with me, would you not, that the 

117 washing water that is being described here is dther 

1 18 glycine or some other electrically nonconohicting fluid; 
|l9 correct? 
20 A, Yes, it is. 

|21 Q. You have no reason to think it's not, do you? That's 
|22 how the monopolar procedures are done; correct? 
|23 A. Glycine, Glanatol (phonetic), something that you 

1 24 would expect to be electrically nonconductive. 

125 Q. And it says there is some current flow in that 


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Thursday, May 8, 2003 
Page 1343 


electrically nonconductive fluid from the electrode to 
the metal parts of the electrode; right? 
A. Yes. 

Q. All right. Now, in describing in the rest of the 
patent, it describes some bipolar devices; correct? 
A. Yes. 

Q. And during your direct examination, you showed one 
of those devices; correct? 
A. Yes. 

Q. Now, in the • 198 patent, the • 198 patent never uses 
the word saline, does it? 
A. Couldn't find it, no, it does not 
Q. It doesn't use the word Ringer's lactate or iactated 
Ringers, does it? 
A. It does not 

Q. And in describing the fluid that is used with the 
bipolar embodiments, it uses, the phrase at Column 4, line 
54 is calling it a washing liquid; right? 
A. Line 54, you said? 
Q. Yes, at Column 4. 
A. Okay. Yes, it does say washing liquid 

22 Q. It doesn't call it saline, it doesn't call it 

23 Iactated Ringer's; correct? 

24 A. No. 

25 Q. All right In fact, wouldn't you agree with me that 


Page 1344 

1 in this '198 patent to Roos, there is really no difference 

2 between the way that Mr. Roos talked about the washing 
liquid that was used in the monopolar case versus the 
bipolar case. He describes them as washing water or 
washing liquid; right? 
A. That's correct 

Q. Now, if you would, please, take a look at Figure 5 

8 of the *198 patent. 

9 MR. BOBROW: if you can highlight feat, 

10 Chris... 

11 BY MR. BOBROW: 

12 Q. And Figure 5 is a depiction of one of the bipolar 

13 probes that is described here in this Roos '198 patent; 

14 correct? 

15 A. Yes, it's one of the embodiments. Yes. 

16 Q. And as you look up there, you can see there is what 

17 he calls a neutral electrode 1 1 and also number 12 he ♦ 

18 calls the treatment electrode; right? 

19 A. That's correct 

20 Q. Now, there is, what I'm circling there with this 

21 light pen is the return electrode; correct? 

22 A. And I also he calls it the neutral electrode in the 

23 patent, but, yes. 

24 Q. hlow, if you take a look at Column 6 at lines 51 to 

25 53 of the Roos '198 patent, he talks about the neutral 


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1 electrode in this embodiment, doesn't he? 

2 A. Hold on a second. I'm sorry. Which lines again? 

3 Q. This is at Column 6, Lines 51 to 53. 

4 A. Yes. 

5 Q. And it says there that the neutral electrode 1 1 in 

6 the form of the steel band rests on the tissue in large 

7 area form so that good electrical contact is insured. 

8 Do you see what I'm referring to there? 

9 A. Yes, I do. 
J 10 Q. Now, wouldn't you agree with me, sir, that if there 

1 1 were electrically conducting fluid that was filling the 

1 1 2 environment where the active electrode is and the return 

1 13 electrode is, you wouldn't need to have tissue contact 

114 to insure good electrical contact between the active 

115 electrode and the return electrode. That would be 

1 16 provided by the saline or the Ringer's lactate or the 

1 17 other electrically conducting fluid; right? 

118 A. From the specific embodiment, your interpretation 

1 19 is correct However, this is not the embodiment that I 

120 talked about and it's not an embodiment that I described. 
|21 Q. But for the embodiment I described, that's correct? 
22 A. Yes. 

J23 Q. Now, why don't we take a look at the embodiment we 
|24 did talk about which is Figures 7 and 8 were the ones you 
|25 had up? 


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Page 1347 

terminal to minimize direct contact between the return 
electrode and the patient's tissue. 

Do you see that? 
A. Yes. 

Q. And that's your testimony, even though the return 
electrode completely surrounds the probe shaft; right? 
A. Yes. 

Q. It's exposed for 360 degrees of that shaft; right? 
A. Yes. 

Q. And it's not spaced very far away from the active 
electrode, is it? It would be spaced a small distance; 
right? 
A. No. 

Q. How far away would it be spaced? 

A. Well, if you look at a standard resectoscope - and 

I happen to know that in the Roos article what they did 

is they modified a Carl Storts (phonetic) resectoscope, 

the cutting loop which is indicated by 12 can move out 

about -- about an inch and could be retracted almost to 

the lip there, the plastic insulating member which is 

indicated by 35. So it has the ability to move in and 

out So an inch is pretty far for an electrode. 

Q. So the loop isn't also positioned an inch away from 

the return electrode? 

A. It's not always, but it can be. 


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Page 1346 

A. That's correct 

MR. BOBROW: So perhaps we can highlight those. 
BY MR. BOBROW: 

Q. I'm sorry. Dr. Taylor, are you there? 
A. Yes, I am. 

Q. Thank you. Now, Figures 7 and 8 you had testified 
about a little bit earlier and, as I see it there, there 
is a ring or a band that is called 11. 
Do you see that? 

10 A. Yes. 

11 Q. And^ that's what Mr. Roos is calling the return 

12 electrode here; correct? 

13 A. Yes. 

14 Q. All right Or neutral, I guess. But that's what 

15 you are saying is the return electrode for purposes of 

16 these claims? 

17 A. Right 

18 Q. And as I was looking at what you had checked off 

19 earlier, for Claim 47 in the Roos '198 patent, it appears 

20 that your testimony was that this embodiment of the Roos 
*198 patent satisfies Claims 47; right? 

22 A. Yes. 

23 Q. And specifically, you offered the opinion that this 

24 embodiment satisfied this language that says that the 

25 return electrode is sufficiently spaced from the electrode 


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Q. What you do is you retract the treatment electrode 
back in towards the return electrode; correct? 
A. Yes, you do. 

Q. That's the technique. It extends out and you pull 
it back towards the return electrode; right? 
A. Right 

Q. And in the TRUP procedure, I take it that this device 
here is traveling a fairly tight, a tight lumen, as it 
were;rigjit? It goes up to the urethra, doesn't it? 
That's the passageway into the body, isn't it? 
A. Oh, I see. I'm sorry. I thought you were back at 
the electrode again. Yes, the device does go into the 
urethra and it also can be used for treating the bladder, 
in which case the neutral electrical would be almost 
entirely or it could be almost entirely inside the 
bladder. The bladder, in order to operate on the bladder, 
you have to distend it, which means you put fluid inu* it 
and make it large. And the bladder distended is, oh, about 
the size of my fist I guess it depends on how big your 
bladder is. But when you have the instrument all the way 
in the bladder, the return electrode is entirely, entirely 
engulfed by fluid. 

Q. Right And in the conventional monopolar way, that 

would be in a glycine solution; right? 

A. That's correct But, in this particular case, that's 


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[22 A. In this case, it is. 

23 Q. Now, let's go to Qaim 1 of the Roos ' 1 98 patent 
[24 And do you see that, sir? 

|25 A. I've got it right here. 


Page 1349 


not what they used. 

Q. Right All right. Instead, they used washing 
liquid; right? 
A. Yes. 

Q. That's what the patent says? 
A. Yes. 

Q. Now, let's take a look at Figure 1 of this patent 
And Figure 1 is describing another bipolar embodiment of 
Roos, is it not? 
A. Yes, it is. 

Q. And there is a little hook there. That's the 
treatment electrode; right? 
A. Yes. 

Q. And here, there is a return electrode also; right? 
Or a neutral electrode as he calls it? 
A. Yes. 

Q. And that neutral electrode is within that endoscope. 
It's covered up by some sort of insulation there, isn't it? 
A. Yes. 


Thursday, May 8, 2003 
Page 1351 

A I don't believe there is any differentiation of the 
fluid. 

Q. Right. So trie way mat me fluid is described in 
this reference, same fluid for Figure 1, Figure 2, Figure 
7, Figure 8; correct? 
A. That's correct. 

Q. AH right. Now, I believe you testified here just 
now that you believe that this claim, Claim 1 , also covers 
figures 7 and 8; is that correct? 
A. That's correct 

MR. BOBROW: Now, why don't we put Figures 7 
and 8 up on the board? 
BY MR. BOBROW: 

Q. Now, for Figures 7 and 8 to fall within the scope of 
Claim 1, this neutral electrode, right there, right here, 
would have to be located within the endoscope body; 
correct? 

A. That's correct 

Q. And you recall that I took your deposition probably 
about two months ago; right? 
A. Oh, yes. That was run. 

22 Q. And back at that time, when I did take your 

23 deposition, I asked you about this issue, didn't I? 

24 A. Yes, you did. 

25 Q. And I asked you whether or not, back at that time, 


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Page 1350 

Q. Right And this claim, Claim factually has as a 
limitation that the return electrode is or it says the 
neutral electrode is located within said endoscope body. 
Do you see that? That's at about line - 
A. I know it's here. What line is it? 
Q. About Line 58. 
A. Yes. I'm sorry. Yes, I've got it 

8 Q. And you would agree with me that Qaim 1 as it's 

9 written here actually covers the embodiment we were just 
lit) looking at, Figure 1? 
jU A. It covers Figure 1. It covers 7 and 8, too. 
112 Q. Let's take it in pieces. 

13 A. Okay. 

14 Q. First, you would agree with me this covers Qaim 1 ? 

15 A. Yes. 

116 Q. And your testimony is that Claim 1 covers also 

117 Figures 7 and 8? 

|18 A. Covers Figures 7 and 8. And I think it actually 
Jl9 covers Figure 5, too, but I had to go back and look. 
J20 Q. Now, first of all, would you agree with me that, in 
21 the Roos '198 patent, there isn't any discussion or 
|22 suggestion that the fluid that is used with Figure 1, 
23 that device is any different than the fluid that is used 
124 with any of the other devices? Would you agree with me 
|25 on that? 


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whether or not you agreed with me that Qaim 1 didn't 
cover Figures 7 and 8; correct? 
A. Yes. 

Q. And you were under oath at that time; right? 
A. Sure was. 
Q. Just like now? 
A. Yes. 

Q. And back at that time, you had also studied the 
Roos ' 1 98 patent before you testified? 
A. Yes. 

Q. The Roos '198 patent wasn't something I'd showed 

12 you that day and asked you questions about? 

13 A. I studied it intensely. 

14 Q. Right And when I asked you for the first time 

15 about whether or not Claim 1 covered Figures 7 and 8, you 

16 told me under oath, you didn't? 

17 A. That's right 4 

18 Q. You remember that very well? 

19 A That's right Because I corrected it 

20 Q. Right You corrected it after lunch, didn't you? 

21 A. Yes, I did. 

22 Q. You corrected it after you had lunch with Smith & 

23 Nephew's lawyers? 

24 A. I actually corrected it because I looked at the 

25 'diagram again. 


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Q. Please answer my question. 
A. I did have conversation after lunch, yes, and with 
hinch. 

Q. And that was Mr. MacFerrin, Smith & Nephew's attorney? 
A. Yes. 

Q. And Mi. MacFerrin, during your deposition, was also 
acting as your lawyer; right? 
A. Yes. 

Q. You were represented by the very same lawyers that 
arc representing Smith & Nephew here in court today; isn't 
that right? 
A. Yes. 

Q. And you had been retained or you had retained that 
1 1 4 firm and you considered there to be an attorney/client 
J 1 5 privilege between discussions that you had with Smith & 
1 1 6 Nephew's lawyers; correct? 
17 A. Yes. 

1 1 8 Q. And I asked you some questions during the 
J19 deposition and you refused to answer some of them based 
J 20 upon the fact there was an attorney/client relationship? 
|21 MR. marsdeN: objection. This is improper 

122 questioning about assertions of the attorney-client 

123 privilege. 

1 24 the COURT: where are we going with this, Mr. 

125 Bobrow? 


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Q You understand that the time that they've spent with 
you has been reimbursed or compensated by Smith & Nephew; 
right? 

A. I certainly understand they're being reimbursed by 
Smith & Nephew. 

Q. Now, not only did you testify when I asked you in 
your deposition that these Figures 7 and 8 aren't covered 
by Claim 1 the first time I asked you, but after lunch, 
you did come in and you said your testimony was now 
different, that you believed it was covered by Claim 1; 
right? 

A. I made a mistake, yes, and I corrected it. 
Q. And isn't it true also that Smith & Nephew's lawyer 
during that lunch break pointed out that mistake to you? 
A. Yes, he did. 

Q. Right And during that lunch, Mr. MacFerrin was 
the one who said, Hey, I think that this was wrong with 
respect to Figure 7, it is covered by Claim 1 and let's 
go through it; right? 

A. I don't think it was exactly that way. I think 
basically be asked me to refer back to my report, remember 
what I said in my report 

Q. Well, let's look at that because in your report, 
you also talked about whether Claim 1 covers Figure 7; 
correct? 


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Page 1354 


MR. BOBROW: I believe it goes to the 
credibility of the advise of the witness. 

THE COURT: Because he didn't answer questions 
at a deposition? 

MR. BOBROW: Based upon his relationship with 

6 the Smith & Nephew's lawyers. 

7 MR. MARSDEN: Based upon privilege. 

8 THE COURT: And what was the last question that 

9 you asked? 

1 10 MR. BOBROW; The last question I believe was 

j 1 1 that he had refused to answer questions I had asked him at 
j 12 the deposition based upon the attorney/client relationship 
1 13 that he had with his lawyers. 
14 THE COURT: All right That's an appropriate 

115 question, but then you need to move on. 
|l6 THE WITNESS: where were we? 

117 BY MR. BOBROW: 

118 Q. 1 just asked the question, you refused to answer 

119 some questions that I asked you during your deposition 

1 20 based upon the attorney/client relationship with the same 

121 lawyers that are representing you as Smith & Nephew? 
22 A. Yes, 

J23 Q. And you're not paying and haven't paid the Smith & 
|24 Nephew's lawyers any money for their services, have you? 
125 A. No, I have not 


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A. Yes. 

