| S H USDC SDNY FISH & RICHARDSON DOCUMENT Fish & Richardson P.C ELECTRONICALLY FILED ff 500 Asguctlo Sixer, Suite 400 DOC #: Redwood City, GA 94063 650 839 5070 main DATE FILED: 2/9/2023 Hh 650.839 3071 fax VIA ECF February 7, 2023 Esha Bandyopadhyay Principal [email protected] Hon. Katharine H. Parker +1 650 839 5088 direct United States District Judge Southern District of New York Daniel Patrick Moynihan United States Courthouse 500 Pearl Street New York, NY 10007 Re: Spectrum Dynamics Medical Limited (Plaintiff) v. GE et al. (Defendants); Case No.: 18-cv-11386 (VSB) Dear Judge Parker: Pursuant to Federal Rule of Civil Procedure 5.2(e), Your Honor’s Individual Rule of Practice III(d), and the parties’ Stipulated Protective Order (ECF No. 156), Spectrum respectfully requests redaction and filing under seal of certain portions of the January 5, 2023, hearing transcript (ECF No. 618). The proposed redactions are shown in Exhibit 1. Defendants do not object to this request. Throughout the hearing, counsel and Your Honor referenced a GE patent, by number and other identifying information, that Spectrum contends contains misappropriated Spectrum trade secrets. Judge Broderick previously granted Spectrum’s request to redact such information from its First Amended Complaint because “the mere disclosure that GE owns the identified patents containing the trade secrets, with an assertion that they contain misappropriated Spectrum technology, informs potential competitors that Spectrum’s system (the first of its kind on the market) contains some of the features disclosed in such patents.” ECF No. 32 at 1. For the same reason, Judge Broderick also granted Spectrum’s request to redact such information from its Motion for Leave to Amend Complaint. ECF No. 552. For these reasons, Spectrum respectfully requests redaction and filing under seal of the January 5, 2023, hearing transcript.

Respectfully Submitted, /s/ Esha Bandyopadhyay Esha Bandyopadhyay (Pro Hac Vice) Fish & Richardson P.C. 500 Arguello Street, Suite 400 Redwood City, CA 94063

Hon. Katharine H. Parker Page 2

Tel: 650 839 5070 Fax: 650 839 5071 Email: [email protected] Michael F. Autuoro (MA 2932) Fish & Richardson P.C. 7 Times Square, 20" Floor New York, NY 10036 Tel: 212 765 5070 Fax: 212 258 2291 Email: [email protected] Roger A. Denning (Pro Hac Vice) Fish & Richardson P.C. 12860 El Camino Real, Suite 400 San Diego, CA 92130 Tel: 858 678 5070 Fax: 858 678 5099 Email: [email protected] Spectrum's proposed redactions are narrowly tailor Adam J. Kessel (Pro Hac Vice) to protect competitively sensitive information in Alexander M. Pechette (Pro Hac Vice) |accordance with Lugosch v. Pyramid Co. of Philip K. Chen (Pro Hac Vice) Onondaga,

(2d Cir. 2006) and its eee progeny. Accordingly, the motion is GRANTED. T Boston. MA 02210 transcript from the 1/5/2023 conference shall Tel: 617 542 5070 incorporate Spectrum's proposed redactions. el: . . Fax: 617 542 8906 The Clerk of the Court is respectfully directed to Email: [email protected]: terminate the motions at ECF No. 625 and 626. Tt [email protected]; [email protected] filing at ECF No. 626 may remain under seal. Attorneys for Plaintiff Spectrum Dynamics Medical Limited SO ORDERED:

HON. KATHARINE H. PARKER 3/9/0003 cc: All counsel of record (via ECF) UNITED STATES MAGISTRATE JUDGE

EXHIBIT 1 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

SPECTRUM DYNAMICS MEDICAL : Docket #18-cv-11386 LIMITED, : Plaintiff, : -against- : GENERAL ELECTRIC COMPANY, et al,: New York, New York Defendant. : January 5, 2023 --------------------------------: CONFERENCE PROCEEDINGS BEFORE THE HONORABLE KATHARINE H. PARKER UNITED STATES MAGISTRATE JUDGE

APPEARANCES: For Plaintiff: FISH & RICHARDSON P.C. BY: Michael Frank Autuoro Alexander Pechette 7 Times Square 20th Floor New York, New York 10036

For Defendant: THOMPSON HINE BY: Jesse Leigh Jenike-Godshalk Brian Philip Lanciault, Jr. 300 East Randolph Street Suite 5000 Chicago, Illinois 60601

Transcription Service: AOM Transcription Phone: (631) 334-1445 E-mail: [email protected] Proceedings recorded by electronic sound recording; Transcript produced by transcription service INDEX E X A M I N A T I O N S Re- Re- Witness Direct Cross Direct Cross None

