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` S. Piper
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` Case No. IPR2018-01054
`
` PATENT NO. 8,936,177
`
` CASE NO. IPR2018-01055
`
` PATENT NO. 9,370,631
`
`______________________________
`
`3M COMPANY, MERCK & CO., )
`
`INC., and MERCK SHARP & )
`
`DOHME CORP., )
`
` Petitioners, )
`
` v. )
`
`APTAR FRANCE S.A.S., )
`
` Patent Owner, )
`
`___________________________________________________
`
` DEPOSITION OF SAMUEL DAVID PIPER
`
` Washington, D.C.
`
` January 25, 2019
`
`REPORTED BY: Barbara DeVico, CRR, RMR
`
`JOB NO. 154348
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`TSG Reporting - Worldwide 877-702-9580
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` S. Piper
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` Case No. IPR2018-01054
`
` PATENT NO. 8,936,177
`
` CASE NO. IPR2018-01055
`
` PATENT NO. 9,370,631
`
`______________________________
`
`3M COMPANY, MERCK & CO., )
`
`INC., and MERCK SHARP & )
`
`DOHME CORP., )
`
` Petitioners, )
`
` v. )
`
`APTAR FRANCE S.A.S., )
`
` Patent Owner, )
`
`___________________________________________________
`
` DEPOSITION OF SAMUEL DAVID PIPER
`
` Washington, D.C.
`
` January 25, 2019
`
`REPORTED BY: Barbara DeVico, CRR, RMR
`
`JOB NO. 154348
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Page 2
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` Case No. IPR2018-01054
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` PATENT NO. 8,936,177
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` CASE NO. IPR2018-01055
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` PATENT NO. 9,370,631
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`________________________________
`
`3M COMPANY, MERCK & COMPANY )
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`and MERCK SHARP & DOHME CORP., )
`
` Petitioners, )
`
` v. )
`
`APTAR FRANCE, S.A.S., )
`
` Patent Owner )
`
`_________________________________
`
` Friday, January 25, 2019
`
` 9:04 a.m.
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`Deposition of SAMUEL DAVID PIPER, held at the law
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`offices of AKIN GUMP, 1333 New Hampshire Avenue, N.W.,
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`Washington, D.C., pursuant to Notice before Barbara
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`DeVico, Certified Realtime Reporter and Certified
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`Nationally Certified Realtime Reporter and Registered
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`Merit Reporter and Notary Public of the District of
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`Columbia and the state of Maryland and Commonwealth of
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`Virginia.
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` S. Piper
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`APPEARANCES:
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`ON BEHALF OF PETITIONERS:
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` RON SKLAR, ESQUIRE
`
` HONIGMAN MILLER SCHWARTZ & COHN
`
` 155 North Wacker Drive
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` Chicago, IL 60606
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` JASON WEIL, PhD, ESQUIRE
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` AKIN GUMP STRAUSS HAUER & FELD
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` Two Commerce Square
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` 2001 Market Street
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` Philadelphia, PA 19103
`
`ON BEHALF OF RESPONDENT:
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` RYAN HARGRAVE, ESQUIRE
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` McKOOL SMITH
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` 300 Crescent Court
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` Dallas, TX 75201
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` P R O C E E D I N G S
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` SAMUEL DAVID PIPER,
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`having been called as a witness on behalf of the
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`Petitioners and having been first duly sworn, was
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`examined and testified as follows:
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`EXAMINATION BY
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`MS. HARGRAVE:
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` Q. Good morning. Good morning, Mr. Piper.
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`Could you please state your name for the record?
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` A. Samuel David Piper.
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` Q. You've been deposed before, Mr. Piper,
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`haven't you?
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` A. Yes, I have been deposed before.
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` Q. How many times have you been deposed
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`before?
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` A. I've been deposed about three or four
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`times. It's in my CV, the exact number.
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` Q. So you know the ground rules, but I'll go
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`over them again just to refresh us.
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` You understand that you are under oath and
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`giving testimony here today, correct?
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` A. I understand that.
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` Q. And the court reporter will be typing
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`down everything we say so that it's important that you
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`and I don't talk at the same time. So if you agree to
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`let me finish my question completely before beginning
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`your answer, that will help her out quite a bit.
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` A. Not a problem.
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` Q. From time to time your lawyer may object
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`to my questions. When he finishes his objection, you
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`should answer the question unless he instructs you not
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`to. Do you understand that?