Q. And in yew report, you addressed the question of 
whether or not this neutral electrode, right here, and 
right here, whether that neutral electrode is an electrode 
that is within the endoscope body; correct? 
A. Yes. 

Q. And that was a report that you prepared prior to 
the deposition back in I believe it was late March; right? 
A. Are you referring to the report or the deposition? 
Q. I'm sorry that I was unclear. Let me try to restate 
it. The report that you prepared where you discuss Figure 
7, that report was prepared before I took your deposition; 
right? 
A. Yes. 

Q. All right And even before I took your deposition, 
you also signed a declaration about your report, didn't 
you? 4 

A. Oh, yes. Yes. 

Q. And you declared under the penalties of perjury that 
you believed what you said in your report was true? 
A. Right 

Q. And that was a report that you had prepared prior to 
your deposition; right? 
A. Right 

Q: And, obviously, prior to the lunch that you had with 


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Mr. MacFemn during the middle of the deposition; correct? 
A. Correct. 

Q. All right Now, I have your report in that white 
binder, and I direct your attention, please, to Page 18 
of your report. This is your expert report of February 
17, 2003. 

Do you have that, sir? 
A. Yes. 

Q. And in the middle of page 18, you address in your 
report the question of whether Claim 1 covers Figures 7 
and 8; right? 
A. Yes. 

Q. And when you wrote your report, let's just - when 
you wrote your report, what you wrote was, quote, it is 
particularly important to note that in connection with 
the endoscope shown in the Roos '198 patent at Figures 7 
and 8, there is no plastic cover and the neutral electrode 
is on the outside of the endoscope, not arranged within it 

Correct? That's the sentence you wrote in 
your report of February 1 7 of 2003; correct? 
A. Yes, that's in the report 

Q. Right And what you just wrote there, not arranged 
within it, those were your words; correct? 
A. Yes. 

Q. You wrote those w ords yourself; right? 

Page 1358 

A. Yes. 

Q. And you wrote those words to describe Figures 7 and 
8;right? 
A. That's right 

Q. Now, in connection with your work on this matter, I 
take it that you have also reviewed - 
A. Excuse me. Can I put this away? 
Q. Sure. 

(Pause.) 
BY MR. BOBROW: 

Q. You have also reviewed another patent to Mr. Roos; 
correct? 

A. The '667? Is that the one are you talking about? 
Q. Exactly. You reviewed that reference, the Roos 
'667 patent, in connection with your work on this matter, 
right? 

A. Yes, I did. 

Q. And you, in fact, considered this reference at the 
time that you wrote your report; correct? 
A. Yes. 
Q. All right 

MR. BOBROW: Your Honor, may I approach? 
THE COURT: Yes, you may. 
(Document passed forward.) 


Thursday, May 8, 2001 

Page 1359 

BY MR. BOBROW: 

Q- Sir, I have had handed you rx-605, which is a patent 
to Roos, Eberhard Roos from Germany, U.S. Patent Number 
4,706,667. 

Do you see that? 
A. Yes. 

Q. And this is the Roos patent that you considered in 
connection with your work on this matter, is that right? 
A. It looks like it's the patent Yes. Excuse me. 
MR. BOBROW: Pardon me, Dr. Taylor. 
Your Honor, I move PX-605 into evidence. 
THE COURT: Any objection? 
MR. MARSDEN: No objection. 
THE COURT: All right Thank you, 
THE deputy CLERK: So marked. 
*** (PlaintifTs Exhibit No. 605 was received into 
evidence.) 

BY MR. BOBROW: 

Q. Now, the '667 patent was issued to Eberhard Roos; 


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Q. He is the same man who is on the Roos f 198 patent 
that you talked about earlier on your direct examination; 
correct? 
A. Yes, he is. 

Q. And he is the same man who is the Roos in the 
Elsasser and Roos article; right? 
A. Yes, he is. 

Q. And this patent is dated in, issued in November 1987; 
correct? 
A. Yes. 

Q. In this patent, the '667 patent, Mr. Roos actually 
talks a bit about the German application that was the 
predecessor, or sometimes it is called the parent 
application, to what ended up issuing as the Roos '198 
patent; correct? 

A. Yes. You are talking about ~ do you have a * 
specific reference? 

Q. Sure. Why don't we bring up Column 1 of the *667 
patent, beginning at line 14, going down to line 29. 
Perhaps we can highlight that paragraph. 

You will see at the top there it refers to a 
known electrosurgical high-frequency cutting instrument of 
this kind. Then it gives a number that begins DE-OS. And 
it goes o n there in there; right? 

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A. Yes. 

Q. And the DE stands for Germany; right? 
A. Deutsch, yes. 

Q. Exactly. What is being referred to here in the 
'667 patent, when it refers to that No. 25 21 719, that 
is actually the German parent application to the Roos 
'198 patent; right? 

A. That's correct. At least that's my understanding, 
anyway. 

Q. In fact, on the '198 patent, that number, 25 21 719, 
appears right on the front, doesn't it? 
A. It does. 

Q. Here, in the '667 patent, in this paragraph, Mr. 
Roos is talking about one of the instruments that is 
described here in the '198 patent; correct? 
A. You are talking about the paragraph that starts at 
Line 14, going down? 

Q. Exactly. And he is talking there, is he not, of 

at least Figure 1 of the ' 1 98 patent? 

A. He is talking about - I am not sure which one he 

is referring to, he is talking about one of the 

instruments in that application. 

Q. Right. And he says there that the neutral electrode 

is admittedly arranged in the immediate vicinity of the 

cutting loop. It is, however, so separated from the tissue 


Thursday, May 8, 2003 

Page 1363 

A. Yes. 

Q. So it is pretty clear, is it not, that at the very 
least, in the '667 patent, Mr. Roos is talking about Figure 
1; correct? 

A. Well, he certainly could be. Certainly, the Figure 
1 that is in the '198 patent may be the figure that he is 
discussing here - or the configuration, I should say, that 
he is discussing in the '667. He didn't specifically call 
it out. So we are surmising here, I guess, aren't we? 
Q. Given that there is the plastic over that embodiment 
and there isn't plastic over any other one, wouldn't you 
agree that what he is talking about there is Figure 1? 
A Most likely. But I can't confirm it. It's most 
likely the case. 

Q. Fair enough. So here, for this embodiment - this is 
a bipolar embodiment; right? 
A. That's my understanding, yes. 

Q. This is an embodiment that Mr. Roos in his '198 patent 
said was used with washing liquid; correct? 
A. Yes. 

Q. Those are the words that Mr. Roos used in the '198 

22 patent that you talked about on your direct examination? 

23 A. That's correct. 

24 Q. And if we can go back to the '667 patent and 

25 highlight that language, what Mr. Roos is saying there 


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1 by a plastic cover or by its arrangement in an endoscope 

2 that it can only enter into electrical contact with the 
cutting electrode electrolytically via the secretion which 
is present during the cutting process. 

You see what I am referring to there? 
A. Yes! 

MR. BOBROW: why don't we put up Figure 1 of 

8 the '198 patent to Roos? Paragraph. If we can put it up 

9 on the same screen... If not, just put up the '198 
1 10 BY MR. BOBROW: 

11 Q. There we have Figure 1. You can see in Figure 1, can 

1 12 you not, there is this sort of shadow right there, that's 

1 1 3 the plastic cover; right? This portion that sticks out 
14 over this endoscope; right? 

115 A. The one that is labeled 11? 

16 Q. I think it's labeled 18, right there. That's the 

17 plastic cover; right? 

118 A. Yes. 

1 19 Q. And what we just read in the Roos '667 patent, the 
20 later patent, it's talking thereabouts 
|21 is separated from the tissue by a plastic cover, right? 

122 A. Sorry. Say that again? . 

123 Q. In the '667 patent, it talks about a cutting 
j24 electrode that is separated from the tissue by a plastic 
125 cover? 


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Page 1364 

in this patent is that using this device as it was 
designed, that the return electrode and the treatment 
electrode can only enter into electrical contact with 
the cutting electrode electrolytically via the secretion 
which is present during this cutting process. 

Right? That's what he says? 
A. That's what he says. 

Q. Wouldn't you agree with me, sir, that if there were 
saline or Lactated Ringer's that were present in that 
fluid, in that washing liquid as he describes, one would 
not need secretions from the body to make that fluid 
electrically conductive so as to electrically connect 
the treatment electrode with the neutral electrode? The 
liquid would already be conductive and secretions wouldn't 
be needed; isn't that right? 
A. And that's actually one of the reasons why this 
particular passage in '667 is confusing, because of the* 
fact that we know that at least one configuration of Roos 
works, clinically works, because he couldn't have 
conducted 32 procedures without being able to resect 
tissue. And he did resect - let me finish, please. He 
did resect tissue using washing liquid 

So that's one of the reasons why this 
particular passage is confusing to me. 
Q- Well kfs back up a little bit then, because you 


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Page 1365 

also testified earlier about the Roos and Elsasser article; 
correct? 
A. Yes. 

Q. And the reduce and Elsasser article talks about some 
surgeries that were performed; right? 

6 A. Correct 

7 Q. And in the Roos and Elsasser article, the instrument 

8 that was used was essentially the instrument from Figures 

9 7 and 8 of the ' 198 patent; right? That's the one that was 
1 10 used to perform the surgery? 

11 A. That configuration was the one that was used to 

1 12 perform the surgeries. They also tried another 

1 1 3 configuration, and I have forgotten which figure it 
14 refers to in the patent, that worked but not as well. 

Il5 Q. But the one in reference to that you said was used 
16 in surgery, that is Figures 7 and 8 in the '198 patent? 

117 That's the one that is described? 

118 A. Absolutely. 

|l9 Q. Not Figure l t correct, but they describe Figures 7 
and 8? 
A. Okay. 

Q. So my questions have to do right now with what is 
123 described here for Figure 1 and this language here in 
24 '667. 

|25 Now, wouldn't you agree with me, sir, that if 


Thursday, May 8, 2003 
Page 1367 

1 treatment electrode and the neutral electrode? Isn't that 

2 true? 

3 A. Explain to me the logic again? 

4 Q. I am simply saying, sir, that if electrically 

5 nonconductive fluid were introduced, if that was 

6 introduced into the body, then in order to electrically 

7 connect and have a good electrical connection between the 

8 treatment electrode and the neutral electrode, you would 

9 need to have secretions from the body in order to make 

10 that fluid electrically conductive? 

11 A. In which case the fluid would be electrically 

1 2 conductive, right, 

13 Q. I am simply saying if you introduce a nonconductive 

14 fluid and there are secretions into the fluid, then you 

1 5 would need those secretions to have an electrolytic 

16 connection between the treatment electrode and the neutral 

17 electrode; right? 


! A. I follow your logic. And once again ~ 
1 Q. Can you please answer the question? 
A. Hie answer is yes. I follow your logic, but it's 
confusing. That's all. 

Q. But I just want it to be clear that your answer to 

23 my question is if you introduce an electrically 

24 nonconductive fluid, you would need secretions from the 

25 body to couple the treatment electrode to the return 


Page 1366| 

1 the liquid used with Figure 1 were electrically conductive 

2 fluid when it was introduced into the surgical site, that 

3 secretions into the fluid would not be necessary in order 

4 to make it electrically conductive so as to electrically 

5 couple the active and the return electrode together? 

6 Wouldn't you agree with that? 

7 A. I would agree with you. But once again, it's 

8 confusing, because I think you have already established, 

9 in the course of your examination on me, that the washing 
jlO liquid that was used in '198 is the same washing liquid 

II throughout; right? And, therefore, if the washing liquid 
112 that was used ~ that was used throughout all the 
|13 different configurations, if the washing liquid was 
114 successful in Figures 7 and 8, clinically, then it must 
|J5 have been electrically conductive fluid. There is a 

116 logical connection there. 

117 Q. Well, that's what you are saying now. But isn't 

118 it true, sir, that electrical current can flow through 

1 1 9 electrically nonconductive fluids? Isn't that true? 
20 A. Yes, it can. 

|2I Q. And isn't it also true that if an electrically 
1 22 nonconductive fluid were introduced into the surgical site, 
|23 that you would need secretions from the body in order to 
J 24 make the fluid conductive so as to maintain a good 
[25 electrical connection, electrolytic connection between the 


Page 1368 

electrode. Is that a true statement? 
! A. I think the answer is yes. But I still think it's 
i confusing. 

Q. All right. Now, let's see if we can go through the 
rest of this paragraph and see if there is any more 
clarity here, because it also says, in this paragraph in 
Column 1, that because of this problem, that the device 
was relying upon tissue discretions, it says that it was 
difficult to maintain the current intensity required for 
trouble-free cutting in a required, precisely defined 
manner at the cutting electrode. 

Do you see that? 
A. Yes. 

Q. And the import of that is that the fluid that was 
being used with this Roos '198 patent, Figure I, was that 
the fluid wasn't sufficiently conductive to be able to do 
trouble-free cutting; correct? « 
A. One of the problems I am having with this is, this 
particular paragraph doesn't even reference any fluid at 
alL So I am wondering if this device wasn't used or 
intended to be used for open surgery. 
Q. Well, that is not how it's described in the '198 
patent, is it? In the '198 patent it says that Figure 1 
is used with washing liquid; right? 
A. The thing is, if you read the first sentence, in a . 


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Page 1369 

1 known electrosurgical high-frequency cutting instrument 

2 of this kind, does that mean it is exactly the same or 

3 does that mean it is sort of similar? 

4 Q. In that description he cites specifically to the 

5 parent application to the' 198 patent; right? 

6 A. I agree with you on that. 

7 Q. In the 1 1 98 patent, every single device that is 

8 described in there is designed for use with fluid; 

9 correct? 

10 A. Yes, it is. 

11 Q. And in every single one of those, every single 
embodiment in the Roos *198 patent is described as being 
used with some type of washing liquid; correct? 
A. It is. 

Q. All right. Now, wouldn't you agree with me that 
what Mr. Roos is saying here in his patent, when he is 
describing the parent application to the ' 198 patent, he 
is saying here that when you use this instrument that 
there was not sufficient discretion from the body to make 
the fluid sufficiently conductive so that you could get 
trouble-free cutting? Isn't that the import of this 
paragraph? 