E X H I B I T S Exhibit Voir Number Description ID In Dire None 1 THE DEPUTY CLERK: Calling case 18 Civil 2 11386; Spectrum Dynamics Medical versus General 3 Electric Company. 4 Beginning with counsel for the plaintiffs, 5 could you please make your appearance for the 6 record. 7 MR. AUTUORO: Yes. Good morning, your 8 Honor. Michael Autuoro, from Fish & Richardson, 9 for Spectrum Dynamics Medical Limited. 10 THE COURT: Hi. 11 MR. PECHETTE: Alex Pechette, also from 12 Fish & Richardson. 13 THE COURT: Hi. Nice to meet you in 14 person. 15 THE DEPUTY CLERK: Counsel for the 16 defendants, please make your appearance. 17 MR. GODSHALK: Yes. This is Jesse 18 Godshalk, from Thompson Hine, on behalf of 19 defendant. 20 MR. LANCIAULT: And Brian Lanciault, also 21 from Thompson Hine. 22 THE COURT: Okay. Nice to meet everybody 23 in person finally. 24 So there are a couple things on the 25 agenda. First, I was pleased to see that you Pee Obit Nia 1 worked out the trade secret chart. So that's 2 great. One less issue to deal with. 3 Next there's the issue of the proposed 4 amendment to the Complaint. And you requested oral 5 argument. I've read through the papers. So I will 6 hear from plaintiffs first, and then I'll hear from 7 defense counsel. 8 MR. PECHETTE: Good morning, your Honor. 9 Alex Pechette from Fish & Richardson, on behalf of 10 the plaintiff. 11 There are four points I'd like to make, 12 your Honor. First, Spectrum did not unduly delay 13 in seeking to amend. Second, GE has not met its 14 burden of showing undue prejudice. Third, the a 15 patent implicates the same set of facts as the 16 other patents already in issue. And, fourth, GE 17 has not met its burden of showing that the 18 amendment would be futile. 19 As to the issue of undue delay, Spectrum 20 neither knew nor should have known about the a 21 patent until June 20, 2022. Under binding Federal 22 Circuit law, that is the date when the clock 23 started, not when the patent issued and certainly 24 not when the application published. And the cases 25 I'm referring to are Advanced Cardiovascular

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1 Systems and Pei-Herng. Those Federal Circuit cases 2 control over the contrary District Court cases that 3 GE cites. 4 THE COURT: I'm sorry. Give me the date 5 again. 6 MR. PECHETTE: June 20th, 2022. 7 THE COURT: Right. And that's when the 8 Spectrum employee learned of the patent, when it 9 was issued? 10 MR. PECHETTE: That's correct. 11 THE COURT: Okay. 12 MR. PECHETTE: Yes. 13 After learning of the a patent, 14 Spectrum diligently investigated. It performed its 15 Rule 11 inquiry. Spectrum then notified GE of its 16 claim via interrogatory response and sought GE's 17 consent to amend the Complaint. When the parties 18 reached an impasse, Spectrum filed this motion the 19 very next day- All that happened within four 20 months of learning of the a patent. 21 GE does not contend that four months 22 amounts to undue delay, and the case law is clear 23 that it does not. For example, American Medical 24 Association, the Court held that seven months was 25 not an undue delay. Even if the clock started when

Pee Obit Nia 1 the patent issued, the delay would still not be 2 undue. Spectrum filed this motion less than a year 3 after the patent issued. 4 In Memry, another case involving 5 correction of inventorship claims, the Court found 6 no undue prejudice —-- I'm sorry, no undue delay, 7 where the plaintiff sought to amend 15 months after 8 the patent had issued. And that case, your Honor, 9 was decided under the more stringent good cause 10 standard under Rule 16(b), not the liberal standard 11 of Rule 15(a), which applies here. 12 So we ask your Honor to find that Spectrum 13 did not unduly delay. 14 Turning to the issue of undue prejudice, 15 GE has not met its burden. First, no significant 16 additional discovery would be necessary. And 17 second, the amendment would not significantly delay 18 the resolution of this case. Spectrum already 19 served written discovery on this patent. I would 20 direct your Honor to Exhibit G, page 17. It's a 21 rog response that we served. And there we 22 explained our conception story with respect to the 23 a patent. And GE simply does not address this 24 anywhere in its briefing. 25 As for depositions, Spectrum already

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1 deposed the first named inventor, who is a 2 a and we asked him questions about this 3 specific patent. GE, on the other hand, opted not 4 to ask the Spectrum inventors any questions about 5 the aa patent. They certainly could have, your 6 Honor, because we gave them notice of Spectrum's 7 claim in September, and those depositions didn't 8 happen until November, but they chose not to. So 9 any prejudice flowing from that decision is 10 entirely self-inflicted. 11 As far as documents, Spectrum has already 12 produced —-— 13 THE COURT: Actually, let me stop you for 14 a second on this issue of the depositions and what 15 questions were asked or not asked. Is it your 16 contention that it's the same trade secrets that 17 are at issue with respect to the other patents as 18 this new patent? 19 MR. PECHETTE: It is the same trade 20 secrets, yes. 21 THE COURT: So wouldn't the questions 22 concerning those trade secrets cover the a 23 patent? I guess I'm trying to understand when you 24 say —- what specific questions would there be for 25 the a patent?

