`
`Kowa Company, Ltd. et al. v. Aurobindo Pharma Limited et al.,
`Civil Action No. 14-CV-2497 (PAC) (and related cases)
`
`
`
`Exhibit 6 to Supplemental Declaration of
`Thomas R. Burns, dated June 10, 2015, in
`support of Defendants’ Joint Responsive
`Claim Construction Brief
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 2 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 1 of 42
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`------------------------------------X
` :
`KOWA CO., LTD., et al., :
` : 14-CV-2497
` Plaintiffs, :
` v. : 500 Pearl Street
` : New York, New York
`AUROBINDO PHARMA LTD., et al., :
` : October 6, 2014
` Defendants. :
`------------------------------------X
`
`TRANSCRIPT OF CIVIL CAUSE FOR INITIAL CONFERENCE
`BEFORE THE HONORABLE PAUL A. CROTTY
`UNITED STATES DISTRICT JUDGE
`
`APPEARANCES:
`
`For the Plaintiffs:
`
`
`
`
`
`For Defendant/Mylan:
`
`ANTHONY VIOLA, ESQ.
`Edwards, Wildman & Palmer
`750 Lexington Avenue
`New York, New York 10022
`
`KATHLEEN CARR, ESQ.
`DAVID CONLIN, ESQ.
`ADAM SAMANSKY, ESQ.
`Edwards, Wildman & Palmer
`111 Huntington Avenue
`Boston, Massachusetts 02199
`
`DEANNE MAZZOCHI, ESQ.
`Rakoczy Molino Mazzochi Siwik LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`
`CONNIE HUTTNER, ESQ.
`Budd Larner
`260 Madison Avenue, 18th Floor
`New York, New York 10016
`
`(Appearances continue on next page.)
`
`
`
`Proceedings recorded by electronic sound recording,
`transcript produced by transcription service
`
`
`
`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 3 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 2 of 42
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`APPEARANCES CONTINUED:
`
`For the Defendants:
`
`PAUL AINSWORTH, ESQ.
`CHANDRIKA VIRA, ESQ.
`Sterne, Kessler, Goldstein & Fox
`1110 New York Avenue
`Washington, DC 20005
`
`STEVE GERBER, ESQ.
`KATHERINE ROHLF, ESQ.
`Gonzalez, Saggio & Harlan
`292 Madison Avenue
`New York, New York 10017
`
`JAKOB HALPERN, ESQ.
`ARNIE KELLMAN, ESQ.
`Saiber LLC
`One Gateway Center, Suite 1000
`Newark, New Jersey 07102
`
`VINCENT RAO, ESQ.
`Kelley, Drye & Warren
`101 Park Avenue
`New York, New York 10178
`
`CRAIG SCOTT KESCH, ESQ.
`Flemming Zulack Williamson Zauderer
`One Liberty Plaza
`New York, New York 10006
`
`MICHAEL R. DZWONCZYK, ESQ.
`Sughrue Mion, PLLC
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037
`
`Court Transcriber:
`
`
`
`SHARI RIEMER, CET-805
`TypeWrite Word Processing Service
`211 N. Milton Road
`Saratoga Springs, New York 12866
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 4 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 8 of 42
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`MR. CONLIN: Well, if you want to discuss the details
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`of the various disagreements and stuff I would ask my partner
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`Kathleen Carr to talk to the court on those.
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`THE COURT: Okay, Ms. Carr.
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`MS. CARR: Thank you, Your Honor. I think we have
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`some good news in that we’ve worked hard --
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`THE COURT: We thrive on good news here. There’s not
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`enough of it.
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`MS. CARR: So we have managed to come to agreement
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`with the defendants on many of the dates. So that’s -- that
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`was some substantial progress and some substantial work
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`involved to try to get there. So we have a general framework
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`that I think is agreed upon and if I misspeak which I don’t
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`intend to I welcome the defendants to point that out but --
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`So we have an agreed initial disclosure statement of
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`October 20th and running the proposed schedule we have
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`submitted and the proposed case management plan we’ve got
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`agreement on fact discovery closing October 5, 2015 and we’ve
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`also got agreement on expert discovery. In large part we’ve
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`got expert discovery closing on March 11, 2016 with some dates
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`in advance of that about exchange of expert reports, opening
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`reports on December 15, 2015. Responsive expert reports
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`January 29, 2016 and then reply expert reports February 15,
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`2016.