A. He is saying that But there is no reference to any 
other fluid. 

Q. But that is the import of this paragraph; correct? 


Thursday, May 8, 2003 
Page 1371 

Q. And so I take it what that means is that you have 
been able to review the Roos 1 1 98 patent and you have been 

3 able to locate somewhere in those figures some discussion 

4 of the location of where the connector is to connect back 

5 to the generator; right? 

6 A. Well, there is a connector. There has to be. 

7 Q. I am not asking you that question. I am saying 

8 that you have been able to review the' 198 patent and you 

9 have been able to discern some description in there of 

10 the location of the connector. Not that there is one. 

11 But the specific location of it; right? 

12 A. There is not a specific reference to a location of 

13 the connector. 

14 Q. All right. So here, when you marked on this board 

15 that the limitation was met, that the connector is near 

16 the proximal end of the shaft, the Roos '198 doesn't say 

17 where the connector is; correct? 

18 A. The patent does not say the patent does not say 

19 explicitly where the connector is located. 

20 Q. AH right Now, since we are on the subject of Mr. 
[21 Roos ~ 

22 A. You do realize that all resectoscopes have connectors 

23 at the back end of the resectoscopei 

24 Q. I don't realize that. In all events, in the '198 
!25 patent, there is no discussion of where the connector is; 


Page 1370 

A. Yes. 

Q. All right. Now, I have another question about the 
Roos '198 patent. 

If we could put that back up and take the '667 
patent down... 

In the '198 patent, there are of course a large 
number of figures and we have gone through a couple of those 

8 already; correct? 

9 A. Right. 

JlO Q. I think earlier you had put up on the overhead 

111 Figures 7 and 8 when you were going through your direct 

1 1 2 examination; correct? 
|13 A. Yes,Idid 

Q. And one of the things that you said was that in the 
'198 patent that there is a disclosure of a connector; 
correct? 
A, Yes. 

Jl8 Q. And you said that the connector was located, the 
1 19 language of the claim says that the connector is near the 
[20 proximal end of the shaft; right? 
21 A. Yes. - 

1 22 Q- And so it's your testimony here today that the 

23 figures of the '198 patent show there is ;a connector near 

24 the proximal end of the shaft; is that right? 
|25 A. Yes. 


Page 1372 

correct? 

A. That's correct, yes. 

Q. When you said there is that discussion, that wasn't 
true, was it? 

A. No, but then again — 

Q. There is nothing in the '198 patent that says that; 
correct? 

A. There is nothing in the *198 patent that says it 
explicitly. But there are no resectoscopes on the market 
that don't have a connector at the end, on the back of 
the resectoscope. 
Q. In the market, you said? 

13 A. In the market 

14 Q. Why don't we turn, then, to DTX-59-A and B. Uris is 

15 the Roos and Elsasser article. Perhaps we can put up the 

16 German language original. Do you have that, sir? 

17 A. Yes. 4 

18 Q. Why don't we go to Figure 3. 

19 Now, if wp can highlight Figure 3, please. 

20 Here in the Roos and Elsasser article, in the first part of 

21 the article, once again, there is a discussion of a 

22 monopolar TURP procedure; correct? 

23 A. You are asking me if there is a discussion of 

24 conventional TURP? 

25 Q. Monopolar? ' 


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A. Yes, there is. 
Q. And Figure 3 is one of the figures that Roos and 
Elsasser used to describe that conventional monopolar 
procedure; correct? 

A. I am just reading the English version of this. 
Q. Fair enough. I am, too. 
A. Yes, it is. 

Q. And so what is being shown here in Figure 3 is a 
resectoscope that is being inserted into the body; 
correct? 

A. Well, I believe what is being shown here, you have 
got the resectoscope there. This represents the bladder. 
And this represents the prostate. 
Q. So right here, that region that I am circling now, 
which is cross-hatched at about a 45-degree angle, that 


Condense! t™ 

Page 1373 


116 area there is the prostate; is that right? 


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A That is correct 
Q. And that's tissue? 

A Yes, us men would consider it to be tissue. 
Q. Fair enough. And so here, this is the tip of the 
resectoscope; right? 
A Yes. 

Q. The part that I am circling there. And this little 

24 loop here, that is the treatment electrode; correct? 

25 A. That's the cutting loop, yes. 

Page 1374 

Q. And these lines here that go back to the 
resectoscope, those are current flux lines; correct? 
A Yes. 

Q. And what is being depicted here is current flux 
lines between this loop and the flux lines going back to 
essentially a metal portion of this resectoscope; right? 
A That's right 

Q. And you already said that this is a monopolar 
embodiment; correct? 

A For conventional — yes. 

Q. What is depicted here is monopolar; right? 
A. Right 

Q. There is no return electrode there, is there? 
A. Right 

Q. What this is then showing is current flow through 
what must have been electrically nonconductive fluid 
because that is the fluid that was used in monopolar 
electrosurgeiy; correct? 

A Actually, this diagram is not entirely correct, 
because what actually happens is you have current flux 
lines that flow back to almost all parts of the body, 
including at the endoscope. 

Q. But this is showing current flow through what must, 
have been a nonconductive fluid because nonconductive I24 
fluids were used in monopolar TURP procedures; right? 25 
ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Thursday, May 8, 2003 

Page 1375 

A. It does show current flow. Like I said, it is not 
entirely correct 

Q. But let's talk about the part that is correct. I 
think it's correct, isn't it, that this fluid that the tip 
of this device is in would have been essentially something 
like glycine or some similar electrically nonconductive 
fluid. You wouldn't in a monopolar device using saline 
or Ringer's lactate? 

A. The Europeans favor mannitol. But it could have been 
glycine. 

Q. In all events, it could have been glycine; right? 
A. That's correct 

Q. Now, similar to the '198 patent, the Roos article 
doesn't use the word saline; correct? 
A. It uses washing liquid or washing fluid, something to 
that effect 

Q. I think it's to that effect The words are a little 
bit different But he doesn't use saline; correct? 
A, He does not use saline. 

Q. He doesn't use Ringer Lactate or Lactated Ringer's? 
A. Correct 

Q. I think what he does say, if you look at the English 
translation at Page 2, it's described as irrigation liquid; 
correct? About the middle of the page, sir. 
A. Yes. The irrigation liquid 

Page 1376 

Q. And so that irrigation liquid would have been glycine 
or mannitol or some electrically nonconductive fluid; 
right? 

A. I think at this point, isn't he talking about his 
invention, the actual — 

Q. Well, this is a discussion of Figures 2, 3 and 4. 
And so we are talking here about a conventional approach; 
correct? 

A. Oh, I am sorry. Yes, you are right 
Q. Fair enough. 

Now, just to anticipate maybe where you were 

12 going, if you turn to page and look at Page 4, 1 believe 

13 here he is talking about the bipolar embodiments; right? 
this is the beginning of that discussion? 
A. Yes, that's right 

Q. And in Paragraph No. 1, at the very end of that 
sentence, he talks about the fluid that is used Do you 
see that? 
A. Yes. 

Q. And he calk it irrigation liquid; right? 
A. Yes. 

Q. And those are the same words that he used to describe 
the fluid that was used for the monopolar embodiment on 
the previous page; correct? 
A. Yes. Not the same fluid, but yes. 

Page 1373 - Page 1376 


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Q. He describes them using the exact same words, 
doesn't he? 

A. He uses the exact same words, yes. But that doesn't 
necessarily mean it's the same exact fluid 
Q. The same words are used; right? 
A. Yes. 

Q. Now, let's go back to the previous page. 
A. Are we on Page 3 now? 
Q. I am sorry. I believe we are on Page 2. Again, 
this is the monopolar embodiment, so we know that it would 
be mannitol or glycine or some similar fluid; correct? 
A. That's right 

Q. Now, if you look at the English language text for 
Figure 3 that we were looking at earlier, do you have 
that, at the very bottom of Page 2? 
A. Right 

Q. And in that description, Mr. Roos and Mr. Elsasser 
J 18 are describing that current flows directly from the 
J 19 cutting loop to those parts of the resectoscope projecting 
120 into the irrigation fluid Do you see that? That's in 
|21 the text at the very bottom of Page 2. 

22 A. Yes. 

23 Q. So here in the article, Elsasser and Roos are talking 

24 about current flow in the monopolar embodiment; right? 
[25 From the cutting loop bac k to the resectoscope; correct? 

Page 1378 

A. Yes. 

Q. Let me shift gears and ask you some questions about 
the Doss '007 patent Do you have that, sir? That's 
DTX-17. 

A. I have it in front of me, yes. Yes, I do. 
Q. And the Doss patent is one of the patents that you 
talked about on your direct examination with respect to 

8 the f 536 patent; correct? 

9 A Yes. 

110 Q. And the Doss patent is a patent that was actually 

1 1 1 cited during the prosecution of the '536 patent itself; 

12 right? 

13 A. I will take your word for it There were a lot of 
J 1 4 patents that were cited and I don' t have that in front 
115 of me. So I will take your word for it 
Jl6 Q. Why don't we actually show it 

1 1 7 MR. BOBROW: why don't we pull up jrx-i? 

118 BY MR. BOBROW: 

19 Q. And if you look in the U.S. patent document section, 
|20 if you highlight that, you will see, I believe it's the 

21 fifth one down, it says, 4,38 1,007 to Doss. 
|22 Do you see that? 

123 A. It is verified, you are right 

|24 Q. And so the document that you were describing earlier 
[25 as the Doss patent, that patent was considered by the 


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Page 1379 

Patent Office in relation to the prosecution of the • 536 
patent? 

A. That's correct. 

Q. And the '536 patent and its claims issued over this 
Doss patent; right? 
A: That's correct 

Q And the Doss patent also was given to the Patent 
Office in connection with the re-examination of the 536 
patent; correct? 

A. Once again, there were a lot of patents that were 
considered. 

Can you show me that, just so we can clarify 

it? 

Q. Maybe we will get to that a little later. Why don't 
we talk about what is actually in the Doss patent at this 
point? 
A. Okay. 

Q. Now, in the Doss patent, why ~ 

MR. BOBROW: why don't we put up Figures 7 and 

8? 

BY MR. BOBROW: 

Q. I think those were the figures that you had up 
earlier. 

In this patent, this was the figure that you 
had up earlier, right, just without the colors? 


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Page 1380 

A. Yes. 

Q. And now, in the text of this patent, the Doss patent, 
in the text of it, there is no description of any of the 
.electrodes that are shown in this embodiment 

They are never described as being a return 
electrode; correct? 

A. We specifically mentioned those words are not 
specifically used, return electrode? 
Q. That's correct 
A. Yes. 

Q. Return electrode is not a term that is used here, 
is it, in the Doss '007 patent? 
A. Just hold on a second. 

I don't believe it's used. 
Q. Right In fact, if you look at Column 4, it says, 
tubular electrodes 34 and 36, for example? There are 
other places, as well. But in each case where it * 
describes the electrodes it calls them electrodes. It 
doesn't call them, for example, a return electrode; 
correct? 

A. No, it does not 

Q. Now, in the various erorjodiments of the '007 patent, 
would you agree that each of the electrodes in this 
configuration is designed in a way that it will have a 
high current density at the tip? 


ArthroCare y_ Smith & Nephew, CA No. 01-504 (SLR) 


Page 1377 -Page 1380 


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Page 1381 

A. No, I would not. 

Q. All right So just to be clear, your testimony is - 
let me ask it specifically again, just so it is clear. 
Would you agree with me that each of the electrodes in 
the figures of the Doss patent is designed in a way that 
will have a high current density? Do you disagree with 
that? 

A. When you say high, are you saying that both 
electrodes have high current densities. Is that your 
question? 


Page 1382) 

1 

2 Q. Each of the electrodes is designed in a way that 

3 will have a high current density. That's the question. 

4 A. I think the answer may be yes, but I think one of 

5 the electrodes will have a higher current density than the 

6 other. 

7 Q. Hiat's not my question, sir. 

8 A. Okay. I understand 

9 Q. My question is in this patent, for each embodiment, 
[> m each of the figures, is each of the dec^ 
I in a way that will have a high current density? 
I A. I'm not sure I agree with that 

> Q. Well, you recall I asked you about the Doss p atent 
I at your deposition, don't you? 

> A. Yes. 

i Q. And you had reviewed and studied the Doss patent 
before the deposition; right? 
A. Yes. 

Q. And again, the Doss patent was a reference that you 
talked about in your report; correct? 
A. Yes. 

Q. All right Now, if you would please turn to Page 481 
of your deposition... That is in a white binder. 
A. Which day? 
Q. Pardon me? 

ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1383 

MR. BOBROW. oh, no. Please don't 
I apologize, your Honor. I didn't know that 
was going to be put up. 

THE COURT: Okay. 
BY MR. BOBROW: 

Q. This is in the second tab, Taylor deposition, March 
28,2003. And this is Page 481. 
Do you have that sir? 

A. Yes. 

Q. And at Page 481, 1 asked you the following question 
and you gave the following answer. 

"Question: If you look at the figures in text 
of the Doss '007, would you agree that each of the 
electrodes in the embodiments described is designed in a 
way that it will have a high current density?* 

And in response to my question, you answered in 
your deposition: 

"Answer: Yes." 
Is that correct? 
A. Yes. 

Q. Now, in the devices in Doss, there are a number of 
them that are depicted; correct? Probably seven or eight 
figures; correct? 

A. There are a number of figures, yes. 
Q- And would you agree with me tha t in each of the 

Page 1384 

1 embodiments, the current density of one of the electrodes 

2 is substantially the same as the current density of the 

3 other electrode or electrodes in that configuration? 

4 BOBROW: why don't we put Figure 7 back 

5 up? 

6 THE WITNESS: Can you - are you going to put 

7 the figure back up? 

8 BY MR. BOBROW: 

9 Q. Well, actually, why don't you just answer the 

0 question, sir? Would you agree with me that each of the 

1 electrodes has substantially the same current density as 

2 the other electrode for any given one of the devices that 

3 is used or described in that patent? 