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1 MR. PECHETTE: So there is a lot of 2 overlap, your Honor, in the technology that's 3 described in the GE 2 atent and the technology 4 that's described in the other patents. There are a 5 couple of differences in the MM patent, and 6 that's what I was referring to when I said we asked 7 questions specific to the a patent. 8 THE COURT: What are those differences? 9 MR. PECHETTE: 10 11 12 13 a Those details are specific to the yyy 14 patent, and we asked Mr. a questions about 15 that aspect of the patent. 16 THE COURT: Okay. 17 MR. PECHETTE: And, your Honor, going back 18 to the rog response I mentioned a minute ago, 19 that's what I was also talking about. In the pages 20 that I cite, we described our conception story with 21 respect to those additional details specific to the 23 THE COURT: So you provided to GE why you 24 say Spectrum owns those trade secrets or invented 25 and conceived of those particular aspects, a

CMe Dbl Wat 2 MR. PECHETTE: Correct. 3 THE COURT: So that information was 4 already provided. 5 MR. PECHETTE: Correct. 6 THE COURT: Okay. 7 MR. PECHETTE: We also produced documents 8 specific to those details, and we cited them in 9 that interrogatory response. 10 THE COURT: Okay. 11 MR. PECHETTE: For GE's part, any 12 additional document collection we think would be 13 minimal. In its briefing, GE does not contend that 14 the additional documents it would need to collect 15 are voluminous. GE already collected relevant 16 documents from the first named inventor. That was 17 ee The other two inventors likely 18 do not have many relevant documents. To my 19 knowledge, their names don't appear in the 20 documents produced to date so they're likely not 21 important players. 22 And, also, GE has represented that the 23 order of inventors on a patent matters. They name 24 inventors in order of their contributions to the 25 patent. So these second and third inventors likely

Pee Obit Nia 1 have fewer relevant documents. 2 One last point regarding prejudice, your 3 Honor. GE does not contend that the amendment 4 would significantly delay the resolution of the 5 case. So GE has forfeited any argument regarding 6 that prong of the undue prejudice analysis. So we 7 ask the Court find no undue prejudice. 8 THE COURT: Okay. Will the outcome of the 9 claims in this case affect the validity of the 10 claim on the a patent? In other words, would 11 there be some kind of res judicata or preclusion 12 based on what happens in this case? Have you done 13 that analysis? 14 MR. PECHETTE: We have not done that 15 analysis, your Honor. Just off the top of my head, 16 there's a lot of overlap, so I think it's very 17 possible that there would be some kind of res 18 judicata effect. There might be some daylight -- 19 if Spectrum were to not prevail on the other 20 claims, there might be some daylight because of the 21 additional technical details in the a patent, 22 but we just —- I can't say off the top of my head. 23 THE COURT: And if the motion to amend is 24 denied, is it your position that you could just 25 bring another suit on this -- independent suit on

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1 the a patent? 2 MR. PECHETTE: Yes, your Honor. And I 3 don't believe that that is disputed. 4 Turning to my third point, your Honor, the 5 GM patent is substantially similar to the other 6 patents-in-suit, and I actually have a 7 demonstrative on this point, if I may. 8 THE COURT: Sure. 9 MR. PECHETTE: Your Honor, if you turn to 10 page 6, this is a comparison of the a patent and 11 the a patent, which is a patent that's already 12 in the case. Both of these patents share a common 13 named inventor. That's ee who, 14 again, we already deposed. The patents also share 15 the same two embodiments. You can see that in the 16 figures here. They're nearly identical. 17 Not only are the patents similar, so are 18 Spectrum's claims to the patents. With respect to 19 all the patents at issue in this case, Spectrum's 20 claim is that GE induced Spectrum to reveal its 21 trade secrets under the guise of a potential 22 business deal, and then GE took those trade secrets 23 and used them to develop its own product and to 24 file patent applications. So all of Spectrum's 25 correction of inventorship claims share a common

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1 set of operative facts. The GM patent, 2 therefore, fits naturally into this case. 3 My final point, your Honor. GE has not 4 met its burden of showing that the amendment would 5 be futile. GE does not dispute that Spectrum's 6 correction of inventorship claim would survive a 7 motion to dismiss, and that's count 14. GE only 8 argues that count 13, which is fraud on the PTO, 9 would not survive a motion to dismiss. But 10 futility as to one of multiple counts is not 11 sufficient. And in any event, the Court has 12 already rejected GE's argument regarding count 13 13 and held that Spectrum alleged sufficient facts to 14 establish an Article III case or controversy. I 15 would direct your Honor to docket number 73 at 36 16 to 39. 17 THE COURT: That's Judge Broderick's 18 decision. 19 MR. PECHETTE: Correct. 20 THE COURT: Yes. Okay. Defendants argue 21 that the publication of the patent application in 22 ee puts you on constructive notice of 23 the patent, and they cite case law for that 24 proposition. 25 What's your response to that?

