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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` __________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` __________________
`
` AMNEAL PHARMACEUTICALS, LLC
`
` Petitioner
`
` vs.
`
` SUPERNUS PHARMACEUTICALS, LLC
`
` Patent Owner
`
` U.S. Patent Nos. 8,394,405,
`
` 8,394,406 and 8.206,740
`
` __________________________
`
` Cases IPR2013-00368, IPR2013-00371,
`
` and IPR2013-00372
`
` __________________________
`
` VIDEO DEPOSITION OF STEPHEN G. KUNIN, ESQ.
`
` Washington, D.C.
`
` Friday, April 18, 2014, 9:06 a.m.
`
`Reported by: Laurie Bangart, RPR, CRR
`
`Ref No.: 11685
`
`TransPerfect Legal Solutions
`212-400-8845 -- depo@transperfect.com
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`(Appearances continued)
`ALSO ON BEHALF OF PATENT OWNER SUPERNUS
`PHARMACEUTICALS AND THE WITNESS:
` Paul Hastings, LLP
` 75 East 55th Street
` New York, New York 10022
` (212)318-6000
` By: James Evans, Esq.
` jamesevans@paulhastings.com
`
`Page 5
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` EXAMINATION INDEX
` PAGE
`EXAMINATION BY MS. ELLISON . . . . . . . . . 7
`EXAMINATION BY MR. QUILLIN . . . . . . . . . 77
`
` E X H I B I T S
`EXHIBIT DESCRIPTION PAGE
`Exhibit 2145, Case IPR2013-00372 . . . . . . 15
`Exhibit 2145, Case IPR2013-00368 . . . . . . 15
`Exhibit 2145, Case IPR2013-00371 . . . . . . 15
`
`Exhibit 1002 The Ashley '932 application . . 26
`Exhibit 1031 US Patent Application Number
` 60/281,916 . . . . . . . . . . 27
`Exhibit 1004 The Ashley '106 application . . 47
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` Video Deposition of
` STEPHEN G. KUNIN, ESQ.
`
`Held at the offices of:
` Foley & Lardner, LLP
` 3000 K Street, NW
` Washington, D.C. 20007
` (202)672-5413
`
` Taken pursuant to notice, before
` Laurie Bangart, Registered Professional
` Reporter, Certified Realtime Reporter and
` Notary public in and for the District of
` Columbia.
`
` A P P E A R A N C E S
`
`ON BEHALF OF PETITIONER AMNEAL PHARMACEUTICALS:
`
`Page 3
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` Sterne Kessler Goldstein Fox
`
` 1100 New York Avenue, NW
`
` Washington, D.C. 20005
`
` (202)371-2600
`
` By: Eldora L. Ellison, Ph.D.
`
` eellison@skgf.com
`
` Erin J. Heenan, Ph.D.
`
` eheenan@skgf.com
`
`ON BEHALF OF PATENT OWNER SUPERNUS
`
`PHARMACEUTICALS AND THE WITNESS:
`
` Foley & Lardner, LLP
`
` 3000 K Street, NW
`
` Washington, D.C. 20007
`
` (202)672-5300
`
` By: George E. Quillin, Esq.
`
` gquillin@foley.com
`
` Andrew S. Baluch, Esq.
`
` abaluch@foley.com
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` P R O C E E D I N G S
` THE VIDEOGRAPHER: This is disc
` number 1 of the video deposition of Stephen
` G. Kunin in the matter of Amneal
` Pharmaceuticals, LLC v. Supernus
` Pharmaceuticals, Inc., in the United States
` Patent & Trademark Office before the Patent
` Trial & Appeal Board, case numbers IPR
` 2013-00368, IPR 2013-00371 and IPR
` 2013-00372.
` This deposition is being held at
` 3000 K Street, Northwest, Washington, D.C. on
` April 18, 2014, at 9:06. My name is David
` Bayles, and I am the legal video specialist.
` The court reporter is Laurie Bangart in
` association with TransPerfect Legal
` Solutions.
` Will counsel please introduce
` themselves for the record.
` MR. QUILLIN: My name is George
` Quillin with the Foley & Lardner firm,
` defending the witness and representing
` Supernus. With me is Andy Baluch, also of
` Foley & Lardner, as well as James Evans of
` the firm Paul Hastings.
`
`Page 7
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` MS. ELLISON: I'm Eldora Ellison
` from Sterne Kessler Goldstein Fox, and
` together with me is Erin Heenan, also of
` Sterne Kessler Goldstein Fox.
