424
1 Volume 3
2 Pages 424 - 654
3 UNITED STATES DISTRICT COURT
4 NORTHERN DISTRICT OF CALIFORNIA
5 BEFORE THE HONORABLE SUSAN ILLSTON
6 BOSTON SCIENTIFIC CORPORATION, )
et al., )
7 )
Plaintiffs, )
8 )
VS. ) No. C 02-0790 SI
9 )
JOHNSON & JOHNSON and CORDIS )
10 CORPORATION, )
) San Francisco, California
11 Defendants. ) Wednesday
------) October 11, 2007
12 CORDIS CORPORATION, ) 8:30 a.m.
)
13 Counterclaim-Plaintiff, )
)
14 VS. )
)
15 BOSTON SCIENTIFIC CORPORATION, )
et al., )
16 )
Counterclaim-Defendants. )
17 ______)
18 TRANSCRIPT OF PROCEEDINGS
APPEARANCES:
19
For Plaintiffs: Wilmer Cutler Pickering Hale and Dorr
20 60 State Street
Boston, Massachusetts 02109
21 By: William F. Lee, Esquire
Dominic E. Massa, Esquire
22
23 (Appearances continued on next page)
24 Reported By: Katherine A. Powell, CSR 5812, CRR
Debra L. Pas, CSR 11916, CRR
25 Official Reporters - US District Court
425
1 APPEARANCES CONTINUED:
2 For Plaintiffs: Wilmer Cutler Pickering Hale and Dorr
1117 California Avenue
3 Palo Alto, California 94304
By: Mark D. Selwyn, Esquire
4
5 For Defendants: Sidley Austin LLP
One South Dearborn
6 Chicago, Illinois 60603
By: David T. Pritikin, Esquire
7 William H. Baumgartner, Jr., Esquire
8 Johnson & Johnson
One Johnson & Johnson Plaza
9 New Brunswick, New Jersey 08933
By: Eric I. Harris, Esquire
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
PROCEEDINGS 426
1 P R O C E E D I N G S
2 OCTOBER 11, 2007 8:38 A.M.
3
4 (Proceedings held in open court, outside
5 the presence and hearing of the jury.)
6 THE COURT: Good morning.
7 ALL COUNSEL: Good morning.
8 THE COURT: There were things you want to talk about?
9 You may be seated.
10 MR. LEE: Yes, Your Honor.
11 There are two things that will arise with the two
12 witnesses that follow, not completing Mr. Meyer's direct and
13 cross-examination, but two witnesses that follow. And I wanted
14 to alert the Court to them.
15 THE COURT: Okay. How long is this going to take,
16 because we are making the jury wait on this one?
17 MR. LEE: Well, Your Honor, both of these are -- I
18 don't know how long it's going to take. They are pretty
19 important. They go to the subject of the testimony of these
20 two witnesses.
21 Maybe I can just describe them for you, and you can
22 tell us when you would like to address that.
23 THE COURT: Maybe we can talk about it at a break.
24 Go ahead.
25 MR. LEE: There are two. First we received a
PROCEEDINGS 427
1 demonstrative.
2 THE COURT: Right. If it has to do with that motion
3 Tracy put on my desk, I read that.
4 MR. LEE: Your Honor, there is a criticism of us for
5 not having moved, I mean, the equivalence was in a six-line
6 footnote. But if we had moved in limine on every theory and
7 every footnote, Your Honor would have been even more upset with
8 the number of in limine motions.
9 THE COURT: Perhaps. But you have to balance that
10 off against the untimeliness of the request.
11 MR. LEE: Well, but, Your Honor, this is objecting to
12 testimony. This testimony -- actually, their brief is very
13 helpful because their brief is clearer than her opinion and
14 it's clearer than anything that's been given to us before. And
15 what engendered this is the demonstrative they sent, that's
16 going to set forth --
17 THE COURT: If she wants to testify to something that
18 wasn't in her report, that's one thing. But you're not making
19 it on that ground, right?
20 MR. LEE: Your Honor, you know, it's a six-line
21 footnote that's general. And is it mentioned? The answer is,
22 yes, it's mentioned.
23 But if Your Honor looks at Claim 7 of the Fontirroche
24 patent and just looks at Lines 46 to 48, you will see that the
25 opinion that's articulated in the demonstrative and in their
PROCEEDINGS 428
1 brief is inconsistent with the claim. And I think that's an
2 objection that I have to raise.
3 THE COURT: All right. Well you have raised it.
4 MR. LEE: The second one is this: They sent at 10
5 o'clock last night -- 9 o'clock last night an animation from
6 their cardiologist with a parade of horribles that could happen
7 if there was delamination and dissection.