1 MR. PECHETTE: So the Pei-Herng case from 2 the Federal Circuit held the opposite. It 3 addressed this very issue, and it held that the 4 publication -- even if a plaintiff is aware of the 5 publication, the claim to correction of 6 inventorship under Section 256 does not accrue 7 until the patent actually issues. 8 And in that case, the District Court had 9 held that there was constructive notice of the 10 patent from the date of the publication of the 11 application, and the Federal Circuit reversed that 12 holding. So the District Court cases that GE cites 13 that hold the opposite are not controlling. 14 THE COURT: Okay. Now, if the amendment 15 is granted, what additional documents or 16 depositions do you think would be necessary, and 17 how long do you think it would take to conduct that 18 discovery? 19 MR. PECHETTE: Spectrum has already 20 completed its document production. We don't see 21 any other documents that would need to be produced 22 from Spectrum. Same with depositions. We've 23 already taken the deposition of the first named 24 inventor. There's two other named inventors, but 25 at this point, I don't think we see the need to Pee Obit Nia 1 depose those individuals. 2 For GE's part, they have said that they 3 will need to collect additional documents from the 4 named inventors. And as I said before, I don't 5 think that GE has contended that that document 6 collection is voluminous. And also, your Honor, 7 just citing that additional document discovery is 8 necessary is not a sufficient basis to deny leave 9 to amend under Rule 15. 10 As far as depositions go, they've already 11 deposed the two individuals at Spectrum who 12 Spectrum contends are the true inventors. That 13 would be Nathaniel Roth and Yoel 4ilberstein. And 14 they had multiple days with each of these 15 individuals, and they opted not to ask any 16 questions about the GR patent. They did, 17 however, ask questions about the other 18 patents-—in-suit, and that inquiry took all of one 19 hour and 37 minutes. So if they were to request a 20 deposition of Mr. Roth on the (patent, we think 21 that could be handled quite quickly. 22 THE COURT: So you would make those 23 individuals available again? 24 MR. PECHETTE: We would be willing to make 25 Nathaniel Roth available. He's the 30(b) (6)

1 designee on the conception of what we contend are 2 the misappropriated patents. And we would propose 3 that he be limited in time -- that that deposition 4 be limited in time. 5 THE COURT: How long do you think would be 6 necessary? 7 MR. PECHETTE: Considering that the other 8 seven patents already at issue only took an hour 9 and 37 minutes on the record, we think that an hour 10 would be sufficient. We would also ask that that 11 deposition be taken remotely, since that witness -- 12 THE COURT: He's in Israel, right? 13 MR. PECHETTE: Yes, correct. 14 THE COURT: Okay. All right. Thank you. 15 I'll hear from GE next. 16 MR. GODSHALK: All right, your Honor. I 17 want to start by addressing some specific points 18 that opposing counsel made. First of all, he cited 19 the Memry case. I think that case is readily 20 distinguishable, and, actually, it's 21 distinguishable on the same grounds as the SpeedFit 22 case, which Spectrum also cites in its briefing. 23 In both of those cases, you had a 24 plaintiff who wanted to add additional patents to a 25 Complaint by way of amendment, but the patents that Pee Obit Nia 1 they wanted to add all claimed priority to a patent 2 application that was cited in prior pleadings. So 3 everyone knew that the patents that were being 4 added, that they were going to be part of the case. 5 And that is not what we have here. Spectrum cannot 6 point to any patents or patent applications in the 7 existing pleadings that are in the same family as 8 the aa patent. 9 THE COURT: What's the significance of 10 being in the same family of patents? 11 MR. GODSHALK: Yeah. When they're in the 12 same family, your Honor, it means that they are 13 closely related patents, that they have closely 14 related technology. 15 THE COURT: So why would this -—-- Spectrum 16 has provided me an exhibit comparing the aa 17 patent and the a patent -- to my eyes, which I'm 18 not an expert, looks pretty similar. 19 MR. GODSHALK: Yes. 20 THE COURT: What's different that they 21 would be in a different family? 22 MR. GODSHALK: Yes, your Honor, and I 23 think that, to me, to be frank, the comparison of 24 the two patents in -- this is on page 5 of the 25 hand- -—-- or page 6, I'm sorry, of the handout from

1 opposing counsel. I think that's something of a 2 red herring because what they're comparing here are 3 two figures -- first of all, there are many, many, 4 many figures in each one of these patents, and 5 these are just figures that show an embodiment of 6 the invention. And it may not even be -- actually, 7 I'm sure of this, that it's not the entirety of 8 these figures that's being claimed. 9 I guess the bottom line is, to know what 10 is covered by an invention, you have to look -- or 11 by a patent, you have to look at the claims of the 12 patent. It's not the figures that control. It's 13 not the embodiments that control. It's not the 14 background of the invention. It's the claims 15 themselves. 16 So I think just comparing figures from 17 various patents is not very telling. Oftentimes, 18 patent prosecutors will simply copy and paste 19 figures from prior patents. Sometimes they'll even 20 copy and paste the entire specification, you know, 21 the part of the patent that leads up to the claims, 22 they'll just copy and paste from a prior patent. 23 And that is not to say that they are closely 24 related. It's just -- 25 THE COURT: I'm sorry, I'm going to just 1 interrupt you for a second to ask about the -- both 2 of these machines photograph internal organs -- 3 MR. GODSHALK: Correct. 4 THE COURT: -- take image of internal 5 organs -- 6 MR. GODSHALK: Correct. 7 THE COURT: -- by having a patient lie 8 down and go into the machine, and cameras are at 9 various places around the body and at various 10 distances from the body to take the image. 11 MR. GODSHALK: Correct. 12 THE COURT: And they're both taking images 13 of the same types of organs; is that right? 14 MR. GODSHALK: Well, yes, but I mean -- 15 THE COURT: So why would there be a 16 different family? I don't understand. 17 MR. GODSHALK: Well, I think that, first 18 of all, in terms of taking images of the same 19 organs, these are both full-body scanners. I mean, 20 all of the technology at issue is full-body 21 scanners. So we're talking about scanners that can 22 take images of any part of the body. 23 THE COURT: What's the material difference 24 between the two families, if you know? 25 MR. GODSHALK: Well, you know -- CMe Dbl Wat