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` A. I do.
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` Q. And then to help the court reporter,
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`instead of saying things like "uh-huh" or nodding your
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`head when you answer, try to say a verbal yes or no so
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`that she can take down your answer.
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` A. Okay.
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` Q. And if you need a break, just let me
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`know. We can take one.
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` Lastly, if I ask you a question and you give me
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`an answer, I'm going to assume that you understood my
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`question. So if you don't understand my question,
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`please let me know and I'll try to ask it in a different
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`way.
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` A. Okay.
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` Q. And I apologize, I'm nursing a cough this
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`morning. So I'm going to have to water up a lot.
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` Is there any reason that you can't testify
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`truthfully and accurately today, Mr. Piper?
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` A. No.
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` Q. Where are you currently employed?
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` A. Well, I run a business called Piper
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`Medical Products. It is an S Corporation, and I'm an
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`employee of that corporation.
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` Q. What is your title?
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` A. My title at Piper Medical Products is
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`president.
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` Q. How long have you been the president of
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`Piper Medical?
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` A. I started Piper Medical sometime around
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`1996.
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` Q. Mr. Piper, you've served as an expert
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`witness before; correct?
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` A. I have served as an expert witness
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`before.
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` Q. About how many times have you served as
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`an expert witness?
`
` A. I've served as an expert witness at least
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`four times, three or four times. Again, it's on my CV.
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`I could give you a more specific answer if you give me
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`my CV.
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` Q. That's fine, and we may enter that as an
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`exhibit in a minute. I just want to kind of make sure
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`that I understand what your experience is apart from
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`what's on your CV to the extent that there are any
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`differences.
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` Have you ever served as an expert witness in an
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`IPR or an inter parties review?
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` A. Yes, I have.
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` Q. Apart from your work on these matters,
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`have you served as an expert in an IPR?
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` A. Aside from the matter at issue today in
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`the declarations that we're going to discuss?
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` Q. Yes.
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` A. Yes, I have.
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` Q. We'll go ahead and enter Exhibit 2003.
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` (Exhibit 1003, Curriculum
`
` Vitae, was marked for
`
` identification.)
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` Q. Mr. Piper, do you recognize this
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`document?
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` A. Yes, this document is my CV.
`
` Q. Let's go to the second page. We've got
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`listed "Expert Witness" as the heading. You've got a
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`number of matters here. Which of these is the IPR that
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`you worked on?
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` A. As I recall, both the second and the
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`third matters, which both involved Fontem-involved IPRs.
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` Q. Okay. And in those matters, were you
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`testifying on behalf of the petitioner or the patent
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`owner?
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` A. I was -- well, there were -- both sides
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`were suing the other side for infringement. So I was
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`involved in the case. Some of the work I did was
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`providing the declaration reports on why some of the
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`patents were invalid.
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` Q. Okay. So then you were testifying on
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`behalf of the petitioner in the IPR?
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` A. Right.
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` Q. And just to be clear, the technology in
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`that case related to electronic cigarettes; correct?
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` A. Yes, that is correct.
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` Q. Have you ever done any IPR work related
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`to inhalation products that were not electronic
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`cigarettes?
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` A. No.
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` Q. And were these Fontem cases the only IPR
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`matters that you have been engaged to testify in?
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` A. Yeah. I'm pretty sure the Ventronics
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`versus Draeger one, I don't think that that involved an
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`IPR.
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` Q. Mr. Piper, have you ever been retained as
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`an expert witness for 3M in other matters?
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` A. No, I've never been retained as an expert
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`witness by 3M.
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` Q. Have you ever been retained as an expert
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`witness by Merck prior to your involvement on these
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`matters?
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` A. No, I've never been retained by Merck as
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`an expert witness, except for this matter, of course.
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` Q. Have you ever informally consulted or
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`formally consulted for either 3M or Merck?
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` A. No, I don't remember doing any work for
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`3M or Merck prior to this matter.
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` Q. None of the expert work that you've done
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`previously involved meter dose inhalers, correct?
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` A. None of the expert work I've done
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`involved meter dose inhalers that are powered by freon.
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`The electronic cigarette is an aerosol delivery device,
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`so it involved an inhalation device, so there's some
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`variance on what a meter dose inhaler may or may not be.
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`But as far as a freon-driven meter dose inhaler, none of
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`my other expert witness work had bearing -- well, had
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`bearing but was not in regard to devices that are
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`freon-driven meter dose inhalers.