8 Your Honor may recall we had this at the interference
9 trial. This is one expert saying that there could be
10 delamination, without identifying the circumstances; a doctor
11 then reading her report, not even talking to her, and saying,
12 well, if that could happen then this could happen to the
13 patient.
14 And that is really speculation built upon
15 speculation. And they intend to offer that animation today,
16 first without having put in the underlying predicate that the
17 delamination could cause these problems, and then have him
18 describe all of these parade of horribles that could occur to a
19 patient.
20 First, it's inadmissible because of the speculation.
21 Second, there is a 403 problem with it. And if it goes in
22 before they have laid the predicate, the horse is out of the
23 barn.
24 THE COURT: Well, we can talk about before the
25 witness is called, which I presume will be after our first
PROCEEDINGS 429
1 morning break.
2 MR. LEE: I think that's right.
3 THE COURT: All right. And this other thing, will
4 that likewise be after the first morning break?
5 MR. LEE: I think so.
6 THE COURT: All right.
7 MR. LEE: Your Honor, I think we fairly joined the
8 issue, and I would ask Your Honor to look at Claim 7, the first
9 paragraph, at Column 8, line 47 to 49, which is the only claim
10 that's in issue.
11 And, actually, I think if Your Honor judges that
12 against their brief, you'll see precisely the issue.
13 THE COURT: All right. I will look at that.
14 MR. PRITIKIN: One quick procedural point, Your
15 Honor, on this. We got that brief at a quarter to 10:00 last
16 night, and it concerns Dr. Pruitt's expert report.
17 My trial team was up until the wee hours of the
18 morning looking at that and trying to put together a response.
19 I don't think it's fair for us to get things like
20 that and have to respond to them in the wee hours of the
21 morning.
22 THE COURT: When had they gotten her demonstrative?
23 MR. PRITIKIN: They got the demonstrative yesterday
24 morning.
25 MR. LEE: But they had known about her report, Your
PROCEEDINGS 430
1 Honor, since June of this year.
2 THE COURT: He says it's line 6 of footnote 12 of the
3 fine print.
4 MR. PRITIKIN: They took her deposition. This is not
5 something that's --
6 THE COURT: I agree with you and with the frustration
7 you express. On the other hand, trial is a very tough job, and
8 there is a night crew for reasons.
9 MR. PRITIKIN: There is a night crew. But when you
10 get something like this and you've got people like Bill
11 Baumgarten and me who have to look at this, and we're getting
12 these briefs at 9:30 at night when we are trying to get ready
13 for the next day and get a little sleep, I just think that's
14 something that is perhaps a little over the top.
15 MR. LEE: Your Honor, can I just have 30 seconds to
16 respond?
17 THE COURT: Yes.
18 MR. LEE: Your Honor, we got the demonstrative
19 yesterday and we came back -- I came back from court. We made
20 the decision to file the brief. We got it filed promptly.
21 These things happen at trial. We got this animation -- we were
22 supposed to have exchanged the demonstratives yesterday
23 morning. We got their animation at 9:30 last night. I'm not
24 complaining.
25 THE COURT: Exactly.
PROCEEDINGS 431
1 MR. LEE: We've just got to deal with it, right.
2 THE COURT: Right. Thank you. Are we ready?
3 MR. PRITIKIN: Yes.
4 (Jury in at 8:43 a.m.)
5 THE COURT: Welcome back, ladies and gentlemen. You
6 may be seated.
7 All right Mr. Selwyn, you may continue. Mr. Meyer,
8 you are under oath from yesterday, sir.
9 PAUL MEYER,
10 called as a witness for the Plaintiff herein, having been
11 previously duly sworn, resumed the stand and was examined and
12 testified as follows:
13 MR. SELWYN: Thank you, Your Honor.
14 Could we please have demonstrative Exhibit PDX-D10.
15 I'm sorry, PDX-D10. Perfect.
16 DIRECT EXAMINATION RESUMED
17 BY MR. SELWYN:
18 Q. Mr. Meyer, when we talked yesterday we were reviewing the
19 reasonable royalty analysis under the Georgia-Pacific factors.
20 Do you recall that?
21 A. Yes, I do.
22 Q. And we had just finished reviewing the three factors that
23 you concluded had a significantly upward influence on the
24 starting point royalty, correct?
25 A. That's correct.
LIANG - RECROSS EXAMINATION / LEE 598
1 A. Yes.
2 Q. And the standards and the principles that Cordis used in
3 adding Mr. Trotta would tell us something about what the right
4 standards and principles are in evaluating the addition of
5 Ms. Byam and Mr. Goodin, correct?
6 MR. PRITIKIN: Objection, Your Honor.
7 THE COURT: Sustained.
8 BY MR. LEE:
9 Q. You would agree with me that in terms of adding inventors
10 the same principles apply to both parties, correct?