` THE VIDEOGRAPHER: Would the
` reporter please swear in the witness.
` STEPHEN G. KUNIN, ESQ.,
` having been first duly sworn, testified upon
` his oath as follows:
` EXAMINATION BY COUNSEL FOR AMNEAL
`BY MS. ELLISON:
` Q Good morning, Mr. Kunin.
` A Good morning.
` Q Will you please state your full name for
`the record.
` A Stephen G. Kunin.
` Q Thank you, and I know you've been
`deposed before, and so you're probably well aware
`of the general guidelines and rules, but we'll go
`over those again just for the sake of clarity.
` Is that okay?
` A Okay.
` Q All right. So as you know, one of us
`should talk at a time. I'll try not to talk over
`you, and I ask that you try not to speak over me.
`
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` Okay?
` A Okay.
` Q And you understand that you're under
`oath today, correct?
` A Yes.
` Q And that you have to give complete and
`truthful answers, correct?
` A Yes.
` Q And you agree to do that, right?
` A Yes.
` Q And you understand that your answers
`need to be made verbally, out loud, right?
` A Yes.
` Q And you also understand that counsel for
`Supernus may object, but unless they instruct you
`not to answer, you have to answer the question,
`right?
` A Yes.
` Q And you agree to do that, correct?
` A Yes.
` Q Thank you, and you understand that we
`can take some breaks today, and if you need a
`break, feel free to ask for one, and I'll try to
`stop the questioning at that point in time, but if
`I'm not in the middle of a question, then I'll ask
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`Page 9
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`you -- excuse me. If you haven't yet given your
`answer to the question, I'll ask that you answer
`the question before we take a break.
` Is that okay?
` A Yes.
` Q And if you don't understand a question,
`you can ask me for a clarification if you'd like,
`but you should ask me as opposed to counsel for
`Supernus.
` Okay?
` A Yes. If I don't understand, I'll tell
`you I don't understand the question.
` Q Okay. So otherwise it's fair for me to
`assume that you do understand the question; would
`you agree?
` A If I don't understand the question, I
`will tell you I don't understand the question
`before I attempt to answer.
` Q Okay, but if you do answer without
`telling me that you don't understand, it's fair
`for me to assume that you do understand, correct?
` A As I said, if I don't understand the
`question, I will tell you that.
` Q Do you agree that it's fair for me to
`assume that you understood the question if you
`
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`don't tell me that you haven't understood the
`question?
` A I will tell you if I don't understand
`the question, and if I don't understand the
`question, I will let you know.
` Q Do you understand that I'm asking you if
`you agree with me that it would be fair?
` A I don't know what that means.
` Q Okay. So you didn't understand the
`question I just asked you, whether it means --
`whether something is fair?
` A I don't know what you mean by "fair."
`Your definition of fair might be different than my
`definition of fair. That's why I answered the way
`I answered that question.
` Q So you didn't understand the question
`that I was asking you about fairness, correct?
` A I didn't understand what you meant by
`"fairness."
` Q Okay. So you didn't understand what I
`meant when I asked you the question about
`fairness?
` A I did not understand what you meant.
` Q Okay, as opposed to what someone else in
`the room meant?
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` A Well, my definition of fairness may be
`different than your definition of fairness, so if
`we're going to have a meeting of the minds as to
`what that means, then I would seek clarification.
` Q Okay. So tell me what you understand
`fairness to mean.
` A Well, I don't have any special
`definition for fairness. From the perspective of
`fairness within the confines of this deposition, I
`would expect that fairness would relate to the
`subject matter of my declaration, and certainly
`I'm here to answer your questions and to provide
`clarification of what my opinions are in my
`declaration, and I think that's fair.
` If you want to go into areas which are
`completely outside the scope of my declaration,
`then that may not be necessarily fair.
` Q So using your definition of fairness, is
`it fair for me to assume that you understood a
`question if you don't tell me that you didn't
`understand the question?
` A Again, I will do my best to tell you if
`I don't understand the question, after you ask me
`the question, before I do anything else.
` Q Is it your view that it may be unfair
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`for me to assume that you understood the question
`if you fail to tell me that you did not understand
`the question?
` A Well, I don't know what you assume or
`don't assume. All I can say is that I will answer
`your questions completely and truthfully to the
`best of my ability. If I feel that I don't
`understand your question, then, of course, I won't
`try to, I won't try to answer a question I don't
`understand. I'll ask you to clarify your
`question, and then I will seek to answer your
`question completely and truthfully.