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` Q. Let me just ask the question again.
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` A. Okay.
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` Q. None of the expert work that you've done
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`previously involved meter dose inhalers, correct?
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` A. None of the expert witness work I've done
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`previously involved meter dose inhalers that are powered
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`by freon.
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` Q. And it's not your testimony today that an
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`electronic cigarette is a meter dose inhaler, right?
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` A. Well, there's some people who suggested
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`that the condensation aerosolization process of an
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`electronic cigarette could be used as a meter dose
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`inhaler-type product, but I'm not aware of any products
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`that have successfully made it to the market using that
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`approach.
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` Q. Mr. Piper, do you remember when you were
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`first retained by Petitioners to work on these IPR
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`matters that we're talking about here today?
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` A. I don't remember the exact date. I have
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`an approximate idea of when that was.
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` Q. What's your approximate idea of when you
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`were first retained to work on these matters?
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` A. Sometime in 2018. More likely the
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`earlier half of 2018 than the latter half.
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` Q. Do you remember who contacted you about
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`possibly working on the matters that we're discussing
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`here today?
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` A. I was originally contacted by expert
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`search, expert witness search firm, and I think the
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`first initial contact I had with the attorneys in the
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`case was Jason Weill.
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` Q. Were you first retained to work --
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`were you retained to perform any prior art searches in
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`this case?
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` A. Well, I was retained as an expert witness
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`for this work, so that involved doing, having
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`discussions and looking at what possible prior art there
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`might exist relevant to the case, yes.
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` Q. And you said that your involvement in
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`this case began you thought in the earlier part of 2008,
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`right?
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` A. 2018.
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` Q. Sorry about that, yes.
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` A. That's my recollection. I don't have the
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`exact date for when that happened. That's obviously
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`data that could be obtained. I can give it to you
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`today.
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` Q. You don't have any financial interest in
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`the outcome of this case, do you, Mr. Piper?
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` A. No. I'm paid for my independent and
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`expert opinion on this case regardless of what that is.
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`So what the actual outcome of this case is or not has no
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`economic bearing on my finance.
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` Q. What's your hourly rate for your work on
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`this case?
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` A. My billing rate for this case is $360 per
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`hour.
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` Q. We'll go ahead and enter as an exhibit
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`here each of your declarations in both the '631 and the
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`'177 matters.
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` Let me back up.
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` You've been retained to provide testimony in IPR
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`number -- let's see. Two IPR numbers. Let me restate
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`the question.
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` You've been retained to provide expert testimony
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`in IPR2018-01054 and IPR2018-01055. Is that correct?
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` A. I don't remember what the actual file
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`numbers are for the IPRs. But it was in regard to IPR
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`work regarding the, what I commonly refer to as the '631
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`patent and the '177 patent.
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` Q. So just to be clear for the record, I'll
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`state that your testimony relates to United States
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`patent numbers 8,936,177, which you refer to as the '177
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`patent and 9,370,631, which you refer to as the '631
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`patent. Does that sound right?
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` A. That sounds right. As long as they are
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`the patents referred to in the declaration, that would
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`be correct.
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` Q. I just want to be sure for the record
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`that when you and I are talking about the '177 patent
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`we're talking about 8,936,177, and when we're talking
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`about the '631 patent we're talking about 9,370,631.
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` A. If you give me my declaration, I will
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`confirm those exact numbers for you.
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` Q. I just want to get some sort of shorthand
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`that we can use together so we don't have to say the
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`full IPR number and the full patent number each time we
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`talk about it.
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` A. I would share your preference.
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` Q. Okay. So this is -- we'll mark this as
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`Exhibit 1,002, '177, I think is how we should do that.
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`And this is your declaration for the '177 matter.
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`Coincidentally, the exhibit number for your '631
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`declaration is also 1,002, so I don't want the record to
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`be unclear.
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` (Exhibit 1,002.1, Declaration,
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` was marked for identification.)
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` MS. HARGRAVE: And then we'll mark as
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`Exhibit 1,002.2 your declaration in the '631 matter.
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` (Exhibit 1,002.2, Declaration,
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` was marked for identification.)
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`BY MS. HARGRAVE:
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` Q. Let's start with Exhibit 1,002.1.
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` A. Okay.
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` MR. SKLAR: Did you hear the 1,000 --
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` MS. HARGRAVE: We just have been
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`marking them 1 and 2.