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`So we think generally the framework is agreed among
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`
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 5 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 9 of 42
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`the parties. Also we have an agreed suggested final pretrial
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`submission date of April 25, 2016.
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`We do have disagreement on a few discrete aspects of
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`the discovery approach in the case, Your Honor. One of those
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`areas of disagreement I think is the concept of contention
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`interrogatories. It’s our understanding that in the Southern
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`District the contention interrogatories come towards the end
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`of the case once things are fully vetted, the parties
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`understand where they’re at and that kind of thing, and so we
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`believe that the appropriate time for contention
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`interrogatories would be near the close of fact discovery.
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`It’s my understanding that the defendants would like to
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`advance some interrogatory practice as far as infringement
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`contentions and invalidity contentions.
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`I understand, Your Honor, under the local patent
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`rules there’s some reference to infringement contentions and
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`invalidity contentions but the case we have here is a little
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`bit different from the ordinary kind of standard patent case
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`where you’d see that type of thing maybe early on in a case.
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`In this particular type of case there’s Hatch-Waxman standing
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`to bring suit based on Paragraph 4 filings but then in the
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`course of discovery the plaintiffs will need to have access to
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`the defendant’s Andis [Ph.], do the analysis of the Andis
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`involved experts and go through the whole course of review of
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`documents and that kind of thing over the course of time and
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`
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 6 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 10 of 42
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`then the defendants also will have invalidity contentions. So
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`we’ve had experience in this court before, Your Honor, where
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`we’ve actually used the contention interrogatory deadline as
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`the time when we exchange information about infringement
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`contentions and invalidity contentions. It seems to us that
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`since those are inherently contention interrogatories that the
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`fundamental purpose of the contention interrogatory approach
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`in the Southern District would be fulfilled by scheduling that
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`then.
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`Then I think we’ve made some progress on what I
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`thought was a dispute about production of documents. We’ve
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`been of the view that you produce documents in the ordinary
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`course of discovery over time and the defendants had some
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`proposal which is reflected in the parties joint submission as
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`far as having kind of some staggered foreign versus U.S.
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`discovery deadlines which with the more burdensome production
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`advanced earlier which just didn’t really make sense to us,
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`Your Honor, but I think in speaking further with the
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`defendants it looks like we were approaching perhaps an agreed
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`compromise as far as having one target date for substantial
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`production of documents, and we had submitted that perhaps if
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`the court wanted to go down that path and perhaps set a
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`particular date for substantial completion we had suggested
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`that perhaps June 5th of 2016 might be appropriate.
`
`But we understand that the defendants were
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`
`
`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 7 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 11 of 42
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`considering perhaps a modified approach where there would be
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`one date for all production for substantial completion but
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`maybe a little bit earlier than that which in the interest of
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`compromise, Your Honor --
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`THE COURT: Would more time assist you in coming to
`
`an agreement?
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`MS. CARR: Excuse me, Your Honor? I’m sorry.
`
`THE COURT: Would more time -- would more time
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`facilitate -- normally I sign these civil case management
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`plans at the conclusion of a conference. Would you like
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`another week to talk about it with your adversaries?
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`MS. CARR: That might be helpful.
`
`THE COURT: Before I make up my mind and my mind’s
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`not made up. It will be somewhat random, you know.
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`MR. AINSWORTH: Your Honor, Paul Ainsworth on behalf
`
`of Aurobindo. I think I speak for all of the defendants right
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`now. We would like to get an order, a scheduling order
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`entered today. We don’t think additional time is going to
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`resolve all the disputes we have.
`
`THE COURT: All right. Okay. Well, let’s go through
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`the civil case management plan. You can point out the areas
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`of agreement and disag -- well, the areas of disagreement and
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`to get my rulings right away.
`
`MS. CARR: Sure. Thank you, Your Honor. So with
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`respect to the court’s suggestion we would be willing to try
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`
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 8 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 12 of 42
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`to cooperate and submit a joint agreed plan but you can only
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`cooperate when there’s two directions doing it.
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`THE COURT: Okay. So I mean that’s true. So I’m on
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`Page -- I have the civil case management plan and scheduling
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`order. The first dispute I have -- not a dispute but contrary
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`proposals, different proposals is with regard to amending
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`their pleadings. Without leave of court on or before May 11
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`plaintiff’s proposal on or before February 15. Who from the
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`defendants wants to be heard on the May 11th proposal?