1 THE COURT: In plain English. 2 MR. GODSHALK: Frankly, I don't know if 3 that's even really a —- I'm not sure if that 4 question can be answered that way. 5 THE COURT: I see. 6 MR. GODSHALK: But I don't know -- 7 certainly, I can't give you a clear answer on that. 8 THE COURT: So what is your view on 9 whether or not the outcome of this case would have 10 any kind of preclusive effect on an independent 11 claim involving the a patent? 12 MR. GODSHALK: Yes. Your Honor, as with 13 opposing counsel, that's not something that I have 14 analyzed, but I don't think that it would certainly 15 have a full res judicata effect. Like, I don't 16 think that, for instance, a decision in this case 17 would preclude Spectrum completely from pursuing a 18 separate claim involving the a patent. 19 THE COURT: Those two independent trade 20 secrets as well. 21 MR. GODSHALK: Well, it's independent 22 patents. So I would think that, regardless of what 23 happens in this case, they could certainly bring a 24 separate claim based on the a patent. 25 THE COURT: Okay. And what is GE's view

Pee Obit Nia 1 on whether it would be more efficient to simply add 2 this here versus face a separate lawsuit? 3 MR. GODSHALK: Yeah, I think it would be 4 more efficient to —-- if Spectrum really believes 5 that it has a, you know, merit-worthy claim based 6 on the WR patent, for them to bring a separate 7 lawsuit rather than continuing to delay this 8 litigation, which has already been -- gone on for 9 more than four years and has already been delayed 10 by Spectrum's past conduct when they filed a motion 11 for preliminary injunction after several years of 12 litigation and which really sent the case sideways 13 and delayed it. 14 And I think that this motion for leave has 15 the potential to do the same because we are just 20 16 days away from the deadline for filing opening 17 expert reports. But before the experts can prepare 18 their reports, they need to have the underlying 19 facts upon which those reports will be built. And 20 I think that if the GM patent is added, there is 21 going to be significant additional discovery that 22 will be needed. 23 THE COURT: Tell me what that is. 24 MR. GODSHALK: Yes. So, let's see. To 25 start, I think it's important to note that there

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1 has been very, very little discovery so far 2 relating to the aa patent. So, I mean, that is 3 an important baseline. 4 You know, fact discovery has obviously now 5 closed in the case, and while it was going on, 6 neither party served any interrogatories, any 7 request for production or any request for 8 admissions directed to the BE patent, its 9 application, or any of the patents within the same 10 family. Defendants also didn't collect, review and 11 produce documents specifically relating to this 12 patent, its underlying application, or other 13 patents in the same family. 14 And, indeed, we didn't collect any 15 documents from two of the named inventors, Mr. a 16 and Mr. □ Mr. ae .: no longer a 17 GE employee, and we've had no contact with him 18 whatsoever, and we're not even sure how to get 19 ahold of him. 20 Finally, during depositions, we didn't ask 21 witnesses any questions about the GM pacent, its 22 application, or its family members. And I 23 understand opposing counsel kind of makes an issue 24 out of this, that we ought to have done that. I 25 disagree because under Rule 26 parties are only

Pee Obit Nia 1 permitted to take discovery that is relevant to the 2 claims and defenses in the case. Until the a 3 patent is added -—-- if it gets added to this case □□□ 4 then it's not relevant to this case. Things about 5 it are simply irrelevant to the case. So it's not 6 a proper matter for discovery. 7 It's also defendant's position they 8 shouldn't have to incur the costs and expenses and 9 time and effort to take discovery of the a 10 patent, that it's unduly prejudicial. So I don't 11 understand why we would willingly take on those 12 burdens by going ahead and taking the discovery 13 during the discovery period. No, our position is 14 we shouldn't have to do that. 15 Also, opposing counsel has argued that 16 they've basically provided ample written discovery 17 on the GR catcent, and they point to a single 18 interrogatory response. First of all, that 19 interrogatory didn't ask about the GM patent. So 20 it was kind of gratuitous on their part to add it 21 into their response. But in any event, it doesn't 22 provide much detail at all on this claim. Over 23 maybe one or two pages, it basically lays out their 24 basic contentions for what information they claim 25 that they provided to the defendants that would be

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1 relevant to this patent. But it's not robust 2 discovery on this. 3 THE COURT: But really this claim concerns 4 trade secrets. There wouldn't need to be any 5 separate claim construction or anything like that, 6 would there, on this (inaudible) claim? 7 MR. GODSHALK: You are correct about that. 8 I do not foresee the need for there to be any claim 9 construction if this patent is added. That's 10 correct. 11 In terms of the discovery that I think 12 will need to happen, because so little fact 13 discovery has happened so far, I mean, I would 14 anticipate that both sides would want to serve 15 requests for production, interrogatories and 16 requests for admissions relating to the a 17 patent. I know we will. And these, in turn, will 18 require defendants to prepare written objections 19 and responses and also to search for documents from 20 two new custodians, Mr. Gi anc Mr. a 21 who were named inventors of the ia patent. 22 We'll also have to collect documents from 23 central GE databases, such as the Anaqua database, 24 which holds GE's patents and their patent 25 applications and patent materials. And I