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` MR. SKLAR: One is for the '177?
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` MS. HARGRAVE: Yes.
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`BY MS. HARGRAVE:
`
` Q. Mr. Piper, can you identify
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`Exhibit 1,002.1 for me?
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` A. The 1,000 -- what's listed here as
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`Exhibit 1,002.1 is my declaration, and for what I would
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`commonly refer to as the '177 patent, which the patent
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`number is 8,936,177.
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` MR. SKLAR: I just need to raise one
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`objection to 1,002.1. It looks like 1,002.2 was
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`properly printed in color. 1,002.1 is in black and
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`white. I think it makes a little bit of a difference if
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`we're getting into the technical aspects of the patent.
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`I think we can, we would be happy to assist in providing
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`a color copy if that would be helpful.
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` MS. HARGRAVE: That would be helpful.
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`That would be great. Thank you.
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`BY MS. HARGRAVE:
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` Q. So if you and I refer to Exhibit 1,002.1
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`as your '177 declaration, will you understand what I
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`mean by that?
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` A. Yes.
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` Q. Okay. Let's take a look at
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`Exhibit 1,002.2.
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` A. Okay, I have the 1,002.2 in front of me.
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` Q. Can you identify for the record
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`Exhibit 1,002.2?
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` A. Exhibit 1,002.2 is my declaration
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`regarding what I commonly refer to as the '631 patent,
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`which the full number for that patent is 9,370,631.
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` Q. So if I refer to Exhibit 1,002.2 as your
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`'631 declaration, you'll understand what I mean?
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` A. Correct.
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` Q. Mr. Piper, you submitted your exhibits to
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`the Patent and Trademark Office in May 2018; right? You
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`can check your signature page on the back.
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` A. Yeah. I'm looking at the signature page.
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`Yeah, Exhibit 1,002.2 has got a May 9, 2018, signature.
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`And Exhibit 1,002.1 has a signature date of May 9, 2018.
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` Q. Mr. Piper, who wrote your declarations
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`for the '631 and '177 matters?
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` A. I wrote the declaration.
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` Q. Did you write them with assistance of
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`counsel at Akin Gump?
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` A. Yes, I did write them with assistance.
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` Q. Did you write them with the assistance
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`from anyone else apart from attorneys at Akin Gump?
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` MR. SKLAR: Objection, foundation.
`
` A. No, I did not.
`
` Q. Mr. Piper, are the opinions in your
`
`declarations your opinions?
`
` A. Yes, they are all mine.
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` Q. Are you aware of any changes or
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`modifications that need to be made to either of your
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`declarations?
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` A. No, I have no changes or modifications
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`that I'm aware of that need to be made to either
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`declaration.
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` Q. About how many hours would you say that
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`you spent preparing your declarations for these matters?
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` A. I don't have the exact number. Something
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`of over a hundred hours or more.
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` Q. Would you say that's 100 matters total
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`for both IPR matters?
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` A. Yeah, I don't have an exact number. I'm
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`just giving an order of magnitude. More than ten, less
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`than a thousand for both declarations.
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` Q. You likely submitted invoices for work
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`that you performed on these matters, correct?
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` A. I did submit invoices for work on these
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`matters, yes.
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` Q. Do you have an estimate how much money
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`you have invoiced for work performed on these matters?
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` A. Well, I invoiced $360 per hour times the
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`number of hours plus whatever expenses were also
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`incurred.
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` Q. Is it your testimony that you can't
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`narrow for me the amount that you've invoiced for your
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`work on these matters anything between one and a
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`thousand hours? I mean --
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` A. I said --
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` MR. SKLAR: Just a moment. Objection
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`to the form.
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` A. I said ten and 100 hours. What I said
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`was that my, the number of hours I expended on this, on
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`these, for these declarations was something in the order
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`of 100 hours. I could certainly give you a more
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`definitive number. If I have time to review the
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`invoices, I could give you a very exact number.
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` Q. Could you do that on a break?
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` Mr. Piper, were you aware of either the '177
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`patent or the '631 patent before you were contacted to
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`work on this case?
`
` A. No, I had no awareness. I hadn't
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`reviewed either patent prior to this case.
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` Q. Just to be clear, you were not aware of
`
`either the '177 patent or the '631 patent prior to this
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`case; correct?
`
` A. I had not seen either patent prior to
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`this case, and I had no knowledge of its existence prior
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`to this case, no.