` Q So in your view, is it fair for the
`Patent Trial & Appeal Board to assume that you
`understood my question if you don't ask for a
`clarification?
` A Well, I, I, I presume that the Patent
`Trial & Appeal Board will review the content of
`the deposition transcript, and they will see the
`totality of the questions and answers. They'll
`see where I have indicated I don't understand the
`question before answering, and they'll see where I
`haven't asked for clarification, and they will go
`from what my answers are.
` Q So my question was: In your view, is it
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`fair for the Patent Trial & Appeal Board to assume
`that you understood my question if you don't ask
`for a clarification?
` A I don't understand the question.
` Q Because I used the word "fair"?
` A Yes.
` Q We're using your definition of fairness.
`We're using your definition of the word fair.
` A Well, using my definition of the word
`fair again comes into play with respect to whether
`the questions are basically within the scope of my
`declaration or not.
` Q Using your definition of fairness, is
`it, in your view, fair for the Patent Trial &
`Appeal Board to assume that you understood my
`question if you don't ask for clarification?
` A Again, I don't know how to answer that
`question other than to say that the -- as far as I
`understand, the PTAB will read the deposition
`transcript, they'll read my declaration and
`exhibits, and they'll decide for themselves from
`the content. That's what they will do. I'm not
`sure that that involves questions of fairness.
`It's just a question of process.
` Q Using your definition of fairness, do
`
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`you have an opinion as to whether it would be fair
`for the Patent Trial & Appeal Board to assume that
`you understood my question if you don't ask for
`clarification?
` A I don't, again, I don't understand the
`focus of your question, because the Patent Trial &
`Appeal Board will do what the Patent Trial &
`Appeal Board does. As far as a question of
`fairness is concerned, I don't know how that plays
`into the whole issue, because they will do what
`they will do. Whether in my judgment and under my
`definition of fairness, I don't see the relevancy.
` Q My question was: Do you have an opinion
`on that?
` A I don't have an opinion on the issue of
`what the PTAB considers to be fair or not fair.
` Q My question was: Using your definition
`of fairness, do you have an opinion as to whether
`it would be fair for the Patent Trial & Appeal
`Board to assume that you understood my question if
`you don't ask for clarification?
` MR. QUILLIN: Objection. Asked and
` answered.
` THE WITNESS: I have no opinion on
` what the PTAB would do which would be fair or
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`Page 15
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` not fair.
`BY MS. ELLISON:
` Q What did you do to prepare for today's
`deposition?
` A I reviewed my declarations and exhibits,
`and I also had a meeting with counsel for
`Supernus.
` Q And when did you meet with counsel for
`Supernus?
` A Yesterday.
` Q And with whom did you meet?
` A I met with Mr. Quillin and Mr. Baluch in
`person and with Mr. Evans by telephone.
` Q And for how long did you meet?
` A Approximately six hours.
` Q And when you say you reviewed your
`declaration and exhibits, did you review any
`exhibits beyond those mentioned in your
`declaration?
` A I did not.
` Q I'm going to hand you your declarations.
`These have been marked as Exhibit 2145.
` This is Exhibit 2145 for case IPR
`2013-00368. I'm going to hand you Exhibit 2145.
`That's for case IPR 2013-00371. And I'm going to
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`hand you what's been marked as Exhibit 2145 for
`case IPR 2013-00372.
` Do you understand that you're here to
`testify today in three different IPRs?
` A Yes.
` Q And those three IPRs are IPR 2013-00372,
`2013-00371 and 2013-00368.
` Do you understand that?
` A That's correct.
` Q And you submitted three declarations,
`one for each IPR, correct?
` A Yes, that is correct.
` Q And is it correct that all three
`declarations are identical to each other except
`for case-identifying information?
` A I believe except for case-identifying
`information, the substance of the reports are
`identical. I should say substance of the
`declarations.
` Q Do you know what the difference between
`a declaration and a report is, Mr. Kunin?
` A Well, within the framework of the inter
`partes review process, the usage of expert
`declarations is the way by which expert evidence
`is introduced.
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`Page 17
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` With respect to reports, reports are
`typically used within the framework of district
`court litigation as well as ITC litigation.
` Q If you could turn to page 40 of each of
`the declarations I just handed you. We can start
`with case 00368.
` Can you confirm that that's your
`signature on page 40?
` A Yes, that's my signature, and the date
`March 7, 2014.
` Q Okay, and then for case 00371, can you
`also confirm that the signature on page 40 is
`yours?