4 A. I don't think that's correct 

5 Q. Allright Well, remember I talked to you about 
5 this in your deposition as well; correct? 
1 A. Right < 

J Q. And you answered my question at that time under oath, 
) didn't you? 

) A. Yes, and I think I misunderstood your question, but 
! that's - 

- Q- Allright Well, we can get to that in just a 
i minute. If you take a look, please, at Page 482 of your 
deposition. 

Do you have that, sir? 

Page 1381 - Page 1384 


Condense! t™ 

Page 1385 

A. Yes, I do. 

Q. And at that time, I asked you the following questions 
and you gave the following answer: 

"Question: And in each of the embodiments 
shown, would you agree that the current density in each of 
the electrodes is substantially the same as each of the 
other electrodes in the embodiment?" 

And there was an objection by Mr. MacFerrin and 
you gave the answer: 

"Answer: Does that mean from one embodiment 
to another or just within the same embodiment? 

"Question: Good question. Within the same 
embodiment is what I meant, that the electrodes had 
substantially the same current density? 

"Answer: It would appear that that is 
correct " 


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J 1 7 That's the testimony you gave back on March 

18 28th, 2003; correct? 

19 A. Hiat is testimony, and it is also a mistake. 

20 Q. So you believe your testimony back then was mistaken; 
|21 is that correct? 

J22 A. I made an error, yes. 
J 23 Q. Did you correct that mistake? 
124 A. No, I was under the impression I could not correct 
25 testimonial mistakes. I could only correct typographical 


Thursday, May 8, 2003 

Page 1387 

Q. Yes. 

A. If you would, please. 

Q. I was simply asking if each electrode in this probe 
design is designed to cause a tissue effect. That's my 
question. 

MR. mars DEN: Your Honor, objection. This goes 
to an issue that dealt with claim construction. An issue 
which your Honor made a ruling. 

THE COURT: well, why don't we take our lunch 
early because I have to think about that one. 

All right. Ladies and gentlemen, we'll take 
our lunch, a half-hour, and Til just remind you not to 
discuss the case among yourselves. 

(At this point the jury then left the 
courtroom, and the following occurred without the presence 
of the jury.) 

THE COURT: All right You may step down, sir. 
Let's have the question again and the objection. 
MR. BOBROW: I believe that the question was 

20 simply whether each of the electrodes in the probe of the 

21 Roos patent is designed to cause a tissue effect. And I 

22 believe that that is quite relevant, your Honor, to the 

23 claim construction here and to whether or not this device 

24 discloses an active electrode and return electrode and 

25 that's where the testimony is going. 


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errors or grammatical errors. 

MR. BOBROW: Let's put Figure 7 up, okay? 
BY MR. BOBROW: 

Q. Now, here in this figure, this is the one you had up 
earlier; right? 
A. Yes, it is. 

Q. And there are here at the tip of the device some 

8 lines there. Do you see those? 

9 A. Yes. 

|10 Q. Some dashed lines. And that's designed to represent 
111 a current flux line; correct? 
J 12 A. The dashed lines represent current flux, yes. 
Il3 Q. Right And would you agree here that this is 
14 showing the current flux between these two electrodes' 
[15 right? 
16 A. Yes. 

J17 Q. All right And would you also agree that each of 
Il8 the electrodes as shown here is designed to cause a tissue 
JI9 effect, in this case in the eye? 
J20 A. Well, that's sort of goes to the heart of why I 
121 think there is an error on my part 
22 Q. Weil, but I would like you to answer my question, 
123 please? 

[24 A. Okay. Repeat your question. I'm sorry. Repeat your 
J25 q uestion. 

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MR. MARSDEN: Right, that is where the 
testimony is going. And they requested a claim 
construction that the return electrode could not have a 
tissue effect and your Honor rejected that construction, 
so that's not a basis on which to say this is not a 
return electrode. What your Honor ruled was that you look 
at the current density, so that line of questioning was 
appropriate, but the line of questioning regarding tissue 
effect is not 

MR. BOBROW: But I believe the construction 
does talk about the active electrode stimulating the 
tissue so that is where this goes. I'm asking him whether 
or not each of the electrodes has that tissue effect such 
that you would have tissue stimulation. It's directly 
relevant, your Honor. 

THE COURT: So which claim construction are 
you talking about? * 
MR. BOBROW: This has to do with the definition 
of an active electrode and the return electrode. And the 
definition of active electrode involves tissue stimulation. 
MR. MARSDEN: it's 8 and 9, your Honor. 
MR. BOBROW: And so I'm simply trying to 
understand and feet testimony from this witness about the 
tissue stimulation effects that the different electrodes 
have in this embodiment 

Page 1385 -Page 1388 


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THE COURT: All right Well, certainly the 
definition of active electrode is a stimulating electrode, 
but the definition of a return electrode doesn't say 
stimulate, it just says it has a large area of contact to 
avoid a low current density. The only question is 
whether this, the question you are asking, is misleading 
because it is maybe inconsistent with what I've said. 

MR. BOBROW: But, your Honor, respectfully, I 
am certainly trying not to be misleading. I believe we 
are entitled to argue to the jury ~ pardon me. I believe 
that I should be allowed to argue to the jury. I request 
the opportunity to argue to the jury that both of these 
Il3 electrodes are active electrodes and that both of them 

14 have that tissue stimulation effect, that both of them 

15 have a high current density, that both of them have sharp 

16 edges and the like which would make them tissue treatment 
1 17 or tissue stimulation electrodes. 

18 THE COURT: Well, if you are saying there is 

19 no difference between the two, I mean I do believe that 

20 under this definition there has to be a difference between 

21 the active and the return. If you are saying and your 

22 point is that in the Roos prior-art reference there is no 

23 difference between the two, then that is an appropriate 
124 line of cross. 

• 25 MK BOBROW: And that's wh at I'm trying to 

Page 1390 1 

1 establish by the testimony that both of these have a 

2 tissue effect. I think you heard, your Honor, in the 
course of the testimony that, for example, the accused 
devices are designed in a way that the return electrode 
is very benign, mat it doesn't arc, that it's not 
designed to remove tissue or what-have-you because of its 
size and otherwise. 

And it's ArthroCare's position that both of 
these electrodes are active, that both of them have a 
10 tissue effect, have high current density and stimulate the 
|I1 tissue. That's where we're going with this. I believe 

12 it's a fair line of questioning. 

13 MR. MARS DEN: The tissue effect is not part 

14 of the definition of return electrode, and I think the 

15 argument there is no return electrode in this particular 

16 prior-art reference and because it does, in fact, have a 

17 larger- ana of cemtact^ 

18 does meet the Court's definition of return electrode. 
THE COURT: Well, that's argument 
MR. BOBROW? That's argument 
THE COURT: I think that is argument 
I'm working the jury instructions and verdict 

23 form. I apologize if I'm not keeping up to speed with 
[24 you all, but I think it's a fair line of questioning. All 
125 right 


Conde nselt™ 

Page 1389 


Thursday, May 8, 2003 
Page 1391 

MR. MARS DEN: Thank you. 
THE COURT: should we address the other issue? 
MR. HEBERT: it's an issue Mr. Blumenfeld has. 
THE COURT: why don't we do that 
MR. BLUMENFELD: Your Honor, it's an issue I 
raised this morning that Smith & Nephew advised us last 
night that they intend to use with Mr. Raffle this 
afternoon, the Ethicon license agreement and their antitrust 
counterclaim. Arid when I asked Mr. Hebert this morning in 
the hall whether he still intended to do that, he said yes, 
because I had opened the door to that on my cross- 
examination of Mr. Sparks. If I opened the door on the 
Ethicon license and the antitrust counterclaim, I missed 
it, and I guess it's to Mr. Hebert to explain how I did 
that 

THE COURT: And what relevance it has in the 
first instance. 

MR. hebert: what this goes to, this is raised 

19 in one of the motions in limine and ArthroCare moved in 

|20 limine to keep out evidence of the antitrust issues. Your 

21 Honor conditionally granted that and said - this is Item 

|22 No. 7 in motions in limine. It was granted so long as 

23 ArthroCare does not introduce evince regarding the 

24 Ethicon license. And then the ruling goes on to deal with 

25 the issue about the harmful effects which are talked about 


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ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


And Mr. Bhjmenfeid did get into this in cross- 
eacamination of Mr. Sparks when he is asking him about a 
Smith & Nephew document which talks about competition and 
he directs him to that and he directs him to the portion 
mat discusses that Mitek and Stiyker - now, Mitek is a 
division of Ethicon, so when it talks about Mitek, there 

8 is no dispute about this, ifs talking about Ethicon as 

9 wdL It's one and the same - arc paying royalties in 
1 10 return for ticensing the ArthroCare patents. 

So that is what he was asking Mr. Sparks about 
in his crossxxaniination. He was asking him if he knew 
about the ArthroCare patents that were being discussed in 
regard to flat licensing point and document 

MR. BLUMENFELD: Your Honor, I have a 
transcript What I asked Mm, this is the question: 

"Question: Under exceptive; at the top, if you * 
can highlight, in that section there is a reference to, 
right in the middle, to key ArthroCare patents and I 
highlighted the three words 'key ArthroCare patents.' Do 
you sec? It's the third line down. 
"Answer In that section? 
"Question: At the top of the page. 
"Answer Right I have got it 
' 1 Q ttcst K> n ' D o you know what key ArthroCare 

Page 1389 - Page 1392 


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Conde nselt 

Page 1393 

patents were, what key ArthroCare patents were that Smith & 
Nephew was referring to?* 

That was my question and it had nothing to do 
with licenses. I didn't ask about licenses. I haven't 
asked anyone about licenses. 

MR. HEBERT: But at the same time he asked the 
question, he broadcast the marketing plan and highlighted 
the portion of the marketing plan that talks about the 
Mitek and Stryker paying royalties to ArthroCare in terms 
of the licensing. 

So that would be what we say would open the 

door. 

THE COURT: And what is the relevance of this 
evidence in the first place, given the fact you have so 
little time to present evidence in the second place? 

MR. HEBERT: To undercut any suggestion that 
the patents are strong because they're licensed. They're 
licensed because of this very unusual relationship that 
19 ArthroCare and Ethicon have entered into which gives rise 
|20 to the antitrust claim as opposed to any strength in the 

21 patents; 

22 It would only be a couple questions, two or 

23 three questions. 

24 the COURT: Yes, but it's such a subtle point 

25 I don't believe that it's appropriate. 


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Page 1395 


AFTERNOON SESSION 
(Proceedings resumed at 1 :30 pjn.) 
the COURT: All right. Let's bring the jury 


1 (At this point the jury entered the courtroom 

► and took their seats in the box.) 

> THE COURT: Mr. Bobrow. 

1 1 MR. BOBROW: Thank you, your Honor. Good 

1 2 afternoon, ladies and gentlemen. 

13 BY MR. BOBROW: 

14 Q. Good afternoon, Dr. Taylor. 

15 A. Good afternoon. 

16 Q. I believe that at the close of our session before 

17 lunch, I had asked you a question, and there was an 

18 objection to that I think that issue has now been resolved 

19 Let me go back to that question. We were 
|20 talking about the Doss '007 patent; correct? 
21 A. Correct. 

1 22 Q. And I had asked you some questions, for example, 
about Figure 7 of the Doss '007 patent Do you recall, 
that was the context for our discussion? 
A. Yes. 


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All right Let's take some time. 

MS. BOYD: Your Honor, we would like to read 
an Interrogatory response sometime before closing our case, 
Interrogatory Response No. 7. We have an agreement, I 
believe, from the other side. 

THE COURT: Interrogatory Response No. 7? 

MR. BOBROW: No objection. 

THE COURT: All right 

MS. BOYD: Thank you. 

(Luncheon recess taken at 1:10 pjn.) 


Page 1396 

Q. And I asked you a question before lunch, and this is 

the question I would now like you to answer. Is h true 

that in the Doss '007 patent, that each electrode in each 

of the probes is designed to cause a tissue effect, in 

this particular case in the tissue of the eye? 

A. Would you mind putting back the figures, the two 

figures? 

Thank you. 

Q. So again, my question, sir, simply is, is each 
electrode designed to cause a tissue effect? 
A. Yes. 

Q. Now, in this figure, we had talked about these 
current flux lines before lunch. 

Do you recall that? 
A. Yes. 

Q. And here — and it's probably hard, given how shaky 
I am with my pointer - do you see that number 102? 
A. Yes. 

Q. And there is a region here right underneath this 
electrode where it appears that the current flux lines 
are not shown. Do you see that? Right in this region 
here. Just above 1 02, it appears it is not showing a 
current flux line in that region; correct? 
A. That's correct, yes. 

Q. Instead it is showing these flux lines going out 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Page 1393 - Page 1396 


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Page 1397 

I this way, from here in this case the right to the left, 
I and here from the left to the right. 
J Do you see what I am talking about there? 

\ A. Yes. 

i Q. Now, imagine, if you would, instead of pointing down 

> in this fashion, you sort of looked at it end on and you 

' looked at those current lines end on. Do you have that in 
t mind now? 

► A. Yes. 

1 Q And if the current lines were as they are depicted 
here, going from this electrode to here and from this 
electrode to here, essentially, those current flux lines 
would look sort of like a donut; right? 

In other words, you have a hole in the middle, 
where there weren't current flux lines, then you would 
have some current flux lines in sort of a donut shape. 
Is that fair? 

A. Yes. I am not sure exactly how the donut would look. 
It might not look like a regular donut we are familiar 
with. A toroid of some sort 
Q. And a toroid is basically just a ring; correct? 
A. It's a three-dimensional ring, yes. 
Q. It is sort of like a washer that you might use with 
a nut and a bolt; it's got a hole in the middle and there 
is sort of a ring with so me mass around it? 

Page 1398 

1 A. That's right It's sort of a Tnalman (phonetic) 

2 washer. 

3 Q. Why don't we take a look, then, at the DossOD7 

4 patent Specifically Column 5? 

5 A. Which one is that again? 

6 Q. Hie DTX number is 17. 

7 A. 17. 

B Q. Okay. Do you have that, sir? 
? A_ Which one was it again? 
) Q. Column 5. The paragraph that I have interest in, 
t actually, starts around Line 27. It begins, Figures7 
! and 8 . 