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` Q. Were you aware of the patent owner in
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`this case, Aptar, before you started working on this
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`case?
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` A. I did not have a familiarity with who
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`Aptar was prior to this case. I would imagine I may
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`have heard the name before as a possibility. I can't
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`say that I didn't, but I never worked for Aptar and
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`never had any business relations with Aptar prior to
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`this case.
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` Q. Let's go back to your CV, Mr. Piper,
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`which I believe is Exhibit 1,003.
`
` A. Okay.
`
` Q. Have you got it?
`
` A. I do.
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` Q. Your CV was attached to each of your '631
`
`and '177 declarations for these matters, correct?
`
` A. Yes, my CV was attached to both
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`declarations.
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` Q. And the CV attached to each declaration
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`was identical, right?
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` A. The CV that was attached to each
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`declaration was identical.
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` Q. Okay. So we can refer to Exhibit 1,003,
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`which was, I believe was attached to your '177
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`declaration. All the testimony that you provide related
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`to Exhibit 1,003 would apply equally to your declaration
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`to your CV that was attached to the '631 declaration;
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`right?
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` A. Well, the CV that was attached to both
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`declarations was identical. So any testimony I give
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`regarding my CV would equally apply in regards to the
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`fact that the CV in both declarations is identical.
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` Q. Is the CV that you attached to your
`
`declaration in May still accurate?
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` A. Well, as of the date of -- as of the date
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`of the declaration, yeah, it was accurate at the time.
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` Q. Are you aware of items that need to be
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`updated on your CV as of today?
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` A. Well, for example, there's always
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`additional work that one is involved with if they are in
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`the working world. And so as an expert witness, I've
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`now been deposed one additional time, for example.
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` Q. Well, why don't you tell me about the
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`matter that you were deposed in. Was it one of the
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`matters that's listed on your CV and you just haven't
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`yet been deposed in that matter?
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` A. I'm talking about this deposition.
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` Q. Understood. So is there any additional
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`work that you've been involved in since you submitted
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`your CV as an attachment to your declaration in May 2018
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`that you think is relevant to your work on this matter?
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` MR. SKLAR: Object to the form.
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` A. I do testing on MDI devices on a regular
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`basis, so this is late January, and the date of
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`submission for the declaration was May 9, so in that
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`period of time I've had additional, you know, equivalent
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`amount of extra additional testing work that involved
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`aerosol delivery devices including meter dose inhalers.
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`That would be one example.
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` Q. Well, I guess let's start with the
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`testing that is on your CV, and then we can maybe get to
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`the additional testing performed since you submitted it.
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` One thing I wanted to ask you, Mr. Piper, is
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`this your standard CV that you would submit or circulate
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`for any purpose, whether or not it's litigation?
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` A. You know, a CV is like a business card.
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`So if I'm doing development, somebody is interested in a
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`CV for development work, I might have a different CV
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`that includes more details on development work. I don't
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`remember having submitted such a CV to anybody within
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`the last 12 months.
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` Q. So is this CV prepared especially for use
`
`for your work on these matters?
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` A. This is my CV, that's my standard CV with
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`the occasional update for doing expert witness work.
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` Q. Okay. And you're not aware of any
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`mistakes or inaccuracies in the CV that you attached to
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`your declaration in May 2018?
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` A. I'm not aware of any mistakes on my CV
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`that was attached as of May 92018.
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` Q. Mr. Piper, you are a named inventor on a
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`number of patents; correct?
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` A. I am a named inventor on a number of
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`different patents, that's correct.
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` Q. And none of the patents on which you are
`
`a named inventor focus on dose counting technology for
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`meter dose inhalers, right?
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` MR. SKLAR: Object to the form.
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` A. I'm involved in, what do we have, on the
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`CV we show one, two, three, four, five, six, seven,
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`eight, nine, ten patents, almost all of which are
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`aerosol delivery patents. It includes also a powder
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`inhaler aerosolization process which would be an MDI
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`product. Does that answer your question?
`
` Q. No, it doesn't actually, but I'll ask it
`
`again.
`
` None of the patents in which you are a named
`
`inventor -- let me say that again.
`
` None of the patents on which you are a named
`
`inventor focus on meter dose inhaler dose counting
`
`technology, right?
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` A. I'm not a patent holder of a dose
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`counting technology that's used in a meter dose inhaler,
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`that's correct.
`
` Q. And none of the patents on which you are
`
`a named inventor focus on aerosol meter dose inhalers,
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`meter dose inhalers, correct?