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1 anticipate we'll have to collect documents from 2 three existing custodians, Mr. Hefetz, Gil Kovalski 3 and ee given Mr. Hefetz and 4 Mr. Kovalski are kind of involved -—-- they're 5 members of this patent examination board at GE. 6 And nen i. is, again, one of the 7 named inventors. 8 Now, in terms of the volume of documents, 9 I will say this. Opposing counsel mentioned that 10 he asked questions of Mr. ae ek his deposition 11 about this patent. And I think the answers that 12 Mr. QR provided are telling and are relevant 13 here. Mr. 9M saia -- he testified that he had 14 "many e-mails" and "a lot" of e-mails relating to 15 the conception of the JM patent. He also -- in 16 discussing conception of this patent, he mentioned 17 a company called LETI -- that's L-E-T-I -- that I'd 18 never heard of. IT don't think it's been at all on 19 our radar. I don't think we've collected any 20 documents relating to it. And that was all part of 21 his conception story for this patent. 22 THE COURT: You mean this other company 23 collaborated, potentially, on this conception? 24 MR. GODSHALK: I don't know if they 25 collaborated in conception. TIT don't know if I'd

Pee Obit Nia 1 say that precisely. But what Mr. 25: was 2 he said that he was collaborating with LETI and 3 that out of that collaboration, he developed the 4 idea. He developed the idea for the GE 2cent. 5 I don't want to make it sound like LETI is a 6 potential inventor. I don't think that's the case. 7 But, you know, based upon that testimony and other 8 facts that we know, I think we reasonably can 9 anticipate that the volume of additional documents 10 will be large. 11 In terms of serving additional 12 interrogatories, I'll tell you that Spectrum has 13 taken the position that they've already answered 14 more than 25 interrogatories. So I anticipate that 15 they will resist any efforts on our part to serve 16 additional interrogatories relating to the a 17 patent. So that will likely produce a discovery 18 dispute that will have to be resolved. 19 And then, in terms of depositions, as 20 mentioned, we would like to reopen -- if this 21 amendment is allowed, we would like to reopen 22 Mr. Roth's deposition, but also Mr. Zilberstein. 23 Spectrum claims that both of these men are --— 24 should have been the named inventors -- the 25 exclusive inventors on the Meets. So we are

1 going to want to ask them about this patent. 2 THE COURT: You're going to probe their 3 conception story. 4 MR. GODSHALK: Yes. In preparation for 5 this hearing here today, I spoke with the attorney 6 on our team who deposed Mr. Zilberstein and 7 Mr. Roth, and he said, absolutely, I want to ask 8 them questions. If this amendment is allowed, I'm 9 going to want to ask them questions about every 10 claim in this patent. 11 And I know that opposing counsel has said 12 something about -- that with prior patents, we only 13 spent an hour and 37 minutes, something like that. 14 I don't know where that figure comes from. I don't 15 know what that's based upon. But I would imagine 16 we're going to want to spend significant time with 17 these individuals, you know, questioning them about 18 these two patents. 19 And, lastly, in terms of additional 20 discovery, Spectrum has indicated that if this 21 amendment is allowed, they're going to want to 22 amend their trade secret table again. As your 23 Honor knows, prior amendments to this trade secret 24 table have been a source of disputes between the 25 parties. So, you know, it's certainly possible Pee Obit Nia 1 that if they amend their trade secrets table, that 2 could bring about additional disputes in this case. 3 And I think taking all of this discovery 4 and all these facts into consideration, if we're 5 going to go down this route -- go down this path 6 and allow the JM patent to come in and we're 7 going to take discovery on it, I think we're going 8 to have to push back expert discovery until we've 9 completed this additional fact discovery. So I 10 think it will significantly delay the case if the 11 BR c2cene comes in. 12 Quickly, I want to -- yes. 13 THE COURT: How do you respond to 14 Spectrum's argument that any delay itself is not a 15 basis for denying the amendment and their argument 16 that they delayed in raising this? They're saying 17 the Circuit case law supports the fact that the 18 relevant date for when they knew would be June 2022 19 and they didn't delay seeking this. 20 MR. GODSHALK: Yes, your Honor, happy to 21 address that. I think, first of all, what I would 22 say in response to that is opposing counsel said 23 that the case law from the Federal Circuit -- and 24 his words were "addressed this very issue." 25 T'll tell you, that is not accurate. The

Pee Obit Nia 1 cases that they cite from the Federal Circuit 2 involved laches, which is not what we are talking 3 about here. We are talking about motions ora 4 motion for leave to amend the pleadings. So the 5 cases they cite are not directly on point. 6 And for the reasons that we have laid out 7 in our briefing, we think the Court should look at 8 constructive notice. But I also think this is -- 9 you know, it's almost unnecessary to decide this 10 thorny legal issue because I think even if we apply 11 the standard that Spectrum has advocated, then they 12 still unduly delayed. They say the standard is 13 Spectrum knew or should have known of the issued 14 GE patent. That's the standard we have to look 15 at, they say. Well, I would submit that they 16 should have known of this patent when it issued in 17 a more than a year ago. 18 Spectrum alleged in its initial Complaint 19 that defendants engaged ina systematic effort to 20 patent Spectrum's technology. Based on that 21 allegation, Spectrum should have been closely 22 monitoring GE's patent filings. And the -- we've 23 talked about the first named inventor on this 24 patent is ae He's a named 25 defendant in this case and he is one of the