» MR. BOBROW: Chris, do you have that? 

f THE WITNESS: okay, I see it 

; BY MR. BOBROW: 

Q. All right And here, this part of the Doss' 007 

patent is talking about the figure that you had up in 

direct examination and the figure, in fact, that we just 

had up and were talking about with these donut or toroid 

shaped lines; correct? 

A. That's correct 

Q. Ifyo«takeaIcokatarxmtLine43,there 
sentence that says, quote, An advantage of this particular 
electrode configuration is that a ring or torus-shaped 
treatment region can be realized, since electric current 


Thursday, May 8, 200; 

Page 1399 

flows essentially in a torus-shaped volume under and 
between electrodes 72 and 74. 

Do you see what I am referring to there? 
A. Yes. 

Q. Now, when it is referring there to a toms-shaped 
volume, that is referring to the volume of tissue that 
is being treated in this case by the electrosurgical 
energy of this device; right? 
A That's what it would imply, yes. 
Q. And the Doss patent is generally describing an 
electrosurgical device that is designed to use this 
current to provide some heating within the corneal and 
other tissues of the eye; correct? It is supposed to 
provide some deep heating, essentially? 
A. Heating. I am not sure I would characterize it as 
deep. It is designed to shape the cornea. 
Q. So what this is saying then ~ if we could back to 
Figure 7 - is that both of these electrodes here, which 
it describes as electrodes 72 and 74, in each of these 
regions, one to the left and one to the right, you will 
have as a result of the current flow between those 
electrodes a region of tissue that has been wanned or 
heated and thereby treated within the eye, in this torus 
shaped fashion; is that right? 
A. Correct 

Page 1400 

Q. Now, on the direct examination, you had said that 
this Doss patent anticipates Claim 45 and - and the 
dependent claims with respect to the '536 patent; correct? 
A. Yes. 

Q. And one of the limitations of Claim 45 of the '536 
patent, and thus a limitation in all of the claims that 
depend from it, is the limitation that provides that you 
have a connector near the proximal end of the shaft 

Do you recall that? 
A. Right 

Q. And the proximal end of the shaft is sort of the 
back part of the shaft, not the tip of the device that 
you would be inserting in towards the tissue treatment 
area, but removed from that towards the back; correct? 
A. Yes. 

Q. And here in the Doss '007 patent, would you agree 

17 with me that there is no disclosure of where the connector 

18 is located, in other words, there is nothing that tells 

19 you where the connector is located with respect to the 

20 shaft? 

21 A. Hold on a second. 

22 I believe that's correct There is no 

23 specific mention of the location of that 


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Q. Okay. Now, you had also mentioned that you believe 
that the Doss '007 patent anticipated some of the claims 
of the '592 patent. 

Do you recall that? 

A. Yes. 

Q. And I think that one of those claims was Claim 21 of 

8 the '592, which talks about a voltage in the range of 

9 from 500 volts to 1400 volts peak to peak; is that right? 

10 A. Yes, that's the language I remember. Yes. 

1 1 Q. And it's your testimony that the Doss '007 patent 
necessarily discloses a voltage in the range of 500 
volts peak to peak. Is that true? 
A. I think it does disclose that range, yes. 

15 Q. And the portion of the patent you base that 

16 testimony on was a passage at the very beginning of the 
text of the patent that talks about the voltage being 
between about 20 and 200 volts RMS; correct? 
A. That's correct. 

Q. What did you when you did your calculation to go 
from an RMS - that stands fox roots means square, does it 


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A. Sure does. 

Q. So to go from the root means square voltage to the 


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Page 1402 

1 forth in the page by 2.83 and that gets your north 

2 someplace of about 568 volt peaks to peak; right? 
A. Roughly. 

Q. Now, in terms of calculating the peak to peak 
voltage, isn't you true that you need to know the waveform 
that the generator is producing? 
A. Yes, you do. 

Q. You need to know whether it's a sine wave, whether 
it's a square wave or some other waveform; is that correct? 
A. That's correct 

Q And there is nothing in the Doss patent that says 
|12 that a sine wave is used with this generator; correct? 
J 13 A. That's correct 

|l4 Q. So we don't know whether there is a sine wave here 
15 or a square wave or some other waveform; right? 

1 16 A. You're correct But, to my knowtajge* there are no 

1 17 cttmmerciaUy-available square wave generators. 

18 Q. But you don't know what Mr. Doss may have been 

19 working with in his lab or what you have when he was 
120 writing this application, do you? 
21 A. No. 

J22 Q. And whether it's commercially available or not isn't 
23 the test, is it? 
|24 A. No, it's not the test 
125 Q. All right 


Page 1403 

A. However, it could be used with a sine wave 
generator. 

Q. But it could be used with a square wave generator? 
A. Could be. 

Q. And square wave generators are known in the 

electrosurgical art, aren't they? 

A. They are but not necessarily practiced. 

Q. In fact, one of the references, the Slager reference 

actually used a square wave generator? 

A. Yes, it did 

Q. That was in the electrosurgical context; right? 
A. Yes. 

Q. So in terms of what is actually disclosed in the 
Doss patent, we don't know whether it was a sine wave or 
a square wave or something else. True? 
A. True. 

Q. Now, if you are calculating the peak-to-peak voltage 
from the root-means-square voltage, if the waveform in 
Doss were a square wave, when you go from 200 volts RMS 
to peak to peak, that's 400, isn't it? 
A. Actually, if you actually use the correct formula of 
the root-means-square calculation, which it's an 
integrations calculus, it depends whether or hot the 
period of the square wave is equal. 

But if you make the assumption - let me 


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Page 1404 

finish ~ if you make the assumption that is an equal 
period, I think that formula is correct But, frankly, 
I haven't done the math. 

Q. Okay. But it's your best understanding here that 
if you have a square wave where the waveform is symmetric 
and you go from RMS to peak to peak and it's a square 
wave, then the Doss patent would be disclosing 
approximately 400 volts peak volts peak to peak; right? 
A. Yes, according to your formula. Now, like Pd said, 
I haven't done the math, but I'll presume that you have and 
that you're correct 

Q. Now, you have a background in electrical engineering; 
is that right? 
A. Yes. 

Q Now, let me ask you now a few questions about the 
Pao '499 patent And this was another patent that you 
discussed this morning on your direct examination with 
respect to the '536 patent 

Do you have that, sir? 
A. Yes, I have it 

Q. Now, the Pao patent, '499 patent, which is mx-2l, 
this was one of the patents that was also in front of the 
Patent Office during the prosecution of the '536 patent; 
correct? 

MR. bobrow: why don't we call that up, Chris? 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


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JuryTnal - Volume G Conde nselt™ 

Page 1405 

THE WITNESS: Yes. 
BY MR. BOBROW: 

Q- All right. And if you take a look down there maybe ten 
items down, you see 4,674,499, Pao? 
A. Yes. 

Q. And that's DTX-21? 
A. Yes, it is. 

Q. And this same patent also was before the Patent 
Office in connection with the re-examination is that 
right -- of the '536 patent? 
A. I believe so, yes. 

Q. And with respect to the '536 patent, of course, the 
Patent Office granted ArthroCare's '536 patent ova- the 
Pao '499 patent; right? 

A. Yes. And that's probably one of the reasons why 
we're here today. 

Q. Now, as far as the Pao patent, I believe that you 
had shown earlier a couple of figures from the Pao patent 
Why don't we pull up in the patent the figure that I think 
you had up, which I think was Figure 9 

MR. BOBROW: Can you call that up, please, 

Chris? 

And why don't you highlight Figure 9 on that 

page? 


Page 1406 

BY MR. BOBROW: 

Q. All right And is that the figure, sir, obviously 
with colors added that you were using during your direct 
examination? 

A. It was one of the figures, yes. 
Q. And actually, the Pao '499 patent describes a number 
of different device configurations, doesn't it? 
A. It does. 

Q. And it looks like there are 12, 13, 14, some odd 

110 number of figures. TTiere is a fak number. But would you 

111 agree with me, sir, that the instruments that are described 
here in the Pao patent all have what is: called a coaxial 
configuration? 

A. In terms of the electrode configuration? 
Q. Yes. 
A. Yes. 

Q. By coaxial, we know they're saying out certain tube 
|l8 and within that tube is another one of the electrodes; 
(19 correct? 
120 A. That's correct 

J2I Q. So the outer electrode serves - I'm sorry - the 
22 outer tube served as an electrode and the irmeronedoes 
123 as well? 
(24 A. Yes. 

I 25 And we call that coaxial in the electrosurgical area; 


1 

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ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Thursday, May 8, 2003 
Page 1407 j 

correct? j 

A. Yes. I 

i. 

Q. If you would, please, let's take a look at Column 9 | 
of the '499 patent and specifically there is a paragraph 
that begins about Line 48 and runs down to about 63. 
MR. BOBROW: chris, if you could highlight that, 

please... 

BY MR. BOBROW: 

Q. All right And we have the text up. I'm sorry, sir. 
Do you have that page? 
A- I'm sorry. You said Column 8 or 9? 
Q. 9, 1 believe, is where we are. And we're at « 
A. Oil, yes. Okay. I'm sorry. 
Q. No problem. So that paragraph begins, quote, The 
coaxial bipolar probes of the present invention are used 
generally as follows. 

Do you see what I'm referring to there? 
A. Yes. 

Q. And so what is being described here is the use of 
the various probes, and there are a number of them, but 
the various probes are coaxial in this patent; right? 
A. Yes. 

Q. And as you move down in this paragraph, about line 
58, there is a sentence that says, quote, The end of the 
probe region is placed against the tis sue causing the 

Page 1408 

1 first ends of the axial and outer electrodes respectively 

2 to come into contact with the tissue. Electrical current 
then flows through the tissue between the axial and outer 
electrodes. 

Do you see that, sir? 
A. Yes. 

Q- Now, here in this passage, when it is talking about 

8 the, first of all, the axial electrode, that's talking 

9 about the active electrode; is that right? 

10 A. Yes. 

11 Q. And we're referring here to the outer electrodes. 

12 In your view, that would be trie reference to 

13 electrode here. The outer one of the electrodes in this 

14 coaxial configuration; is that right? 

15 A. That's my view, yes. 

16 Q. And here in this text, where it's describing the 

17 operation of the coaxial probes, it says that, in effect, * 

18 then the axial and the outer electrodes come into contact 

19 with the tissue; right? 

20 A. Yes. 

21 Q. And so, if you're interpreting the outer electrodes 

22 as being a return, that means there the return electrode 
[23 as described in this paragraph is in contact with the 

24 tissue; right? 

25 A. Yes. And this is one description how it could be 


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Jury Trial - Volume G Conde nselt™ 

Page 1409 

used, but there are other descriptions where the outer 
electrode and return electrode does not contact tissue. 
Q. We can come to that; but here, this is actually 
describing how these are devices are used That's up at 
Line 48. It says are used generally as follows; right? 
A. But it doesn't say exclusively used, but it does say 
used generally as follows. 
Q. And the way it's generally used is with both 
electrodes contacting the tissue? 
A. I'm not sure I would go there, but that's - that is 
one way of it being used. 

Q. All right. And then it says the electrical current 
then flows through the tissue between the axial and the 
outer electrodes; right? 
A. Yes. 

Q. And it says it then flows immediately after saying 
that both the active and the return are in contact with 
the tissue; correct? 
A. In this description of its use, yes. 
Q. So in this description of its use, what it's 
essentially saying is that you put the active and the 
return in contact with tissue and then the current then 
will flow between those two electrodes through the tissue; 
right? 

A - And this is one way, yes. Hie answer to your 

Page 1410 

question is yes, and this is one way you use the device. 
It's not the only way. 

Q. All right Now let's take a look, if we might, at 
Column 3 of the same patent 

And if you look at Column 3 at about Line 1 1, 
going to about Line 15... 

Do you see what I'm referring to? 
Does that start with, The probe region? 
Yes, The probe region. 

Do you see that? 
Yes. 

And the probe region in these devices is talking 
about the end of the devices, right, where the active 
and return electrodes are? 

A. I think in this particular patent, they're actually 
referring to the entire probe. So the entire metallic 
part of the shaft going from the distal end up to where 
the handle spot is. 

I think that's what they mean, but I could be 

wrong. 

Q. But around Lines 1 1 to 15, there is, once again, a 
reference to tissue contact being made. 

Do you see what I'm referring to there? 
A. Lines 11 to — 
Q. About Line 15. 


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ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Thursday, May 8, 2003 
Page 1411 

A. Yes. 

Q. And now if we go over to Column 8, at about Line 53, 
there is a discussion there about Figure 12. 
A What column? What line? 
Q. Column 8, Line 53 going down to about 60. 

And perhaps - do you have that language, sir? 
A The preferred probe? That one? Yes. 
Q. Right. And here in the description of Figure 12, 
it talks about inserting the probe through a small limbal 
incision in the cornea and that it's placed in firm 
contact with the nucleus 300, as shown in Figure 12. 

Do you see that? 
A Yes. 

Can I look at the figure for a second? 
Q. Yes? 

MR. BOBROW; why don't we put Figure 12 up, 

please? 

BY MR. BOBROW: 

Q. Now, Figure 12 is a diagram of the human eye; right? 
A Well, yes. Part of it, yes. 
Q. Sure. And over here, from, going from right to 
left, that's the probe; right? 
A. Right 

Q. And here, this circle labeled 300, what is that? 
A. That's the nucleus of t he eye - nucleus of the lens, 

Page 1412 

I should say. 

Q. Okay. And this device is shown to be inserted 
within the volume of the eye. Is that true? 
A. Yes. 

Q. What is the nucleus made of? 
A. I can't tell you the exact tissue description, but 
it's tissue, probably collagen and some other stuff. 
Q So the nucleus of the eye is a form of tissue; 
correct? 
A; Yes. 

Q. And tip of this probe here, the reason it's shown in 
a dashed phantom way like that is because it's being 
inserted into a solid object; right? 
A. Yes. 