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`MS. MAZZOCHI: This is Deanne Mazzochi for Mylan,
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`Your Honor. Our basic point with proposing the May 2015 date
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`is we were hoping to actually get some substantive document
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`discovery from the plaintiffs in place before we would have --
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`before the deadline for amending the pleadings. We
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`essentially wanted to try to get some information and get some
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`discovery first before that decision would be cut off and we
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`thought that the plaintiff’s date which was February 15, 2015
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`if we served the production requests in November/December by
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`the time they get responded to we’re going to be looking at
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`January. That really just did not leave much time to review
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`the documents even if we assume the plaintiffs were able to
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`produce everything within 30 days. We thought it was more --
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`and this date further with regard to the substantial
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`completion date May 11th is shortly after --
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`THE COURT: Well, it is without leave of court too.
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`
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 9 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 31 of 42
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`briefs on that.
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`MS. MAZZOCHI: Thank you, Your Honor.
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`MS. CARR: Thank you, Your Honor.
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`THE COURT: Now, you think we can do this because I
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`don’t want to keep you waiting -- today is the 6th. Do you
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`think we can do it by Friday the 10th or is that pressing it?
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`MS. MAZZOCHI: That’s fine with us, Your Honor.
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`THE COURT: Okay.
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`MS. CARR: That’s fine with us.
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`THE COURT: Then I can read the papers and I’ll rule
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`by the 15th.
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`MS. CARR: Thank you very much, Your Honor.
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`THE COURT: Now, the last thing is we have to agree
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`upon a date to come back again where we’re going to meet and
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`see how we’re doing. Ms. Carr or Ms. Mazzochi or anybody else
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`who wants to say anything, do you have any suggestions as to
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`the next time we should meet?
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`MS. CARR: Your Honor, my suggestion would be --
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`we’re at the very beginning of the case and probably it would
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`make sense to give the parties a few months at least to do
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`their initial disclosures and the initial steps of discovery.
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`So perhaps three months from now or something like that.
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`THE COURT: Yes, right after the holidays?
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`MS. CARR: That seems to make sense, Your Honor.
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`THE COURT: Ms. Mazzochi.
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`
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 10 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 32 of 42
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`MS. MAZZOCHI: Your Honor, I would propose maybe
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`shortly after the January 20th deadline to meet and confer on
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`the depositions so that way we -- if there is going to be an
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`issue we can get that before the court right away.
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`THE COURT: Okay. Why don’t we agree on -- there may
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`be other things that take up -- during the week of January
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`12th, Marlin.
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`THE CLERK: Wednesday, January 14th at 4:45 p.m., Your
`
`Honor.
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`Thank you.
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`very much.
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`THE COURT: Okay. And allow about an hour for it.
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`[Pause in proceedings.]
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`THE COURT: Ms. Carr, anything else to take up?
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`MS. CARR: Nothing further at this time, Your Honor.
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`THE COURT: Mr. Conlin.
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`MR. CONLIN: Nothing further, Your Honor. Thank you
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`THE COURT: Ms. Mazzochi.
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`MS. MAZZOCHI: Your Honor, we just want -- sorry.
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`Co-defendant counsel just wanted to make sure that we’re not
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`abandoning the Rule 33.3(c) interrogatories.
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`FEMALE VOICE: I think the -- I’m sorry, Your Honor.
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`Katherine [inaudible]. I just wanted to make sure that --
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`well, defendants have proposed dates of December 5, 2014 and
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`January 16, 2015 for -- under the local patent rules,
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`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 33 of 42
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`preliminary infringement contentions and preliminary
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`invalidity contentions. I just want to make sure that it’s
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`part of Your Honor’s order that those dates would be adopted.
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`THE COURT: Ms. Carr.
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`MS. CARR: Your Honor, I was under the understanding
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`that those were part of the contention interrogatories you
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`were talking about under Rule 33 --
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`THE COURT: Yes, that’s what I thought too. Yes,
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`Ms. --
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`FEMALE VOICE: That was the comment that I made
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`earlier because under the local -- under Rule 33 we wouldn’t
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`get their position on infringement until one month before the
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`close of fact discovery and the patent rules contemplate a
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`different schedule, a much quicker schedule for the mutual
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`disclosure of infringement and validity positions so that you
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`know what to focus your discovery on.