Pee Obit Nia 1 named -- or he's a named defendant and he's a named 2 inventor of many of the other patents that are 3 already at issue. 4 THE COURT: So you're saying they could 5 have searched his name and found it. 6 MR. GODSHALK: Yes. Not only could have, 7 but should have. You know, if -- he is probably 8 one of the top one or two most important people on 9 the GE side in this case. So, you know, of all the 10 people that they should have been looking out for, 11 inquiring about, he would be it. 12 And in the case law that they have cited, 13 particularly the Advanced Cardiovascular case -- 14 that's the Federal Circuit case from 1993, so that 15 case elucidates what it means -- this 16 should-have-known standard. What the case says is, 17 when we try to determine whether a party should 18 have known, we look at whether that party had 19 information that would have led a reasonably 20 intelligent person to inquire further. And 21 Spectrum certainly, they certainly had information 22 that would have led them to inquire further, based 23 on their belief that GE was filing all these patent 24 applications that covered Spectrum's technology. 25 So they should have learned of the J patent when

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1 it issued, and yet they waited an additional year 2 to seek leave to amend, and it's at a particularly 3 inopportune time now that fact discovery has closed 4 in this case. 5 THE COURT: And what is GE's position on 6 whether —-- I think I already asked you this 7 question —-- whether Spectrum can simply file 8 another case, independent case, just on the aa 9 MR. GODSHALK: We agree with that. We 10 agree that they could. 11 THE COURT: Okay. 12 MR. GODSHALK: Let's see, I wanted to 13 address -—- one of the other things that opposing 14 counsel said was he said that the order of the 15 inventors on the patents matters, and that because 16 ae :: the first named inventor on 17 this patent, we should expect that most of -- that 18 he did most of the invention or that he has most of 19 the documents, something along those lines. 20 And I know that there was a time in the 21 past when GE made that representation that the 22 order of the inventors matters. But we then 23 rescinded that. We looked into that further and we 24 found out that was not factually accurate, that 25 counsel had just misunderstood this. And so we

1 retracted that and said that's not actually true. 2 The order of the inventors doesn't matter. So just 3 to make clear, the order of the inventors does not 4 matter. 5 Let's see. And then, with regard to 6 futility, I just really quickly wanted to note, so 7 opposing counsel said that with regard to futility, 8 it doesn't matter if just one of the claims is 9 futile, that's not enough. I don't know of any 10 case law to that effect. He didn't cite any case 11 law to that effect. 12 THE COURT: Right, but doesn't that mean 13 they could bring one and not the other? I mean, in 14 a motion to amend, if one of the two claims is 15 futile, then just the non-futile claim could be 16 brought -- 17 MR. GODSHALK: Well -- 18 THE COURT: -- in theory, right? 19 MR. GODSHALK: Well, that is true, your 20 Honor. 21 THE COURT: And what do you say to 22 Spectrum's statement that Judge Broderick already 23 found that it wasn't futile -- 24 MR. GODSHALK: Yes. 25 THE COURT: -- because wouldn't that be 1 law of the case? 2 MR. GODSHALK: Yes, your Honor, I do have 3 a response to that. So I know what Judge Broderick 4 ruled in that ruling. That's a ruling from June of 5 2020. That may even be before the application for 6 this patent was even filed. But, certainly, I have 7 no reason to believe that when Judge Broderick made 8 that ruling that he was thinking about future 9 issuing patents. He said nothing in that ruling 10 about patent applications that might be filed after 11 his ruling or patents that might issue after his 12 ruling. That ruling has nothing to do with and 13 does not apply to after issuing patents. It was a 14 ruling that was specific to the patents that were 15 in front of him at the time. 16 One other thing I want to point out before 17 I cede the podium is that -- and this relates to 18 Judge Broderick's prior ruling on a motion to 19 dismiss in this case. So the Second Amended 20 Complaint, one of the things that it does is it 21 repleads in toto three claims that were already 22 partially dismissed by Judge Broderick. 23 So in May of 2019, Spectrum filed its 24 First Amendment Complaint. We moved to dismiss all 25 but one of the claims. So a very broad motion to 1 dismiss. Then in June of 2020 Judge Broderick -- 2 he granted that motion in part and denied it in 3 part. And with regard to Spectrum's count 1 for 4 breach of contract, count 2 for misappropriation of 5 trade secrets and count 13 for fraud on the USPTO, 6 he dismissed those claims in part. 7 Now, when Spectrum put together its Second 8 Amended Complaint, it didn't account for this 9 ruling at all. It repled these claims in their 10 entirety, including the parts that Judge Broderick 11 had previously dismissed. So I would submit that 12 the Second Amended Complaint is in contravention of 13 this prior order. 14 And I think it's significant, because if 15 they are allowed to file the Second Amended 16 Complaint, we are going to obviously move to 17 dismiss not just the claim that we have noted is 18 futile. We're also going to have to renew our 19 prior motion to dismiss to basically redismiss 20 parts of this Complaint that have already been 21 dismissed. And then we're going to have to answer 22 this 126-page Second Amended Complaint, which is a 23 significant outlay of resources, not just for us, 24 but the Court is going to have to then rule on the 25 motion to dismiss. So it's a significant outlay of 1 resources for the Court as well. 2 THE COURT: Okay. 3 MR. GODSHALK: So I think, you know, for 4 all these reasons, the Court should deny the 5 motion, that is, unjustified delay, undue prejudice 6 and futility. 7 THE COURT: Thank you. 8 MR. PECHETTE: Your Honor, just a couple 9 of points to address the points raised by opposing 10 counsel. Opposing counsel mentioned that the 11 Pei-Herng and Advanced Cardiovascular Systems cases 12 are distinguishable because they were based on 13 laches. The District Court cases that GE cites 14 were also about laches or the statute of 15 limitations, which is the same. So if that is a 16 reason for distinction, then their cases also 17 should fall. 18 The second thing is they mentioned that 19 Spectrum should have known about the patent from 20 the date of issuance, even applying the standard 21 that Spectrum is advocating for. If that were the 22 case -- we filed this motion less than twelve 23 months after the patent issued. There's case law 24 that shows that that is not an undue delay. So 25 even if we were to measure from the day of the Pee Obit Nia 1 filing -- or, I'm sorry, of the issuance of the 2 patent, there would still be no undue delay. 3 Counsel also mentioned that we should have 4 been following their patent applications more 5 closely given the allegations in the Complaint. As 6 we mentioned in the reply brief, there have been 7 7,862 patent publications from GE since the filing 8 of the Complaint and 321 of those appear to be 9 related to the same technology. So it's like 10 finding a needle in a haystack, your Honor. 11 THE COURT: Well, can't you just do a name 12 search for the inventor? 13 MR. PECHETTE: We could do a name search 14 for the inventor. There are many named inventors 15 on the patents at issue in this case. They mention 16 a Yes, we could have searched for 17 a 22... but he's just one of 18 several inventors in this case. 19 Regarding the arguments that counsel made 20 about the amendment delaying the resolution of this 21 case, I want to reiterate that GE did not make that 22 argument anywhere in their briefing. So that 23 argument is brand-new today and it's forfeited. 24 And if there is any delay, it would be minimal. 25 The case law shows that if you file your motion to