Q. And that solid object in this case is tissue? 
A. Yes. 

Q. Now, let me turn, if I might, to another reference « 
that you had talked about a bit earlier today, which is the 
Slager reference, which is DTX-65. 
A. I have it 

Q. Do you have that, sir? 
A. Yes. 

Q. And I believe that earlier today you had testified 
that various claims of the '882 patent and the '592 
patent were anticipated by the Slager reference; is that 

Page 1409 -Page 1412 


Jury Trial - Volume G Conde nselt™ 

Page 1413 

correct? 
A. Yes, I did 

Q. Okay. And you didn't say that Slager was relevant 
to the '536, but that it was relevant to '882 and to f 592? 
A. That's correct, yes. 

Q. Now, in the Slager article, there are two tests that 
are being described here; right? One being done in vitro 
and one being done essentially in vivo in a pig; is that 
right? 
A. Yes. 


Page 1414] 

Q. And the portions of this article that you were saying 
were relevant to the '882 and the '592 patent related to 
the in-vitro test; correct? Not to the test on the pig? 
A. You said the in-vitro test? 
Q. Idid. 
A. Yes. 

Q. Okay The in vitro means what in this article? 
A: In vitro means it's outside the body, generally in a 
dish preparation of some sort I guess it's the opposite 

111 of in vivo, which is inside the body. 

112 Q. So the tests that were being done here, when they 

> described the tests as being in vitro, those are outside 
\ a patient's body, correct? 

> A. Outside anybody's body, any animal's body. 
- Q. Or human being? 

A. Well, I hope animals 

Q. Fair enough. For the context that brings us here, 
what is being described here as in vitro is something that 
is not done in a living human patient; correct? 
A. That's correct 

Q. Instead it is typically done in some sort of dish, 
bowl, in a laboratory; right? 
A. In some preparation or another, yes, a dish. 
Q. What is being described here in the Slager article 
ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


Thursday, May 8, 20 03 
Page 1415 

is that some pieces of aortic tissue from an aorta, from 
a cadaver were taken and were put into some sort of a 
dish; correct? 
A. Yes. 

Q. Then I think that you mentioned earlier that there 
was some saline that was administered and then put into 
that same dish; correct? 
A. Yes. 

Q. Now, there is no indication, is there, as to how 
the saline got into the dish; right? 
A. Well, it has to be poured in. It doesn't just 
magically appear. It is not specifically said in the 
article that somebody poured in or delivered to the dish 
the saline. 

Q. And certainly, there is nothing in here that says 
that the fluid was supplied to the dish through the 
Jl7 electrode that was put in contact with the tissue; right? 
A. That's correct 

Q. And in terms of describing the setup for this Slager 
reference, where you have a dish, you have some tissue in 
the dish, you have some fluid that somehow got there, and 
then you have an electrode that gets put onto the tissue, 
then you apply energy, supply it from a generator, you 
would agree with me, wouldn't you, that that is describing 
an electrosurgical system? 

Page 1416 

A- I am sorry. Can you repeat the question? 
Q. Sure. What I am asking, sir, is in this experiment, 
where you have a dish, you have some tissue in the dish, 
you have saline that has been put into the dish, you bring 
an electrode in contact with the tissue, and you apply 
energy in a generator, that is describing an 
electrosurgical system. True? 
A. Yes. 

Q. And it's describing an electrosurgical system even 
though we don't have any idea how the fluid got into the 
dish; correct? 
A. That's right 

Q. And it's an electrosurgical system even though the 
fluid didn't come in through the electrode that is 
described here in Slager, correct? 

A. Yes. 

Q. Now, in this Slager patent - 1 am sorry, it is not * 
a: patent, it is a paper. In the Slager paper, there is 
another experiment that is described as we had mentioned 
that is in a - that was done in a pig; correct? 
A. Yes. 

Q. And they call that the in vivo test; right? 
A. Yes. 

Q. And in that particular test, the article says that 
there was a subcuta neous needle, ten centimeters long, 

Page 1413 -Page 1416 


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Page 1425 

1 Q. Yes. I i 

2 A. Most likely you would, yes. 2 

3 Q. Now, you also had mentioned that the Stager article I 3 

4 talks about suction. I think this was in reference to 4 

5 Claim 54 of the '882 patent that has in it this 5 

6 requirement that there be evacuation of fluid; correct? 6 

7 A. Yes. 7 

8 Q. And if you take a look at the last page of the I 8 

9 article, the second paragraph down, over on the left-hand 9 
|10 side, it says one of the areas deserving further attention. llO 

11 Do you see that? H 

12 A. Yes, I do. 12 

13 Q. And in this part of the article, it is talking about 13 

14 bubbles being generated when this dievice is used; right? 14 

15 A. Yes. 15 

116 Q. And so it says that one could look into using a, 16 

117 quote, suction technique, do you see that, to solve the 17 

1 8 problem of the bubbles; right? 1 g 

19 A. Yes. 19 
120 Q. And in terms of this suction technique, the suction 20 
|2I technique that is described here, it doesn't say where 121 
1 22 the suction lumen would be that is performing the suction; 22 

23 right? 23 

124 A. It does not. |24 

|25 Q. It doesn't even say what it is that is going to be |25 


Page 1427 

cadaver. 

Q. And the energy wasn't being applied to a patient, 
was it? 

A Well, from the perspective of a patient being 
referred to as someone that is alive, that's correct. 
Q. And so in terms of the tissue, there was a cadaver, 
the tissue was taken from the cadaver, placed into a dish; 
right? And then energy was applied to it there. It wasn't 
on an animal or a human being or what-have-you at the time; 
right? 

A. Right, yes. The tissue was not living tissue. It 

was human tissue, but it wasn't living tissue. 

Q. It wasn't living tissue and it wasn't on the patient's 

body when the energy was applied; correct? 

A. That's true. The reason I am hesitating is, the 

aorta is part of your body. 

Q. I am not saying it's not tissue. My question is, 
when the energy was applied, it wasn't on a patient's body. 
Is that true? 
A. That's true. 

Q. Now let's take a look at the '882 patent You had 
mentioned that the Slager article is also relevant to 
Claim 1 of the '882 patent; right? 
A. Yes. 

Q. And again here, we have the Slager article has a 


Page 1426 

1 used to suck away the bubbles, does it? | 1 

2 a. No. 2 

3 Q. So we don't know from this description whether the 3 

4 suction would be taking place through a himen that is 4 

5 adjacent to an electrode, do we? 5 

6 A. No, we don't J 6 

7 Q. Now, I had some questions for you, also, about the I 7 

8 Manwaring patent Actually, let's stay on Slager for 8 

9 just a minute, because I think I forgot to ask you a 9 

110 question. To do that, I think I am going to need to put Jio 

111 up one of the claims from the '592 patent Here at the 111 

12 very top, we have Claim 23, and this says a method for 12 

13 applying electrical energy to a target site on the body 13 
[14 structure that is on or within a patient's body. 14 

15 Do you see that? |l5 

16 a. Yes. l 6 

17 Q. And it looks like that box over there was checked Il7 
Jl8 in black, do you see what I am referring to? lis 
19 A Yes. 19 

J20 Q. Now, would you agree with me that in the Slager 20 

121 article, in the in vitro test we were talking about, the I21 

22 energy was being applied to aortic tissue that had been 22 

123 taken from a cadaver a couple of days before; is that 23 

24 right? 24 

125 A I am not sure about the time. It was taken from a |25 


Page 1428 

checkmark by it next to this language from Claim 1; 

correct? 

A. Yes. 

Q. And the language there is a method for applying 
energy to a target site on a patient body structure 
comprising. 

Do you see that? 
A. Yes. 

Q. And once again, the tissue to which the energy was 
applied in the Slager article was no longer part of a 
living human being; correct? 
A. Correct 

Q. The tissue at that point in time was dead; right? 
A. Correct 

Q. And so there wasn't any application of energy to a 
patient, was there? 

A No. * 
Q. Did you hear Mr. Marsden's opening statement? 
A Yes. But that's been some time ago. 
Q. But do you recall that Mr. Marsden was suggesting 
that Smith & Nephew didn't infringe the method claims 
itself because it was in the business of making and 
selling these devices, not using them; correct? 
A That's correct. 

Q. And not using them on patients; right? 


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A. That's correct. 

Q. And so he was saying that they didn't, Smith & 
Nephew didn't infringe these method claims because they 
didn't perform the surgeries themselves on patients' 
bodies; right? 
A. That's correct. 

Q. Would you agree with him that if you are not using 
the device on a patient's body, that you are not 
infringing Claim 1 of the '882 patent or the method claims 
of the '592 patent? 
A Yes. 

Q. Now, since we have the '882 up, let me ask you some 
questions about the Manwaring reference. This is the 
# 138 patent. And I apologize, sir, I believe that's 
DTX-46. 
A I have it. 

Q. Now, as far as the Manwaring patent goes, once 
again, in connection with your work as an expert in this 

19 matter, when you prepared your expert report, you didn't 

20 perform tests using the Manwaring device to see whether 
121 or not it emitted photons in the ultraviolet light; 

correct? 

A. Hiat's correct 

Q. Now, when you were analyzing the Saphyre bipolar 
ablation probes, I take it that you also didn't do a test 


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back at that time to determine whether or not those 
emitted UV light, either, did you? 
A. When you say analyzing, are we talking about the 
experiments 1 did? 

Q. Your use of the device prior to the time you 
submitted your expert report, you didn't look at whether 
those devices did or didn't emit ultraviolet photon either. 
Is that true? 
A. That's correct, yes. 
Q. Now, takmg a lrok here at the Ma^ 
wiry don't we pull up Figure 5? 


Q. (Continuing) And Figure 5 is a closeup of the tip of 
the Manwaring device; correct? 
A. Yes. 

Q. And there is a little region there that, here, where 
the tip, it says it's in a fluid-filled medium; is that 
right? 
A. Yes. 

Q. And then here, Item 36, we have the tip of an 
electrode; correct? 
A. Yes. 

Q. And then over here, it says tissue over to the right- 
hand side; correct? 
A. Yes. 

Q. Now, in column 7 of this patent, there is a 
discussion about using an embodiment of this device where 
fluid is not delivered through the device to the tissue; 
correct? 

That's at Column 7 around line 19? 
A. Oh. Column 7 says - okay. Column 7, Line 19. 
Q. Right That says if the source of pressurized fluid 
as illustrated in Figure 2 were omitted; correct? 
A. Yes. 

Q. Now we're talking about fluid not being delivered 
to the region of the body that is being treated here; 


Page 1432 

1 right? We're not affirmatively delivering the fluid? 

2 A. Hiat's right 
Q. And so it says for this device to work, you need to 
essentially suck some of the fluid, it might be the 
cerebral spinal fluid, that's in the working field into 
the tip of the device; correct? 
A. Yes. 

Q. And when you suck that fluid into the tip of the 
device, that fluid is going to be in the vicinity of the 
tip of the electrode. 


11 MR. fiOBROW: if we can put up Figure 5 again... 

12 BY MR. BOBROW: 

13 Q. Right So here we have Figure 5, and if some fluid 

14 is drawn in, the fluid is going to be in this region here, 

15 right next to this No. 36 of the probe; right? 

16 A. Yes. 

17 Q. And the flmd that is gorog tote bra 4 

18 tip of that tube is going to be in the vicinity of the 

19 tissue, if that you are trying to treat this tissue here 

20 that is shown here in Figure 5; right? 

21 A. Yes. But presumably it could also be from areas 

22 that are outside of that specific location. 

23 Q. Right But you are not going to take the fluid 

24 from this region at the tip and suck all of the fluid way 
. ^ : j25 over here, way u p into the device and leave no fluid down 

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1 at the tip, are you? You're going to suck fluid in, so 

2 that electrode tip has some fluid in contact with it; 

3 right? 
A. Oh, yes. 

Q And that fluid that you suck in, there is going to 
be some fluid right there at the tip of the device and 
right there on the tissue and you are going to apply 

8 energy to that; right? 

9 A Let me see if I understand what you are sayi ng 

10 Are you saying there will be fluid inside this space here? 

11 Q. Yes. 

12 A. Is that what you are saying? 

13 Q. At the very tip of the device, when you suck some 

14 of the fluid in, you will have fluid at the very tip of the 

15 device? 
A. Yes. 

17 Q. And then you will apply some energy to that; right? 

18 A. Yes, when you operate the device. Yes. 

19 Q. Right And then when you apply the energy, you get 

20 sparking; right? 
A. Yes. 

22 Q. And then what this patent tells you is that you get 

23 the sparking and that sparking then leads to the 
124 vaporization of the fluid; correct? 
25 A. In this particular — yes. Yes. 


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A. Since the Codman ME 2 device essentially practices 
Dr. Manwaring's patent, I didn't have to. I could buy one. 
Q. But you didn't buy one? 
A. No. 

Q. So I'm asking you, sir, whether you built one? 
A. Oh. No. 

Q. Okay. You didn't try to build a device that - using 
the specification and the like, try to build a device that 
would be consistent with the teachings of the patent? 
That's all I'm asking. 

A. Yes, but let me be clear. We're talking about 
building a device that would practice the corrected Claim 
1? 

Q. Good question. The answer is yes. Did you attempt 
to build the device that would practice the corrected 
Claim 1 at the time you were doing your work, on your 
expert report? Did you build such a device? 
A. No. Because I already developed devices that meet 
that 

Q. But you didn't try to build one yourself? 
A. I got one sitting on my shelf on my bookcase at 
home. 

Q. You didn't build one, sir? Could you answer the 
question? 

THE COURT: please just answer the question. 


1 Q. All right Now, you had mentioned before that you 

2 had some question, and I think it was your opinion that 

3 if this claim, the f 882 patent, if it f s vah"4 then you 

4 had, h was your opinion that it wasn't enabled; right? 

5 I think you offered that opinion this mnming on 

6 direct examination? Or did I get that wrong? 

7 A. Without getting into the kgal terms here, if that 

8 patent is valid, it applies to a lot of other devices 

9 that are process devices. 

|10 Q. Okay. Now, in connection with your work on this 

111 matter, how many hours have you spent on this matter up 

1 12 through today? 