11 A. I'm not a patent attorney, so I couldn't tell you one way
12 or the other, sir.
13 MR. LEE: Fair enough.
14 Nothing further, Your Honor.
15 THE COURT: Thank you. You may step down, sir.
16 THE WITNESS: Thank you.
17 (Witness steps down.)
18 THE COURT: Now, Mr. Baumgartner.
19 MR. BAUMGARTNER: Thank you, Your Honor.
20 THE COURT: I'm sorry.
21 MR. PRITIKIN: That's fine.
22 MR. LEE: I'm going to move this, Your Honor.
23 THE COURT: Okay.
24 MR. BAUMGARTNER: Cordis calls Lisa Pruitt.
25 THE CLERK: I'm going to take your picture.
LIANG - RECROSS EXAMINATION / LEE 599
1 Ma'am, if you could just please raise your right
2 hand.
3 LISA ANN PRUITT,
4 called as a witness for the Defendant herein, having been first
5 duly sworn, was examined and testified as follows:
6 THE WITNESS: I do.
7 THE CLERK: Thank you.
8 Okay. If you could state your full name for the
9 record, please.
10 THE WITNESS: My name is Lisa Ann Pruitt,
11 P-r-u-i-t-t.
12 THE CLERK: Okay. Thank you.
13 MR. BAUMGARTNER: Ladies and gentlemen of the jury,
14 Professor Pruitt is a professor at the University of California
15 at Berkeley, where she holds the Lawrence Talbot chair of
16 engineering. She works in the field of mechanical engineering
17 and bioengineering, particularly as they relate to the use of
18 polymers in medical devices. She will testify regarding
19 whether or not Boston Scientific's products meet the claims of
20 the asserted Cordis patent.
21 DIRECT EXAMINATION
22 BY MR. BAUMGARTNER:
23 Q. Well, let's start out, Professor Pruitt, with some
24 personal information. Where do you live?
25 A. I actually live in Northern California, in Petaluma.
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 600
1 Q. What do you do for a living?
2 A. Professor of mechanical engineering and bioengineering.
3 Q. Can you explain for us what bioengineering is?
4 A. Yes. Bioengineering essentially is using engineering
5 disciplines, mechanical engineering as an example, to try to
6 solve biological problems or clinical problems or any medical
7 problems we might have.
8 Q. Does bioengineering have any practical uses?
9 A. Yes. Probably the best example is medical devices as
10 you're hearing about today, where we try to really bring
11 engineering into the design and use of a medical device.
12 Q. Do you have a particular research interest within the
13 field of bioengineering?
14 A. The research specialty of my research group is really to
15 focus on medical polymers and tissues. The medical polymers
16 specific to medical devices used in the body, such as the
17 devices that you're hearing about today.
18 Q. Now, you do research. Do you teach classes, as well, over
19 at Berkeley?
20 A. I do.
21 Q. Do angioplasty catheters play a role in any of the classes
22 that you teach?
23 A. Yes. There's -- there's one undergraduate class that I
24 teach. It's entitled, Structural Aspects of Biomaterials.
25 Essentially, it's medical device design.
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 601
1 And one element of that class is to actually talk
2 about medical devices. And we break that down to orthopedics
3 or cardiovascular or soft tissue applications.
4 And in that context, we bring in guest lecturers,
5 we've developed lectures to try to teach the students what's
6 actually needed in angioplasty design, catheter design, what it
7 is.
8 You've heard some of these comments today, actually,
9 about trackability, pushability, flexibility, lubricity. All
10 those concepts are covered in that lecture.
11 Q. Have you ever the chance s to see a real angioplasty
12 procedure on a human patient?
13 A. Yes, I have. I've actually seen a few of those
14 procedures.
15 Q. Now, can you explain for us what it means to be a
16 professor at a university and have an endowed chair?
17 A. An endowed chair is a named professorship. Typically,
18 it's named after the person that's donated funds to the
19 university.
20 I hold the Lawrence Talbot chair. It's named after a
21 colleague of mine that deceased a few years ago. It usually
22 recognizes someone in a specific research field. The Lawrence
23 Talbot chair recognizes someone who has made major
24 contributions in bioengineering and mechanical engineering.
25 Q. Do you hold any positions at any other universities in
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 602
1 California, apart from Berkeley?
2 A. Yes. In addition to UC Berkeley, I have an adjunct
3 faculty position in the Department of Orthopedic Surgery at
4 UCSF Medical School.
5 Q. Now, can you remind all of us what orthopedic surgery is.
6 A. Yes. Orthopedics really deals with the bones and joints.
7 So we do a lot of device design for total hips, total knees,
8 total shoulder replacements.