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`MS. CARR: Absolutely. Including asserted claims,
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`Your Honor, the patent rules contemplate both asserted claims
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`and --
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`THE COURT: What’s -- I’m familiar with the local
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`rule on interrogatories but I’ll plead guilty to not being
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`familiar with the patent local rules and interrogatories.
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`What is it?
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`FEMALE VOICE: Rules 6 and 7. I can hand them up to
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`Your Honor.
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`
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 12 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 34 of 42
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`THE COURT: No. Just tell me.
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`FEMALE VOICE: So under Rule 6 --
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`MS. MAZZOCHI: Your Honor, a party --
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`FEMALE VOICE: It’s disclosure of asserted -- it’s
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`local patent Rule 6 which says unless otherwise specified by
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`the court not later than 45 days after the initial scheduling
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`conference a party claiming patent infringement must serve on
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`all parties a disclosure of asserted claims and infringement
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`contentions which identifies for each opposing party each
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`claim, each patent in suit that was alleged infringed and then
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`provides the reasons.
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`Under local patent Rule 7 invalidity contentions by
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`the defendants are due 45 days after receipt of the
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`plaintiff’s infringement contentions.
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`FEMALE VOICE: Yes, Your Honor, and that’s
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`absolutely critical that we --
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`THE COURT: Absolutely critical?
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`FEMALE VOICE: Yes. I’m sorry to be emphatic but --
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`THE COURT: I’ll underscore that.
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`FEMALE VOICE: -- it is very important that we know
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`what claims are asserted against us and what plaintiff’s
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`positions are on infringement.
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`THE COURT: Ms. Carr.
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`MS. CARR: Your Honor --
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`THE COURT: As I say I have a strong preference for
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 13 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 35 of 42
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`the local rules.
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`MS. CARR: Yes, Your Honor. I think we were on the
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`same page and I thought this issue already has been addressed
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`and decided on but we still firmly believe, Your Honor, that
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`this is appropriate for contention interrogatories. It is
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`contentions that we’re talking about. The local patent rules
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`I think defendant’s counsels are referencing actually I think
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`apply in different types of contexts in particular with regard
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`to Hatch-Waxman litigation because we don’t even have their
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`[inaudible] and there’s a lot of work to do before you can
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`sort through six different companies [inaudible] that kind of
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`thing but they fundamentally are contention interrogatories,
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`Your Honor, and that’s what our view is and it’s worked well
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`in other cases in this district in the past.
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`FEMALE VOICE: Your Honor, if I may. These are local
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`rules. These are just local patent rules.
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`THE COURT: I understand that. All right. I think
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`I’ll just take some time to think about this and put that in
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`your letter briefs and you’ll have my decision and the agreed
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`upon -- or the ordered civil case management plan by Friday --
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`by Wednesday the 15th of October.
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`Anything else to take up? Ms. Carr?
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`MS. CARR: Thank you very much, Your Honor. Not at
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`this time.
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`MS. MAZZOCHI: Nothing further, Your Honor.
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`Case 1:14-cv-02758-PAC Document 69-1 Filed 06/10/15 Page 14 of 14
`Case 1:14-cv-02497-PAC Document 38 Filed 10/14/14 Page 36 of 42
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`THE COURT: Thank you very much.
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`MALE VOICE: Your Honor --
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`THE COURT: Yes.
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`36
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`MR. KESCH: We have a letter that we had sent to the
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`court regarding a motion that we understood would be able to
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`be heard here. It’s not an issue for the other defendants but
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`if the court would like to hear it we’d be happy to be heard
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`on it.
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`THE COURT: Just a minute. Let me get this away.
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`[Pause in proceedings.]
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`(Away from microphones at this point.)
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`THE COURT: You’re Mr. Kesch?
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`MR. KESCH: Yes.
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`THE COURT: I thought Mylan had the -- you, Ms.
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`Mazzochi, had the -- the court lacked subject matter
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`jurisdiction over any and all claims asserted Mylan.
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`MS. MAZZOCHI: Yes, Your Honor. We have that
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`although I don’t believe we have anything briefed on that in a
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`letter brief yet but I believe --
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`THE COURT: Do you intend to make that application?
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`MS. MAZZOCHI: My client is still considering that,
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`Your Honor.
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`THE COURT: Mr. Kesch, I wasn’t aware that Sawai
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`[Ph.] was going to move to dismiss?
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`MR. KESCH: Well, we did -- we sent a letter, Your
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