113 A. Up through today? 
|14 Q. Sure. 

J15 A. It's between three and four hundred. 

|16 Q. And all of those three and four hundred hours were 

117 compensated at $150 an hour? 

|18 A. That's correct 

119 Q. And you've been paid by Smith & Nephew for your work; 
|20 is that correct? 
21 A. That's correct 

122 Q. Now, in connection with your three and four hundred 

123 hours of work you spent on this matter, did you attempt to 

124 build a device that would embody Claim 1 of the '882 
|25 patent? Did you try to build it? 


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Page 1436 

THE WITNESS: No, I did not 

I thought I already answered the question. 

BY MR. BOBROW: 

Q. So now, as far as the teachings of the '882 patent 
go, would you agree with me there is a discussion in the 
? 882 patent of some of the preferred ways of trying to 
practice Claim 1 of the '882 patent? 
A. Yes. 

Q. Would you agree with me there are preferred voltage 
ranges that are set forth? 
A. Do you mind if I go back to the patent? 
Q. Please. 
A. Yes. 

Q. And in addition to preferred voltage ranges, there 
are preferred materials with instruction for the electrode; 
correct? The active electrode? 
A. Yes. * 
Q. If you take a look, sir, at the bottom of Column 16? 
A, I found it, yes. 

Q. And it says, it refers to metals like titanium and 
platinum. 

Do you see that? 
A. Yes. 

Q. And this also gives preferred frequendes; correct? 
A. Yes, it does. 


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Q. And that's at Column 13; right? 
A. Yes. 

Q. And the voltage range, the preferred ones are also 
set forth in Column 13, aren't they? 
A. Yes. 

Q. There is also a preferred fluid that is supplied 
and that's in Column 12, right, at around Line 38 
A. Yes. 

Q. And it also provides preferred power levels; right? 
A. Can you direct me there so I don't 
Q. I can. I'm sorry. This is at the top of Column 14. 
There is a range preferred power levels. 
A. Yes. 

Q And also there are preferred contact surface area 
values for the active electrode in Column 15; right? 
A. Yes. 

Q. And there are preferred distances from the tissue 
that are set forth at the bottom of Column 1 5; right? 
A. Yes. 

Q. Now, in connection with your work in this field of 
electrosurgery, I think you testified that you had a 
couple of patents that had issued to you. I think you 
said five? 

A. Five total, two in electrosurgery. 
Q. And in connection with the patents that you have 


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infringes the patents; correct? 

A. Yes, the accused products. Yes. 

Q. Fair enough. And in terms of the use of that, you 

were being assisted in your use by a laboratory manager; 

correct? 

A. Yes. 

Q. There was somebody from there from Smith & Nephew 
who was assisting you with the setup of the experiment 
and the operation of the devices; correct? 
A. That's correct 

Q. And you had a chance to use, at a very minimum, the 
Saphyre; correct? 

A I used all three products, but I did use the Saphyre. 
Q. And when did you these tests, there were recordings 
made of what was going on inside of this cadaver shoulder 
where the experiments were taking place; right? 
A That's coned 

Q. And that was done through some sort of a scope; 
correct? 
A Weil- 

Q. There was a little video camera? 
A Yes. There was a little video camera that was 
attached to the scope and that did the recording. 
Q. When you did the recordings, those were actually 


25 permanently recorded onto a CD; correct? 


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Page 1438 1 

1 been involved in writing, I take it it's true that when 

2 you were writing those patents, you would say what you 
believe to be a preferred way of practicing the inventions 
that you had come up with, right? 
A That's correct 

Q. And did you that so that could give some guidance 
to people who were reading the patent once the patent 

8 expired how to duplicate the device; right? 

9 A. Right 

110 Q. And it's your expectation, isn't it, that a person 

111 of skill in the art in looking at a patent would look at 

112 what the patent itself, the preferred ranges, the preferred 

113 materials, the preferred voltages and the rest to try to 

114 figure out how to practice the invention; correct? 

115 A. I would expect they would use that as their starting 
J16 point, yes. 

Jl7 Q. Now, sir, I heard your testimony earlier and you 

118 had mentioned that you had actually used some of the 

119 accused products at the Smith & Nephew, I think it's called 

120 a bioskills lab; is that right? 
21 A Yes. 

1 22 Q. And where is that? That's in Massachusetts? 

123 A. Yes, Massachusetts. Mansfield. 
J24 Q. And you went out to that facility and had a chance 
|25 to use the accused -- the products, the use of which use 


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A Yes. 

Q. And you ended up saving that data and producing it 
in connection with this case; correct? 
A Yes. 

Q. And in forming your opinion about how the devices 
work, you actually considered that information in 
determining whether or not there was or wasn't 
infringement by the accused products; right? 
A. Yes. 

MR. BOBROW: May I approach, your Honor? 
THE COURT: Yes, you may . 
BY MR. BOBROW: 

Q. I'm simply showing you, and I know you can't look 
inside of a CD, so I apologize in advance, but there was 
a CD that was produced to us with this production number 
SN10765. it's since been labeled PX-104 and it was 
represented to us that this was a set of recordings of 4 
some of the work that you did on the cadaver. I'll simply 
have to make that representation to you because I obviously 
can't show it to you unless we put it up on the screen. 

MR. BOBROW: I would move this CD into evidence. 

MR. MARSDEN: Your Honor, we'll object to its 
being moved into evidence. If he intends to use it for 
impeachment, that is one matter, but it's not appropriate 
to move into evidence with our expert witness. 


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1 THE COURT: Well, I'm not sure about that, but 

2 the problem is we don't generally -- this is, the exhibit 

3 is a test that the witness performed? 

4 MR. BOBROW: That's correct. 

5 THE COURT: I guess my problem is if this 

6 witness isn't the kind of witness who typically uses these 

7 products, I'm not sure what the relevance is or if the 

8 relevance is not waived by prejudice - without knowing 

9 what this is, I'm not sure what why it should come in. 
1 1 0 Maybe we should have a sidebar. 
Ill 

J 1 2 (Sidebar conference, out of the hearing of the 

1 13 jury, as follows.) 

114 MR. BOBROW: This is a videotape that this 

1 15 witness took so that he could understand how the devices 

1 16 operate. And it records that. He was being assisted by 
J17 somebody from Smith & Nephew at the time and so, given 
118 that, what I would like to be able to show just one clip 
|19 mat he used to show how he used the device and how he 

120 operated it and how the device functioned inside of the 

121 tissue. 

122 Now, Dr. Choti was allowed on his direct 

1 23 examination to show tapes of the ones that he actually 

1 24 prepared He is not an arthroscopic surgeon either, but 
J 25 what it does, it gives the jury a good sense of what the 


Page 1443 

1 courtroom when it was played, but apparently he did play 

2 some tapes of tests. 

3 MS. MacFERRlN: He did not play any on direct, 

4 but on cross played the tape of the exr^eriment 

5 MR. BOBROW: There was a Control RF experiment 

6 from Dr. Choti that your Honor allowed to be played on 

7 cross-examination to show how the Control RF device 

8 interfaced with the tissue, its relationship to the 

9 tissue was, and this is an identical situation except 

10 it's this witness and a different product 

1 1 THE COURT: And whose witness was Dr. Choti? 

12 I can't even remember. 

1 3 MR. BOBROW: Dr. Choti was an expert for Smith & 

14 Nephew. 

15 MR. MARSDEN: So apparently on cross there, 

16 they used one of his clips. 

17 MR. BOBROW: That's right 

18 MR. MARSDEN: I don't know that that makes it 

19 right to do it again. I don't think it's particularly 

20 helpful, particularly if you have a selected clip. There 

21 is a lot of other clips. 

22 ' MR. BOBROW: I apologize. 

23 MR. MARSDEN: The jury has seen it in use or 

24 in sales videos, which is an important consideration for 

25 whether there is infringement. That's how we tell doctors 


Page 1442 

1 shoulder space is like and how the devices fit inside the 


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shoulder. 

THE COURT: Well, is this for 1 can't 
remember whether those were introduced What is the 
relevance? Illuminate me here. 

MR. BOBROW: what I want to try to show, the 
devices can be used and are designed in a way such that 

8 -the return electrode doesn't need to be contacting the 

9 tissue while it's inside the patient's body. So here I 
|10 want to show one clip where there are times when it's 
III not in contact and essentially he was able to observe 
|12 there are times when it was not in contact. 

j 13 the COURT: Tdl me something. All the clips 

|14 we've seen for purposes of infriiigement, were those actual 
J 1 5 surgeries or were those just people playing with them? 

1 16 MR. BOBROW: Well, we have seen two types. We 

117 saw Dr. Choti, and that was inside of a cadaver. And then 

1 1 8 we've also seen some that were actually on live patients 

119 where there was blood present So that was either on an 
\20 animal or that was on a human being, but something where 

21 blood was flowing. There is no blood flowing here. 

22 THE COURT: Let's hear about Dr. Choti's clips, 
123 because I can't remember which ones those are. 

|24 MR, MARSDEN: Your Honor, I was trying to get 

j25 assistance on that myself. I'm not sure that I was in the 


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Page 1444 

how it should be used. That's how we tell salespeople to 
show doctors how it should be used. And that would be the 
relevance. 

MR. BOBROW: if I may make one more comment.. 

Dr. Choti testified that, on his direct 
examination, the shoulder, the cadaver was actually very 
much akin to a living shoulder. In other words, that it 
hasn't been obliterated, that it hasn't been damaged, but 
it was very much like a regular human shoulder. So I'd 
like to show this to show indeed there are lots of spaces 
in the shoulder where there are lots of room and that a 
surgeon can manipulate the device in a way and a person 
can manipulate the person in a way such that the return 
doesn't contact 

MR. MARSDEN: Your Honor, if they wanted to 
do that, they could have had their expert do the experiment 

MR. BOBROW: No. We tried to have our expert* 
look at these tapes and testify about that, but that was 
precluded. 

MR. JOHNSTON: Your Honor? 

THE COURT: It's precluded by whom? 

MR. BOBROW: By your Honor. Yes, you ruled 
that since it wasn't in his expert report, he couldn't 
talk about that So I'd like to have the person who 
actually generated this tape talk about it 


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THE COURT: So you were saying Dr. Choli 
couldn't talk about it? 

MR. BOBROW. No, Dr. Goldberg. I'm sorry. 
There are too many witnesses. Dr. Goldberg couldn't talk 
about it. Couldn't talk about Dr. Choti's or Dr. Taylor's. 
I'd like to ask Dr. Taylor about Dr. Taylor's video. 
MR. JOHNSTON: Tom Johnston. 
There is one other difference. They did not 
do the test on the same shoulder because they're done 
weeks apart, and I believe that Dr. Taylor's shoulder had 
been scoped several times. Not as representative as Dr. 
Choti's. 

the COURT, was there any objection to Dr. 
Choti's being used? Like there is now? 

MR. BOBROW: No, there wasn't It was 
1 1 6 admitted into evidence without objection. 
17 THE COURT: Well, I guess if I didn't rule on 

118 this issue before, my reaction to this issue is that this 

19 is an engineer playing with a dead body and it can't 

20 possibly be used for purposes of infringement I mean I 

21 just think it's not appropriate. So the objection is 

122 sustained 

1 23 MR. MARSDEN: Thank you, y our Honor. 

1 24 MR. BOBROW: Thank you, your Honor. 

1 25 (End of sidebar conference.) 


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Q. And you have seen this document before, haven't you? 
A, I think I have seen parts of it. 
Q. Okay. And if you turn to Page 0RA65076, you can see 
that this page talks about S&N ablation probes. 

Do you see that? 
A. Yes. 

Q. One of those probes is the Saphyre bipolar ablation 
probe; correct? 
A. Yes. 

Q. And S&N stands for Smith & Nephew; right? 
A. Yes. 

Q. And if you go a little bit further into the document, 
at ORA65090, there is a document there called Managing 
Surgeon Expectations. 

Do you see that? 
A. Yes. 

Q. And this is talking about Saphyre suction probes; 

19 right? 

20 A. Just let me read it for a second. 

21 Yes. 

22 Q. And the Saphyre suction probes are designed so that, 

23 for example, they will clear bubbles that are generated 

24 when the devices are used in these arthroscopic surgeries; 

25 correct? 


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MR. BOBROW: Ladies and gentlemen, I apologize 
for the delay. 

Why don't we move on to another exhibit? 
May I approach, your Honor? 
THE COURT: Yes, you may. 
BY MR. BOBROW: 

Q. Let me show you PX-324. px-324 is already in 
evidence, sir. 
A. Okay. 

Q. And PX-324 is called Competitive Selling, ArtbroCare 
with the name Rob Griffin. 

Do you see that? 
A. Yes. 


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A. Bubbles and other debris, yes. 
Q. But including bubbles; right? 
A. Including bubbles, yes. 

Q. The second bullet point here says, quote, During 
use keep the electrode level with the targe* tissue for 
optimal evacuation of bubbles. 

Do you see that? 
A. Yes. 

Q. And when it says level there, that Saphyre probe 
actually has a flat active electrode face; correct? 
A. Yes, it does; 

Q. And it says — what I am pointing to here with my 

finger to PX-544, this is the active electrode tip; right? 

A. Yes, it is. 

Q. Way down here? 

A. Yes, 

Q. And that would then be presented to the tissue such 

as this; correct? It says to hold it flat; right? 

A. That's what I would infer, yes, 

Q. And you have inspected these probes before; correct? 

A. Oh, yes. 

Q. And when you look at these probes, you can see that 
the return electrode is actually recessed somewhat from 
the plane of the face of the active electrode; right? 
A. Slightly, yes. 


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Q. So if I were to hold this active electrode on that 
desk, that glass-top desk right there, and I held that 
active electrode flat, parallel to the desk, the return 
electrode wouldn't touch it, would it? 
A. No, it wouldn't. 

Q. Because it's recessed somewhat; correct? 
A. I am presuming you are holding the probe, the shaft, 
parallel. 
Q. That's right 
A. Okay. 

Q. Now, if you take a look, also, at Page ORA65095, 
again, it's talking about managing surgeon expectations. 
1 13 And what is depicted there is the tip of one of these 

14 Saphyre probes; correct? 

15 A. Yes. 

16 Q. And you can see there that the very tip of the probe 

1 17 bends down at sort of a right angle so that the - where 

118 those little lightning bolts and bubbles are, that is the 
j 1 9 active electrode face; right? 