9 Q. And what do you do over at UCSF, as an adjunct professor
10 of orthopedic surgery?
11 A. In that role, I would give lectures to residents or I do
12 an early morning lectureship to practicing orthopedic surgeons.
13 I would also direct young residents in my laboratory for up to
14 a year to do research in orthopedics.
15 And then I have a strong collaboration with the chief
16 of arthroplasty, so a lot of orthopedics research is also
17 performed.
18 Q. Let's change gears a little bit here.
19 Can you explain for us what it means to have a
20 peer-reviewed scholarly paper?
21 A. Yes. As an academic, often we're judged by our
22 publications.
23 When we write a paper, we submit it to a journal.
24 And that journal paper then is disseminated to what would be
25 our peers or colleagues around the world or around the nation.
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 603
1 And they would scrutinize and evaluate and make sure that it's
2 technically correct, that it's publishable.
3 Those comments go back to the editor. And then
4 assuming all comments look appropriate, that paper would be
5 published in a journal.
6 Q. How many peer-reviewed papers have you either published in
7 a journal or presented at a scholarly meeting after the peer
8 review?
9 A. At this time, close to 200.
10 Q. Now, what are some of the journals where your work has
11 been published?
12 A. Probably of most relevance I've published in the journal
13 entitled Polymer, which focuses on, essentially, polymers as
14 they're used in engineering applications.
15 We have published in the Journal of Biomedical
16 Materials Research, which focuses on materials that are used in
17 medical devices or in the body. Also, there is a journal
18 entitled Biomaterials. Those would be three of our prevalent
19 journal sites.
20 Q. Let's quickly review your educational background.
21 Can you tell us when you graduated from college?
22 A. I graduated in 1988 from college.
23 Q. And where did you go?
24 A. I was an undergraduate at the University of Rhode Island.
25 Q. How many undergraduate degrees did you get when you
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 604
1 graduated?
2 A. As an undergraduate, I pursued two engineering degrees and
3 received two engineering degrees. One was in chemical and
4 ocean engineering and the other is in materials engineering.
5 Q. Did you work during college?
6 A. I did.
7 Q. What did you do?
8 A. Each summer I worked at engineering firms. The last two
9 years in particular I worked as a research engineer at the Army
10 Research Labs in the corrosion science division.
11 Q. That's for the U.S. Army?
12 A. That's for the U.S. Army.
13 Q. Can you tell us, just briefly, what you did for the U.S.
14 Army during college?
15 A. Sure. Actually worked on the pitch links that are used
16 for the Apache helicopter. Worked on the corrosion aspects of
17 the alloy, worked on the fracture issues, the fracture
18 mechanics issues. So essentially worked on both corrosion and
19 the mechanical failure modes that could exist in that alloy.
20 Q. So you graduated from college in 1988, having worked for
21 the Army. What did you do then?
22 A. Academia was so fun that I went on to graduate school at
23 Brown University.
24 Q. And did you receive any degrees from Brown?
25 A. Yes. I received a master's degree in engineering, and
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 605
1 then stayed on for a Ph.D., also in engineering.
2 Q. And you received a Ph.D. degree when?
3 A. 1993.
4 Q. What happened then?
5 A. From Brown, I went directly to Berkeley. So relocated
6 from the East Coast to the West Coast.
7 Q. And your initial position there was?
8 A. I was hired as an assistant professor in mechanical
9 engineering.
10 Q. And you worked your way up to the ranks to where you are
11 now?
12 A. That's right. I've been there ever since. And been
13 promoted both in mechanical engineering and bioengineering to
14 full professor.
15 Q. Now, this is a patent case, so I guess I should ask you if
16 you have any patents.
17 A. I do. I hold two patents on the topic of surface
18 modification of medical polymers for medical devices.
19 Q. Would you take a look at Defendant's Exhibit 1 in your
20 exhibit notebook. The Fontirroche patent '594 patent.
21 MR. BAUMGARTNER: And at this time, Your Honor,
22 Cordis would offer Defendant's Exhibit 1.
23 THE COURT: Any objection?
24 MR. LEE: None, Your Honor.
25 THE COURT: Thank you. It will be received.
PRUITT - DIRECT EXAMINATION / BAUMGARTNER 606
1 BY MR. BAUMGARTNER:
2 Q. Have you had a chance to review this patent in preparation
3 for your testimony here today?
4 A. Yes, I have.
5 Q. Now, can you tell us, just in a sentence or two, what the
6 invention of the Fontirroche patent involves.
7 A. Yes. As you've heard a little bit about today, the basis
8 of this or the major outcome of this patent is that we have a
9 co-extruded tube with an outer layer and an inner layer. And
10 those two layers are bonded together. And that the inner layer