1 amend before the close of fact discovery, before 2 there's any date set for trial and before there's a 3 schedule set for expert discovery, that's not going 4 to significantly delay the resolution of the case. 5 And that's the case here. 6 Also, with respect to discovery, opposing 7 counsel now says that the additional documents they 8 would need to collect would be large. Again, 9 that's an argument that they didn't make in their 10 briefing. It's forfeited. And even if that 11 argument were heard today, that alone would not be 12 reason to deny leave. 13 As far as depositions, we are willing to 14 put Nathaniel Roth up. He's the 30 (b)(6) 15 designee. We don't think it would require much 16 time at all. As I said, if you look at the 17 transcripts of his deposition, counsel spent an 18 hour and 37 minutes asking him specific questions 19 about -- 20 THE COURT: Okay, you mentioned that. 21 MR. PECHETTE: Yes. 22 THE COURT: What about the other guy? 23 MR. PECHETTE: So Yoel Zilberstein, his -- 24 he was only designated as a 30(b)(1) witness, and 25 his seven hours -- they actually exceeded the seven CMe Dbl Wat

1 hours on the record for him. So we consider his 2 deposition closed. And, again, they could have 3 asked him questions. They had notice of these 4 claims. And counsel also mentioned that it would 5 have been inappropriate to ask about the a 6 patent because —--— 7 THE COURT: Yeah, Rule 26 is pretty clear. 8 You can't ask about things that aren't -- about 9 things that aren't relevant to the claims and 10 defenses. 11 MR. PECHETTE: We certainly would not have 12 objected on that basis. And, in fact, in our reply 13 brief we invited them to ask these questions. We 14 even offered to put up these witnesses for 15 additional time if they wanted to address the a 16 patent. 17 And as far as efficiency, your Honor, 18 counsel said that it would be more efficient to 19 start a brand-new case and have a completely new 20 docket, new discovery requests. We think that that 21 is just not correct, your Honor. It would be much 22 more efficient to just fold this patent into this 23 case where it naturally fits. The overlap in the 24 subject matter between this patent and the other 25 patents already in the case is large.

1 The only additional details that this 2 patent brings are what I mentioned before, | le 4 And opposing counsel does not dispute that those 5 are the only relevant differences in the 6 patent. To bring an entirely new case just to 7 address those minor issues would not be an 8 efficient use of the Court's resources or the 9 parties" resources. 10 THE COURT: Okay. All right. Thank you. 11 Chris, can we go off the record for a 12 second? 13 (Discussion held off the record.) 14 15 000 16 17 18 19 20 21 22 23 24 25

2 CERTIFICATE 4 I, Adrienne M. Mignano, certify that the 5 foregoing transcript of proceedings in the case of 6 Spectrum v. General Electric Company, et al. 7 Docket#18CV11386, was prepared using digital 8 transcription software and is a true and accurate 9 record of the proceedings. 10 11 12 | signature _Coaeenne Wl. Ulegnane 13 ADRIENNE M. MIGNANO 14 15 Date: January 6, 2023 16 17 18 19 20 21 22 23 24 25