` A Yes. The signature is mine.
` Q And for case 00372 on page 40, is that
`your signature?
` A Yes, that's correct. That is my
`signature.
` Q And each of these declarations have
`associated with it a series of exhibits A through
`P, correct?
` A That is correct.
` Q And each of these declarations together
`with its exhibits is a total of 167 pages; is that
`correct?
`
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` A Well, looking at the last page of the
`declaration package which you have given me, the
`last page number is 000167, so I presume that if
`there's not some missing, missing pages or the
`numbering is not correct, that that would be the
`correct number of pages.
` Q Okay, and can you take your time and
`look at the copies that I handed to you to make
`sure you're comfortable that they are in your view
`complete?
` A It looks like there's missing pages.
` Q Oh, really? What's missing?
` A For example, if we look at page 97 as
`opposed to page 96, that page 96, the MPEP section
`711.04(b) carries over to the top of page 97,
`whereas if we look at the same provision 711.04(b)
`on page 97, I turn over to the back side, I don't
`see the remainder of that section.
` Q And when you turn to what has been
`numbered page 98, that has a label "Exhibit I" on
`it, correct?
` A Page 98 is identified as Exhibit I.
` Q All right.
` Well, I'll represent to you that this is
`a copy of what we received from Supernus. If
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`you'd like us to verify that for you by going on
`the PRPS system, we can do that, but are you
`otherwise comfortable moving forward with this
`deposition?
` A Well, if, if that is the case, yes, that
`this is a copy of what you received and what's in
`PRPS.
` MS. ELLISON: Mr. Quillin, do you
` have any basis for disagreeing that this is a
` copy of what Supernus has provided to us?
`BY MS. ELLISON:
` Q While they're looking at that,
`Mr. Kunin, if you wouldn't mind continuing to make
`sure you're otherwise comfortable with the
`contents of what we've provided to you as Exhibit
`2145.
` A I don't see any additional omissions,
`but . . .
` MR. QUILLIN: As near as we can
` tell, what you've given the witness is an
` accurate copy of what Supernus provided to
` you and the Board.
` MS. ELLISON: Okay, thank you.
`BY MS. ELLISON:
` Q So Mr. Kunin, if I could have -- if you
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`wouldn't mind, perhaps to make life simple for all
`of us today, we could just work from the copy of
`your declaration from case 00368, since you said
`it's identical to the others.
` Is that okay with you?
` A Yes.
` Q And would you agree that your testimony
`with respect to the '368 -- your declaration and
`the '368 IPR also applies to the '371 IPR?
` A And the '372 as well.
` Q So you would agree that it applies
`across all three cases, right?
` A Yes. As we had already established, my
`declaration substantively is the same for all
`three IPRs.
` Q Okay, and if your testimony differs at
`all as between IPRs, you'll let me know, correct?
` A Yes, which obviously would relate to the
`case numbers and the different patents in the IPR,
`but as far as my declaration is concerned, that
`doesn't really go to that, those issues.
` Q Okay, thank you.
` All right. So we'll work from Exhibit
`2145 from case IPR 2013-00368 with the
`understanding that it applies for all three IPRs.
`
`Page 21
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` So if I could have you turn to page 11
`of your declaration, in paragraph 20 you say, "I
`expect to testify by declaration and deposition
`regarding the incorporation by reference of Ashley
`'854 in Ashley '932," correct?
` A That's what it says.
` Q What did you mean by "expect to testify
`by declaration"?
` A Well, my understanding is that, uh, that
`PTAB oral hearings, live testimony is not normally
`taken, and therefore my testimony is my
`declaration, and this deposition represents your
`cross-examination of me, and then if counsel for
`Supernus has any redirect, that will be as well.
`So I expect that my, my testimony is confined to
`my declaration as well as the deposition.
` Q When you say "I expect to testify by
`declaration," were you referring to a declaration
`other than these ones that you signed on March 7,
`2014?
` A No. These are the declarations.
` Q Okay.
` A The use of the word "declaration" is
`basically just the, the nomenclature of the
`document which represents the recordation of the
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`testimony.
` Q Okay.
` So when you said "I expect to testify by
`declaration," you were referring to the very
`declarations that you signed on March 7, 2014?
` A Yes, which would be ultimately construed
`as my testimony.
` Q And in paragraph 19 on that same page,
`you say "documents, data or information that I
`have considered in forming the opinions herein are
`attached as further exhibits, many of which are
`specifically referenced in the declaration."
` Do you see that?
` A Yes.