20 A. Yes. 

21 Q. And here, the active electrode face is shown being 

22 parallel to the tip; right? That is what is being 
|23 depicted there? 
24 A. Yes. 

|25 Q. And the return electrode, as we are looking at this 


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Page 1451 

A. That's correct. 

Q. In describing that it says, quote, Tight seal between 
probe and tissue causes steam bubbles to form under 
electrode which allows an arc to be created and ablation 
to occur. 

Do you see that? 
A. Yes. 

Q. And do you understand that that is, indeed, how the 
Saphyre bipolar ablation probes work when they are in 
operation? 

A. I think the answer to your question is yes. They 
sort of omit the step that you got to apply energy to it 
to get to the arc and so forth. But I think the idea is 
it forms a steam layer and eventually an arc is generated 
and that ablates the tissue. 

Q. Now, all of these devices that have been accused of 
infringement, all of them require an electrically 
conductive fluid to work; right? 
A Yes. 

Q. And you did some tests, didn't you, when you were 
working on and looking at these various devices; right? 
A Are you talking about the experiments with the 
cadaver shoulder? 
Q. Those and others; right? 
A. Those are the best tests that I did, yes. 


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1 figure, would be off and to the left; correct? 

2 A. Yes. 

Q. That is where the return electrodes would be? 
A Yes. 

Q. And you can see here, blown up somewhat, that, 
indeed, the return electrode in that portion of the shaft 
is recessed from the tissue that the active electrode 

8 faces, touching there; right? 

9 A. In this cross-section, that's correct, yes. 
JlO Q. And there is an arrow pointing to the very tip of 
11 the device, and the very tip of the device has those two 

112 points, do you see them, on the left and the right? 
13 A. Yes. 

114 Q. And that's intended to depict that the active 
15 electrode tip is in contact with the tissue, right, at 
Il6 those tips? 

J17 A Well, if you actually take a look at the Saphyre 
J 18 active electrode, it's got four little points that stick 
19 up. I think that's what that is depicting. 

120 Q. So those two little sharp points on either side, 

121 those are in contact there with the tissue; right? 

22 A. Yes. 

23 Q. And then near the face of the active electrode, or 
J24 it looks like it's little lightning bolts and some bubbles; 
25 right? 


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Page 1452 

Q. You also did some tests in distilled water, didn't 
you? 
A Yes. 

Q. And distilled water is not an electrically conductive 
fluid, is it? 
A No . 

Q. And you tested the Saphyre device, for example, in 
distilled water, didn't you? 
A Yes. 

Q. And it didn't work, did it? 
A No, it did not 

Q. And you tried it in, you tried to use the Control 
RF- 

A Can I make just one comment? 

Even though I know I said distilled water, it 
could also have been deionized distilled water. That is 
a little different than regular distilled water. * 
Nonetheless, it didn't work. 

Q. And both of those, deionized or distilled, they are 
both electrically nonconductive, they would be categorized 
as such in this field; correct? 
A Yes. 

Q. And when you put the Control RF in this 
nonconductive fluid, it also didn't work, did it? 
A, That's correct. 


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Thursday, May 8, 2001 


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Page 1453 

Q. So these devices, to work, require the presence of 
an electrically conductive fluid; right? 
A. Yes. 

Q. And ail of these devices work by creating a current 
flow path between the active and the return through an 
electrically conductive fluid; right? 
A. And the tissue. 

8 Q. And when these devices are used by doctors, they are 

9 always used with an electrically conductive fluid; correct? 
1 10 A. Yes. The instructions for use specifically say that 

11 Q. And in terms of arthroscopic procedures, those are 

12 the procedures these devices are designed for; right? 

13 A. Correct 

1 14 Q. When those procedures are done, there is always 

1 5 electrically conductive fluid inside the joint space; 

16 correct? 

17 A. Yes. 

18 Q. And these devices are used in that electrically 

19 conductive fluid; right? 

20 A. Yes. 

121 Q. And they need that electrically conductive fluid in 

122 order to work and treat the tissue inside of those joint 
|23 spaces; right? 
24 A. Yes. 

125 Q. And if you didn't have the fluid in there, the 


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Page 1455 

THE COURT: Redirect. 

REDIRECT EXAMINATION 
BY MR. MARS DEN: 
Q. Good afternoon, Dr. Taylor. 
A. Good afternoon. 

Q. Just a few questions. First of all, was there 
anything in Mr. Bobrow's questioning of you here on cross 
that has caused you to change or reconsider any of the 
opinions that you offered during your direct testimony? 
A. No. 

Q. Just to follow up on one of the last points that Mr. 
Bobrow made about holding the device level, I guess we 
could take any of these devices and hold them level, I 
think you talked about it in reference, for example, to 
a desktop. 

Do you remember that question? 
A/ Yes. 

Q. Is there any part of the inside of a joint that 
looks like the top of a desktop? 
A. Not to my knowledge. 

Q. Does it make sense to talk about keeping something 
parallel in the context of a joint? 
A. No. 

Q. I wanted to return to a couple of other points that 
Mr; Bobrow raised just briefly. Fust, he talked a little 


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Page 1454 

1 electrically conductive fluid in there, that was 

2 administered to the knee or the shoulder, the devices 
wouldn't work, would they? 
A. Well, in the case of the RF portion it does, 
because you are talking about whether or not other 
devices - 
Q. Right? 

A. In the case of other devices, when activated, it 
would work, you certainly would have electrically 

10 conductive fluid in the joint space, since arthroscopy is 

11 always used with electrically conductive fluid, you would 

12 need that 

13 Q. Even in the case of the ElectroBlade, you heard Ms. 

14 Drucker testify yesterday that the most popular mode of 

15 this operation of this ElectroBlade device is the 

16 simultaneous cutting and coag mode; right? 

17 A. That's correct 
Q. By simultaneous cutting and coag, that means that 
the RF is on; correct? 
A. Yes, 

Are we finished with this so I can put it away? 
Q. Yes, Dr. Taylor. 

Dr. Taylor, I believe that I finished my line 

24 of questions and I appreciate your time. Thank you. 

25 THE WITNESS: Thank you. 


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[22 

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Page 1456 

bit about the Doss patent 

Do you recall that? 
A. Yes. 

Q. In particular, he was asking you about the two 
electrodes in the Doss patent? 
A. Right 

Q. Do you remember that? 
A. Yes. 

Q. I think the point of his question was, he was trying 
to suggest to you there may not be a return electrode in 
the Doss patent 

Did you understand that? 
A. I think that was the line of reasoning, yes. 
Q. Did the Court give us a definition of return 
electrode? 
A. Yes, 

MR. MARSDEN: Can we pull up, please, 675, < 
Gary? If you could go to Paragraph 9, please... And blow 
up Paragraph 9, please. 
BY MR. MARSDEN: 

Q. Did you use the Court's definition of return electrode 
in determining whether or not the Doss reference had a 
return electrode? 
A. Yes. 

Q. And what is the critical element of the Court's 


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Thursday, May 8, 2003 


Page 1457 

definition of whether or not something constitutes a return 
electrode? 

A. The critical element is an electrode having a larger 
area of contact than an active electrode, thus affording a 
lower current density. 

Q. And when you reviewed the Doss patent, did you find 
such an electrode? 

A. Yes. The outer electrode is - just look at the 


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9 geometry 

10 MR. MARSDEN: can we pull up DDTX-458 again, 

11 Gary? 

12 BY MR. MARSDEN 

13 Q. That is the Doss reference. Does that help answer 

14 the question? 

15 A. Yes. In this geometry, the structure that is in 

16 yellow, cross-hatched yellow is the return electrode. And 

1 7 if you look at the sort of bottom-end view here, the 

18 active electrode is in red The return electrode is there, 

19 And just on the basis of plane geometry if you assume both 

20 electrodes have the same thickness, the outer electrode 

21 will have more surface area. 

1 22 Q. And does that outer electrode meet the Court's 

123 definition of a return electrode? 
124- A. I believe it does. 

|25 Q. Turning to another subject, Mr. Bobrow asked you 


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Page 1458 

1 some questions about a correction you made during your 

2 deposition. 
Do you recall that? 

A. Yes. 

Q. When you realized you had made a mistake at your 
deposition, what did you think was the right thing to do? 
A. Well, based on the instructions I got - my 

8 understanding was I can correct grammatical errors, I 

9 could correct typos. But I couldn't correct my deposition 
JlO until I got to trial. 

Ill Q. There was another question that dealt with a lunch 
JI2 break and realizing over the lunch break that you had 

113 made an error in some of your earlier testimony. 

114 Do you recall that? 
15 A. Yes. 

JJ6 Q. When you realized that and you went into the 
17 deposition after the lunch break, what did you think was 

115 the right thing to dp? 

19 A. Basically, we told Mr. Bobrow about the error. 

20 Q. Did you answer all of Mr. Bobrow's questions about 
|21 the error? 

22 A. Yes,Idid 

23 Q. Did you answer them here again in court today? 

24 A. Yes. 

125 Q. Is there anything about that error or changing that 


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Page 1459 

error or correcting that error that changes any of your 
opinions that you have offered here today? 
A. No. 

Q. Moving to another topic, Mr. Bobrow spent some time 
with you in connection with the Slager reference, talking 
about the fact that this was done in a dish with tissue 
that had been taken from an aorta. 

Do you recall that? 
A. Yes. 

Q. Were you here when Mr. Eggers testified - I guess 

it was at the end of last week - about how he reduced his 

invention to practice? . 

A. Yes, I was. 

Q. How did he do it? 

A. He did it in, I don't know whether he used a chicken, 
but he did it in a Petri dish or dish. I don't think he 
said Petri, but in a dish. 

Q. That was the same invention that you were talking 
about five minutes ago? 

A. Same methodology, basically using tissue in vitro. 
Q. The last topic, Dr. Taylor. You were asked early on 
in your cross-examination a lot of questions about the 
Roos reference and electrically conductive fluid. 

Do you recall that? 
A. Yes. 


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Page 1460 

Q. You were asked a bunch of questions about another 
patent to Mr. Roos, the '667 patent. 

Do you recall that? 
A. Yes. 

Q. You knew about the Roos '667 patent, didn't you? 
A. Yes, I did. 

Q. You considered it before you rendered your opinions 
here today? 
A. Yes, I did. 

Q. Was there anything in the '667 patent that caused you 
to reconsider whether or not the teachings of the Roos '198 
patent anticipate the '536 patent? 
A. No, there isn't 

Q. Is there anything that Mr. Bobrow brought out during 
your cross-examinauon that has caused you to reconsider 
that? 

A. No. * 
Q. Has the Court defined the term electrically conductive 
fluid for us? 
A. Yes. 

MR. MARSDEN: Can we pull up DX-675? 
BY MR. MARSDEN: 

Q. This time look at Paragraph 5. The Court has 
defined electrically conductive fluid to mean any fluid 
that facilitates the passage of electrical current; 


ArthroCare v. Smith & Nephew, CA No. 01-504 (SLR) 


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Condenselt 1 


Page 1461 

correct? 

A. That's correct. 

Q. And did you use that definition in rendering your 
opinions here today? 
A. Yes. 

Q. Did you find electrically conductive fluid as defined 
by the Court in the Roos 1 198 patent? 
A. Yes. 

MR. MARS DEN: can we call up DDTX-444 again, 

please? 

BY MR. MARSDEN: 

Q. I think Mr. Bobrow asked you, in fact, about Claim 1 
of the 1 1 98 patent Where do you find a fluid that 
facilitates electrical current in the 1 198, Claim 1? 
A. If you look in the language of Claim 1, the last 
couple of lines, with liquid to provide electrical 
conductance between said electrodes. 
Q. Do you believe that is consistent with the Court's 
construction? 
A. I believe it is. 

Q. We also saw this during Mr. Sparks 1 demonstration of 
the equipment earlier today. You understood that this was 
the electrically conductive fluid that was used in the 
typical procedure? 

A^Yes, I presume that's normal saline or lactated 


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Thursday, May 8, 2002 
Page 1463 


THE COURT: Ladies and gentlemen, we will 
recess for the evening. You will be getting the case 
tomorrow at some point during the day. I will remind 
you that during the evening recess you are not to talk 
among yourselves or with anyone else, nor are you to 
listen to anything touching on the case. Do not perform 
any independent investigation. 

Have a safe trip home, a pleasant evening. 
And we will see you tomorrow morning at 9:30. 

(At this point the jury then left the 
courtroom, and the following occurred without the presence 
of the jury.) 

THE COURT; Leave E-mail addresses with John 
here so that we can E-mail you our verdict form and final 
proposed jury instructions. 

We are going to have to meet tomorrow morning. 
I have an 8:30 hearing, but it shouldn't take more than a 
few minutes. Why don't you get here about 8:45, so we can 
be sure to be ready to go at 9:30. 

Thank you, counsel. 

(Court recessed at 3:00 pjn., to reconvene on 
Friday, May 9, 2003, at 8:45 am.) 


Page 1462 

Ringer's. 

MR. MARSDEN: May I approach, your Honor? 
THE COURT: Yes. 
BY MR. MARSDEN: 

Q. Let me hand that up. I would ask you to look at the 
labeling on the top. Can you tell me how it describes 
that fluid? 

A; Well, it says .9 percent sodium chloride irrigation. 
Q. It says irrigation? 
A. Irrigation. 

Q. So it's calling that aii irrigation fluid? 
A. That's correct 

Q. Does it use the term electrically conducting fluid? 
A. I don't see that anywhere on this label. 

15 Q. Does the fact that it calls it iirigation fluid make 

16 it not electrically conductive fluid? 
A. No. 

Q. That fluid, is that electrically conductive fluid? 
A. Yes. 

MR. MARSDEN: No further questions. 
THE COURT: All right You may step down. 
Thank you very much. 

THE WITNESS: thank you, ma'am. 
(Witness excused) 


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Page 1464 


INDEX 


DEFENDANT'S TESTIMONY 

CONTINUED DIRECT CROSS REDR RECR 


Kenneth Taylor, 
Resumed 


1288 1336 1455 


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