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` A. Powder inhalers is referred to in the
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`industry as an PMDI and is used for delivering meter
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`dose of medication. Just the form of the medication is
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`in a powder form instead of provided in a propellant
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`form through freon. So it is a meter dose inhaler.
`
` Q. But that wasn't my question. Let me
`
`state my question again.
`
` None of the patents on which you are a named
`
`inventor focus on aerosol meter dose inhalers, correct?
`
` A. A powder inhaler -- the patent that's
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`listed here is powder inhaler with aerosolization
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`occurring with each individual powder receptacle.
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`Patent No. 5,533,502, July 9, 1996, involves the unit
`
`dose delivery with each inhalation of a powder
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`medicament. So therefore, it's a meter dose inhaler of
`
`sorts.
`
` Q. So I appreciate that distinction. So in
`
`your prior answer you made a distinction between powder
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`dose inhalers and inhalers powered by freon, right?
`
` A. Right. The powder inhaler of the patent
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`I just referred to is a powder medicament device, and
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`that is a different device than a meter dose inhaler
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`that is powered by freon.
`
` Q. Let's talk a little bit about your work
`
`history.
`
` On your CV you have listed that you worked at
`
`Vortran Medical from 1990 to 1995, correct?
`
` A. Correct.
`
` Q. Tell me about the nature of that work.
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` MR. SKLAR: Objection to form.
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` A. I was hired initially to develop a low
`
`flow nebulizer for Vortran Medical Technology. Became
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`their director of research and development and was
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`involved in the development of a number of different
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`aerosol technologies.
`
` Q. What type of company is Vortran Medical?
`
` A. It's a United States-based company.
`
` Q. Are they in a product development type of
`
`engagement? When you say you developed devices for that
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`company, what was the ultimate goal of your initial
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`position there at Vortran Medical?
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` MR. SKLAR: Objection to the form.
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` A. My initial goal was to develop products
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`for Vortran technology that would produce revenue.
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` Q. Now, did any of the products that you
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`developed at Vortran Medical make it to market?
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` A. Yes. Many of the products that I
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`developed for Vortran Medical Technology made it to
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`market.
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` Q. Tell me about some of those products.
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`Let's start with one.
`
` A. One product was what is branded as the
`
`heart nebulizer. It's a continuous nebulizer. It's
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`covered under patent, Universal Nebulizer 5,287,847 is
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`the patent number dated February 26 -- excuse me.
`
`February 22, 1994.
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` Q. Were the majority of the products that
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`you developed at Vortran Medical nebulizers?
`
` A. I was involved with development of
`
`nebulizers with Vortran Medical Technology, but I also
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`helped with the development of inhaler products and
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`other -- I looked at other unique aerosolization
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`delivery approaches. If I wasn't involved with the
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`development of aerosol-producing technologies in Vortran
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`Medical Technology, I was involved with devices that
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`assisted with the delivery of aerosol from aerosol
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`delivery devices to patients under various settings.
`
` Q. Tell me more about devices that would
`
`assist with the delivery of aerosol that you were just
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`referring to.
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` A. Well, for example, one device was called
`
`the Vyzan 9. It was a device that was used -- it was a
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`device that I was involved in, in charge of the
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`development of that worked powering a nebulizer
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`delivering large amounts of aerosol to patients who had
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`ARDS for the delivery of surfactants, surfactants
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`specifically produced by Burroughs Welcome as part of a
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`large clinical trial. The patients we were delivering
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`aerosol to for that particular project were on ICU
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`ventilators.
`
` Q. So the Vyzan 9 wasn't a meter dose
`
`inhaler?
`
` A. No. Nobody in the industry would have
`
`classified the Vyzan 9 as a meter dose inhaler.
`
` Q. Did the Vyzan 9 make it to market?
`
` A. Well, we made it into clinical trials.
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`It was a drug device/combo device, and the clinical
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`trial was shut down due to -- the early indications of
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`the clinical data indicated that the surfactant that
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`Burroughs Welcome was delivering was, in fact, not
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`actually effective as a molecule.
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` Q. So at the time of your work at Vortran
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`Medical, did any of the meter dose inhalers that you
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`worked on make it to market?
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` A. I worked on a, with Vortran Medical
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`Technology on a product called the Gentle Inhaler. I
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`had done a substantial amount of testing work, and I was
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`not the inventor of that product and did not do
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