` Q Other than the documents that you have
`provided as Exhibits A through P of your
`declaration, were there additional documents, data
`or information that you have considered in forming
`the opinions set forth in your declaration?
` A Yes.
` Q What were those?
` A The, the Kyocera versus ITC Federal
`Circuit decision of 2008, dealing with the
`particularity requirement for an appropriate
`incorporation by reference.
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` Q Were there any other documents, data or
`information that you considered in forming your
`opinions beyond the one you just mentioned and
`Exhibits A through P to your declaration?
` A No.
` Q Was there any additional case law that
`you considered in forming your opinions beyond the
`Kyocera, the ITC case and any case law mentioned
`in your declaration?
` A No.
` Well, let me, let me clarify my answer.
` Q Please.
` A I have included in the exhibits specific
`references to the pertinent sections of the MPEP,
`which in many instances does cite to case law.
` Q Okay.
` A So it's already -- those cases are
`already in the exhibits, but to clarify my answer,
`no additional cases beyond what is in my exhibits
`that's taken from the MPEP or quoted in the MPEP.
` Q So to make sure I understood your
`question, if a case was cited in an MPEP section
`that you included as an exhibit, you considered
`that cited case; is that what you're saying?
` A That's correct.
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` Q Did you read that cited case?
` A At some point I did. I did not read it
`in the preparation of my declaration or
`preparation for this deposition, but yes, I had
`read it at some point in time.
` Q Okay. So which cases did you read
`specifically in connection with preparation of
`your declaration other than the Kyocera case?
` A Only the Kyocera case.
` Q Okay, and did you read each of
`Appendices A through P of your declaration?
`Excuse me. Exhibits A through P to your
`declaration.
` A Yes. I was the one who actually
`provided them to counsel for Supernus.
` Q Okay, and you read each of Exhibits A
`through P in their entirety prior to signing your
`declaration?
` A I believe the answer is yes.
` Q Okay.
` Prior to signing your declaration, did
`you read every document that's referred to in your
`declaration?
` A Well, let's see.
` My, my declaration refers to the, the
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`three patents that are challenged in inter partes
`review. I have not read those. I'm, I'm not a
`technical expert in this matter, so I haven't read
`those patents, nor have I -- in the declaration,
`when there are references to the institution of
`inter partes review and the, for example, mention
`of, in paragraph 32 of my report, the, the PTAB
`relying upon Ashley '932 and Sheth, the '748
`patent, I haven't read the Sheth '748 patent.
` Q Did you read the Ashley '854
`application?
` A Yes, I, I looked at the -- well, let me
`put it this way. No, I haven't. I, I did read
`Ashley '106, but I don't believe I actually read
`the Ashley '854 application itself.
` Q Did you read Ashley '106 from cover to
`cover?
` A I did, and I believe that in my
`exhibits, when I make reference to Ashley '106,
`that I, when I retrieved it, I did read through
`it.
` Q You read it from cover to cover?
` A Yes, but I did not read it from the
`purview of a person of ordinary skill in the art.
` Q Did you understand Ashley '106 when you
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`read it?
` A Not from a technical perspective. I
`don't have a background in pharmaceutical
`chemistry, so I read it, yes, but do I understand
`it from the perspective of a person of ordinary
`skill in the art? No.
` Q Did you read the priority document for
`the '932 application?
` A I did not, and I guess maybe what I
`should do is ask you for clarification, because if
`I recall correctly, there's a difference between
`the front page and the first page.
` Q I'm going to hand you Amneal Exhibit
`1002, which is the Ashley '932 application.
` A Yes. I have that in front of me.
` Q Okay, and you see on the cover page,
`item 30, it refers to priority data, correct?
` A Yes, I see that.
` Q And it refers to provisional number
`60/281,916?
` A Yes.
` Q Did you read this '916 application?
` A I did not.
` Q And then if you turn the page to what's
`been marked as page 1, you see there's a
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`cross-reference to related application, correct?
` A Yeah, I see that.
` Q And the cross-reference beginning at
`line 5 says, "This application claims the benefit
`of US provisional application number 60/281,916,
`filed April 5, 2001, and US provisional
`application number 60/325,489, filed September 26,
`2001, both of which are incorporated herein by
`reference."
` Do you see that?
` A I do see that.
` Q Did you read this '489 application
`that's referred to in the cross-reference?
` A I did not.
` (Exhibit 1031 was marked for
` identification.)
`BY MS. ELLISON:
` Q I'm going to mark Amneal Exhibit 1031.
`I'm handing you a copy of it. This is US Patent
`Application Number 60/281,916.
` Do you agree with that, Mr. Kunin?
` A Well, looking at the second page in and
`then the fourth page in, there are application
`numbers printed, indicating that this is
`60/281,916.
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` Q And this is the priority document that
`you said you did not read, correct?
` A This is the priority document, one of
`the priority documents for the '932 application,
`and I had not read this.
` Q Okay, thank you.
` Have you read any other expert testimony
`in these IPRs, Mr. Kunin?
` A I have not.
` Q Do you know who Dr. Van Buskirk is?
` A I, I'm not familiar with that
`individual.
` Q Have you read the, any of the petitions
`for inter partes reviews in these three IPRs,
`Mr. Kunin?
` A I have not read the full petitions. As
`you'll note, for example, in paragraph 18 of my
`report I do make reference to the petition for
`inter partes review at page 9, but I did not study
`the full petition in detail.
` Q You said you make reference to the
`petition for inter partes review at page 9. You
`mean you're referring to page 9 of the petition
`for inter partes review, correct?
` A Yes, I'm citing to that in paragraph 18
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`of my report.
` Q And that appears on page 11 of your
`declaration, correct?
` A That is correct.
` Q Did you read the entire petition for
`inter partes review, any of them?
` A I did not. I think I testified just to
`that.
` Q You said you didn't study the full
`petition in detail. I was wondering if you read
`the entire petition.
` A No, I did not. I, I read the part of
`the petition that was referring to the '854
`provisional application.
` Q Earlier you mentioned that you're not
`serving as a technical expert in this case,
`correct?
` A That's right. I -- if you look in my
`declaration in paragraph 6 on page 3 of the
`declaration, you'll see that my technical
`background is in electrical engineering, not
`pharmaceutical chemistry. I would not be a person
`of ordinary skill in the pharmaceutical chemistry
`technology.
` Q Is it -- would you agree that you're not
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`a person of ordinary skill in the art with respect
`to the patents challenged in these IPRs?
` A Yes, I think that's fair.
` Q Turn to page 16 of your declaration.
`You have a quote from the PTAB in paragraph 32.
`You mentioned this earlier.
` A That's correct, and this is a quote from
`the decision instituting the inter partes review
`proceeding at page 12.
` Q Okay, and the last line of what you
`quote, the last sentence states, "Argument (C) is
`unpersuasive, because we accept, for purposes of
`this decision, that Ashley '854 discloses an IR/DR
`doxycycline formulation."
` Do you see that?
` A I see those words.
` Q Do you dispute the PTAB's conclusion
`with respect to Argument C?
` A I don't dispute that. I, I note that it
`says that "for purposes of this decision," which
`is just the institution of the proceeding, it's
`not an ultimate determination, but it does say
`that the PTAB accepts for purposes of this
`decision, which is at this stage of the IPR
`proceedings, this factual statement.
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` Whether Ashley '854 discloses IR/DR
`doxycycline formulation, I mean I'm not a person
`of ordinary skill in the art, so I would have no
`opinion.
` Q In your declaration you question whether
`the incorporation by reference in Ashley '932 was
`effective, correct?
` A Yes. In fact, if you look at paragraph
`33 of my report on page 17, I say "I question
`whether the incorporation by reference in Ashley
`'932 was effective at all."
` Q Did you undertake to answer that
`question, whether the incorporation by reference
`in Ashley '932 was effective at all?
` A I did not, because I think that's a
`question of law, and that's really for the PTAB to
`decide, not me.
` Q So you don't have an opinion as to
`whether the incorporation by reference in Ashley
`'932 was effective, correct?
` A I have an opinion with respect to the
`lack of specificity that is in the purported
`incorporation by reference, which then I think
`would be taken into account by the PTAB in making
`the ultimate determination, but I don't have a
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`particular opinion as to whether that
`incorporation by reference is a proper
`incorporation by reference.
` I just have the factual determination
`with respect to what information, what
`bibliographic information was included in Ashley
`'932 and what was not included.
` Q You have an understanding of what prior
`art is, right, Mr. Kunin?
` A Yes, I do.
` Q If the Ashley '854 application were
`incorporated by reference into the Ashley '932
`application, would the information in the Ashley
`'854 application qualify as prior art ever?
` A Well, as I actually indicated in my
`declaration at paragraph 39 and in the specific
`discussion of abandoned applications, including
`provisional applications, when they become prior
`art as a printed publication, as ind